Ex Parte GUM

Patent Trial and Appeal Board

Jun 29, 2018

14287117 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/287,117 05/26/2014
535 7590 07/03/2018
KFROSS PC
311 E York St
Savannah, GA 31401-3814
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Mark GUM
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.
30712 8024
EXAMINER
ATTEL, NINA KAY
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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 MARK GUM
Appeal2017-010333
Application 14/287, 117
Technology Center 3700
Before DANIELS. SONG, LISA M. GUIJT, and PAUL J. KORNICZKY,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-9, 11, and 12. We have jurisdiction under 35 U.S.C.
§ 6(b ). 2
We affirm and designate our affirmance as NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant identifies the real party in interest as Mondi Jackson. Appeal
Br. 1.
2 Appeal is taken from the Final Office Action dated October 26, 2016.
Appeal2017-010333
Application 14/287, 117
STATEMENT OF THE CASE
Claim 1 is the sole independent claim on appeal. Claim 1, reproduced
below, is exemplary of the subject matter on appeal, with disputed
limitations italicized for emphasis.
1. A film bag comprising:
a front panel and a back panel having outer faces forming
an outer surface of the film bag and confronting inner faces;
an inner cover patch between the front and back panels and
having a front face confronting the inner face of the front panel;
a continuous frame weld securing the inner cover patch to
the inner face of the front panel;
a first cut or weakening line in the front panel within an
area bounded by the frame weld defining all but one side of a
flap connected unitarily as a hinge at the one side to t[h]e front;
a reclosable strip fastener between the front face of the
patch and the inner face of the front panel and extending along
the first cut or weakening line;
a direct attachment located between the fastener and the
hinge and directly connecting the front face of the cover patch to
the inner face of the flap of the front panel; and
a second cut or weakening line formed in the inner cover
patch between the direct attachment to the flap and the reclosable
fastener such that outward pivoting of the flap of the front panel
about the hinge separates the reclosable fastener and pulls out a
portion of the cover patch between the second cut or weakening
line and the attachment.
THE REJECTIONS
I. Claims 1-9, 11, and 12 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Holbert (US 2010/0002963 Al; published Jan. 7,
2010), Nakamura (US 4,610,357; issued Sept. 9, 1986), and Steele (US
2003/0210838 Al; published Nov. 13, 2003).
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II. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Holbert, Nakamura, Steele, and Vetemik (US
2011/0204056 Al; published Aug. 25, 2011).
ANALYSIS
Rejection I
Regarding independent claim 1, the Examiner finds, inter alia, that
Holbert teaches: (i) container 4 with front and back panels having outer
faces forming a film bag; (ii) a cover patch (i.e., plastic film 1 ); (iii) a
continuous frame weld securing the cover patch to the front panel (i.e, weld
5 completely encircling lip area 33 and cut lines 3); (iv) a first weakening
line within the area bounded by the frame weld defining all but one side of a
flap and connected unitarily as a hinge at one side of the front panel (i.e.,
rupture line 2); (v) a direct attachment connecting the front face to the cover
patch (i.e., weld 7); and a second weakening line (i.e., perforations 3), "such
that outward pivoting of the flap about the hinge separates the reclosable
fastener and pulls out a portion of the [patch]," as claimed. Final Act. 2-3
(citing Holbert i-fi-f 10, 24--30, 37--40, Figs. 1--4, 6). The Examiner relies on
the pressure sensitive adhesive layer of Holbert's film 1 as disclosing the
claimed reclosable strip fastener.
Recognizing that the claims require the front face of the inner cover
patch to be secured to the inner face of the front panel, as compared to
Holbert's disclosure of securing the back face of an outer cover patch to the
outer face of the front panel, the Examiner relies on Nakamura for teaching
that it is known to configure an outer patch as an inner patch, and reasons
that it would have been obvious to "merely revers[ e] ... the essential
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working parts" of Holbert's bag in view ofNakanmra's teaching. Final Act.
3-5. Appellant does not dispute this finding or reasoning. Appeal Br. 7-19;
Reply Br. 1-2.
