Ex Parte RE42,240 E et al

Patent Trial and Appeal Board

Jun 26, 2015

95001694 (P.T.A.B. Jun. 26, 2015)

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.
95/001,694 07/21/2011 RE42,240 E 006759.00134 8121
22907 7590 06/26/2015
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
SPEER, TIMOTHY M
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
06/26/2015 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
____________

SEALED AIR CORPORATION,
Requester,

v.

Patent of FREE-FLOW PACKAGING INTERNATIONAL, INC.,
Patent Owner and Appellant
____________

Appeal 2014-007360
Reexamination Control 95/001,694
Patent RE 42,240 E
Technology Center 3900
____________

Before STEVEN D.A. McCARTHY, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

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Patent Owner Free-Flow Packaging International, Inc. (“Patent
Owner”) appeals under 35 U.S.C. §§ 134(b) and 315(a) (pre-AIA) the
Examiner’s decision to reject claims 1–39.
1
Third-Party Requester Sealed
Air Corporation (hereinafter “Requester”) urges that the Examiner’s
decision must be affirmed.
2
Requester appeals under 35 U.S.C. §§ 134(c)
and 315(b) (pre-AIA) the Examiner’s decision not to adopt certain rejections
of claims 14-39.
3
We have jurisdiction under 35 U.S.C. §§ 134(b), (c) and
315(a), (b) (pre-AIA). We affirm the Examiner’s decision to reject claims
1–39.

STATEMENT OF THE CASE
United States Reissued Patent RE 42,240 E (hereinafter the
“’240 Patent”), which is the subject of the current inter partes
reexamination, reissued to Nicholas P. DeLuca et al. on March 22, 2011
from U.S. Patent 6,761,960.
We heard oral arguments from both Patent Owner and Requester on
November 12, 2014, a transcript of which was entered into the electronic
record on February 5, 2015.

1
See Patent Owner’s Appeal Brief 5 (filed December 21, 2012) (hereinafter
“PO App. Br.”); Examiner’s Answer (mailed June 21, 2013) (hereinafter
“Ans.”); Right of Appeal Notice (mailed September 26, 2012) (hereinafter
“RAN.”).
2
See Requester’s Respondent Brief (filed January 22, 2013) (hereinafter
“Req. Resp. Br.”).
3
See Requester’s Appeal Brief (filed December 26, 2012) (hereinafter “Req.
App. Br.”).
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The ’240 Patent relates to inflatable, cushioning bubble wrap
products. (Col. 1, ll. 13–14.) Specifically, the ’240 Patent describes a
packaging product comprising first and second sheets of film that are joined
together as a web in a pattern of seal lines, where the pattern of seal lines
forms an inflation channel. (Col. 2, ll. 30–45.) The inflation channel
“extends linearly along the length of the sheets for receiving pressurized air
from an outlet end of an inflation tube.” (Col. 2, ll. 45–47.) The ’240 Patent
states also that the pattern of seal lines “form[s] a plurality of individual
inflatable strips of multiple bubble cushioning structures which extend
laterally from the inflation channel.” (Col. 2, ll. 48–50.)
Figure 1 of the ’240 Patent is reproduced below:

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Figure 1 depicts an isometric view of a patterned web of a bubble
wrap product according to one embodiment of the invention, which is in the
process of being inflated and sealed. (Col. 3, ll. 55–58.) The uninflated
patterned web 11 includes individual inflated strips 21, which “extend
laterally across the width of web 11.” (Col. 4, ll. 54–58.) Each of the
inflated strips 21 includes a series of inflated bubble chambers 23 that are
interconnected by interconnecting passageways 25. (Col. 4, ll. 59–62.) In
order to inflate the web 11, it is fed through machine 19 in the direction of
arrow 18, where pressurized air is fed through inflation channel 31 and
entrance ports 41 at the end of each of the inflations strips 21 defined by
laterally extending seal lines 43. (Col. 4, ll. 38–42; col. 5, l. 65 – col. 6, l. 4.)
A seal line 27 is then formed across entrance ports 41 at the sealing station
of machine 19. (Col. 6, ll. 17–21, 57–61.)
Claim 1, which is illustrative of the appealed subject matter, reads as
follows (with paragraphing added for convenience):
1. A cellular cushioning material comprising
two superposed sheets of film material joined together
along a plurality of generally parallel, undulating seal lines
arranged in a pattern
such that adjacent ones of the seal lines are offset
laterally of each other and form rows of spaced apart bubble
chambers with flow passageways interconnecting adjacent ones
of the bubble chambers in each row and
a last bubble chamber in each row being otherwise closed
so that air can shift between the chambers in a row to
accommodate loads,
the flow passageways in alternate rows being positioned
between, aligned with, and formed by the same seal lines as the
bubble chambers in the intermediate rows so there is no dead
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space between the bubble chambers and the flow passageways
in adjacent rows,
a longitudinally extending inflation channel, and
laterally extending inlet ports interconnecting the
inflation channel and one of the bubble chambers in each of the
rows.
(PO App. Br., Claims App’x.)

