Ex Parte 7,922,614 B2 et al

Patent Trial and Appeal Board

May 19, 2016

90012374 (P.T.A.B. May. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
90/012,374 06/22/2012 7,922,614 B2
27526 7590 05/19/2016
HUSCH BLACKWELL LLP
4801 Main Street
Suite 1000
KANSAS CITY, MO 64112
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
469506.10026 8487
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAILDATE DELIVERY MODE
05/19/2016 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
CP PACKAGING, LLC
Appellant, Third Party Requester1
v.
Patent ofMULTIVAC, INC.
Respondent, Patent Owner
Appeal2015-008274
Inter partes Reexamination Control 95/002,200
Ex parte Reexamination Control 90/012,374
Patent US 7,922,614 B22
Technology Center 3900
Before STEVEN D.A. McCARTHY, BRETT C. MARTIN and
JON ivL JURGOV AN, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
CP Packaging, LLC, of Appleton, Wisconsin is the real party in
interest. CP Packaging is also identified as the Third Party Requester in the
"Request for Inter partes Reexamination," dated September 12, 2012, in
Reexamination Control Number 95/002,220.
2 Issued April 12, 2011 to Ivo Ruzik and Elmar Ehrman (the '"614
patent"). The '614 patent issued from Appl. 11/990, 186. Pages 1 and 2 of
the "Patent Owner's Respondent Brief," dated October 30, 2014, identifies
stayed litigation involving the '614 patent.
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Patent US 7,922,614 B2
1 STATEMENT OF THE CASE
2 This is an appeal from a merged reexamination proceeding combining
3 Inter partes Reexamination Control 95/002,200 and Ex parte Reexamination
4 Control 90/012,374. The Appellant/Third Party Requester appeals from the
5 Examiner's decision favorable to the patentability of amended claims 1 and
6 5-7; and newly-added claims 21, 23 and 24. ("Appellant and Third Party
7 Requester CP Packaging's Appeal Brief," dated September 11, 2014
8 ("Appeal Brief' or "App. Br. Req'r"), at 9-10). Because this merged
9 proceeding includes an inter partes reexamination requested prior to
10 September 16, 2012, we have jurisdiction under pre-AIA 35 U.S.C. § 134(c)
11 and 35 U.S.C. § 315(b). See Leahy-Smith America Invents Act, PL 112-29,
12 125 Stat. 284, §§ 6(c)(2)(A) and 7(e)(2).
13
14 RECORD ON APPEAL
15 The Examiner's findings, conclusions, and decision may be found in a
16 "Right of Appeal Notice," mailed June 17, 2014 ("RAN"). 3 The Requester
1 7 relies on its Appeal Brief and an "Appellant and Third Party Requester CP
18 Packaging's Rebuttal Brief," dated January 20, 2015 ("Rebuttal Brief' or
19 "Reb. Br. Req'r"). In addition to the prior art of record, the Requester
20 presents a Declaration of Raymond G. Buchko, executed June 12, 2013
21 ("Buchko Deel."). The Patent Owner relies on a "Patent Owner's
22 Respondent Brief," dated October 30, 2014 ("Respondent Brief' or "Resp.
3 The Examiner's Answer mailed December 19, 2014 incorporates the
RAN by reference.
2
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1 Br. PO"). Both the Requester and the Patent Owner participated in an oral
2 argument held on April 13, 2015.
3 Only issues and findings of fact addressed by the Requester or the
4 Patent Owner in their respective briefs have been considered. See 37 C.F.R.
5 § 41.67(c)(l)(vii); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). In
6 particular, we address only those proposed grounds of rejection listed on
7 pages 9 and 10 of the Requester's Appeal Brief, as these are the only
8 proposed grounds of rejection argued in the briefs. Any grounds of rejection
9 proposed during the hearing but not addressed in the briefs, as well as any
10 evidence first proffered at the hearing, has not been considered. See 3 7
11 C.F.R. § 41.73(e)(l).
12
13 GROUNDS OF REJECTION AND DISPOSITION
14 We REVERSE the Examiner's decision favorable to the patentability
15 of claims 1, 21 and23. Pursuant to 37 C.F.R. § 41.77(b), we enter new
16 grounds of rejection against independent claims 1, 21and23 under pre-AIA
17 35 U.S.C. § 102(e) as being anticipated by Buchko (US 7,575,114 B2,
18 issued Aug. 18, 2009).
19 We do not reach the proposed rejections of claims 1, 21 and 23 under
20 pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Buchko in view of
21 either Natterer (US 4,601,421, issued July 22, 1986) or Hamilton (US
22 3,524,298, issued Aug. 18, 1870); alone or further in view of either Webster
23 (US 6,896,125 B2, issued May 24, 2005), Petershack (US 4,353,459, issued
24 Oct. 12, 1982), Case (US 2,971,392, issued Feb. 14, 1961), Casgrain (US
25 538,895, issued May 7, 1895) or St. Louis (US 389, 173, issued Sept. 4,
26 1888); once again, alone or even further in view of Weisgerber (US
3
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Patent US 7,922,614 B2
1 5,056,773, issued Oct. 15, 1991); Frenker-Hackfort (US 4,747,261, issued
2 May 31, 1988); Strickland (US 4,082,007, issued Apr. 4, 1978) or
3 Wolfelsperger (US 3,610,501, issued Oct. 5, 1971).
4 We AFFIRM the Examiner's decision not to adopt the proposed
5 rejections of dependent claims 5-7 and 24 under§ 103(a) as being
6 unpatentable over Buchko in view of either Natterer or Hamilton; alone or
7 further in view of either Webster, Petershack, Case, Casgrain or St. Louis;
8 once again, alone or even further in view of Weisgerber; Frenker-Hackfort;
9 Strickland or W olfelsperger.
10 We also AFFIRM the Examiner's decision not to adopt the proposed
11 rejections of independent claims 1, 5-7, 21, 23 and 24 under§ 103(a) as
12 being unpatentable over Spada (US 5,564,556, issued Oct. 15, 1996) in view
13 of either Natterer or Hamilton; alone or further in view of either Webster,
14 Petershack, Case, Casgrain or St. Louis; once again, alone or even further in
15 view of Weisgerber; Frenker-Hackfort; Strickland or Wolfolsperger.
