Ex Parte Hall et alDownload PDFPatent Trial and Appeal BoardApr 29, 201411975001 (P.T.A.B. Apr. 29, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BRUCE NEIL HALL, JAMES MICHAEL SINGER, REBECCA SUE GIESFELDT, and RONALD JOSEPH CISEK ____________________ Appeal 2011-000105 Application 11/975,001 Technology Center 3700 ____________________ Before FRANCISCO C. PRATS, JENNIFER S. BISK, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Bruce Neil Hall et al. (Appellants) appeal under 35 U.S.C. § 134(a) from a decision finally rejecting claims 1-5. Appeal Brief (“App. Br.”) 1. Claim 6 was cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b)(1). We affirm. App App use i Spec layer secti other perip sidew 31. and v eal 2011-0 lication 11 The clai n the cont ification ( s. Id. at 3 Figure 1 onal view features, heral edge alls inclu The inwar alleys, wi Figure 6 00105 /975,001 T med inven ainment an “Spec.”) 1 , ll. 9-13. illustrates of the bag mating ele s 16, 18, a des an out d-facing su th the vall is reprodu he Claime tion gener d protecti , ll. 7-8. I Figures 1 re-closab taken alon ments 26, nd bottom er layer 30 rfaces of eys contai ced below 2 d Subject ally “relate on of vario t discloses and 2 are r le bag 10, g line 2:2 28, two op edge 20. , 34 and in the inner l ning adhes with an a Matter s to storag us items, re-closabl eproduced and Figure . The bag posing si Id. at 3, ll ner layer ayers may ive. Id. at nnotation. e bags su such as fo e bags hav below. 2 illustra includes, dewalls 12 . 9-22. Ea 32, 36. Id include pr 4, ll. 1-12 itable for od items.” ing two tes a among , 14, ch of the . at ll. 29- otrusions . App App and o (upp the a App eal 2011-0 lication 11 Figure 6 uter layer er, bottom nnotation. The only 1. A a said side edge, an portion o at an inner sa face, sa bottom e layer su upper ed edges, s adjacent said vall . Br. 6 (par 00105 /975,001 illustrates s of each s and perip Id. at 7, l independ storage ba bag body walls incl d said si f said per least one layer; and id inner la id inner la dge, the p bstantially ge and sa aid inner said protr eys, at lea agraphing a re-closa idewall ar heral) but l. 1-25. ent claim g compris comprisin uding perip dewalls a ipheral edg said sidew yer comp yer attac eripheral e unattache id bottom face com usions wit st one side and emph 3 ble bag em e attached not in the on appeal ing: g at least heral edg ttached to es; all comp rising an hed to sa dges and t d to said edge, and prising h an adhe wall comp asis added bodiment to one ano area in bet reads as fo two oppo es and a c gether al rising an o upper edg id outer l he upper e outer laye between protrusion sive at lea rising a va ). in which ther at the ween, as i llows: sing sidew ommon bo ong at lea uter layer e and an ayer along dge, said r between said perip s and va st partly fi lve passag the inner edges ndicated b alls, ttom st a and inner the inner said heral lleys lling e. y Appeal 2011-000105 Application 11/975,001 4 Evidence The Examiner relies upon the following prior art references: Kugler Saad Price Yoshikawa US 3,399,822 US 5,804,265 US 6,874,938 B2 US 2003/0118759 A1 Sep. 3, 1968 Sep. 8, 1998 Apr. 5, 2005 Jun. 26, 2003 Rejections The Examiner makes the following rejections: I. Claims 1 and 3-5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Saad, Price, and Yoshikawa. II. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over Saad, Price, Yoshikawa, and Kugler.1 OPINION Claims 1 and 3-5 The Examiner rejected claims 1 and 3-5 as unpatentable over Saad, Price, and Yoshikawa. Appellants argue the claims as a group. App. Br. 3- 4; Reply Br. 3-4. In accordance with 37 C.F.R. § 41.37(c)(1)(vii)(2008), we select independent claim 1 as representative of the group. Therefore, we will treat claims 3-5 as standing or falling with representative claim 1. Saad discloses “a freezer bag . . . having at least an inner liner bag and an outer support bag.” Saad, Abstract. The bag has seals at the top to allow 1 In the Examiner’s Answer, the Examiner withdrew a prior rejection of claim 2 and asserted the instant rejection instead, expressly noting that it is a new rejection. Ans. 3. In response to the new rejection, Appellants did not request