Ex Parte Daigle et al

Patent Trials and Appeals Board

Sep 5, 2013

11739959 - (R) (P.T.A.B. Sep. 5, 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.
11/739,959 04/25/2007 Charles Daigle 006759.00107 1269
22907 7590 09/06/2013
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
TRUONG, THANH K
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
09/06/2013 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 CHARLES DAIGLE, MICHAEL G. KAMINSKI,
ROB VAN UIJEN, and VLADIMIR YAMPOLSKY
____________________

Appeal 2010-006185
Application 11/739,959
Technology Center 3700
____________________

Before KEN B. BARRETT, CHARLES N. GREENHUT,
and MICHAEL L. HOELTER, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Charles Daigle et al. (Appellants) filed a request for rehearing under
37 C.F.R. § 41.52 (hereinafter “Request”), dated July 25, 2012, of our
decision mailed June 1, 2012 (hereinafter “Decision”). Appellants request
rehearing of our Decision sustaining the rejection of claims 14-17 under 35
U.S.C. § 103(a) as being unpatentable over Cooper (US 6,460,313 B1,
issued Oct. 8, 2002) and Spurr (US 6,099,178, issued Aug. 8, 2000).

Appeal 2010-006185
Application 11/739,959

2
OPINION
Requests for Rehearing are limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See 37
C.F.R. § 41.52.
Appellants argue that “the Decision misapprehends . . . that there is no
indication in Cooper that the machine is adaptable for processing films of
variable properties.” Request 2. Appellants’ argument is not persuasive. As
the Examiner notes, Cooper’s controller “is there for a reason.” Ans. 7.
Appellants agree that Cooper’s controller is to provide proper control of, at
least, temperature. See Decision 3 (quoting App. Br. 3-4). Appellants
acknowledge that sealing temperature is a parameter that can be affected by
material properties. See Spec., para. 51. Even if the purpose of Cooper’s
temperature controller merely is to fine-tune the machine, as Appellants
impliedly argue (Hrg. Tr. 3:4-9), this still indicates that Cooper’s machine is
adaptable, at least within a certain range of variability, for processing films
of variable properties.

1 In the Decision, the panel cited paragraph 5 of the Specification in
response to Appellants’ argument that Cooper does not control any variable
related to a film material property. See Decision 3-4; see also App. Br. 6
(“Significantly, Cooper does not disclose or suggest controlling operation of
the air cushion device according to particular properties of a specific film
material.”). Appellants should not be heard to argue that Cooper’s machine
– having a temperature controller – does not control any property-related
variable where Appellants have stated in their Specification that “currently
available inflation and sealing machines generally require some level of user
input, particularly when a roll of film is replaced with a roll of film of
different . . . other properties which can affect parameters such as sealing
temperature . . . .” Spec., para. 5 (emphasis added).
Appeal 2010-006185
Application 11/739,959

3
Appellants argue:
Even if the statements in Appellants’ own specification were
read into Cooper, there still would have been no reason for the
Cooper controller to gather data on film properties, since the
apparatus would need to be disassembled and reconfigured to
process films of different properties. (Spec. ¶ 6). Obviously
these are not the types of adjustments that could be made
automatically in response to a controller receiving data.
Request 2. This argument is not persuasive. In making this argument,
Appellants implicitly overstate that which is disclosed in paragraph 6 of the
Specification. Paragraph 6 does not address all film properties but merely
refers to replacing springs and other mechanisms to adjust for a specific
material property, film thickness, in order to obtain the proper sealing
pressure. Even were we to assume that the same sealing pressure results in
Cooper could not be attained through automation and without disassembly,
Appellants acknowledge that Cooper’s temperature control is capable of
controlling temperature without disassembling the machine. Reply Br. 2
(Appellants arguing that Cooper describes automation in the form of a
“controller . . . to provide proper control of temperature and timing.”).
Accordingly, we are not persuaded by Appellants’ argument (see Request 2)
that Cooper’s controller would have no reason to acquire property data
related to a controlled variable.
Appellants repeat the argument that the Examiner’s rejection lacks
articulated reasoning with rational underpinning. Request 3. Appellants do
not convince us that we misapprehended anything in this regard or otherwise
erred in our earlier treatment of this argument. See Decision 4. The
Examiner logically and persuasively reasons that one of ordinary skill in the
art would have recognized that Cooper’s type of controlling would be
Appeal 2010-006185
Application 11/739,959

4
benefited by the further automation that comes with utilizing a reader like
that taught by Spurr. Ans. 6-8.
Appellants assert that “Spurr is in a completely different field of
endeavor.” Request 3. To the extent that Appellants are repeating the
argument that Spurr is non-analogous art, we have addressed that argument
on page 4 of the Decision (agreeing with the Examiner, and citing Ans. 6-7).
Appellants’ Request does not persuade us that this panel’s Decision
overlooked or misapprehended any matter or that we erred in affirming the
Examiner’s rejection of claims 14-17 under 35 U.S.C. § 103(a) as being
unpatentable over Cooper and Spurr.

DECISION
Appellants’ Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellants’ Request,
but is denied with respect to our making any modification to the Decision.
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).

DENIED

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