Ex Parte Perkins et al

Patent Trial and Appeal Board

Oct 16, 2014

12436286 (P.T.A.B. Oct. 16, 2014)

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.
12/436,286 05/06/2009 Andrew Perkins 006759.00122 5089
22907 7590 10/16/2014
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
TRUONG, THANH K
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
10/16/2014 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 ANDREW PERKINS, OLIVER M. REYES,
PHILIPP BORCHARD, and NICHOLAS P. DE LUCA
____________________

Appeal 2012-006287
Application 12/436,286
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, CHARLES N. GREENHUT, and
MICHAEL L. HOELTER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/436,286

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STATEMENT OF THE CASE
Andrew Perkins et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1–4, 7–9, and 12.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A system for manufacturing air cushions for use as
packaging dunnage comprising:
(a) a longitudinally extending plastic film comprising a
relatively narrow longitudinally extending channel, at least one
row of generally rectangular presealed inflatable chambers each
having three sides closed and a fourth side with an unsealed
opening into the longitudinally extending channel, and a
plurality of laterally extending perforations separating the
inflatable chambers, wherein the laterally extending
perforations extend the entire width of the film; and
(b) an inflation machine for inflating the inflatable
chambers of the plastic film, the inflation machine comprising:
a feed mechanism that causes the plastic film to be
gripped at or near the narrow longitudinally extending channel
and drawn in a continuous and uninterrupted manner through
inflation, sealing and slitting mechanisms in a planar path;
wherein the inflation mechanism comprises a source of
inflation gas and an air outlet which together cause inflation gas
to be injected into the relatively narrow longitudinally
extending channel of the plastic film as the plastic film is drawn
through the inflation mechanism;
wherein the sealing mechanism comprises an electrically
energized heating element that generates heat to be delivered to

1 Claims 5, 6, 10, and 11 have been canceled. Appeal Br. 1.
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Application 12/436,286

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the inflation side of one or more of the inflatable chambers to
seal the unsealed opening and trap the inflation gas within the
inflatable chambers as the plastic film is drawn through the
sealing mechanism; and
wherein the slitting mechanism comprising a blade that
slices open the relatively narrow longitudinally extending
channel of the plastic film as the film is drawn through the
slitting mechanism.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Luhman
Weikert
Tschantz
Fuss
US 3,938,298
US 4,021,283
US 5,857,571
US 7,325,377 B2
Feb. 17, 1976
May 3, 1977
Jan. 12, 1999
Feb. 5, 2008

REJECTIONS
Claims 1–3, 7–9, and 12 stand rejected on the ground of obviousness-
type double patenting as being unpatentable over claims 1 and 2 of Fuss.
Claims 1–3, 7–9, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Weikert.
Claims 1–3, 7–9, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Weikert and Appellants’ Admitted Prior Art
(AAPA).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weikert and either Luhman or Tschantz.

