Ex Parte Miller

Patent Trial and Appeal Board

Sep 29, 2017

13749560 (P.T.A.B. Sep. 29, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/749,560 01/24/2013 Scott M. Miller 247088-000116USPT 2671
70001 7590 10/03/21
NIXON PEABODY LLP
70 West Madison Street, Suite 3500
CHICAGO, IL 60602
EXAMINER
POON, ROBERT
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
10/03/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketingchicago @ nixonpeabody.com
ipairlink @ nixonpeabody. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT M. MILLER
Appeal 2016-001319
Application 13/749,5601
Technology Center 3700
Before ANNETTE R. REIMERS, NATHAN A. ENGELS, and
ERIC C. JESCHKE, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1—3, 5, 7, 9, 10, 13, and 21—24. Claims 4, 6, 8, 11, 12, and 14—18 are
withdrawn. Claims 16, 19, and 20 are canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies Packaging Corporation of America as the real party in
interest. App. Br. 2.
Appeal 2016-001319
Application 13/749,560
ILLUSTRATIVE CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A container comprising:
a first container part formed from a first blank including a
first plurality of panels and a first plurality of flaps, the first
plurality of panels including a first side panel, a second side panel
opposing the first side panel, a back panel, and a front panel of
the container, the first plurality of flaps defining a bottom of the
container and a first exterior portion of a top of the container, the
front panel including a removable window portion; and
a second container formed from a second blank including
two or more panels and two or more top flaps, the two or more
panels including a cover front panel and a first cover side panel,
the two or more top flaps defining a second exterior portion of
the top of the container, the cover front panel being attached to
the removable window portion of the front panel and the first
cover side panel being attached to one of the first plurality of
panels.
THE REJECTIONS
Claims 1—3, 5, 7, 9, 10, 13, and 21—24 stand rejected under 35 U.S.C
§112, second paragraph, as indefinite for failing to particularly point out
and distinctly claim the subject matter Appellant regards as the invention.
Final Act. 3—4\ Ans. 9—12.
Claims 1—3, 5, 7, 9, 10, 13,21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable in view of Tibbels (US 2005/0263434 Al,
published Dec. 1, 2005) and Jackson et al. (US 7,080,736 B2, issued July 25,
2006). Final Act. 5—8.
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Appeal 2016-001319
Application 13/749,560
ANALYSIS
The Indefiniteness Rejection
Independent claims 1 recites, in part, “[a] container comprising: a first
container part formed from a first blank including a first plurality of panels
and a first plurality of flaps.” Similarly, independent claim 9 recites, in part,
“[a] container comprising: a first container part formed from a first blank
including a first plurality of panels and a first plurality of flaps.”
The Examiner states that it is unclear whether Appellant is claiming a
container or two blanks capable of forming a container, in part because a
blank would not have a front, a back, and sides until folded into shape. Ans.
9—12; see also Final Act. 3^4. Appellant responds that claims 1 and 9 are
directed to “a container” that comprises at least two parts: a first container
part formed from a first blank and a second container part formed from a
second blank. App. Br. 11.
We agree with Appellant that a person of ordinary skill would
understand claims 1 and 9 to claim a container formed of at least two parts.
Although the Examiner is correct that claims 1 and 9 could be more clear
and that claim 1, as currently pending, recites “a second container,” not “a
second container parr (see Reply Br. 4, n. 1 (stating Appellant’s intention to
amend the claim to add the word “part” and acknowledging Appellant’s
error in including the word “part” in Appellant’s Claims Appendix)), the
“front,” “back,” and “sides” are merely descriptive names for the panels. As
such, we agree with Appellant that the claims are sufficiently clear, and we
therefore do not sustain the Examiner’s indefiniteness rejection of
independent claims 1 and 9, nor dependent claims 2, 3, 5, 7, 10, 13, and 21—
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Appeal 2016-001319
Application 13/749,560
24, which were subject to indefiniteness rejections based on their
dependency from claims 1 or 9.
The Obviousness Rejection
The obviousness rejection of independent claims 1 and 9 cites element
46 in Jackson’s Figure 4, copied below, as a disclosure of the claimed “cover
side panel.” Final Act. 6.
Jackson Figure 4 is an isomeric view of a shipping and
display container. Jackson, col. 2,11. 41—43.
Further, the Examiner states:
[o]ne of ordinary skill would have found it obvious to incorporate
additional side flaps to the cover (112) of Tibbels as suggested
by Jackson in order to attach the cover to the container at multiple
points for stronger connection [sic] (Jackson, col. 5, 11. 1—10)
since the Tibbels cover (112) is currently attached only to the top
and the front of the container.
Ans. 13.
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Appeal 2016-001319
Application 13/749,560
According to Appellant, element 46 of Jackson’s Figure 4 discloses a
side cover attachment flap, not a panel. Appeal Br. 16. As such, Appellant
argues “Jackson’s front cover 12 does not include ‘a first cover side panel’
or ‘two or more top flaps’ that define a portion of the top of the container, as
required by claim 1.” Appeal Br. 15. Similarly, Appellant argues
“Jackson’s front cover 12 also fails to include both ‘a first cover side panel’
and ‘a second cover side panel,’ as required by claim 9.” Appeal Br. 15;
accord Reply Br. 7—8. Further, Appellant argues a person of ordinary skill
would not have found reason or motivation to combine Tibbels and Jackson
to arrive at the claimed invention, as the cited portions of each reference
relate solely to their respective embodiments and adding parts from one to
another would result in unnecessary, surplus parts. Appeal Br. 17; Reply Br.
9.
Having considered the Examiner’s rejection in light of Appellant’s
arguments and the evidence of record, we agree with Appellant that the
Examiner has not provided adequate reasoning with rational underpinnings
sufficient to establish that a person of ordinary skill would have combined
the references to arrive at the Appellant’s claims. Although we agree with
the Examiner that the prior art generally teaches a container having at least
two parts formed from a first blank and a second blank having a plurality of
panels and flaps, the Examiner’s rationale for combining the “panel” 46 of
Jackson with Tibbels—that Jackson provides a suggestion or motivation to
modify containers for a stronger connection (Ans. 13—14) and “so that both
sides of the Tibbels container remain attached to the Tibbels cover” (Ans.
14)—do not adequately form a basis to conclude that it would have been
obvious to a person of ordinary skill to combine the references and arrive at
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Application 13/749,560
the claimed invention. See In re Van Os, 844 F.3d 1359, 1361—62 (Fed. Cir.
2017) (explaining that even potentially correct but inadequately explained
decisions cannot be affirmed on appeal). Specifically, the rejection states
that Jackson provides a suggestion or motivation to modify Tibbels, but the
Examiner does not adequately explain where or how Jackson provides such
a suggestion or motivation to pick an element from Jackson and add it to
Tibbels. See In re Stepan Co., 868 F.3d 1342, 1347 (Fed. Cir. 2017)
(finding error where an obviousness rationale lacked an explanation of why
a skilled artisan would have modified the prior art to arrive at the claimed
invention).2 Accordingly, based on the record before us, we do not sustain
the Examiner’s rejection of independent claims 1 and 9 and dependent
claims 2, 3, 5, 7, 10, 13, 21, and 22 as being obvious in view of Tibbels and
Jackson.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
1—3, 5, 7, 9, 10, 13, and 21—24 under 35 U.S.C. § 112, second paragraph,
and we reverse the Examiner’s rejection of claims 1—3, 5, 7, 9, 10, 13, 21,
and 22 under 35 U.S.C. § 103(a).
REVERSED
2 But see KSR Int’l Co. v. Teleflex Inc., 550 US 398, 416-17 (2007)
(explaining that claims directed to mere substitutions of one element for
another or predictable uses of prior art elements according to their known
functions are likely to be obvious).
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