Ex Parte Harper

Board of Patent Appeals and Interferences

Dec 9, 2010

11487927 (B.P.A.I. Dec. 9, 2010)

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.
11/487,927 07/17/2006 William Anthony Harper 7194
7590 12/10/2010
William Harper
16541 Redmond Way, pmb 140-C
Redmond, WA 98052-4492
EXAMINER
WEEKS, GLORIA R
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
12/10/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM ANTHONY HARPER
____________

Appeal 2009-009823
Application 11/487,927
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
William Anthony Harper (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision finally rejecting claims 1-5, 7-12, and 14-23

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009823
Application 11/487,927

2
under 35 U.S.C. § 102(b) as anticipated by Knoerzer (US 6,860,084 B2,
issued Mar. 1, 2005) and claims 6 and 13 under 35 U.S.C. § 103(a) as
unpatentable in view of Knoerzer and Dais (US 5,140,727, issued Aug. 25,
1992). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
The Invention
The claims on appeal relate to a process of placing inserts inside
flexible packages.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for placement of an insert in a
flexible package, comprising steps for:
folding a segment of flexible web material,
the segment having a first sidewall end
and a second sidewall end, inside surfaces
and outside surfaces, and a fold crease
connecting first and second sidewalls;
placing insert into folded segment, insert in
contact with inside surfaces, insert
registration maintained during package
build by gripping means holding insert
through segment sidewalls;
joining first and second sidewalls by sealing
means at one or more predetermined
locations so as to partially define a flexible
package containing an insert;
filling the package with a product; and,
sealing the first and second sidewalls at
predetermined positions so as to
completely contain said product and insert
within the boundaries of a so defined
flexible package.

Appeal 2009-009823
Application 11/487,927

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DISCUSSION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellant and the Examiner. As a result of this review, we
have determined, as the Examiner has interpreted the claims and applied the
prior art to the claimed inventions, that the Examiner has not established that
claims 1-5, 7, 8, and 18-23 lack novelty nor that claims 6 and 13 want of
nonobviousness. Therefore, the rejections on appeal are reversed. Our
reasons follow.
We agree with the Appellant’s claim construction provided on pages
29 through 30 in the Appeal Brief and adopt that construction for how a
person of ordinary skill in the art would interpret independent claims 1, 9,
and 18 in light of the Specification. We agree with the Appellant’s
characterization of Knoerzer’s disclosure as set forth in the Appeal Brief on
pages 31 and 36 and adopt those characterizations as our own findings of
fact.
We agree with the Appellant that Knoerzer’s disclosure fails to
disclose a set of steps where two film sidewalls and an insert are gripped to
maintain a registered relationship during further processing as in the manner
claimed within claims 1, 9, and 18. We agree with the Appellant that the
Examiner has misunderstood and misapplied the blousing operation of
Figure 13d in Knoerzer as an attachment operation involving a gripping
action. We agree with the Appellant that the Examiner’s analysis in the
rejection and arguments for maintaining the rejection are flawed-in-fact and
off-point on argument. We agree with the Appellant that the Examiner has
improperly attributed the operation of Appellant’s invention to Knoerzer’s
general wrapping of the web around the forming tube, as shown in Figure
Appeal 2009-009823
Application 11/487,927

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13d, in order to find that Knoerzer’s structure can perform the claimed
method. We agree with the Appellant that Knoerzer fails to disclose any
creasing or folding occurring by wrapping the web around the forming tube
of Knoerzer, as shown in Figure 13d, as relied on by the Examiner. We
agree with the Appellant that the Examiner misinterpreted Knoerzer’s
disclosure by reading the Appellant’s terminology into the Knoerzer
disclosure in order to build an improper foundation with inappropriate
framing to bolster an unsupportable finding of anticipation with Knoerzer.
We agree with the Appellant that Knoerzer’s disclosure fails to provide the
step of having the registration of the insert maintained during package build
by gripping means holding the insert through segment sidewalls in the
manner claimed within claims 1, 9, and 18. We agree with the Appellant
that Knoerzer’s disclosure is missing the operationally descriptive limitation
of “holding the insert through segment sidewalls” as set forth in claims 1, 9,
and 18. We note that the Examiner fails to utilize Dais to remedy the
aforementioned deficiencies with Knoerzer within the context of the
obviousness rejection of claims 6 and 13.

DECISION
Based on the foregoing, the Examiner’s decision to reject claims 1-5,
7-12, and 14-23 under 35 U.S.C. § 102(b) as anticipated by Knoerzer and
claims 6 and 13 under 35 U.S.C. § 103(a) as unpatentable in view of
Knoerzer and Dais is reversed.

REVERSED

Appeal 2009-009823
Application 11/487,927

5

Klh

WILLIAM HARPER
16541 REDMOND WAY, PMB 140-C
REDMOND, WA 98052-4492