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OPINION
Obviousness-type Double Patenting
Appellants argue, inter alia, that the Examiner’s rejection fails to
address all features of independent claims 1 and 8, including, for example,
“a feed mechanism that causes the plastic film to be gripped at or near the
narrow longitudinally extending channel and drawn in a continuous and
uninterrupted manner through inflation, sealing and slitting mechanisms in a
planar path.” Appeal Br. 4–5. The Examiner does not respond to this
argument.
The Examiner determined that “the only missing limitation that
[claims 1 and 2 of Fuss] did not recite is the ‘plurality of laterally extending
perforations separating the inflatable chamber’ as recited in claims 1 and 8
of the present application.” Answer 5. Thus, the Examiner determined that
claims 1 and 2 of Fuss recite all of the limitations of the “feed mechanism”
called for in claims 1 and 8 of the present application.
Claim 1 of Fuss recites “a feed mechanism for engaging an edge
portion of the material near the longitudinally extending channel and feeding
the film material along a path such that all the plurality of cushioning
chambers are on one side of and in fluid connection with the longitudinally
extending channel.” Claim 1 of Fuss further recites a guide member adapted
to be inserted into the channel for guiding the film material “as it is fed
along the path,” wherein the guide member has an injector for injecting
inflation gas into the cushion chambers, thus at least implicitly requiring that
the feed mechanism feed the film material through an inflation mechanism.
However, we find no recitation in claims 1 and 2 of Fuss of the limitation
contained in claims 1 and 8 of the present application that the feed
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mechanism causes the plastic film to be “drawn in a continuous and
uninterrupted manner through inflation, sealing and slitting mechanisms in
a planar path,” and the Examiner’s rejection does not account for these
differences. Appeal Br., Claims App. (emphasis added). Accordingly, the
Examiner failed to establish a prima facie case that the subject matter of
claims 1 and 8 of the present application is merely an obvious variation of
the invention recited in claims 1 and 2 of Fuss. We, therefore, do not sustain
the rejection of claims 1 and 8 and their dependent claims 2, 3, 7, 9, and 12
on the ground of obviousness-type double patenting as being unpatentable
over claims 1 and 2 of Fuss.
Obviousness
Each of Appellants’ independent claims 1 and 8 requires a plastic film
having a plurality of laterally extending perforations that “extend the entire
width of the film.” Appeal Br., Claims App. The Examiner acknowledges
that Weikert’s perforations (serrations 60) do not extend the entire width of
the film. Answer 7. However, the Examiner finds that “[i]t is old and well
known in the art to provide perforations to weaken the material along the
tearing lines so that the user would be able to separate the pouches from one
another with little effort.” Id. Thus, the Examiner concludes it would have
been obvious to modify Weikert’s apparatus “so that the perforations would
extend the entire width of the film to provide the consumer with a means to
separate the pouches from one another with little effort.” Id.
Appellants argue that Weikert expressly teaches away from such a
modification. Appeal Br. 6–7. Appellants point out that the purpose of
Weikert’s invention is to make aseptic packaging; that Weikert teaches
having the serrations extend between the parallel legs of the seals but not
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beyond the bight portion to prevent loss of sterile conditions within the
interior of the bags; and that the proposed modification of Weikert’s film to
extend the serrations across the entire width of the material would introduce
the possibility of contaminants entering the interior of the tube, which is
directly contrary to Weikert’s articulated objective. Id. at 7. Thus,
Appellants contend that the proposed modification would not have been
obvious. Id. at 7–8. For the reasons that follow, we agree with Appellants.
Weikert’s disclosure is directed to producing aseptic packaging.
Weikert, col. 1, ll. 63–68. Weikert discloses forming partial transverse seals
extending from one longitudinal edge of the material to a point short of the
opposite longitudinal edge. Id., col. 2, ll. 37–39. The seals are of
substantially U-shaped configuration with two parallel, spaced legs
interconnected with one another by a bight portion. Id., col. 2, ll. 40–43.
Weikert teaches that, “[i]f desired, lines of serrations or the like can be
formed between the spaced parallel legs extending from one longitudinal
edge of the tube toward but not beyond the bight portion interconnecting the
legs.” Id., col. 2, ll. 43–47 (emphasis added); col. 4, ll. 66–68 (“a line of
serrations or the like 60 extends between the spaced parallel legs 56 toward
but not beyond the bight portion 58”). According to Weikert, “[w]ith this
construction a completely closed system of interconnected bags is formed
intercommunicating with each other by means of a continuous closed
channel running across the open mouths of the bags.” Id., col. 2, ll. 48–51.
Weikert also discloses that following filling of the bags with aseptic
product, a heat seal line 82 is formed in the web intersecting the partial
transverse seal lines 50 and thereby sealing the aseptic product within the
bags. Id., col. 6, ll. 10–15. Weikert teaches that filling the bags will often
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cause them to be separated from each other along the lines of serrations 60
as they expand. Id., col. 6, ll. 16–18. Thus, when the web is cut by cutter 86
along a line extending above the seal line 82 but intersecting the transverse
seal lines 50, the bags are separated from each other. Id., col. 6, ll. 18–21;
see Fig. 1, right hand end.
The Examiner contends that extending the line of perforations not
beyond the bight portion “is an optional choice and not the rule.” Answer
11. The Examiner bases this contention on Weikert’s use of the language
“[i]f desired” in the sentence at column 2, lines 43–47, quoted supra. This
contention is not well-founded. We agree with Appellants that the phrase
“[i]f desired” indicates that the lines of serration are optional, not that
whether or not they stop at the bight portions is optional. Reply Br. 3.
From the above teachings of Weikert, it is apparent that extending the
lines of serrations beyond the bight portions connecting the seal lines would
introduce the possibility of contaminants entering the interior of the
tube/bags, which Weikert seeks to avoid, in part by extending the
perforations toward but not beyond the bight portions of the seals. It is also
apparent from Weikert’s teachings that such a continuation of the serrations
would not serve any purpose in facilitating separation of the bags, because
the portion of the web above the bight portions is cut off along a cut line
intersecting the transverse seal lines.
Thus, it would not have been obvious to modify Weikert’s film by
extending the line of serrations the entire width of the film to facilitate
separation of the bags, as the Examiner contends. Accordingly, we do not
sustain the rejection of claims 1 and 8 and their dependent claims 2, 3, 7, 9,
and 12 as unpatentable over Weikert.
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The remaining rejections under 35 U.S.C. § 103(a) suffer from the
same deficiency as the rejection based on Weikert alone. The Examiner
does not rely on AAPA, Luhman, or Tschantz for any teaching that would
overcome the deficiency of Weikert discussed above. Thus, we also do not
sustain the rejection of claims 1–3, 7–9, and 12 as unpatentable over Weikert
and AAPA or the rejection of claim 4 as unpatentable over Weikert and
either Luhman or Tschantz.

DECISION
The Examiner’s decision rejecting claims 1–4, 7–9, and 12 is
reversed.

REVERSED

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