Ex Parte Shellenberger

Patent Trial and Appeal Board

Feb 10, 2017

13770541 (P.T.A.B. Feb. 10, 2017)

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.
13/770,541 02/19/2013 Rohn E. Shellenberger D-44550-01 5887
28236 7590
LAW DEPARTMENT
SEALED AIR CORPORATION
2415 Cascade Pointe Boulevard
Charlotte, NC 28208
EXAMINER
SABERI, JASPER
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
02/14/2017 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):
brandie. sullivan @ sealedair. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROHN E. SHELLENBERGER1
Appeal 2016-001252
Application 13/770,541
Technology Center 1700
Before CHUNG K. PAK, WESLEY B. DERRICK, and JANE E. INGLESE,
Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1—20.2 We have jurisdiction pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s claimed invention is generally directed to fan-folded
cellular cushioning article strand comprising an embossed film having a
1 According to Appellant, the Real Party in Interest is Sealed Air
Corporation (US). Appeal Brief filed April 9, 2015 (“App. Br.”), 3.
2 Final Office Action entered October 7, 2014 (“Final Act.”), 2.
Appeal 2016-001252
Application 13/770,541
plurality of discrete embossments separated from one another by a land area.
Spec. Abstract.
Claim 1 is illustrative:
1. A fan-folded cellular cushioning article strand
comprising
an embossed film having a plurality of discrete
embossments separated from one another by a land area, with
the land area of the embossed film being bonded to a flat
backing film with air entrapped within closed chambers
between the embossments of the embossed film and the flat
backing film,
with the embossed film having a land area of from 15
percent to 40 percent, and an embossed area of from 85 percent
to 60 percent,
with the cellular cushioning article strand being in a fan-
fold configuration having a first ply folded against a second ply
so that the embossments of the first ply are facing and directly
contacting the embossments of the second ply,
with the first and second plies in fan-folded configuration
having a total height corresponding with a nesting level of at
least 1 percent measured by placing the first and second plies in
fan-folded configuration under a load of 0.05 psi, relative to the
height of roll-stacked first and second plies of the cellular
cushioning article under the 0.05 psi load.
App. Br. 19 (Claims Appendix) (spacing added).
REJECTION
The Examiner maintains the final rejection of claims 1—20 under
35 U.S.C. § 103(a) as obvious over Mueller et al. (US 2011/0318522 Al,
published December 29, 2011) (“Mueller”) in the Examiner’s Answer
entered August 27, 2015 (“Ans.”).
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Application 13/770,541
DISCUSSION
Having carefully reviewed the Examiner’s rejection in light of
arguments advanced by Appellant in the Appeal Brief and Reply Brief,3 we
are not persuaded that the Examiner erred reversibly in concluding that
claims 1—20 are unpatentable for obviousness. We add the following.4
Claim 1 requires a cellular cushioning article to comprise an
embossed film having a plurality of discrete embossments separated by a
land area that is bonded to a flat backing film. Claim 1 requires the cellular
cushioning article to have a land area of from 15% to 40% and an embossed
area of from 60% to 85%, and requires the cellular cushioning article to be
in a fan-folded configuration in which a first ply is folded against a second
ply so that the embossments of the first ply are facing and directly contacting
the embossments of the second ply. Claim 1 further requires the fan-folded
first and second plies to have a total height corresponding to a nesting level
of at least 1 percent relative to the height of roll-stacked first and second
plies of the cellular cushioning article. Appellant’s Specification explains
that in a roll-stacked configuration, the embossments of a sheet contact the
backing film of an adjacent sheet and are therefore not in a nesting
configuration in which embossments face and contact each other. Spec.
36, 41. Appellant’s Specification further explains that the degree of
nesting is determined by comparing a calculated effective height of plies
3 Reply Brief filed October 27, 2015 (“Reply Br.”).
4 We limit our discussion to those claims separately argued, and claims not
separately argued stand or fall with the argued claims. 37 C.F.R.
§ 41.37(c)(l)(iv). Appellant argues claims 1—20 as a group (App. Br. 7—18),
and for the purposes of this appeal, we select claim 1 as representative, and
decide the propriety of the rejection of claims 1—20 based on claim 1 alone.
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Application 13/770,541
stacked in a nesting configuration against the calculated effective height of
identical plies in a roll-stacked configuration, and the percent difference is
the nesting level. Spec. 139. Thus, claim 1 requires the cellular cushioning
article to include fan-folded first and second plies that have a degree of
nesting resulting in at least a 1 percent lower height than corresponding roll-
stacked plies.
The dispositive issue on appeal is whether the Examiner erred in
determining that Mueller would have suggested a fan-folded cellular
cushioning article comprising an embossed film having a land area of from
15% to 40% and an embossed area of from 60% to 85%. On this record, we
answer this issue in the negative.
The Examiner finds that Mueller discloses a fan-folded cellular
cushioning article comprising a polymeric film comprising first cells
projecting from a major surface of the polymeric film (embossments)
sounded by land area. Final Act. 2—3; Mueller H 4, 7, 33; Fig. 3a; Fig. 9.
The Examiner finds that Mueller discloses that the “land area between the
first cells may be any distance relative to the diameter of the first cells, as
long as the first cells ne[s]t as desired.” Ans. 6; Mueller 118. The
Examiner finds the Mueller discloses that “[pjreferably, the diameter of first
cells [] may be from about 1 to about 1.5 inches with a land area between the
first cells being from about 0.8 to about 2.5 inches.” Final Act. 3; Mueller
118. Based on this disclosure, the Examiner provides calculations
demonstrating that the embossed area of Mueller’s cellular cushioning
article would be 66.8% and the land area would be 33.2%. Final Act. 4—5.
The Examiner finds that Mueller discloses that when two cellular
cushioning articles having cells of the same shape and size arranged the
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Application 13/770,541
same way on the major surface of a polymeric film are placed on top of one
another such that the cells of each article face each other, the cells of the
articles nest, and the total thickness of the two nested articles can be less
than the sum of the thicknesses of the two individual articles. Final Act. 5—
6; Mueller 121. The Examiner concludes de facto that Mueller’s
disclosures would have led one of ordinary skill in the art to a fan-folded
cellular cushioning article having a land area sufficient to allow cells
(embossments) on opposed plies of the article to nest, such as a land area of
15% to 40% and an embossed area of 60% to 85% as recited in claim 1,
thereby reducing the thickness of the article relative to an article in which
nesting does not occur. Final Act. 2—6.
Appellant argues that the cellular cushioning article the Examiner
relies on in calculating an embossed area of 66.8% (Final Act. 4-5) would
actually have an embossed area of 33.5%—outside the range recited in claim
1—as supposedly demonstrated by a series of calculations that differ from
the calculations provided by the Examiner to determine the land area and
embossed area of the cellular cushioning article disclosed in Mueller. App.
Br. 8-11.
However, Appellant’s calculations are based on the assumption that
the preferred land area of from about 0.8 to about 2.5 inches disclosed in
Mueller “must be the [diagonal] distance between a cell and the CLOSEST
adjacent cell.” App. Br. 8 (emphasis in original). In contrast, the
Examiner’s calculations are not based on such assumption, and are based on
the land area equaling the horizontal distance between cells arranged in a
row and the vertical distance between cells arranged in a column. Final Act.
4—5. Appellant does not provide any evidence or reasoning beyond the
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Application 13/770,541
conclusory statement quoted above to establish that his view of land area
was conventional in the art. App. Br. 8—11. In other words, Appellant
argues that one of ordinary skill in the art would have understood Mueller’s
disclosure of land area to have the meaning that Appellant attributes to this
term. Id. However, Appellant’s mere arguments to that effect cannot take
the place of evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984);
In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
Nonetheless, even if Appellant’s approach to calculating the land area
were correct, it is not persuasive of reversible error. In particular,
Appellant’s arguments against the Examiner’s finding of an embossed area
of 66.8% are based on only one embodiment disclosed in Mueller and ignore
Mueller’s broader teaching that the “land area between the first cells may be
any distance relative to the diameter of the first cells, as long as the first cells
nest as desired.” Mueller 118. Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750
(CCPA 1976)(“[T]he fact that a specific [embodiment] is taught to be
preferred is not controlling, since ah disclosures of the prior art, including
unpreferred embodiments, must be considered.”); In re Boe, 355 F.2d 961,
965 (CCPA 1966) (Ah of the disclosures in a prior art reference “must be
evaluated for what they fairly teach one of ordinary skill in the art.”).
Accordingly, Appellant’s arguments are unpersuasive of reversible
error in the Examiner’s determination that Mueller’s disclosures as a whole
would have led one of ordinary skill in the art to a fan-folded cellular
cushioning article having a land area sufficient to allow nesting to reduce the
thickness of the article, such as a land area of 15% to 40% and an embossed
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Application 13/770,541
area of 60% to 85% as recited in claim 1.
Appellant argues that Mueller teaches away from a bulky prior art
cellular cushioning article that Mueller discusses to provide background for
his invention in which the “cells are arranged in a tight hexagonal
configuration with little land area between the cells,” such as Bubble Wrap
having cells with a 3 cm diameter and less than 4 mm of land area between
cells because, according to Appellant, such a small distance between cells
relative to the cell diameter impairs nesting. App. Br. 11—14 quoting
Mueller 117. Appellant provides calculations—again based on the
unsupported assumption that land area as disclosed in Mueller refers to the
diagonal distance between closest adjacent cells—showing that the bulky
prior art cellular cushioning article having cells with a 3 cm diameter and 4
mm land area between cells would have an embossed area of 70.6%. App.
Br. 13—18. Appellant contends that because this embossed area of the bulky
prior art cushioning article described in Mueller falls within the range of
60% to 85% recited in claim 1, Mueller not only teaches away from this
prior art cushioning article, but also teaches away from a cellular cushioning
article as recited in claim 1. Id.
However, Appellant’s argument does not show that Mueller teaches
away from the claimed invention. Appellant’s calculations suffer from the
same shortcomings as the calculations discussed above because they are also
based on an unsupported assumption regarding the meaning of the “land area
between cells” disclosed in Mueller. In addition, although Mueller discloses
that the prior art cellular cushioning articles are extremely bulky, Mueller
further discloses that “[tjhese types of known cellular cushioning articles
perform well.” Mueller 117. Accordingly, Mueller’s disclosures as a whole
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Application 13/770,541
teach that the prior art cellular cushioning articles are suitable for their
intended purpose despite their bulkiness, and those of ordinary skill in the art
would have been led to produce such articles because of their good
performance. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“[i]n
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.”);
Merck & Co., 874 F.2d at 807 (“That the ’813 patent discloses a multitude of
effective combinations does not render any particular formulation less
obvious. This is especially true because the claimed composition is used for
the identical purpose.”).
In addition, assuming that Appellant’s calculations are based on a
correct assumption, by Appellant’s own admission, the calculations
demonstrate that Mueller discloses a cellular cushioning article having an
embossed area within the range recited in claim 1, and Appellant’s
arguments do not establish that such a cushioning article would not have a
nesting level of at least 1% as recited in claim 1. Appellant’s arguments are
therefore unpersuasive of reversible error.
We accordingly sustain the Examiner’s rejection of claims 1—20 under
35 U.S.C. § 103(a) as unpatentable over Mueller.
DECISION
In view of the foregoing, the Examiner’s rejection of claims 1—20
under 35 U.S.C. § 103(a) 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)(1).
AFFIRMED
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