reopening of prosecution. Instead, they maintained their appeal. See generally Reply Br. Appeal 2011-000105 Application 11/975,001 5 it to be closed and reopened. Id. at col. 5, ll. 28-32. The inner layer is textured or embossed with protrusions 98. Id. at col. 9, ll. 33-35; Figs. 9a and 9b. The outer layer includes vent holes 99. Id. at col. 5, ll. 35-36; Fig. 9b. The Examiner found that Saad teaches the subject matter of claim 1 except for: (1) “said inner layer attached to said outer layer along the bottom edge”; and (2) “adhesive at least partly filling said valleys.” Ans. 4- 5; see also App. Br. 3 (“Appellant agrees with the Office Action that Saad fails to disclose the claimed elements of an inner layer attached to the bottom edge of the outer layer and adhesive partially filling portions of the inner layer.”). Like Saad, Price also discloses a re-closable bag for food. Price col. 1, ll. 6-13. It has inner and outer layers, the outer layer being referred to as a jacket. Id. at col. 3, ll. 11-32. Price teaches attaching the inner layer to the jacket along the bottom edge of the bag. Id. at col. 4, ll. 30-40. The Examiner thus found that Price discloses that attaching an inner layer to the outer layer (or jacket) along the bottom edge of an analogous bag is an equivalent structure known in the art. Ans. 4 (citing Price col. 4, ll. 30-40). The Examiner further found that, because the Saad and Price bags were art- recognized equivalents at the time of the invention, one of ordinary skill in the art would have found it obvious to substitute inner and outer layers being attached along their bottom edge, as taught by Price, for Saad’s layers, which are not attached at their bottom edge. Ans. 4, 7; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen 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.”). Appeal 2011-000105 Application 11/975,001 6 Appellants argue that there is no motivation to make the substitution. App. Br. 3. However, motivation for an obviousness rejection need not be derived from the express teachings of the cited references. See KSR, 550 U.S. at 418 (“[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”); see also id. at 419 (“The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation . . . .”). Rather, an obviousness rejection may be sustained by advancing “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Examiner relied on substitution of a known useful feature from one prior art freezer storage bag into another prior art freezer storage bag. Appellants have not explained persuasively why that explanation fails to articulate sufficient reasoning based on a rational underpinning. Further, Appellants have not shown that such substitution yields more than a predictable result. See KSR, 550 U.S. at 416. Appellants also argue that the substitution would frustrate the stated intention of the Saad invention. App. Br. 3. In that regard, Appellants note that Saad discloses venting its bag to allow the inner layer to move more independently from the outer layer than it otherwise would, thus facilitating clinging of the inner layer to the food item being stored. App. Br. 3 (citing Saad col. 6, ll. 15-25). Appellants assert that attaching the inner and outer layers along their bottom edge would lessen the degree of independent movement. App. Br. 3. Appeal 2011-000105 Application 11/975,001 7 Appellants do not cite legal authority for their argument. However, the U.S. Court of Appeal for the Federal Circuit has held that a proposed modification is inappropriate for an obviousness inquiry if it would render the prior art reference “inoperable for its intended purpose.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (emphasis added). Appellants have not explained persuasively why the proposed combination would be inoperable. Nor have Appellants directed us to clear or specific evidence supporting their argument. In fact, Price discloses an operable bag that has its inner and outer layers attached along their bottom edge. Price col. 4, ll. 30-40. Like Saad and Price, Yoshikawa also discloses a re-closable bag for food. Yoshikawa 1, ¶ 0002. An inner surface of the bag includes protrusions and valleys, with the valleys being filled partially with adhesive. Id. at 4, ¶ 0052. The Examiner thus found that Yoshikawa discloses that it is known in the art to provide adhesive in the valleys of an analogous bag. Ans. 5. The Examiner further found that it would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the valleys of the Price-modified Saad bag with the adhesive of Yoshikawa in order to form a seal perimeter about the contents of the bag. Id. Appellants argue that “[a]s the liner bag of the Saad reference structures comprises a perimeter seal there is no need or motivation to add the adhesive from Yoshikawa to Saad.” App. Br. 4. However, the Examiner is not required to identify a need or motivation in the express teachings of the cited references; articulated reasoning with rational underpinning is sufficient. See KSR, 550 U.S. at 418; Kahn, 441 F.3d at 988. Employing adhesive improves the sealing of the inner layer. See Yoshikawa 6, ¶ 0080. Thus, we agree with the Examiner that it would have been obvious to Appeal 2011-000105 Application 11/975,001 8 employ adhesive in Saad’s bag, as taught by Yoshikawa. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). For the foregoing reasons, we sustain the obviousness rejection of claim 1 and of claims 3-5, which fall therewith. Claim 2 Claim 2 depends from claim 1 and additionally requires that “the valve passage comprises a one way valve.” App Br. 6. The Examiner found that it was not clear whether Saad’s vent holes constituted one-way or two- way valves. Thus, the Examiner rejected claim 2 as obvious over Saad, Price, and Yoshikawa, as applied to claim 1, and further in view of Kugler, which the Examiner found to teach one-way valves. Like Saad, Price, and Yoshikawa, Kugler also discloses a re-closable bag for food. Kugler col. 1, ll. 20-22. Kugler discloses that the bag has “a plurality of valve-forming miniature flaps,” and that they “permit air flow in only one direction.” Id. at Abstract. The Examiner reasoned: [i]t would have been obvious to a person having ordinary skill in the art at the time the invention was made to provide the vent of Saad [as modified by Price and Yoshikawa] as flap-forming slits, as suggested by Kugler, in order to permit the build-up of gas within the bag to flow outside of the bag while preventing flow from outside the bag to its interior. Ans. 6. Appellants argue that Saad teaches away from venting the bag in a one-way, out direction only. Reply Br. 4. Specifically, Appellants argue Appeal 2011-000105 Application 11/975,001 9 that the Saad “bag is described as being designed to freely vent to enable more freedom of movement between the inner and outer bags and to improve the ability of the inner bag to conform to its contents.” Id. (no citation to Saad provided). However, Saad does not teach that two-way air movement is required. Further, Appellants have not shown that Saad criticizes, discredits, or otherwise discourages the use of one-way valves in lieu of its two-way vent holes. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed.). In fact, Saad states: Venting to the outside atmosphere increases the amount of cling or surface area contact of the liner bag film to meat. Venting permits the inner liner to cling to the meat by allowing the liner bag to move more independently of the support bag than it otherwise would if the space between the two film layers was closed and of a fixed volume. Saad col. 6, ll. 15-20. Thus, Saad credits the ability for air to exit the bag (without mentioning the ability for air to enter the bag) as facilitating the desired increase in independent movement of the inner layer as well as increased conformance of that liner to the bag’s contents. We are, therefore, not persuaded that the Examiner erred in finding that an ordinary artisan would have been prompted to use one way valves when providing the vents for Saad’s inner bag. For the foregoing reasons, we sustain the obviousness rejection of claim 2. Appeal 2011-000105 Application 11/975,001 10 DECISION The Examiner’s decision to reject claims 1-5 is affirmed. No time period for taking action in connection with this appeal may be extended under 37 C.F.R. § 1.135(a)(1)(iv)(2010). AFFIRMED msc Copy with citationCopy as parenthetical citation