Ex parte Muzquiz

Board of Patent Appeals and Interferences

Sep 16, 1999

08502977 (B.P.A.I. Sep. 16, 1999)

Application for patent filed July 17, 1995.1
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publication in a law journal and (2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte FEDERICO DE H. MUZQUIZ
__________
Appeal No. 1998-3425
Application 08/502,9771
___________
ON BRIEF
___________
Before ABRAMS, FRANKFORT and CRAWFORD, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 4 through 9 as amended subsequent to the final
rejection in a paper filed August 18, 1997 (Paper No. 10).
Claims 4 through 9 are all of the claims remaining in the
application. Claims 1 through 3 have been canceled.
Appeal No. 1998-3425
Application 08/502,977
2
Appellant’s invention relates to a dispenser for
dispensing single polyethylene bags from a roll of such bags.
More particularly, the claimed subject matter, exemplified by
independent claim 8, addresses the combination of a dispenser
and a roll of polyethylene bags of a specific construction,
which bag construction cooperates with the structure of the
dispenser in a particular manner to enable only a single bag
at a time to be dispensed from the roll of bags. A copy of
independent claim 8 can be found in the Appendix to
appellant’s brief.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Gluck 2,507,403 May 9, 1950
Shimasaki 5,097,998 Mar. 24, 1992
Wilfong, Jr. et al. 5,207,368 May 4, 1993
(Wilfong)
Marshall 0427365A2 May 15, 1991
(European Patent Application)
Claims 4 through 9 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which appellant regards as the invention.
Appeal No. 1998-3425
Application 08/502,977
3
Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Marshall in view of Wilfong.
Claim 4 through 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Marshall in view of Wilfong as applied
to claim 8 above, and further in view of Gluck.
Claim 7 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Marshall in view of Wilfong and Gluck as
applied to claims 4-6 above, and further in view of Shimasaki.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the examiner's
answer (Paper No. 16, mailed May 27, 1998) for the reasoning
in support of the rejections, and to appellant’s brief (Paper
No. 15, filed April 3, 1998) and reply brief (Paper No. 18,
filed July 29, 1998) for the arguments thereagainst.
Appeal No. 1998-3425
Application 08/502,977
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 references, 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 first at the examiner's rejection of claims 4
through 9 under 35 U.S.C. § 112, second paragraph, we note
that the examiner has taken the position that the recitations
in the last clause of independent claim 8 regarding “a roll of
polyethylene bags” and “a single central slot” represent a
double inclusion of the same phrases previously recited, e.g.,
in lines 1 and 2 of the claim. We do not agree. Like
appellant, we view the recitation in the preamble of claim 8
on appeal as merely setting forth the general type of
dispenser being claimed, i.e., a dispenser “for dispensing
Appeal No. 1998-3425
Application 08/502,977
5
single polyethylene bags from a roll of polyethylene bags,”
while the last clause of the claim positively sets forth that
the dispenser contains a roll of polyethylene bags of a
specific construction, and that said specific bag construction
cooperates with the plurality of
truncated teeth of the dispensing slot of the dispenser in a
particular manner to enable only one bag at a time to be
dispensed from the roll of bags. Thus, it is clear to us that
appellant is claiming a combination in the claims before us on
appeal, wherein a specific form of dispenser and a specific
form of polyethylene bags on a roll are set forth together as
defining the subject matter appellant regards as his
invention. Since we find no “double inclusion” problem in
appellant’s independent claim 8, it follows that the
examiner’s rejection of claim 8 under 35 U.S.C. § 112, second
paragraph, and of claims 4 through 7 and 9 which depend
therefrom, will not be sustained.
Regarding the examiner’s rejection of claims 8 and 9
under 35 U.S.C. § 103 as being unpatentable over Marshall and
Wilfong, we note, with respect to independent claim 8, that
Appeal No. 1998-3425
Application 08/502,977
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the examiner has taken the position that it would have been
obvious to one of ordinary skill in the art to modify the
sawtooth-like teeth in the dispensing slot (32) of the plastic
bag dispenser of Marshall, Figures 1-7, to be in a form
wherein the teeth have “truncated crests and roots as taught
by Wilfong” (answer, page 5), so as to facilitate a larger
area of engagement for subsequent tearing of individual bags.
As for the recitation in
the last clause of appellant’s independent claim 8 that the
dispenser must also contain “a roll of polyethylene bags
separated by a single central slot and perforations” and the
further requirement that the pair of opposed interdigitating
toothed edge surfaces of the housing must be in engagement
with “a central slot separating two bags to enable a single
bag to be dispensed from the roll,” the examiner has urged
(answer, page 6) that
these limitations have not been given any patentable
weight, since it has been held that a recitation with
respect to the manner in which a claimed apparatus
is intended to be employed does not differentiate
the claimed apparatus from a prior art apparatus
satisfying the claimed structural limitations.
The examiner cites Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987)
as support for the above proposition.
Appeal No. 1998-3425
Application 08/502,977
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Like appellant, we observe that the roll of polyethylene
bags and the interrelationship between the structure of the
bags and the structure of the dispenser set forth in the last
clause of claim 8 on appeal are positive recitations clearly
establishing that the claimed subject matter is a combination
wherein a specific form of dispenser and a specific form of
polyethylene bags on a roll are set forth together as defining
the subject matter appellant regards as his invention. Thus,
the examiner’s attempt to dismiss these recitations as merely
relating to intended use of the dispenser per se is entirely
inappropriate, and for that reason alone we refuse to sustain
the examiner’s rejection of claims 8 and 9 under 35 U.S.C. §
103.
With regard to the examiner’s use of a per se rule such
as that derived from Ex parte Masham, we direct the examiner’s
attention to In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127,
1133 (Fed. Cir. 1995) and In re Brouwer, 77 F.3d 422, 425-26,
37 USPQ2d 1663, 1666 (Fed. Cir. 1996) wherein the Federal
Circuit has held that the claimed invention as a whole must be
evaluated under the standards set down in Graham v. John Deere
Appeal No. 1998-3425
Application 08/502,977
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Co., 383 U.S. 1, 148 USPQ 459 (1966), and its progeny, and
that the use of per se rules is improper in applying the test
for obviousness under 35 U.S.C. § 103 since such rules are
inconsistent with the fact-specific analysis of claims and
prior art mandated by section 103.
As a further commentary, we also note that we share
appellant’s view that it would not have been obvious to one of
ordinary skill in the art, based on the teachings of Marshall
and Wilfong, to merely alter the configuration of the
plurality of sawtooth-like teeth seen in the dispensing slot
(32) of the bag dispenser of Marshall to be in a form like
that set forth in appellant’s claim 8 on appeal. If anything,
it appears to us that the teachings of Wilfong would have been
suggestive to one of ordinary skill in the art of replacing
the plurality of sawtooth-like teeth in the dispensing slot of
Marshall with an arrangement like that seen in Wilfong,
wherein there is a pair of outer slot portions (e.g., 36, 37)
separated by a single tongue (42). In this regard, we point
to column 1, lines 11-36, in Wilfong wherein the patentee
observes that zig-zag configuration slots, apparently like
Appeal No. 1998-3425
Application 08/502,977
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those seen in Marshall, are sensitive to changes in bag size
and thickness of the plastic film and cause the dispensed bags
to be wrinkled as they are withdrawn, whereas the
configuration of the dispensing slot disclosed in the Wilfong
patent is said to overcome those disadvantages of the zig-zag
slot design. Given this situation, we see no reason why one
of ordinary skill in the art would have been led to merely
truncate the crests and roots of the sawtoothed edge surfaces
in Marshall as is urged by the examiner, since such an
arrangement would appear, because of the truncated teeth, to
be even more sensitive to changes in thickness of the plastic
film from which the bags
are made than the sawtooth arrangement presently seen in
Marshall. For this added reason, we refuse to sustain the
examiner’s rejection of clams 8 and 9 on appeal under 35
U.S.C.
§ 103 based on the collective teachings of Marshall and
Wilfong.
We have also reviewed the teachings of Gluck and
Shimasaki applied by the examiner against dependent claims 4
Appeal No. 1998-3425
Application 08/502,977
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through 6 and 7 on appeal. However, we find nothing in these
prior art references which alters our view as stated above
with regard to the basic combination of Marshall and Wilfong,
that is, the patents to Gluck and Shimasaki do not supply that
which we have found to be lacking in the examiner’s
combination of Marshall and Wilfong. Thus, the examiner’s
rejections of claims 4 through 7 under 35 U.S.C. § 103 will
likewise not be sustained.
In view of the foregoing, the examiner's decision
rejecting claims 4 through 9 of the present application under
35 U.S.C.
§ 103 is reversed. In addition, the examiner’s decision
rejecting claims 4 through 9 under 35 U.S.C. § 112, second
paragraph, is also reversed.
Appeal No. 1998-3425
Application 08/502,977
11
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
CEF/kis
John R. Casperson
P. O. Box 2174
Friendswood, TX 77549