16 We also AFFIRM the Examiner's decision not to adopt the proposed
17 rejections of claims 23 and 24 under pre-AIA 35 U.S.C. § 112, either under
18 the first paragraph for failure to comply with the written description
19 requirement or under the second paragraph for indefiniteness.
20
21 THE '614 PATENT
22 The '614 patent teaches a packaging machine 2 5 such as a
23 thermoforming machine for wrapping comestibles in a packaging film 29.
24 The packaging machine 2 5 includes a link chain 31 with grippers for
25 gripping the packaging film; drawing the film off of a roll; and transporting
26 the packaging film to a processing station. ('614 patent, col. 1, 11. 8-18 &
4
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1 38--41; col. 5, 11. 11-21; & Fig. 9). The '614 patent also teaches that the
2 articulations between individual rigid links of prior art chains formed gaps
3 that collected dirt and were difficult to clean. The articulations between the
4 links also required lubrication. The combination of collected dirt and
5 lubrication interferes with efforts to maintain the level of hygiene necessary
6 to safely package comestibles. ('614 patent, col. 1, 11. 19-34). The '614
7 patent addresses the problem by providing a chain of alternating rigid chain
8 links and flexible chain links, with grippers that are included with the rigid
9 links. ('614 patent, col. 1, 11. 42-59).
10 Claims 1, 21 and 23 are independent. Claim 1 recites:
11 1. A packaging machine having a chain for transport
12 of a film material,
13 wherein the chain has a series of successive rigid chain
14 links, connected to one another in a movable manner, and
15 flexible chain links provided between the rigid chain links, the
16 flexible chain links being fixed to the rigid chain links,
17 wherein one or more of the rigid chain links include
18 clamping units for clamping the packaging film wherein the
19 packaging film is in a substantially horizontal plane,
20 wherein a plurality of the rigid chain links further
21 comprising one or more downwardly extending guide elements
22 for resisting movement of the chain and the clamped packaging
23 film material in a direction transverse to a direction of travel of
24 the chain, and
25 the packaging machine having a guide rail
26 wherein said guide elements engage said guide rail.
27 (App. Br. Req'r Al.I).
5
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1 FINDINGS OF FACT
2 Buchko describes a linear motion reciprocating vacuum packaging
3 system 100. The system 100 includes a conveyor 102 and evacuation
4 chambers 106a, 106b, 106c. (See Buchko, col. 3, 1. 66 - col. 4, 1. 4; col. 4,
5 11. 29-31; & Fig. 3). The conveyor 102 includes a flexible conveyor belt 218
6 wrapped around pulleys 212, 214. One of the two pulleys 212, 214 is driven
7 to move the conveyor belt below the evacuation chambers 106a, 106b, 106c.
8 (See Buchko, col. 6, 11. 16-23). The flexible conveyor belt 218 may be
9 either single-sectioned or multi-sectioned. (See Buchko, col. 6, 11. 43--46).
10 Clamps 220 secured to the flexible belt serve three purposes. (See
11 Buchko, col. 8, 11. 39--46 & 49-51). One purpose of the clamps 220 is to
12 tighten the flexible conveyor belt 218 around the pulleys 212, 214. (See
13 Buchko, col. 6, 11. 43-55). A second purpose of the clamps 220 is to mount
14 platens 108, on which pre-filled bags of comestibles are conveyed. (See
15 Buchko, col. 2, 11. 1-7; col. 18, 11. 7-21; and Figs. 3, 16 & 17). Each platen
16 108 is fastened to one of the clamps 220 (see Buchko, col. 7, 1. 63 - col. 8, 1.
17 7), such that the clamps and the platens combine to form integral, rigid
18 bodies (see, e.g., Buchko, Figs. 16 & 18). A third purpose ofBuchko's
19 clamps 220 is to splice sections of a multi-sectioned flexible conveyor belt
20 218 together. (See Buchko, col. 6, 11. 36--42 & col. 8, 11. 49-59). As a
21 consequence, each section of the multi-sectioned flexible conveyor belt 218
22 is provided between a pair of the rigid clamps 220; and each section of the
23 belt is fixed to a clamp at each of the two ends of the section. Buchko does
24 not appear to describe the materials from which the flexible conveyor belt
25 218 and the clamps 220 are made.
6
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1 Each of Buchko' s platens 108 includes platen guide blocks 2 68
2 attached to a front end and a back end of a bottom surface of the platen.
3 Each platen guide block defines a slot 270. The support frame 110 of the
4 system 100 mounts a pair of guide rails 2 7 2. The guide rails 2 7 2 engage the
5 slots 270 in the platen guide blocks 268 to restrain the platens 108 to travel
6 in a straight line along the length of the system 100 for engagement with the
7 evacuation chambers 106a, 106b, 106c. (See Buchko, col. 8, 11. 10-19 &
8 Figs. 14 & 16).
9 Each of Buchko' s platens 108 also includes a clamp and seal member
10 278 rigidly attached to a top surface of the platen by fasteners 282. (See
11 Buchko, col. 8, 11. 32-38). During a packaging operation, the platens 108
12 position pre-filled plastic bags containing comestibles under the evacuation
13 chambers 106a, 106b, 106c. (See Buchko, col. 18, 11. 7-16). When one of
14 the evacuation chambers 106a, 106b, 106c pivots downwardly onto one of
15 the platens 108, the evacuation chamber and the platen cooperate to form an
16 evacuated space around the bag. (See Buchko, col. 18, 11. 34--43). The
1 7 vacuum drawn in this evacuated space draws any air from the bag.
