Graphic Packaging International, Inc.

Patent Trials and Appeals Board

Aug 4, 2020

14173102 - (D) (P.T.A.B. Aug. 4, 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.
14/173,102 02/05/2014 Joseph C. Walsh R029 1970.2US.D1 4103
26158 7590 08/04/2020
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
HARMON, CHRISTOPHER R
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
08/04/2020 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 JOSEPH C. WALSH and ROBERT L. CONATSER
Appeal 2020-000729
Application 14/173,102
Technology Center 3600
Before JOHN C. KERINS, JILL D. HILL, and JEREMY M. PLENZLER,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 33–46 and 48–52. Non-Final Act. 1.
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 the real party in interest as Graphic Packaging
International, LLC. Appeal Br. 1.
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Application 14/173,102

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BACKGROUND
Claims 33 and 49 are independent. Claim 33, reproduced below,
illustrates the claimed invention, with certain limitations italicized:
33. A carton comprising:
an outer layer comprising a first panel foldably
connected to a second panel along a first score line, a
third panel foldably connected to the second panel along
a second score line, a plurality of top flap panels, and a
plurality of bottom flap panels, at least the first panel, the
second panel, and the third panel extending at least
partially around an interior of the carton;
an inner layer of material disposed in the interior
of the carton;
the inner layer of material being adhered to at least
a portion of each of the first panel, the second panel, and
the third panel and to at least two adhered portions of
each of the first score line and the second score line;
the inner layer of material being unadhered to a
first area of the outer layer and a second area of the outer
layer, the first area of the outer layer comprising a first
non-adhered portion of the first score line and portions of
the first panel and the second panel extending along the
first non-adhered portion, and the second area of the
outer layer comprising a second non-adhered portion of
the second score line and portions of the second panel
and the third panel extending along the second non-
adhered portion, wherein the first area of the outer layer
has a first edge extending on the second panel, the second
area of the outer layer has a second edge extending on the
second panel, the first area of the outer layer and the first
edge are spaced apart from the second score line, and the
second area of the outer layer and the second edge are
spaced apart from each of the first score line, the first
area, and the first edge;
the inner layer of material is adhered to at least a
portion of the second panel extending from the first edge
of the first area of the outer layer adjacent the first score
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line to the second edge of the second area of the outer
layer adjacent the second score line.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Zinn US 2,558,918 July 3, 1951
Nerenberg US 4,197,963 April 15, 1980
Walsh US 5,794,812 August 18, 1998
REJECTIONS
I. Claims 33–46 and 48–52 stand rejected under 35 U.S.C. § 103
as unpatentable over Zinn and Walsh. Non-Final Act. 2.
II. Claims 33–46 and 48–52 stand rejected under 35 U.S.C. § 103
as unpatentable over Nerenberg and Zinn. Non-Final Act. 4.
OPINION
Zinn and Walsh
The Examiner finds that Zinn discloses the claim limitations,
including the inner layer 11 being adhered to portions of panels 18, 19, 20 of
the outer layer, and being unadhered to portions of the outer layer around
crease lines 14, 15 and their surrounding score lines 72. Non-Final Act. 2–3.
The Examiner finds that Zinn does not disclose the inner layer adhered at
two locations at the crease lines 14, 15 and their surrounding score lines 72.
Id. at 3. The Examiner finds, however, that Walsh discloses “alternative
continuous glue patterns (figs. 26–29) between layers of carton blank
materials including providing adhered 368 and non-adhered portions 370
(figs. 28–29) which do not correspond with” score lines 12, 320, 322 of
outer layer panels. Id. at 4. The Examiner concludes that it would have
been obvious “to provide adhered portions as claimed at each of the first and
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second score lines as taught by Walsh in the invention to Zinn to provide
secure layering at and adjacent to the top and bottom panels.” Id.
The Examiner further contends that:
Adhering and not adhering layers along score lines is
commonplace in the art as shown at length in the cited prior art.
Claims directed towards specific relative adhered and
unadhered areas are not considered novel for the purpose of
preventing undesired relative movement of layers when folded
along score lines, as one of ordinary skill in the art would be
concerned with proper folding of a layered carton blank.
