Ex Parte Robbiati et al

Board of Patent Appeals and Interferences

Aug 12, 2008

10603028 (B.P.A.I. Aug. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANCESCO ROBBIATI and ANTONINO MONTALBANO
____________

Appeal 2008-2884
Application 10/603,028
Technology Center 3700
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Decided: August 12, 2008
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Before DONALD E. ADAMS, ERIC GRIMES, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1 and 3-10.
Pending claims 11-22 were withdrawn from consideration (App. Br. 6). We
have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2008-2884
Application 10/603,028

INTRODUCTION
The claims are directed to a packaging bag (claims 1 and 3-9) and a
continuous strip of transverse-sealed packaging bags (claim 10). Claim 1 is
illustrative:
1. A packaging bag comprising opposed first and second film plies
joined at a closed end of the bag and sealed along lateral edges of the bag,
said plies defining an open mouth end having a first edge of the first ply and
a second edge of the second ply which projects beyond the first edge of the
first ply and comprises a folded over film portion to exhibit double thickness
at the exposed end of the second ply, wherein the margin of the folded over
portion of the second ply is disposed adjacent to the edge of the first ply so
that there is essentially a zero space between the first edge of the first ply
and the second edge of the second ply, so as to provide a substantially
constant thickness of the bag across the mouth and projecting portion,
wherein the length of the folded over film portion is less than 5% of the total
length of the bag.

The Examiner relies on the following prior art references to show
unpatentability:
Schmidt US 4,290,467 Sep. 22, 1981
Montepiani US 6,260,705 B1 Jul. 17, 2001

The rejections as presented by the Examiner are as follows:
1. Claims 1 and 3-10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Montepiani and Schmidt.
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2. Claims 1 and 3-10 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1 and
5 of Montepiani in view of Schmidt.
We affirm.

DISCUSSION
Obviousness-type double patenting:
Claims 1 and 3-10 stand rejected under the judicially created doctrine
of obviousness-type double patenting as being unpatentable over claims 1
and 5 of Montepiani in view of Schmidt.
Appellants do not argue the claims separately.1 Therefore, we limit
our discussion to representative claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

The Examiner finds that Montepiani’s claims 1 and 5 define a
packaging bag within the scope of claim 1 with the exception that
Montepiani fails to claim an open mouth “between the edge of one ply and
another edge of a folded over film portion” and “the claimed length of the
folded over film portion” (Ans. 3). The Examiner relies on Schmidt to teach
“that an open mouth between the edge of one ply and another edge of a
folded over film portion is an equivalent structure known in the art” (id.).
As for the length of the folded over film portion, the Examiner finds that

1 Appellants state that “[c]laims 3-10 ultimately depend from independent
claim 1 . . . [and] are also believed to be patentably distinguished over the
cited combination in view of their dependency from claim 1” (App. Br. 20).
This statement is not an argument for the separate patentability of claims 3-
10. Claims 3-10 stand or fall with claim 1.
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Application 10/603,028

while neither Montepiani nor Schmidt teaches this claimed limitation, it
“would have been an obvious matter of design choice at the time the
invention was made to make the length of the folded over film portion
whatever dimension was desired . . . since such a modification would have
involved a mere change in the size of a component” (Ans. 3-4).
Appellants assert that neither Montepiani nor Schmidt teaches or
suggests “a bag comprising an open mouth between the edge of one ply and
another edge of a folded over film portion in accordance with independent
claim 1 . . . or . . . a packaging bag wherein the length of the folded over film
portion is less than 5% of the total length of the bag” (App. Br. 15).
For clarity, we reproduce figure 9 of Schmidt below:

(e.g., “less than 5% of the total length of the bag”, “less than 3% of the total

“FIG. 9 is a transverse sectional detail view showing the bag blank”
(Schmidt 3: 7-8).
According to Appellants, “the Examiner appears to assert that the
open area between 25’ and 21’ of Figure 9 embodies the mouth portion of
the bag” (App. Br. 13). In contrast, “Appellants submit that the separable
closure profiles 17’ and 18’ constitute the mouth portion of the bag disclosed
in Figure 9 of” Schmidt (App. Br. 13-14). We agree that Schmidt teaches
that “[c]omplementary separable fastener profiles 17 and 18 . . . are disposed
across an openable top of the bag and are adapted to be separated from a
closed condition into an opened condition” (Schmidt 3: 16-20). However, as
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Application 10/603,028

the Examiner asserts “[t]he ‘slit’ (or the open area between 25’ and 21’ of
Fig. 9) of Schmidt meets the recitation of an ‘open mouth’ to [the] same
degree as structurally set forth in independent claim 1” (Ans. 6).
For clarity we reproduce Schmidt’s figure 5 below:

“FIG. 5 is a schematic illustration showing how the bag strips are adapted to
be filled and then separated by bag sections” (Schmidt 2: 62-64). According
to Schmidt,
In a desirable form, the filling nozzle 45 . . . project[s] into the
contents receiving area of the bag . . . through the slit between
the pull flange 19 and the adjacent edge 24 of the front panel
21, and between the fastener profiles 17 and 18 which are
progressively separated by the nozzle 45 as the strip . . .
advances.

