Ex Parte Ausnit

Board of Patent Appeals and Interferences

Sep 29, 2008

10119479 (B.P.A.I. Sep. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN AUSNIT
____________

Appeal 2008-1857
Application 10/119,479
Technology Center 3700
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Decided: September 29, 2008
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Before JENNIFER D. BAHR, LINDA E. HORNER, and
DAVID B. WALKER , Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Steven Ausnit (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 39, 40, and 43, which are the only
pending claims. We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).
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The Invention
Appellant’s claimed invention is directed to a reclosable bag. Claims
39 and 40, reproduced below, are the only independent claims and are
representative of the claimed invention.
39. A reclosable bag comprising:
a film forming first and second walls of said
reclosable bag; and
a fastener, mounted transversely to a
machine direction of said film, comprising:
at least one first reclosable profile being
supported on a first strip, said first strip including a
first web extending substantially laterally from one
side of said first profile, said first web being
attached to an open end of said first wall;
at least one second reclosable profile being
supported on a second strip, said second strip
including a second web extending substantially
laterally from one side of said second reclosable
profile, each of said at least one second profile
being complementary to and engageable with a
respective one of said at least one first reclosable
profile, said second web being attached to an open
end of said second wall; and
a slider for opening and closing said first
and second reclosable profiles;
wherein said first wall includes a first film
extension, and said second wall includes a second
film extension, said first and second film
extensions extending from a side cut in said first
and second walls to beyond said reclosable profiles
and said slider, said first and second film
extensions being sealed to each other along a seal
line parallel to and beyond said reclosable profiles.

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40. A reclosable bag comprising:
a film forming first and second walls of said
reclosable bag; and
a fastener, mounted transversely to a
machine direction of said film, comprising:
at least one reclosable profile supported on a
first strip, said first strip including a first web
extending substantially laterally from one side of
said first profile, said first web being attached to an
open end of said first wall;
at least one reclosable profile supported on a
second strip, said second strip including a second
web extending substantially laterally from one side
of said second reclosable profile, each of said at
least one reclosable profile being complementary
to and engageable with a respective one of said at
least one reclosable profile, said second web being
attached to an open end of said second wall;
a slider for opening and closing the
reclosable profiles;
wherein the first and second webs are sealed
to each other by a peel seal.

The Rejections
Appellant seeks review of the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claim 39 as unpatentable over Kuge (US 5,364,189, issued Nov.
15, 1994) and Siegel (US 3,633,642, issued Jan. 11, 1972) and claims 40 and
43 as unpatentable over Rasko (US 5,425,825, issued Jun. 20, 1995) and
Siegel.

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ISSUES
One issue presented in this appeal is whether cuts 15 of Kuge satisfy
the limitation of “a side cut in said first and second walls” in claim 39.
A second issue is whether Appellant demonstrates error in the
Examiner’s determination that it would have been obvious to provide the
zipper 30 of Kuge with a slider as taught by Siegel.
A third issue is whether Appellant demonstrates error in the
Examiner’s determination that it would have been obvious to provide the
reclosable zipper 42 of Rasko with a slider as taught by Siegel.

FINDINGS OF FACT
FF1 The Examiner finds that Kuge teaches all the limitations of claim 39
with the exception of the slider (Answer1 3).
FF2 The only aspect of the Examiner’s findings relative to Kuge (FF1)
disputed by Appellant is the finding that cuts 15 of Kuge satisfy the
“side cut in said first and second walls” limitation of claim 39 (Appeal
Br. 5). Therefore, we find that Appellant concedes that Kuge meets all
limitations of claim 39 with the exception of the side cuts and the
slider.
FF3 Kuge’s bag body 10 is formed of a pair of flat portions 11 and two
side surface portions 21 having lines 23 to be folded inwardly (col. 5,
ll. 25-29; figs. 1-3). We find that the bag body 10 comprises two
walls joined at the lines 23.

1 We refer herein to the Examiner’s Answer (“Answer”), mailed Jun. 15,
2007, and the Appeal Brief (“Appeal Br.”), filed Feb. 5, 2007.
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FF4 Kuge teaches four “cuts 15” made along lines through which the side
surface portions 21 are connected to the flat portions 11 (col. 5, ll. 32-
34; fig. 2). These cuts 15 are formed in the walls (FF3).
FF5 Kuge teaches fixing the male and female members 31 and 35 of the
zipper element 30 to flat portions 11 (col. 6, ll. 16-18; figs. 5, 6).
FF6 Kuge does not specify whether the entireties of the bases of the male
and female members 31 and 35 are sealed to portions 11.
FF7 Siegel teaches a slider 21 straddling a reclosable fastener to facilitate
operation of the fastener (col. 3, ll. 3-8; fig. 3).
FF8 Rasko teaches a reclosable bag 30 provided with a peel seal 40 and a
reclosable zipper 42 disposed between the peel seal 40 and the mouth
of the bag (col. 4, ll. 1-16; fig. 3).
FF9 Appellant illustrates in Figure 25 a tamper-evident embodiment
comprising a film extension 126 formed between two apparently
square side cuts 122 (Specification 16:23 to 17:7).

PRINCIPLES OF LAW
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading 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).
We must be careful not to read a particular embodiment appearing in
the written description into the claim if the claim language is broader than
the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
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F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language
may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”) The challenge is to interpret claims in view of the
specification without unnecessarily importing limitations from the
specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Section 103 forbids issuance of a patent
when “the differences between the subject matter
sought to be patented and the prior art are such that
the subject matter as a whole would have been
obvious at the time the invention was made to a
person having ordinary skill in the art to which
said subject matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” Id. at 1742.
While the requirement of demonstrating a teaching, suggestion, or
motivation (the TSM test established by the Court of Customs and Patent
Appeals) to combine known elements in order to show that the combination
is obvious may be “a helpful insight,” it cannot be used as a rigid and
mandatory formula. Id. at 1741. While there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness, “the analysis need not seek out precise teachings directed to the
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specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id.
Obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Nor is the artisan compelled to
blindly follow the teaching of one prior art reference over the other without
the exercise of independent judgment. Lear Siegler, Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984).

