Ex Parte Shi

Patent Trial and Appeal Board

Nov 14, 2017

13126463 (P.T.A.B. Nov. 14, 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.
13/126,463 04/28/2011 Zhengbing Shi GDZY01-35US 3455
50163 7590
WANG & HO
66 HILLTOP ROAD
MILLINGTON, NJ 07946
11/16/2017 EXAMINER
DESAI, KAUSHIKKUMAR A
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
georgewang@bei-ocean.com
georgewang.hk @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHENGBING SHI
Appeal 2015-000203
Application 13/126,463
Technology Center 3700
Before JOHN C. KERINS, PATRICK R. SCANLON, and
AMANDA F. WIEKER, Administrative Patent Judges.
SCANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Zhengbing Shi (“Appellant”)1 seeks our review under 35 U.S.C. § 134
of the Examiner’s decision, as set forth in the Final Office Action, dated
October 18, 2013 (“Final Act.”), rejecting claims 9, 10, and 12—15, which
are all of the pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is identified as the real party in interest. Appeal Br. 1.
2 Although claims 16 and 17 are referenced in the Final Office Action (Final
Act. 2), these claims are not identified as pending in the Office Action
Summary from the Final Office Action and apparently (although not
explicitly) were canceled in the Amendment dated July 22, 2013.
Appeal 2015-000203
Application 13/126,463
CLAIMED SUBJECT MATTER
Appellant’s claimed invention “relates to a vacuum packing bag with
an opening that can be opened and closed in a quick, convenient and less
elaborated manner.” Spec. 11. Claim 9, the sole independent claim, reads
as follows:
Claim 9. A vacuum packing bag, comprising
a front bag piece, with a top edge, a bottom edge and two
side edges which each comprise an upper portion;
a back bag piece, with a top edge, a bottom edge and two
side edges which each comprise an upper portion;
a cover piece with at least one re-openable edge and a
plurality of connection edges; and vacuum valve;
wherein said plurality of connection edges of said cover
piece are joined, in a sealed manner, with said upper portion of
said side edges of said front bag piece, said top edge of said back
piece, and said upper portion of said side edges of said back bag
piece, and wherein said re-openable edge of said cover piece and
said top edge of said front bag piece define an opening which can
be sealed and reopened.
Appeal Br. 9 (Claims App.).
REFERENCES
The Examiner relies upon the following prior art references:
LaRue US 6,361,209 B1 Mar. 26,2002
Tang US 2008/0118190 A1 May 22, 2008
Crunkleton US 2008/0166073 A1 July 10,2008
REJECTIONS
The following rejections are before us on appeal:
I. Claims 9, 10, and 12—14 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over LaRue and Tang.
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Application 13/126,463
II. Claims 9 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Crunkleton and Tang.
ANALYSIS
Rejection I
Appellant argues claims 9, 10, and 12—14 as a group. Appeal Br. 3.
We take independent claim 9 as representative pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv), with claims 10 and 12—14 standing or falling with claim 9.
The Examiner finds that “the term ‘vacuum packing bag’ does not
define over LaRue’s bag because the term ‘vacuum packing bag’ does not
impart any structure to the claim that is not disclosed by LaRue.” Final
Act. 3. The Examiner also finds that LaRue discloses all other limitations of
independent claim 9 (including a cover piece in the form of top gusset 22),
with the exception of the vacuum valve. Id. To address this deficiency, the
Examiner finds that Tang teaches a vacuum packing bag having vacuum
valve 2 and concludes that it would have been obvious to one of ordinary
skill in the art to provide LaRue’s bag with a vacuum valve as taught by
Tang to exhaust air out of the plastic bag. Id. (citing MPEP § 2143(A)).
The Examiner further finds that Tang discloses exhausting air out of the
plastic bag for the purpose of reducing the size of the bag. Ans. 4 (citing
Tang 123).
Rejection II
Appellant does not present any arguments for the patentability of
dependent claim 15 separately from independent claim 9. Appeal Br. 3—8.
As such, we treat claims 9 and 15 as a single group and select claim 9 as the
representative claim in accordance with 37 C.F.R. § 41.37(c)(l)(iv), with
claim 15 standing or falling with claim 9.
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Application 13/126,463
The Examiner finds that “the term ‘vacuum packing bag’ does not
define over Crunkleton’s bag because the term ‘vacuum packing bag’ does
not impart any structure to the claim that is not disclosed by Crunkleton.”
Final Act. 4. The Examiner also finds that Crunkleton discloses all other
limitations of independent claim 9 (including a cover piece in the form of
side gusset 42), with the exception of the vacuum valve. Id. at 4—5. The
Examiner turns to Tang’s disclosure of a vacuum packing bag having
vacuum valve 2 and concludes that it would have been obvious to one of
ordinary skill in the art to provide Crunkleton’s bag with a vacuum valve as
taught by Tang to exhaust air out of the plastic bag. Id. at 5 (citing MPEP
§ 2143(A)).
Appellant’s Arguments
Appellant argues that “piecing together elements from [the cited]
references does not make sense.” Appeal Br. 3. According to Appellant,
LaRue’s bag is used for a “vastly different purpose” than the claimed
vacuum packing bag because “[i]t is used so that the ‘bag can stand rather
than lay on a store shelf, not for making sealing and opening [of] the re-
closable opening easier as in the present invention.” Id. at 3^4. Similarly,
Appellant argues that Crunkleton uses gussets to provide tampering evidence
and to allow the bag to stand up, and neither purpose has any relation to the
present invention. Id. at 4. Appellant also argues that Tang “does nothing to
address the issue that the present invention solves” and the references, taken
alone or in combination, have no relation to “making the vacuum bag easier
to close and re-open for putting in and taking out of expandable articles.”
Id. (emphasis omitted).
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Application 13/126,463
In response to these arguments, the Examiner states the features upon
which Appellant relies (i.e., the purpose of the invention) are not recited in
