Ex Parte Perkins et alDownload PDFBoard of Patent Appeals and InterferencesMay 29, 200911186849 (B.P.A.I. May. 29, 2009) Copy Citation 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 ____________ Decided:1 May 29, 2009 ____________ 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. 2 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). 3 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). 4 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. 5 Appeal 2009-000008 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 6 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 cam BANNER & WITCOFF, LT. 1100 13TH STREET, N.W. SUITE 1200 WASHINGTON, DC 20005-4051 7 Copy with citationCopy as parenthetical citation