Graphic Packaging International, Inc.

Patent Trials and Appeals Board

Jul 21, 2020

15008836 - (D) (P.T.A.B. Jul. 21, 2020)

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.
15/008,836 01/28/2016 Michael R. Schmal R029 16740US.C2 1683
26158 7590 07/21/2020
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
07/21/2020 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):
BostonDocket@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL R. SCHMAL, O’NEAL ALEXANDER,
MARK BALDINO, MICHAEL CERIO,
JOHN MURDICK HOLLEY JR., FRANK N. MONCRIEF,
RAYMOND S. KASTANEK, and COLIN FORD
____________________

Appeal 2020-000860
Application 15/008,836
Technology Center 3700
____________________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1–10 and 12–21. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Graphic Packaging International, Inc.,
as the real party in interest. Appeal Br. 1.
Appeal 2020-000860
Application 15/008,836

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According to Appellant, the “disclosure relates to cartons having an
article protection feature and/or article protection flap that protects the
containers or articles from breakage.” Spec. ¶ 3. Claim 1 is the sole
independent claim on appeal. Below, we reproduce claim 1 as
representative of the appealed claims.
1. A carton comprising:
a plurality of panels forming an interior of the carton, the
plurality of panels comprises a bottom panel, a first side panel
foldably connected to the bottom panel, a second side panel
foldably connected to the bottom panel, and a top panel foldably
connected to at least one of the first side panel and the second
side panel;
a plurality of beverage bottles in the interior of the carton;
a first closed end of the carton;
a second closed end of the carton;
at least one article protection flap foldably connected to
the bottom panel and moveable between a first position that is
substantially parallel to the bottom panel and a second position
wherein the article protection flap is folded into the interior of
the carton relative to the bottom panel and into contact with each
of two adjacent beverage bottles of the plurality of beverage
bottles;
wherein movement of the article protection flap to its
second position presses the article protection flap against each of
the two adjacent beverage bottles and moves at least one of the
two adjacent beverage bottles to tighten the packing of the bottles
in the carton.
REJECTION AND PRIOR ART
The Examiner rejects claims 1–10 and 12–21 under
35 U.S.C. § 103(a) as unpatentable based on Smalley2 and Bienaime.3

2 Smalley, US 2006/0081691 A1, published Apr. 20, 2006.
3 Bienaime, US 5,002,225, issued Mar. 26, 1991.
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Application 15/008,836

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ANALYSIS
As set forth above, independent claim 1 recites, in relevant part, that
“movement of the article protection flap to its second position presses the
article protection flap against each of the two adjacent beverage bottles and
moves at least one of the two adjacent beverage bottles to tighten the
packing of the bottles in the carton.” Appeal Br., Claims App. We do not
sustain the Examiner’s obviousness rejection because the Examiner does not
support adequately that any reference discloses this claim recitation. Id.
at 8–13.
The Examiner does not find that Smalley discloses the above claim
recitation. See Answer 3–4. Rather, the Examiner determines that
“Bienaime discloses flaps . . . 102,”4 and that
[i]t is readily apparent to one of ordinary skill . . . that bottles
shift positions within a package when the flaps are in a first
position and that upon activation of the flaps into the second
position, the bottles would move in order to provide the
intended function of the device. Further, with respect to the
movement location, the [Examiner] notes that such depends on
the very specific locations of the bottles as well as the desired
positioning and arrangement of the flaps themselves of which in
different arrangements of the above would provide a specific
movement direction, such as towards an end. It would have
been obvious . . . to modify Smalley in view of Bienaime (by
providing protection flaps onto . . . [Smalley’s] bottom panel
in . . . rows [so] that when in the second position contact the
enclosed contents such as bottles) in order to lock the contents
such as bottles into a tight place to prevent damage.

4 Although the Examiner refers to Bienaime’s elements 110 and 102 as
“flaps,” Bienaime identifies element 110 as a “cut line[]” used to form
flap 102. Answer 4; Bienaime col. 2, ll. 44–49.
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Application 15/008,836

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Id. at 4. The foregoing is inadequate to support the Examiner’s obviousness
rejection, however.
The Examiner does not identify where either reference discloses a
flap, such as one of Bienaime’s flaps 102, which presses against even one
article, let alone a flap that presses against two articles, or a flap that presses
against two articles and moves at least one of the articles to tighten the
packing of articles in a carton including the flap, as claimed. For example,
although Bienaime explains that “[w]hen the flap is designed . . . [as
described], the objects can be locked in place very simply, provided—as has
already been explained—a cavity is available into which the flap can
project,” it is unclear that this locking occurs because the flap contacts the
object or article. Bienaime col. 1, ll. 34–36. It may be, for example, that
flap 102 locks the article in the carton by preventing the article from
attaining a particular orientation, but otherwise the flap allows the article to
move freely within the carton. The Examiner’s only citations to Bienaime in
the Answer and Final Office Action are to three of Bienaime’s figures—
Figures 1, 4, and 5—and none of Bienaime’s figures show any article in
Bienaime’s carton. Answer 2–4; Final Action 2–4.
Further, the Examiner does not provide an adequate reason as to why
it would have been obvious to size or position one of Bienaime’s flaps 102
in Smalley’s carton such that the flap presses against two articles and moves
at least one of the articles to tighten the packing of articles in a carton, as
claimed. Instead, the Examiner’s proposed modification of Smalley based
on Bienaime to provide an arrangement in which “[o]nce the flap is placed
between the bottles of Smalley, the angular portions would contact the
bottles of Smalley and force the bottles outward and to tighten either against
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Application 15/008,836

5
other bottles or the carton itself, thus causing a degree of movement of the
bottles,” does not seem to have any basis in the record, other than
Appellant’s disclosure and claims. Answer 7. This would be impermissible
hindsight, and the rejection lacks articulated reasoning with rational
underpinnings to sustain the rejection.
Consequently, we do not sustain the Examiner’s obviousness rejection
of independent claim 1. We also do not sustain the obviousness rejection of
claims 2–10 and 12–21 that depend from, and the Examiner rejects with,
independent claim 1.
CONCLUSION
We REVERSE the Examiner’s obviousness rejection of claims 1–10
and 12–21.
In summary:
REVERSED

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 12–21 103(a) Smalley, Bienaime 1–10, 12–21