Ex Parte Perkins et al

Board of Patent Appeals and Interferences

May 29, 2009

11186849 (B.P.A.I. May. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW PERKINS,
OLIVER M. REYES,
PHILIPP BORCHARD, and
NICHOLAS P. DE LUCA
____________

Appeal 2009-000008
Application 11/186,849
Technology Center 1700
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Decided:1 May 29, 2009
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Before EDWARD C. KIMLIN, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000008
Application 11/186,849

Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 3, 5, 6, 19, and 20.2 We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants describe a preconfigured plastic film (19) for use in air-
filled packing cushions including, in relevant part, a plurality of laterally
extending perforations (not depicted) separating each chamber (65) or a
plurality of chambers, wherein the laterally extending perforations extend
through the relatively narrow channel (67) and extend at least partway across
the width of the film (Figure 1). The perforations permit ready detachment
of single pillows or groups of pillows after inflation (Spec. ¶ [0099]).
Claim 1 is illustrative:
1. A preconfigured plastic film for use in air-filled packing cushions,
the film comprising:

a relatively narrow channel extending the length of the film;

a plurality of generally rectangular inflatable chambers each having
three sides closed and a fourth side with an unsealed opening into the
relatively narrow channel; wherein a side opposite the fourth side is defined
by a closed longitudinal edge of the film; and

a plurality of laterally extending perforations separating each chamber
or a plurality of chambers, wherein the laterally extending perforations
extend through the relatively narrow channel and extend at least partway
across the width of the film.

The Examiner relies on the following prior art references as evidence
of unpatentability:

2 A hearing was held in this appeal on May 19, 2009.
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Appeal 2009-000008
Application 11/186,849

Troy US 3,660,189 May 2, 1972
Larson US 4,096,306 Jun. 20, 1978
Chappuis US 5,340,632 Aug. 23, 1994
De Luca US 5,454,642 Oct. 3, 1995

The rejections as presented by the Examiner are as follows:
1. Claims 1, 3, 5, 6, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Troy in view of Larson.
2. Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Troy in view of Larson and Chappuis or De Luca.

Appellants' arguments are directed to features found in claim 1. No
specific arguments are made regarding the features of dependent claims 3, 5,
6, 19, and 20, which ultimately depend from claim 1. Indeed, with regard to
rejection (2) of claim 19, Appellants merely argue that Chappuis or De Luca
fail to remedy the deficiencies argued with regard to claim 1 (App. Br. 15).
Accordingly, with regard to rejections (1) and (2), we address Appellants’
arguments regarding claim 1.

STATEMENT OF THE CASE
Appellants argue that combining Larson’s perforations with Troy’s
closed cell structure would render the cushioning material unsatisfactory for
its intended purpose (App. Br. 11-14). Appellants further contend that there
is not enough space between Troy’s adjacent chambers to permit
perforations to be placed there as required by claim 1 (App. Br. 13).

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Appeal 2009-000008
Application 11/186,849

ISSUE
Have Appellants shown that the Examiner reversibly erred in
determining that the combination of Larson’s perforations with Troy’s
cushioning material would have rendered Troy’s cushioning material
unsatisfactory for its intended purpose? We decide this issue in the negative.

PRINCIPLES OF LAW
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test for obviousness is what the
combined teachings of the references would have suggested to one of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).

FACTUAL FINDINGS
1. Troy discloses a closed cell structure for use as cushioning material
(col. 1, ll. 1-7).
2. Troy discloses that the closed cell structure includes two plastic sheets
that are thermally bonded to one another to form margin seals (15a,
15b) and cross seals (83) to form the cross channels (84) (Figs. 1 and
13; col. 6, ll. 45-58; col. 7, ll. 19-27; col. 8, ll. 29-37).
3. Troy further discloses that automatic lengthwise-slitting and cutting-
to-length devices may be added to the device if desired (col. 12, ll. 24-
31).
4. The Examiner finds that Troy does not disclose using perforations to
separate each chamber or a plurality of chambers (Ans. 3).
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Appeal 2009-000008
Application 11/186,849

5. The Examiner finds that Troy depicts seal sections that would have
provided sufficient space to provide perforations along a seal (Ans. 5).
6. Larson discloses strip materials of the type having inflatable chambers
formed between two heat sealable films, which are subsequently filled
with gas and sealed (col. 1, ll. 7-11).
7. Larson discloses placing perforations in the strip between adjacent
chambers to separate portions of the inflated cushioning material (col.
3, l. 67 to col. 4, l. 2; col. 8, ll. 4-7).
ANALYSIS
We are unpersuaded by Appellants’ argument that using Larson’s
perforations between the chambers of Troy’s cushioning material would
render the material unsatisfactory for its intended purpose. Appellants’
argument is premised on there being insufficient space between Troy’s
chambers for placement of the perforations such that placement of
perforations would puncture holes in the chambers preventing them from
being filled with gas (App. Br. 13-15).
However, Appellants have not come forward with any credible
evidence that casts doubt on the Examiner’s finding (Ans. 5) that Troy’s
seals between the chambers would have been of sufficient width to permit
perforations to be placed there. Rather, Appellants argue that Troy teaches
to minimize dead space between chambers such that Troy does not suggest
that the width of the cross seals would be sufficient to accommodate
perforations (App. Br. 14). Such an argument is unpersuasive because
Troy’s minimizing the dead space does not indicate that the seal width
would have been insufficient to include perforations.
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Application 11/186,849

Furthermore, Appellants’ arguments improperly attack the references
individually instead of addressing what the teachings of Larson and Troy, as
a whole, would have suggested to one of ordinary skill in the art. Larson
discloses the benefit of using perforations along the seal between chambers
to aid in separating the cushioning material. Troy discloses cushioning
material having adjacent chambers, which may be cut to form the desired
size. Larson’s and Troy’s teachings as a whole would have suggested to one
of ordinary skill in the art to form the seal between adjacent chambers to a
sufficient width to permit perforations to be formed therein so as to aid in
separation of the cushioning material.
In other words, one of ordinary skill in the art imbued with the
teachings of Larson and Troy would have sized the seal accordingly to
permit placement of the perforations thereon without puncturing the
chambers. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person
of ordinary creativity, not an automaton.”). Accordingly, Appellants’
argument that the combination would render Troy’s cushioning material
unsatisfactory for its intended purpose is not persuasive.
We add that combining Larson’s perforations in cushioning material
with Troy’s cushioning material is nothing more than the predictable use of
a prior art element (i.e., perforations) according to its established function
(i.e., to aid in separation of material). KSR, 550 U.S. at 417 (When assessing
the obviousness of claimed subject matter, a court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established function).
For the above reasons, we determine that Appellants have not
established that the Examiner erred in concluding that the claimed invention
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Appeal 2009-000008
Application 11/186,849

would have been obvious over the combined teachings of Larson and Troy.
We affirm the Examiner’s § 103 rejections of claims 1, 3, 5, 6, and 20 over
Troy in view of Larson and claim 19 over Troy in view Larson and
Chappuis or De Luca.

DECISION
The Examiner’s decision 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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