Ex Parte Meier et al

Board of Patent Appeals and Interferences

Dec 6, 2007

10619956 (B.P.A.I. Dec. 6, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TERRENCE P. MEIER,
JAMES S. ZIELINSKI,
JEFFREY M. STUPAR, and
DEEPAK MEHTA
____________

Appeal 2008-0204
Application 10/619,956
Technology Center 1700
____________

Decided: December 6, 2007
____________

Before EDWARD C. KIMLIN, THOMAS A. WALTZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1 through 9 and 18 through 27, which
are the only claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2008-0204
Application 10/619,956

I. BACKGROUND
The invention relates to a fitment for mounting and sealing to a
flexible bag. Claim 1 is illustrative:
1. An over-molded fitment configured for mounting and
sealing to a flexible packaging material comprising:

a flange having first and second sides;

a spout extending upwardly from the first side of the
flange; and

a molded sealing media molded over and onto the first
side of the flange,

wherein the flange and spout are integral with one
another and formed from a single first material, and wherein the
sealing media is formed from a second material different from
the first material and having a density less than a density of the
first material, the sealing media configured for disposition
between the first side of the flange and the flexible packaging
material when the fitment is mounted and sealed to the flexible
packaging material, the sealing media being heat activated to
effectively weld the fitment to the flexible packaging material.

The Examiner relies upon the following references as evidence of
unpatentability:
De Van 3,696,969 Oct. 10, 1972
Knox 4,851,272 Jul. 25, 1989
Brown 5,203,470 Apr. 20, 1993

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ISSUES ON APPEAL
Claims 1, 2, 4, 18, 19, and 24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over De Van in view of Brown. To reject claims 3,
5-9, 20-23, and 25-27, the Examiner adds Knox.
Appellants have not argued any of the claims separately with any
reasonable specificity and, therefore, we select one claim, claim 1, to decide
the issues on appeal.
Appellants focus their discussion on only one limitation in claim 1
(Br. 4, 6). Appellants contend that the Examiner has incorrectly defined
“molded” as it is used in the claim and specification of the present invention
and has mischaracterized De Van as teaching a “molded” sealing media (Br.
6). 1
The Examiner contends that the definition of molded is to “give shape
to or to form in a mold” and that the adhesive sealing layer of De Van was
given a shape when it was placed on the flange of De Van (Ans. 7).
Accordingly, we determine the issue on appeal arising from the
contentions of Appellants and the Examiner is: Have Appellants shown that
the Examiner reversibly erred in rejecting the claims as unpatentable over
the applied references? Specifically, does De Van teach or suggest: “a
molded sealing media molded over and onto the first side of the flange” as
set forth in claim 1?

1 Appellants do not contest or dispute the Examiner’s factual findings from
Brown and Knox (Br. 7, 8, respectively). Therefore, we do not recite these
factual findings here but adopt the Examiner’s factual findings and
conclusions of law with regard to these references (Ans. 3-6).
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Further, we note that the claim is directed to a product. As such, it is
the patentability of the product defined by the claim, rather than the process
for making it, that we must gauge in light of the prior art. In re Wertheim,
541 F.2d 257, 271 (CCPA 1976). Thus, an alternative dispositive issue is:
Does the prior art applied by the Examiner teach or suggest the article that is
claimed?
We determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence, which prima facie case has
not been adequately rebutted by Appellants’ arguments. Accordingly, we
AFFIRM all grounds of rejection presented in this appeal essentially for the
reasons stated in the Answer, as well as for those reasons set forth below.

OPINION
A preponderance of the evidence of record supports the following
Findings of Facts (FF):
1. De Van describes a spout 24 with a flange 52 integral therewith
(Fig 3). De Van describes that a flexible bag 44 is secured onto the flange
52 by an adhesive (col. 4, ll. 1-5).
2. The prior art differs from the disputed claim limitation only in its
failure to explicitly state that the adhesive (i.e., sealing media) is molded
onto and over the first side of the flange 522.