Furthermore, one of ordinary skill in the art would be aware
that increasing a relative adhered surface area to a non-adhered
surface area between layers would ordinarily provide an
expected result of restricting movements between layers and
added structural reinforcement.
Non-Final Act. 6; see Ans. 11–12.
Appellant argues, first, that the Examiner’s rejection contains error in
its conclusion of obviousness, because Zinn teaches away from adhering
inner and outer layers at the score lines. Appeal Br. 16, 17 (citing Zinn 3:71
– 4:11 (“the regions adjacent to each center score line 71 between the
adjacent score lines 72–72 are left free of adhesive in order that no rupturing
of the liner or of the adhesive between the liner and the blank 10 will occur
when said blank is bent along the crease lines 14, 15 and 16.”)). According
to Appellant, Zinn’s disclosure that adhesive should not be applied at score
lines to prevent rupturing during bending teaches away from adhering at
select portions of the score line. Id. at 17. Appellant explains that to prevent
rupture, Zinn’s “liner 11 is not adhered to the blank 10 anywhere along the
crease lines 71 of the liner 11 or the crease lines 14, 15, 16 of the blank 10.”
Id. at 18 (citing Zinn 2:1–3, 3:71–4:8).
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The Federal Circuit has held that “[a] reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference.” In re Kahn,
441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994)); Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325,
1332 (Fed. Cir. 2008); In re Haruna, 249 F.3d 1327 (Fed. Cir. 2001).
We agree with Appellant that Zinn teaches away from adhering inner
and outer layers at the score lines in its statement that
the regions adjacent to each center score line 71 between the
adjacent score lines 72–72 are left free of adhesive in order that
no rupturing of the liner or of the adhesive between the liner
and the blank 10 will occur when said blank is bent along the
crease lines 14, 15 and 16. The portions of the liner 11 between
the panels 77, 78, 79 and 80 therefore provide hinge portions to
permit proper bending of said liner.
Zinn 4:2–11. One skilled in the art, reading Zinn in its entirety, and
specifically the above-quoted language, would be discouraged from applying
adhesive over any portion of blank score lines. A skilled artisan would
understand Zinn to be teaching that adhesive extending across score lines
will lead to rupture and improper bending at the score lines. Zinn’s
statements regarding the importance of keeping adhesive out of the score
lines informs us that a skilled artisan would not be motivated to add any
adhesive from Walsh across Zinn’s score lines.
For this reason, Zinn teaches away from the Examiner’s proposed
modification, and the Examiner’s reason for modifying Zinn with Walsh
therefore lacks a rational basis.
Regarding the Examiner’s contention that “[a]dhering and not
adhering layers along score lines is commonplace in the art,” and a skilled
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artisan “would be concerned with proper folding of a layered carton blank”
and “would be aware that increasing a relative adhered surface area to a non-
adhered surface area between layers would ordinarily provide an expected
result of restricting movements between layers and added structural
reinforcement” (Non-Final Act. 6), Appellant argues that these contentions
are conclusory and are not supported by any evidence. Appeal Br. 22; Reply
br. 6–7. Although a skilled artisan may understand that more adhesion
would be expected to restrict relative layer movement, and could make an
informed decision on adhesive application, this contention does not negate
Zinn’s teaching away from adhesion across score lines.
Nerenberg and Zinn
The Examiner finds that Nerenberg discloses the claim limitations,
including the inner layer 17 being adhered to at least a portion 14 of panels
2, 3 of the outer layer, “and to at least two adhered portions of each of the
first score line and the second score line as stripes of adhesive 14 (col. 3,
lines 9+; fig. 1).” Non-Final Act. 4. The Examiner finds that Nerenberg
also discloses “the inner layer of material being unadhered along the length
of respective score lines between adhered areas 14.” Id. The Examiner then
finds that Nerenberg’s adhesive pattern 14 does not “provide adhered
portions as claimed [i.e.,] from an edge of the first area adjacent the first
score line to an edge of the second area adjacent the second area.” Id. The
Examiner finds, however, that Zinn secures “panel portions 18–20 of outer
layer 10 and inner liner 11 . . . by providing an area between lines 72 on
either side . . . of each crease line without adhesive to prevent undesired
material deformation due to folding along crease lines.” Id. at 4–5 (citing
Zinn Figs. 1–4; 3:65+). The Examiner concludes that it would have been
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obvious “to provide adhesive along the majority of the panels as taught by