18 When one of the evacuation chambers 106a, 106b, 106c pivots
19 downwardly onto one of the platens 108, an upper bag clamp member 710
20 mounted within the evacuated space presses the open end of the bag against
21 the clamp and seal member 2 82 of the platen 108. As such, the clamp and
22 seal member 278 is designed for clamping the plastic film at the open end of
23 the bag in place on the platen 108. (See Buchko, col. 17, 11. 22-28 & Fig.
24 41 ). While the film at the open end of the bag is clamped in place on the top
25 surface of the platen 108, a heated seal bar 552 and a knife 556 act against
26 the clamp and seal member 278 to seal the bag and trim any excess film
7
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1 from the sealed end. (See Buchko, col. 16, 11. 16-24; col. 18, 11. 43-50; &
2 Figs. 42 & 43).
3
4 Spada
5 Spada describes a conveyor device 2 for use in forming ordered
6 groups of cigarettes in a cigarette packaging machine. (See Spada, col. 2, 11.
7 62-67). The conveyor device 2 includes a continuous conveyor belt 3
8 mounted for continuous travel about two pulleys 4, 5. The conveyor belt 3
9 mounts a plurality of tubular housings 6 at equal intervals along the belt.
10 The housings 6 have hollow interiors of rectangular cross-section. During
11 operation, the conveyor belt 3 positions each housing under a hopper outlet
12 1, 1 ', 1 ". That housing 6 receives a group of cigarettes from the hopper
13 outlets 1, 1 ', 1" and arranges the group of cigarettes into rectangular stacks.
14 When the conveyor belt 3 transports the filled housing 6 to an extraction
15 station near a downstream pulley 5, that housing feeds the group of
16 cigarettes to another mechanism, which wraps the group of cigarettes. (Id.;
17 see also Spada, col. 3, 11. 12-28 and Fig. 1 ).
18
19 NEW GROUNDS OF REJECTION AGAINST CLAIMS 1, 21, 23 AND 24
20 Claim 1
21 Buchko describes a "packaging machine," that is, a linear motion
22 reciprocating vacuum packaging system 100 for evacuating, sealing and
23 trimming pre-filled bags of comestibles, satisfying the limitations of
24 independent claim 1. (See Buchko, col. 1, 11. 13-16; col. 3, 1. 66- col. 4,
25 1. 4; & col. 4, 11. 9-16; see also App. Br. Req'r 13 & 21 ).
8
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1 Buchko describes a "packaging machine having a chain for transport
2 of a packaging film material, wherein the chain has a series of successive
3 rigid chain links, connected to one another in a movable manner, and
4 flexible chain links provided between the rigid chain links." Buchko' s
5 system 100 has a conveyor 102 including a flexible conveyor belt 218. (See
6 Buchko, col. 6, 11. 20-23). More specifically, Buchko describes a multi-
7 sectioned flexible conveyor belt 218 formed from sections coupled together
8 by clamps 220. (See Buchko, col. 6, 11. 36--42 & col. 8, 11. 49-59). A platen
9 108 is fastened to each clamp 220 such that the combination is an integral,
10 rigid body. (See Buchko, col. 7, 1. 63 - col. 8, 1. 7 & Figs. 16 & 18). In this
11 arrangement, the chain comprises a series of successive rigid chain links,
12 each such link taking the form of a clamp 220 and a platen 108 fastened
13 integrally with the clamp; and flexible chain links taking the form of
14 sections of the flexible conveyor belt 218. (See App. Br. Req'r 13). The
15 flexible chain links, that is, the sections of the flexible conveyor belt 218, are
16 fixed, that is, clamped, at their ends to the rigid chain links by means of the
17 clamps 220.
18 Buchko describes "wherein one or more of the rigid chain links
19 include clamping units for clamping the packaging film wherein the
20 packaging film is in a substantially horizontal plane." Buchko also describes
21 "wherein a plurality of the rigid chain links further compris[ e] one or more
22 downwardly extending guide elements for resisting movement of the chain
23 and the clamped packaging film material in a direction transverse to a
24 direction of travel of the chain." Each rigid chain link includes a platen 108.
25 Each platen 108 includes a clamping unit taking the form of a clamp and
26 seal member 278 for clamping the packaging film at the open end of a bag in
9
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1 a plane defined by the top surface of the clamp and seal member. (See
2 Buchko, col. 8, 11. 32-38; col. 17, 11. 22-28; & Fig. 41). Each platen 108
3 also includes downwardly extending guide elements taking the form of
4 platen guide blocks 268 for resisting movement of the chain (and of a bag
5 carried by the chain) transverse to the length of the system 100. (See
6 Buchko, col. 8, 11. 10-19 & Figs. 14 & 16). Therefore, each rigid chain link,
7 namely, each combination of a clamp 220 and a corresponding platen 108,
8 includes a clamping unit taking the form of a clamp and seal member 278;
9 and guide elements taking the form of platen guide blocks 268. (See App.
10 Br. Req'r 13-14).
11 Finally, Buchko describes "the packaging machine having a guide rail
12 wherein said guide elements engage said guide rail." Buchko' s system 100
13 includes guide rails 272 that engage slots 270 in the platen guide blocks 268
14 to restrain transverse movement of the chain and the bags carried by the
15 platens 108. (See Buchko, col. 8, 11. 10-19 & Figs. 14 & 16; see also App.
16 Br. Req'r 14).
17
18 Claim 21
19 Buchko also describes a "packaging machine" satisfying the
20 limitations of independent claim 21. (See Buchko, col. 1, 11. 13-16; col. 3, 1.
