Ex parte Sessions

Board of Patent Appeals and Interferences

Oct 30, 2000

08397536 (B.P.A.I. Oct. 30, 2000)

1
The opinion in support of the decision being entered today was not written for publication and
is not precedent of the Board.
Paper No. 46
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT W. SESSIONS
____________
Appeal No. 1998-0246
Application No. 08/397,536
____________
HEARD: October 11, 2000
____________
Before COHEN, NASE, and JENNIFER D. BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 17, 19, 20 and
22-24, which are all of the claims pending in this application.
Appeal No. 1998-0246
Application No. 08/397,536
2
BACKGROUND
The appellant's invention relates to a method for packaging individual wound dressings.
An understanding of the invention can be derived from a reading of exemplary claim 17, which
appears in the appendix to the appellant's brief.
The prior art references of record relied upon by the examiner in rejecting the appealed
claims are:
Petersen et al. (Petersen) 3,140,572 Jul. 14, 1964
Seiden 4,436,576 Mar. 13, 1984
Dallaserra 4,455,809 Jun. 26, 1984
The following rejections are before us for review.
Claims 17, 19 and 22-24 stand rejected under 35 U.S.C. ß 103 as being unpatentable
over Petersen in view of Dallaserra.
Claim 20 stands rejected under 35 U.S.C. ß 103 as being unpatentable over Petersen in
view of Dallaserra, as applied to claim 19 above, and further in view of Seiden.
Reference is made to the brief and reply brief (Paper Nos. 40 and 42) and the answer
and supplemental answer (Paper Nos. 41 and 43) for the respective positions of the appellant
and the examiner with regard to the merits of these rejections.
Appeal No. 1998-0246
Application No. 08/397,536
1 In claim 17, line 20, "the product" lacks clear antecedent basis. Based on a reading of the claim as a
whole, we interpret "the product" as referring back to the "wound dressing product web" mentioned in lines 2 and 6
of claim 17. Likewise, we also interpret "web product" in claims 19 and 20, line 2, as referring back to the "wound
dressing product web."
3
OPINION
In arriving at our decision on the obviousness issues raised in this appeal, we have
given careful consideration to the appellant's specification and claims1, the teachings of the
applied prior art references, the evidence supplied by the appellant, and the respective positions
articulated by the appellant and the examiner. Having reviewed all of the evidence before us,
we make the determinations which follow.
Turning first to the examiner's rejection of claims 17, 19 and 22-24 as being
unpatentable over Petersen in view of Dallaserra. Petersen discloses a method of packaging
surgical dressings, such as absorbent gauze and cut bandages and the like (column 1, lines 12-
14). The Peterson method includes the steps of feeding a ribbon 10 of absorbent cotton or
surgical gauze to feed rollers 12, 13 and cutting the ribbon into swatches of cotton or gauze
using cut-off rollers 18, 19 having knives 20, 21. The piece of cotton or gauze enters between
rollers 24, 25 before it is cut off by the knives 20, 21. As seen in Figure 1, the rollers 24, 25
also feed top and bottom heat sealable sheets 26, 27, which form upper and lower wrapping
sheets 32, 33, with the cut swatches of cotton or gauze carried therebetween, to sealing rollers
35, 36, which help form a substantially perfect seal in the areas 51, 52 along the edges of the
strip 32 and spaces 53 between the swatches 22. Petersen does not disclose how the cut
Appeal No. 1998-0246
Application No. 08/397,536
4
swatches are spaced from one another and is silent as to the relative rates at which the ribbon is
fed by rollers 12, 13 and the wrapping sheets are fed by rollers 24, 25.
The examiner, finding that Petersen discloses the method as recited in claim 17, with the
exception of the limitation that the first feed rate is greater than the second feed rate, relies upon
the teachings of Dallaserra to remedy this deficiency. Dallaserra discloses a method for
packaging an interior document in a sealed mailer so that it is free to move therein and is not
secured to the outer sheets, i.e., for introducing a sheet section between the upper and lower
sheets, without the section being held by the seal, but, on the contrary, remaining free in the
interior of the sealed mailer so as not to interfere with its removal by the addressee (column 5,
lines 42-49). Dallaserra's method involves feeding continuous upper and lower sheets 11, 12 at
a first velocity V1 and feeding a continuous intermediate sheet 10 at a second velocity V2
between the upper and lower sheets, severing the intermediate sheet into discrete lengths E2
and feeding the upper and lower sheets and the lengths of intermediate sheet to a sealing station
20 to unite the upper and lower sheets over the entire periphery of each of their sides by virtue
of pressure rollers 22. In order to achieve the stated objective of introducing the intermediate
sheet section between the upper and lower sheets such that it is free to move therein and is not
secured to the outer sheets at the sealing station, the rollers 13 which feed the upper and lower
sheets 11, 12 have a tangential velocity V1 which is greater than the velocity V2 at which the
sheet 10 is fed to the rollers 13 (column 5, lines 50-68).
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5
The test for obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). Indeed, a prima facie case of obviousness is established where the
reference teachings would appear to be sufficient for one of ordinary skill in the art having
those teachings before him to make the proposed combination or modification. See In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
One of ordinary skill in the art reading Petersen's disclosure would have appreciated
that the cut swatches must be spaced from one another after they are severed from the ribbon
and would have looked to known techniques for achieving such spacing. As evidenced by
Dallaserra, one technique known in the prior art at the time of the appellant's invention for
achieving such spacing was to feed the upper and lower sheets at a non-intermittent feed rate
higher than the rate at which the severed insert strips are fed to the sheets. We share the
examiner's opinion that the combined teachings of Petersen and Dallaserra would have
suggested to one of ordinary skill in the art of packaging wound dressings at the time of the
appellant's invention feeding the heat sealable sheets 26, 27 via rollers 24, 25 at a rate higher
than the rate at which the ribbon of gauze or cotton is fed to the rollers 24, 25 in order to
achieve the spacing between cut swatches 22 needed to accommodate the sealing of the upper
and lower sheets to one another between the swatches.
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6
The appellant (brief, page 4) argues that Dallaserra is non-analogous art to the
appellant's invention and has filed a declaration by Raider Schmeichel (Paper No. 32) in
support of this position. For the reasons which follow, we do not agree with the appellant in
this regard.
Two criteria have evolved for determining whether prior art is analogous: (1) whether
the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is involved. In re Clay,
966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992). See also In re Deminski,
796 F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036,
202 USPQ 171, 174 (CCPA 1979).
We recognize that Dallaserra is directed to packaging paper mailers and not wound
dressings and fully appreciate the declarant's stated belief that one concerned with packaging
wound dressings at the time of the appellant's invention would not have turned to a patent
dealing with a process and apparatus for manufacturing continuous sealed postal or other
envelope assemblies (Schmeichel declaration, page 5). However, even if Dallaserra cannot
reasonably be considered to be from the field of the appellant's endeavor, we share the
examiner's opinion that it meets the second criterion for analogous prior art, in that it is
reasonably pertinent to the problem with which the appellant is involved. As explained on page
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27 of the appellant's specification, the appellant's invention involves laying cut wound dressings
68 onto a faster moving envelope web 69 to thereby increase the spacing between the pieces
68. Although Dallaserra faces this problem in a field of endeavor which may not be the same
as the appellant's field of endeavor, Dallaserra also addresses the problem of spacing articles
cut from a continuous web and laid onto a moving envelope web by feeding the envelope web
at a speed greater than that at which the cut articles are fed. Thus, as we see it, one of
ordinary skill in the art of packaging wound dressings, faced with the problem of achieving
spacing between the cut swatches 22 in the Petersen method to accommodate sealing
therebetween, would have considered the teachings of Dallaserra with regard to the relative
feed velocities of the insert material and the wrapping sheets particularly pertinent in packaging
wound dressing material within upper and lower wrapping sheets.
We understand the appellant's argument (brief, pages 4 and 5) that the severing
techniques disclosed by Dallaserra, involving sudden acceleration or acceleration followed by
deceleration, may not be acceptable for use with wound dressings. We must point out,
however, that all of the features of the secondary reference need not be bodily incorporated
into the primary reference (see In re Keller, 642 F.2d at 425, 208 USPQ at 881) and the
artisan is not compelled to blindly follow the teaching of one prior art reference over the other
without the exercise of independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733
F.2d 881, 889, 221 USPQ 1025, 1032 (Fed. Cir. 1984)). Moreover, skill is presumed on the
Appeal No. 1998-0246
Application No. 08/397,536
8
part of those practicing in the art. See In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774
(Fed. Cir. 1985). In this instance, the examiner does not contend that one of ordinary skill in
the field of making or packaging wound dressings would have found it obvious to replace the
cut-off rollers 18, 19 of Petersen with the severing technique disclosed by Dallaserra. Rather,
as emphasized by the examiner on page 6 of the answer, the examiner's position is that it
would have been obvious to one of ordinary skill in the art to employ the relative feed
velocities as taught by Dallaserra to achieve spacing.
