Ex Parte ScarpyDownload PDFPatent Trial and Appeal BoardFeb 28, 201712685782 (P.T.A.B. Feb. 28, 2017) Copy Citation 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. 12/685,782 01/12/2010 Joseph M. Scarpy 5759E-000004/US 8195 28997 7590 03/02/2017 HARNESS, DICKEY, & PIERCE, P.L.C 7700 Bonhomme, Suite 400 ST. LOUIS, MO 63105 EXAMINER ACKUN, JACOB K ART UNIT PAPER NUMBER 3728 NOTIFICATION DATE DELIVERY MODE 03/02/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): stldocket@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH M. SCARPY Appeal 2015-003810 Application 12/685,782 Technology Center 3700 Before WILLIAM A. CAPP, SCOTT A. DANIELS, and SEAN P. O’HANLON, Administrative Patent Judges. O’HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Joseph M. Scarpy (Appellant)1 appeals under 35 U.S.C. § 134 from the Examiner’s March 17, 2014 final decision (“Final Act.”) rejecting claims 1—20.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is Thermoform Engineered Quality LLC, which was previously known as TEK Packaging LLC. App. Br. 4. 2 Claims 21—28 are canceled. Id. at 24 (Claims Appendix). Appeal 2015-003810 Application 12/685,782 SUMMARY OF INVENTION Appellant’s claimed invention is directed to “packaging having a perforated opening strip that allows for relative[ly] easy or convenient opening of the packaging that is tamper evident.” Spec. 12. Claim 1, reproduced below from page 19 (Claims Appendix) of the Appeal Brief, is illustrative of the claimed subject matter: 1. A packaging unit comprising: a first wall including first and second portions and first and second sets of spaced-apart perforations, the spaced-apart perforations defining a perforated opening strip having a pull tab to facilitate removal of the perforated opening strip from the first wall, the spaced-apart perforations penetrating at least partially through the first wall such that the perforated opening strip is integrally defined in the first wall by the first and second sets of spaced-apart perforations generally between the first and second portions of the first wall; a second wall including a first portion sealable to the first portion of the first wall, and a second portion configured to cooperate with the second portion of the first wall to define an item-receiving compartment therebetween when the packaging unit is closed, the second wall defining an opening that generally aligns with the pull tab of the perforated opening strip when the packaging unit is closed; wherein the perforated opening strip is removable such that the first portion of the first wall may remain sealed to the first portion of the second wall; and wherein removal of the perforated opening strip detaches the first and second portions of the first wall from each other, thereby allowing the second portion of the first wall to be movable relative to the second wall from a closed position towards an open position for opening the packaging unit. REFERENCES The Examiner relies on the following prior art references in rejecting the claims on appeal: 2 Appeal 2015-003810 Application 12/685,782 Chalin US 3,873,735 Mar. 25, 1975 Paulin US 4,111,297 Sept. 5, 1978 Davie US 4,125,190 Nov. 14, 1978 Williams US 5,899,333 May 4, 1999 Feehan US 6,276,529 B1 Aug. 21,2001 Smith US 7,389,907 B2 June 24, 2008 Narzissenfeld US 2008/0202947 A1 Aug. 28, 2008 Shibata ’694 US 2008/0245694 A1 Oct. 9, 2008 Doherty US 2009/0184017 A1 July 23,2009 Shibata ’205 US 7,753,205 B2 July 13, 2010 REJECTIONS Claims 1—12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Shibata ’205 or Shibata ’694, and Davie, Chalin, or Narzissenfeld. Claims 1—12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Feehan and Smith, Williams, or Paulin, and further in combination with Davie, Chalin, or Narzissenfeld. Claims 1—12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Feehan and Davie, Chalin, or Narzissenfeld. Claims 13—20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Feehan and Smith, Williams, Paulin, or Doherty.3 3 Although the Examiner does not list Doherty in the rejection heading, Doherty is referenced in the body of the rejection. Final Act. 5—6. 