Ex parte Ball

Board of Patent Appeals and Interferences

Jan 28, 1999

08155730 (B.P.A.I. Jan. 28, 1999)

Application for patent filed November 22, 1993. 1
According to appellant, this application is a continuation of
Application 07/847,662 filed March 5, 1992, now U.S. Patent
No. 5,310,056 issued May 10, 1994; which is a continuation of
Application 07/809,048 filed December 16, 1991, now U.S.
Patent No. 5,174,449 issued December 29, 1992; which is a
continuation-in-part of Application 07/593,335 filed October
1, 1990, now abandoned; which is a continuation of Application
06/864,026 filed May 16, 1986, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOSEPH F. BALL
____________
Appeal No. 95-4806
Application No. 08/155,7301
____________
HEARD: January 11, 1999
____________
Before ABRAMS, STAAB and McQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
Appeal No. 95-4806
Application No. 08/155,730
2
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 47-54, which constitute all of the
claims presently pending in the application.
The appellant's invention is directed to an improved
packaging material comprising a plastic web of preopened bags
interconnected in end-to-end relationship.
The subject matter before us on appeal is illustrated by
reference to claim 47, which has been reproduced in an
appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Lerner 3,254,828 Jun. 7,
1966
Benoit 4,597,494 Jul. 1,
1986
Appeal No. 95-4806
Application No. 08/155,730
A double patenting rejection was overcome by the filing2
of a terminal disclaimer (Paper No. 6), and a second rejection
under Section 103 was withdrawn (Paper No. 12).
3
THE REJECTION2
Claims 47-54 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Lerner in view of Benoit.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
examiner and the appellant as set forth in the Answer and the
Brief.
In evaluating the examiner’s rejection, the basic
guidance provided by our reviewing court is that in rejections
under 35 U.S.C. § 103 the examiner bears the initial burden of
presenting a prima facie case of obviousness (see In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
Appeal No. 95-4806
Application No. 08/155,730
A “preopened bag” is one in which an opening has been3
created by making a slit in one of the two layers of plastic
that have been attached together at their edges to form the
bag, as is best illustrated in Figures 3 and 4 of the Lerner
reference.
4
1993)), which is established when the teachings of the prior
art itself would appear to have suggested the claimed subject
matter to one of ordinary skill in the art (see In re Bell,
991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)).
The appellant’s invention is directed to solving a
problem that, according to the evidence presented, remained
unsolved in the packaging art for at least twenty-five years
(see affidavits of Bernard Lerner, Dana Liebhart and Vincent
Lattur). The invention applies to the type of packaging in
which an elongated web of preopened bags in interconnected3
end-to-end relationship is conveyed past stations in which an
article is placed into each bag, the bag is closed or sealed,
and the bags are separated from the web along lateral lines of
weakness defining the top and bottom of the bag. In such a
system, if the web is conveyed in the direction of the open
end of the bags, they would be blown open, which severely
Appeal No. 95-4806
Application No. 08/155,730
5
complicates the process. For this reason, when the webs are
manufactured, they are conveyed in the direction of the closed
end of the bags and therefore, when the web is coiled for
transport to the user, the closed ends of the bags are
oriented inwardly of the coil, with the open ends being
outwardly oriented. Removing the bags by unwinding from the
outside of the coil at the packaging station caused the open
ends to be oriented in the direction of travel which, as
explained above, was undesirable. Therefore, it was the
practice in the prior art to rewind each coil of bags before
use in the packaging operation, so that as the bags were
unwound from the outside of the coil they were oriented with
the closed end in the direction of travel. This process of
rewinding was a slow and complicated one, for there seemingly
was no way to avoid moving the web in the direction of the
opening in the bags, with the attendant problem of the bags
opening. Several techniques were tried over the years to
prevent the bags from opening during rewinding, but none were
considered to be successful. See Brief, pages 2-5.
