Ex Parte Davis et al

Patent Trial and Appeal Board

Mar 20, 2018

12043442 (P.T.A.B. Mar. 20, 2018)

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
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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
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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
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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.
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Application 12/043,442
DECISION
The Examiner's rejection is reversed.
REVERSED
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