21 66- col. 4, 1. 4; & col. 4, 11. 9-16; see also App. Br. Req'r 13 & 21).
22 Buchko describes a "packaging machine having a chain for
23 transporting a food packaging film, wherein the chain has a series of
24 successive rigid chain links connected to one another in a movable manner,
25 and flexible chain links provided between the rigid chain links and ... fixed
26 to the rigid chain links." As discussed earlier, Buchko's system 100 has a
10
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1 conveyor 102 including a flexible conveyor belt 218. (See Buchko, col. 6, 11.
2 20-23). More specifically, Buchko describes a multi-sectioned flexible
3 conveyor belt 218 formed from sections coupled together by clamps 220.
4 (See Buchko, col. 6, 11. 36--42 & col. 8, 11. 49-59). A platen 108 is fastened
5 to each clamp 220 such that the combination is an integral, rigid body. (See
6 Buchko, col. 7, 1. 63 - col. 8, 1. 7 & Figs. 16 & 18). In this arrangement, the
7 chain comprises a series of successive rigid chain links, each such link
8 taking the form of a clamp 220 and a platen 108 fastened integrally with the
9 clamp; and flexible chain links taking the form of sections of the flexible
10 conveyor belt 218. (See App. Br. Req'r 13). The flexible chain links, that
11 is, the sections of the flexible conveyor belt 218, are provided between the
12 rigid chain links and are fixed, that is, clamped, at their ends to the rigid
13 chain links by means of the clamps 220.
14 Buchko also describes "the packaging machine further comprising a
15 guide rail." The frame 110 of Buchko' s system 100 mounts guide rails 2 7 2.
16 (See Buchko, col. 8, 11. 10-15 & Fig. 16).
1 7 Buchko describes "wherein at least some of the rigid chain links
18 include ... clamping unit[ s ], for clamping the packaging film." Buchko also
19 describes "wherein at least some of the rigid [chain] links hav[ e] a pair of
20 downwardly extending legs configured to engage the guide rail to
21 substantially prevent displacement of the chain and the food packaging film
22 in a direction substantially transverse to a direction of travel of the chain."
23 Each rigid chain link includes a platen 108. Each platen 108 includes a
24 clamping unit taking the form of a clamp and seal member 278 for clamping
25 the packaging film at the open end of a bag in a plane defined by the top
26 surface of the clamp and seal member. (See Buchko, col. 8, 11. 32-38; col.
11
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1 17, 11. 22-28; & Fig. 41). Each platen 108 also includes downwardly
2 extending guide elements taking the form of platen guide blocks 268. Each
3 platen guide block 268 has a slot 270 so as to define a downwardly
4 extending leg on each side of the slot. (See Buchko, col. 8, 11. 10-15 & Fig.
5 14). The downwardly extending legs surrounding the slots 270 in the guide
6 elements 268 engage the guide rails 272 to substantially prevent
7 displacement of the chain and the food packaging film in a direction
8 substantially transverse to a direction of travel of the chain. (See Buchko,
9 col. 8, 11. 10-19 & Fig. 16; see also App. Br. Req'r 14). Therefore, each
10 rigid chain link, namely, each combination of a clamp 220 and a
11 corresponding platen 108, includes a clamping unit taking the form of a
12 clamp and seal member 278; and downwardly extending legs defined by the
13 platen guide blocks 268. (See App. Br. Req'r 13-14).
14
15 Claim 23
16 Buchko also describes a "packaging machine" satisfying the
17 limitations of independent claim 23. (See Buchko, col. 1, 11. 13-16; col. 3, 1.
18 66- col. 4, 1. 4; & col. 4, 11. 9-16; see also App. Br. Req'r 13 & 21).
19 Buchko describes a "packaging machine having a chain for
20 transporting a food packaging film, ... wherein the chain comprises a
21 continuous flexible traction element and the rigid chain links are clamped on
22 the continuous flexible traction element, wherein the regions of the flexible
23 traction element in-between the rigid chain links are the flexible chain
24 links." As discussed earlier, Buchko's system 100 has a conveyor 102
25 including a flexible conveyor belt 218. (See Buchko, col. 6, 11. 20-23).
26 More specifically, Buchko describes an embodiment in which the flexible
12
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1 conveyor belt 218 comprises a continuous flexible traction element, taking
2 the form of a continuous belt with parallel alternating ridges 226 and
3 grooves 228 on an inner side 224 for tractional engagement with the pulleys
4 212, 214. (See Buchko, col. 6, 11. 36--42 & col. 7, 11. 58-62). Clamps 220
5 fasten platens 108 to the flexible conveyor belt 218 at intervals along the
6 belt. (See Buchko, col. 7, 1. 63 - col. 8, 1. 7 & Figs. 16 & 18). Each
7 combination of a clamp 220 and a corresponding platen 108 constitutes one
8 of a plurality of rigid chain links, arranged in a successive series and
9 connected to one another by the flexible conveyor belt 218 in a movable
10 manner. The regions of the flexible conveyor belt 218 in-between the
11 successive clamps 220 and platens 108 constitute flexible chain links
12 provided between, and fixed to, the rigid chain links.
13 Buchko describes "wherein at least some of the rigid chain links
14 include a clamping unit for clamping the packaging film." Buchko also
15 describes "wherein one or more of the rigid chain links further compris[ e]
16 one or more downwardly extending guide elements for resisting movement
1 7 of the chain and the clamped packaging film material in a direction
18 transverse to a direction of travel of the chain." Each rigid chain link
19 includes a platen 108. Each platen 108 includes a clamping unit taking the
20 form of a clamp and seal member 278 for clamping the packaging film at the
21 open end of a bag in a plane defined by the top surface of the clamp and seal
22 member. (See Buchko, col. 8, 11. 32-38; col. 17, 11. 22-28; & Fig. 41). Each
23 platen 108 also includes downwardly extending guide elements taking the
24 form of platen guide blocks 268 for resisting movement of the chain (and of
25 a bag carried by the chain) transverse to the length of the system 100. (See
26 Buchko, col. 8, 11. 10-19 & Figs. 14 & 16). Therefore, each rigid chain link,
13
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1 namely, each combination of a clamp 220 and a corresponding platen 108,
2 includes a clamping unit taking the form of a clamp and seal member 278;
3 and guide elements taking the form of platen guide blocks 268. (See App.
4 Br. Req'r 13-14).
5 Finally, Buchko describes "the food packaging machine having a
6 guide rail wherein said guide elements engage said guide rail." Buchko' s
7 system 100 includes guide rails 272 that engage slots 270 in the platen guide
8 blocks 268 to restrain transverse movement of the chain and the bags carried
9 by the platens 108. (See Buchko, col. 8, 11. 10-19 & Figs. 14 & 16; see also
10 App. Br. Req'r 14).
11
12 Response to Argument
13 The Patent Owner's arguments do not distinguish between the
14 language of claim 1, claim 21 and claim 23. (See Resp. Br. PO 9-10 and
15 21 ). The Examiner finds that Buchko does not anticipate claim 1, claim 21
16 or claim 23 because:
1 7 Buchko does not show a guide rail for links on a chain. In
18 Buchko, the guide elements are attached to a platen that is
19 affixed to the drive belt. These guide elements on the platen
20 engage guide rails. However, there is no teaching in Buchko of
21 the rigid links having guide elements engaging a guide rail.
22 Buchko also fails to show clamping units for engaging a
14
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1 packaging film. 4
2 (RAN 19-20). The Patent Owner echoes these findings in its Respondent
3 Brief. (See Resp. Br. PO 17). The Patent Owner's argument turns on the
4 scope and meaning of the term "rigid chain link."
5 The Patent Owner does not identify any formal definition or clear
6 disclaimer in the written description of the '614 patent that might limit the
7 scope of the term "rigid chain link" so as to exclude the rigid body
8 combining a clamp 220 and a corresponding platen 108 described by
9 Buchko. Neither does the Patent Owner provide evidence of any specialized
10 usage of the term "rigid chain link," or even of the word "link," in the
11 pertinent art. (See Reb. Br. Req'r 7 (pointing that the Patent Owner "has
12 never proposed any formal claim construction to this effect and cites no
13 evidence supporting this construction"). A traditional definition of a "chain"
14 denotes a "flexible series of metal links or rings fitted into one another."
15 (l\!IcGRAW-HILL UICTIONARY OF ENG'RING (l\!IcGraw-Hill Cos., New York,
16 2nd edition 2003) ("chain," Design Eng'ring, def. 1)). Reacting to this
17 traditional usage, more recent general purpose dictionaries have defined
18 "link" as, for example, "a section of something resembling a chain."
4 The Examiner does not appear to explain the last sentence further.
The Patent Owner in its Respondent Brief argues only that Buchko fails to
describe clamping units included on the clamps 220 as opposed to the
platens 108. (See, e.g., Resp. Br. PO 9-10 and 17; Reb. Br. Req'r 7). This
argument is not persuasive, as discussed below. If prosecution is reopened
under 37 C.F.R. § 41.77(b)(l), the Examiner may address whether one of
Buchko's clamp and seal members 278, alone or in combination with the
platen 108 bearing the reaction force applied to the clamp and seal member
by the corresponding upper bag clamp member 710, is a "clamping unit" as
that term is used in the claims.
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1 (WEBSTER'S NEW WORLD COLLEGE DICTIONARY (Wiley Publ'g, Inc.,
2 Cleveland, 4th edition 2010) ("link," entry 1, def. 2a)). Although the '614
3 patent describes particular chains, the Patent Owner does not point out any
4 disclosure in the '614 patent inconsistent with a broad reading of "rigid
5 chain link."
6 Claims 1, 21, and 23 recite that at least some of the rigid chain links
7 "include a clamping unit." (Italics added for emphasis.) This recitation
8 implies that the term rigid chain links reads on the combination of the
9 structure connected to the flexible links; the clamping unit; and whatever
10 structure might be used to couple the structure connected to the flexible links
11 to the clamping unit.
12 Buchko describes rigid chain links, each such link taking the form of a
13 combination of a clamp 220 and a corresponding platen 108. The clamp 220
14 and the corresponding platen 108 are affixed to each other by fasteners so as
15 to form an integral, rigid body. (See, e.g., Buchko, col. 7, l. 63 - col. 8, l. 7
16 & Figs. 16 & 18). Nothing in either the '614 patent or the ordinary usage of
1 7 the term "rigid chain links" precludes the term reading on the combination
18 of a clamp 220 and a corresponding platen 108. (See Reb. Br. Req'r 7
19 (arguing that "the Buchko platen 108 is a 'rigid link' according to claims 1,
20 21 and 23")). The corresponding platen includes a clamping unit taking the
21 form of a clamp and seal member 2 7 8; and guide elements taking the form
22 of platen guide blocks 268. Therefore, Buchko describes rigid chain links
23 including both clamping units as recited in claims 1, 21 and 23; guide
24 elements as recited in claims 1 and 23; and downwardly extending legs as
25 recited in claim 21. (See Reb. Br. Req'r 7-9). On this basis, we reverse the
16
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1 Examiner's decision not to reject claims 1, 21and23 under§ 102(e) as
2 anticipated by Buchko.
3 Because we reverse the Examiner's decision not to reject claims 1, 21
4 and 23 as anticipated by Buchko, we need not reach the issue whether the
5 subject matter of one or more of these claims would have been obvious from
6 the teachings of Buchko in combination with the teachings of one or more
7 other prior art references. There is, in fact, good reason not to reach these
8 proposed rejections in this appeal. Under the circumstances of the present
9 appeal, the anticipatory teachings of Buchko alone may provide an adequate
10 factual underpinning to conclude that the subject matter of claims 1, 21 and
11 23 would have been obvious from Buchko and the cited secondary
12 reference. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). (See Reb.
