Ex Parte Bohn et al

Patent Trials and Appeals Board

Dec 11, 2013

12322144 - (D) (P.T.A.B. Dec. 11, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/322,144 01/29/2009 Michael Bohn 247097-001355USD1 7406
56356 7590 12/11/2013
PACTIV CORPORATION
c/o NIXON PEABODY LLP
300 S. Riverside Plaza
16TH FLOOR
CHICAGO, IL 60606
EXAMINER
TAWFIK, SAMEH
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
12/11/2013 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
________________

Ex parte MICHAEL BOHN, ROGER E. DOWLER, and
MATTHEW OSWALD
________________

Appeal 2012-000433
Application 12/322,144
Technology Center 3700
________________

Before: MICHAEL L. HOELTER, JAMES P. CALVE, and
LYNNE H. BROWNE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-000433
Application 12/322,144

2
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 11 and 13-16. App. Br. 2. Claims 1-10,
12, and 17-20 have been withdrawn from this application.1 App. Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to a continuous
process for making slider reclosable fastener segments that may be applied
to bags.” Spec. para. [0002]. Independent claim 11 is illustrative of the
claims on appeal and is reproduced below:
11. A method of forming a bag, the method comprising the
acts of:
providing a reclosable fastener track, the track having a
first fin portion and a second fin portion, the first fin portion
having a first profile and the second fin portion having a second
profile, the first and the second profiles cooperating to form a
reclosable seal;
forming a slit in the track, the slit being formed through
the profiles of the track and portions of the fins nearest the
profiles;
attaching a slider to the track, the slider attaching over
the slit in the track;
sealing the slit in the track creating a resealed area;
attaching the fastener track to a film or the bag after the
act of attaching the slider to the track and after the act of sealing
the slit in the track creating a resealed area; and
if attaching the fastener track to the film, then forming
the bag from the film.

1 The question as to whether or not withdrawn claims 1-10, 12, and 17-20
may be rejoined with the elected invention is not a matter before the Board,
but rather an issue which the Examiner should address upon return of the
application to the Examiner’s jurisdiction subsequent to our decision.
Appeal 2012-000433
Application 12/322,144

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REFERENCES RELIED ON BY THE EXAMINER
Kosky US 4,262,395 Apr. 21, 1981
Donovan US 5,431,760 Jul. 11, 1995
Thomas WO 01/70491 A1 Sep. 27, 2001

THE REJECTIONS ON APPEAL
1. Claims 11 and 13-16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thomas. Ans. 4.
2. Claims 11 and 13-16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Donovan and Kosky. Ans. 5.

ANALYSIS
The rejection of claims 11 and 13-16 as being unpatentable over Thomas
The Examiner finds that “Thomas discloses a method of forming a
bag as described” in independent claim 11 but acknowledges that “Thomas
does not disclose attaching the fastener track to a film or the bag after the act
of sealing the slit in the track” as claimed. Ans. 4 (emphasis added). This is
because the Examiner finds that “Thomas discloses attaching the fastener
track to the bag before sealing the slit in the track.” Ans. 4 (emphasis
added), see also Thomas Figs. 5, 6. The Examiner, however, concludes that
“it has been held that rearranging parts/steps of an invention involves only
routine skill in the art” and hence Thomas renders the claimed invention
obvious. Ans. 5. More specifically, the Examiner finds that “[i]t is a matter
of designing the device, which is a matter of rearranging parts/steps of
manufacturing.” Ans. 8.
Appellants dispute this rejection and reference Paragraph [0024] of
their Specification which discusses the advantages of attaching the fastener
Appeal 2012-000433
Application 12/322,144

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track to the bag material “after the act of sealing the slit in the track” as
claimed. App. Br. 10. These advantages include preventing the open slit
from catching on other equipment; preventing portions of the track from
breaking off and falling into the bag’s contents; the resealed area increases
the strength of the bag; and there is no loss of structural integrity of the
track. Spec. para. [0024]. Appellants contend that the method taught by
Thomas does not have such advantages because Thomas attaches the track to
the bag material before the slit is resealed. App. Br. 10. Thomas addresses a
different set of manufacturing issues that arise when the entire bag-making
process, including installation of the sliders, is not performed on a single
manufacturing line. Thomas 2:9-11. Thomas teaches that it is becoming
“increasingly common for a first manufacturer or manufacturing line to
mount sliders on a continuous fastener, and a second manufacturer or
manufacturing line to attach such a slider-carrying fastener to a continuous
web of bag material and form individual bags” such that the bag closure
device must be moved from the one to the other. Thomas 2:11-14. In this
regard, Appellants contend that “[m]odifying Thomas’s process would also
change the principle of its operation by changing its functionality.” App. Br.
10.
We are instructed that if a claimed invention functions differently
from the prior art, then the claimed invention is not an obvious matter of
design choice. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (claimed
chip design was not a matter of design choice over the prior art where
applicant disclosed that the claimed design achieved desired functions
different from the prior art); In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995)
(holding that claimed feature was not a matter of design choice where there
Appeal 2012-000433
Application 12/322,144

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was no suggestion or teaching to modify the prior art in this manner and
applicant introduced evidence showing the benefits of the claimed feature).
In accordance with these instructions from our reviewing court and because
Appellants have shown that the claimed method functions differently from
Thomas’s method, the Examiner’s articulated reason that rearrangement of
the parts/steps of Thomas is a matter of design lacks a rational underpinning.
Appellants also contend that “the law of obviousness requires the
[E]xaminer to clearly articulate ‘an apparent reason’ why a person skilled in
the art would be compelled to combine ‘the known elements’ to achieve the
invention claimed. KSR, 550 U.S. at 418.” App. Br. 10. More succinctly,
Appellants contend that “[t]he Examiner still has not provided a reason []
why one skilled in the art would be motivated to modify [] Thomas’s
process.” Reply Br. 2. The Examiner’s sole reason for rearranging Thomas
is that it “involves only routine skill in the art.” Ans. 5. The Examiner does
not explain how, in Thomas, the step of resealing the slit (see Figure 6) prior
to attaching the track to the bag (see Figure 5) is to occur since in Thomas,
the resealing of the slit and the sealing of the bag occurs at the same time
with the same heated bar 46. Thomas 6:20-26. In other words, the
Examiner’s proposed rearrangement of Thomas would (presumably) involve
divorcing the single sealing operation shown in Figure 6 into a new slit-
resealing-only operation occurring prior to bag attachment with the bag-
sealing-only operation following such bag attachment, with each involving
different components. In essence, the Examiner’s proposal is more than
simply moving (rearranging) the operation depicted in Thomas’ Figure 6
before that depicted in Figure 5.
Appeal 2012-000433
Application 12/322,144

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The Supreme Court in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
417 (2007) stated that “‘simply arrang[ing] old elements with each
performing the same function it had been known to perform’ and yield[ing]
no more than one would expect from such an arrangement, the combination
is obvious” (quoting Sakraida v. Ag Pro, Inc. 425 U.S. 273, 282 (1976)).
Here, the Examiner does not provide an explanation as to how Thomas’
elements, and particularly the operation depicted in Figure 6, performs “the
same function it had been known to perform” (KSR, 550 U.S. at 417) since,
as understood, this step is to be rearranged into two different operations
occurring at two different points in time.
The Court also provides instruction that “‘[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.’” KSR, 550 U.S. at 418,
quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also App. Br.
10. Here, the Examiner does not provide any reason why one skilled in the
art would rearrange Thomas or explain how doing so “involves only routine
skill in the art” as asserted. Ans. 5. Accordingly, we reverse the rejection of
independent claim 11 and dependent claims 13-16 as being obvious over
Thomas.

The rejection of claims 11 and 13-16
as being unpatentable over Donovan and Kosky
In this rejection, the Examiner relies on Kosky for disclosing the
method step of “attaching the track to the film/bag after the act of attaching
the slider to the track, see for example (Figs. 7 and 8)” as found in
independent claim 11. Ans. 5-6. Appellant disagrees asserting that “strips 2
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Application 12/322,144

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and 4 of Kosky are formed by extrusion to the sheet 5 and then after the bag
is formed, the clasp is mounted.” App. Br. 12.
Kosky teaches extrusion of the track (strips 2 and 4) along with bag 5.
Kosky 1:19-28, 2:67-68. Accordingly, since the track is already secured to
the bag, the Examiner does not explain how Kosky also teaches the claimed
step of attaching the sliders to the track before the track is attached to the
bag. In other words, as Kosky’s track and bag are “extruded in one” piece
(Kosky 2:67-68), Kosky teaches attaching the sliders to the track after the
track has been attached to the bag. Kosky 2:67 to 3:8. In other words,
Kosky’s sliders are not attached before the track is attached to the bag as
claimed. Accordingly, the Examiner has not made the initial requisite
factual findings and as such, we agree with Appellants that the Examiner
failed to “establish prima facie obviousness” as required for a proper
rejection under § 103(a). App. Br. 6. See In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (the examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis). We reverse the
rejection of independent claim 11 and dependent claims 13-16 as being
obvious over Donovan and Kosky.

DECISION
The Examiner’s rejections of claims 11 and 13-16 are reversed.

REVERSED
rvb