13447759 (P.T.A.B. Oct. 24, 2016)

Ex Parte Samii et al

Patent Trial and Appeal BoardOct 24, 2016

13447759 (P.T.A.B. Oct. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/447,759 04/16/2012 22879 7590 10/26/2016 HP Inc, 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Morad M Samii 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82962576 7209 EXAMINER REYNOLDS, STEVEN ALAN ART UNIT PAPER NUMBER 3788 NOTIFICATION DATE DELIVERY MODE 10/26/2016 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): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MORAD M SAMII and ARUNKUMAR MADANAGOP AL Appeal 2015-000040 1,2 Application 13/447,759 Technology Center 3700 Before PHILIP J. HOFFMANN, JAMES L. WORTH, and BRUCE T. WIEDER, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-9, 16, and 17. We have jurisdiction under 35 U.S.C. Â§ 6(b). 1 Our decision references Appellants' Specification ("Spec.," filed Apr. 16, 2012), Appeal Brief ("Appeal Br.," filed Apr. 29, 2014), and Reply Brief ("Reply Br.," filed Aug. 19, 2014), as well as the Final Office Action ("Final Action," mailed Feb. 14, 2014) and the Examiner's Answer ("Answer," mailed July 7, 2014). 2 According to Appellants, "[t]he real party in interest is Hewlett-Packard Development Company, LP ... (hereinafter 'HPDC'). HPDC ... is a ... wholly-owned affiliate of Hewlett-Packard Company .... The general or managing partner ofHPDC is HPQ Holdings, LLC." Appeal Br. 3. Appeal2015-000040 Application 13/447,759 We REVERSE. According to Appellants, the invention is directed to "an efficient packaging assembly ... that enables ease in accessing the stacks of imaging media or imaging material, while also reducing waste generated from transporting the imaging media from origination to a consumption and use destination point." Spec. 3, 11. 2---6. Claims 1 and 6 are the only independent claims. See Appeal Br., Claims App. We reproduce claim 1, below, as representative of the appealed claims. 1. A packaging assembly, comprising: a master carton that retains a plurality of stacks comprising imaging material; and a separation access band having a first end and a second end that separates the plurality of stacks from one another, the separation access band comprising a plurality of folds forming a plurality of pockets, wherein each pocket separates a stack within the master carton. Appeal Br., Claims App. REJECTIONS AND PRIOR ART The Examiner rejects claims 1, 5, and 6 under 35 U.S.C. Â§ 102(b) as anticipated by Potter (US 3,399,762, iss. Sept. 3, 1968). The Examiner rejects claims 2--4, 7-9, 16, and 17 under 35 U.S.C. Â§ 103(a) as unpatentable over Potter and Bumiski (US 3,589,505, iss. June 29, 1971). See Final Action 2---6; see Answer 2. 2 Appeal2015-000040 Application 13/447,759 ANALYSIS With respect to the anticipation rejection of independent claims 1 and 6, Appellants argue that the rejection is in error because "Potter fails to teach a separation access band that separates a plurality of stacks from one another wherein each pocket of the separation access band separates a stack within the master carton." Appeal Br. 13-14; see also id. at 13-17; see also Reply Br. 5-7. Based on our review of the record, because we cannot ascertain on which features the Examiner relies to reject the claim, we determine that the Examiner fails to establish that Potter discloses the claimed separation band. Examination "shall be complete with respect ... to the patentability of the invention as claimed." 3 7 C.F .R. Â§ 1.104( a)( 1 ). "When a reference is complex ... , the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified." 37 C.F.R. Â§ 1.104( c )(2) (emphases added). Based on our review of the record, it is unclear how the Examiner is applying the teachings and disclosures of the prior art references to reject the currently pending claims. For example, Potter's Figure 2 includes reference numbers 18, 20, 22, 24, and 26 identifying layers in which reams of paper are disposed. See Potter Fig. 2, col. 2, 11. 34--41. To complicate matters, Potter identifies the two reams of paper in bottom layer 18 as reams 28, the six reams of paper in intervening layers 22, 24, and 26 as reams 32, and the two reams of paper in top layer 20 as reams 30. See id. at col. 2, 11. 41--44. When explaining how Potter discloses the claimed stacks of paper, the Examiner refers, for example, to "first side-by-side stacks 28/26" and "second side-by-side stacks 3 Appeal2015-000040 Application 13/447,759 24122120." Thus, the Examiner appears to define the "first stacks" by both a pair of paper reams and a layer in which another pair of paper reams are disposed, and to define the "second stacks" by both a pair of paper reams as well as two layers, each of which holds a pair of paper reams. Nonetheless, it appears that, based on the foregoing, the Examiner finds that Potter teaches at least four stacks-a pair of first stacks and a pair of second stacks. Elsewhere, however, the Examiner refers only to "two stacks: a first stack formed from articles 28/26 and a second stack formed from articles 24/22/20." Final Action 2. Based on the above and other statements throughout the record, it is not clear to us which particular reams of paper the Examiner finds belong to any particular stack, or even how many stacks are shown in Potter. So, it is not clear to us whether i) the Examiner determines that Potter shows multiple side-by-side stacks placed in a single pocket formed by Potter's lifting strip or tape and whether such is permissible to teach all the limitations of claim 1, or ii) the Examiner determines that Potter shows a single stack, made up of side-by-side piles of paper reams, placed in each pocket formed by Potter's lifting strip or tape. As a result, we determine that the Examiner does not establish that Potter teaches the limitations of independent claims 1 and 6, and, thus, we are constrained to reverse the anticipation rejection. Further, we are constrained to reverse the Examiner's anticipation and obviousness rejections of claims 2-5, 7-9, 16, and 17 that depend from the independent claims. 4 Appeal2015-000040 Application 13/447,759 DECISION We REVERSE the Examiner's anticipation and obviousness rejections of claim 1-9, 16, and 17. REVERSED 5