the claims and limitations from the Specification are not read into the claims.
Ans. 2. We agree with the Examiner. Appellant’s arguments are based on
the unclaimed purpose or benefit of facilitating opening and closing of the
bag and, thus, are not commensurate in scope with the claims. In other
words, Appellant fails to explain how this intended purpose or benefit of
improved opening and closing defines structurally over the applied prior art.
Furthermore, arguing that the references do not relate to the problem
confronted by the inventor is insufficient to overcome a prima facie case of
obviousness. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990); see also KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“[N] either the particular
motivation nor the avowed purpose of the [inventor] controls” in an
obviousness analysis.). Here, Appellant fails to show that the claims are
structurally distinct from the prior art combination proposed by the
Examiner. See Dillon, 919 F.2d at 692 (“[Structural similarity between
claimed and prior art subject matter, proved by combining references or
otherwise, where the prior art gives reason or motivation to make the
claimed compositions, creates a prima facie case of obviousness.”).
In reply, Appellant argues the Examiner’s position “is completely
erroneous as a matter of law,” with respect to a rejection made under § 103,
because the Examiner’s statement that “limitations from the specification are
not read into the claims” demonstrates the Examiner disregarded the
intended purpose or the problem to be solved in the obviousness analysis.
Reply Br. 1. We disagree. The notion that limitations must not be read into
the claims is well established. See, e.g., In re Van Geuns, 988 F.2d 1181,
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1184 (Fed. Cir. 1993). Appellant conflates this notion with ignoring the
intended purpose or the problem to be solved by the claimed invention. The
Examiner has not ignored the intended purpose or the problem to be solved,
but simply has pointed out that the features Appellant asserts distinguish the
claimed invention from the prior art are not claimed expressly and should
not be read into the claims in this instance.
Appellant also argues that Tang “does not have the cover piece that
diverts and diffuses the internal expansion forces from acting on the opening
edge.” Appeal Br. 4. This argument is not persuasive because the Examiner
relies on LaRue in the first rejection and Crunkleton in the second rejection,
not Tang, as disclosing the claimed cover piece. See Final Act. 3, 4. One
cannot show nonobviousness by attacking references individually where the
rejections are based on a combination of references. See In re Keller, 642
F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Next, Appellant argues that certain positions taken in the Response to
Arguments section of the Final Office Action, in particular the Examiner’s
reliance on cases such as In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980),
“are devoid of any substantive analysis and lend no support to the legal
conclusion that the claimed invention is obvious.” Appeal Br. 4—6. This
argument is not persuasive because, even if these responsive statements by
the Examiner do not support the legal conclusion of obviousness, we find
that the Examiner’s findings as to the disclosures of LaRue, Crunkleton, and
Tang and the conclusions that combining these references would have been
obvious to one of ordinary skill in the art, as set forth in the descriptions of
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the first and second rejections (see Final Act. 3—5), are supported by a
preponderance of the evidence.
In addition, Appellant argues that the Examiner’s rationale for
combining LaRue and Tang “is erroneous and improper because it is not
supported by articulated reasoning.” Appeal Br. 7. Appellant also
challenges the Examiner’s rationale for combining Crunkleton and Tang for
similar reasons. Id. at 7—8. We disagree with both arguments. As noted
above, the Examiner’s rationale for providing LaRue’s bag with a vacuum
valve as taught by Tang is that this modification would allow air to be
exhausted from the bag. Final Act. 3. The Examiner also determines Tang
teaches that exhausting air out of the bag allows the size of the bag to be
reduced. Ans. 4 (citing Tang 123). The Examiner relies on the same
teachings in Tang as the rationale for combining Crunkleton and Tang.
Final Act. 5; Ans. 4. We agree that providing the known vacuum valve to
LaRue’s bag or Crunkleton’s bag would produce the predictable result of
allowing air to be exhausted from the bag to reduce the size of the bag. See
KSR Int’l Co., 550 U.S. at 416 (combining elements found in the prior art
“according to known methods is likely to be obvious when it does no more
than yield predictable results”); MPEP § 2143(I)(A)(3). Thus, we determine
that the Examiner articulates adequate reasoning based on rational
underpinnings to explain why one of ordinary skill in the art would have
been led to make the proposed modifications.
Last, Appellant argues that neither LaRue’s nor Crunkleton’s gusset
can be the claimed cover piece because both of these gussets
have different requirements (working only with a package made
of a material that is stiff enough to stand up versus working only
with a bag made of an air-tight and flexible material) and perform
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different functions (making the package stand up rather than lay
on the shelf versus making closing and reopening of the vacuum
bag easier).
Reply Br. 2. This argument, however, is not persuasive because it does not
distinguish either gusset from the cover piece as claimed.
Conclusions
In view of the above, Appellant’s arguments do not apprise us of
error. Accordingly, we sustain the rejection of claim 9, and claims 10 and
12—14 grouped therewith, under 35 U.S.C. § 103(a) as unpatentable over
LaRue and Tang. We also sustain the rejection of claim 9, and claim 15
grouped therewith, under 35 U.S.C. § 103(a) as unpatentable over
Crunkleton and Tang.
DECISION
We affirm the decision of the Examiner rejecting claims 9, 10, and
12-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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