Patent Owner contests the Examiner’s decision to reject the claims as
follows:
I. Claims 1–4, 7, 8, 12, 14, 15, 17–19, 21, 30, 31, and 33–35
under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent
3,701,173 to Whitney ("Whitney");
II. Claims 1–4, 7–8, 12, 14, 15, 17–19, 21–31, and 33–39 under
35 U.S.C. § 102(b) as being anticipated by U.S. Patent
4,551,379 to Kerr ("Kerr");
III. Claim 13 under 35 U.S.C. § 103(a) as obvious over Kerr in
view of U.S. Patent 4,096,306 to Larson ("Larson");
IV. Claims 16, 20, and 32 under 35 U.S.C. § 103(a) as obvious over
Kerr in view of U.S. Patent 4,874,093 to Pharo ("Pharo");
V. Claims 16, 20, and 32 under 35 U.S.C. § 103(a) as obvious over
Whitney in view of U.S. Patent 5,329,656 to Leggett
("Leggett");
VI. Claims 1–15, 17–19, 21–31, and 33–39 under 35 U.S.C.
§ 103(a) as obvious over Larson in view of Kerr; and
VII. Claims 16, 20, and 32 under 35 U.S.C. § 103(a) as obvious over
Larson in view of Kerr and Pharo.

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Requester contests the Examiner’s refusal to reject claims 14–39 as
follows:
Claims 30–34 and 36–39 under 35 U.S.C. § 102(b) as anticipated by
Perkins (WO 00/53501) (“Perkins”);
Claim 35 under 35 U.S.C. § 103(a) as obvious over Perkins in view of
Kerr; and
Claims 14–29 under 35 U.S.C. § 103(a) as obvious over Perkins in
view of Kerr.