Appellant argues that Holbert's pressure sensitive adhesive layer is
not a reclosable strip fastener, as claimed. Appeal Br. 9. Appellant submits
that the term "strip" within the claim term "reclosable strip fastener" means
"a long, narrow object ('a long narrow piece of paper, metal, cloth, etc.')
.... which can be arranged as a separate element on an existing structure
such as a plastic bag." Appeal Br. 7.
Holbert discloses that the pressure sensitive adhesive layer is a layer
of plastic film 1, which is disclosed and depicted as a rectangular piece of
film. See, e.g., Fig. 2. We agree with the Examiner that Holbert's pressure
sensitive adhesive layer is a reclosable fastener, because, for example, Steele
teaches that "reclosable devices" are known to include "releasable
adhesives/tapes." Steele i-f 45. However, Holbert does not describe the
pressure sensitive adhesive layer as incorporated in plastic film 1 only on the
portions of the film that overlay the lip portion of container 4 (i.e., about the
perimeter of plastic film 1, for example, in long, narrow portions). It is these
long, narrow portions (or strip portions) of the pressure sensitive adhesive
layer about the perimeter of plastic film 1, which overlay the lip portion of
container 4, that are subject to finger pressure when re-closing. Therefore,
we are persuaded by Appellant's argument that Holbert discloses the
pressure sensitive adhesive layer, which is included in the entire rectangular
sheet of plastic film 1, is a reclosable fastener, but not a reclosable strip
fastener, as claimed.
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Notwithstanding, Holbert discloses an embodiment of the invention
(relied on by the Examiner, as set forth supra, for disclosing the direct
attachment), wherein "weld line 7 ... permanently affix[ es] the area interior
to the perforations 3 to the film 1," such that there is no longer a need to
provide pressure sensitive adhesive in this area to ensure that the lifting of
film 1 ruptures perforations 3 to open container 4, as this function is
performed by weld 7. See, e.g., Holbert i-fi-1 30, 40. Thus, only the portions
of the pressure sensitive layer of film 1 that overlay the lip of container 4
(for example, in strips about the perimeter of plastic film 1 along the first
weakening line or rupture line 2) performs a function, namely, that of
reclosably fastening film 1 to the lip of container 4.
We rely on the Examiner's findings and reasoning based on Steele, as
set forth for with respect to dependent claims 2 and 3, to arrive at the subject
matter of claim 1. With respect to claims 2 and 3, the Examiner finds that
"Steele teaches an analogous reclosable bag comprising a reclosable fastener
... including zipper-sealing devices, resealable adhesive or tapes, snap
fasteners, hook and latch (loop) fasteners or other like devices," and reasons
that it would have been obvious "to replace [Holbert's reclosable fastener]
with any known and suitable reclosable strip fastener ... , as taught by
Steele." Final Act. 5---6 (citing Steele i1 45). Moreover, Varanese, 3 which is
incorporated by reference into Holbert, discloses that rather than
incorporating a reclosable fastener as a layer of a film, "reclosure
mechanisms ... for reclosing a flexible package [may be] separately
manufactured articles that are added to the package either in a subsequent
3 US 2005/0031233 Al; published Feb. 10, 2005.
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manufacturing step or by the consumer, such as zippers, reclosure tapes or
tabs, seal strips, clips, and the like." Varanese i-f 4; see also Holbert i-f 36.
As applied to claim 1, we conclude that it would have been obvious to
one skilled in the art at the time of the invention to omit the pressure
sensitive adhesive layer ofHolbert's plastic film 1, which functions as a
reclosable fastener, and instead apply a separately manufactured reclosable
strip fastener (i.e., strips of tapes, hook and loop fasteners, or interlocking
profile strips such as zippers) to the perimeter of plastic film 1 overlaying
the lip of container 4, because as reasoned by the Examiner with respect to
claims 2 and 3, "the substitution of one known recloseable fastener for an
alternatively known and suitable reclosable fastener to achieve the
predictable result of providing a bag with a reclosable means would have
been obvious." Final Act. 6; see also KSR, Int'! Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007) (citing United States v. Adams, 383 U.S. 39, 50-51
( 1966), ("When a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result.").
In view of our modified rejection, Appellant's arguments regarding
Holbert's failure to disclose a reclosable strip fastener, or a separate element
independently produced, are moot. See Appeal Br. 7-9.