3 Appeal 2015-003810 Application 12/685,782 Claims 13—20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Shibata ’205 or Shibata ’694. ANALYSIS Rejection Based on Shibata ’205 or Shibata ’694, and Davie, Chalin, or Narzissenfeld As an initial matter, we note that Shibata ’694 is the published application that matured into Shibata ’205 and, thus, both references contain the same disclosure. We will refer to Shibata ’694 herein for the sake of brevity, but our analyses apply equally to Shibata ’205. The Examiner finds that Shibata ’694 discloses a packaging unit substantially as claimed in independent claim 1, but the Examiner relies on Davie, Chalin, or Narzissenfeld to teach an opening in a second wall that generally aligns with a pull tab on a first wall. Final Act. 2—3. Appellant argues that Shibata ’694 is not a valid prior art reference because “Appellant filed Section 131 and 132 Declarations showing that the invention described in Claims 1-12 was conceived and actually reduced to practice in the US prior to March 20, 2008 (the earliest effective filing date of Shibata ‘205 and Shibata ‘694).” App. Br. 8. Appellant included with the Appeal Brief, as Appendix C, a Declaration under 37 C.F.R. § 1.131 of Joseph M. Scarpy (the inventor), including Exhibits A, B, and C, and a Declaration under 37 C.F.R. § 1.132 of Randy Loga, including Exhibit A from the Scarpy Declaration. The Examiner finds that the Declarations are insufficient to antedate Shibata ’694 because “claim 1 recites elements that are not supported by the averments in the Declarations and cannot be gleaned from the drawings thereof.” Ans. 6—7. 4 Appeal 2015-003810 Application 12/685,782 Appellant replies by asserting that the Declarations and Exhibits included therewith support the claims, noting where certain claim recitations are so supported. Reply Br. 2—6. 37 C.F.R. § 1.131(b) sets forth the required showing to antedate a reference: The showing of facts for an oath or declaration under paragraph (a) of this section shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained. “To demonstrate an actual reduction to practice, the applicant must have: (1) constructed an embodiment or performed a process that met all the limitations of the claim and (2) determined that the invention would work for its intended purpose.” In re Steed, 802 F.3d 1311, 1338 (Fed. Cir. 2015) (citing In re Omeprazole Patent Litig., 536 F.3d 1361, 1373 (Fed. Cir. 2008)). Here, Appellant included with his Declaration sketches, CAD drawings, and a screenshot showing a list of computer files. App. Br., Appendix C. We agree with Appellant that the Declarations and included Exhibits support the claim recitations. Regarding the specific recitations noted by the Examiner (see Ans. 7), we note that Exhibit A shows: first and second walls each having first and second portions in the top view drawing on page 4; a seal located above the perforated opening strip in the “option #1” sketch on page 3, the portions of the walls above the seal thus corresponding to the recited first portions, which first portions would thus be 5 Appeal 2015-003810 Application 12/685,782 sealable and would remain sealed when the perforated opening strip is removed; and, because the seal is shown being above the opening strip, removal of the opening strip would allow the second portion of the first wall to be movable relative to the second wall upon removal of the opening strip. We further note that in his Declaration, Mr. Scarpy avers that “on October 27, 2006,1 pulled a perforated zipper feature (without fracture) from an actual, physical sample of the package illustrated on the fourth page of attached Exhibit A in the drawings dated October 17, 2006 and titled Pull Tab Version I.” Scarpy Declaration, p. 1 (emphasis added). The Loga Declaration includes a similar assertion. Loga Declaration, p. 1. As noted above, the drawings on page 4 of Exhibit A illustrate the claim recitations. We thus find that the Declarations establish, by a preponderance of evidence, a reduction to practice prior to the critical date. Accordingly, we do not sustain the rejection of claims 1—12 as being unpatentable over Shibata ’205 or Shibata ’694, and Davie, Chalin, or Narzissenfeld. Rejections Based on Feehan and Secondary References The Examiner rejects claims 1—20 as being obvious in view of Feehan in combination with varying combinations of Smith, Williams, Paulin, David, Chalin, Narzissenfeld, and Doherty. Final Act. 3—6. The Examiner finds that Feehan discloses a packaging unit substantially as claimed in claim 1, but relies on one of Smith, Williams, and Paulin to teach first and second spaced apart perforations to form an opening strip having a pull tab, and on one of Davie, Chalin, and Narzissenfeld to teach an opening in the opposite wall that aligns with the pull