Thomas Wetsch et al.

Patent Trials and Appeals Board

Feb 1, 2022

2020006120 (P.T.A.B. Feb. 1, 2022)

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. 13/566,659 08/03/2012 Thomas D. Wetsch 194313.03201 3369 29880 7590 02/01/2022 Fox Rothschild LLP 997 Lenox Drive Lawrenceville, NJ 08648 EXAMINER FRY, PATRICK B ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 02/01/2022 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): ipdocket@foxrothschild.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS D. WETSCH and CHRISTOPHER RAINS Appeal 2020-006120 Application 13/566,659 Technology Center 3700 Before MICHELLE R. OSINSKI, JEREMY M. PLENZLER, and CARL M. DEFRANCO, Administrative Patent Judges. PLENZLER, 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 1, 4-6, 8, 11-17, 26-28, 31-35, and 37. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Pregis Innovative Packaging LLC. Appeal Br. 3. Appeal 2020-006120 Application 13/566,659 2 CLAIMED SUBJECT MATTER The claims relate to dunnage supply. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A dunnage supply arrangement, comprising: a first supply unit of an elongated web of material in a high-density arrangement, the material being convertible to a low-density dunnage in a dunnage mechanism, the elongated web of material having first and second longitudinal ends and a material transverse width measured in a transverse direction with respect to the longitudinal ends, the longitudinal ends having first and second transverse edges opposed from each other in the transverse direction; an adhesive connected to the first longitudinal end of the first supply unit and configured for adhering to a second longitudinal end of a second supply unit of elongated web of material with sufficient adhesion for pulling the material of the second supply unit into the dunnage mechanism, wherein the adhesive is spaced by at least 1/4 of the transverse width from at least one of the transverse edges such that the at least 1/4 of the transverse width of the at least one of the transverse edges is free when the adhesive is adhered to the second supply unit; and a release layer disposed on the adhesive and releasable therefrom for allowing adhering of the adhesive to the second supply unit. Appeal 2020-006120 Application 13/566,659 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Francik US 3,001,735 Sept. 26, 1961 Ciani US 4,911,563 Mar. 27, 1990 Schutz US 5,219,126 June 15, 1993 Takahashi US 5,222,601 June 29, 1993 Helton US 6,007,016 Dec. 28, 1999 Glenna US 6,632,311 B1 Oct. 14, 2003 Harding US 6,756,096 B2 June 29, 2004 Beck US 6,790,302 B2 Sept. 14, 2004 Abba US 6,802,467 B2 Oct. 12, 2004 Shaw US 2008/0076653 A1 Mar. 27, 2008 REJECTIONS2 Claim 1 is rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1, 4-6, 8, 26, 27, 34, 35, and 37 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1, 4, 6, 8, 11-17, 34, 35, and 37 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Shaw, Abba, Beck, and Harding. Claims 1, 4-6, 8, 11-17, 26, 34, 35, and 37 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Shaw, Schutz, Beck, and Harding. Claims 27, 28, 31, and 33 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Shaw, Schutz, Beck, Harding, and Helton. 2 The rejections are modified from the listing in the Final Action because the Examiner entered Appellant’s amendments after the Final Action, which included cancellation of various claims. See Advisory Act. 1. Appeal 2020-006120 Application 13/566,659 4 Claim 32 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Shaw, Schutz, Beck, Harding, Helton, and Ciani. OPINION Written Description The Examiner determines that “the phrase ‘an adhesive connected to the first longitudinal end of the first supply unit, and configured for adhering to a second longitudinal end of a second supply unit’ renders claim 1 . . . non-compl[iant] with the written description requirement because the feature appears to be new matter.” Final Act. 3. The Examiner states that “page 1 paragraph 6 of the Specification” discloses “the connecting member . . . being disposed adjacent to the first longitudinal end of the first supply unit and having an adhesive surface configured for adhering to the longitudinal second end of a second supply unit,” but “not disclos[ing] an adhesive that is connected to the first longitudinal end of the first supply unit and configured to adhere to the second longitudinal end of the second supply unit.” Id. In the Answer, the Examiner further explains the basis of the rejection. The Examiner explains that “[t]he term ‘adhesive’ is understood as a substance that causes something to adhere to another object” and “[t]he phrase ‘an adhesive connected to the first longitudinal end of the first supply unit and configured [for] adhering to a second longitudinal end of a second supply unit’ implies there is an adhesive directly applied to the first longitudinal end of the first supply and that adheres directly to the second longitudinal end of the second supply unit.” Ans. 4. The Examiner explains that “[t]his is not the same as using a connecting member, comprising an adhesive layer, to connect the first longitudinal end of the first supply unit to the second longitudinal end of the second supply unit.” Id. Appeal 2020-006120 Application 13/566,659 5 Appellant responds that “[t]he specification discloses an ‘adhesive’ that can take a variety of forms.” Appeal Br. 9 (referencing Spec. ¶¶ 14, 15, 36, 40, 42, 44, 47, 48). As Appellant correctly explains, “[f]or example, ‘the adhesive’ is described in the application in one embodiment[] as ‘an emulsive pressure-sensitive adhesive such as acrylic, but other suitable adhesive can be used, i.e.[,] rubber, tape, glue, and other suitable adhesives.’” Id. (quoting Spec. ¶ 40). One of the examples noted above is tape, and paragraph 40 of Appellant’s Specification expressly states that “adhesive layer 34 . . . has an adhesive lining, where the adhesive layer 34 is sufficiently strong enough to bond with the longitudinal ends 12, 14.” Paragraph 40 further states that “adhesive lining 34 may be of other shapes and configurations as long as it sufficiently strong enough to bond with the inner 12 and outer ends 14.” In view of the portions of Appellant’s Specification discussed above, Appellant has the better position. We do not sustain the Examiner’s decision to reject claim 1 for lack of written description support. Indefiniteness The Examiner additionally determines that the same limitation from claim 1 that is rejected as lacking written description also renders claim 1 indefinite. Final Act. 4-5. Specifically, the Examiner determines that “the phase ‘an adhesive connected to the first longitudinal end of the first supply unit, and configured for adhering to a second longitudinal end of a second supply unit’ renders claim 1 to be vague and indefinite because it appears to contradict the drawings.” Id. at 4. After referencing Figure 4, the Examiner explains that “[i]t is unclear how an adhesive connects the first longitudinal end of the first supply unit to the second longitudinal end of the second Appeal 2020-006120 Application 13/566,659 6 supply unit when the Drawings show a sticker connecting the first supply unit to the second supply unit.” Id. at 4-5. Initially, we note that rather than identifying anything unclear in the claims, the Examiner appears to base the indefiniteness rejection on lack of written description support. As explained above, we do not agree that the claims lack written description support. Further, we are not apprised of anything unclear in the claims that warrants an indefiniteness rejection. We do not sustain the Examiner’s decision to reject claims 1, 4-6, 8, 26, 27, 34, 35, and 37 as indefinite. Obviousness - Claim 1 Appellant provides arguments for claim 1, and relies on those arguments for the patentability of dependent claims 4-6, 8, 11-17, 26, 27, 34, 35, and 37. See Appeal Br. 12-21, 23. As seen above, the Examiner provides two obviousness rejections for claim 1. Final Act. 5-9 (based on the combination of Shaw, Abba, Beck, and Harding), 19-22 (based on the combination of Shaw, Schutz, Beck, and Harding). Although Appellant addresses each rejection, the actual basis for each of the rejections is essentially unrebutted. In the first rejection, the Examiner finds that the combination of Shaw, Abba, Beck, and Harding teaches everything in claim 1 except the particular spacing of the adhesive from a transverse edge of the elongated web of material. Final Act. 5-8. The Examiner makes a similar finding with respect to the second rejection based on the combined teachings of Shaw, Schutz, Beck, and Harding. Id. at 20-22. Appellant does not dispute these findings or the rationale for combining those teachings. Appeal 2020-006120 Application 13/566,659 7 Appellant’s contentions focus on the particular spacing recited in claim 1 (“the adhesive is spaced by at least 1/4 of the transverse width from at least one of the transverse edges such that the at least 1/4 of the transverse width of the at least one of the transverse edges is free when the adhesive is adhered to the second supply unit”). In each rejection, the Examiner determines that the spacing from the transverse edge is a result-effective variable and the particular spacing recited in the claim would have been obvious as a matter of routine optimization. Final Act. 9, 223; Ans. 6, 11. The Examiner additionally determines that “such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art” (i.e., a matter of design choice). Final Act. 9, 22; Ans. 6, 8, 10-12, 14. That is, the rejection provides two bases for the obviousness determination of the particular spacing: 1) obvious as a matter of routine optimization; and 2) obvious as a matter of design choice. Appellant’s contentions focus on Harding. With respect to Harding, the Examiner finds that Harding discloses a sticker (634) comprising an adhesive surface (632) disposed adjacent to the longitudinal end of the first supply unit (652) configured to adhere to a second supply unit, wherein the sticker (634) is situated on the longitudinal end so that there is a transverse space (670) between the transverse edge and the sticker. Final Act. 8; see also id. at 21. As noted above, Appellant does not identify reversible error in the actual bases for the Examiner’s rejections. For example, Appellant does not dispute the findings regarding Harding noted 3 Appellant amended claim 1 after the Final Action to recite “1/4 of the transverse width” instead of “1/8 of the transverse