Ex Parte Anzini

Patent Trial and Appeal Board

Jul 28, 2017

12317623 (P.T.A.B. Jul. 28, 2017)

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.
121981-00272 4644
EXAMINER
WEEKS, GLORIA R
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
12/317,623 12/24/2008 David J. Anzini
51468 7590 07/28/2017
McCarter & English LLP
ACCOUNT: ILLINOIS TOOL WORKS INC.
245 Park Avenue
NEW YORK, NY 10167
07/28/2017 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
Ex parte DAVID J. ANZINI
Appeal 2016-003829
Application 12/317,623
Technology Center 3700
Before: JILL D. HILL, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1—
20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal 2016-003829
Application 12/317,623
CLAIMED SUBJECT MATTER
The claims are directed to a flow-wrapper package with reclosure.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A zipper for reclosable package including:
a first profile assembly;
a second profile assembly, end seals being formed
between the first and second profile assemblies, the end seals
being free of hermetic closure and free of a fully crushed
configuration; and
a hermetic closure provided by a peel seal between the first
profile assembly and the second profile assembly.
Br. 7.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dowd US 7,674,040 B2 Mar. 9,2010
Buchman US 2007/0110340 A1 May 17, 2007
REJECTIONS1
(I) Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by
Buchman.
(II) Claims 2—20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Buchman and Dowd.
1 The Examiner objects to the drawings under 37 C.F.R. § 1.83(a). See
Final Act. 2 (mailed Mar. 10 2015). An objection is a petitionable matter
and not an appealable matter and is not within the jurisdiction of the Board.
See In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
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Appeal 2016-003829
Application 12/317,623
OPINION
Rejection (I), Anticipation by Buchman
The Examiner finds that Buchman discloses each of the limitations of
claim 1, including end seals 26, 28 that are free of a fully crushed
configuration based on a distinction between Buchman’s paragraphs 69 and
38, which respectively disclose “crushing end seals” and areas 26, 28 where
zipper profiles 22,24 “may be partially crushed, melted or deformed.” Final
Act 3 (emphasis added); see also Ans. 4. In the Advisory Action (mailed
June 5, 2015), the Examiner states that Buchman’s disclosure “in paragraph
38 of a sealed area that is ‘partially’ crushed, melted or deformed is found to
reasonably convey a seal that is not hermetic; as opposed to a seal that is
fully crushed, melted or deformed.” Advisory Act. 2.
Appellant asserts that Buchman does not anticipate the recited end
seals based on “the position of areas 26, 28 in Figure 1 [of Buchman].” Br.
5. Additionally, Appellant argues that, despite the Examiner’s reference to
the “partially crushed” language in paragraph 38, Buchman does not disclose
or suggest that “areas 26, 28 are ‘free of hermetic closure between a top edge
of the first and second profile assemblies and the peel seal’ as recited in
Claim 1.” Id.
In response, the Examiner finds that Buchman’s disclosure of crushed
as well as partially crushed ends qualifies as a teaching of two different
options, thus satisfying the requirement in claim 1 for end seals that are free
of a fully crushed configuration. Ans. 4.
Appellant’s brief discussion (Br. 5) of the position of areas 26, 28 in
Buchman’s Figure 1 does not explain adequately why the position of areas
26, 28 causes these areas to fail to meet the requirements of the end seals
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Appeal 2016-003829
Application 12/317,623
recited in claim 1. That is, Appellant does not explain how Buchman’s end
seals 26, 28 are not between the first and second profile assemblies, as the
Examiner finds. Final Act. 3.
Nonetheless, we agree with Appellant that Buchman does not
explicitly disclose that the end seals are free of hermetic closure. Further,
although, “[a] reference may anticipate inherently if a claim limitation that is
not expressly disclosed ‘is necessarily present, or inherent, in the single
anticipating reference.’. . . The inherent result must inevitably result from
the disclosed steps; ‘[ijnherency . . . may not be established by probabilities
or possibilities.’” In re Montgomery, 677 F.3d 1375, 1379-80 (Fed. Cir.
2012) (citations omitted). Here, the Examiner states that Buchman’s
disclosure of a sealed area that is “partially” crushed, melted or deformed
reasonably conveys a seal that is not hermetic. See Advisory Act. 2. As
noted above, an inherent disclosure is provided when a claim limitation is
necessarily present. The Examiner’s finding that Buchman’s disclosure
reasonably conveys a seal that is not hermetic is based on speculation
because there is insufficient evidence to establish that this feature is
necessarily present. Accordingly, we reverse the Examiner’s rejection of
claim 1 as anticipated by Buchman.
NEW GROUND OF REJECTION
Notwithstanding that the Examiner’s discussion of claim 1 falls short
of establishing anticipation, we conclude that it would have been obvious to
make Buchman’s areas 26, 28 free of hermetic closure. Buchman discloses
a peel seal 40, separate from the zipper profiles, which provides a hermetic
seal. Buchman, para. 40; see also Final Act. 3. The discussion of peal seal
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Appeal 2016-003829
Application 12/317,623
40 provides for sealing, preferably hermetic sealing. The fact that Buchman
refers to sealing and then specifically to hermetic sealing as a preferable
option implies that sealing can be either hermetic or non-hermetic (free of
hermetic closure). In the context presented in Buchman, a disclosure of
“sealing” is at least a suggestion of both kinds of sealing. Accordingly, as
Buchman describes areas 26, 28 as “where zipper profiles 22, 24 are sealed
together,” Buchman suggests making areas 26, 28 “sealed” and such sealing
includes both a non-hermetic seal as well as a hermetic seal.
Additionally, it would have been obvious to make the zipper profile
seal, including areas 26, 28, “free of hermetic closure,” i.e., it would have
been obvious to forgo the effort required to make these areas hermetically
sealed, because peal seal 40 independently does the job of hermetically
sealing the package, and it would be unnecessary for the zipper profiles
(which are positioned right after peal seal 40) to also do this job.
Accordingly, for both of the reasons discussed above, we determine
that it would have been obvious to make end seals free of hermetic closure
as recited.
Rejection (II), Obviousness Based Upon Buchman and Dowd
The error in the rejection of claim 1 as anticipated by Buchman
permeates the rejection of claims 2—20, and we therefore reverse this
rejection for the reasons discussed above regarding claim 1. As Appellant
does not challenge the Examiner’s findings of fact or reasoning regarding
the rejection of claims 2—20 as unpatentable over Buchman and Dowd, and
the deficiency in the anticipation rejection of claim 1 is addressed in the new
ground of rejection of claim 1, we enter a new ground of rejection of claims
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Appeal 2016-003829
Application 12/317,623
2—20 as unpatentable over Buchman and Dowd based on the new ground of
rejection of claim 1 and the Examiner’s rejection of these claims as
unpatentable over Buchman and Down. See Br. 6.
DECISION
(I) The rejection of claim 1 as anticipated by Buchman is reversed.
(II) The rejection of claims 2—20 as unpatentable over Buchman
and Dowd is reversed.
(III) We enter a new ground of rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Buchman.
(IV) We enter a new ground of rejection of claims 2—20 under 35
U.S.C. § 103(a) as unpatentable over Buchman and Dowd.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
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Application 12/317,623
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
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