PATENT OWNER’S APPEAL
Rejection VI-Larson in view of Kerr
ISSUES
The Examiner found that Larson discloses a cellular cushioning
material composed of two sheets of film material having a plurality of
generally parallel seal lines arranged in a pattern and offset laterally to form
rows including spaced apart bubble chambers with flow passageways.
(RAN 23.) The Examiner found that Larson is silent on disclosing
undulating, wavelike, curvilinear, or sinusoidal seal lines; bubble chambers
located on one side of the inflation channel, and the claimed dimensions of
the inflated bubble chambers. (RAN 24.) The Examiner found that Kerr
discloses a cellular cushioning material composed of two superposed sheets
of film material that are joined together along undulating, wavelike,
curvilinear, or sinusoidal seal lines; and that Kerr teaches an inflation
channel positioned near an edge of the material with bubble chambers
located on only one side of the inflation channel. (RAN 24–25.) The
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Examiner concluded that it would have been obvious to form the seal lines
of Larson with an undulating, wavelike, curvilinear, or sinusoidal shape as
disclosed in Kerr, in order to assist in the distribution of load between more
than one passages to increase the shock handling capacity of the cellular
cushioning material. (RAN 25.) The Examiner concluded also that it would
have been obvious to have moved the inflation channel of Larson from the
center of the material to a position near the edge as disclosed in Kerr,
because the edge of the material is a suitable alternative location for the
inflation channel. (RAN 25.)
Patent Owner contends that the Examiner’s rationale for modifying
the seal lines in Larson is improper, because Larson intentionally provides
more restricted flow passageways relative to the flow passageways disclosed
in Kerr. (PO App. Br. 38–40.) Thus, Patent Owner argues that Larson
teaches away from the relatively wider flow passageways disclosed in Kerr
because, according to Patent Owner, such flow passageways are described
by Larson as being less effective for the desired damping effect and could
also require an additional step of sealing chambers into smaller chambers
after inflation. (PO App. Br. 40.)
Regarding claims 14, 18, and 30, Patent Owner contends that Larson
is configured to inflate the film material via a channel extending down the
longitudinal center of the film, such that neither of the configurations
disclosed by Kerr, namely, inserting a manifold into the open ends of
passages or inserting a nozzle into a valve assembly on a manifold that is
open to passageways, could be used in Larson. (PO App. Br. 41–42.) Patent
Owner argues further that even if Larson is modified as a result of Kerr,
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claims 14, 18, and 30 would not be met, because Kerr fails to disclose a first
chamber in each row having an opening “near” a first longitudinal edge of
the film material, as that word is used in the claims. (PO App. Br. 42–43.)
Regarding claims 22, 26, and 36, Patent Owner relies on similar
arguments as presented for claims 1, 3, and 7 and 14, 18, and 30. (PO App.
Br. 43–44.)
Requester argues that Larson does not teach away from the
modification proposed by the Examiner because both Larson and Kerr
disclose constrictions that provide damping to control air flow along each of
the passageways. (Req. Resp. Br. 16–17.) Requester contends that one of
ordinary skill in the art would have appreciated that Larson’s seal lines could
be replaced with Kerr’s seal lines to provide cushioning and damping
functionality. (Req. Resp. Br. 17, 18.) Requester argues also that Larson
discloses that generally arcuate sealing lines can eliminate stress
concentrations and maximize the bursting strength of a chamber. (Req.
Resp. Br. 17, quoting Larson, col. 2, ll. 16–23.) As a result, Requester
argues that one of ordinary skill in the art would have been motivated to
replace Larson’s seal lines with Kerr’s sinuous seal lines, which would avoid
corner shapes and sharp bends. (Req. Resp. Br. 17–18.) Requester contends
that there is little factual support for Patent Owner’s position that Larson
provides significantly more restricted flow passages in comparison to Kerr.
(Req. Resp. Br. 18.)
Regarding claims 14, 18, and 30, Requester contends that the claims
are not limited to a particular inflation process, and Patent Owner has not
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argued that the cushioning material of Larson modified with Kerr could not
be inflated at all. (Req. Resp. Br. 19.)
Accordingly, the dispositive issues on appeal are:
Would it have been obvious to have modified the cushioning material
of Larson to form the seal lines of Larson to have undulating, wavelike,
curvilinear, or sinusoidal seal lines as disclosed in Kerr?
Would it have been obvious to have moved the inflation channel of
Larson from the center of the material to a position near the edge as
disclosed in Kerr so as to result in each row having an opening near a first
longitudinal edge of the film material?

FINDINGS OF FACT (“FF”)
1. Larson discloses a strip material with inflatable chamber
formed between two heat sealable films, the chambers being
inflated to form a cushioning material. (Col. 1, ll. 6-10.)
2. Figure 1 of Larson is reproduced below:

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Figure 1 depicts a plan view of an uninflated strip material,
including inflatable chambers 19, constricted areas 21, and a
longitudinal passageway 18. (Col. 3, ll. 10–11; 40–67.)
3. Larson discloses that the constricted areas 21 allow the transfer
of air between the chamber portions 19 to provide a damping
effect for the chamber portions during the use of the inflated
cushioning material. (Col. 3, ll. 59–64.)
4. Larson discloses:
Additionally, the use of inlet openings having a reduced
dimension longitudinally of the strip material as
compared with the corresponding dimension of the
chamber affords the use of generally arcuate sealing lines
around the junction between the inlet opening and the
chamber, thereby eliminating stress concentration points
and maximizing the bursting strength of the chamber.

(Col. 2, ll. 16–23.)
5. Larson discloses:
the constrictions have a width transverse of the chamber
which is much narrower than (e.g. less than
approximately one fifth) the transverse dimension of the
chamber portion. This relationship of the constriction
and chamber portion widths, compared to constrictions
which are wider relative to the width of the chamber
portions, reduces the stress concentration at the
constriction and increases the damping between the
chamber portions. This apparently happens both because
of the reduced air capacity of the constriction and
because stresses in the aligned walls of the chamber
portions flanking the constriction when the chamber
portion is inflated, tend to tension the films across the
constriction in general alignment with corners of the
sealed areas defining the constriction. Such tensioning
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reduces the effect of the corners as stress concentration
points while the tensioned film tends to
close and partially block the constriction which increases
damping.

