Ex Parte Davis et alDownload PDFPatent Trial and Appeal BoardMar 20, 201812043442 (P.T.A.B. Mar. 20, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/043,442 03/06/2008 27530 7590 03/22/2018 Nelson Mullins Riley & Scarborough LLP IP Department One Wells Fargo Center 301 South College Street, 23rd Floor Charlotte, NC 28202 FIRST NAMED INVENTOR BENJAMIN DA VIS 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 29958/09099 5313 EXAMINER HELVEY, PETER N. ART UNIT PAPER NUMBER 3782 NOTIFICATION DATE DELIVERY MODE 03/22/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ip@nelsonmullins.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BENJAMIN DA VIS and SCOTT WILLIAM HUFFER Appeal2017-003433 1 Application 12/043,442 Technology Center 3700 Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and MICHAEL L. WOODS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 4, 8-17, 19-20, 26, and 27. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify Sonoco Development, Inc., as the real party in interest. (Appeal Brief 1 ). Appeal2017-003433 Application 12/043,442 CLAIMED SUBJECT MATTER The claims are directed to a flexible packaging structure with built-in tamper-evidence features. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A flexible packaging structure having built-in opening/reclose and tamper-evidence features, comprising: an outer structure adhesively joined in face-to-face relation to an inner structure, the outer structure comprising a first flexible material and the inner structure comprising a second flexible material; a U-shaped outer line of weakness formed in the outer structure, the outer line of weakness defining an outer opening portion that is separable from the outer structure along the outer line of weakness and having two opposite longitudinally extending legs, each leg having a free end and an opposite end that connects to a transversely extending portion at a curved transition area; an inner line of weakness formed in the inner structure, the inner line of weakness defining an inner opening portion that is separable from the inner structure along the inner line of weakness; wherein the inner opening portion is joined to the outer opening portion such that lifting the outer opening portion out of the plane of the flexible packaging structure causes the inner opening portion to be lifted along with the outer opening portion so as to create an opening through the flexible packaging structure; wherein a marginal region of the outer opening portion is defined between the inner and outer lines of weakness, the marginal region overlying an underlying surface of the inner structure; wherein a pressure-sensitive adhesive is disposed on one of an overlying surface of the outer opening portion and the underlying surface of the inner structure for re-adhering the overlying surface to the underlying surface after opening; wherein an adhesive-free region folming a grasping portion is located in the outer structure; and 2 Appeal2017-003433 Application 12/043,442 a tear portion of the outer structure that is initially in an untom condition prior to initial creation of the opening, and whose untom condition is apparent from a visual inspection of the outer structure, wherein the tear portion comprises an interrupted area located away from the grasping portion and at the curved transition area along the outer line of weakness in which the outer structure is uncut, the interrupted area being tom through upon initial creation of the opening through the flexible packaging structure, and wherein the interrupted area is bounded on one side by a transverse line of weakness connected to the outer line of weakness and extending transverse thereto. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Chiesa Scott Hebert US 5,855,435 Jan. 5, 1999 US 6,589,622 July 8, 2003 US 2005/0276525 Al Dec. 15, 2005 REJECTION Claims 1, 4, 8-17, 19-20, 26, and 27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hebert, Chiesa, and Scott. OPINION The Patent Trial and Appeal Board is primarily a tribunal of review. See Ex Parte Frye, 94 USPQ2d 1072, 1075-1077 (BPAI 2010)(precedential). For that review to be meaningful, it must be based on some concrete evidence in the record to support the Examiner's factual findings and legal conclusions. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001 ). That means including "specific fact findings for each contested 3 Appeal2017-003433 Application 12/043,442 limitation and satisfactory explanations for such findings." Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997). Regarding a disputed limitation appearing in each of the independent claims before us, claims 1, 17, and 26, that requires an interrupted area of the tear portion to be located "at the curved transition area," the Examiner reasoned: At the time of the invention, it would have been obvious to one of ordinary skill in the art to locate the interrupted area at the curved transition area taught by Hebert in light of Scott teaching locating tamper-evidencing features in the claimed curved transition area. It has been held that rearranging parts of an invention involves only routine skill in the art. Final Act. 4; Ans. 11 (each citing In re Japikse, 181 F.2d 1019 (CCPA 1950)). In Japikse the court summarized the Patent Office position regarding shifting a switch having no effect on the operation of the claimed devices, and stated, without further discussion, "[ w ]e find no error in the holding." Although MPEP § 2144.04(IV)(C) cites Japikse as an example of using legal rationale as the basis for concluding that a rearrangement of parts was obvious, that same section of the MPEP also cautions (citing Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (BPAI 1984)): [ t ]he mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness. The prior art must provide a motivation or reason for the worker in the art, without the benefit of appellant's specification, to make the necessary changes in the reference device. While strict requirements to find within the prior art express motivations to make proposed modifications have been rejected (KSR 4 Appeal2017-003433 Application 12/043,442 International Co. v. Teleflex Inc., 550 U.S. 398 (2007)), so too has reliance on per se rules of obviousness: The use of per se rules, while undoubtedly less laborious than a searching comparison of the claimed invention - including all its limitations - with the teachings of the prior art, flouts section 103 and the fundamental case law applying it. Per se rules that eliminate the need for fact-specific analysis of claims and prior art may be administratively convenient for PTO examiners and the Board . . . But reliance on per se rules of obviousness is legally incorrect and must cease. Any such administrative convenience is simply inconsistent with section 103, which, according to Graham and its progeny, entitles an applicant to issuance of an otherwise proper patent unless the PTO establishes that the invention as claimed in the application is obvious over cited prior art, based on the specific comparison of that prior art with claim limitations. In re Ochiai, 71 F. 3d 1565, 1571-72 (Fed. Cir. 1995). What is lacking in the Examiner's rejection is a fact-specific analysis as to why it would have been obvious to locate the interrupted areas in the specific location recited in the claims. Without any such analysis, grounded in some combination of fact and reason, we have difficulty regarding the Examiner's statement above as anything but conclusory. App. Br. 6. "' [R ]ejections on obviousness 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, 441F.3d977, 988, (Fed. Cir. 2006)); see also MPEP §§ 2141, 2143.01. Accordingly, the Examiner's rejection cannot be sustained on the basis set forth by the Examiner. 5 Appeal2017-003433 Application 12/043,442 DECISION The Examiner's rejection is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation