Ex Parte Irwin

Patent Trial and Appeal Board

Dec 12, 2012

10835327 (P.T.A.B. Dec. 12, 2012)

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.
10/835,327 04/28/2004 Jere F. Irwin IR3-063 8282
21567 7590 12/13/2012
Wells St. John P.S.
601 West First Avenue
Suite 1300
Spokane, WA 99201-3828
EXAMINER
WEEKS, GLORIA R
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
12/13/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JERE F. IRWIN
____________

Appeal 2010-011176
Application 10/835,327
Technology Center 3700
____________

Before GAY ANN SPAHN, BRETT C. MARTIN, and
RICHARD E. RICE, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/835,327

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STATEMENT OF THE CASE
Jere F. Irwin (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s rejection of claims 2-7, 9-11, and 13-29.1 Although claim 12
is listed among the rejected claims both on the Office Action Summary or
Form PTOL-326 (page 1) of the Final Rejection and in the Examiner’s
Answer (page 2), that claim has not been included in any rejection in either
the Final Rejection or Answer. Accordingly, claim 12 currently stands as a
non-rejected claim, and it has not been included in this appeal.2 Claims 45-
50 are withdrawn from consideration. We have jurisdiction under 35 U.S.C.
§ 6.
We REVERSE.

The Claimed Subject Matter
The claimed subject matter “relates to machines . . . for preparing a
plastic bag to receive a closure device about the neck of the bag after the bag
has been filled with one or more items, such as a stack of thermoformed
articles.” Spec. 1, para. [0001]. Claim 11, reproduced below with italics
added for emphasis, is representative of the subject matter on appeal:
11. A bag neck accumulating device for flexible
plastic bags, comprising:
a conveyor belt configured to move a sequential array of
plastic bags each containing one or more articles supported for

1 We note that page 2 of the Answer states that “[c]laims 2-7 and 9-27 stand
rejected,” while page 1 of the Final Rejection and the rejections in both the
Answer and the Final Rejection indicate that claims 28 and 29 also stand
rejected. Accordingly, we treat the omission of claims 28 and 29 from the
rejected claims listed on page 2 of the Answer as a typographical error.
2 Upon return of the Application on appeal to the Technology Center, the
Examiner should determine the status of claim 12.
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movement in a substantially horizontal plane along an article
travel path that presents an open-mouth portion of each bag in a
substantially horizontal plane;
a lower drive unit;
an upper drive unit supported in floating relation atop
the lower drive unit;
a first drive mechanism provided by the upper drive unit
and the lower drive unit and configured along a laterally
constrained course spaced from the conveyor belt along a bag
neck travel path, provided laterally of the article travel path and
configured to advance the substantially horizontal open-mouth
portion of a bag at a first speed; and
a second drive mechanism provided by the upper drive
unit and the lower drive unit and configured along the laterally
constrained course provided along the bag neck travel path
adjacent and downstream of the first drive mechanism and
configured to advance the open-mouth portion of the bag at a
second speed less than the first speed so as to accumulate and
foreshorten the open-mouth portion of the bag;
wherein the upper drive unit is pivotally affixed to the
lower drive unit via a hinge such that during an operating state
of the device while accumulating bag necks a top portion of the
first drive mechanism and the second drive mechanism can be
separated from a bottom portion of the first drive mechanism
and the second drive mechanism by pivoting the upper drive
unit upwardly away from the lower drive unit about the hinge
while the open-mouth portion of each bag passes therethrough.

Rejections
The following Examiner’s rejections are before us for review:
(1) claims 11, 2-7, 9, 10, 13, and 26-29 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Johnsen (US 5,184,447, iss. Feb. 9,
1993) and Slomp (US 4,069,646, iss. Jan. 24, 1978); and
(2) claims 14-25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Johnsen.
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OPINION
Rejection (1) – Obviousness over Johnsen and Slomp
Claims 11, 2-7, 9, 10, and 13
The Examiner’s position is that Johnsen discloses the limitation of
independent claim 11 requiring “an upper drive unit supported in floating
relation atop the lower drive unit.” Ans. 4.3 In particular, the Examiner
finds that Johnsen discloses “an upper drive unit (42, 46) pivotally supported
in a floating relationship with a lower drive unit (44; column 2[,] lines 3-5).”
Id. Appellant argues in response that, as shown in Figure 3 of Johnsen, “‘a
bolt 232’ . . . locks the hinge while in operation” and “prevents the ability of
the upper drive unit to be supported in floating relation atop the lower drive
unit.” App. Br. 5.
A threshold issue is the proper construction of the claim term “in
floating relation.” The Examiner contends that “in floating relation” refers
to the “adjustment capability of the upper drive unit relative to the lower
drive unit” for controlling “the contact force between the respective drive
units.” Ans. 8-10 (citing Spec. 20, para. [0068]). Based on this claim
construction, the Examiner determines that Johnsen’s bolt 232 provides the
required adjustment capability:
According to the [S]pecification, weights 87 are
positioned on the upper drive unit such that the force of
the weights on an upper frame of the upper drive unit
affects the friction force of band 70 on the upper drive
frame against band 72 on a lower frame of the lower
drive unit. Such an arrangement improves the