13 Br. Req'r 10-11). On the other hand, as discussed in greater detail in the
14 following section of this opinion, the Examiner correctly finds that the
15 Requester has not suggested a persuasive reason why one of ordinary skill in
16 the art might have modified Buchko' s machine in view of the teachings of
17 the cited secondary references so as to yield the subject matter of claim 1,
18 claim 21 or claim 23. Entering new grounds of rejection under § 103 (a) on
19 the same factual basis as the rejection under § 102( e) would multiply the
20 issues to be resolve in this reexamination proceeding without providing the
21 Requester any significant additional opportunity to be heard as to
22 patentability.
17
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1 OBVIOUSNESS
2 The Requester relies only on Buchko or Spada as a primary reference
3 in each of the obviousness rejections listed on pages 9 and 10 of its Appeal
4 Brief. Buchko describes a system 100 in which the plastic film plies at the
5 open ends of bags pre-filled with comestibles are clamped, heat-sealed and
6 trimmed within an evacuated space. (See Buchko, col. 16, 11. 16-24; col. 17,
7 11. 22-28; col. 18, 11. 43-50; & Figs. 41-43). Spada describes a machine for
8 forming ordered groups of cigarettes. Another machine subsequently wraps
9 the groups of cigarettes in packaging sheets. (See Spada, col. 2, 11. 62-67).
10 Neither Buchko nor Spada teaches the conveyance or use of continuous
11 webs or sheets of plastic film.
12 Of the two secondary references listed on pages 9 and 10 of the
13 Requester's Appeal Brief, Natterer describes a web feeding means 6 for use
14 in a packaging machine. (See Natterer, col. 1, 11. 7-19 & col. 2, 11. 29-36).
15 The feeding means 6 includes a pair of parallel feeding chains 8, 9 running
16 on sprocket wheels 10, 11. (See Natterer, col. 2, 11. 45-50 & Fig. 2). Each
17 link of the two chains 8, 9 includes a clamp 12 for gripping a transverse edge
18 of a material web 4 and transporting the web parallel to the lengths of the
19 chains. (Natterer, col. 1, 11. 7-19; col. 2, 11. 37-44 & 51-53; & Fig. 4).
20 Hamilton describes a machine designed for making hermetically
21 sealed and evacuated packages from a pair of continuous webs of flexible
22 plastic packaging material. (Hamilton, col. 1, 11. 13-28 (Abstract)).
23 Hamilton's machine includes a pair of side-by-side endless chains 26
24 mounted on sprockets 22, 24. (See Hamilton, col. 2, 11. 28-32 & Fig. 2). As
25 depicted in Figures 5 and 6 of Hamilton, each link of the two chains 26
26 mounts a spring loaded clip 36. The clips grip transverse edges of flexible
18
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1 plastic packaging film drawn from a roll 28 and transport the film parallel to
2 the length of the chains 26 toward packaging stations in the machine. (See
3 Hamilton, col. 2, 11. 41--47 & Figs. 2-6).
4 At pages 24 and 25 of its Brief, the Requester says that "it would have
5 been obvious to a person of skill in the art to substitute a sheet of packaging
6 film in lieu of preformed packaging bags or receptacles," but does not
7 explain why. Elsewhere, the Requester argues that:
8 A person of ordinary skill in the art would [have been]
9 motivated to combine the teachings of Spada and Natterer. The
10 methods to combine these mechanical devices [were] well
11 known and [would have] yield[ ed] predictable results. See, e.g.,
12 MPEP 2243.A. Both Spada and Natterer are packaging
13 machines using different kinds of chains, and Buchko teaches
14 that a traction element chain as in Spada is a replacement for
15 conventional chains (i.e., as used by Natterer). See Buchko at
16 1:17--45, Buchko Provisional p. 6 11. 1-2, p. 7 11. 3--4
17 (discussing substitution of one for the other). It would [have
18 been] a simple substitution for a person of ordinary skill in the
19 art to [have] add[ed] Natterer's clamping units to Spada's rigid
20 links (clamps and housing units), with predictable results. See,
21 e.g., MPEP 2243.B. Similarly, Natterer's guide elements could
22 simply [have been] substituted beneath Spada' s clamps and
23 housing units. Id.
24 (See App. Br. Req'r 40). The Requester makes similar arguments regarding
25 the combination of Buchko and Natterer at page 26 of its Appeal Brief; and
26 regarding the combination of Buchko and Hamilton at pages 35 and 36 of its
27 Appeal Brief. (See also Reb. Br. Req'r 16). The argument is not persuasive.
28 As the Patent Owner correctly points out, one of ordinary skill in the
29 art would not have had reason to merely substitute clamps of the type
30 described by Natterer or Hamilton for Buchko's clamp and seal member
31 278. (See Resp. Br. PO 22-23 & 26). Buchko's clamp and seal member
19
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1 2 7 8 acts as an anvil against which an upper bag clamp member 710 mounted
2 within the evacuated space presses to clamp the open end of a pre-filled bag
3 in place for heat sealing. (See Buchko, col. 17, 11. 22-28 & Fig. 41). If one
4 were to have substituted the clamps described by Natterer or Hamilton for
5 the clamp and seal members 2 7 8, Buchko' s upper bag clamp member 710
6 would not have properly engaged the substituted clamp to secure the open
7 end of the pre-filled bag in place on the platen 108 for heat sealing and
8 trimming.
