Ex Parte Piechocki

Board of Patent Appeals and Interferences

Sep 28, 2006

10153376 (B.P.A.I. Sep. 28, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DUANE PIECHOCKI
____________

Appeal No. 2006-1612
Application No. 10/153,376
Technology Center 3700
____________

ON BRIEF
____________

Before CRAWFORD, BAHR and HORNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the examiner's
final rejection of claims 1-8, all of the claims pending in the application.
We affirm in part.
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Application No. 10/153,376

BACKGROUND
The appellant's invention relates to a zipper closure for a reclosable bag.
Claims 1 and 5 are representative of the subject matter on appeal, and a copy of
these claims can be found in the appendix to the appellant’s brief.
The examiner relies upon the following as evidence of unpatentability:
Jaster 3,338,285 Aug. 29, 1967
Singhal 5,189,765 Mar. 02, 1993
Tominaga et al. (“Tominaga”) 5,293,672 Mar. 15, 1994
The following rejections are before us for review.
1. Claims 1-8 stand rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
2. Claims 4 and 8 stand rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
3. Claims 5 and 6 stand rejected under 35 U.S.C. § 102(b) as being anticipated
by Singhal.
4. Claims 1, 2, 5, and 6 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Jaster.
5. Claims 1, 4, 5, and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tominaga.
Rather than reiterate in detail the conflicting viewpoints advanced by the
examiner and the appellant regarding this appeal, we make reference to the
examiner's answer (mailed December 2, 2005) for the examiner's complete
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reasoning in support of the rejection and to the appellant's brief (filed October 26,
2005) for the appellant's arguments.

OPINION
In reaching our decision in this appeal, we have carefully considered the
appellant’s specification and claims, the applied prior art, and the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the determinations that follow.
Rejection under 35 U.S.C. § 112, first paragraph
The examiner rejected claims 1-8 because the specification, as originally
filed, fails to provide antecedent basis for the recited claim language, “said female
profile being partially cylindrical through greater than 180 degrees.” The examiner
asserts that it is unclear from the drawings that applicant intended the female
profile to be partially cylindrical through greater than 180 degrees, since the
originally filed specification fails to mention the drawings as being to scale.
(Examiner’s Answer, p. 3). The appellant argues that it is irrelevant whether the
drawings are to scale, because the angle remains the same regardless of scale of the
drawings. (Appellant’s Brief, p. 5). The appellant also points to Figures 2, 3, 4,
5A and 5B and page 4, lines 20-21 of the specification for support of the claim
limitation.
We hold that the specification and drawings, as originally filed, provide
sufficient support for the disputed claim language. The factual inquiry for
determining whether a specification provides sufficient written description for the
claimed invention is whether the specification conveys with reasonable clarity to
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those skilled in the art that, as of the filing date sought, applicant was in possession
of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). An applicant shows possession
of the claimed invention by describing the claimed invention with all of its
limitations using such descriptive means as words, structures, figures, diagrams,
and formulas that fully set forth the claimed invention. Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997).
We agree with the appellant that even if the specification does not specify
that the figures are drawn to scale, the figures can still be relied upon as support for
the claimed description of the shape of the female profile. Specifically, the figures
convey with reasonable clarity to those skilled in the art that, as of the filing date
sought, the applicant was in possession of the invention having a female profile
that is partially cylindrical through greater than 180 degrees. This angle is clearly
depicted, for example, in Figures 3 and 4 regardless of the scale of the drawings.
Accordingly, we do not sustain the examiner’s rejection of claims 1-8 for lack of
written description.
Rejection under 35 U.S.C. § 112, second paragraph
The examiner has determined that claims 4 and 8 contradict the structure for
the female profile set forth in the claims from which they depend. Specifically, the
examiner states, “[c]laims 4 and 8 recite the female profile having a ‘second at
least partially cylindrical projecting element’ which would interrupt the ‘partially
cylindrical through greater than 180 degrees’ internal surface of the female profile
in claims 1 and 5.” (Examiner’s Answer, p. 4). The appellant contends that the
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Application No. 10/153,376

claim language is definite and clear in view of Figures 5A and 5B. (Appellant’s
Brief, p. 6).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the claim
is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986) (citations
omitted). We understand claims 1 and 5 to require that the female profile is only
“partially cylindrical” through an angle of greater than 180 degrees. With this
understanding, we do not see how an interruption of the cylindrical portion of the
female profile would be inconsistent with the claim limitation, because the
cylindrical portion would still be “partially cylindrical” through the 180 degree
angle. Further, we find that the specification clearly describes on page 5, lines 12-
28 the embodiment of Figures 5A and 5B, which is claimed in claims 4 and 8. As
such, it would be clear to those skilled in the art in light of the specification what is
intended to be claimed. Accordingly, we do not sustain the rejection of claims 4
and 8 under 35 U.S.C. § 112, second paragraph.
Rejections under 35 U.S.C. § 102(b)
In the rejection of claims 5 and 6 as being anticipated by Singhal, the
examiner has determined that Singhal discloses each and every element of the
claimed invention. The examiner considered the hollow rods (2) of Singhal to be
capable of being collapsed. (Examiner’s Answer, p. 4).
The appellant contends that Singhal discloses the diameter of the male
profile elements being distinctly smaller than the diameter of the grooves of the
female
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elements, such that when joined, they would not form a hermetic seal.
(Appellant’s Brief, p. 6). The examiner responds that Singhal discloses a device to
create a waterproof joint, and the waterproof joint satisfies the recitation of the
hermetic seal. (Examiner’s Answer, p. 6).
We disagree with the examiner’s position. A hermetic seal is a seal that is
airtight.1 Singhal does not disclose creating an airtight seal. Rather, the stated
purpose of the device of Singhal is to create a seamless and continuous joint
between two surfaces that is water proof. (Singhal, col. 1, lines 7-9). It does not
necessarily follow that a water proof joint is also impervious to air. Further, it is
not clear from the structure disclosed in Singhal whether when the rods (2) are
joined with the channels (6), a hermetic seal will be formed inherently.
Accordingly, we do not sustain the rejection of claims 5 and 6 as being anticipated
by Singhal.
In the rejection of claims 1, 2, 5, and 6 as being anticipated by Jaster, the
examiner has determined that Jaster discloses each and every element of the
claimed invention. (Examiner’s Answer, p. 4). The examiner contends that Jaster
discloses a slot-like recess that allows the male profile to yield or collapse in
response to pressure, tension or impact yet remain engaged with the female profile.
(Examiner’s Answer, p. 6). The appellant disputes whether Jaster discloses a
“collapsible element” as claimed. (Appellant’s Brief, p. 7).

1 “Hermetic” is defined as “impervious to air: airtight.” Webster’s Third International
Dictionary, unabridged, G. & C. Merriam Co., 1971, p. 1059.
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We disagree with the examiner’s position and find that Jaster fails to
disclose a “collapsible element forming a hermetic seal,” as recited in independent
claims 1 and 5. The purpose of the Jaster device is to improve the retaining
function of the fastener without making the bag more difficult to open. (Jaster, col.
2, lines 24-26). In certain embodiments, Jaster discloses a recess (6) in the head (5)
of catch (3) that yields when the male and female profiles are engaged with one
another. The function of the recess is to prevent disengagement of the male and
female profiles due to pressure, tension, or impact. Specifically, Jaster describes
the function of the recess as follows,
Owing to this [recess], the forces resulting from the
action of any sudden load on the fastener caused by
pressure, tension, or impact will be initially taken up
inside the fastener so that the impact is substantially
reduced because the outer lateral contact surfaces of the
head of the catch can yield and assume the aligned
position and the slotted head can yield until the sides of
the slot contact each other. The fastener is disengaged
and opened only when the application of force is
continued. (Jaster, col. 3, lines 30-38).
Jaster does not teach or suggest that the recess (6) in the head (5) of catch (3)
yields to form a hermetic seal. There is no teaching or suggestion in Jaster that
formation of a hermetic seal is achievable with the disclosed fastener. Further, the
figures of Jaster show a gap between the male and female profiles when joined,
which suggests that the seal is not airtight. As such, we do not sustain the rejection
of claims 1, 2, 5, and 6 as anticipated by Jaster.
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Application No. 10/153,376

Rejection under 35 U.S.C. § 103(a)
The examiner has determined that Tominaga discloses the invention recited
in claims 1, 4, 5, and 8 except for the female profile being partially cylindrical
through greater than 180 degrees. The examiner found that it would have been an
obvious matter of design choice to make the female profile of Tominaga partially
cylindrical through greater than 180 degrees or whatever form or shape was desired
or expedient. (Examiner’s Answer, p. 5, citing In re Dailey, 149 USPQ 47, 50
(CCPA 1966) (A change in form or shape is generally recognized as being within
the level of ordinary skill in the art, absent any showing of unexpected results)).
The appellant does not contest the examiner’s position regarding the
obviousness of the shape of the female profile. Rather, the appellant argues that
the resilient partition of Tominaga merely deflects, rather than collapsing, so that
Tominaga does not teach or suggest a “collapsible element forming a hermetic
seal” as recited in independent claims 1 and 5. (Appellant’s Brief, p. 7).
The examiner responds that Tominaga is directed to a “gas-and-water tight
flexible fastener, and that the resilient means (10) aids in forming a hermetic seal
when the male and female profiles are engaged. (Examiner’s Answer, p. 6). The
examiner further notes that the claim does not require the hermetic seal to be
located solely at the collapsible element. (Examiner’s Answer, p. 7).
We disagree with the appellant’s position that the resilient partition of
Tominaga does not collapse to form a hermetic seal. As pointed out by the
examiner, Tominaga is directed to a “gas-and-water-tight” fastener. This
description of the fastener clearly suggests that an airtight or hermetic seal is
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Application No. 10/153,376

formed. The figures also clearly show that when the male and female profiles of
the Tominaga fastener are engaged, the locking fins (4) abut the locking hooks (9)
to prevent air from passing between the two sides of the bag.
With regard to collapsibility, Tominaga describes the function of the
resilient partition (10) as to urge the head (3) of the plug (1) outward. This forces
the locking fins (4) of the plug (1) into more tight engagement with the locking
hooks (9) of socket (3) to create the gas- and water-tight seal. (Tominaga, col. 4,
lines 22-34). Tominaga also describes an embodiment that uses a resilient
rectangular tube (19) disposed in a socket (2) and used to urge the head (15) of
plug (1) outward to create such a gas- and water-tight seal. (Tominaga, col. 3,
lines 50-63 and Figure 2). We find that in order for the resilient partition (10) and
the resilient rectangular tube (19) of the embodiments of Tominaga to provide this
biasing force, they must act as collapsible elements. As discussed above, the
biasing force provided by the resilient partition (10) and the resilient rectangular
tube (19) form a hermetic seal when the male and female profiles are engaged with
one another, as recited in independent claims 1 and 5. Accordingly, we sustain the
rejection of claims 1 and 5 as being unpatentable over Tominaga.
The appellant did not separately argue the patentability of the remaining
rejected dependent claims 4 and 8. Finding no separate basis for patentability of
these dependent claims, we also sustain the examiner’s rejection of these claims.
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CONCLUSION
To summarize, the rejection of claims 1-8 under 35 U.S.C. § 112, first
paragraph is not sustained, the rejection of claims 4 and 8 under 35 U.S.C. § 112,
second paragraph is not sustained, the rejection of claims 5 and 6 as anticipated by
Singhal is not sustained, the rejection of claims 1, 2, 5, and 6 as anticipated by
Jaster is not sustained, and the rejection of claims 1, 4, 5, and 8 under 35 U.S.C.
§ 103(a) is sustained.
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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 IN PART

)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal No. 2006-1612 Page 14
Application No. 10/153,376

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