Ex Parte Perkins

Board of Patent Appeals and Interferences

Oct 12, 2007

10766754 (B.P.A.I. Oct. 12, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ANDREW PERKINS
_____________

Appeal 2007-2743
Application 10/766,754
Technology Center 3700
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Decided: October 12, 2007
_______________

Before WILLIAM F. PATE, III, TERRY J. OWENS, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant appeals from a rejection of claims 1-20, which are all
of the pending claims.
THE INVENTION
The Appellant claims an apparatus and method for making a string of
air-filled packing cushions. Claim 1 is illustrative:
1. Apparatus for making a packing material in the form of a
string of air-filled packing cushions with rows of perforations
extending across the material between the cushions, comprising:

Appeal 2007-2743
Application 10/766,754

means for feeding superposed layers of film material having
longitudinally spaced, transversely extending rows of
perforations along a path, means for injecting air between the
two layers of film material, means for sealing the layers of film
material together to form air-filled cushions between the rows of
perforations, and means engagable with the string of air-filled
cushions for partially tearing the material along the rows of
perforations to facilitate tearing a desired number of the air-filled
cushions from the string.

THE REFERENCES
Bolton US 4,493,684 Jan. 15, 1985
Meschi US 5,230,453 Jul. 27, 1993
Fuss US 6,582,800 B2 Jun. 24, 2003

THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
3, 5-7, 9, 11, 13-15, 17, 19 and 20 over Fuss in view of Bolton, and claims 2,
4, 8, 10, 12, 16 and 18 over Fuss in view of Bolton and Meschi.

OPINION
We reverse the rejections as to all claims except claim 6. We need to
address only the independent claims, i.e., claims 1, 6, 9, 14, 15 and 20, and
dependent claim 7.1

1 The Examiner does not rely upon Meschi for any disclosure that remedies
the deficiency in Fuss and Bolton as to independent claims 1, 9, 14, 15
and 20.
2

Appeal 2007-2743
Application 10/766,754

Claims 1, 7, 9, 14, 15 and 20
Claims 1, 7, 9, 14, 15 and 20 require partially tearing rows of
perforation after air-filled cushions have been formed between the rows of
perforation. Claim 1 recites “means engagable with the string of air-filled
cushions for partially tearing the material along the rows of perforations”.
Claim 7, which depends from independent claim 6, recites that “the material
is torn by continuously engaging an edge portion of the material with a feed
roller after the air-filled cushions are formed”. Claims 9 and 14 recite
“partial tearing along the rows of perforations between the inflated
chambers”. Claims 15 and 20 recite “air-filled packing cushions” and
“partial tearing along the rows of perforations between the cushions”.
Fuss discloses a string of air-filled plastic film cushions separated by
perforations (19) for tearing the cushions apart (col. 1, l. 49 – col. 2, l. 2; col.
2, ll. 49-53; fig. 6).
Bolton discloses
a method for making a supply of partially separated multibag units,
comprising first passing a perforated chain of side-sealed bags
through a first set of driven nip rollers, then passing said chain
directly to a second set of nip rollers having a partial nip of selected
width less than the width of said chain, while driving said second nip
rollers at a speed greater than said first nip rollers sufficient to
partially separate the bags at their representative lines of perforation,
and while cyclically completing the nip of said second nip rollers at
predetermined intervals corresponding to the number of bags desired
in each multibag unit. [col. 2, ll. 26-37]
* * *
Downward pressure is exerted as indicated at arrow 59A on partial
separator mechanism 59 having pivot arm 62 supporting partial
separator rollers 63A, B, etc. Pressure at 59A is normally held
3

Appeal 2007-2743
Application 10/766,754

essentially constant to effect partial separation along the lines of
perforation within the series of bags, as previously shown in Fig. 2A
by segment AB for example. [col. 4, ll. 13-20]

The Examiner argues that Bolton partially tears the lines of
perforation at their edge portions (Ans. 4).2 The Examiner is incorrect.
Bolton’s torn portion is in the central portion of each line of perforation, i.e.,
the portion AB in Fig. 2A.
The Examiner argues that “one skill[ed] in the art when applying the
teaching, as taught by Bolton, would apply the tearing rollers where the
partial tearing is needed, in this case, at the edge of the string of perforated
bags” (Ans. 8). The Examiner, however, has not provided evidence of a
need for tearing a line of perforation at its edge portion. The record
indicates that for that claim feature the Examiner relies only upon the
Appellant’s disclosure and, therefore, used impermissible hindsight. See
W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re
Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
We therefore reverse the rejections as to claims 1-5 and 7-20.

2 The Appellant’s tear rollers (56, 57) partially tear the lines of perforation at
their edge portions because the central portions are occupied by air-filled
cushions (see Appellant’s fig. 1, where item 51 is the partial tearing
mechanism).
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Appeal 2007-2743
Application 10/766,754

Claim 6
Claim 6 is a method claim that does not require performing the steps
in the recited order. Claim 6 requires “partially tearing the material along
the rows of perforations to facilitate tearing a desired number of the air-filled
cushions from the spring.” The claim encompasses partially tearing the
material along the rows of perforations and then forming the air-filled
cushions, provided that the partial tearing facilitates tearing of the
subsequently formed air-filled cushions.
Bolton’s disclosure that partially tearing lines of perforation between
bags eases the separation of the bags (col. 3, ll. 57-61) would have led one of
ordinary skill in the art, through no more than ordinary creativity, to use
Bolton’s technique to partially tear the lines of perforation in Fuss’s plastic
film, before the air-filled cushions are formed, to facilitate tearing of the
subsequently formed air-filled cushions. See KSR Int’l. Co. v. Teleflex Inc.,
127 S.Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (In making an
obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”).
The Appellant does not provide a substantive argument as to the
separate patentability of claim 6 but, rather, merely argues that the recited
“combination is neither found in nor suggested by the references” (Br. 6).
For the above reasons we affirm the rejection of claim 6.
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Appeal 2007-2743
Application 10/766,754

DECISION
The rejection of claims 1, 3, 5-7, 9, 11, 13-15, 17, 19 and 20 over Fuss
in view of Bolton under 35 U.S.C. § 103 is reversed as to claims 1, 3, 5, 7, 9,
11, 13-15, 17, 19 and 20, and affirmed as to claim 6. The rejection of
claims 2, 4, 8, 10, 12, 16 and 18 under 35 U.S.C. § 103 over Fuss in view of
Bolton and Meschi is reversed.
AFFIRMED-IN-PART

vsh

EDWARD S. WRIGHT
1100 ALMA STREET, SUITE 207
MENLO PARK CA 94025

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