Appellant argues that it would not have been obvious to replace
Holbert's pressure sensitive adhesive layer with a reclosable strip fastener,
because "[a] plastic bag provided with a large reclosing element would be
significantly thicker at this place and less flexible and/or foldable" and
"would significantly increase costs," such a modification would be
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"complex," "expensive," and fail to provide certain advantages. Appeal Br.
9-11.
We are not persuaded by these arguments because the test for
obviousness "is what the combined teachings of the references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
425 (CCPA 1981). Our reviewing court has explained that "just because
better alternatives exist in the prior aii does not mean that an interior
combination is inapt for obviousness purposes." In re Aiouttet, 686 F.3d
1322, 1334 (Fed. Cir. 2012); see also In re Farrenkopf, 713 F.2d 714, 718
(Fed. Cir. 1983) ("That a given combination would not be made by
businessmen for economic reasons does not mean that persons skilled in the
art would not make the combination because of some technological
incompatibility. Only the latter fact would be relevant.").
Regarding Appellant's argument that the proposed modification
(albeit as modified herein) would not lead to a "feasible" result, because "the
significant difference in thickness [(between a hook and loop reclosable
fastener and the pressure sensitive adhesive layer)] leads to a drastic
separation of the inner and the outer film," such that "it is very difficult to
impossible to create a reasonable lamination between the inner and outer
position[s]" and therefore, "can cause significant problems in automatic
production machines." Appeal Br. 11-14. Appellant also submits that such
a substitution would not result in tearing the weakening lines. Id. at 14.
Regarding independent claim 1, Appellant's argument regarding
problems due to the thickness of a substitute reclosable strip fastener is not
persuasive, because, as discussed supra, one available known substitute is a
thin, flat, strip of pressure sensitive adhesive tape. To the extent Appellant
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is arguing that claim 1 must be interpreted such that the claimed reclosable
strip fastener is limited to either a hook and loop fastener, or interlocking
profile strips, Appellant is arguing limitations that are not recited in claim 1.
See Reply Br. 1-2 ("[T]he [S]pecification only recites and the claims only
describe either a 'hook and loop fastener' or a fastener formed by
'interlocking profile strips."'); see also In re Self, 671 F .2d 1344, 1348
(CCP A 1982) (Rejecting arguments "not based on limitations appearing in
the claims.").
Regarding dependent claims 2 and 3, which respectively require the
reclosable strip fastener to be a hook and loop fastener, and interlocking
profile strips, the Examiner responds that
Holbert sufficiently suggests to one of ordinary skill in the art
that the perforations, cut lines, and/ or rupture lines incorporated
into the outer and inner layers, regardless of the structure of the
reclosable strip fastener, must be configured such that the
container is capable of being opened by activation of the rupture
line, formation of the reclosable flap by lifting the outer [plastic
film 1] from the surface of the container, and rupturing of the
inner layer cut lines.
Ans. 6; see also Appeal Br. 22 (Claims App.). We agree with the Examiner
and note that the prior art specifically recognizes the use of hook and loop
fasteners, and interlocking profile strips (e.g., zippers) in the field of plastic
film bags. We also agree with the Examiner that modifying Holbert's
container 4 to include hook and loop fasteners or interlocking profile strips
about the perimeters of the lip of the opening in container 4 and overlaying
portion of plastic film 1 would be within the knowledge of one of ordinary
skill in the art, while maintaining the functionality of Holbert's rupture and
cut lines, for example, by providing a greater area of overlap. See KSR, 550
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U.S. at 4 21 ("A person of ordinary skill is also a person of ordinary
creativity, not an automaton.").
Accordingly, we sustain the Examiner's rejection of independent
claim 1 and claims 2-12 depending therefrom. Because we rely on the prior
art in a manner different from the Examiner with respect to claim 1, we
designate our rejection as a new ground of rejection under 37 C.F.R. §
41.50(b) to provide Appellant with a full and fair opportunity to respond to
the Rejection, as modified.
DECISION
The Examiner's rejection of claims 1-14 is AFFIRMED and
designated as a NEW GROUND OF REJECTION.
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 exammer, overcomes the new ground of rejection
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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.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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