Ex Parte Giuliani

Patent Trial and Appeal Board

Apr 24, 2017

11916066 (P.T.A.B. Apr. 24, 2017)

United States Patent and Trademark Office
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.
11/916,066 08/11/2008 Nicola Giuliani 72845 1881
23872 7590 04/24/2017
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
COMINGS, DANIEL C
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
04/24/2017 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 NICOLA GIULIANI
Appeal 2014-002653
Application 11/916,066
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Nicola Giuliani (Appellant)1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1—5, 7—26, 28, and 30—32.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.
1 IM-BALL-CENTER S.r.L. is identified as the real party in interest.
Appeal Br. 1.
2 Claims 6, 27, and 29 have been cancelled. Appeal Br. 44, 48.
Appeal 2014-002653
Application 11/916,066
CLAIMED SUBJECT MATTER
Claims 1, 22, and 30 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A thermal bag, comprising:
thermally insulating composite material folded to form a
bottom and welded along lateral borders to form a body of the
bag with a mouth at the level of which a handle is applied, said
handle having a hand grip portion and a longitudinal portion
forming at least a portion of a closing device for said mouth, said
composite material defining a bottom folded in an accordion-like
fashion opposite the mouth of the bag, wherein a laminar
stiffening element of the accordion-like bottom is disposed
inside the bag, said hand grip portion and said longitudinal
portion having a shorter length than a length of said mouth when
the bag is in a flattened position, wherein in the folded position
an accordion forming the bottom of the bag has beveled borders
along which welding lines are produced, the beveled borders on
each side of the bag converging in a comer, the two opposed
comers being joined by a folding line of the accordion-like
bottom.
REJECTIONS
The Examiner rejects the claims under 35 U.S.C. § 103(a) as
unpatentable over the noted combinations of references:
Claims 1—3, 5, 7, 13—16, 20, 21, and 30-32 over Martineau (US
2003/0035596 Al, published Feb. 20, 2003), Moravek (US 5,158,371,
issued Oct. 27, 1992), and Wilkins (GB 2,225,567 A, published June 6,
1990);
Claims 4 and 8 over Martineau, Moravek, Wilkins, and Campbell (US
4,211,091, issued July 8, 1980);
2
Appeal 2014-002653
Application 11/916,066
Claim 9 over Martineau, Moravek, Wilkins, and Cornish (US
3,678,703, issued July 25, 1972);
Claims 10 and 11 over Martineau, Moravek, Wilkins, and Takahashi
(US 5,912,058, issued June 15, 1999);
Claim 12 over Martineau, Moravek, Wilkins, and Bomes (US
5,105,919, issued Apr. 21, 1992);
Claim 17 over Martineau, Moravek, Wilkins, and Ossian (US
4,190,477, issued Feb. 26, 1980);
Claims 22—24, 26, and 28 over Moravek, Martineau, Wilkins, and
Van Erden (US 4,759,642, issued July 26, 1988); and
Claim 25 over Moravek, Martineau, Wilkins, Van Erden, and
Campbell.
ANALYSIS
Claims 1—3, 5, 7, 13 16, 20, 21, and 30—32
over Martineau, Moravek, and Wilkins
Claims 1—3, 5, 7, 13—16, 20, and 21
Claim 1 recites the limitation “in the folded position an accordion
forming the bottom of the bag has beveled borders along which welding
lines are produced, the beveled borders on each side of the bag converging
in a comer, the two opposed comers being joined by a folding line of the
accordion-like bottom.” Appeal Br. 43 (Claims App.) (emphasis added)
(hereafter “folded position limitation”). Appellant references Figure 3 as
showing the “folded position” of the bag. Appeal Br. 2. Regarding
Figure 3, the Specification describes that
[t]he folding lines 9 and 11 define two edges 12 of composite
material which form the accordion defining the bottom of the
bag. In the folded position (Figure 3) it can be seen that the edges
3
Appeal 2014-002653
Application 11/916,066
12 are beveled and the bag has a lower portion defined, besides
by the folding lines 11, by pairs of welding lines 13 inclined by
approximately 45° with respect to the welded borders 3.
Spec. 3:32-4:3 (emphasis added), Fig. 3. Figure 3 shows welding lines 13
along beveled edges 12 in the folded position.
The Examiner finds that Martineau does not teach that the sides of the
thermal bag are welded, or the bottom of the bag has beveled borders formed
by welding lines and which converge in comers joined by the accordion-like
bottom. Final Act. 2—3 (citing Martineau 122, Figs. 1, 2). The Examiner
finds that Moravek teaches a bag having sides joined by welding the lateral
borders (along heat seal lines 20, 21), and a bottom having comers at which
the edges of the bag are joined by heat seals 20, 21 to form beveled gussets.
