Ex Parte Nowak et al

Patent Trial and Appeal Board

Mar 26, 2013

11078032 (P.T.A.B. Mar. 26, 2013)

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.
11/078,032 03/11/2005 Michael R. Nowak E4919-00007 1658
8933 7590 03/26/2013
DUANE MORRIS LLP - Philadelphia
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103-4196
EXAMINER
PASCUA, JES F
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
03/26/2013 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 MICHAEL R. NOWAK, and DAVID W. SCHNEIDER
____________

Appeal 2011-001730
Application 11/078,032
Technology Center 3700
____________

Before CHARLES N. GREENHUT, BARRY L. GROSSMAN, and
TIMOTHY J. O’HEARN, Administrative Patent Judges.

O’HEARN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001730
Application 11/078,032

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 3, 5, 6, 8-10, 12 and 13, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ claimed invention relates to packaging materials with tear
tapes. Spec., pg. 1. Claim 3 is the sole independent claim. Claim 3,
reproduced below, is illustrative of the subject matter on appeal.
3. A structure including a web of packaging material and a
ream of paper or other consumer product, consisting essentially
of:

a high strength polymeric film wrapper which directly
encompasses said ream of paper or other consumer product;

said packaging material having one or more tear tapes
inserted in said packaging material across the web so that the
tear tapes surround the entire width of a wrapped product and
do not completely remove a section of said packaging material,
with said section thereby remaining intact to serve as a storage
and dispenser for the ream of paper or other consumer product,
wherein said tear tape is (a) a strip of paper or film that is drawn
through or coated with wax, or (b) a non-coated strip of paper
or film that is heat-sealed onto said packaging material.

Appeal 2011-001730
Application 11/078,032

3
THE REJECTION
Claims 3, 5, 6, 8-10, 12 and 13 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over U.S. Patent No. 5,489,060 to Godard and U.S.
Patent No. 4,947,994 to Newsome.

ANALYSIS
Appellants’ invention involves a packaging design that can be opened
without complete destruction and, therefore, can be used to continue storing
its unused contents. Appeal brief 2. While the drawings show a ream of
paper to illustrate the invention, claim 3 also encompasses “other consumer
products”.
The Godard prior art is entitled “RECLOSABLE PACKET.” Like
appellant's invention, the packet includes a tear strip to open it. This leaves
the remainder of the package intact for further use. See Figs. 2-4.
The Examiner found that Goddard discloses the claimed device,
especially the tear tape being made of any suitable material and attached to
the packaging material in any suitable manner. Answer 4. The only claimed
feature not found by the Examiner in Godard is the limitation of a strip of
paper or film being drawn through or coated with wax. Id. The Examiner
found that this feature is disclosed in Newsome. Id. The Examiner
concluded that it would have been obvious to combine the wax coating
taught by Newsome with the Godard structure "in order to secure the tear
tape to the packaging material” Id.
Appellants argue that the phrase "directly encompassing said ream of
paper or other consumer product” distinguishes the proposed claims from
Appeal 2011-001730
Application 11/078,032

4
Godard and Newsome. Appeal brief 5-6; Reply 3-4. Regarding Godard,
Appellants base this argument on the assertion that the chewing gum sticks
are individually wrapped, and therefore the Godard wrapper does not
"directly encompass" the consumer product. Appeal brief 5. The Examiner
points out that Godard does not mention any sort of individual wrapper:
Gum sticks 32 may be positioned on blank 10 prior to or during
the folding of panels 16a-16e, so that packet 30 is formed or
wrapped 10 around those gum sticks, or the gum sticks may be
positioned in the packet after side panels 16a-16e are folded and
connected together.

Answer 6-7 citing Godard col. 3 ll. 8-13. Appellants have not presented
sufficient evidence to demonstrate why Godard should be interpreted as
using individual wrappers simply because that practice may have been
common in the state of the art at the time of briefing. Furthermore, even if
Godard did use individual wrappers, Appellants have not apprised us of any
reasons the combination of gum and individual wrapper would not constitute
a “consumer product.” Thus, the claim would not be distinguished on this
basis.
Regarding Newsome, Appellants assert that the Newsome wrapper
does not satisfy the "directly encompassing" limitation because the
Newsome wrapper surrounds a cigarette box. Reply 4. This argument also is
unpersuasive because, given the broadest reasonable interpretation of
"consumer product", a cigarette box is a consumer product.
In tandem with the above arguments, Appellants argue that the
transitional phrase "consisting essentially of" defeats prima facie
Appeal 2011-001730
Application 11/078,032

5
obviousness because Godard and Newsome both have additional structure,
but Appellants only identify the Newsome cigarette boxes as an example of
Appellants' contention in this regard. Appeal brief 6; reply 3-4. Appellant's
Reply Brief quotes a section of the MPEP which states that the phrase
"consisting essentially of" will be construed as equivalent to "comprising"
absent a clear indication of what the basic and novel characteristics actually
are. Reply Br. 3. However, Appellants fail to provide an explanation of why
they think such a clear indication exists. In any event, the only additional
structure Appellants point to that would be impacted by this proposition is
the Newsome cigarette box. Id. As discussed above, the Newsome cigarette
box qualifies as a “consumer product”, so the Newsome wrapper still meets
the claim language even if the phrase "consisting essentially of" is not
equivalent to "comprising." Accordingly, we affirm the rejection.

DECISION
The decision of the Examiner to reject claims 3, 5, 6, 8-10, 12 and 13
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Vsh