Ex parte DOWNING et al.

Board of Patent Appeals and Interferences

Dec 21, 1998

08134853 (B.P.A.I. Dec. 21, 1998)

Application for patent filed October 12, 1993. 1
According to appellants, the application is a continuation of
Application 07/656,439, filed February 19, 1991, now
abandoned, which is a continuation-in-part of Application
07/417,775, filed October 6, 1989, now U.S. Patent No.
5,397,427, issued March 14, 1995.
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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journal and (2) is not binding precedent of the Board.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. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte RICHARD S. DOWNING and JOHN E. TRAISE
________________
Appeal No. 96-1227
Application 08/134,8531
________________
ON BRIEF
________________
Before COHEN, FRANKFORT and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Richard S. Downing et al. originally took this appeal
Appeal No. 96-1227
Application 08/134,853
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from the final rejection of claims 1 through 10 and 24. The
appellants have since canceled claim 1, amended claims 2
through 9 and 24 and added claim 26. Thus, the appeal now
involves claims 2 through 10, 24 and 26. Claims 12 through
23, the only other claims pending in the application, stand
withdrawn from consideration pursuant to 37 CFR § 1.142(b).
The subject matter on appeal relates to a method of
sealing business forms. Claim 26 is illustrative and reads as
follows:
26. A method of handling a plurality of paper business
forms in succession, each form having at least two strips of
pressure sealing adhesive of a predetermined width for fixing
one part of the business form to another part, and wherein one
of said strips of pressure sealing adhesive extends
substantially perpendicularly to the other, comprising the
step of (a) automatically, in a continuous, sequential manner,
acting on successive business forms aligned in a predetermined
orientation, and each fed in a single direction of movement
corresponding to a long grain direction of said one part and
said another part, to apply a force thereto sufficient to
activate the pressure sealing adhesive to fix said one part of
the form to said another part of the form, the force being
applied substantially equally to each strip and only to the
approximate area of the predetermined width of said two strips
of pressure sealing adhesive, without having to alter said
predetermined orientation or single direction of movement of
said successive business forms.
The references relied upon by the examiner are:
Klar 3,068,933 Dec. 18,
1962
Appeal No. 96-1227
Application 08/134,853
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Neill et al. (Neill) 4,033,807 Jul. 5, 1977
Gerlach et al. (Gerlach) 4,035,984 Jul. 19,
1977
Traise et al. (Traise) 5,397,427 Mar. 14, 1995
(filed Oct. 6, 1989)
Claims 2 through 10, 24 and 26 stand rejected:
a) under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over Claims 1
through 25 of the Traise patent in view of Klar and Gerlach;
b) under 35 U.S.C. § 103 as being unpatentable over Neill
in view of Klar and Gerlach; and
c) under 35 U.S.C. § 103 as being unpatentable over
Traise in view of Klar and Gerlach.
Reference is made to the appellants’ main and reply
briefs (Paper Nos. 29 and 31) and to the examiner’s answer
(Paper No. 30) for the respective positions of the appellants
and the examiner with regard to the merits of these
rejections.
In response to the obviousness-type double patenting
rejection, the appellants filed a terminal disclaimer (Paper
No. 32) with their reply brief. The record indicates that
this terminal disclaimer has been reviewed, accepted and duly
Appeal No. 96-1227
Application 08/134,853
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recorded (see Paper No. 33). The examiner, however, has not
made any determination as to the effect of the terminal
disclaimer on the double patenting rejection. Since an
appropriate terminal disclaimer overcomes an obviousness-type
double patenting rejection (see MPEP § 804.02), and the
examiner has failed to give any reason why the terminal
disclaimer filed by the appellants is insufficient in this
regard, we shall not sustain the standing obviousness-type
double patenting rejection of claims 2 through 10, 24 and 26.
Nor shall we sustain either of the standing 35 U.S.C. §
103 rejections of claims 2 through 10, 24 and 26.
Neill, the examiner’s primary reference in the first of
these rejections, discloses a system for manufacturing two-way
mailers from blanks having perpendicularly arranged bands or
strips of hot-melt adhesive thereon. As described by Neill,
the mailer passes through a pair of heated end
sealers 29 of a finishing stage SS which serve to
adhere the end margins of the sections together, and
from there through a cross sealer 30 which applies
heat and pressure in the long margin of the sections
to complete the two-way mailer [column 8, lines 36
through 41].
