BEMIS COMPANY, INC.

Patent Trials and Appeals Board

Jul 6, 2020

2019006759 (P.T.A.B. Jul. 6, 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.
15/123,117 09/01/2016 Julio Salvador 20881-US 2732
30482 7590 07/06/2020
BEMIS COMPANY, INC.
Office of Intellectual Property Counsel
P.O. Box 669
Neenah, WI 54957
EXAMINER
ATTEL, NINA KAY
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
07/06/2020 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):
legal@bemis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JULIO SALVADOR
____________

Appeal 2019-006759
Application 15/123,117
Technology Center 3700
____________

Before JOHN C. KERINS, WILLIAM A. CAPP, and LEE L. STEPINA,
Administrative Patent Judges.

CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 4–6, 9–11, 14–19, and 21–23 as unpatentable under 35
U.S.C. § 103 over Davis (US 3,375,969, iss. Apr. 2, 1968), Tucker
(US 2012/0057811 A1, pub. Mar. 8, 2012), and Snyder (US 1,671,050,
iss. May 22, 1928).2 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 Bemis Company, Inc. as the applicant
and real party in interest. Appeal Br. 2.
2 Grounds of rejection of certain claims under 35 U.S.C. § 112 have been
withdrawn by the Examiner. Ans. 3.
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THE INVENTION
Appellant’s invention is a bread bag. Spec. ¶ 1. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A double-bottom bread bag having an open mouth, an
opposing bottom and a width, comprising:
a. an outer web comprising a heat-fusible flexible thermoplastic
film, the outer web having a first side edge, an opposing
second side edge and folded upon itself thereby defining:
i. a front panel having a length;
ii. a back panel having a length;
iii. an inward-facing cross-sectional gusset opposite the open
mouth and centered along the width of the bag which
joins the front panel to the back panel and forms an outer
bottom portion of the bag;
b. an inner web comprising a heat-fusible flexible thermoplastic
film, the inner web having a thickness of at least 20 microns,
a first side edge, an opposing second side and folded upon
itself thereby defining:
i. a front panel having a length which is less than the length
of the front panel of the outer web;
ii. a back panel having length which is less than the length of
the back panel of the outer web;
iii. an inward-facing cross-sectional gusset opposite the open
mouth and centered along the width of the bag which
joins the front panel to the back panel and forms an inner
bottom portion of the bag;
c. a first side-seam affixing the first side edge of both the inner
and outer webs together, and affixing the front and back
panels of the outer web together along the first side edge;
d. an opposing second side-seam affixing the opposing second
side edge of both the inner and outer webs together, and
affixing the front and back panels of the outer web together
along the opposing second side edge; and
e. wherein the inward-facing cross-sectional gussets of both the
inner and outer webs expand to form a square or rectangular
cross-sectional bag bottom upon receiving a material to be
packaged.
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Application 15/123,117
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OPINION
Appellant argues claims 1, 4–6, 9–11, 14–19, and 21–23 as a group.
Appeal Br. 7–10. Claim 1 is representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Davis discloses the invention substantially as
claimed except for a 20 micron inner web that is shorter than the outer
panels of the bag. Final Act. 5. The Examiner relies on Tucker and Snyder
as disclosing an inner reinforcing web to mitigate against failure of the
bottom of the bag due to the force of gravity. Id. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
time the invention was made to modify Davis with an inner reinforcing web
as taught by Tucker and Snyder. Id. at 8. According to the Examiner, a
person of ordinary skill in the art would have done this to reinforce the
bottom of the bag. Id.
Appellant initially argues that the claimed bread bag inhibits moisture
concentration on the bottom of the bag, which is where labeling and
advertisements are placed. Appeal Br. 7. According to Appellant,
[t]he claimed bag provides a superior appearance over previous
bread bags. The location of the inner web is important for
providing the improvements since the bottom gusset of the bag
is the main advertisement for the bread as it is typically placed
on the retail shelf, thus of utmost importance from a visual
aspect.
Id.
There is no limitation in claim 1 directed to moisture resistance or the
appearance of labeling or advertising placed on the bottom of the bag.
Claims App. Appellant’s argument is not commensurate with the scope of
the claim and, therefore, is unpersuasive.
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Appellant next challenges the Examiner’s rationale for combining the
prior art in the manner proposed in the rejection. Appeal Br. 7. Appellant
argues that, although Davis may be directed to a bread bag, Tucker and
Snyder are directed to “heavy duty” bags, such as trash can liners. Id. at 6.
Appellant argues that a skilled practitioner would not have made the
proposed combination to strengthen the bottom of the bread bag because the
practitioner would not have recognized that it would have resulted in an
improved product. Id. at 8.
As applied to the present case, deficiencies in current bread
bags that would prompt one skilled in the art to apply the
teachings of reinforcement have not been established as factual.