9 Instead of a mere substitution of one known clamping unit for another,
10 the proposed replacement would have required one of ordinary skill in the
11 art to further modify the platens 108 and the evacuation chambers 106a,
12 106b, 106c ofBuchko's system 100 to provide either for clamping
13 engagement of the upper bag clamp member 710 against the substituted
14 clamp; or a mechanism to open and close the substituted clamp. The
15 Requester has not provided a persuasive reason why one of ordinary skill in
16 the art might have undertaken the substitution in view of the further
1 7 modification required for implementation. This is particularly true in view
18 of the different functions carried out by the described clamps, namely,
19 immobilizing the film plies at the open end of a bag for heat sealing and
20 trimming, in the case of Buchko's clamp and seal member 278; and
21 conveying a continuous web of film material through a packaging machine,
22 in the case of N atterer and Hamilton. The Requester does not persuade us
23 that it would have been obvious to modify Buchko' s system 100 in view of
24 the teachings of N atterer or Hamilton.
25 One of ordinary skill in the art could not merely have substituted a
26 clamp of the type described by Natterer or Hamilton for a clamp taught by
20
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1 Spada because Spada does not describe any clamping units. Furthermore,
2 the Requester suggests no persuasive reason why one of ordinary skill in the
3 art would have attempted to modify Spada' s machine to combine the
4 functions of grouping and wrapping the cigarettes (see Reb. Br. Req'r 22-
5 23). Spada describes a single packaging machine including separate
6 mechanisms for grouping and wrapping the cigarettes. The Requester has
7 not suggested a persuasive reason why one of ordinary skill in the art would
8 have undertaken the redesign necessary to combine the two functions in one
9 mechanism.
10 On pages 29 and 30 of its Respondent Brief, the Patent Owner
11 identifies design problems that might result from attempting to impose
12 clamps of the type described by Natterer or Hamilton on Spada conveyor
13 belt 3. The Requester has not suggested a persuasive reason why one of
14 ordinary skill in the art would have wished to undertake the modification
15 necessary to make the proposed "substitution." The Requester does not
16 persuade us that it would have been obvious to modify Buchko' s system 100
17 in view of the teachings ofNatterer or Hamilton.
18 Each of the tertiary references, Webster, Petershack, Case, Casgrain
19 and St. Louis, describes a belt, band or chain. The Requester does not argue
20 that any of the tertiary references describes a chain specifically designed for
21 a food packaging machine, however. (See generally App. Br. PO 17-19).
22 As such, none of these references would have provided one of ordinary skill
23 in the art reason to modify Buchko' s system 100 or Spada' s conveyor belt 3
24 in view of the teachings of these references. Likewise, the Requester's
25 proposal to use any one or more of Weisgerber; Frenker-Hackfort;
26 Strickland or W olfelsperger to teach a guide element (see, e.g., App. Br.
21
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1 Req'r 37-38) does not remedy the deficiencies in the combined teachings of
2 the primary and secondary references.
3 The Requester does not argue in this appeal that claims 5-7 and 24 are
4 anticipated by Buchko. We sustain the Examiner's decision not to adopt the
5 proposed rejections of dependent claims 5-7 and 24 under§ 103(a) as being
6 unpatentable over Buchko in view of either Natterer or Hamilton; alone or
7 further in view of either Webster, Petershack, Case, Casgrain or St. Louis;
8 once again, alone or even further in view of Weisgerber; Frenker-Hackfort;
9 Strickland or W olfelsperger, based on the pendency of claims 5-7 from
10 claim 1 and the pendency of claim 24 from claim 23. (See Resp. Br. PO 32-
11 33). We also sustain the Examiner's decision not to adopt the proposed
12 rejections of independent claims 1, 5-7, 21, 23 and 24 under§ 103(a) as
13 being unpatentable over Spada (US 5,564,556, issued Oct. 15, 1996) in view
14 of either Natterer or Hamilton; alone or further in view of either Webster,
15 Petershack, Case, Casgrain or St. Louis; once again, alone or even further in
16 view of Weisgerber; Frenker-Hackfort; Strickland or Wolfelsperger.
17
18 INDEFINITENESS
19 We sustain the Examiner's decision not to reject claims 23 and 24
20 under the second paragraph of pre-AIA 35 U.S.C. § 112. Claim 23 recites a
21 "packaging machine having a chain for transporting a food packaging film,
22 ... the food packaging machine having a guide rail wherein said guide
23 elements engage said guide rail." (Italics added for emphasis.) The
24 Requester argues that claim 23 (and, by way of dependency, claim 24) is
25 indefinite because the italicized term lacks antecedent basis. Lack of
26 antecedent basis is not, in and of itself, a basis for concluding that a claim is
22
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1 indefinite. (See App. Br. Req'r 43). Instead, lack of antecedent basis must
2 be taken into account in determining whether one of ordinary skill in the art
3 would have been able to determine the scope of the claim with reasonable
4 precision. See Energizer Holdings, Inc. v. International Trade Comm 'n, 435
5 F.3d 1366, 1369-70 (Fed. Cir. 2006). The Examiner correctly concludes
6 that one of ordinary skill in the art reading claim 23 would have recognized
7 that the term "food packaging machine" recited in the body of the claim
8 referred back to the "packaging machine having a chain for transporting a
9 food packaging film" recited in the preamble. (See RAN 18). Therefore, we
10 sustain the Examiner's decision not to reject claims 23 and 24 under § 112,
11 second paragraph, as indefinite.
12
13 WRITTEN DESCRIPTION
14 Claim 23 recites "wherein the chain comprises a continuous flexible
15 traction element and the rigid chain links are clamped on the continuous
16 flexible traction element." The written description of the '614 patent states
17 that "[f]urther embodiments, e.g. resulting from the rigid chain links being
18 clamped on a continuous traction element, are likewise conceivable." (' 614
19 patent, col. 2, 11. 55-64). The Requester argues that the quoted recitation of
20 claim 23 lacks written description support because the clamping units 9, the
21 only clamps described in detail in the '614 patent, are not designed to clamp
22 a rigid chain link to a continuous flexible traction element. (See App. Br.
