Ex Parte Formo

Board of Patent Appeals and Interferences

Jul 30, 2004

09520947 (B.P.A.I. Jul. 30, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NORMAN PAUL FORMO
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Appeal No. 2004-0996
Application No. 09/520,947
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ON BRIEF
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Before WALTZ, KRATZ, and PAWLIKOWSKI, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 25 through 35, which are the only claims
pending in this application. We have jurisdiction pursuant to
35 U.S.C. § 134.
According to appellant, the invention is directed to a method
of providing a double package for pre-sliced loaves of bread having
a tight, neat inner package and an outer bag, as well as the double
package of bread itself (Brief, page 2). Further details of the
invention may be gleaned from independent claims 25 and 32
reproduced below:
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Application No. 09/520,947
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25. A method for packaging a loaf of bread, which method
comprises:
feeding the loaf through an open first end of an inner
preformed bag having a closed second end opposite the first end,
the closed second end of the inner preformed bag having bag-
weakening opening means for enabling access to the loaf by a
consumer through the second end of the inner bag;
closing the first end of the inner bag and heat shrinking the
inner bag to closely encircle the loaf;
inserting the heat shrunk inner bag and enclosed loaf endwise,
second end last, through an open end of a preformed outer bag which
outer bag has a closed end opposite the open end, the open end of
the outer bag being configured for closing and for reopening by a
consumer, but the closed end of the outer bag not being configured
for opening by a consumer; and
closing the open end of the outer bag such that the bag-
weakening opening means is presented to a consumer upon reopening
of the open end of the outer bag, without providing bag-weakening
opening means in the closed end of the outer bag and without
exposing the first end of the inner preformed bag at the reopened
end of the outer bag.
32. A packaged product comprising a loaf of bread snugly
enclosed in an inner heat shrunk bag having a preformed closed end
and a gathered, previously open end opposite the preformed closed
end, such heat shrunk inner bag and enclosed loaf being contained
within a separate outer bag having a closed first end and an
openable second end, the preformed closed end of the heat shrunk
inner bag being adjacent to the openable end of the outer bag and
such closed end of the heat shrunk inner bag having bag-weakening
means for manual opening of the inner bag by a consumer, the
second end of the outer bag being configured for opening by a
consumer but the closed first end of the outer bag not being
configured for opening by a consumer, and the inner bag being
disposed within the outer bag with the preformed closed end of the
inner bag adjacent to the openable second end of the outer bag and
the gathered end of the inner bag remote from the openable second
end of the outer bag.
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Application No. 09/520,947
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The examiner has relied upon the following references as
evidence of obviousness:
Blum 2,132,144 Oct. 04, 1938
Morris 3,428,240 Feb. 18, 1969
Collins et al. (Collins) 5,741,075 Apr. 21, 1998
McEachen 243745 A Aug. 27, 1996
(published New Zealand Patent Application)
Theed 2 331 059 A May 12, 1999
(published UK Patent Application)
The following rejections are before us for review in this
appeal:
(1) claims 25, 26 and 30-34 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Morris in view of McEachen and Theed
(Answer, page 3);
(2) claim 27 stands rejected under § 103(a) over Morris in view
of McEachen, Theed and Collins (id.);
(3) claims 28 and 35 stand rejected under § 103(a) over Morris
in view of McEachen, Theed and Blum (id.); and
(4) claim 29 stand rejected under § 103(a) over Morris in view
of McEachen, Theed, Collins and Blum (id.).
We reverse all of the rejections on appeal essentially for the
reasons stated in the Brief, Reply Brief, and those reasons set
forth below.
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Application No. 09/520,947
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OPINION
The examiner finds that Morris teaches placing a loaf of bread
in an inner package (a wax paper wrapper) that has one end with a
weakening opening means (i.e., perforations) for enabling access
to the loaf by the consumer, inserting the inner package into an
outer bag such that the end of the inner package with the
weakening opening means is inserted last, and closing the outer
bag (Answer, page 4; see also the final Office action, Paper No.
8, pages 2-3). The examiner recognizes that Morris fails to teach
two limitations recited in claim 25, i.e., where the bread loaf is
fed into a bag having a closed end with a weakening opening means
and heat shrinking the inner bag (Answer, page 4; Paper No. 8,
page 3). The examiner relies on McEachen “as evidence of the
conventionality of enclosing a loaf of bread in a bag with a
closed end having a weakening means (i.e. perforations) and an
open end for filling where the weakening means allow the consumer
to access the bread after the package has been sealed” (Paper No.
8, page 3). The examiner further relies on Theed “as evidence of
the conventionality of heat shrinking an inner bag of a double bag
bread package to preserve the bread” (Paper No. 8, page 4).
From these findings, the examiner concludes that it would have
been obvious to one of ordinary skill in this art to modify the
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method of Morris to include the step of inserting the loaf of
bread into the bag of McEachen while heat shrinking this inner bag
to seal the bread to maintain freshness (Paper No. 8, pages 3-4).
We disagree.
“When relying on numerous references or a modification of prior
art, it is incumbent upon the examiner to identify some suggestion
to combine references or make the modification. [Citations
omitted].” In re Mayne, 104 F.3d 1339, 1342, 41 USPQ2d 1451, 1454
(Fed. Cir. 1997). “It is insufficient to establish obviousness
that the separate elements of the invention existed in the prior
art, absent some teaching or suggestion, in the prior art, to
combine the elements.” Arkie Lures, Inc. v. Gene Larew Tackle,
Inc., 119 F.3d 953, 957, 43 USPQ2d 1294, 1297 (Fed. Cir. 1997).
“The mere fact that the prior art could be so modified would not
have made the modification obvious unless the prior art suggested
the desirability of the modification. [Citations omitted].” In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
In view of these tenets of patent law, we determine that the
examiner has not established the obviousness of “substituting” an
inner bag for the inner wrapper of Morris, nor established the
obviousness of heat shrinking the inner bag.
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Application No. 09/520,947
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Morris teaches a bread package which uses an inner wrap of
waxed paper including sealed end flaps and perforations around the
periphery, enclosed in an outer plastic bag (abstract; col. 1, l.
70-col. 2, l. 10; and col. 3, ll. 3-8). Morris discusses the
prior art use of wrapper-type and bag-type bread packaging and
states (col. 1, ll. 65-68)
The principal object of the present invention is to provide a
novel bread package effective to combine the best features of
both wrapper-type and bag-type bread packages.
Accordingly, the examiner has not provided nor established, by
technical reasoning or objective evidence, any convincing showing
why one of ordinary skill in this art would have “substituted” a
preformed bag for the inner wrapping of Morris. McEachen does not
provide this evidence as this reference is directed to bread
packaging involving only one bag with at least one line of partial
weakness distal from the closed end (McEachen, page 3). We find
no support for the examiner’s finding that the sole bag taught by
McEachen has an “equivalent function” as the inner wrapping of
Morris, i.e., “a sealed bread package with a weakening opening
means,” thus providing motivation for the proposed “substitution”
(Answer, paragraph bridging pages 4-5). As taught by Morris and
correctly argued by appellant (Brief, page 10), the function of
the inner wrap is “that the loaf is firmly maintained in its
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original conformation” (col. 2, ll. 12-14), while the function of
the outer bag and the inner bag is to seal in freshness (col. 2,
ll. 19-22). Furthermore, the examiner only attempts to establish
motivation by general statements, but does not give specific and
particular reasons. See In re Dembiczak, 175 F.3d 994, 999, 50
USPQ2d 1614, 1617 (Fed. Cir. 1999).
Although Theed does teach heat shrinking a bag around the
loaf of bread to kill bacteria on the surface, we determine that
this reference also does not provide “further motivation” to
substitute a bag for the inner wrapping of Morris (Answer, page 5;
see Theed, pages 2 and 11). The inner bag of Theed comprises
shrink-wrap material which does not contain any perforations or
partial weakenings but is removed by the consumer (Theed, pages 2
and 6). Theed teaches that perforations are only placed in the
outer bag (abstract; pages 5 and 9). Accordingly, we find no
convincing evidence or reasoning why one of ordinary skill in this
art would have used the shrink wrap material taught by Theed in
place of the inner wrapping material of Morris, which does contain
perforations (see Morris, col. 3, ll. 15-19). We also note our
Appeal No. 2004-0996
Application No. 09/520,947
1The examiner has applied Collins and Blum to establish the
obviousness of limitations recited in several dependent claims
(Paper No. 8, page 5). Accordingly, we determine that Collins
and Blum do not remedy the deficiencies in the examiner’s
rejections as noted above.
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discussion above regarding the function of the inner wrap and
outer bag as taught by Morris.1
For the foregoing reasons and those stated in the Brief and
Reply Brief, we determine that the examiner has not established a
prima facie case of obviousness in view of the reference evidence.
Accordingly, we do not sustain any of the rejections on appeal.
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The decision of the examiner is reversed.
REVERSED
THOMAS A. WALTZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2004-0996
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