tab. Final Act. 3^4; August 14, 2013 6 Appeal 2015-003810 Application 12/685,782 Non-Final Act. 2-4. Similarly, the Examiner finds that Feehan discloses a packaging unit substantially as claimed in claim 13, but relies on one of Smith, Williams, and Paulin to teach first and second spaced apart perforations to form an opening strip, and on Doherty or “[o]ther references of record” to teach the positioning of the hanging opening between the sealable interface and the perforated opening strip. Final Act. 5—6; August 14, 2013 Non-Final Act. 2-4. Appellant asserts that Feehan does not teach first and second sets of perforations in only one wall and argues that the Examiner’s modifications to the Feehan device to include such an arrangement of perforations are improper because such modifications would change the principle of operation and eliminate an important aspect of the invention—namely, removal of Feehan’s side joint 4 when opening the packaging unit. App. Br. 10-14; see also Reply Br. 6—8. Appellant further asserts that “[Feehan] teaches that having the opening strip in a single wall, as suggested by Smith, Williams, Paulin, Davie, Chalin, and Narzissenfeld, can provide difficulties in accessing products in the corresponding packaging.” App. Br. 11 (citing Feehan, 1:33—37). We are not persuaded by Appellant’s arguments. The language of Feehan cited by Appellant states: “Applicant has recognized that various disadvantages of these known blister packs include they are frequently difficult to open, usually requiring scissors or considerable force, or do not allow easy access to the article within, which is inconvenient for the user.” Feehan 1:33—37. The referenced “known blister packs” are identified immediately prior to this language, which Feehan describes as being “opened when the user peels the two halves [of the blister pack] away from 7 Appeal 2015-003810 Application 12/685,782 one another, or pulls back a perforated flap or panel on [a] cardboard back wall.” Id. at 1:18—20. There is no discussion, however, of a package containing an opening strip. Feehan goes on to discuss another known blister pack that includes a “perforated section [that] is only on the rear panel, and defines a perforated access or fold-out back flap . . . that hinges at the bottom.” Id. at 1:49-51; see also id. at Figs. 1—6. Feehan concludes this discussion by stating: “While this package has been successfully used, Applicant herein has determined that an even more convenient opening pack can be provided.” Id. at 2:9-11. The “convenient opening pack” disclosed by Feehan includes two walls joined by seals at the opposing longitudinal edges thereof, with one seal being disengaged from the packaging by a perforated opening strip such that the pack can be opened by pivoting the walls about the remaining seal. See, e.g., id. at 4:46—5:49, Figs. 7—9, 12. Thus, we find that Feehan’s principle of operation is a packaging unit that is easily opened by tearing away and separating from the packaging a perforated opening strip. While Feehan discloses tearing away the opening strip and complete removal of the seal between separate walls of the packaging, we do not find that Feehan’s principle of operation is so narrowly defined as to include complete removal of Feehan’s side joint 4 and portions of both walls when opening the packaging unit, as Appellant asserts. App. Br. 10-14; see also Reply Br. 6— 8. Appellant’s arguments to the contrary are unpersuasive. We are not persuaded that modifying Feehan as proposed by the Examiner with a conventional tear strip formed in only one wall, as opposed to both walls, changes the principle of operation of a tear strip being separated from a blister pack. 8 Appeal 2015-003810 Application 12/685,782 Accordingly, we sustain the rejection of claims 1—12 as being unpatentable over Feehan and Smith, Williams, or Paulin, and further in combination with Davie, Chalin, or Narzissenfeld; of claims 1—12 as being unpatentable over Feehan and Davie, Chalin, or Narzissenfeld; and of claims 13—20 as being unpatentable over Feehan and Smith, Williams, Paulin, or Doherty. Rejection Based on Shibata ’205 or Shibata ’694 Independent claim 13 defines a packaging unit similar to that defined in claim 1, but also requires “an opening extending through the rearward wall and the forward wall for hanging the packaging unit, the opening located generally between the sealable interface and the perforated opening strip.” App. Br. 22 (Claims Appendix). As