23 Req'r 43--44).
24 The test for compliance with the written description requirement is
25 "whether the disclosure of the application relied upon reasonably conveys to
26 those skilled in the art that the inventor had possession of the claimed
23
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1 subject matter as of the filing date." Ariad Pharmas., Inc. v. Eli Lilly & Co.,
2 598 F.3d 1336, 1351 (Fed. Cir. 2010). The quoted passage from column 2
3 of the '614 patent would have indicated to one of ordinary skill in the art that
4 the named inventors had possession of a packaging machine satisfying the
5 quoted limitation as of the filing date. The failure to specifically describe a
6 clamp designed to clamp a rigid chain link to a continuous flexible traction
7 element goes to the question whether the description was sufficient to enable
8 one of ordinary skill in the art to make the subject matter of claim 23, not to
9 whether the named inventors had possession of the claimed subject matter.
10 Therefore, we sustain the Examiner's decision not to reject claims 23 and 24
11 under§ 112, first paragraph for lack of written description.
12
13 DECISION
14 We REVERSE the Examiner's decision not to reject claims 1, 21 and
15 23 under§ 102(e) as being anticipated by Buchko. We do not reach the
16 proposed rejections of claims 1, 21 and23 under§ 103(a) as being
17 unpatentable over Buchko in view of either Natterer or Hamilton; alone or
18 further in view of either Webster, Petershack, Case, Casgrain or St. Louis;
19 once again, alone or even further in view of Weisgerber; Frenker-Hackfort;
20 Strickland or W olfelsperger.
21 We AFFIRM the Examiner's decision not to reject claims 1, 5-7, 21,
22 23 and 24 on the remaining grounds listed on pages 9-10 of the Requester's
23 Appeal Brief.
24 In summary, we AFFIRM the Examiner's decision not to reject
25 dependent claims 5-7 and 24; and REVERSE the Examiner's decision not to
26 reject independent claims 1, 21 and 23.
24
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1 Pursuant to 37 C.F.R. § 41.77(b), we enter new grounds of rejection
2 against independent claims 1, 21and23 under pre-AIA 35 U.S.C. § 102(e)
3 as being anticipated by Buchko (US 7,575,114 B2, issued Aug. 18, 2009).
4 This decision contains new grounds of rejection pursuant to 37 C.F.R.
5 § 41. 77 (b ), which provides that " [a ]ny decision which includes a new
6 ground of rejection pursuant to this paragraph shall not be considered final
7 for judicial review." Correspondingly, no portion of the decision is final for
8 purposes of judicial review. The Patent Owner or the Requester may request
9 rehearing under 37 C.F.R. § 41.79, if appropriate; however, the Board may
10 elect to defer issuing any decision on such request for rehearing until such
11 time that a final decision on appeal has been issued by the Board.
12 For further guidance on new grounds of rejection, see 37 C.F.R.
13 § 41. 77 (b )-(g). The decision may become final after it has returned to the
14 Board. 37 C.F.R. § 41.77(f).
15 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHfN
16 ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
17 of the following two options with respect to the new grounds of rejection to
18 avoid termination of the appeal as to the rejected claims:
19 ( 1) Reopen prosecution. The owner may file
20 a response requesting reopening of prosecution
21 before the examiner. Such a response must be
22 either an amendment of the claims so rejected or
23 new evidence relating to the claims so rejected, or
24 both.
25 (2) Request rehearing. The owner may
26 request that the proceeding be reheard under
27 § 41. 79 by the Board upon the same record.
25
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1 Any request to reopen prosecution before the examiner under
2 37 C.F.R. § 41.77(b)(l) shall be limited in scope to the "claims so rejected."
3 Accordingly, a request to reopen prosecution is limited to issues raised by
4 the new ground(s) of rejection entered by the Board. A request to reopen
5 prosecution that includes issues other than those raised by the new ground( s)
6 is unlikely to be granted. Furthermore, should the Patent Owner seek to
7 substitute claims, there is a presumption that only one substitute claim would
8 be needed to replace a cancelled claim. Any claim amendments should
9 comply with the requirements of pre-AIA 35 U.S.C. § 112.
10 The Requester may file comments in reply to a Patent Owner
11 response. 37 C.F.R. § 41.77(c). The Requester's comments under 37 C.F.R.
12 § 41.77(c) shall be limited in scope to the issues raised by the Board's
13 opinion reflecting its decision to reject the claims and the patent owner's
14 response under paragraph 37 C.F.R. § 41.77(b)(l). A newly proposed
15 rejection is not permitted as a matter of right. A newly proposed rejection
16 may be appropriate if it is presented to address an amendment and/or new
1 7 evidence properly submitted by the patent owner, and is presented with a
18 brief explanation as to why the newly proposed rejection is now necessary
19 and why it could not have been presented earlier.
20 Compliance with the page limits pursuant to 37 C.F.R. § l.943(b), for
21 all Patent Owner responses and Requester comments, is required.
22 The Examiner, after the Board's entry of a Patent Owner response and
23 Requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
24 as to whether the Board's rejection is maintained or has been overcome.
25 The proceeding will then be returned to the Board together with any
26 comments and reply submitted by the owner and/or requester under 37
26
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1 C.F .R. § 41. 77 ( e) for reconsideration and issuance of a new decision by the
2 Board as provided by 37 C.F.R. § 41.77(f).
3
4 AFFIRMED-IN-PART;§ 41.77(b)
PATENT OWNER:
HUSCH BLACKWELL LLP
4801 Main Street
Suite 1000
KANSAS CITY, MO 64112
THIRD PARTY REQUESTER:
DECHERTLLP
P.O. BOX 390460
MOUNTAIN VIEW, CA 94039-0460
27