width.” Appeal 2020-006120 Application 13/566,659 8 above, or that the specific spacing from the transverse edge is a result-effect variable that would have been obvious as a matter of routine optimization. Appellant contends that [t]he spacing of the Harding adhesive is not a mere design consideration and there is no motivation in the cited references to make such a modification since having the Harding adhesive very close to the edges is a critical requirement of the reference and increasing the spacing of the Harding adhesive from the edge would render the splice inoperative for its intended purpose. Appeal Br. 13. This is not persuasive because the Examiner does not propose modifying the spacing in Harding, itself. See Final Act. 8-9, 21-22. The remainder of Appellant’s contentions also focus on purported failures in modifications to Harding that are not the bases for the rejections. See Appeal Br. 13-22. Like the routine optimization rationale, the Examiner’s design choice rationale is also essentially unrebutted by Appellant. “[D]esign choice” is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function. In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995). Appellant fails to persuasively explain, or even allege, that its recited spacing solves any stated problem or is anything more than one of a number of arrangements one skilled in the art would have found obvious. See In re Dailey, 357 F.2d 669, 672-73 (CCPA 1966) (affirming design choice determination where “Appellants have presented no argument which convinces us that the particular configuration of their container is significant or is anything more than one of numerous configurations a person of Appeal 2020-006120 Application 13/566,659 9 ordinary skill in the art would find obvious for the purpose of providing mating surfaces in the collapsed container”). For at least these reasons, we are not apprised of error in the rejections of claims 1, 4-6, 8, 11-17, 26, 27, 34, 35, and 37. Obviousness - Claim 28 Claim 28 is independent and recites, among other things, that “the adhered connection between the first and second rolls comprises a longitudinal edge of the second longitudinal end of the second roll disposed substantially perpendicular to a longitudinal edge of the first longitudinal end of the first roll.” This is the only limitation addressed by Appellant. Appellant does not address any other finding or the rationale provided for combining the references applied in the rejection of claim 28. With respect to the disputed limitation noted above, the Examiner finds that “Helton disclose[s a] supply arrangement comprising a material (107) that turns 90 degrees as the material extends from the outer diameter of a first supply unit (101A) to the inner diameter of a second supply unit (101 B).” Final Act. 38 (citing Helton, 2:29-37, 3:30-31, 4:13-17, 4:25-37, Figure 4-6). The Examiner reasons that “[i]t would have been obvious . . . to have modified the supply arrangement of Schutz by incorporating the perpendicular connection between the first supply unit and the second supply unit since column 1 lines 51-53 of Helton states such a modification would allow for higher density of supply arrangement.” Id. Appellant contends that “Helton[’s] . . . 90° folds . . . are within a middle portion of a single, continuous piece of tape” and “do not provide any information to one of ordinary skill in the art that would be relevant to an orientation of two spliced ends of two different rolls of tape.” Appeal Br. Appeal 2020-006120 Application 13/566,659 10 22. Appellant contends that “Helton only discloses a single piece of tape and does not disclose any splicing, such that the reference provides no indication of a relationship between ends of different supply units.” Id. Simply stated, Appellant faults Helton for having multiple adjacent rolls formed from a continuous piece of tape, rather than a discrete piece of tape for each separate roll. That, however, does not address the findings made by the Examiner. Appellant’s contentions do not identify reversible error because, like the contentions in connection with claim 1, they do not address the actual bases for the Examiner’s rejection. See Final Act. 36-38; Ans. 15-16. There is no dispute regarding the actual findings or rationale provided by the Examiner. Appellant relies on the unpersuasive arguments discussed above for the patentability of claims 31-33, which depend from claim 28. Accordingly, we are not apprised of error in the rejection of claims 28, and 31-33. CONCLUSION The Examiner’s rejections under 35 U.S.C. § 112 are reversed. The Examiner’s rejections under 35 U.S.C. § 103 are affirmed. Appeal 2020-006120 Application 13/566,659 11 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 112(a) Written Description 1 1, 4-6, 8, 26, 27, 34, 35, 37 112(b) Indefiniteness 1, 4-6, 8, 26, 27, 34, 35, 37 1, 4, 6, 8, 11-17, 34, 35, 37 103 Shaw, Abba, Beck, Harding 1, 4, 6, 8, 11-17, 34, 35, 37 1, 4-6, 8, 11-17, 26, 34, 35, 37 103 Shaw, Schutz, Beck, Harding 1, 4-6, 8, 11-17, 26, 34, 35, 37 27, 28, 31, 33 103 Shaw, Schutz, Beck, Harding, Helton 27, 28, 31, 33 32 103 Shaw, Schutz, Beck, Harding, Helton, Ciani 32 Overall Outcome 1, 4-6, 8, 11-17, 26-28, 31-35, 37 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED