Ex Parte Owen

Board of Patent Appeals and Interferences

Aug 9, 2012

11054177 (B.P.A.I. Aug. 9, 2012)

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.
11/054,177 02/09/2005 Kevin Owen 769-357 4982
51468 7590 08/10/2012
McCarter & English LLP
ACCOUNT: ILLINOIS TOOL WORKS INC.
245 Park Avenue
NEW YORK, NY 10167
EXAMINER
PASCUA, JES F
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
08/10/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEVIN OWEN
____________

Appeal 2010-008113
Application 11/054,177
Technology Center 3700
____________

Before WILLIAM V. SAINDON, MICHAEL C. ASTORINO, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Kevin Owen (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision to reject under 35 U.S.C. § 112, first paragraph, claims
1-4 for failing to comply with the written description requirement; and under
35 U.S.C. § 103(a): (1) claims 1, 3 and 4 as unpatentable over Thomas (US
6,918,234 B2, issued Jul. 19, 2005); (2) claims 1, 3 and 4 as unpatentable
over Thomas and Kinigakis (US 6,616,333 B2, issued Sep. 9, 2003); (3)
claim 2 as unpatentable over Thomas and Strand (US 2004/0058039 A1,
published Mar. 25, 2004); and (4) claim 2 as unpatentable over Thomas,
Kinigakis and Strand . Claims 5-12 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6. We AFFIRM.

THE INVENTION
Appellant’s invention relates to a reclosable plastic bag for holding
products, such as foodstuff. Spec. l, l. 4 and 2, l. 8 and figs. 1 and 2.

Claim 1, the sole independent claim, is illustrative of the claimed
invention and reads as follows:
1. A reclosable bag comprising:

a section of web which is folded to form a top folded
edge of the reclosable bag and further forming a front wall
of the reclosable bag and an upper portion of a rear wall of
the reclosable bag;

a zipper with first and second interlocking profiles and a
slider for separating the first and second interlocking profiles
when moved in a first direction and for interlocking the first
and second interlocking profiles when moved in a second
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direction, a portion of said first interlocking profile being sealed
to said front wall along a front transverse seal line proximate to
said top folded edge and a portion of said second interlocking
profile being sealed to said upper portion of said rear wall along
a rear transverse seal line proximate to said top folded edge;

said section of web being further folded to form a lower
folded edge and a lower rear wall of the reclosable bag;

a rear seal joining said lower rear wall of said reclosable
bag to said upper rear wall of said reclosable bag; and

side seals joining lateral edges of said front wall to lateral
edges of at least said lower rear wall from said lower folded
edge to said front and rear transverse seal lines, said side seals
terminating at said front and rear transverse seal lines, wherein
at least a portion of said lateral edges free of sealing between
said top folded edge and said front and rear transverse seal
lines.

OPINION
The § 112, first paragraph, rejection
Regarding independent claim 1, the Examiner takes the position that
Appellant’s Specification lacks original support for the limitation “at least a
portion of the lateral edges being free of sealing between the top folded edge
and the front and rear transverse seal lines.” Ans. 3 and 6-7. See also, Br.,
Claims Appendix. According to the Examiner:
Although [A]ppellant’s original written
specification and drawings support a “portion” of
the lateral edges being free of sealing between the
top folded edge (14) and the front and rear
transverse seal lines (40, 42), the language “at
least a portion” (emphasis added) in the claims
infers an embodiment of [A]pplicant’s invention
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where the lateral edges are “entirely” free of
sealing between the top folded edge (14) and the
front and rear transverse seal lines (40, 42), which
embodiment is unsupported by the original written
specification and drawings.
Ans. 7.
To satisfy the written description requirement, the disclosure must
convey with reasonable clarity to skilled artisans that Appellant was in
possession of the claimed invention as of the filing date. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The inquiry into
whether the description requirement is met is a question of fact. In re
Wertheim, 541 F.2d 257, 262, (CCPA 1976); In re Ruschig, 379 F.2d 990,
996 (CCPA 1967).
At the outset, although we agree with the Examiner that a claim drawn
to “at least a portion” of the lateral edges being free of sealing between the
top folded edge 14 and the front and rear transverse seal lines 40, 42 can
include within its scope an embodiment “where the lateral edges are
‘entirely’ free of sealing between the top folded edge (14) and the front and
rear transverse seal lines (40, 42)” (Ans. 7), we find Appellant’s
Specification reasonably conveys to one of ordinary skill in the art
possession of a bag wherein the entire lateral edge between the top folded
edge 14 and the front and rear transverse seal lines 40, 42 is free of sealing.
Specifically, Appellant’s Specification, at page 3, lines 5 through 7,
discloses that the top folded edge 14 “can be impressed . . . to form sealed
area 44 . . . which gives the further appearance of a seal” (emphasis added).
In the embodiment shown in Figures 1 and 2 of Appellant’s drawings, area
44 is the only portion of the lateral edge between the top folded edge 14 and
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the front and rear transverse seals 40, 42 that is sealed. Accordingly,
Appellant’s Specification reasonably conveys to one of ordinary skill in the
art that if the top folded edge 14 were not impressed to form a seal, as
appears to be suggested by the words “can be impressed,” then the entire
lateral edge would be free of sealing between the top folded edge 14 and the
front and rear transverse seal lines 40, 42. As such, we do not sustain the
Examiner’s written description rejection of claims 1-4.

The obviousness rejection over Thomas
Appellant argues the rejection under 35 U.S.C. §103(a) of claims 1, 3
and 4 together as a group.1 Br. 6. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii) (2011), we have selected claim 1 as the representative
claim to decide the appeal, with claims 3 and 4 standing or falling with claim
1.
Appellant argues that (1) “[t]he Office Action correctly states that the
Thomas reference does not disclose the lateral edges being free of sealing
between the top folded edge and the front and rear transverse seals,” as
required by claim 1; and (2) “[t]his [element] provides a passageway
between the top folded edge and the transverse seals and further eliminates
the need for seal bar modifications to enable the seal bars to seal over the
profile.” Br. 6.
We are not persuaded by Appellant’s arguments, because Appellant
has not provided arguments to explain why the Examiner’s proposed

1 Appellant appears to have inadvertently included dependent claim 2 in the
obviousness rejection over Thomas. See Br. 4 and 6. The Examiner
addressed this error in the Grounds of Rejection to be Reviewed on Appeal.
Ans. 2.
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modifications of Thomas were in error. See Ans. 4; In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner's
rejections”) (citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (“The panel then reviews the obviousness rejection for error
based upon the issues identified by appellant, and in light of the arguments
and evidence produced thereon.”)). In this case, the Examiner has
established a prima facie case of obviousness by (1) identifying the reference
relied upon (i.e., Thomas) that discloses Appellant’s claim limitations; and
(2) providing a reason for the expected successful modification of the
Thomas reference, i.e.,:
It would have been obvious to one having ordinary
skill in the art at the time the invention was made
to form the Thomas et al. bag with the lateral
edges being free of sealing between the top folded
edge and the front and rear transverse seal lines,
since it has been held that omission of an element
and its function in a combination where the
remaining elements perform the same functions as
before involves only routine skill in the art.
Ans. 4.
Appellant’s assertions regarding the relevance of the claimed element (Br. 6)
do not point to the error in the Examiner’s conclusion and are not
persuasive. Accordingly, for the foregoing reasons, the rejection of
independent claim 1 and of claims 3 and 4, which fall with claim 1, as
unpatentable over Thomas is sustained.

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The obviousness rejection over Thomas and Kinigakis
Appellant argues the rejection under 35 U.S.C. §103(a) of claims 1, 3
and 4 together as a group. Br. 6-7. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii) (2011), we have selected claim 1 as the representative
claim to decide the appeal, with claims 3 and 4 standing or falling with claim
1.
Appellant argues that Kinigakis fails to disclose “side seals
terminating at said front and rear transverse seal lines,” as required by claim
1. Br. 7. Specifically, Appellant argues that (1) “Figure 4 [of Kinigakis]
discloses the side seal extending the line of weakness in that the lower ‘line
21’ is formed just above the line of weakness 74;” and (2). “Figure 2 [of
Kinigakis] shows the header being removed along the line of weakness with
the zipper staying in place on the bag, it can be plainly inferred that the
flange seal lines are below the line of weakness.” Br. 6.
In this case, we agree with the Examiner that Appellant’s arguments
are not commensurate with the scope of the Examiner’s Rejection. Ans. 8.
Specifically, Appellant’s arguments refer to the combined teachings of
Thomas and Kinigakis (US 6,939,041 B2, issued Sep. 6, 2005). Br. 6. See
also, Kinigakis, figs. 2 and 4. However, we note that the Examiner’s Final
Rejection, mailed Jul. 28, 2009, put Appellant on notice that the rejection
was based on the combined teachings of Thomas and Kinigakis (US
6,616,333 B2). See Final Rej. 4. In other words, Appellant’s arguments are
not directed to the Kinigakis reference applied in this ground of rejection.
As such, we find Appellant’s arguments unpersuasive. Consequently, for
the foregoing reasons, the rejection of independent claim 1 and of claims 3
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and 4, which fall with claim 1, as unpatentable over Thomas and Kinigakis
is sustained.

The obviousness rejections over Thomas and Kinigakis and
Thomas, Kinigakis and Strand
Dependent claim 2 recites, “wherein portions of said front wall
immediately adjacent to said top folded edge are sealed to portions of said
upper rear wall immediately adjacent to said top folded edge.” Br., Claims
Appendix. Appellant argues that the combination of references fails to
disclose “said side seals terminating at said front and rear transverse seal
lines.” Br. 7. Specifically, Appellant argues that Strand discloses “the
parent film 10 is sealed at section 26.” Id.
At the outset, we are not persuaded by Appellant’s arguments,
because, like the Examiner, we find that Appellant’s arguments do not
address the Examiner’s proposed combination of (1) Thomas and Strand;
and (2) Thomas, Kinigakis and Strand. Ans. 8. Specifically, Appellant
appears to be attacking the teachings of (1) Thomas and Strand; and (2)
Thomas, Kinigakis and Strand individually, rather than the combination of
(1) Thomas and Strand; and (2) Thomas, Kinigakis and Strand, respectively.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co, 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In this case, the Examiner cited Strand merely to show that “it is
known in the art to provide a seal immediately adjacent the top folded edge
of an analogous bag.” Ans. 6. See also, Strand, figs. 8 and 9. We agree
with the Examiner that it would have been obvious to one having ordinary
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skill in the art at the time the invention was made to provide the top folded
edge of the modified bag of Thomas with the immediately adjacent seal of
Strand “in order to provide a header for hanging the bag.” Id. Accordingly,
since Appellant does not present any arguments regarding alleged errors in
the Examiner’s findings or conclusions of obviousness, the rejections of
dependent claim 2 as unpatentable over (1) Thomas and Strand; and (2)
Thomas, Kinigakis and Strand are likewise sustained.

DECISION
The decision of the Examiner to reject claims 1-4 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement is reversed.
The decision of the Examiner to reject claims 1-4 under 35 U.S.C. §
103(a) 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)(1)(iv).

AFFIRMED

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