noted above, our reference herein to Shibata ’694 alone is for the sake of brevity, but our analyses apply equally to Shibata ’205. The Examiner finds that Shibata ’694 discloses a packaging unit substantially as claimed in claim 13, but does not disclose the positioning of the hanging opening between the sealable interface and the perforated opening strip. Final Act. 6—7. The Examiner determines that such placement is “an obvious choice of design.” Id. at 7. Appellant first repeats the argument that Shibata ’694 is not a valid prior art reference based on the Scarpy and Loga Declarations. App. Br. 15- lb. We are not persuaded by this argument. As discussed above with respect to claim 1, Exhibit A of the Scarpy Declaration illustrates, in the “option #1” sketch on page 3, a seal located above the perforated opening strip. However, this seal is located between the opening strip and the 9 Appeal 2015-003810 Application 12/685,782 hanging opening. There is no disclosure of a hanging opening located generally between the sealable interface and the perforated opening strip as required by claim 13. Appellant also argues that Shibata ’694 teaches away from a hanging opening located between the sealable interface and the perforated opening strip, as required by claim 13, because Shibata ’694 states that “opening strip 37 should be ‘positioned sufficiently adjacent to the sealed part 34 to prevent the second clamshell 3 from coming off from the first clamshell 2 while the [opening strip] 37 is still being pulled and severed for opening the clamshell packaging case.’” Id. at 17 (alteration in original) (citing Shibata ’205 4:31— 41).4 The Examiner answers by interpreting the “sufficiently adjacent” disclosure of Shibata ’694 as a teaching that opening strip 37 and sealed part 34 “should be sufficiently adjacent to prevent unintended separation of the clamshells during pulling of the tear strip.” Ans. 15. The Examiner also notes that “Appellant has provided no evidence that the interposition of a hanging opening between the sealed part 34 and the tear strip 37 of Shibata would breach the ‘sufficiently adjacent’ teaching,” and concludes that “[tjherefore Shibata does not teach away from the limitation in question.” Id. at 15—16. A reference teaches away from a claimed invention or a proposed modification if “a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the 4 We note that Appellant’s citation is equivalent to Shibata ’6941 32. 10 Appeal 2015-003810 Application 12/685,782 applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, as correctly noted by the Examiner, Shibata ’694 discloses that “the severed part 37 ... is positioned sufficiently adjacent to the sealed part 34 to prevent the second clamshell 3 from coming off from the first clamshell 2 while the severed part 37 is still being pulled and severed for opening the clamshell packaging case.” Shibata ’694 132. Appellant has not persuasively explained why this teaching means that hanging opening 35 cannot be located between sealed part 34 and severed part 37. In other words, Appellant has not persuasively explained why such positioning of opening 35 between sealed part 34 and severed part 37 would result in separation of the clamshells upon removing severed part 37. Moreover, Shibata ’694 does not criticize, discredit, or otherwise discourage such positioning of opening 35. Accordingly, we sustain the rejection of claims 13—20 as being unpatentable over Shibata ’205 or Shibata ’694. DECISION The Examiner’s decision to reject claims 1—12 under 35 U.S.C. § 103(a) as being unpatentable over Shibata ’205 or Shibata ’694, and Davie, Chalin, or Narzissenfeld is reversed. 11 Appeal 2015-003810 Application 12/685,782 The Examiner’s decision to reject claims 13—20 under 35 U.S.C. § 103(a) as being unpatentable over Shibata ’205 or Shibata ’694 is affirmed. The Examiner’s decision to reject claims 1—12 under 35 U.S.C. § 103(a) as being unpatentable over Feehan and Smith, Williams, or Paulin, and further in combination with Davie, Chalin, or Narzissenfeld is affirmed. The Examiner’s decision to reject claims 1—12 under 35 U.S.C. § 103(a) as being unpatentable over Feehan and Davie, Chalin, or Narzissenfeld is affirmed. The Examiner’s decision to reject claims 13—20 under 35 U.S.C. § 103(a) as being unpatentable over Feehan and Smith, Williams, Paulin, or Doherty 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)(l)(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation