Ex Parte Gum

Patent Trial and Appeal Board

Aug 23, 2016

13096050 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/096,050 04/28/2011 MarcW.Gum
535 7590 08/25/2016
KFROSS PC
311 E York St
Savannah, GA 31401-3814
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.
30198 3789
EXAMINER
GRANO, ERNESTO ARTURIO
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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):
savannah@kfrpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC W. GUM
Appeal2014-007092
Application 13/096,050
Technology Center 3700
Before: CHARLES N. GREENHUT, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4, 5, 7-9, 11-13, 15, 16, 18, and20-26. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appeal2014-007092
Application 13/096,050
CLAIMED SUBJECT MATTER
The claims are directed to an improvement to a package including
multiple tear lines. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. In a package comprising generally congruent front and
back panels having upper and lower edges and first and second
side edges extending vertically between the upper and lower
edges, the upper, side, and bottom edges of one of the panels
being connected to the respective upper, side, and bottom edges
of the other panel, the improvement wherein the panels are
formed with:
a first weakened tear line extending continuously from a
the connected first side edges to the connected upper edges, and
a second weakened tear line extending continuously
between the connected first and second side edges and crossing
the first line at an intersection, the lines extending at an acute
angle to each other to at least one side of the intersection.
REJECTIONS
A. Claims 1, 2, 5, and 7 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Albright (US 6,402,3 79) in view of
Krzyzanowski (US 3,339,820).
B. Claims 4 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Albright in view of Krzyzanowski and in
further view of Moseley (US 5,482,376).
C. Claims 9, 11-13, and 20-23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Albright in view of
Krzyzanowski and in further view of Kujat (WO 2008/145164
Al).
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Application 13/096,050
D. Claims 15, 16, 24, and 25 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Albright in view of Krzyzanowski,
and in further view ofRannikko (US 7,749,453 B2).
E. Claims 18 and 26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Albright in view of Krzyzanowski, and
in further view of Cichowski (US 2008/0276571 Al).
OPINION
Appellant's sole point of contention regarding the rejection of
independent claims 1 and 7 based on Albright and Krzyzanowski (Rejection
A) is that modification of Albright with the Krzyzanowski tear line "would
make the [Albright] bag unusable as intended." App. Br. 11-13. Appellant
bases this argument on the assertion that a horizontal tear line would rupture
when Albright's bag is supported by handle 14. First, this argument does
not take into account any of the mechanical factors involved such as strength
of the tear line, or weight of the bag and its contents. The fact that judgment
and mechanical skill may be required to implement a particular combination
does not necessarily mean that particular combination constitutes a
nonobvious invention. Graham v. John Deere Co. of Kansas City, 383 US
1, 10-12 (discussing Hotchkiss v. Greenwood, 11 How. 248 (1851)).
Second, as the Examiner points out, Albright specifically states that handle
14 could be omitted. Ans. 12 (citing Albright Fig. 4; col. 4, 11. 40-42). This
is strong, and unrebutted (Reply Br. passim), evidence that Appellant
mischaracterizes the "intended purpose" of Albright's bag as requiring the
use of handle 14.
Appellant makes comments regarding claims 2 and 5 without
subgrouping them according to 37 C.F.R. § 41.37(c)(iv). App. Br. 13. It is
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Application 13/096,050
unclear what limitation of claim 2 Appellant is attempting to argue as we are
unable to identify language from Appellant's brief corresponding to that of
claim 2. See App. Br. 13. Concerning claim 5, Appellant simply states that
the claim is clearly allowable because neither reference "shows tear lines
crossing at 45°." App. Br. 13. This does not address the Examiner's
position which is not that this limitation is found in any one reference, but
that the proposed combination would yield the claimed subject matter. Ans.
13. The latter stands uncontroverted. "Non-obviousness cannot be shown
by attacking references individually when the rejection is predicated upon
the teachings of a combination of references." See In re Merck & Co. Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986)(citation omitted).
For the foregoing reasons, we are not apprised of error in Rejection A.
It is not clear why Appellant repeats arguments word-for-word several
times in the Appeal Brief. See App. Br. 14--16, 16-18, 20-22, 23-25. Like
the Examiner, we do not address the arguments already discussed above.
In arguing claims 4 and 8, Appellant only reiterates the arguments
addressed above concerning claims 1 and 7. App. Br. 16. In arguing claims
9, 11-13, and 20-23 Appellant again points out that a single reference,
Kujat, lacks some of the claimed features. App. Br. 19. Again, this is not
responsive to the Examiner's rejection which is predicated on the combined
teachings of the cited references. Furthermore, we additionally note that
"[d]rafting a claim in Jepson format (i.e., the format described in 37 CPR
1.75(e); see MPEP § 608.0l(m)) is taken as an implied admission that the
subject matter of the preamble is the prior art work of another" (MPEP
§ 2129(III)( citations omitted)), and thus that the claim is directed to the
recited improvements that follow the preamble. It is therefore unclear why
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Application 13/096,050
Appellant believes that reciting features of the package help to patentably
distinguish claims directed only to particular improvements thereon.
Regarding claims 15, 16, 24, and 25, Appellant states that "[n]othing
suggests the particular orientation of tear lines and notches of this
invention." App. Br. 22. This argument does not apprise us of any
particular claim language at issue or any particular error in the Examiner's
rejection. See 37 C.F.R. § 41.37(c)(iv)("The arguments shall explain why
the examiner erred as to each ground of rejection contested by appellant.").
"Filing a Board appeal does not, unto itself, entitle an appellant to de nova
review of all aspects of a rejection." See Ex Parte Frye, 94 USPQ2d 1072,
107 5 (BP AI 2010) (precedential) (citations omitted). "[T]he Board will not,
as a general matter, unilaterally review those uncontested aspects of the
rejection." Id at 1075-76 (citations omitted).
Regarding claims 18 and 26, Appellant acknowledges the presence of
thickness reduced rupturing strips in Cichowski but points out that they
serve a different purpose than that of Appellant. App. Br. 25. By merely
pointing out the different sources of the rupturing forces, Appellant does not
apprise us of any evidence or technical reasoning to explain why one skilled
in the art would understand Cichowski' s thinning technique to be confined
to specific applications based on the source of the rupturing force. It is true
that Cichowski' s weakened areas are intended to rupture due to the force
generated by internal pressure within the package, whereas the Examiner
proposed applying the thinning technique to manufacture tear lines designed
to rupture due to force externally generated by a user. However, we agree
with the Examiner that one skilled in the art would reasonably expect that
the thinning technique could successfully be employed to create a frangible
line regardless of whether the tearing force was generated inside the package
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Application 13/096,050
or externally. See Ans. 16. "[F]amiliar items may have obvious uses
beyond their primary purposes." KSR Int'! Co. v. Teleflex, Inc., 127 S.Ct.
1727, 1742 (2007).
DECISION
The Examiner's rejections are 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)(l )(iv).
AFFIRMED
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