Ex Parte Gong et al

Board of Patent Appeals and Interferences

Sep 20, 2007

10371485 (B.P.A.I. Sep. 20, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LIE-ZHONG GONG, PETER D. PIERCE and
JUSTIN A. MEHAFFY
____________

Appeal 2006-3391
Application 10/371,485
Technology Center 3700
____________

Decided: September 20, 2007
____________

Before TERRY J. OWENS, JENNIFER D. BAHR, and
ANTON W. FETTING, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Lie-Zhong Gong et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 7, 11-17, 27 and 28, the only
Appeal 2006-3391
Application 10/371,485

pending claims. We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).

THE INVENTION
Appellants' claimed invention is directed to a process of packaging an
article using a packaging machine adapted to reactivate an adhesive or
sealant composition that has been previously applied to a case or carton
(Specification 1 and 2). Claim 7, the only independent claim, reads as
follows:
7. A process of packaging an article by forming,
filling and sealing a packaging container
comprising a packaging material that has had
applied to at least a portion thereof a reactivatable
adhesive, said process comprising folding a
packaging material along predetermined fold lines,
said packaging material having applied to at least a
first portion thereof a reactivatable adhesive,
contacting the adhesive present on said first
portion of said packaging material with a second
portion of said packaging material, and exposing
the applied reactivatable adhesive to ultrasonic
waves by contacting the first or the second portion
of said packaging material with an ultrasonic horn
for a time sufficient to reactivate the adhesive, and
allowing the reactivated adhesive to solidify,
thereby bonding the first portion to said second
portion to form or seal the packaging container.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Moore US 2,603,925 Jul. 22, 1952
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Application 10/371,485

Adams US 5,425,218 Jun. 20, 1995
Samida US 6,123,792 Sep. 26, 2000
Appellants seek review of the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 7, 13-17 and 28 as unpatentable over Adams, claims 11
and 12 as unpatentable over Adams in view of Samida and claim 27 as
unpatentable over Adams in view of Moore.
The Examiner provides reasoning in support of the rejection in the
Answer (mailed December 8, 2005). Appellants present opposing
arguments in the Appeal Brief (filed November 17, 2005).

ISSUES
Appellants contend claims 7, 13-17 and 28 are not unpatentable over
Adams because, in the process of Adams, side flaps are folded over opposite
sides of packaging stock that has a heat reactivated adhesive, not a
reactivatable adhesive, present thereon (Br. 3) and because the carton of
Adams is not formed before it is filled (Br. 3-4). Appellants do not argue
any of the dependent claims separately from independent claim 7 and do not
argue the rejections of claims 11 and 12 as unpatentable over Adams in view
of Samida and claim 27 as unpatentable over Adams in view of Moore
separately from the rejection of claim 7 as unpatentable over Adams. We
therefore focus our attention on claim 7, with the remainder of the claims
standing or falling with claim 7.
In light of Appellants' contentions, this appeal presents two issues for
our consideration. The first issue is whether Adams meets the limitation of
claim 7 of "said packaging material having applied to at least a first portion
thereof a reactivatable adhesive, contacting the adhesive present on said first
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Application 10/371,485

portion of said packaging material with a second portion of said packaging
material " and the second issue is whether Adams meets the limitation of
claim 7 of "forming, filling and sealing a packaging container."
FINDINGS OF FACT
FF1 An advantage of Adams' method is that adhesive that is substantially
non-tacky after it has been applied and until it is activated, rather than wet
glue, is pre-applied to the carton blank (Adams 3:5-11). "[T]he adhesive is
pre-applied (and dried) on the carton blanks before the blanks are delivered
to the carton packer" (Adams 4:15-18). Adhesive 6 is placed on portions of
the blanks 5 that will form side flaps 7, 8 and bottom tabs 9, 10 (Adams
4:56-60, Fig. 2).
FF2 The carton blanks 5 of Adams are folded around pre-arranged bundles
of cigarette packs overwrapped in cellophane (Adams 5:1-4). The blanks
are then folded at two score lines 13, 14 that become the bottom edges of the
carton, thus forming the bottom, front and back walls of the carton (Adams
5:6-9).
FF3 The blank-enclosed bundle is then pushed onto an exit ramp 19, where
a flap folding apparatus 20 folds and holds the bottom tabs 9, 10 and side
flaps 7, 8 of Adams' carton blank 5 over the sides of the enclosed bundle and
a flap folding apparatus 21 folds and holds the side walls 11, 12 of carton
blank 5 over the bottom tabs 9, 10 and over side flaps 7, 8, thereby forming a
carton (Adams 5:10-18).
FF4 In the Adams process, the carton is not formed prior to being filled
(FF2 and FF3).
FF5 After the carton is formed (FF3), it is moved along the exit ramp 19.
At least one heating element 25, 26 is positioned on each side of exit ramp
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Application 10/371,485