3 The Examiner does not rely on Slomp to teach the “in floating relation”
limitation. Id. (finding that Slomp discloses a conveyor belt configured to
move a sequential array of bags to a neck sealing device).
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effectiveness of the device with respect to the drawing
and accumulation of bags having various material
thickness and stiffness properties. However,
[A]ppellant’s use of the phrase “floating” is somewhat
misleading since the upper drive unit does not adjust
freely relative to the lower drive unit, rather, weights
must be added or removed from the upper drive to cause
the adjustment of the upper drive unit with respect to the
lower drive unit.
Thus, Examiner finds fastener 232 of Johnsen,
which controls the engagement of bands 56, 58, 62, 64
against one another, to be equivalent to the corrector
weights of Appellant’s invention. The rotation of
fastener 232 to secure the frame 23 against frame 22
correlates to the contact force and adjustment of the first
drive unit relative to the second drive unit. As the
fastener 232 is loosened, the contact force between the
respective drive units is found to inherently decrease,
thereby resulting in and adjustment of the amount of
friction that would be generated between the bands of the
drive units during operation of the device. Likewise, as
the fastener 232 is tightened, the contact force between
the respective drive units inherently increases.

Ans. 8-9.
We disagree with the Examiner’s construction of “in floating
relation,” because it is not based on the plain meaning of the word
“floating.” See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (the words of
the claim must be given their plain meaning unless the plain meaning is
inconsistent with the specification). In the context of a tool or mechanical
part, “floating” means “free to move within limits.” WEBSTER’S THIRD NEW
INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED,
p. 872 (1971). The Examiner’s claim construction also improperly imports
properties from a preferred embodiment, in which weights 87 control the
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contact force between upper drive assembly 42 and the lower drive assembly
44 (see Ans. 8, citing Spec. 20, para. [0068]), and excludes another preferred
embodiment in which “weights 87 may not be necessary, and can be
removed” (Spec. 18, para. [0061]). See E-Pass Techs., Inc. v. 3Com Corp.,
343 F.3d 1364, 1369 (Fed. Cir. 2003) (properties of a preferred embodiment
that are not recited in a claim do not limit the reasonable scope of the claim);
Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1550 (Fed. Cir.
1996) (a claim construction that excludes an applicant’s preferred
embodiment “is rarely the correct interpretation”).
The term “in floating relation” is not used in the Specification.
However, the Specification describes upper drive assembly 42 as “pivotally
supported atop a lower drive assembly 44” (Spec. 14, para. [0051]) such that
upper drive assembly 42 can “tilt up” in the event that an undesirable object
is inadvertently fed between upper drive assembly 42 and lower drive
assembly 44 (id. at 30, para. [0099], fig. 14). Thus, as described in the
Specification, upper drive assembly 42 is free to move pivotally relative to
lower drive assembly 44. Accordingly, we find that the proper construction
of the claim term “in floating relation” is free to move in relation to
something else.
The context of claim 11 supports this claim construction. See ACTV,
Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“While
certain terms may be at the center of the claim construction debate, the
context of the surrounding words of the claim also must be considered
. . . .”). The “wherein” clause of claim 11 (reproduced in italics supra)
pertinently recites “that during an operating state of the device while
accumulating bag necks a top portion . . . can be separated from a bottom
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portion . . . by pivoting the upper drive unit upwardly away from the lower
drive unit about the hinge while the open-mouth portion of each bag passes
therethrough.” (Emphasis added). Thus, in the context of the “wherein”
clause, the claim 11 recitation “an upper drive unit supported in floating
relation atop the lower drive unit” requires the upper drive unit to be
supported atop the lower drive unit such that it is free to move at least
pivotally relative to the lower drive unit.
Because the Examiner’s rejection of claim 11 as obvious is not based
on a proper construction of the claim term “in floating relation,” the
rejection is not supported by “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness,” as required.
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Further, the Examiner lacks
an adequate factual basis for finding that loosening/tightening bolt 232
inherently adjusts the contact force between the respective drive units. See
Ans. 9; In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (The Examiner has
the initial duty of supplying the requisite factual basis for the rejection and
may not, because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis.). Johnsen discloses that removing bolt 232
allows the drive units to be pivoted away from each other for ease of access
to belts and other parts in servicing the bag closing machine (Johnsen, col. 8,
ll. 16-32; see also col. 2, ll. 3-10), but does not disclose necessarily that
loosening/tightening bolt 232 adjusts the contact force between the drive
units during operation of the machine. See Bettcher Indus., Inc. v. Bunzl
USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011) (“Inherency can be
established when ‘prior art necessarily functions in accordance with, or
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includes, the claimed limitations.’”) (quoting In re Cruciferous Sprout Litig.,
301 F.3d 1343, 1349 (Fed. Cir. 2002)).4
Accordingly, we do not sustain the Examiner’s rejection of claim 11,
and claims 2-7, 9, 10, and 13 dependent therefrom, under 35 U.S.C. § 103(a)
as unpatentable over Johnsen and Slomp.
Claims 26-29
Independent claim 26 pertinently recites
a floating drive mechanism having . . . an upper drive
unit supported in generally vertical floating relation atop the
lower drive unit . . . for engaging through gravitational
attraction and disengaging against gravitational attraction bag
contact portions . . . while . . . bags pass between the portions of
the first feed mechanism and the second feed mechanism.

As to this recitation, the Examiner determines that

Johnsen discloses the claimed invention except for the
orientation of the drive units “atop” or vertically adjacent one
another. It would have been obvious to one having ordinary
skill in the art at the time the invention was made to orient the
upper and lower drive units vertical to one another rather than
horizontal of one another, since it has been held that a mere
rearrangement of the essential working parts of a device
involves only routine skill in the art.[] Such a modification is
not found to affect the operation of the device.

Ans. 5 (citing In re Japikse, 181 F.2d 1019 (CCPA 1950)).5 In further
support of this conclusion, the Examiner contends that rearranging Johnsen’s

4 We note that the Examiner’s rejection of claim 11 is also erroneous for
failure to consider the limitation “an upper drive unit supported . . . atop the
lower drive unit” discussed infra in reference to claim 26.
5 The Examiner analyzed the claim language of “in . . . floating relation” in
claim 26 in the same manner as in claim 11. Ans. 8-10.
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horizontal drive units so that one is “atop” the other would have no effect on
the operation of the bag closing machine:
As mentioned above, a mere rearrangement of the essential
working parts of a device involves only routine skill in the art,
where such a modification has no [e]ffect on the operation of
the device. References of record, such as Frazier et al. (USPN
5,708,339) and Keith (USPN 3,581,876), support Examiner’s
assessment that such a rearrangement is well known in the art
of bag neck accumulating devices. In further support of
Examiner’s assessment regarding the inconsequential
orientation of the drive units with respect to one another, [the]
Examiner would like to note Johnsen’s use of the phrase “on”
and “upper” to describe the arrangement of the drive units
relative to one another (column 2[,] lines 3-10).

Ans. 10.
For the reasons discussed supra with respect to claim 11, the
Examiner’s rejection of claim 26 is not based on a proper construction of “in
. . . floating relation.” Further, the Examiner lacks a rational underpinning
for the proposed rearrangement of Johnsen’s drive units from horizontal to
vertical. The Examiner does not adequately explain: how the Frazier and
Keith references show that the proposed rearrangement of Johnsen’s
machine would not affect its operation; why the disclosure at column 3, lines
3-10 of Johnsen (referring to parts of the machine housing) is relevant to
rearrangement of the drive units; or if the rearrangement would satisfy the
requirement of claim 26 for “for engaging through gravitational attraction
and disengaging against gravitational attraction bag contact portions . . .
while . . . bags pass between the portions of the first feed mechanism and the
second feed mechanism.”
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Thus, we do not sustain the Examiner’s rejection of claim 26, and
claims 27-29 dependent therefrom, under 35 U.S.C. § 103(a) as unpatentable
over Johnsen and Slomp.
Rejection (2) – Obviousness over Johnsen
Claim 14 pertinently recites “an upper drive unit pivotally supported
in floating relation atop the lower drive unit for engagement together via
gravitational attraction of the upper drive unit towards the lower drive unit
and separation apart via an articulating drive connection.” The Examiner’s
position with respect to “atop” in claim 14 is the same as for claim 26,
discussed supra. Ans. 10. For essentially the same reasons as discussed
supra with respect to claims 11 and 14, we do not sustain the Examiner’s
rejection of claim 14, and claims 15-25 dependent therefrom, under
35 U.S.C. § 103(a) as unpatentable over Johnsen.6

DECISION
We reverse the rejection of claims 2-7, 9-11, and 13-29.

REVERSED

hh

6 The Examiner’s analysis of claim 14 does not address the requirement “for
engagement together via gravitational attraction of the upper drive unit
towards the lower drive unit,” but rather only the limitation of “gravitational
attraction.” Id. at 7.