Ex parte Lyons

Board of Patent Appeals and Interferences

Oct 28, 1999

08786665 (B.P.A.I. Oct. 28, 1999)

Application for patent filed January 21, 1997. According to appellant, the1
application is a continuation of Application 08/369,120, filed
January 5, 1995, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL J. LYONS
__________
Appeal No. 1999-0945
Application 08/786,6651
___________
ON BRIEF
___________
Before FRANKFORT, STAAB and GONZALES, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 3, 4, 11 and 12, which are all of the
claims remaining in the application. Claims 1, 2 and 5
through 10 have been canceled.
Appeal No. 1999-0945
Application 08/786,665
2
Appellant’s invention relates to a reusable, flexible bag
or envelope for wrapping and packaging articles of various
shapes. As may be seen best in Figures 1 through 5, the bag
(10) is of a generally planar configuration and is comprised
of a sealed envelope (12) filled with small particles (14)
made from a foamed plastic material. The particles are
closely packed within the envelope and the air pressure within
the envelope is adjusted to be lower than atmospheric
pressure. The differential air pressure acting on the bag
causes the particles to be pressed together within the
envelope and to be in a non-free flowing condition that gives
the bag a semi-rigid character. As seen in Figure 1, this
semi-rigid characteristic allows the bag to be held at one end
thereof in a horizontal orientation without any deviation from
its planar shape. However, as seen in Figures 6 through 10,
the bag also retains a degree of flexibility such that it may
be wrapped or molded by hand about an article to be packaged
and will hold that configuration even when removed from the
package. The bag may then be returned essentially to its
original planar configuration by flattening the bag against
any flat surface by hand. Subsequently, the bag may again be
Appeal No. 1999-0945
Application 08/786,665
3
reconfigured by wrapping or molding it by hand about an
article of a different shape. A copy of claims 3, 4, 11 and
12 can be found in the Appendix to appellant’s brief.
The sole prior art reference relied upon by the examiner
in rejecting the appealed claims is:
Jarvis et al. (Jarvis) 5,515,975 May 14,
1996
(filed Jan. 19,
1994)
Claims 3, 4, 11 and 12 stand rejected under 35 U.S.C. §
103 as being unpatentable over Jarvis.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejection and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejection, we make reference to the final
rejection (Paper No. 9, mailed January 6, 1998) and the
examiner's answer (Paper No. 14, mailed November 16, 1998) for
the reasoning in support of the rejection, and to appellant’s
brief (Paper No. 13, filed July 7, 1998) for the arguments
thereagainst.
Appeal No. 1999-0945
Application 08/786,665
4
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art reference, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
Looking at page 6 of the brief, we note that appellant
has indicated that claims 3, 4, 11 and 12 “stand or fall
together.” Thus, we focus our discussions below on independent
claim 11, and consider that dependent claims 3, 4 and 12 will
stand or fall therewith.
Claim 11 on appeal defines a reusable envelope for
wrapping and packaging articles of different shapes. That
envelope includes lightweight and compressible particles in a
closed-packed arrangement positioned within the interior of
the envelope, with the interior of the envelope being at a
lower air pressure than the atmospheric pressure acting on the
Appeal No. 1999-0945
Application 08/786,665
5
exterior surface of the envelope. Claim 11 also recites that
the envelope and said particles therein collectively define “a
planar shape having a thickness of up to about 15
centimeters.” The last portion of claim 11 sets forth the
requirements of
“said differential air pressure and said
thickness collectively
maintaining said particles in said closed
packed arrangement,
providing sufficient rigidity to said envelope to
maintain said envelope in said planar shape when
being held at one end thereof, and
providing sufficient flexibility to said
envelope for it to be wrapped around and assume the
shape of a first article without change in said
differential air pressure, returned to said planar
shape without change in said differential air
pressure, and for
it to be wrapped around and assume the shape of a
second and differently shaped article without change
in said differential air [sic, pressure].”
In rejecting claims 3, 4, 11 and 12 under 35 U.S.C. § 103
based on the Jarvis patent, the examiner has taken the
position that Jarvis discloses an envelope (e.g., 82 in Fig.
5) which includes most of the elements of the claims. With
particular regard to claim 11 on appeal, the examiner has
indicated that Jarvis lacks an express teaching that the
cushion/envelope disclosed therein can have a thickness of up
Appeal No. 1999-0945
Application 08/786,665
6
to about 15 centimeters. The examiner has concluded however
that it would have been obvious to one of ordinary skill in
the art to construct the envelope (82) of Jarvis to be
anywhere in the range of up to about 15 centimeters, “where it
was used to package an appropriately sized article, or to
provide an article with more or less protection during
transportation of the article” (final rejection, page 2). As
for the recitations in the last eight lines of claim 11, the
examiner has concluded that although the applied reference to
Jarvis does not expressly teach the use of its cushion as
recited in that portion of appellant’s claim 11, the product
sought to be encompassed in claim 11 does not distinguish over
Jarvis. More specifically, the examiner urges
that such “functional language in claim 11 does not in fact
define any specific air pressure differential and certainly
does not define air pressure differentials not encompassed in
the prior art” (answer, penultimate page).
After our review of the teachings of Jarvis, even if we
were to accept the examiner’s conclusion that it would have
been obvious to one of ordinary skill in the art to provide
Appeal No. 1999-0945
Application 08/786,665
7
envelopes therein having a thickness in the range of up to
about 15 centimeters, we must agree with appellant (brief,
pages 10-13) that the resulting structure would still not be
that which is set forth in claim 11 on appeal. Upon
evacuation, each of the particulate filled envelopes described
in Jarvis is said to be “converted from a loose, flexible
structure to a compact, rigid structure” (col. 2, lines 60-
61), wherein the particles within the envelope and the
envelope itself decrease in size and become disposed in
intimate contact with a portion of the article to be
protected, and the particles within the envelope “form a rigid
matrix structure” (col. 6, line 13) about a portion of the
article being protected. Jarvis goes on to indicate (col. 6,
lines 25-26) that the envelope maintains this shape so long as
it is evacuated. By contrast, the envelope defined in
appellant’s
claim 11 on appeal has a differential air pressure and
thickness that collectively provides “sufficient rigidity to
said envelope to maintain said envelope in said planar shape
when being held at one end thereof” (see application Figure 1)
and
Appeal No. 1999-0945
Application 08/786,665
8
“sufficient flexibility to said envelope for it
to be wrapped around and assume the shape of a first
article without change in said differential air
pressure, returned to said planar shape without
change in said differential air pressure, and for it
to be wrapped around and assume the shape of a
second and differently shaped article without change
in said differential air [sic, pressure]”.
Thus, while the evacuated envelope in Jarvis forms a
rigid matrix structure about the article to be protected,
which structure is said to maintain its shape so long as the
envelope is evacuated, the reusable envelope claimed by
appellant is expressly required to have only a certain level
of rigidity and to retain sufficient flexibility so that it
can be a) wrapped around and assume the shape of a first
article to be protected without change in said differential
air pressure, b) returned to said planar shape without change
in said differential air pressure, and c) wrapped around and
assume the shape of a second and differently shape article
without change in said differential air pressure. Given such
a stark distinction in the physical
properties of the packaging envelope of Jarvis compared with
those of the packaging envelope claimed by appellant, we must
disagree with the examiner’s conclusion that appellant’s claim
Appeal No. 1999-0945
Application 08/786,665
9
11 does not distinguish over Jarvis, and also conclude that
Jarvis does not teach or suggest a reusable envelope like that
defined in appellant’s claim 11 on appeal. Once evacuated,
the envelope in Jarvis is strictly a rigid structure, without
the degree of flexibility required in appellant’s claim 11 on
appeal. Moreover, it would appear to be entirely contrary to
the clear teachings in Jarvis to provide the envelopes therein
with a degree of flexibility (in their evacuated state) which
would be like that required in appellant’s claims before us on
appeal.
Since the teachings and suggestions found in Jarvis would
not have made the subject matter as a whole of claim 11 on
appeal obvious to one of ordinary skill in the art at the time
of appellant’s invention, we must refuse to sustain the
examiner’s rejection of claim 11, and of dependent claims 3, 4
and 12 under 35 U.S.C. § 103.
Appeal No. 1999-0945
Application 08/786,665
10
In view of the foregoing, the examiner's decision
rejecting claims 3, 4, 11 and 12 of the present application
under 35 U.S.C. § 103 based on Jarvis is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
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LAWRENCE J. STAAB )
Administrative Patent Judge )
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JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 1999-0945
Application 08/786,665
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