The appellant’s solution to the problem was not to rewind
the coiled web, but to remove the web from the inside of the
Appeal No. 95-4806
Application No. 08/155,730
6
coil, wherein the closed ends of the bags would emerge
oriented in the direction of travel. The crux of the
invention is manifested in claim 47 in the following passages:
e. the web being flattened and wound in a coil
having, prior to dispensing, a center opening of a
diameter at least as great as the width of the web;
and
f. the coiled web being oriented such that as the
web is fed along a path of travel from the center
opening bags of the web are fed along such path
closed end first.
Claim 51 differs only in the manner in which the opening is
described:
e. the web being flattened and wound in an annular
coil having, prior to dispensing, a center opening
from which the web is free to be fed for packaging
operations, the opening being sized such that a web
comprised of a series of such bags may be fed from
the coil center opening to a packaging station
without causing premature separation along one or
more of such lines of weakness.
The examiner has taken the position that all of the subject
matter recited in independent claims 47 and 51 “except for the
opening constructed to permit dispensing therefrom” is
disclosed in Lerner, but that from Benoit “it was known in the
art to dispense bags from a center opening of a coil of bags,”
and therefore it would have been obvious to provide the coil
Appeal No. 95-4806
Application No. 08/155,730
7
of Lerner with the Benoit opening “in order to facilitate
rapid and easy handling” (Answer, pages 2 and 3). We are
persuaded by the arguments and evidence provided by the
appellant, however, that this is not the case.
Lerner discloses the claimed elongated web of preopened
plastic bags interconnected in end-to-end relationship and
provided with lines of weakness whereby the individual bags
can be separated from the web after packaging. As shown in
Figure 4, the Lerner web is unwound from the outside of the
coil with the closed ends of the bags oriented in the
direction of movement. This is illustrative of the modus
operandi of the prior art, and the creation of the coil
illustrated in Lerner first necessitated that the web be
rewound from its prior state, that is, the state which is
utilized in the appellant’s invention. There is no discussion
in Lerner with regard to the center opening in the coil, other
than to state that it accommodates an axle (column 7). Thus,
Lerner fails to disclose or teach the limitations of claims 47
and 51 regarding the size of the center opening and the
orientation of the web (subparagraphs e. and f.).
Appeal No. 95-4806
Application No. 08/155,730
8
Benoit relates to packaging and dispensing plastic bags
that are in an elongated plastic web in interconnected end-to-
end relationship. In the background of the invention portion
of Benoit there is a discussion of the problem of twist being
imparted to bags being removed from the center of a roll,
which includes mention of the relationship between the length
of the bags and the diameter of the center opening of the
coil, and concludes with the statement that “the larger the
bag, the more twist it is given during dispensing” (column 3,
lines 20 and 21). Benoit then characterizes his invention in
the following manner (column 3, lines 25-37):
There is accordingly a need for a method and
means for dispensing large center-windable plastic
bags with minimum hand manipulation by the user.
A carton for shipping and successively
dispensing large plastic bags from a center-windable
roll thereof should have as nearly square a
configuration, in the dimensions that are
perpendicular to the width of the bags, as possible
in order to maximize the strength of the carton and
its shipping, storing, and dispensing
characteristics and convenience. There is
consequently a need for a method that can
selectively impart such a selected configuration to
a roll of center-unwindable plastic bags being
packaged into a carton.
It is clear from the foregoing, considered in the light
of the explanation of the invention, that the intention of
Appeal No. 95-4806
Application No. 08/155,730
9
Benoit is not to dispense bags from a center opening of a
coil. The first step in the Benoit process is to coil the
bags (Figure 1). However, the coil, as such, then is
discarded. As illustrated in Figures 6-8, Benoit compresses
the coil to eliminate the center opening (Figure 7), after
which it is folded into the “horseshoe” shown in Figure 8.
Benoit teaches dispensing the bags from the inside of the
package, as shown in Figure 12, at which point the center
opening has ceased to exist, for what was the inner surface 63
of the center opening of Figure 6 now has become, by virtue of
the compression and folding, a slit 123 through which the bags
124 protrude and are pulled out to be dispensed (Figure 12).
