Brian C. Dais et al.

Patent Trials and Appeals Board

Nov 21, 2019

13631617 - (D) (P.T.A.B. Nov. 21, 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.
13/631,617 09/28/2012 Brian C. Dais J-5802 4461
28165 7590 11/21/2019
S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE, WI 53403-2236
EXAMINER
ATTEL, NINA KAY
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
11/21/2019 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):
mjzolnow@scj.com
selechne@scj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN C. DAIS, IMTIAZ A. MUSALIAR, BUNLIM LY,
JONATHAN DAVID HORN, PAMELA J. WEISENBERGER,
JOSE PORCHIA, CHARLES P. ALTHOFF, and ERICA EDEN COHEN
Appeal 2018-003724
Application 13/631,617
Technology Center 3700
Before JAMES P. CALVE, MICHELLE R. OSINSKI, and
JEREMY M. PLENZLER, 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 9–15 and 23–29. 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 S.C. Johnson &
Son, Inc. Appeal Br. 3.
Appeal 2018-003724
Application 13/631,617
2
CLAIMED SUBJECT MATTER
The claims are directed to a storage bag. Claims 9 and 23 are
independent. Claim 9, reproduced below, is illustrative of the claimed
subject matter:
9. A storage bag comprising:
(a) a first side wall;
(b) a second side wall connected to the first side wall so as
to form an interior of the bag with an opening to the interior;
(c) a first closure profile connected to first side wall and
positioned adjacent to the opening of the bag, the first closure
profile having a top edge and including a first interlocking
member and a second interlocking member that both extend
between a first end of the first closure profile and a second end
of the first closure profile, the first closure profile including a
plurality of dimples provided between the first interlocking
member and the second interlocking member of the first closure
profile, the first closure profile further forming a lip between the
first interlocking member and the top edge of the first closure
profile, with the lip comprising a single, continuous web
extending a substantially constant distance H1 from the first
interlocking member to the top edge of the first closure profile,
wherein the lip of the first closure profile extends the
substantially constant distance H1 along the length of the first
closure profile starting from the first end of the first closure
profile to the second end of the first closure profile;
(d) a second closure profile connected to the second side
wall and positioned adjacent to the opening of the bag, the second
closure profile having a top edge and including a first
interlocking member and a second interlocking member that both
extend between a first end of the second closure profile and a
second end of the second closure profile, the first interlocking
member of the second closure profile being configured to
interlock with the first interlocking member of the first closure
profile, and the second interlocking member of the second
closure profile being configured to interlock with the second
interlocking member of the first closure profile, the second
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Application 13/631,617
3
closure profile further forming a lip between the first interlocking
member and the top edge of the second closure profile, the
second closure profile being configured such that the lip
comprises a single, continuous web with (i) a first portion of the
lip extending a substantially constant distance H2 from the first
interlocking member to the top edge of the second closure profile
along a portion of the length of the second closure profile starting
from the first end, (ii) a second portion of the lip extending a
substantially constant distance H3 from the first interlocking
member to the top edge of the second closure profile along a
portion of the length of the second closure profile starting from
the second end, and (iii) a third portion of the lip being provided
between the first portion of the lip and the second portion of the
lip, with the third portion extending a substantially constant
distance H4 from the first interlocking member to the top edge
of the second closure profile; and
(e) an extended region provided at the top edge of the
second closure profile, the extended region being formed by at
least a region of the third portion of the lip of the second closure
profile that extends above the lip of the first closure profile, with
the distance H4 being greater than the distance H1, wherein the
extended region extends along a portion of the length of the
second closure profile that is greater than that of at least one of
the first portion of the lip of the second closure profile and the
second portion of the lip of the second closure profile, such that
the extended region provides a visual cue to a user as to where to
grasp the lips of the first and second closure profiles in order to
impart a rolling motion to the lips that facilitates separation of
the first and second closure profiles and opening of the bag, and
wherein the dimples of the first closure profile are formed
as a concave surface on the side of the first closure profile facing
the interior of the bag and a convex surface on the side of the first
closure profile on the outside of the bag in order to provide at
least one of a visual cue and a tactile feedback to a user when
interlocking the first interlocking member of the first closure
profile with the first interlocking member of the second closure
profile and the second interlocking member of the first closure
profile with the second interlocking member of the second
closure profile.
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Application 13/631,617
4

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Naya 5,369,847 Dec. 6, 1994
Rider 5,762,231 June 9, 1998
Miller US 2008/0063325 A1 Mar. 13, 2008
Ackerman US 2010/0303390 A1 Dec. 2, 2010
Fish US 2011/0044566 A1 Feb. 24, 2011

REJECTIONS
Claims 9–13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Naya, Rider, Ackerman, and Fish.
Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Naya, Rider, Ackerman, Fish, and Miller.
Claims 23–29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Naya, Rider, and Ackerman.
Claims 28 and 29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Naya, Rider, Ackerman, and Miller.
OPINION
Appellant presents arguments directed to independent claims 9 and
23, and relies on those arguments for the patentability of the claims
depending therefrom. Appeal Br. 12–25. Although claims 9 and 23 are
addressed in separate rejections, the findings and rationale disputed by
Appellant are the same in both rejections. See Final Act. 2–9, 11–18;
Appeal Br. 15–24. Appellant’s arguments focus on the differing heights of
the lips of the closure profiles recited in claims 9 and 23. The limitations at
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Application 13/631,617
5
issue are similar in claims 9 and 23, and Appellant’s arguments do not
distinguish between claims 9 and 23. For simplicity, our discussion focuses
on the lips recited in claim 9, with the understanding that discussion applies
equally to the similar features recited in claim 23.
Claim 9 is directed to a storage bag having “a first side wall” and “a
second side wall connected to the first side wall so as to form an interior of
the bag with an opening to the interior.” The “first side wall” includes “a
first closure profile” having a “lip” (hereinafter “the first lip”) at its end.
The “second side wall” includes “a second closure profile” and also has a
“lip” (hereinafter “the second lip”) at its end. The second lip has first and
second portions at ends thereof, and a third portion between the first and
second portions. The third portion of the second lip extends beyond a
portion of the first lip, forming an “extended region” (i.e., “the distance H4
being greater than the distance H1”). The claim does not specify how the
extent of the first and second portions (having distances H2, H3) of the
second lip relates to the extent (H1) of the first lip. The claim also does not
require any particular relationship between H2, H3, or H4. The “extended
region” is only defined as being “extended” relative to the first lip.
Appellant’s Figure 7 is reproduced below to illustrate the claim
limitations at issue.
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Application 13/631,617
6

Figure 7 is a view of the top end of Appellant’s bag. The Specification
explains that “the first lip 226 extends a substantially constant distance H1”
and the “third portion [of second lip 228] extends a distance H4.” Spec.
¶ 55. “[T]he distance H1 is less than the distance H4.” Id. ¶ 56. As
explained above, those features correspond to the disputed limitations in
claims 9 and 23. Although Figure 7 illustrates distances H2 and H3 of
second lip 228 being less than distance H1 of first lip 226, the claim does not
include such a requirement, as noted above.
Naya’s Figure 1 and an annotated version of Naya’s Figure 3 are
reproduced below.
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Application 13/631,617
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Figure 1 is a side view of the closure mechanism of Naya’s bag. Naya
explains that “one marginal grip portion 5 is formed shorter than the other
grip portion 6.” Naya 2:50–51.
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Application 13/631,617
8

The annotated version of Naya’s Figure 3 is a perspective view of Naya’s
bag depicting the closure mechanism of Figure 1 in use, and includes
annotations indicating the features the Examiner considers to correspond to
various claim elements, as well as our annotations indicating directions to
facilitate discussion.
The Examiner finds that Naya teaches a first closure profile forming a
lip 6 (corresponding to Appellant’s first lip) and a second closure profile
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Application 13/631,617
9
forming a lip 5 (corresponding to Appellant’s second lip), and that “the lip
[(5)] comprises a single, continuous web with (i) a first portion of the lip
extending a substantially constant distance H2 . . . [and] a second portion of
the lip extending a substantially constant distance H3.” Final Act. 3 (citing
Naya 2:15–68, 3:1–16, Figs. 1 and 3).2
The Examiner finds that “Naya fails to teach . . . the lip (5) of the
second closure profile having a third portion provided between the first
portion . . . and the second portion . . . with the third portion extending a
substantially constant distance H4 . . . greater than the distance H1.” Final
Act. 4. The Examiner finds that Rider teaches these missing limitations. Id.
at 4–5. Figures 1–4 of Rider are reproduced below.

2 Because the relevant portions of the rejection of claim 23 are similar, for
simplicity, we cite only to the rejection of claim 9.
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Figures 1 and 2 are front and top views, respectively, of Rider’s container.
Figures 3 and 4 are cross-sectional views of the closure of the container
shown in Figure 1 with the closure opened and closed, respectively.
The Examiner finds that Rider teaches a storage container having a
“first closure profile forming a lip (42) . . . extending a substantially constant
distance H1” and a “second closure profile forming a lip (26)” with “a first
portion of the lip extending a substantially constant distance H2 . . . and a
second portion of the lip extending a substantially constant distance H3.” Id.
at 4–5. The Examiner additionally finds that Rider teaches “a third portion
(18) extending between the first and second portions of the lip . . . extending
a substantially constant distance H4 . . . greater than the distance H1.” Id. at
5 (citing Rider 3:16–23, 38–41, 53–67, 4:1–8, Figs. 1–4 and 10). The
Examiner reasons:
It would have been obvious to one having ordinary skill in
the art at the time the invention was made to modify the bag of
Naya by configuring the second closure profile such that the lip
(5) comprises a third portion between the first and second
portions of the lip, wherein the third portion extends a
substantially constant distance H4 . . . greater than the distance
H1 as taught by Rider in order to provide the bag with an
additional means for distinguishing and separating the first side
surface and first lip from the second side surface and second lip.
Final Act. 5–6.
The Examiner acknowledges that Naya and Rider do not teach “the
third portion of the lip of the second closure profile . . . extending along a
portion of the length of the second closure profile . . . greater than that of at
least one of the first portion . . . and the second portion.” Final Act. 6.
However, the Examiner finds that
Rider teaches that a portion of a lip which extends a greater
distance from an interlocking member to a top edge of a closure
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Application 13/631,617
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profile than any other portion of either lip functions to provide a
user with a means for distinguishing and separating a . . . first
closure profile from a . . . second closure profile so as to promote
easy, intuitive opening of the container and/or to provide a user
with a visual means of determining where the container is to be
opened.
Id. The Examiner explains, for example, that “it would have been obvious
and further an obvious matter of design choice to further modify the
extended region of the lip to obtain the limitations as claimed” and “such
modifications would not alter any function of the second closure profile or
extended region, but rather would merely alter the appearance of the second
closure profile and extended region.” Id. at 6–7.
In response, Appellant contends that
(a) neither Naya et al. nor Rider, Jr. et al. discloses or suggests,
at least, an extended region provided at the top edge of a second
closure profile, the extended region being formed by at least a
region of a third portion of a lip of the second closure profile that
extends above a lip of a first closure profile, wherein the
extended region extends along a portion of the length of the
second closure profile that is greater than that of at least one of
the first portion of the lip of the second closure profile and the
second portion of the lip of the second closure profile, such that
the extended region provides a visual cue to a user as to where to
grasp the lips of the first and second closure profiles in order to
impart a rolling motion to the lips that facilitates separation of
the first and second closure profiles and opening of the bag and
(b) one of ordinary skill in the art would not have found it
obvious to combine the container of Rider, Jr. et al. with the
pouch of Naya et al.
Appeal Br. 14 (emphasis omitted). Framing the dispute in such a broad
characterization like this does not apprise us of error because it does not
address particular findings and rationale made by the Examiner. As
Appellant notes later in the brief, with respect to contention “(a)” above, the
Examiner does not rely on a single reference for the disputed limitations.
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See, e.g., id. at 16–21. Nor does Appellant dispute the Examiner’s actual
rationale for the combination of Rider’s teachings with those of Naya, as
asserted in contention “(b).”
Appellant does not dispute the Examiner’s findings regarding Naya or
that Rider’s third portion 18 extends between the first and second portions of
its lip or that third portion 18 extends a substantially constant distance
beyond the lip on the adjacent side of the bag, as explained above. Although
Appellant contends that “it would not have been obvious . . . to remove the
rigid rim (26) that is structurally attached to the cover (14) of the container
(10) of Rider . . . and attach the rim (26) in some manner to the top of the
pouch (14) of Naya,” Appellant later acknowledges that “[t]he final Office
Action asserts . . . that it is the ‘configuration’ of the lip of the container of
Rider . . . that is being used to modify the lip of the second closure profile of
Naya,” rather than a bodily incorporation of Rider’s structure. Appeal Br.
21–22 (emphasis omitted). Appellant’s subsequent contention that “it is
unclear how one of ordinary skill in the art would reconfigure the marginal
grip portions (5, 6) of the flexible fastener (F) of Naya . . . to comprise the
configuration of the edges of the cover (14) and the base (16) of the
container of Rider” is unpersuasive for the same reason. Id. at 22 (emphasis
omitted). That is, there is no meaningful dispute with respect to the
Examiner’s findings and rationale related to modifying the third portion of
the lip of Naya’s second closure profile 5 to extend in the y-direction beyond
the lip of first closure profile 6 (seen above in our annotated version of
Naya’s Figure 3).
The real dispute appears to be with the Examiner’s determination that
having the extent of the third portion of the lip of Naya’s second closure
profile 5 be greater in the x-direction than the first or second portions of that
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Application 13/631,617
13
lip is a matter of design choice. See Appeal Br. 20. Appellant’s contentions
in this regard are also unpersuasive. Appellant simply states that “the
size/extent of the extended region is not an obvious matter of design choice”
because “the extended region is configured (i) to lead a user to grasp the lips
at a center region of the bag where one of the lips extends above the other
lip, and (ii) to allow for the user to impart a rolling motion . . . to facilitate
the separation.” Id. As discussed above relative to Naya’s Figure 1, and not
disputed by Appellant, however, Naya already teaches one lip being longer
than another.
Appellant further disputes the Examiner’s determination of design
choice, alleging that “neither Naya . . . nor Rider . . . provides a reason or
motivation to modify a lip(s) of a storage bag to comprise the first, second,
and third portions, as well as the extended region, of the lip of the second
closure profile.” Id. As noted above, however, Appellant does not dispute
the Examiner’s finding regarding Rider’s extension 18 or the rationale
regarding modifying Naya’s bag based on that extension 18 (i.e., “in order to
provide the bag with an additional means for distinguishing and separating
the first side surface and first lip from the second side surface and second
lip”). Final Act. 6.
Based on the record before us, the Examiner has the better position
because we are not apprised of any meaningful functionality accomplished
by the recited length of the third portion relative to the first and second
portions. 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 ordinary skill in the art would find obvious for the purpose of providing
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14
mating surfaces in the collapsed container”). Appellant has not explained
adequately, nor pointed out where the Specification explains, that the length
of the third portion of the second lip in the x-direction has any bearing on the
ability of the third portion to serve as a visual cue and/or allow a user to
impart a rolling motion. In re Chu, 66 F.3d 292, 298–99 (Fed. Cir. 1995)
(“design 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).
Accordingly, we are not apprised of Examiner error in the rejection of
claims 9–15 and 23–29.
Moreover, to the extent a difference in height (y-direction) between
opposite lips with a larger extent at the central region is somehow better,
before the Examiner’s proposed modifications, Naya, itself, teaches a bag
having lips with differing heights (y-direction). Each of those lips extends
the entire length of the bag. That is, the length (x-direction) of the extended
region of the lip having the greater height (y-direction), which is lip 6 in
Naya, has the maximum possible length (i.e., the entire extent). Further,
although the Examiner’s proposed modification involves modifying Naya’s
lip 5, it could have proceeded in the opposite manner and involved
modifications to lip 6, which, as noted above, already extends beyond lip 5
(y-direction) along its entire length (x-direction). Under such a scenario, no
modification to the lips would even be needed to meet the relative height
limitations recited in claims 9 and 23 because lip 6 (second lip) already
extends beyond lip 5 (first lip) and there is no height relationship between
the various portions of the second lip recited in claims 9 and 23.
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15
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
9–13 103(a) Naya, Rider,
Ackerman, Fish
9–13
14, 15 103(a) Naya, Rider,
Ackerman, Fish,
Miller
14, 15
23–29 103(a) Naya, Rider,
Ackerman
23–29
28, 29 103(a) Naya, Rider,
Ackerman, Miller
28, 29
Overall
Outcome
9–15, 23–29

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