Zinn in the invention to Nerenberg . . . to secure the liner to the outer layer
in sections where desired to restrict relative movement of layers and provide
additional structural support.” Id. at 5.
Appellant argues that Nerenberg only discloses “spots or stripes” of
adhesive at Xs 14 applied to inner walls of its outer layer, rather than on any
of Nerenberg’s score/bend lines. Appeal Br. 20. Appellant argues that Zinn
does not cure the deficiencies of Nerenberg, because Zinn teaches away
from putting adhesive on score lines. Id. Thus, Appellant argues, the
combination of Nerenberg and Zinn does not disclose an inner layer adhered
to an outer layer across at least two adhered portions of first and second
score lines, while remaining unadhered to an outer layer at the remaining
areas of first and second score lines. Id. at 21.
The Examiner contends that Nerenberg discloses connecting the Xs
14, including the Xs 14 “on either side of a score line to form stripes of
adhesive over score lines.” Non-Final Act. 7. Appellant disagrees, arguing
that “‘[c]onnecting the dots’ is not explicitly discussed in Nerenberg,” and
“Nerenberg simply refers to the Xs . . . 14 as spots or stripes.” Appeal Br.
25.
The Examiner responds that Appellant is “speculating” that the
elements 14 in Nerenberg could be “limited to unconnected individual
stripes at each marking X in figure 1,” and such speculation is not
“commensurate with the scope and scale of the invention described by
Nerenberg.” Ans. 10. The Examiner notes that Nerenberg recites an
adhesive stripe 15 applied to its glue flap 5 that “is clearly depicted in Figure
1 as X markings arranged vertically.” Id. Thus, the Examiner argues,
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Nerenberg recites a stripe 15 as a singular stripe that is then represented “in
the exact manner as adhesive 14 in the same figure.” Id. The Examiner
appears to consider this description of a “stripe” represented by Xs 15 to
establish that Nerenberg contemplates adhesive stripes connecting all of the
Xs 14 in a given horizontal row, which would then lie across the score lines
between panels 1 through 4. The Examiner contends that “the application of
glue as singular stripes at locations 14 [is] an appropriate, reasonable
interpretation of the teachings of Nerenberg in that one of ordinary skill
would recognize that connecting the dots marked X at 14 would produce a
stripe including over score lines between panels 1–4.” Id.
According to the Examiner, even if we do not agree that Nerenberg
discloses adhesive stripes spanning horizontally across rows of Xs 14, such
that they cross score lines, “connecting adjacent glue areas/dots at 14 in . . .
Nerenberg to provide a stripe of glue in an affected area . . . is considered
well within the skill level of one of ordinary skill in the art.” Id. at 10, 11.
Appellant replies that that Nerenberg simply “is not clear with respect
to whether the Xs shown in the figures represent unconnected spots or
stripes of adhesive” or if instead, “the Xs are meant to be connected to form
stripes.” Reply Br. 6. According to Appellant, even if Nerenberg’s Xs 14
are meant to be connected, “it is not clear from the disclosure of Nerenberg
which Xs would be connected (e.g., whether Xs would be connected
horizontally or vertically).” Id. In addition, we note that it is unclear
whether Nerenberg would expect all vertically or horizontally aligned Xs 14
to form a single stripe, or if the stripe would instead span a subset of Xs 14,
such as two adjacent Xs, in which case the stripes may not cross
Nerenberg’s score lines. Further, as explained above, Zinn teaches away
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from adhering a liner to score lines, which would lead a skilled artisan away
from connecting the Xs of Nerenberg across a score line. Id.
Appellant has the better argument regarding the disclosure of
Nerenberg. There is insufficient disclosure in Nerenberg that the term
“stripe” is intended to convey connection of all horizontally aligned Xs 14
such that adhesive runs across score lines. Further, the Examiner provided
no evidence or persuasive argument that such connection would be
understood by a skilled artisan. Indeed, it seems to us that the Examiner is
speculating regarding where Nerenberg’s “stripes” would lie. Patentability
determinations “should be based on evidence rather than on mere
speculation or conjecture.” Alza Corp. v. Mylan Laboratories, Inc., 464 F.
3d 1286, 1290 (Fed. Cir. 2006). We decline to consider such speculation as
evidence adequate to establish prima facie obviousness. For this reason, we
do not sustain the Rejection based on Nerenberg and Zinn.

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CONCLUSION
The Examiner’s rejections are not sustained as to claims 33–46 and
48–52.
More specifically:
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
33–46,
48–52
103 Zinn and Walsh 33–46, 48–52
33–46,
48–52
103 Nerenberg and Zinn 33–46, 48–52
Overall
Outcome
  33–46, 48–52

REVERSED