Id. at 3 (citing Moravek, col. 2,11. 34—38 and 48—53, Figs. 1, 5A).
Appellant contends that Moravek does not teach or suggest the folded
position limitation. Appeal Br. 11. In this regard, Appellant contends that
neither gusset 13 nor heat seals 20, 21 form beveled borders, as claimed. Id.
at 12.
The Examiner responds that Moravek Figure 1 shows the bag having
a bottom including triangular end portions 39, 40, which are beveled with
respect to the bottom of the bag which they form part of the border. Ans. 23.
As to the recited “welding lines,” the Examiner determines that Figure 1
shows heat seal lines 20, 21, which along both edges converge to the
uppermost comer of the triangular end piece. Id.
Appellant replies that Moravek Figure 3 does not show “beveled
borders,” as claimed, as end portions 39 and 40 only form triangular gussets.
Reply Br. 2. Appellant also contends that heat seal lines 20, 21 are not
produced along end portions 39, 40. Id. at 3.
4
Appeal 2014-002653
Application 11/916,066
We are persuaded by Appellant that the Examiner does not establish
any disclosure in Moravek of the bag, when in a “folded position,” as
claimed, having “beveled borders along which welding lines are produced,”
where “the beveled borders on each side of the bag converg[e] in a comer.”
Moravek Figure 1 shows bag 10 in the “open position,” not a “closed
position,” and Figure 3 shows bag 10 in the “collapsed position.” See
Moravek, col. 2,11. 13—14, 17—20. Appellant’s Figures 1 and 2, for example,
show bag 1 in an “open position.” See Spec. 3:7—8, 12. The “open position”
and “collapsed position” of bag 10 shown in Figures 1 and 3 of Moravek
appear similar to the bag’s “open position” and “folded position” in
Appellant’s Figures 1 and 3, respectively. But even assuming the “collapsed
position” of bag 10 in Moravek corresponds to the claimed “closed
position,” the Examiner does not establish that the bottom of bag 10 has
“beveled borders” in this position. Further, Moravek Figure 3 shows heat
seal lines 20, 21 extending vertically and parallel to each other along the
opposite edges of bag 10. The Examiner does not identify where any
“beveled borders” along which heat seal lines 20, 21 are produced are shown
in Figure 3, or otherwise disclosed in Moravek. For these reasons, the
Examiner’s finding that Moravek discloses the folded position limitation of
claim 1 is not supported by a preponderance of the evidence.
Thus, because the Examiner’s rejection relies on unsupported findings
regarding the teachings of Moravek, we do not sustain the rejection of
claim 1, and claims 2, 3, 5, 7, 13—16, 20, and 21 depending therefrom, as
unpatentable over Martineau, Moravek, and Wilkins.
5
Appeal 2014-002653
Application 11/916,066
Claims 30-32
The Examiner rejects claim 30 based on the same findings and
reasoning as provided for claim 1. Final Act. 19—20.
Appellant points out correctly, however, that claim 30 recites different
limitations from claim 1. Appeal Br. 37. Claim 30 recites, inter alia, the
limitations: 1) the handle has an integral portion having an integral portion
length that is less than a length of the bag mouth portion with the bag body
in a flattened position, 2) the bag bottom portion has a length that is less than
the bag mouth portion length, and 3) the bag bottom portion length is less
than the integral portion length. Id. Appellant contends that Martineau,
Moravek, and Wilkins fail to teach or suggest each of these limitations. Id.
at 38.
The Examiner responds that support web 1 shown in Wilkins Figure 1
corresponds to the claimed “integral portion.” Ans. 36. The Examiner also
states that “the recitations and discussion provided with regard to claim 1
were and are considered sufficient to demonstrate the obviousness of the
subject matter of claim 30.” Id. at 37.
We are persuaded that the Examiner fails to establish that the applied
combination of references supports the rejection of claim 30. The
Examiner’s response appears to address only limitation “1” above with any
specificity. Ans. 36—37. Even assuming the Examiner’s position is correct
regarding this limitation, the Examiner still does not provide adequate
findings and reasoning to support the position that the applied combination
of references also meets limitations “2” and “3,” which are not recited in
claim 1. However, “[t]he Patent Office has the initial duty of supplying the
factual basis for its rejection.” In re Warner, 379 F.2d 1011, 1017 (CCPA
6
Appeal 2014-002653
Application 11/916,066
1967). Absent this factual basis, the Examiner also does not provide
adequate reasoning with a rational underpinning to support the conclusion of
obviousness for claim 30. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Thus, we do
not sustain the rejection of claim 30, and claims 31 and 32 depending
therefrom, as unpatentable over Martineau, Moravek, and Wilkins.
Claims 4 and 8 over Martineau, Moravek, Wilkins, and Campbell
Claim 9 over Martineau, Moravek, Wilkins, and Cornish
Claims 10 and 11 over Martineau, Moravek, Wilkins, and Takahashi
Claim 12 over Martineau, Moravek, Wilkins, and Bomes
Claim 17 over Martineau, Moravek, Wilkins, and Ossian
Claims 4, 8—12, and 17 depend, directly or indirectly, from claim 1.
The Examiner’s reliance on Campbell to reject claims 4 and 8 (Final Act. 9—
11), Cornish to reject claim 9 (id. at 11), Takahashi to reject claims 10
and 11 (id. at 11—12), Bomes to reject claim 12 (id. at 12), and Ossian to
reject claim 17 (id. at 13) does not cure the deficiencies of the rejection of
claim 1 discussed above. Accordingly, we do not sustain the rejections of
claims 4, 8—12, and 17 over the noted combinations of references.
New Ground of Rejection of Claims 22—26 and 28
Claim 22 recites the limitation “welding lines are produced along said
continuous composite material, inclined with respect to the direction of feed,
extending from an intermediate position of the transverse extension of the
composite web material towards the longitudinal folding lines.” Appeal
Br. 47 (Claims App.) (emphasis added) (hereafter “welding line limitation”).
We determine that the meaning of “the transverse extension of the composite
web material” is unclear.
7
Appeal 2014-002653
Application 11/916,066
The Patent and Trademark Office “determines the scope of claims in
patent applications not solely on the basis of the claim language, but upon
giving claims their broadest reasonable construction ‘in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (citingA? re
Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)).
Regarding the claims, the welding line limitation in claim 22 appears in
original claim 24. See Spec. 11:19—23. However, claim 24, and claims 25
and 26 depending therefrom, do not provide any indication as to the meaning
of this language.
Accordingly, we next look to the Specification for guidance as to the
meaning of “the transverse extension of the composite web material.”
Appellant references page 3, line 34 to page 4, line 3, and page 7, lines 3—5,
of the Specification, and Figures 1, 2, and 8B, for support with regard to the
welding line limitation. Appeal Br. 2. Appellant specifically notes welding
lines 13, composite web material Mc, and longitudinal folding lines 9, 11.
Id. We note these reference numbers are shown in the figures. However, we
also note that the referenced disclosure does not mention the “transverse
extension” of the composite web material. Consequently, we are unable to
determine the meaning of this term, and thus, of “an intermediate position of
the transverse extension of the composite web material,” from the referenced
disclosure. Further, we are unable to find the term “transverse extension”
elsewhere in the original disclosure. We thus are unable to determine the
meaning of this term in view of the Specification.
Thus, because the meaning of language in claim 22 is unclear, we
enter a new ground of rejection of claim 22, and claims 23—26 and 28
8
Appeal 2014-002653
Application 11/916,066
depending therefrom, under 35 U.S.C. § 112, second paragraph, as
indefinite, pursuant to our authority under 37 C.F.R. § 41.50(b).
Claims 22—24, 26, and 28 over Moravek, Martineau, Wilkins,
and Van Erden
Claim 25 over Moravek, Martineau, Wilkins, Van Erden, and Campbell
As we have determined that claims 22—24, 26, and 28 are indefinite,
we cannot sustain the rejections of claims 22—24, 26, and 28 under 35 U.S.C.
§ 103(a) as unpatentable over Moravek, Martineau, Wilkins, and Van Erden,
and of claim 25 under 35 U.S.C. § 103(a) as unpatentable over Moravek,
Martineau, Wilkins, Van Erden, and Campbell, because to do so would
require speculation as to the scope of the claims. See In re Aoyama, 656
F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming
an anticipation rejection of indefinite claims); In re Steele, 305 F.2d 859,
862—63 (CCPA 1962) (holding that the Board erred in affirming a rejection
of indefinite claims under 35 U.S.C. § 103(a), because the rejection was
based on speculative assumptions as to the meaning of the claims).3
DECISION
The Examiner’s decision to reject claims 1—5, 7—26, 28, and 30—32 is
reversed.
We enter a new ground of rejection of claims 22—26 and 28 under 35
U.S.C. § 112, second paragraph, as indefinite.
3 Our decision is based solely on the indefiniteness of the claimed subject
matter, and does not reflect any decision on the adequacy of the
combinations of references applied by the Examiner in the rejections of
claims 22—26 and 28.
9
Appeal 2014-002653
Application 11/916,066
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01 (9th Ed.,
Rev. 07.2015, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l)(iv).
10
Appeal 2014-002653
Application 11/916,066
REVERSED: 37 C.F.R. § 41.500?)
11