Ex Parte McMahon et al

Board of Patent Appeals and Interferences

Nov 30, 2006

10301308 (B.P.A.I. Nov. 30, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL J. McMAHON, ART MALIN, STEVE AUSNIT,
DONALD L. CREVIER, DAVID J. MATTHEWS, and JOEL JOHNSON
____________

Appeal No. 2006-0335
Application No. 10/301,308
____________

ON BRIEF
____________

Before FRANKFORT, CRAWFORD, and NAPPI, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 34 through 42, 44, 45, 47, 48, 50, 51 and 53
through 59, all of the claims remaining in the application.
Claims 1 through 33, 43, 46, 49 and 52 have been canceled.

As noted on page 1 of the specification, appellants’
invention relates to methods of making reclosable packages
having slide zippers on horizontal form-fill-seal (HFFS)
machines. In general, it appears that independent claim 34 is
directed to embodiments of the invention like that shown in
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Figures 14-16 of the application drawings, while independent
claim 53 is somewhat broader and thus readable on other
embodiments as well. Claims 34 and 53 are representative of the
subject matter on appeal and a copy of those claims can be found
in the Appendix attached to appellants’ brief.

The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Herz 3,790,992 Feb. 12, 1974
Smith 5,664,406 Sep. 9, 1997
Dobreski 5,682,730 Nov. 4, 1997
Todd et al. (Todd) 6,195,967 Mar. 6, 2001

Claims 37 through 41, 45, 48 and 51 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.

Claims 34 through 37, 40 through 42, 44, 45, 47, 48, 50, 51
and 53 through 59 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Todd in view of Herz.

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Claims 38 and 39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Todd in view of Herz, as applied above,
and further in view of Dobreski or Smith.1

1 Claims 34 through 42, 44, 45, 47, 48, 50, 51 and 53 through
59 also stand rejected under the judicially created doctrine of
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obviousness-type double patenting as being unpatentable over
various pending applications and prior U.S. Patents. See pages
2-4 of the final rejection mailed August 29, 2003 for the details
of these rejections. According to appellants’ statement in the
brief filed May 3, 2004 (page 4), such rejections “will be
resolved, if necessary, by terminal disclaimers, after the
various applications have been otherwise allowed.” Thus, it is
apparent that appellants have not contested the examiner’s
various obviousness-type double patenting rejections. Given that
no terminal disclaimer has been filed and no argument on the
merits made with respect to the double patenting rejections, we
summarily sustain the examiner’s rejections of claims 34 through
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42, 44, 45, 47, 48, 50, 51 and 53 through 59 based on
obviousness-type double patenting.

Rather than attempt to reiterate the examiner's full
commentary with regard to the rejections set forth in the answer
and the conflicting viewpoints advanced by the examiner and
appellants regarding those rejections, we make reference to the
examiner's answer (mailed June 24, 2004) for the reasoning in
support of the rejections, and to appellants’ brief (filed May 3,
2004) and reply brief (filed August 26, 2004) for the arguments
thereagainst.

OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants’ specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellants and the examiner. As a consequence of
our review, we have made the determinations which follow.
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Regarding the rejection of claims 37 through 41, 45, 48 and
51 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement, the examiner is of the
view that appellants’ disclosure does not support an embodiment
like that set forth in the above-enumerated claims which has both
sequential sealing of the zipper to the package walls, as is
evident in the embodiment of Figures 14-16 of the application
drawings, and opening of the zipper for the subsequent filling of
the package, as generally disclosed regarding the embodiments of
Figures 12 and 13 of the application. Appellants respond by
merely urging (brief, page 5) that
it is not inappropriate to claim
features of different disclosed embodiments,
particularly when the disclosed embodiments
are similar, the additional elements are
added in dependent claims, and unreasonable
experimentation would not be required after
review of the disclosure to combine the
various elements.

Absent any meaningful explanation directed to the specific
circumstances and facts of this case, appellants’ generalized
assertions in the brief and reply brief concerning the examiner’s
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35 U.S.C. § 112, first paragraph, rejection are not persuasive.
Like the examiner, it appears to us that independent claim 34 is
directed to the embodiment of Figures 14-16 of the application
drawings, wherein the first and second zipper flanges (40, 42)
are sequentially sealed to the package walls (116, 118) so that
filling between the zipper and the package wall (118) that is not
sealed to a zipper flange (referred to by appellants on pages 6
and 7 of the brief as “behind the zipper” filling) can occur
without opening of the zipper (see, particularly specification,
page 11, line 13 thru page 12, line 11). By contrast, claim 37,
which depends from claim 34, appears to be directed to the
embodiment of Figures 12 and 13, wherein the zipper flanges are
apparently simultaneously sealed to the package walls (at the
first sealing station 90) and the closed zipper is subsequently
opened at slider opening station (96) to allow filling of the
package through the reclosable zipper. Appellants have provided
no explanation as to why one of ordinary skill in the art would
have attempted to combine such apparently incompatible aspects of
these two different embodiments of the disclosed invention into
one embodiment, and have not explained why the specification
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would have reasonably conveyed to one skilled in the art that
appellants, at the time of filing the application, had possession
of such a hybrid embodiment.

Based on the foregoing, we will sustain the examiner’s
rejection of claims 37 through 41, 45, 48 and 51 under 35 U.S.C.
§ 112, first paragraph.
Regarding the examiner’s rejection of claims 34 through 37,
40 through 42, 44, 45, 47, 48, 50, 51 and 53 through 59 under
35 U.S.C. § 103(a) as being unpatentable over Todd in view of
Herz, we agree with the examiner’s assessment of Todd set forth
on page 4 of the answer. More specifically, we agree that Todd
teaches a process of making a reclosable package comprising the
steps of feeding a supply of package film (14) in a package
forming direction, folding the film about a bottom crease (at
plow assembly 24) to form opposing package walls or panels (26),
feeding a supply of reclosable zipper material from supply reel
(191) between the opposing package walls (26) and sealing the
zipper to the package walls at the same time that a bottom seal
is applied to the package at seal station (32). See column 5,
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lines 40-49 of Todd. Todd also discloses the step of cross-
sealing the folded film at package-width intervals (at station
38, via seal bars 42) to form a chain of packages and
subsequently cutting each of the packages or pouches (12) from
the chain of packages (at 46).

As recognized by the examiner, Todd does not disclose the
use of a slider with the zipper material of the package therein,
and does not teach or suggest sequential sealing of the zipper
material to the package walls, as required in appellants’ claims
on appeal. To account for the first of these differences, the
examiner turns to Herz, urging that this patent provides adequate
teaching and suggestion for one of ordinary skill in the art at
the time of appellants’ invention to have provided the packages
of Todd with a slider to provide an aid for opening and closing
the packages. Appellants have not contested this aspect of the
examiner’s rejection.

Regarding the second difference, the examiner contends that
it would have been an obvious matter of design choice to
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In view of the foregoing, the examiner's rejection of claims
34 through 37, 40 through 42, 44, 45, 47, 48, 50, 51 and 53
sequentially seal the zipper flanges in Todd to the package walls
because appellants have allegedly “not disclosed that such
sealing provides an advantage, is used for a particular purpose,
or solves a stated problem” (answer, page 4). It is this aspect
of the rejection which appellants have challenged in their brief
(pages 6-7). Given that the disclosure in Todd specifically
indicates that the zipper material is sealed to the package walls
(26) in the same operation that the bottom seal is formed on the
package at seal station (32), which teachings evidence a desire
for simultaneous sealing of the zipper material by zipper seal
bars (190), and given the lack of any disclosure in either Todd
or Herz concerning any other manner of sealing the zipper to the
package, we find the examiner’s bare assertion of obvious design
choice to be without foundation. Moreover, it is apparent that
appellants’ have refuted the examiner’s assertions in the answer
that the sequential sealing of the zipper halves as required in
the claims on appeal is not disclosed by appellants to provide an
advantage and/or not used for a particular purpose.

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through 59 under 35 U.S.C. § 103(a) as being unpatentable over
Todd in view of Herz is not sustained.

We have also reviewed the additional patents to Dobreskiand
Smith applied against dependent claims 38 and 39, but find
nothing in those references which would provide response for or
otherwise overcome the deficiencies in the basic combination as
noted above. Accordingly, the examiner's rejection of claims 38
and 39 under 35 U.S.C. § 103(a) as being unpatentable over Todd
in view of Herz and Dobreski or Smith is not sustained.

To summarize, the decision of the examiner to reject claims
34 through 42, 44, 45, 47, 48, 50, 51 and 53 through 59 under the
judicially created doctrine of obviousness-type double patenting
is affirmed. In addition, the examiner’s decision to reject
claims 37 through 41, 45, 48 and 51 under 35 U.S.C. § 112, first
paragraph, is affirmed. The decision to reject claims 34 through
42, 44, 45, 47, 48, 50, 51 and 53 through 59 under 35 U.S.C.
§ 103(a) is reversed. Since at least one rejection of each of
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the claims remaining in the application and on appeal has been
affirmed it follows that the decision of the examiner is
affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )
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Application No. 10/301,308

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