2 "Any arguments or authorities not included in the brief or a reply brief filed
pursuant to [37 C.F.R.] § 41.41 will be refused consideration by the Board,
unless good cause is shown." 37 C.F.R. § 41.37(c)(1)(vii). Accordingly,
our affirmance is based only on the arguments made in the Brief. Any
arguments or authorities omitted therefrom are neither before us nor at issue
but are considered waived. Cf. In re Watts, 354 F.3d 1362, 1367 (Fed. Cir.
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3. We determine that the limitation in Appellants’ claim 1 of
“molded sealing media molded onto and over the first side of the flange” is a
product-by-process limitation, that is, the limitation defines how the product
was made (namely, by a molding process).
4. The resultant end product of the applied references is a spout with
an integral flange of a higher density material than the material of a sealing
media, a layer of the sealing media (i.e. the adhesive), and a flexible
packaging material heat sealed thereto (Ans. 3-4).
5. The plain meaning of the word “molded” includes: 1. to shape in or
on a mold; 2. to form into a particular shape; give shape to; and, 3. to fit
closely by following the contours of.3
6. The adhesive of De Van would have been extruded out of a
container onto the flange (Ans. 7).
7. Extrusion, defined as the act or process of shaping by forcing
through a die, or out of an opening in a container, is a molding process.4
2004) ("[I]t is important that the applicant challenging a decision not be
permitted to raise arguments on appeal that were not presented to the
Board.")
3 “molded." The American Heritage® Dictionary of the English Language,
Fourth Edition. Houghton Mifflin Company, 2004. 21 Nov. 2007.
. We note
that no definition of the word “molded” appears in the Specification.
4 “extrusion” The American Heritage Dictionary of the English Language,
Fourth Edition. Houghton Mifflin Company, 2004.
http://dictionary.reference.com/browse/extrusion
“extrusion molding.” Definition Copyright ©1989 CRC Press LL; moldings
which are made from plastic material by forcing it through a shaped orifice
by means of pressure.

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8. We determine that in context of the overall teachings of De Van
that the adhesive was “molded over and onto the first side of the flange”
(col. 4, ll. 1-5).
9. One of ordinary level of skill in the art would be an engineer or
scientist who designs fittings for flexible packaging devices as exemplified
in the applied references.

Principles of Law
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The legal question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”)
It has been well established that, for a claim to a product, the
patentability of the product defined by the claim, rather than the process for
making it must be gauged in light of the prior art. In re Wertheim, 541 F.2d
at 271, (CCPA 1976); In re Brown, 459 F.2d 531, 535 (CCPA 1972).
Likewise it has long been held that “‘[i]f the product in a product-by-process
claim is the same as or obvious from a product of the prior art, the claim is
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unpatentable even though the prior product was made by a different
process.’” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317
(Fed. Cir. 2006) (quoting In re Thorpe, 777 F.2d 695, [697] (Fed. Cir.
1985)).
Analysis
As noted above, Appellants have only argued that the Examiner failed
to properly interpret one limitation in the claim, and thus we will limit our
discussion to that limitation in independent claim 1.
Initially, we note that the claim is directed to a product. As such, it is
the patentability of the product defined by the claim, rather than the process
for making it, that we must gauge in light of the prior art.
Applying this legal principle to the Factual Findings, we determine
that the Examiner has established a prima facie case of obviousness that has
not been sufficiently rebutted by Appellants.
Claim 1 is directed to an article of manufacture, in particular a fitment
configured for mounting and sealing to a flexible packaging material. (The
only other independent claim, claim 18, also claims an article of
manufacture; that is, a package which includes the fitment sealed to the
flexible packaging material.) As such patentability must rest on the
structural differences between the fitment of claim 1 compared to those in
the prior art. Differences in the process by which the fitment (and the
resulting package) are made are relevant only in so far as they further limit
the structure of what is claimed. While Appellants and the Examiner have
focused on arguing over whether the sealing media of De Van is “molded”
onto the flange or not, those arguments do not address a fundamental issue
in this case: The issue is whether something in the prior art teaches or
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suggests the article that is claimed. A difference in how the sealing media is
applied to the fitment (and/or the packaging material) is immaterial if the
structure and properties of the prior art product and the claimed product are
not patentably distinct from each other.
The end product resulting from Appellants’ claim 1, when the fitment
is attached to a flexible packaging material5, is a spout with an integral
flange of a higher density material than the material of a sealing media, a
layer of sealing media, and the flexible packaging material heat sealed
thereto.
The resultant end product of the applied references is likewise a spout
with an integral flange of a higher density material than the material of a
sealing media, a layer of sealing media (i.e. the adhesive), and a flexible
packaging material heat sealed thereto (FF 1, 4).
Thus, we do not see how Appellants’ product claim defines over the
prior art applied by the Examiner. In a case where patentability rests upon
how the claimed product was made, the PTO has no reasonable ability to
manufacture and determine whether there is, in fact, a patentable difference
between the prior art product and the claimed product. Under the
circumstances, it is reasonable to shift the burden to Appellants to show that
the claimed product is, in fact, patentably different from the prior art
product. In re Thorpe, 777 F.2d at 698; see also In re Best, 562 F.2d 1252,
1255 (CCPA 1977).
Alternatively, even assuming that “a molded sealing media molded
over and onto” the flange results in a structural feature, we find that the

5 Appellants’ claim 18 positively claims the combination of the fitment
sealed to the packaging material.
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Examiner has met the initial burden of presenting a prima facie case of
obviousness.
Implicit in our review of the Examiner’s obviousness analysis is that
the claim must first have been correctly construed to define the scope and
meaning of each contested limitation. See Gechter v. Davidson, 116 F.3d
1454, 1457, 1460 n.3 (Fed. Cir. 1997). During examination proceedings,
claims are given their broadest reasonable interpretation consistent with the
specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Although claims are to be interpreted in light of the
specification, limitations from the specification are not to be read into the
claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Accordingly, we must first construe the disputed term “molded…” as
found in the pertinent clause of claim 1 on appeal. According to Appellants’
Specification (3: ¶ [0010] ), the fitment 10 includes an overmolded sealing
media molded onto the first side of the flange. Appellants further teach that
“… a layer of material 24 that is over-molded onto the face or side 16 of the
flange that is configured for sealing to the packaging P material…The low
melt material [24] serves as a tie layer between the HDPE fitment material
10 and the LPDE packaging P material.” (Spec. 5: ¶ [0023]). This
embodiment is further set out: “That is, subsequent to the injection molding
process for forming the fitment, the low melt material 24 [is] molded onto
the fitment 10, over the flange face 16.” (Spec. 5: ¶ [0024]). “The fitment
10 was then positioned in a subsequent mold …having a cut out or
additional mold cavity conforming to the size and shape of the over-mold
portion [24].” (Spec. 7: ¶ [0031]). However, we cannot limit the scope of a
disputed term by the embodiments absent an express disclaimer by
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Appellants of a broader definition. See In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004). Since Appellants present no express disclaimer in their
Specification, we find that “molded over and onto…” as used in claim 1
includes to form into a particular shape; give shape to; and/or to fit closely
by following the contours of (FF 5).
Using these definitions, we determine that applying the
adhesive to the flange as taught by De Van does meet the disputed
claim language. The adhesive was “molded over and onto” the flange
when it was applied thereto (FF 6-8). Appellants contend that that
this is impermissibly reading out that the sealing media be
“overmolded” (Br. 7). We disagree for the reasons already discussed
and the following reasons. As cited by Appellants (Br. 6), Phillips is
concerned with the claim language in a patent. In this appeal, we are
concerned with the claim language during ex parte prosecution of a
patent application. During ex parte prosecution, the Patent &
Trademark Office (PTO) determines the scope of the claims by giving
the language the broadest reasonable construction in light of the
specification as it would be interpreted by one of ordinary skill in the
art. Limitations from the specification are not to be read into the
claim. We decline to read into the claims any specific “molding”
process set out in Appellants’ Specification.
Thus, we agree with the Examiner and determine that the Examiner
has established a reasonable belief that De Van suggests a “molded sealing
media molded onto and over” the flange 52. We, therefore, conclude that
the product of claim 1 is rendered obvious by the applied references.
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OTHER ISSUES
In any further prosecution of this case (e.g., if Appellants provide
evidence that the structure is different when the process as described in the
specification is used to make the sealing tie layer 24), the question of
whether a product-by-process limitation regarding a “molded” or
“overmolded” sealing media results in a patentably distinct structure from
one is which an adhesive sealing layer was applied (e.g., De Van) should be
explicitly addressed. For example, the teachings of Pierrot cited in related
application 11/123,366 should be considered. Pierrot exemplifies that
“molding” (as Appellants would interpret the term) an adhesive layer (that
is, a tie layer) over and onto a previously molded fitting was known. Thus,
the question of whether such a limitation would patentably distinguish a
product over the prior art, or whether it was simply a known alternative way
for one of ordinary skill in the art to apply an adhesive or tie layer, should be
considered.
Keeping in mind that it is the claimed product that must be patentably
distinguished from the prior art product, the Examiner should consider
whether, in light of the guidance offered by Pierrot on how to mold an
adhesive layer onto a fitting, one of ordinary skill in the art would have
combined that familiar treatment to obtain fitments and packages as claimed,
with the results being predictable. Further, the problem described by
Appellants that their invention solves is bonding two dissimilar materials,
namely the fitment and the flexible packaging, to one another (Spec. 2: ¶
[0008]). Brown (applied by the Examiner in this application) also teaches in
the packaging art that adhesive layers or tie layers may be present to aid in
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bonding dissimilar materials to one another (col. 3, ll. 67 to col. 4, ll. 2).
See KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”) and KSR,
127 S. Ct. at 1742 (“One of the ways in which a patent's subject matter can
be proved obvious is by noting that there existed at the time of invention a
known problem for which there was an obvious solution encompassed by the
patent's claims.”).
CONCLUSION
For the foregoing reasons and those stated in the Answer, we
determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence. Based on the totality of the
record, including due consideration of Appellants' arguments, we determine
that the preponderance of evidence weighs most heavily in favor of
obviousness within the meaning of § 103(a). Therefore, we affirm the
rejection on appeal based upon § 103(a).

DECISION
The Examiner’s decision is AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

cam

PAUL F. DONOVAN
ILLINOIS TOOL WORKS, INC.
3600 WEST LKAE AVENUE
GLENVIEW, IL 60025
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