Ex Parte Selle et al

Patent Trial and Appeal Board

Apr 29, 2016

13042870 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/042,870 03/08/2011
22222 7590 05/03/2016
GEORGE R CORRIGAN
CORRIGAN LAW OFFICE
2168 COLLADAY POINT DRIVE
STOUGHTON, WI 53589
FIRST NAMED INVENTOR
Paul A. Selle
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CMD235C 7787
EXAMINER
HARMON, CHRISTOPHER R
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
george.corrigan@corrigan.pro
gcorrigan@new.rr.com
kari.brekke@corrigan.pro
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PAUL A. SELLE and GREGORY T. PRELLWITZ
Appeal2013-002418
Application 13/042,870
Technology Center 3700
Before STEFAN STAICOVICI, JILL D. HILL, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Paul A. Selle and Gregory T. Prellwitz (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner's final decision rejecting claims 34--
39. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE CLAIMED SUBJECT MATTER
Appellants' claimed subject matter relates to bag making machines.
Spec. i-f 2. Claim 34, reproduced below, is the only independent claim and is
representative of the claimed subject matter.
34. A cap for a sealer for a rotary bag machine comprising a
base having a layer of material mounted thereon, wherein the
layer of material is such that melted film is less likely to stick to
Appeal2013-002418
Application 13/042,870
the layer than the base, and wherein the layer is disposed to the
film when a seal or perforation is being created, and a heating
wire stitched into the release layer and into the base, and
wherein the cap includes a sealing area and a perforating area.
Appeal Br. 13 (Claims App.).
THE EVIDENCE
The Examiner relied upon the following prior art references in
rejecting the claims on appeal:
Buob
Schott
us 3,586,821
us 3,271,560
THE REJECTIONS
June 22, 1971
Sept. 6, 1966
Appellants seek review of the following rejections:
1. Claim 34 under 35 U.S.C. § 102(b) as anticipated by Buob, or, in
the alternative, under 35 U.S.C. § 103(a) as unpatentable over
Buob.
2. Claims 34--36 under 35 U.S.C. § 102(b) as anticipated by Schott,
or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable
over Schott.
3. Claims 35-39 under 35 U.S.C. § 103(a) as unpatentable over
Buob.
4. Claims 35-39 under 35 U.S.C. § 103(a) as unpatentable over Buob
and Schott.
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Application 13/042,870
ANALYSIS
Rejections of Claim 34 Based upon Buob
In support of the anticipation rejection under 35 U.S.C. § 102(b) and
the alternative rejection under 35 U.S.C. § 103(a) based on Buob, the
Examiner found that Buob discloses a heating wire 6 stitched into a release
layer and cap 2 as required by claim 34. Final Act. 3. The Examiner also
found that Buob 's cap 2 includes a metal base and an insulating layer, where
melted film is less likely to stick to the insulating layer than the base. Id. at
5; Ans. 4. In support of this finding, the Examiner further found that the
metal base of Buob, when in contact with the wire 6 of Buob, "will transfer
heat generally with more efficiency than that of 'insulated materials"' and
the higher heat will cause the plastic film to stick. Ans. 4.
Appellants argue that Buob does not show the heating wire stitched
into the insulating layer and base. Appeal Br. 9. Appellants further argue
that Buob fails to teach that the insulating layer material "is such that melted
film is less likely to stick to the layer than the base" as required by claim 34.
Id. at 10. According to Appellants, "[n]othing in Buob teaches that the top
layer of the laminate would help prevent melted film from sticking to the
surface" and that reducing heat transfer does not make the film less sticky.
Id. Appellants also assert that asbestos and other insulating materials such
as those Buob discloses contain voids that the melted film can flow into,
making the melted plastic more likely to stick to such materials in
comparison to the metal base of Buob. Id.
We agree with Appellants that the Examiner has not adequately
supported the finding that Buob discloses a layer of material with properties
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Appeal2013-002418
Application 13/042,870
"such that melted film is less likely to stick to the layer than the base" as
required by claim 34. Id. Buob discloses a metal base, as the Examiner
found, in the following passage: "The insulating material may also be
mounted or cemented to a rigid backing member (not shown), such as a
metal bar or plate." Buob, 2:23-25. The metal bar or plate does not appear
in the figures, and no other details are provided regarding its composition,
properties, or surface finish. Without such details, the Examiner's finding
that the melted film would be less likely to stick to the insulating layer than
the metal base lacks adequate support and is based on speculation. For
example, it is not apparent how or to what extent heat from the wire 6
transfers to the metal base because Buob does not disclose any details
regarding the manner in which the two are combined or how much heat
transfer takes place. See Ans. 5. Similarly, Buob does not disclose the
nature of the metal surface of the base, i.e., surface roughness, which could
have an impact on the likelihood that the melted film will stick to the metal.
In light of the foregoing, and because the Examiner's modification of Buob
does not remedy the deficiency of Buob, we cannot sustain the Examiner's
rejections of claim 34 based upon Buob.
Rejections of Claim 34 Based on Schott
In support of the anticipation rejection under 35 U.S.C. § 102(b) and
the alternative rejection under 35 U.S.C. § 103(a) based on Schott, the
Examiner found that Schott discloses a heating wire 32 stitched into a
release layer 47 and cap 40 as required by claim 34. Final Act. 4. The
Examiner also found that Schott discloses a metal base and an insulating
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Application 13/042,870
layer, where metal film is less likely to stick to the insulating layer than the
base. Id. at 5; Ans. 4.
Appellants argue that Schott merely discloses a wire stitched into
cement layer 47, not the cap 40 or any other base as required by claim 34.
Appeal Br. 11. Appellants also argue that cement layer 4 7 is not a release
layer as the Examiner found because "melted plastic will certainly stick to
cement." Id.
The Examiner's findings regarding Schott are not adequately
supported for reasons similar to those discussed above in the context of
Buob. As an initial matter, the Examiner does not make an express finding
that the cap 40 (i.e., the claimed "base") is made from a particular material,
and our review of the relevant portions of Schott does not reveal the material
used for the cap 40. Even if the Examiner correctly assumed that Schott
discloses a metallic cap material, the silence of Schott regarding the nature
of that material, its properties, and its surface provide no support for the
Examiner's finding that melted film is less likely to stick to the cement layer
47 than the cap 40. See Ans. 4. Because Schott does not disclose any of the
details regarding the material of the cap 40 that would allow one of ordinary
skill in the art to determine whether melted film is likely to stick to the cap
40, the Examiner did not adequately support the finding that melted film is
less likely to stick to the cement layer 4 7 than the cap 40 and thus, the
Examiner's findings are based on speculation. Accordingly, we do not
sustain the rejections of claim 34 based upon Schott.
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Remaining Claims
The remaining claims 35-39 depend from claim 34. Appeal Br. 13
(Claims App.). The Examiner's rejections of claims 35-39 rely upon the
same findings discussed above in the context of claim 34, and none of the
findings related to claims 35-39 remedy the deficiencies identified above.
See Final Act. 3-5. Accordingly, we do not sustain the rejections of claims
35-39 for the same reasons discussed above regarding the rejection of claim
34.
DECISION
We reverse the decision of the Examiner to reject claims 34--39.
REVERSED
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