This being the case, while the examiner focuses on Benoit’s
statement that ”the larger the inner roll diameter for a given
bag size, the less twist is encountered when removing a large
bag from the roll by center unwinding” (column 3, lines 64-
66), it is our view that Benoit actually is not referring to
the diameter of an opening, but to the effective length of the
folded slit in the compressed and folded packages of Figure 12
et al. Thus, while at one point in the process of forming a
dispensing package there exists a coil having a center
Appeal No. 95-4806
Application No. 08/155,730
10
opening, in the Benoit system bags are not dispensed
therefrom.
In addition, as the appellant has pointed out, Benoit has
no concern for removing the bags from the dispensing package
in such a manner as not to break the perforations between
successive bags, which is a major consideration in the
appellant’s system. Benoit is not dispensing bags for further
processing, as is the case with the appellant’s invention.
Benoit’s system is geared to providing bags for immediate use,
such as garbage or produce bags, which are to be torn from the
web as they exit the package. The appellant now has placed in
the record copies of the references referred to in the opening
lines of Benoit’s column 3 to make the point that the field in
which the Benoit invention is used differs from that to which
the appellant’s invention is directed. The appellant asserts,
and we agree, that it matters not at all in Benoit that the
bags be dispensed from the roll in such a manner as not to
break the perforations. In fact, Benoit specifically teaches
that the “roll” from which the bags are dispensed is a
”horseshoe-folded roll,” and that the bag is pulled by the
user from an “off-set slot means for grippingly engaging” each
Appeal No. 95-4806
Application No. 08/155,730
11
bag so as to provide “sufficient tension” to tear the bag from
the succeeding one along the line of perforations (column 4,
line 10 et seq.). This differs from the appellant’s
invention, where such tension is not desired, and is the
reason that the appellant’s claims contain limitations
regarding the size of the coil center opening.
The bags with which the Benoit invention is used are
garbage bags, produce bags and the like. Benoit does not
state that these are “preopened” bags, nor in our opinion
would one of ordinary skill in the art expect them to be.
Therefore it would appear to matter not whether it is the top
or the bottom of the bags which exit from the package first.
This is confirmed by the in fact that no concern for this is
evidenced in the Benoit patent.
The factors discussed above lead us to the conclusion
that the combined teachings of the two applied references fail
to establish a prima facie case of obviousness with regard to
either of the independent claims for, even when considered in
the most favorable light, they fail to disclose or teach two
of the limitations contained in each of the independent
Appeal No. 95-4806
Application No. 08/155,730
12
claims. First, even considering, arguendo, that Benoit
teaches dispensing a web of bags from the center opening of a
coil, since Benoit is silent as to which end of the bag exits
first and Lerner teaches dispensing bags closed end first but
from the outside of the coil, we fail to perceive any
teaching, suggestion or incentive which would have led the
artisan to orient a web of preopened bags in the Benoit coil
such that each bag exits the center opening in the coil with
the closed end first. Thus the limitation set forth in the
final clause of each of claims 47 and 51 is not met. Second,
given the fact that neither reference relates the width of the
web to the diameter of the center opening of a coil, and
neither recognizes the problem of insuring that the bags are
not separated by the force of being pulled from the center
opening of the core, the requirements recited in each
independent claim concerning the size of the opening are not
taught. Nor, in our view, would these limitations inherently
have been met by combining the teachings of the applied
references.
From our perspective, the only suggestion to combine the
references is found in the hindsight afforded one who first
Appeal No. 95-4806
Application No. 08/155,730
We acknowledge that these same claims were evaluated in4
view of the same references by a panel of this Board in a
decision mailed August 31, 1993, with the opposite result
having been reached. However, we had the benefit of evidence
and arguments presented by the appellant which were not
before the previous panel.
13
viewed the appellant’s disclosure. This, of course, is
impermissible as the basis for a rejection. See In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992):
The rejection is not sustained.4
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
Appeal No. 95-4806
Application No. 08/155,730
14
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
bae
Watts, Hoffmann, Fisher & Heinke Co.
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