The Schmeichel declaration points out on page 5 that Dallaserra does not provide the
ability to inspect the location of the insert relative to where sealing would take place and that
utilizing the Dallaserra method to even try and package differing sized inserts in the same
package size would be extremely complicated. These statements, however, are not commensurate
in scope with the appellant's claims, which require neither inspection, or capability of inspection, of
the location of the insert relative to where sealing would take place nor packaging of different
sized inserts in the same package size. It is well settled that evidence of nonobviousness must be
commensurate in scope with the claims to which it pertains. In re Clemens, 622 F.2d 1029, 1035, 206
USPQ 289, 296 (CCPA 1980); In re Dill, 604 F.2d 1356, 1361, 202 USPQ 805, 808 (CCPA
1979) and In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294 (CCPA 1971). See also In re
Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983). Moreover, with particular
regard to inspection, it appears that the use of transparent regenerated cellulose (cellophane)
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9
wrapping material, as taught by Petersen (column 2, lines 22-25), would permit inspection of
the location of the insert relative to where sealing would take place.
The statements in paragraph 7 (pages 6 and 7) of the Schmeichel declaration are not
relevant to the obviousness rejection made by the examiner, in that these statements are directed
to a proposed combination of a prior art method, which, in contrast to Petersen, uses suction or
otherwise to mechanically move the cut web product from one location onto a moving web,
and Dallaserra, rather than to the combination of Petersen and Dallaserra proposed by the
examiner.
After reviewing all of the evidence before us, including the totality of the appellant's
evidence, it is our conclusion that, on balance, the evidence of nonobviousness fails to outweigh
the evidence of obviousness discussed above and, accordingly, the subject matter of claim 17,
and claims 19 and 22-24 which stand or fall therewith (brief, page 3), would have been
obvious to one of ordinary skill in the art within the meaning of 35 U.S.C. ß 103 at the time
the appellant's invention was made. See Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d
1476, 1483, 44 USPQ2d 1181, 1187 (Fed. Cir. 1997).
Accordingly, we shall sustain the examiner's rejection of claims 17, 19 and 22-24 as
being unpatentable over Petersen in view of Dallaserra.
We shall not, however, sustain the examiner's rejection of claim 20 as being
unpatentable over Petersen in view of Dallaserra and Seiden. Claim 20 recites that the sealing
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10
of the first and second continuous webs along two sides of the cut product web is conducted at
a first sealing station and that the sealing of the remaining two sides is conducted at a second
sealing station. Petersen discloses sealing the upper and lower wrapping sheets on all four
sides of the swatches (i.e., along the edges of the sheets and in the spaces between the
swatches) at a single sealing station, using sealing rollers 35, 36 provided with recesses 49, 50,
and pressure contact portions 45, 46 and edges 47, 48. Seiden discloses sealing two
continuous sheets to one another by forming a continuous bottom seal 24 at a first sealing
station 32 and a series of side seals 25 perpendicular to the bottom seals at a second sealing
station 35. Even if Seiden would have suggested to one of ordinary skill in the art the use of
two sealing stations to seal the upper and lower wrapping sheets of Petersen together, there is
nothing in Seiden which would have suggested sealing the sheets along two sides of the swatch
at one of the stations and sealing the sheets along the remaining two sides of the swatch at the
other station, as specifically required by claim 20.
NEW GROUND OF REJECTION
Pursuant to the provisions of 37 CFR ß 1.196(b), we enter the following new ground of
rejection of claims 19 and 20.
Claims 19 and 20 are rejected under 35 U.S.C. ß 112, first paragraph, as being based
upon an original disclosure which fails to provide descriptive support for the subject matter
now being claimed.
Appeal No. 1998-0246
Application No. 08/397,536
2 A review of this application, which was filed March 2, 1995, reveals that it is a continuation of
Application No. 07/943,373, filed September 10, 1992, which is a continuation of Application No. 07/725,209, filed
July 3, 1991, which in turn is a continuation of Application No. 07/417,285, filed October 5, 1989. The above-noted
limitations of claims 19 and 20 were presented for the first time in a preliminary amendment filed March 27, 1995
(Paper No. 29).
11
We initially observe that the description requirement found in the first paragraph of 35
U.S.C. ß 112 is separate from the enablement requirement of that provision. See Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1560-64, 19 USPQ2d 1111, 1114-17 (Fed. Cir. 1991) and
In re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977), cert. denied, 434 U.S.
1238 (1978). With respect to the description requirement, the court in Vas-Cath, 935 F.2d at
1563-64, 19 USPQ2d at 1117 stated:
35 U.S.C. ß 112, first paragraph, requires a "written description of the
invention" which is separate and distinct from the enablement requirement. The
purpose of the "written description" requirement is broader than to merely
explain how to "make and use"; the applicant must also convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she was
in possession of the invention. The invention is, for purposes of the "written
description" inquiry, whatever is now claimed.
. . . drawings alone may be sufficient to provide the "written
description of the invention" required by ß 112, first paragraph.
With these authorities in mind, we have carefully reviewed the original disclosure2 and
fail to find descriptive support for the limitations presently recited in claims 19 and 20 that the
sealing of the first and second continuous webs along two sides of the cut web product is
conducted at a first sealing station and the sealing of the first and second continuous webs along
the remaining two sides of the cut web product is conducted at a second sealing station.
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With regard to sealing, the appellant's specification discloses, on page 27, that "suitable
bonding of the top and bottom portions with the wound dressings 68 therebetween is
accomplished by rolls 73 and 74, and rolls 75 and 76 in station 38." Further, Figure 14
illustrates two pairs of bonding rolls 73, 74 and 75, 76. Additionally, each of the original
claims recited a step of "sealing said package top and said package bottom on at least three
sides surrounding each cut piece of web." While this disclosure may provide support for
providing two sealing stations, the first station comprising the set of bonding rolls 73, 74 and
the second station comprising the set of bonding rolls 75, 76, it does not support sealing along
two sides of the cut web product at the first station, as recited in claim 19, and sealing along the
remaining two sides at the second station, as recited in claim 20.
CONCLUSION
To summarize, the decision of the examiner to reject claims 17, 19, 20 and 22-24 under
35 U.S.C. ß 103 is affirmed as to claims 17, 19 and 22-24 and reversed as to claim 20. A
new rejection of claims 19 and 20 under the first paragraph of 35 U.S.C. ß 112 is entered
pursuant to 37 CFR ß 1.196(b).
In addition to affirming the examiner's rejection of one or more claims, this decision
contains a new ground of rejection pursuant to 37 CFR ß 1.196(b)(amended effective Dec. 1,
1997, by final rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203 Off. Gaz. Pat.
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Application No. 08/397,536
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Office 63, 122 (Oct. 21, 1997)). 37 CFR ß 1.196(b) provides, "A new ground of rejection
shall not be considered final for purposes of judicial review."
Regarding any affirmed rejection, 37 CFR ß 1.197(b) provides:
(b) Appellant may file a single request for rehearing within two months from the
date of the original decision . . . .
37 CFR ß 1.196(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two options with respect
to the new ground of rejection to avoid termination of proceedings (37 CFR ß 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the application will be remanded
to the examiner. . . .
(2) Request that the application be reheard under ß 1.197(b) by the Board
of Patent Appeals and Interferences upon the same record. . . .
Should the appellant elect to prosecute further before the Primary Examiner pursuant to
37 CFR ß 1.196(b)(1), in order to preserve the right to seek review under 35 U.S.C. ßß 141
or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred
until conclusion of the prosecution before the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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Application No. 08/397,536
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If the appellant elects prosecution before the examiner and this does not result in
allowance of the application, abandonment or a second appeal, this case should be returned to
the Board of Patent Appeals and Interferences for final action on the affirmed rejection,
including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR ß 1.136(a).
AFFIRMED-IN-PART; 37 CFR ß 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1998-0246
Application No. 08/397,536
15
Christopher T. Griffith
Leydig Voit & Mayer
Two Prudential Plaza Suite 4900
180 North Stetson
Chicago, IL 60601-6780