Walsh, Joseph C.

Patent Trials and Appeals Board

Nov 15, 2019

14085912 - (D) (P.T.A.B. Nov. 15, 2019)

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.
14/085,912 11/21/2013 Joseph C. Walsh R029 17130US.1 2292
26158 7590 11/15/2019
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
SEIF, DARIUSH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/15/2019 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):
BostonPatents@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

Appeal 2019-002079
Application 14/085,912
Technology Center 3700
____________

Before STEFAN STAICOVI, CHARLES N. GREENHUT, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1, 4–17, and 30–33. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellant is the “applicant” under 37 C.F.R. § 1.42(b) and identifies
Graphic Packaging International, LLC, as the sole real party in interest.
Appeal Br. 1.
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STATEMENT OF THE CASE
The Specification
The Specification’s disclosure relates to methods of forming cartons
and, more specifically, to heat-assisted formation of cartons. Spec. ¶3.
In general, one aspect of the disclosure is directed to a method of
at least partially forming a carton. The method includes
obtaining a blank comprising at least one fold line, heating an
interior surface of the blank along the at least one fold line to
form a heated fold line, and folding the blank about the heated
fold line.
Id. ¶4.
The Claims
Claims 1, 4–17, and 30–33 are rejected. Final Act. 1. Claims 18–29
are also pending but they are withdrawn from consideration. Id. Claims 1
and 30 are independent. Claim 1 is illustrative and reproduced below.
1. A method of at least partially assembling a carton
from a blank, the method comprising:
obtaining a blank comprising at least one fold line, the
blank comprising paperboard, an exterior surface having a
coating, and an interior surface free from the coating;
obtaining a heater;
positioning the blank comprising the at least one fold line
proximate the heater;
operating the heater, after positioning the blank
comprising the at least one fold line proximate the heater, and
heating the interior surface of the blank, the heating the interior
surface comprises heating the at least one fold line to form an at
least one heated fold line, during the heating the at least one
fold line is spaced apart from the heater; and
folding the blank, after heating the at least one fold line,
about the at least one heated fold line to form a partially
assembled carton, during the folding the blank is spaced apart
from the heater.
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Appeal Br. 18.
The Examiner’s Rejections
The rejections before us are:
1. claims 1, 4–17, and 30–33 as not enabled in violation of 35
U.S.C. § 112(a) (Final Act. 2);
2. claims 1, 4–17, and 30–33 as indefinite in violation of 35
U.S.C. § 112(b) (id. at 3);
3. claim 1 as unpatentable under 35 U.S.C. § 103 over Seiche2 (id.
at 4);
4. claims 1, 4–8, and 30–33 as unpatentable under 35 U.S.C.
§ 103 over Burnside3 and Seiche (id. at 6);
5. claim 9 as unpatentable under 35 U.S.C. § 103 over Burnside,
Seiche, and Striplin4 (id. at 11);
6. claims 10–14 as unpatentable under 35 U.S.C. § 103 over
Burnside, Seiche, and Rumberger5 (id. at 12);
7. claim 15 as unpatentable under 35 U.S.C. § 103 over Burnside,
Seiche, Rumberger, and Striplin (id. at 13);
8. claim 16 as unpatentable under 35 U.S.C. § 103 over Burnside,
Seicher, Rumberger, and Zinn6 (id. at 14); and
9. claim 17 as unpatentable under 35 U.S.C. § 103 over Burnside,
Seiche, Rumberger, and Hashinaga7 (id. at 15).

2 US 2012/0071312 A1, published Mar. 22, 2012 (“Seiche”).
3 US 4,979,932, issued Dec. 25, 1990 (“Burnside”).
4 US 3,227,352, issued Jan. 4, 1966 (“Striplin”).
5 US 3,158,073, issued Nov. 24, 1964 (“Rumberger”).
6 US 2,822,653, issued Feb. 11, 1958 (“Zinn”).
7 US 5,359,285, issued Oct. 25, 1994 (“Hashinaga”).
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DISCUSSION
Rejection 1—Lack of Enablement
The Examiner rejected the claims for lack of enablement, stating as
follows:
[T]he specification does not require or describe “operating the
heater, after positioning the blank comprising the at least one
fold line proximate the heater”, as newly amended into claims 1
and 30. It was Examiner’s understanding that the heater is
operated and the blank passes by the heater, contrary to the new
limitation, which seems to require the blank to be first positioned
proximate the heater prior to the heater being operated.
Final Act. 2. Appellant argues that the following excerpt from the
Specification enables the limitation in question: “As shown in FIG. 6, a
method 600 of at least partially forming a carton may include obtaining a
blank and applying heat to a surface of the blank along a fold line at step
601.” Spec. ¶36; Appeal Br. 33. We are persuaded by Appellant.
In the Answer, the Examiner provides his construction of the
limitation, stating: Paragraph 30 of the Specification “is contrary to the
subject ‘after’ limitation, which seems to require the blank to be first
positioned proximate the heater prior to the heater being operated.” Ans. 4.
This construction is erroneous. Claims 1 and 30 recite “operating the heater
after positioning the blank.” They do not recite, for example: not operating
the heater until after positioning the blank. In other words, the claims do
not preclude operating the heater before positioning the blank.
For the foregoing reasons, we reverse the enablement rejection of
claims 1, 4–17, and 30–33 under 35 U.S.C. § 112(a).
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Rejection 2—Indefiniteness
The Examiner rejected the claims as indefinite, stating the same
limitation (discussed above) “is unclear to Examiner because the metes and
bounds of the term ‘proximate’ are indefinite in this context.” Final Act. 3.
The Examiner added the following questions: “For example, must the entire
fold line be under the heater? Would just the leading edge of the fold line
suffice?” Id.
Appellant argues that a person of ordinary skill in the art would
understand the metes and bounds of “proximate” in the context of the claims
based both on the Specification and surrounding language in the claims
themselves. Appeal Br. 34. We are persuaded by Appellant.
The Specification illustrates a relatively close placement of heater 3
with respect to fold line 23. Spec. Figs. 2A, 2B; see also Spec. ¶29
(Discussing Fig. 2A and stating: “The blank 20 may be inserted into the
system 2 and arranged to travel proximate the heater 3 such that the fold line
23 is generally in registration with the heater 3.”). Further, claim 1 itself
further recites “heating the interior surface of the blank, the heating the
interior surface comprises heating the at least one fold line to form an at
least one heated fold line, during the heating the at least one fold line is
spaced apart from the heater.” In light of these disclosures, a person of
ordinary skill in the art would understand the metes and bounds of
“proximate” as used in the claims to be a distance between the heater and the
blank that forms a heated folded line in registration with the heater. In other
words, by not specifying the exact distance between the heater and the
blank, the claim is merely broad, not indefinite.
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For the foregoing reasons, we reverse the indefiniteness rejection of
claims 1, 4–17, and 30–33 under 35 U.S.C. § 112(b).
Rejection 3—Seiche
Claim 1 recites “an exterior surface having a coating, and an interior
surface free from the coating.” The Examiner concedes that Seiche does not
explicitly disclose this combination of limitations. See Final Act. 4–5
(“Seiche teaches . . . the blank comprising . . . an exterior surface having a
coating . . . . [However,] Seiche does not specifically teach . . . the interior
surface free from the coating.”).
The Examiner relies on the first sentence of paragraph 46 of Seiche as
disclosing coating an exterior surface of a paperboard blank. See Final
Act. 4. To be precise, however, Seiche does not disclose the exterior
surface, in particular, as having a polyethylene coating but rather more
generically describes the blank as a whole as having a coating. Seiche ¶46.
The relied upon sentence states: “The laminate 1 is usually provided with a
polyethylene coating, and this coating is at least partially melted.” Id.
To meet claim 1’s recitation of “an interior surface free from the
coating,” the Examiner first points out that the first sentence of paragraph 46
of Seiche employs the word “usually” and, thus, does not require a coating.
Final Act. 5. The Examiner next finds that Seicher’s coating is not critical to
formation of its heated fold line. Id. Finally, the Examiner provides a
logical reason why a person of ordinary skill in the art might not include a
coating, namely to save time or expense in applications where a coating is
not necessary. Id. at 6.
A person having ordinary skill in the art may be motivated to
have an interior free from a coating, for example, in cases where
the carton would store a non-liquid product or any product that
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would not require an interior coating. A person having ordinary
skill in the art would recognize that this would likely lead to a
more inexpensive implementation since the amount of coating
required would be cut in half.
Id. The error, however, is that the Examiner never shows why a person of
ordinary skill in the art would omit the coating on the interior surface but not
the exterior surface.
For the foregoing reasons, we reverse the rejection of claim 1 under
35 U.S.C. § 103 as unpatentable over Seiche.
Rejection 4—Burnside in View of Seiche
Rejection 4 was directed against claims 1, 4–8, and 30–33. Appellant
argues that the “Burnside in View of Seiche et al. Fails to Disclose Heating a
Fold Line” and “an Uncoated Interior Surface.” Appeal Br. 43, 45
(underlining omitted). Appellant additional argues that it would have not
been obvious to remove Bunrside’s “thermoplastic resin [i.e., coating] from
one or more surfaces thereof.” Id. at 47. Appellant implies that these
arguments are relevant to all of the claims in the instant rejection, but they
are not. Appeal Br. 43–45.
We group the rejected claims into two groups based on whether they
recite (or incorporate by reference) “an exterior surface having a coating,
and an interior surface free from the coating.”
Claim 1 does recite that limitation. Appeal Br. 50. Claims 4–8 and
32 ultimately depend from claim 1 and, therefore, incorporate it by
reference. Id. at 50–51.
Independent claim 30 recites “a blank having an inner surface, an
outer surface, the outer surface having a coating applied thereon.” Appeal
Br. 52. Unlike claim 1, claim 30 does not specify whether the interior
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surface is coated. Id. Claim 31 depends from claim 30 and likewise does
not specify whether the interior surface is coated. Claim 33 depends from
claim 30, but does specify that “the inner surface of the blank is devoid of
coating.” Thus, we group claim 33 with claims 1, 4–8, and 32 and discuss
them below separately from claims 30 and 31.
Claims 1, 4–8, 32 and 33
The Examiner concedes that Burnside, like Seiche, does not explicitly
disclose “an exterior surface having a coating, and an interior surface free
from the coating,” as recited in claim 1 and otherwise required by claims 4–
8, 32, and 33. See Final Act. 6 (“Burnside teaches . . . a blank comprising
. . . an exterior surface having a coating . . . . [However,] Burnside does not
teach the blank has an interior surface free from the coating.”).
The Examiner relies on Burnside’s express statement that its invention
is not limited to that which is specifically disclosed and extrapolates
therefrom to obtain the limitation in question:
Regarding the interior surface being free from the coating,
Burnside discloses “For this description, however, it is assumed
that the apparatus is adapted to produce boxes coated with a
thermoplastic resin that are sealed without any build-up or loose
deposits of the resin within the finished box. It will be obvious,
however, that other boxes can be formed utilizing this invention
even though the requirements for the application are not so
strict.” (col. 2, lines 44–51). Therefore, it would have been
obvious to a person having ordinary skill in the art, at the time
the invention was made, to apply the method of Burnside in view
Seiche to blanks having coating only the outer surface, since the
method of partially forming a carton does not require the inner
surface to have a coating. . . .
A person having ordinary skill in the art may be motivated to
have an interior free from a coating, for example, in cases where
the carton would store a non-liquid product or any product that
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would not require an interior coating. A person having ordinary
skill in the art would recognize that this would likely lead to a
more inexpensive implementation since the amount of coating
required would be cut in half.
Final Act. 7.
These findings do not support a prima facie case of obviousness.
First, the fact that Burnside contemplates other—not specifically
described—embodiments does not provide a specific enough reason for why
a person of ordinary skill would have decided to modify Burnside
specifically by removing its coating, let alone by removing the coating only
from the interior surface. The Examiner’s statement that a person of
ordinary skill in the art would be motivated to omit the interior coating if it
were not required in order to save money is perfectly logical. However, the
Examiner has not provided a reason with rational underpinnings why the
skilled person would, under such a scenario, not also omit the coating from
the exterior surface. More specifically, the Examiner has not provided a
reason for why the skilled person would, “in cases where the carton would
store a non-liquid product,” omit the interior surface coating but retain the
exterior surface coating.
For the foregoing reasons, we reverse the rejection of claims 1, 4–8,
32 and 33 over Burnside and Seiche.
Claims 30 and 31
For these claims, Appellant’s relevant argument is that “Burnside in
View of Seiche et al. Fails to Disclose Heating a Fold Line.” Appeal Br. 43.
For the substance of Appellant’s argument, Appellant directs us to
Section III(A) of the Appeal Brief. Id. There, Appellant argues that Seiche
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fails to disclose, or render obvious, heating an existing fold line (e.g., one
that has been scored prior to heating). Appeal Br. 37–39.
Seiche discloses heating to form a fold line. Seiche ¶7 (“at least one
area intended for the preparation of a fold line is subjected to heat”), Figs. 1–
4. Seiche additionally discloses that, “[a]ccording to a variant of the
method, mechanical scoring is also carried out in the area of the fold line in
addition to the thermal treatment.” Id. ¶30. Based on at least these
teachings, the Examiner determined:
[I]t would have been obvious to a person having ordinary skill in
the art, at the time the invention was made, to modify the method
of Seiche, by applying the method to a blank that already has a
fold line, as suggested by Seiche, since Seiche specifically
discloses that mechanical scoring (i.e. forming of fold lines) may
also be carried out in the area of the fold line in addition to the
thermal treatment (i.e. generating a heated fold line), and a
person having ordinary skill in the art would understand based
on Seiche’s teachings, splitting the bonds among the cardboard
fibers by heating in the vicinity of such a fold line would promote
folding about the fold line.
Final Act. 5. This is a prima facie case of obviousness.
Appellant argues that Seiche’s teachings at paragraph 30 of optionally
carrying out mechanical scoring, in addition to the thermal treatment, would
be understood by the skilled person as limited to carrying out mechanical
scoring only after heat forming a folding line. Appeal Br. 37–39. Appellant
relies on the Declaration (dated Oct. 19, 2017) of the inventor, Joseph C.
Walsh, to support those arguments. Id. at 35–37. Appellant’s arguments are
not persuasive. Seiche itself is the most pertinent evidence regarding what
Seiche teaches. It explicitly teaches mechanical scoring “in addition” to heat
treatment and, thus, combining the two. Seiche ¶30.
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Mr. Walsh’s purported reason for why a skilled person would read
into that broad disclosure a specific requirement of heating first and scoring
later (i.e., because the scoring would compress fibers, thereby reducing the
efficacy of any subsequent heat treatment) is not persuasive. See Walsh
Decl. ¶9. Mr. Walsh cites no third party or documentary evidence to support
his opinion as to what happens when a mechanically scored paperboard fold
line is heated. Additionally, we agree with the Examiner, that his
Declaration must be given less weight than that of an uninterested person.
See Ans. 4–5 (citing Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 294 (Fed. Cir. 1985). Moreover, mechanical scoring is not
limited to compressing Seiche’s laminate 1, as Mr. Walsh asserts (see Decl.
¶9, and a skilled artisan would readily know that mechanical scoring would
also include making cuts into laminate 1. Mr. Walsh has not adequately
explained why cutting the fibers in Seiche’s laminate 1 would reduce the
efficacy of any subsequent heat treatment.
Appellant has not apprised us of error in the rejection of claims 30 and
31 over Burnside and Seiche, and we therefore affirm it.
Rejections 5 Through 9
These rejections are collectively of claims 9–17, all of which
ultimately depend from claim 1. Appeal Br. 51. In these rejections, the
Examiner employs additional references beyond Burnside and Seiche to
meet limitations recited by claims 9–17. Final Act. 11–15. The Examiner
does not rely on these additional references in a way that would cure the
deficiency in the rejection of claim 1 over Burnside and Seiche. Id.
Accordingly, we reverse the obviousness rejections of claim 9–17.
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SUMMARY
Claims
Rejected
35 U.S.C. Basis Affirmed Reversed
1, 4–17, 30–
33
§ 112(a) Enablement 1, 4–17, 30–
33
1, 4–17, 30–
33
§ 112(b) Indefiniteness 1, 4–17, 30–
33
1 § 103 Seiche 1
1, 4–8, 30–
33
§ 103 Burnside, Seiche 30, 31 1, 4–8, 32,
33
9 § 103 Burnside,
Seiche, Striplin
9
10–14 § 103 Burnside,
Seiche,
Rumberger
10–14
15 § 103 Burnside,
Seiche,
Rumberger,
Striplin
15
16 § 103 Burnside,
Seiche,
Rumberger, Zinn
16
17 § 103 Burnside,
Seiche,
Rumberger,
Hashinaga
17
Overall
Outcome
30, 31 1, 4–17, 30–
33

AFFIRMED-IN-PART