(Col. 2, ll. 36–54.)
6. Kerr discloses inflatable packaging material for use in
protecting articles during transport, the inflatable packaging
material being formed of sheets with passages formed by
partitions. (Col. 1, ll. 4–5, 44–47.)
7. Kerr discloses that the partitions are “generally sinuous so that
a plurality of restrictions are preformed along the length of the
passage to restrict the flow of air.” (Col. 1, ll. 47–50.)
8. Kerr discloses:
The localised restrictions 28 act as damping orifices to
control the flow of air along each of the passages 26 to
provide a progressive flow of air from an area of shock.
Moreover the sinuous nature of the partitions 24 assist in
distribution of a load between more than one passage and
thereby increases the shock handling capacity because a
straight edge of the packaged product will intersect more
than one of the passages.

(Col. 3, ll. 30–38.)
9. Kerr discloses a packaging material that is inflated by inserting
nozzles connected to a manifold into the open ends of
passageways at the edge of the packing material. (See col.
3, ll. 9–20; Fig. 2.)

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ANALYSIS
Issue 1: Obvious to combine Larson and Kerr
As an initial matter, Patent Owner argues independent claims 1, 3, and
7 together as a group; independent claims 14, 18 and 30 as a group; and
independent claims 22, 26, and 36 as a group. (PO App. Br. 36, 41, and 43.)
As mentioned above, Patent Owner relies on similar arguments for
claims 22, 26, and 36, as presented for claims 1, 3, and 7; and 14, 18, and 30.
(PO App. Br. 43–44.) As a result, we select claims 1 and 14 as
representative. See 37 C.F.R. § 41.67(c)(1)(vii).
Claim 1
We are unpersuaded by Patent Owner’s contentions that one of
ordinary skill in the art would not have combined Larson and Kerr to arrive
at the cellular cushioning material of claim 1. In this regard, simply because
Larson discloses a damping effect as a result of the constricted areas 21
(FF3), does not mean that the substitution of seal lines that provide damping,
such as the seal line configuration disclosed in Kerr, would not have been
obvious to one of ordinary skill in the art. As found by the Examiner, Kerr
expressly discloses advantages of sinuous partitions, which assist in
distribution of a load between more than one passage and thereby increase
the shock handling capacity. (RAN 25, FF7, FF8.) Thus, we agree with the
Examiner that using the seal lines of Kerr in Larson would have been
obvious to one of ordinary skill in the art. (See also Req. Resp. Br. 16.)
In addition, we do not agree that Larson teaches away from the seal
lines disclosed in Kerr. Patent Owner emphasizes the disclosure in Larson
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describing that the constrictions are “much narrower” than the dimension of
the chamber portion, as well as the disclosure in Larson that relative to
constrictions which are wider relative to the width of the chamber portions,
the constrictions in Larson reduce stress concentration at the constriction and
increase the damping between chamber portions. (PO App. Br. 39–40; FF5.)
However, Larson discloses one fifth as an example for the dimension of the
constrictions (“e.g. less than approximately one fifth”), and also Larson does
not set forth a particular dimension of constrictions that would fall into the
category of “wider relative to the width of the chamber portions.” (FF5.)
As noted by Patent Owner, Larson discloses that narrower
constrictions reduce stress concentration at the constriction and increase the
damping between the chamber portions. (FF1–FF5.) Kerr discloses that the
sinuous partitions form restrictions that act as damping orifices and assist in
the distribution of load to increase the shock handling capacity. (FF 6–8.)
Accordingly, the disclosures of Larson and Kerr are consistent with respect
to the effects of the particular seal line configurations disclosed in each
reference. (See Req. Resp’t Br. 16–19.) The evidence of record does not
support Patent Owner’s contention that Larson teaches away from the
sinusoidal seal lines with restrictions disclosed in Kerr. For these reasons,
we are unpersuaded by Patent Owner’s argument.