Figure 8 shows that the paths taken by the mailers through the
Appeal No. 96-1227
Application 08/134,853
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end sealers 29 and cross sealer 30 are perpendicular to one
another.
Klar discloses a packaging machine and method “wherein
the packages pass between two nipping rollers which apply heat
and pressure along one or more edges of the package to effect
sealing” (column 1, lines 9 through 11). As best shown in
Figure 1, “[t]he two heated rollers 1, 2 of the machine are
provided with recesses so as to form raised transverse
portions 3 for sealing the transverse edges of the bag or flat
packages passing between the rollers, as well as peripheral
raised portions 4 which serve to seal the longitudinal edges”
(column 2, lines 64 through 69).
Gerlach discloses a packaging apparatus and method
wherein “a web having a pre-printed pattern of pressure
sensitive sealant thereon may be pressure sealed with the
subject apparatus when the material is cold” (column 2, lines
46 through 48).
In explaining the first of the § 103 rejections, the
examiner concludes that it would have been obvious to one of
ordinary skill in the art (1) “to substitute Klar’s sealing
Appeal No. 96-1227
Application 08/134,853
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roller pair for both pairs of Neill et al’s sealing rollers,
because Klar teaches that longitudinal and transverse seals
may be made using only one pair of his rollers” (answer, page
3), and (2) “to design Klar’s sealing rollers in the
combination above for pressure sealing, because Gerlach et al
teach that pressure sealing is an alternative method of
longitudinally and transversely sealing overlying webs”
(answer, page 3).
As pointed out by the appellants, however, independent
claim 26 requires that business forms aligned in a
predetermined orientation be “fed in a single direction of
movement corresponding to a long grain direction of said one
part and said another part” and that a force be applied to
each perpendicular strip of adhesive only to the approximate
area of the predetermined width of the strips “without having
to alter said predetermined orientation or single direction of
movement” of the forms. In response to the appellants’
argument that the proposed combination of Neill, Klar and
Gerlach does not respond to these limitations, the examiner
submits that “[i]t would have been within the purview of those
having ordinary skill in the art to choose to convey the
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Application 08/134,853
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business forms in the methodology of the above combined
references in the long grain direction” (answer, page 4).
Rejections based on 35 U.S.C. § 103 must rest on a
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 177-78 (CCPA 1967). In making such a rejection, 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. Id.
The above limitations in claim 26 relating to the “long
grain direction” are disclosed in the appellants’
specification (see page 3) as solving the problem of form
wrinkling caused by the application of sealing forces in the
direction perpendicular to the long grain direction of the
form. This problem and the appellants solution thereto are
further discussed in the 37 CFR § 1.132 declaration of David
G. Wagner filed on December 20, 1994 (Paper No. 24). Neill,
Klar and Gerlach do not make any mention of the long grain
direction of the respective packaging materials disclosed
therein, and certainly do not appreciate that grain direction
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Application 08/134,853
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is a factor to be taken into account during the sealing
process to prevent wrinkling. The examiner’s attempt to
overcome these deficiencies in the applied prior art by baldly
stating that the claim limitations in question would have been
within the purview of those of ordinary skill in the art
clearly rests on speculation, unfounded assumptions and/or
hindsight reconstruction.
Moreover, this fundamental flaw in the prior art also
applies to the examiner’s proposed combination of Traise, Klar
and Gerlach in the second 35 U.S.C. § 103 rejection of claims
2 through 10, 24 and 26.
Thus, the two prior art combinations advanced by the
examiner to support the 35 U.S.C. § 103 rejections on appeal
fail to provide the factual basis necessary to conclude that
the differences between the subject matter recited in
independent claim 26, and in dependent claims 2 through 10 and
24, and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art.
In summary and for the above reasons, the decision of the
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Application 08/134,853
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examiner to reject claims 2 through 10, 24 and 26 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
CHARLES F. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-1227
Application 08/134,853
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