19 to activate the pre-applied dry adhesive. At least one cooling element 27,
28 is positioned just downstream of the heating elements on each side of the
exit ramp 19 to set the activated adhesive. (Adams 5:19-20 and 33-39.)
Adams' disclosure of activating the pre-applied dry adhesive after folding
side flaps 7, 8, bottom tabs 9, 10 and side walls 11, 12 belies any notion that
the pre-applied adhesive used by Adams is not reactivatable when the
adhesive 6 on the side flaps 7, 8 and bottom tabs 9, 10 contacts side walls
11, 12.
FF6 In accordance with Appellants' Specification, "[t]he article to be
packaged may be inserted into the package either during the formation of the
package, such as in conventional wrap-around packaging, or after, such as in
conventional Bliss box packaging, tray formation, in the manufacture of
boxes and bags" (Specification 3-4).
FF7 Appellants do not dispute the Examiner's determination (Answer 3-4)
that it would have been obvious to provide the method of Adams with an
ultrasonic device in the form of a horn for generating the ultrasonic waves to
activate the adhesive. Appellants also do not dispute the Examiner's
determinations (Answer 5) that it would have been obvious to produce such
ultrasonic waves at from about 20 kHz to about 40 kHz, in view of the
teachings of Samida, in order to activate the pre-applied adhesive and to
provide a paper bag having a pre-applied adhesive, as taught by Moore, as
an alternative for packaging the cigarette packs of Adams.

DISCUSSION
The pre-applied adhesive used by Adams is reactivatable (FF5).
Moreover, it is not reactivated until after the side flaps 7, 8, bottom tabs 9,
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Application 10/371,485

10 and side walls 11, 12 are folded (FF5). Appellants' first argument, that
Adams' side flaps are folded over opposite sides of packaging stock that has
a heat reactivated adhesive, not a reactivatable adhesive, present thereon, is
therefore without merit.
The other issue before us focuses on the limitation "forming, filling
and sealing" and is particularly concerned with the order in which these
steps are performed. Specifically, Appellants' argument seems to presume
claim 7 requires that the forming step be performed before the filling step, a
sequence which is not met by Adams (FF4). A two-part test has been
established for determining if the steps of a method claim that do not
otherwise recite an order must nonetheless be performed in the order in
which they are written. First, we look to the claim language to determine if,
as a matter of logic or grammar, the recited steps must be performed in the
order written. "If not, we next look to the rest of the specification to
determine whether it 'directly or implicitly requires such a narrow
construction.'" Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1371, 65
USPQ2d 1865, 1869-70 (Fed. Cir. 2003) (quoting Interactive Gift Express,
Inc. v. CompuServe Inc., 256 F.3d 1323, 1343, 59 USPQ2d 1401, 1416 (Fed.
Cir. 2000)) (emphasis in original). If not, the sequence in which such steps
are written is not a requirement of the claim. Id.
Following the first part of the test, we look to the claim language itself
and find no indication, as a matter of logic or grammar, that the steps of
forming and filling the container must be performed in any particular order.
As evidenced by Adams, the container could be formed around the item(s)
that will form the contents thereof and thus could be formed while the
contents are being inserted. Moreover, looking to the Specification in
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Application 10/371,485

accordance with the second step of the test, we find that Appellants'
Specification makes clear that the article to be packaged may be inserted
into the package either during the formation of the package, as in a
conventional wrap-around packaging as in Adams' method, or after (FF6).
We thus conclude that claim 7 does not require that the step of forming the
container be performed before the step of filling the container. Rather, a
method such as that taught by Adams, in which the article is inserted during
formation of the package, satisfies the claim language at issue.
For the reasons discussed above, Appellants' arguments do not
demonstrate error in the Examiner's rejections of claims 7, 11-17, 27 and 28.
The rejections are sustained.
SUMMARY
The decision of the Examiner to reject claims 7, 11-17, 27 and 28 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).
AFFIRMED

vsh

CYNTHIA L. FOULKE
NATIONAL STARCH AND CHEMICAL COMPANY
10 FINDERNE AVENUE
BRIDGEWATER, NJ 08807-0500

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