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Issue 2: Obviousness of each row having an opening near a first
longitudinal edge
Claim 14
The Examiner found that Kerr teaches an inflation channel, manifold
40, positioned near the edge of the cushioning material and that it would
have been obvious to have positioned the inflation channel disclosed by
Larson near an edge as a suitable alternative location. (RAN 25.) We agree
that it would have been obvious to have positioned an inflation channel near
a longitudinal edge such that each row of bubble chambers has a first
chamber with an opening near a first longitudinal edge of a film in view of
Larson and Kerr. Specifically, Kerr discloses that it is known to inflate
passageways in packaging materials by inflating the passageway from one
edge. (FF9.) This disclosure supports the Examiner’s position that inflating
a packaging material by supplying air at an edge of the packaging material is
a known alternative to the location of the inflation channel disclosed by
Larson. Indeed, in KSR, the Supreme Court explained, “[w]hen a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variation, §103 likely
bars its patentability.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). “A person of ordinary skill is also a person of ordinary creativity,
not an automaton.” Id. at 421.
As to Patent Owner’s arguments that the modification suggested by
the Examiner would have been incompatible with Larson (PO App. Br. 42),
Patent Owner focus is on bodily incorporation of the express structures in
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Kerr to Larson, rather than what the prior art as a whole would have
suggested to one of ordinary skill in the art. EWP Corp. v. Reliance
Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) ("A reference must be
considered for everything it teaches by way of technology and is not limited
to the particular invention it is describing and attempting to protect. On the
issue of obviousness, the combined teachings of the prior art as a whole
must be considered.") The Examiner relies on Kerr in order to shift the
position of the inflation channel of Larson, and not for the particular
inflation process disclosed in Kerr. (RAN 25.) Thus, Patent Owner’s
arguments in this regard are not persuasive.
Further, we agree with the Examiner that Patent Owner’s arguments
do not address the rejection as a whole, but rather focus on the deficiencies
of Kerr and Larson individually. (PO App. Br. 42–43; RAN 29.) As
pointed out by the Examiner, Kerr was relied on for the teaching of
providing an opening near one edge, and not Larson. (RAN 29.) It is well
established that “it is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). In addition, “[c]ombining the
teachings of references does not involve an ability to combine their specific
structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (emphasis in
original). Thus, Patent Owner’s arguments regarding whether the
longitudinal center is near a longitudinal edge are not persuasive.

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Rejection VII: Claims 16, 20, and 32 as obvious over Larson in view
of Kerr and Pharo
Patent Owner relies on similar arguments for the rejection of
claims 16, 20, and 32 as discussed above in connection with Rejection VI.
(PO App. Br. 43–44.) Accordingly, we affirm the Examiner’s rejection for
the same reasons as set forth above in connection with Rejection VI.

Rejections I-V
As a result of our decision to sustain the Examiner’s rejections of all
the claims as set forth above in connection with Rejections VI and VII, we
find it unnecessary to reach Rejections I–V. Cf. In re Gleave, 560 F.3d
1331, 1334 (Fed. Cir. 2009); Beloit Corp. v. Valmet Oy, 742 F.2d 1421,
1423 (Fed. Cir. 1984) (Having decided a single dispositive issue, the ITC
was not required to review other matters decided by the presiding officer).

REQUESTER’S APPEAL
As a result of our decision to sustain the Examiner’s rejections of all
the claims as set forth above in connection with Rejections VI and VII, we
find it unnecessary to reach Requester’s Appeal.

CONCLUSION
On this record, the Examiner did not err in concluding that:
it have been obvious to have modified the cushioning material of
Larson to form the seal lines of Larson to have undulating, wavelike,
curvilinear, or sinusoidal seal lines as disclosed in Kerr; and
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it have been obvious to have moved the inflation channel of Larson
from the center of the material to a position near the edge as disclosed in
Kerr so as to result in each row having an opening near a first longitudinal
edge of the film material.

DECISION
The Examiner’s decision to reject claims 1–39 is affirmed.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).
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AFFIRMED

PATENT OWNER:
Banner & Witcoff, Ltd.
1100 13
th
Street, NW
Suite 1200
Washington, DC 20005-4051

THIRD-PARTY REQUESTER:

Alston & Bird, LLP
Bank of America Plaza
101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000