The office action cites no evidence that a need for reinforcing
bread bags would be recognized by one skilled in the art. Bread
bags today (without reinforcement) provide adequate durability
and no motivation exists to add additional complexity to the
product.
Id. at 8–9.
In response, the Examiner points out that an implicit motivation to
combine exists when the improvement is technology-independent and the
combination of references results in a product that is more desirable. Ans. 5.
In reply, Appellant argues that there is no implicit motivation here
because conventional bread bags do not require additional strength in the
first place. Reply Br. 3.
Moreover, adding an ‘improvement’ such as strength to
something that does not need more strength will not result in “a
product or process that is more desirable.” . . . [E]xcept for the
discovery of improved aesthetics, a bread bag with a second
bottom is less desirable than a single bottom bread bag.
Id.
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Appellant’s arguments against the combinability of the references are
not persuasive. It does not matter that the Examiner’s reason for combining
is increased strength, whereas Appellant’s reason for improving the bag is
aesthetics. It is well settled that a skilled artisan need not be motivated to
combine the prior art for the same reason contemplated by an inventor. In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006).
The mere prospect that Appellant believes that conventional bread
bags are already strong enough does not undermine the Examiner’s rationale
for combining the prior art. It is well settled that the mere fact that the prior
art may already perform adequately does not preclude a skilled artisan from
seeking to improve upon it. See DyStar Textilfarben GmbH & Co. v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (explaining that the desire
to enhance commercial opportunities by improving a product or process is
universal—and even common-sensical). Appellant’s position that
conventional bags are already “strong enough” and, therefore, could not be
improved by reinforcement, is mere attorney argument that is entitled to
little, if any, weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(explaining that attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value).
As persons of scientific competence in the fields in which they work,
examiners are responsible for making findings, informed by their scientific
knowledge, as to the meaning of prior art references to persons of ordinary
skill in the art and the motivation those references would provide to such
persons. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). Absent legal
error or contrary factual evidence, those findings can establish a prima facie
case of obviousness. Id. The Examiner’s stated rationale is sufficient to
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support the rejection. See In re Kahn, 441 F.3d at 988 (requiring an
obviousness conclusion to be based on explicit articulated reasoning with
rational underpinning) cited with approval in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). Appellant presents neither evidence nor
persuasive technical reasoning to rebut the Examiner’s well-reasoned
determination that reinforcing the bottom of a bread bag is a product
improvement.
Next, Appellant argues that the prior art fails to disclose an inner web
of at least 20 microns. Appeal Br. 7. Appellant argues that Tucker discloses
an inner web of only about 15 microns. Id.
In response, the Examiner states that Tucker discloses a reinforcing
strip that may comprise the same materials as its sidewalls and, in addition,
may be of the same or different thickness. Ans. 11 (citing Tucker ¶ 65).
The Examiner further finds that the sidewalls of Tucker’s bag may have a
thickness of about 13 to 36 microns. Id. at 11–12 (citing Tucker ¶ 67).
In reply, Appellant argues that the Examiner fails to consider the
teachings of Tucker “as a whole.” Reply Br. 5. Appellant directs our
attention to a different passage in paragraph 67 of Tucker as teaching that
the inner web “should be” 15 microns or less. Id. at 5–6.
Tucker is directed to a bag with reinforcing features. Tucker,
Abstract. The Examiner’s findings that Tucker’s reinforcing strip may have
the same thickness as its sidewalls and that such sidewalls may be from
about 13 to 36 microns thick is supported by the record before us. Tucker
¶¶ 65, 67.
Elsewhere in paragraph 67, Tucker discloses that its single layer
reinforcing strip 130 “may” have a thickness of up to about 15 microns. Id.
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at ¶ 67. The operative word in this passage is “may.” Contrary to
Appellant’s misrepresentation of the record before us, Tucker does not state
that it “should” be only 15 microns. Id. It certainly does not teach that it
“must” be less than 20 microns. Id. The fact that, in one passage, Tucker
discloses a reinforcement strip thickness that “may” be 15 microns does not
contradict the Examiner’s determination that it “may” also be 20 microns.
The Examiner’s findings of fact are supported by a preponderance of
the evidence and the Examiner’s legal conclusion of unpatentability is well-
founded. Accordingly, we sustain the Examiner’s unpatentability rejection
of claims 1, 4–6, 9–11, 14–19, and 21–23.
CONCLUSION
Claims
Rejected
§ Reference(s) Affirmed Reversed
1, 4-6, 9-11,
14-19, 21-23
103 Davis, Tucker, Snyder 1, 4-6, 9-11,
14-19, 21-23

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED