Ex Parte 7544403 et al

Patent Trial and Appeal Board

Mar 19, 2013

95001640 (P.T.A.B. Mar. 19, 2013)

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.
95/001,640 06/02/2011 INV001 7544403 63833-251 4903
32642 7590 03/19/2013
STOEL RIVES LLP - SLC
201 SOUTH MAIN STREET, SUITE 1100
ONE UTAH CENTER
SALT LAKE CITY, UT 84111
EXAMINER
GELLNER, JEFFREY L
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/19/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

GRAPHIC PACKAGING INTERNATIONAL, INC.
Requester, Appellant

v.

EXOPACK-TECHNOLOGY, LLC.
1

Patent Owner, Respondent
____________________

Appeal 2013-002432
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Patent US 7,544,403 B2
2

Technology Center 3900
____________________

Before LINDA E. HORNER, DANIEL S. SONG and
KEN B. BARRETT, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1
Exopack-Technology, LLC. is the Patent Owner and the real party in
interest (Respondent Brief of Patent Owner (hereinafter "Resp. Br.") 2).
2
Patent US 7,544,403 B2 (hereinafter "'403 patent") issued June 9, 2009 to
Hartzell et al.
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STATEMENT OF THE CASE
Claims 1-5, 10-12 and 19-21 were initially the subject of the appeal
but claims 1-5 and 10-12 were canceled by an amendment (see Patent
Owner's Respondent Brief (hereinafter "Resp. Br.") 2, 3) entered July 1,
2012. Thus, only claims 19-21 are subject of the present appeal. The
Requester appeals under 35 U.S.C. §§ 134 and 315 from the Examiner's
refusal as set forth in the Right of Appeal Notice
3
to adopt certain rejections
proposed by the Requester, and relies on its Appeal Brief (hereinafter "App.
Br.") and Rebuttal Brief (hereinafter "Rebut. Br.") in support of its positions.
The Patent Owner relies on a Respondent Brief in support of the Examiner's
decision. We have jurisdiction under 35 U.S.C. §§ 134 and 315.
The following proceedings have been identified as being related to
subject '403 patent (App. Br. 2; Resp. Br. 2):
1. Reexamination Control 95/001,638 (Appeal 2013-000116) for
U.S. Patent No. 7,090,904 which issued from a continuation-in-part
application of the application that issued as the subject '403 patent;
2. Reexamination Control 95/001,639 (Appeal 2013-000117) for
U.S. Patent No. 6,979,482 which issued from an application parent to the
continuation application that issued as the subject '403 patent; and
3. Exopack-Technology, LLC v. Graphic Packaging Holding Co.
et al., Civil Action No. 7:11-cv-00337-TMC (D.S.C.) in which the subject
'403 patent, and related U.S. Patent Nos. 6,979,482 and 7,090,904 have been

3
The Examiner's Answer mailed July 19, 2012 merely incorporates by
reference the Right of Appeal Notice (hereinafter "RAN") mailed March 9,
2012, and thus, we cite to the RAN herein.
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asserted. This legal action has been stayed pending the reexamination
proceedings for the asserted patents.
Furthermore, an oral hearing with the representatives of the Requester
and the Patent Owner was held before the Patent Trial and Appeal Board on
January 9, 2013, the transcript of which was entered into the electronic
record on February 19, 2013.
We AFFIRM the Examiner's refusal to adopt the proposed rejections.

THE INVENTION
The '403 patent is directed to a multiwall bag having a slider zipper
and fin combination (Abstract). Claim 19 is the sole independent claim on
appeal and it reads as follows (Claims Appendix, italics added):
19. A tamper-evident closure for a bag that comprises a tube
having at least one layer of polymeric material, the closure
comprising:
a first strip and a second strip at a first end of the bag, the
first and second strips configured to transition between an open
strip position in which the first and second strips are separated
from each other and a closed strip position in which the first
and second strips are in abutting contact with each other to
thereby form a strip seal; and
a bag seal zone between a second end of the bag and the
first and second strips, wherein the second end of the bag is
opposite the first end of the bag, wherein the bag seal zone is
closer to the first end of the bag than to the second end of the
bag, and wherein the bag seal zone comprises an inner surface
of a front wall region of the tube in abutting contact with an
inner surface of a back wall region of the tube,
wherein the at least one layer of polymeric material
comprises the abutting inner surfaces of the front and back wall
regions, and wherein the abutting inner surfaces comprise a heat
seal,
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wherein the bag seal zone is configured to transition from
an initial closed orientation to an open orientation without
returning to the closed orientation, and wherein the heat seal
allows the inner surfaces of the front wall and back wall regions
to peelingly separate and unseal the inner surfaces of the front
wall and back wall regions,
wherein the bag seal zone, when in the closed orientation,
acts as a stop to prevent product loaded into the bag from
reaching the first end of the bag and continues after loading to
substantially prevent movement of product from a position
between the second end of the bag and the heat seal to a
position between the heat seal and the first end of the bag,
wherein the closure further comprises a fin member that
comprises a pair of fin strips and a fin seal zone that is
associated with and positioned between the pair of fin strips,
wherein the fin seal zone can be separated to provide access to
inner contents of the bag, and
wherein the fin member is attached to the bag seal zone.

PROPOSED REJECTIONS NOT ADOPTED
1. Claims 19-21 under 35 U.S.C. § 103(a) as unpatentable over
Sullivan
4
in view of Hustad
5
and St. Phillips.
6

2. Claims 19-21 under 35 U.S.C. § 103(a) as unpatentable over
Hogan
7
in view of Hustad and St. Phillips.

ISSUES
1. Whether the bag disclosed in Sullivan satisfies the limitation
"the fin member is attached to the bag seal zone."

4
U.S. Patent No. 4,637,063 issued to Sullivan et al. on January 13, 1987.
5
U.S. Patent No. 5,456,928 issued to Hustad et al. on October 10, 1995.
6
U.S. Patent No. 5,964,532 issued to St. Phillips et al. on October 12, 1999.
7
U.S. Patent No. 6,805,485 B2 issued to Hogan et al. on October 19, 2004.
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2. Whether the Requester has established obviousness of the
claimed bag closure having a fin seal zone based on its suggested
combination of Hogan in view of Hustad and St. Phillips.

PRINCIPLES OF LAW
Claims are to be given their broadest reasonable interpretation
consistent with the specification, reading the claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). This
is the standard for claim interpretation in both original examination and re-
examination. See In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
If a proposed modification would render the prior art invention being
modified inoperable for its intended purpose, then there may be no
suggestion or motivation to make the proposed modification. See In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984); see also In re Schulpen, 390
F.2d 1009, 1013 (CCPA 1968); In re Sponnoble, 405 F.2d 578, 587 (CCPA
1969).

FINDINGS OF FACT
1. A. Annotated Figures 5 and 7 of the '403 patent are reproduced
below as provided by the Patent Owner and have annotations of
certain reference numerals (Resp. Br. 10).
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FIG. 7
Figure 5 shows a fragmentary perspective view of multiwall
bag 20 with a bag seal zone 21 to which a combination having a fin
member 22, a zipper track 24, and a zipper block 34 is connected (col.
4, ll. 7-10, 58-62). Figure 7 is a fragmentary sectional view of the
zipper/fin member combination connected to the bag seal zone 21, the
fin member having fin strips 28, 29 (col. 4, ll. 15-18; col. 5, ll. 31-32).

B. The specification of the '403 patent states "[t]he fin member is
formed of a plastic material and is connected to the bag seal zone."
(Col. 2, ll. 43-44).

C. The specification of the '403 patent also states "[a] combination
of a fin member, a zipper track connected to the fin member, and a
zipper block connected to the zipper track are connected to or attached
to the bag seal zone of bag." (Col. 3, ll. 31-34).

D. The specification of the '403 patent also states:
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FIG. 5 is a fragmentary perspective view of a tube body
with a bag seal zone being connected to a slider zipper and fin
combination according to an embodiment of the present
invention;

FIG. 6 is an enlarged perspective fragmentary view of a
slider zipper and fin combination connected to the bag seal zone
of a multiwall bag according to an embodiment of the present
invention[.]
(Col. 4, ll. 7-14).

E. As to Figures 5 and 6, the specification of the '403 patent states:
As shown in FIGS. 5 and 6, the fin member 22 is formed
of a plastic material and is connected to or attached to the bag
seal zone 21. This connection or attachment, for example, can
be on the outer surface of the outer tube 35 such as by use of an
adhesive material as illustrated or by attachment to one of the
inner layer 41 of the inner tube 37 or to any layers 42, 47, 48
therebetween (see FIGS. 2, 5 and 7).
(Col. 5, ll. 20-26, emphasis added).

F. The specification of the '403 patent further states:
The combination of the fin member, the zipper track, and
the zipper block can be connected to the bag seal zone 21 by
several methods. Such methods can include at least one of the
following: applying an adhesive material between inner
surfaces of the fin member 22 and outer surfaces of the tube
body 40 in the bag seal zone 21, adhering the fin member 22 to
the tube body 40 between the at least one polymeric layer 41
and the at least one paper layer 46, and adhering the fin member
22 to inner surfaces of the tube body 40. Other methods for
connected the combination to the bag seal zone 21 will be
known of ordinary skill in the art and are to be considered
within the scope of the present invention.
(Col. 8, l. 65-col. 9, l. 9, emphasis added).
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G. Figures 10 and 11 of the '403 patent are reproduced
below:

Figure 10 is a fragmentary perspective view of a multiwall bag
including fin member 22 having a fin seal zone positioned between
the pair of fin strips 28, 29, the fin seal including a score line 50 (col.
4, ll. 26-29; col. 7, ll. 18-24; Fig. 10). Figure 11 shows the multiwall
bag of Figure 10 being opened (col. 4, ll. 30-33; Fig. 11).

H. With respect to Figures 10 and 11, the specification of the '403
patent further discloses that:
The fin member 22 of the zipper and fin combination can
include a fin seal zone associated with and positioned between
the pair of fin strips 28, 29 and positioned adjacent the open end
31 of the outer tube 35 proximal to the zipper track 24. In all
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embodiments of the present invention, the fin seal zone
preferably includes a score line 50 that is positioned between
the fin strips 28, 29, as illustrated in FIGS. 10 and 11. The score
line 50 ensures that an initial opening of the zipper track 24
allows the fin seal zone to be readily separated in the proper
location to provide access to the filling material and inner
contents of the bag 20.
(Col. 7, ll. 18-28).

2. A. Sullivan discloses a reclosable bag with a sealed laminated liner
(Title; Abst.). Figures 4 and 6 of Sullivan are reproduced below.

FIG. 4 FIG. 6
Figure 4 of Sullivan shows a sectional view of a bag including a
wall panel 18 and a plastic liner 21 having a hermetic seal 24 (col. 2,
ll. 22-23, 39-42, 57-62; col. 2, l. 66-col. 3, l. 4; col. 3, ll. 14-19).
Figure 4 also shows a top closure 25 with a zipper 26, slider 27, and
attachment flanges 29, 32 that secure the top closure 25 to the wall
panel 18 via adhesive 30, 33 (col. 3, ll. 48-59). Figure 6 of Sullivan
shows a perspective view of bag body 17 with the wall panel 18, the
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liner 21 being spot sealed to the inside paper layer of the bag body 17
via adhesive spots 21a (col. 3, ll. 36-42).

B. Sullivan also states:
In order to avoid any tearing loose of fibers from the
contiguous paper layer of the bag during manipulations of the
liner 21, the liner is maintained free from the paper throughout
at least its upper primary closure portion. For maximum
assurance against fiber contamination, only the lower end
portion of the liner 21 may be spot sealed to the inside paper
layer of the bag body as by means of adhesive spots 21a (FIG.
6) (such as a starch/dextrine glue) similarly as the layers of the
bag body may be tacked in order to avoid displacement during
bottom end filling of the bag.
(Col. 3, ll. 32-42).

C. Sullivan further states:
In a preferred construction, the top closure 25 comprises
a zipper 26 having a slider 27 for manipulating the same and
equipped with stringers 28. One of the stringers 28 is
adhesively attached to an attachment flange 29 which in turn is
attached as by means of adhesive 30 to the top end of one of the
bag panels 18. The other stringers 28 is attached as by means of
adhesive to a return bent flange 31 of an attachment flange 32
of the closure 25 and which is attached as by means of adhesive
33 to the top end portion of the other of the wall panels 18 of
the bag body.
(Col. 3, ll. 48-59).

3. A. Hogan discloses a gusseted reclosable bag with a slider-
operated zipper (Title; Abst.). Figures 1 and 2 of Hogan are
reproduced below.
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Figure 1 of Hogan shows a perspective view of a reclosable
gusseted bag 10 having walls 12, 14 with free end portions 22, 24,
expanding side gussets 18, 20, zipper 26 positioned outside of the free
end portions 22, 24, and a peel seal 36 that joins the free end portions
22, 24 of the walls (col. 3, ll. 41-44; col. 3, l. 63-col. 4, l. 5; col. 4, ll.
13-25; col. 5, ll. 45-48; Fig. 1). Figure 2 of Hogan shows a
perspective view of the reclosable gusset bag 10 of Figure 1 wherein
the folded gusset 20 is expanded to form a pouring spout (col. 3, ll.
44-46; col. 5, ll. 55-59; Fig. 2).
B. Hogan states that "[a]fter the zipper 26 has been fully opened
and the peel seal 36 has been ruptured, the inwardly folded gusset 20
adjacent the separated ends of the zipper parts can be inverted, as
shown in FIG. 2, to form a spout for pouring out the contents of the
bag." (Col. 5, ll. 55-59).
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C. Hogan states that "[t]here is a need for alternative designs of
gusseted bags having slider-operated zippers in which portions of the
folded gussets are not captured between the zipper profiles, thereby
allowing smooth uniform sliding of the slider along its entire run."
(Col. 2, ll. 26-30).
D. Hogan also states that "[n]o portion of either gusset 18 or 20 is
captured between the profiled closure members when the zipper 26 is
closed." (Col. 4, ll. 32-36).

4. St. Phillips discloses a reclosable package having a tamper
evident feature (Title; Abst.). Figures 1, 4 and 6 of St. Phillips are
reproduced below.

FIG. 1 FIG. 4 FIG. 6
Figure 1 of St. Phillips is a sectional view of the mouth portion
of the package showing wall panels 16, 18 and a tamper evident
feature 12 formed by fin portions 28, 34 that are joined at tear area 38
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below a reclosable closure arrangement 14 (col. 2, ll. 22-24; col. 2, l.
58-col. 3, l. 9). Figure 4 of St. Phillips shows a sectional view of an
alternative embodiment wherein the wall panels 46, 48 are sealed at a
pleat that forms a tamper proof feature 42 having an area of weakness
70 (col. 2, ll. 34-37; col. 4, ll. 2-15). Figure 6 of St. Phillips shows yet
another embodiment wherein the first and second fin portions 60, 66
are coextruded with the respective wall panels 46, 48 to provide an
area of weakness 70 (col. 2, ll. 44-47; col. 4, ll. 37-41).

ANALYSIS
Preliminarily, we again observe that claims 1-5 and 10-12 have been
canceled by an amendment. Correspondingly, the various rejections of these
claims as proposed by the Requester are moot. The arguments submitted by
the Requester in its Appeal Brief with respect to these claims are likewise
moot except to the extent that the Requester relies on such arguments to
address claims 19-21. Furthermore, only those arguments actually made by
the Requester have been considered and arguments that could have been
made but were not made are deemed to be waived. See 37 C.F.R.
§ 41.67(c)(1)(vii).

Proposed Rejection 1
The Requester asserts that the Examiner erred in refusing to adopt the
proposed rejection of claims 19-21 as obvious over the combination of
Sullivan, Hustad and St. Phillips (App. Br. 19-23). The Requester asserts
that Sullivan discloses every limitation of claim 19 except for the heat seal
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24 being peelingly separable, and a fin seal zone that is separate from a bag
seal zone (App. Br. 22). The Requester asserts that Hustad discloses a
peelable seal and St. Phillip discloses a fin seal zone, and argues that it
would have been obvious to combine Sullivan with Hustad and St. Phillips
to result in the invention claimed (App. Br. 13, 22).
The Examiner finds, inter alia, that in applying the broadest
reasonable interpretation in view of the specification of the '403 patent,
Sullivan does not disclose the limitation that "the fin member is attached to
the bag seal zone" as required by claim 19 (RAN 41). According to the
Examiner, "[g]iven ['403 patent's] specification and figures, [the] Examiner
considers this limitation to require a more direct attachment, if not a direct
contact attachment, of the fin member to the bag seal zone than disclosed" in
Sullivan (RAN 39). The Examiner further states that "neither Hustad nor St.
Phillips disclose fins attached to the bag seal zone" (RAN 20), and that there
is no distinction between the terms "connected to" and "attached to." (RAN
39). The Patent Owner argues that the Examiner is applying the proper
claim construction (Resp. Br. 16).
The Requester argues that in Sullivan, the attachment flanges 29, 32
(i.e. fin strips) are attached to the hermetic seal 24 (i.e. bag seal zone) as
recited in claim 19 because the attachment flanges 29, 32 are attached via
adhesive 30, 33 to the wall panels 18, which in turn are attached by adhesive
spots 21a to liner 21, the hermetic seal 24 being at the upper end of the liner
21 (App. Br. 22). The Requester argues that the specification of the '403
patent does not set forth a definition of "attached" that would limit its scope,
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and the Examiner has improperly imported limitations from the specification
in applying a narrower construction (App. Br. 16).
We agree with the Examiner's finding that Sullivan does not disclose a
fin member that is attached to the bag seal zone. The Requester relies on the
wall panels 18, adhesive spots 21a, and the liner 21 that intervene between
the attachment flanges 29, 32 and the hermetic seal 24 in its proposed
rejection. However, we find the Requester's proposed attachment via a
relatively lengthy and circuitous route through the various bag components
of Sullivan to be strained and based on an unreasonable interpretation of the
claim term "attached to" which does not take into proper consideration how
one of ordinary skill in the art would understand the claim in view of the
specification of the '403 patent.
We also agree with the Examiner's position that there is no distinction
between the terms "connected to" and "attached to" as used in the
specification of the '403 patent which adequately establishes that the terms
are synonymously used therein (FF 1C, 1E). The specification of the '403
patent explains that an embodiment having the subject connection or
attachment between the fin member and the bag seal zone is shown in
Figures 5 and 6 (FF 1A, 1D). The textual description of these figures, in
addition to the figures themselves, gives indication of the attachment
contemplated by the claim (FF 1A, 1D, 1E). Whereas an intervening
component in the form of an adhesive material is contemplated and
described in the specification of the '403 patent (FF 1E, 1F), we observe that
the adhesive material is the mechanism for attachment of the fin member to
the bag seal zone. Nowhere in the specification of the '403 patent does it
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describe or suggest an attachment through a series of intervening
components that do not relate to the attachment of the fin member to the bag
seal zone.
Whereas the claim recites that the fin member be "attached to the bag
seal zone," the Requester relies on numerous intervening structures in the
bag of Sullivan to argue that the attachment flanges are "attached to" the
hermetic seal. However, the degree of separation between the between the
attachment flanges 29, 32 and the hermetic seal 24 is very large and the
multiple intervening components of the bag in Sullivan cannot be reasonably
characterized as part of an attachment mechanism. Stated in another way,
any "attachment" between the attachment flanges 29, 32 and the hermetic
seal 24 is severely attenuated due to the intervening components so that it
would be unreasonable to describe the arrangement of the attachment
flanges 29, 32 with respect to the hermetic seal 24 of Sullivan as being
"attached to" each other in a manner encompassed by claim 19. In this
regard, even the Requester's characterization of Sullivan seems to undermine
its argument, the Requester stating that the attachment flanges 29, 32 "are
attached to bag walls 18," and the bag walls 18 are "attached to liner 21 by
adhesive spots 21a." (App. Br. 22, emphasis added).
The Requester argues that we must find the limitation "attached to" to
mean "direct attachment" in order to sustain the Examiner's refusal to adopt
the proposed rejection (App. Br. 33-34). However, we do not think that the
recitation "attached to" requires "direct attachment" as the Requester asserts
because in our view, "attached to" does allow for intervening part. In this
regard, we observe that the '403 patent itself describes using an adhesive that
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is positioned between the bag seal zone and the fin members so that there is
an intervening layer of adhesive. Such adhesive functions to attach the fin
strip to the bag seal zone so as to be functionally related to opening of the
seal. In contrast, the intervening structures relied upon by the Requester
including the adhesive 30, 33, wall panels 18, adhesive spots 21a, and the
liner 21 are not only unattached to the seal 24, but are not even functionally
pertinent to the opening thereof.
The Requester also argues that the statement "Examiner considers
that Sullivan's fin members are connected to the bag seal zone through the
bag walls, liner, and adhesive spots" (RAN 20) in conjunction with the
statement that the Examiner is "making no distinction" between the terms
"connected to" and "attached to" (RAN 39) results in the conclusion that
Sullivan satisfies the recited limitation requiring the fin members to be
"attached to" the bag seal zone. However, the Examiner's statement appears
to be a misstatement as the record clearly indicates that the Examiner's
position is that Sullivan does not disclose a fin member "attached to the bag
seal zone" and the Examiner refuses to adopt the proposed rejection based
on Sullivan based on this deficiency (RAN 20, 39, see also RAN 41
(regarding canceled claim 1 stating that the "Examiner agrees with Patent
Owner and considers none of these elements [in Sullivan] to be attached to
the bag seal zone.")). Moreover, for the reasons already discussed supra, we
disagree that Sullivan discloses a fin member "attached to the bag seal
zone."
The Requester further refers to the statement in the specification of
the '403 patent that other methods for connecting the fin member to the bag
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seal zone will be known to a person of ordinary skill in the art in support of
the assertion that the arrangement of bag components as disclosed in
Sullivan satisfies the pertinent limitation of claim 19 (App. Br. 16; FF 1F).
However, mere mention of "other methods" does not eliminate the
requirement that the fin member be "attached to the bag seal zone" as recited
in the claim. In this regard, even the statement relied upon by the Requester
limits its scope to methods for connecting the zipper combination to the bag
seal zone (FF 1F). While the Requester asserts that it is applying the
broadest reasonable interpretation, with the exception of the above noted
statement regarding "other methods," the Requester does not appear to take
into any substantive consideration the specification of the '403 patent in
asserting that Sullivan discloses the pertinent limitation.
In addition, the Requester cites precedent in support of its position
that "connected to" should be given a broader interpretation (App. Br. 15-16;
Reb. Br. 3-5), while the Patent Owner cites precedent in support of the
Examiner's position (Resp. Br. 13-15). These arguments merely highlight
the fact that claim interpretation is fact specific, and in the cases before the
Office, what may be considered "reasonable" in one case may not be
reasonable in another. In accordance with the Requester's overly broad
interpretation, all components of the bag would be attached to each other,
thereby rendering the limitation "attached to" essentially meaningless. Thus,
while the Requester's interpretation is "broad," it is not "reasonable." In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364. We find no reasonable basis
to conclude that this limitation of claim 19 would be understood by one of
ordinary skill in the art in the manner advocated by the Requester so as to
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encompass the bag of Sullivan when reviewing the specification of the '403
patent, and the Requester has not set forth any persuasive evidence that
supports a different conclusion.
The Examiner also stated that "Sullivan appears to specifically []
teach away from the fin member adhesively attached to the bag seal zone"
(RAN 20, citing Sullivan, col. 3, ll. 32-42) based on its teaching that fiber
contamination during tearing of the paper layer should be avoided by
providing a spot seal only at the lower end portion of the liner 21 using
adhesive spots 21a. The Requester argues that the alleged teaching away by
Sullivan is not relevant because such teaching away is not pertinent to the
question of whether Sullivan, "unmodified, discloses this limitation when
the claim is correctly construed." (App. Br. 17; see also Reb. Br. 5).
We agree with the Requester that teaching away is not pertinent to
what Sullivan actually discloses. Whereas the Patent Owner argues that
teaching away is pertinent because the Proposed Rejection 1 is based on
obviousness (Resp. Br. 17, 18), we observe that the Examiner's statement
with respect to teaching away does not appear to be made in the context of
whether one of ordinary skill in the art would be dissuaded from making the
combination of Sullivan, Hustad and St. Phillips. Nonetheless, this statement
of the Examiner is inconsequential because we agree with the Examiner's
fact finding that Sullivan does not disclose a fin member "attached to" the
bag seal zone as discussed supra.
Finally, the involved parties disagree as to whether it would have been
obvious to one of ordinary skill in the art to modify the bag of Sullivan in
view of St. Phillips so as to provide a "fin seal zone" that is separate from
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the bag seal zone (RAN 20; App. Br. 19, 22; Reb. Br. 2; Resp. Br. 12-13).
However, the arguments of the parties regarding this issue are moot in view
of our agreement with the Examiner that Sullivan fails to disclose a fin
member attached to the bag seal zone within the meaning of the '403 patent,
and the Requester's proposed rejection relies on Sullivan for disclosing this
limitation.
Thus, in view of the above, we sustain the Examiner's decision not to
adopt the Requester's proposed rejection of claim 19-21 as obvious over the
combination of Sullivan, Hustad and St. Phillps, claims 20 and 21 depending
from independent claim 19.

Proposed Rejection 2
The Requester also asserts that the Examiner erred in refusing to
reject claims 19-21 as being obvious over the combination of Hogan, Hustad
and St. Phillips (App. Br. 29-33). In addition to the bag seal zone,
independent claim 19 also specifically recites a fin seal zone between the fin
strips as described in the specification of the '403 patent (FF 1G, 1H). In its
proposed rejection, the Requester asserts that Hogan discloses every
limitation of claim 19, but concedes that Hogan does not disclose that the
peel seal 36 is a heat seal, or a fin seal zone separate from bag seal zone
(App. Br. 31; see FF 3A).
The Requester argues that use of a heat seal for the peelable seal 36 of
Hogan would have been obvious in view of Hustad since a heat seal is "just
the use of a well[-]known technique for forming a peel seal." (App. Br. 24,
31). As to the fin seal zone, the Requester also relies on Figures 4 and 6 of
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St. Phillips for disclosing a bag having "a fin seal zone (fin member)
comprising a one-time breakable (nonreclosable) area of weakness 70
joining the fin portions." (App. Br. 28-29; FF 4). According to the
Requester, it would have been obvious to provide the Hogan bag with a
score line as a nonreclosable area of weakness (i.e., a separable fin seal) as
disclosed in St. Phillips "to supplement the nonreclosable heat seal 36 of
Hogan in order to provide an additional tamper indicating feature, as well as
to provide backup protection for the zipper in the event of failure of the heat
seal." (App. Br. 29, 31). The Requester asserts that "[i]f one wanted to
include a score line as taught by St. Phillips in the bag of Hogan, there
would be nothing unobvious in providing such in conjunction with the
flanges 18, 20 adjacent the zipper 28, 30," and that "the Hogan patent itself
suggests that it is desirable to include a tamper evident feature at the top of
the bag, to resist inadvertent opening of the zipper (col. 4, lines 43-52)."
(Reb. Br. 6).
The Examiner refuses to adopt the proposed rejection finding that
Hogan does not disclose a fin member "attached to the bag seal zone" as
required by claim 19 (RAN 32-33). The Patent Owner states "[w]hether or
not Respondent agrees with the Examiner's reasoning set forth at pages 32-
33 of the RAN … [the] Respondent does agree with the Examiner's ultimate
conclusion that claim 19 is not obvious" based on the suggested combination
of references, and the Patent Owner sets forth arguments against the
Requester's proposed combination of Hogan and St. Phillips (Resp. Br. 19).
In particular, the Patent Owner argues that the suggested combination
of Hogan with St. Phillips "would change the principle of operation of the
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Hogan bag and would render the bag unfit for its intended purpose" because
an important purpose of the bag of Hogan is to prevent gussets 18, 20 from
being captured by the zipper (Resp. Br. 19). The Patent Owner argues that it
is not clear how the proposed modification can be made because the bag of
St. Phillips is not gusseted, and the proposed modification to Hogan would
result in the gussets being captured by the zipper thereby rendering the bag
of Hogan unsatisfactory for its intended purpose (Resp. Br. 19).
We generally agree with the Patent Owner. As noted, the Requester
proposes to provide in the bag of Hogan, an area of weakness which joins
the fin portions as shown in Figures 4 or 6 of St. Phillips (App. Br. 28-29).
However, with respect to the embodiment shown in Figure 4 of St. Phillips,
we observe that the tamper proof feature 42 with the area of weakness 70 is
provided on the distal ends of the bag's wall panels 46, 48, and not on the
first and second fin portions 60, 66 (FF 4). In this respect, the disclosed
tamper proof feature 42 of St. Phillips actually corresponds to the recited bag
seal zone recited in claim 17 or the already existing peel seal 36 of Hogan
(FF 3A) instead of a fin seal. Thus, the Requester's suggested combination
based on Hogan and Figure 4 of St. Phillips fails to result in a fin seal zone
as required by claim 19.
To the extent that the Requester's position may be that a portion of the
wall panels 46, 48 that includes the area of weakness 70 corresponds to the
recited fin strips of the fin member, we disagree as the embodiment of
Figure 4 of St. Phillips clearly discloses first and second fin portions 60, 66
as being distinct and separate from the wall panels 46, 48, these wall panels
having the tamper proof feature (FF 4). In our view, it is unreasonable to
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designate a select portion of each of the wall panels as being part of the fin
portions when such fin portions are specifically disclosed in Figure 4 of St.
Phillips.
With respect to the embodiment shown in Figure 6 of St. Phillips, we
observe that the first and second fin portions 60, 66 are coextruded with the
respective wall panels 46, 48 so that the area of weakness 70 is actually part
of the respective wall panels 46, 48 that form the bag (FF 4). Hence, area of
weakness 70 is likewise part of the bag's wall panels 46, 48 and more closely
corresponds to the recited bag seal zone of claim 17 and to the peel seal 36
of Hogan, and the suggested combination fails to result in a fin seal zone as
recited by claim 19.
In addition, even if the tamper proof feature 42 with the area of
weakness 70 shown in Figures 4 and 6 of St. Phillips is considered to be on
fin portions, we agree with the Patent Owner that it is not clear how such a
feature can be effectively implemented in the bag of Hogan. The focus of
Hogan is in providing a reclosable gusseted bag where the expanding side
gussets can be used to dispense contents, and the portions of the folded
gussets are not captured between the zipper profiles (FF 3B-3D). However,
the space between the zipper members and the distal ends of the free end
portions of the bag walls necessary to accommodate the tamper proof feature
of St. Phillips would result in unclosed openings along the upper edge of the
gussets, that is, between the gussets and the zipper profiles at the sides of the
bag. In such configuration, the bag of Hogan would fail to close in a manner
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to retain the contents within the gusseted bag.
8
Moreover, although not
relied upon by the Requester, as to the embodiment shown in Figure 1 of St.
Phillips wherein the tamper proof feature is clearly provided on the fin
members (FF 4), we observe that these fin members are secured to the
interior of the bag walls thereby precluding or interfering with the provision
of the gussets disclosed in Hogan. The Requester does not adequately
explain, nor is it readily apparent, how the tamper proof feature of St.
Phillips can be incorporated between the zipper profiles and the peel seal in
the bag of Hogan in view of its expanding side gusset.
Whereas a structural feature described in prior art need not be capable
of being bodily incorporated in a device disclosed in another to establish
obviousness, a suggested combination that renders the device unsatisfactory
for its intended purpose or render it inoperative may be more likely to lead
away from a conclusion of obviousness. See In re Gordon, 733 F.2d at 902;
see also In re Schulpen, 390 F.2d at 1013; In re Sponnoble, 405 F.2d at 587.
Because the modification suggested by the Requester would make the bag of
Hogan unsatisfactory for its intended purpose and/or inoperative, we are not
persuaded that it would have been obvious to one of ordinary skill in the art
to pursue such a modification.
Finally, the Examiner and the Requester also disagree as to whether
Hogan discloses a "fin member [] attached to the bag seal zone." (RAN 32;
App. Br. 30-32). However, this issue is moot in view of the discussion
supra that the Requester has not persuasively established that it would have

8
While the bag of the '403 patent is described as including a gusset 25, in
contrast to Hogan, the gusset disclosed in the '403 patent is sealed (see col.
7, l. 59-col. 8, l. 18; Fig. 1).
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been obvious to one of ordinary skill in the art to modify the bag of Hogan
in view of St. Phillips to provide a fin seal zone.
Therefore, we sustain the Examiner's refusal to adopt the Requester's
proposed rejection of claims 19-21 as obvious over the combination of
Hogan, Hustad and St. Phillips, claims 20 and 21 depending from
independent claim 19.

CONCLUSION
The Examiner's refusal to adopt Proposed Rejections 1 and 2 is
AFFIRMED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED

alw

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Patent Owner:
STOEL RIVES LLP - SLC
201 SOUTH MAIN STREET, SUITE 1100
ONE UTAH CENTER
SALT LAKE CITY, UT 84111

Third Party Requester:

WOMBLE, CARLYLE & SANDRIDGE & RICE, PLLC
Attn.: IP Docketing
PO Box 7037
Atlanta, GA 30357-0037