ANALYSIS
Claim 39
Appellant argues that cuts 15 of Kuge “are not formed ‘in said first
and second sidewalls’ as recited in Claim 39, rather they are formed adjacent
thereto” (Appeal Br. 5). Claim 39 requires “a side cut in said first and
second walls” (emphasis ours), not in said first and second sidewalls.
Appellant’s argument therefore is not commensurate in scope with claim 39
and thus cannot be relied on for patentability. We find that Kuge’s bag body
10 comprises two walls joined at the lines 23 (FF3). Kuge’s four “cuts 15”
are made along lines through which the side surface portions 21 are
connected to the flat portions 11 of the walls and thus are formed in the
walls (FF4).
Appellant additionally contends that Kuge’s cuts 15 are more
accurately described as “slits” because there is no material removed from the
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front or rear wall of the Kuge reference (Appeal Br. 5).2 This argument is
not persuasive. First, Kuge’s characterization of cuts 15 as “cuts” (FF4) is
strong evidence that a person of ordinary skill in the art of reclosable bags
would consider them to be “cuts.” Moreover, they appear to satisfy the
definition of “cut,” namely, “an opening, incision, wound, etc. made by a
sharp edged instrument.” Webster's New World Dictionary 350 (David B.
Guralnik ed., 2nd Coll. Ed., Simon & Schuster, Inc. 1984). We find nothing
in the ordinary and customary meaning of the term “cut” that requires that
material be removed, as Appellant’s argument implies.
For the above reasons, Appellant fails to convince us that the
Examiner erred in determining that cuts 15 of Kuge satisfy the limitation of
“a side cut in said first and second walls” in claim 39.
Appellant additionally argues that since the entire extent of the bases
of the profiles of the zipper of Kuge is sealed to the front and rear walls, the
slider of Siegel would not function properly with the zipper of Kuge (Appeal
Br. 5). We do not find this argument persuasive. While Kuge teaches fixing
the male and female members 31 and 35 of the zipper element 30 to flat
portions 11 (FF5), Kuge does not specify whether the entireties of the bases
of the male and female members 31 and 35 are sealed to portions 11 (FF6).
Nevertheless, even assuming that Appellant’s contention that the entire
extent of the bases of Kuge’s zipper elements are sealed to portions 11, a
person of ordinary skill in the art, who is also a person of ordinary creativity,
not an automaton, would not be compelled to blindly follow the teachings of

2 Appellant seemingly contrasts this with what appear to be square side cuts
122 in the embodiment of Appellant’s invention illustrated in Figure 25
(FF9).
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Kuge without regard to the teachings of Siegel (FF7). Such a person would
have the necessary skill to make whatever design alterations (e.g., extending
the bases and sealing only a portion of the bases of the fasteners to the front
and rear walls) are necessary to accommodate a slider as taught by Siegel.
To modify the zipper of Kuge so as to be a slide-operated fastener as taught
by Siegel, rather than a pressure-operated fastener, is nothing more than the
simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for the
improvement. See KSR, 127 S. Ct. at 1740.
For the above reasons, Appellant’s argument fails to persuade us the
Examiner erred in determining that it would have been obvious to provide
the zipper 30 of Kuge with a slider as taught by Siegel. We sustain the
rejection of claim 39.
Claims 40 and 43
Appellant argues for patentability of claims 40 and 43 together as a
group (Appeal Br. 6). Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii) (2007), we select claim 40 as the representative claim to
decide the appeal of the rejection of claims 40 and 43, with claim 43
standing or falling with claim 40.
Appellant’s only argument as to why claim 40 is patentable over
Rasko and Siegel is that since the entire base of Rasko’s zipper profiles is
sealed to the front and rear walls, “the slider of the Siegel reference would
not function properly with the slider of the Siegel reference” (Appeal Br. 6).
We understand Appellant’s argument to be that since the entire bases of
Rasko’s zipper profiles are sealed to the front and rear walls, Siegel’s slider
would not function properly with Rasko’s zipper. For the reasons discussed
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above with respect to the combination of Kuge and Siegel, this argument is
not persuasive. Specifically, a person of ordinary skill in the art, who is also
a person of ordinary creativity, not an automaton, would not be compelled to
blindly follow the teachings of Rasko without regard to the teachings of
Siegel (FF7). Such a person would have the necessary skill to make
whatever design alterations (e.g., extending the bases and sealing only a
portion of the bases of the fasteners to the front and rear walls) are necessary
to accommodate a slider as taught by Siegel. To modify the zipper of Rasko
(FF8) so as to be a slide-operated fastener as taught by Siegel, rather than a
pressure-operated fastener, is nothing more than the simple substitution of
one known element for another or the mere application of a known
technique to a piece of prior art ready for the improvement. See KSR, 127 S.
Ct. at 1740.
For the above reason, Appellant’s argument does not persuade us the
Examiner erred in determining that it would have been obvious to provide
the zipper 42 of Rasko with a slider as taught by Siegel. We sustain the
rejection of claim 40 and claim 43, which stands or falls with claim 40.

DECISION
The decision of the Examiner to reject claims 39, 40, and 43 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

vsh
Appeal 2008-1857
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