Ex Parte Zumbiel

Patent Trial and Appeal Board

Dec 21, 2018

14068405 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/068,405 10/31/2013
26875 7590 12/26/2018
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Edward A. Zumbiel
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.
RWZ-142US 8033
EXAMINER
TAWFIK, SAMEH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD A. ZUMBIEL
Appeal2018-005401
Application 14/068,405
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 14--17, 19--23, 30, and 33, which
constitute all the claims pending in this application. App. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b ). For the reasons explained below, we
1 In accordance with 3 7 C.F .R. § 1.46, and in view of the Application Data
Sheet dated October 31, 2013, we understand "The C.W. Zumbiel
Company" is the Appellant, who is also the real party in interest. See also
App. Br. 3.
Appeal2018-005401
Application 14/068,405
find error in the Examiner's rejections of these claims. Accordingly, we
REVERSE the Examiner's rejections.
CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to cartons and, more
particularly, to a system and associated method for digitally scoring carton
blanks to be formed into cartons." Spec. ,r 2. Method claims 14, 30, and 33
are independent. Claim 14 is illustrative of the claims on appeal and is
reproduced below.
14. A method for digitally sconng a carton blank
substrate comprising the steps of:
inputting digital input into a controller in communication
with a scoring assembly and a carton blank substrate turning
assembly to produce a desired scoring pattern on the carton blank
substrate according to the digital input;
communicating at least selected portions of the digital
input to the scoring assembly;
conveying the carton blank substrate to and between the
scoring assembly and the carton blank substrate turning
assembly;
scoring a first set of score lines in a first direction on the
carton blank substrate with the scoring assembly according to the
digital input;
turning the carton blank substrate while within the scoring
assembly with the carton blank substrate turning assembly from
a first orientation to a second orientation; and
scoring a second set of score lines in a second direction on
the carton blank substrate with the scoring assembly according
to the digital input.
Magnell
Schaack
Smith
REFERENCES
US 7,647,752 B2
US 7,670,275 B2
US 2008/0048386 Al
2
Jan. 19,2010
Mar. 2, 2010
Feb.28,2008
Appeal2018-005401
Application 14/068,405
THE REJECTIONS ON APPEAL
Claims 14--17, 19, 20, 23, 30, and 33 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Magnell and Smith.
Claims 21 and 22 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Magnell, Smith, and Schaack.
ANALYSIS
The rejection of claims 14-17, 19, 20, 23, 30, and 33
as being obvious over Magnell and Smith
Independent method claim 14 is directed to a carton blank substrate
that is to be turned for further scoring and, specifically, "turning the carton
blank substrate while within the scoring assembly" to permit such
subsequent scoring "in a second direction on the carton blank substrate."
App. Br. 15 (Claims App.). Independent claims 30 and 33 differ from claim
14 in certain respects, but also contain limitations similar, if not identical, to
those discussed below, which focus on the limitations of claim 14. App. Br.
17-18 (Claims App.).
The Examiner finds that "Magnell discloses a method for scoring a
carton blank comprising" "scoring a first and second set of score lines in the
blank (inherently the box making process 130 will include a horizontal and
vertical score formation on the blank in order to form a complete box; Fig.
IA; via scoring station 14)" in which the scoring comprises "first and second
perpendicular sets of score lines with the use of plurality of scoring members
(inherently the box making process will have steps of forming horizontal and
vertical sets of score lines on the blank to complete the formation of the box;
via using scoring members 14)." Final Act. 2 (citing Magnell Figs. IA, 2, 5,
14 ). The Examiner acknowledges that "Magnell does not disclose a turning
3
Appeal2018-005401
Application 14/068,405
assembly nor a step of turning the carton blank." Final Act. 3. The
Examiner relies on Smith for such teaching, concluding that it would have
been obvious to modify the method of Magnell "by having a turning
assembly to tum the blank about 90 degrees, as suggested by Smith, in order
to improve the sheet rotation as required (paragraph 0007)." Final Act. 3.
Appellant contends that "[ d]ue to the lack of the need for a turning
assembly in Magnell," "it logically follows that the modification of Magnell
to include a turning assembly or turning step as in the rejection has been
improperly gleaned from Appellant's own specification" and thus, "[a]
combination of Magnell and Smith is an exercise of impermissible
hindsight." App. Br. 11-12.
Appellant's contention is persuasive. As discussed above, the
Examiner finds that Magnell's method inherently already comprises forming
horizontal and vertical sets of score lines on a carton blank. See Final Act.
2. More specifically, Magnell discloses that "the carton-making machine
will automatically position all cutting and scoring mechanisms, and
feed/index raw material to produce the appropriately sized carton" (Magnell
col. 4, 11. 50-52; emphasis added) and "the carton-making machine
automatically positions a set of cutting and scoring tools, feeds corrugated
raw material and produces a corresponding custom cut and scored
box/carton(s)" (Magnell col. 5, 11. 19-22; emphasis added). Thus, there
appears to be no need to provide rotation----or any additional rotation----of a
carton blank in the method of Magnell to permit scoring "in a second
direction" because Magnell already teaches and discloses scoring in first and
second directions. The Examiner does not explain how there is a deficiency
in Magnell' s scoring of the carton blank that warrants the inclusion of
4
Appeal2018-005401
Application 14/068,405
Smith's turning mechanism. In other words, the Examiner does not point to
anywhere in Magnell to show that an additional "use of [a] rotating table" is
"needed and required" (Ans. 4) or that Magnell's automatic scoring
operation is so deficient that an "increase in productivity that is obtained by
feeding sheets long edge first" might be desired (Ans. 5). In short, the
Examiner does not explain why Magnell' s automatic scoring operation
should be interrupted by incorporating Smith's teachings of sheet turning, or
how such interruption somehow results in improved "sheet rotation" as
asserted by the Examiner. Final Act. 3.
In view of the above, we agree with Appellant that the Examiner has
relied on impermissible hindsight reconstruction because the proposed
modification requires knowledge gleaned only from Appellant's disclosure.
Accordingly, we do not sustain the Examiner's rejection of claims 14--17,
19, 20, 23, 30, and 33 as being obvious over Magnell and Smith.
The rejection of claims 21 and 22
as being obvious over Magnell, Smith, and Schaack
Claims 21 and 22 indirectly depend from claim 14. App. Br. 16-17
(Claims App.). The additional art relied upon, Schaack, does not cure the
above defects in the expressed combination of Magnell and Smith. See Final
Act. 4. Thus, we likewise do not sustain the Examiner's rejection of
dependent claims 21 and 22.
DECISION
The Examiner's rejections of claims 14--17, 19--23, 30, and 33 are
reversed.
REVERSED
5