(Schmidt 4: 66 - 5: 6.)
According to the Examiner “the Schmidt reference clearly discloses
the open area between 25’ and 21’ to be a portion of a bag wherein a product
or article is introduced into the open bag via a filling nozzle” (Ans. 7).
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Application 10/603,028

Appellants assert that “the ‘mouth’ portion, as referred to in the subject
specification, refers to an area into which package contents are loaded, then
closed to define a sealed package” (Reply Br. 3). Accordingly, Appellants
assert that
[A]lthough the bag contents can be disposed through the area
between 25’ and 21’ of the bag of . . . [Schmidt], the area is not
deemed the ‘mouth’ portion of the bag because it does not refer
to the area through which package contents are loaded, then
closed to define a sealed package.

(Reply Br. 3-4.) According to Appellants, to open Schmidt’s bag “a user
would pull flange 19’ . . . to open closures 17’ and 18’” (Reply Br. 4). We
are not persuaded by Appellants’ argument.
There is no requirement in claim 1 that the mouth portion of the bag is
closed to define a sealed package. Accordingly, we agree with the
Examiner’s assertion that by disclosing an open area between structures 25’
and 21’ “Schmidt meets the recitation of an ‘open mouth’ to [the] same
degree as structurally set forth in independent claim 1” (Ans. 6).
Appellants assert that Schmidt “appears to teach away” from a “bag
wherein the length of the folded over film portion is less than 5% of the total
length of the bag” (App. Br. 15). In this regard, Appellants assert that
“profiles 33’ and 34’ and rib 28’ [of Schmidt’s bag] is to reinforce the bag
and to provide support for heavy bag contents” (App. Br. 16). Therefore,
Appellants reason, if Schmidt’s bag
were equipped with an open mouth comprising a folded over
portion that was less than 5% of the total length of the bag as
recited in independent claim 1 of the subject application, it
appears that the support function of the upper portion of
[Schmidt’s bag] . . . would indeed be compromised.
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(Id.; see also Reply Br. 4-5.) We are not persuaded. At best, the differences
between the prior art and the claimed invention lies in the dimensional
limitation recited in claim 1. There is, however, no evidence on this record
to suggest Schmidt’s folded over portion is not less than 5% of the total
length of the bag as recited in Appellants’ claim 1. Further, even if it is not,
there is no evidence on this record to suggest that elements 33’, 34’, and 28’
of Schmidt’s bag could not be placed in a folded over portion that was less
than 5% of the total length of the bag without compromising its support
function. Stated differently, there is no evidence on this record to suggest
that the dimensional limitation recited in claim 1 specifies “a device which
performed and operated any differently from the prior art.” Gardner v. TEC
Systems, Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984). It is well settled that
argument by counsel cannot take the place of evidence. In re Cole, 326 F.2d
769, 773 (CCPA 1964); In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997).
We are also not persuaded by Appellants’ assertion that the
configuration of their bag is different from that taught by the prior art
because it allows “easier pneumatic inflation of the bag mouth, and
resistance to wrinkling” (Reply Br. 7; see also Spec. 4: 17-21). There is no
evidence on this record that Schmidt’s bag or the bag taught by the
combination of references relied upon would not exhibit these properties.
Accordingly, we are not persuaded by Appellants’ unsupported assertion
that “the presently disclosed claims are not directed merely to a ‘reduction in
size’ as set forth by the Examiner, but rather set forth a solution to a problem
experienced with prior art packaging bags” (Reply Br. 7).

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In sum, we find no error in the Examiner’s conclusion that:
It would have been an obvious matter of design choice at the
time the invention was made to make the length of the folded
over film portion whatever dimension was desired (e.g., “less
than 5% of the total length of the bag”, “less than 3% of the
total length of the bag”, “less than 1 cm”, . . .), since such a
modification would have involved a mere change in the size of
a component.

(Ans. 5.) A minor modification of the prior art, such as limiting the length
of the folded over portion of the second ply to less than 5% of the total
length of the bag, does not distinguish the claimed product from the prior art.
See KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (It is proper
to “take account of the inferences and creative steps that a person of ordinary
skill in the art would employ.”). See also id. at 1742 (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”).
For the foregoing reasons, we affirm the rejection of claim 1 under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1 and 5 of Montepiani in view of Schmidt.

Obviousness:
Claims 1 and 3-10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Montepiani and Schmidt.
The claims have not been argued separately and, therefore, stand or
fall together. 37 C.F.R. § 41.37(c)(1)(vii). Therefore, we limit our
discussion to representative claim 1.
Appellants assert “[a]s set forth in detail hereinabove with regard to
the response to the obviousness-type double patenting rejection, Appellants
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respectfully submit that the cited combination of references does not teach
each and every element of independent claim 1” (App. Br. 19; see also
Reply Br. 8 (“the same arguments presented in response to the nonstatutory
obviousness-type double patenting rejection can equally be applied to the
35 U.S.C. § 103(a) rejection of claim 1 and 3-10”)).
Accordingly, for the reasons set forth above with regard to the
rejection under the judicially created doctrine of obviousness-type double
patenting, we affirm the rejection of claim 1 under 35 U.S.C. § 103 (a) as
unpatentable over the combination of Montepiani and Schmidt. Claims 3-10
fall together with claim 1.

CONCLUSION
In summary, we affirm the rejections of record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

clj
SEALED AIR CORPORATION
P.O. BOX 464
DUNCAN, SC 29334

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