Ex Parte Turvey

Board of Patent Appeals and Interferences

Aug 27, 2008

09872378 (B.P.A.I. Aug. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ROBERT R. TURVEY
________________

Appeal 2008-0191
Application 09/872,378
Technology Center 3700
________________

Decided: August 27, 2008
________________

Before WILLIAM F. PATE, III, DAVID B. WALKER, and BIBHU R.
MOHANTY, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. §§ 6(b) and 134(a) (2002) from the
final rejection of claims 1-36. We reverse.
Representative claim 1 reads as follows:
1. A method of producing plastic bags, the method
comprising the steps of:
folding a web of plastic to form an elongate
Appeal 2008-0191
Application 09/872,378

2
folded web having free ends;
securing closer tape to the free ends of the
elongate folded web;
forming end stops in the closer tape at
spaced locations thereof, such step including the
step of creating an indicia in each of the end stops,
wherein the indicia designates at least one of a
production line that produced the plastic bags and
a time at which the bags were produced; and
simultaneously severing and sealing the
elongate folded web at each of the spaced locations
to produce individual bags.

The reference set forth below is relied upon as evidence in support of
the rejection:

Thieman US 5,956,924 Sep. 28, 1999

Claims 1-36 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Thieman.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
Id. at 1445. See also Piasecki, 745 F.2d at 1472. Obviousness is then
determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445; Piasecki,
745 F.2d at 1472.
Each of the rejected claims require “creating an indicia . . . wherein
the indicia designates at least one of a production line that produced the
Appeal 2008-0191
Application 09/872,378

3
plastic bags and a time at which the bags were produced” (See, e.g.,
independent claims 1 and 19).
The Appellant argues that Thieman does not teach or suggest such
indicia, and that such indicia have a new and nonobvious functional
relationship with the plastic bag (Br. 4 & 6-7). The Appellant argues that
indicia is defined as “a distinctive mark that indicates or that is felt to
indicate the nature or quality of or existence or reality of something” (Br. 4;
citing Webster’s Third New International Dictionary). According to
Appellant, Thieman discloses a pattern on the end stops that is no more
distinctive than any other feature of the bag (Br. 4).
The Examiner found that indicia is broadly defined as “distinctive
marks” (Answer 4; citing Merriam Webster Dictionary). The Examiner
argues that crosshatching on the bag of Thieman is distinctive indicia that
permits the machine operator to tell by looking if the weld was performed
properly or not (Answer 4).
We agree with Appellant that Thieman does not teach indicia when
that term is given its broadest reasonable interpretation in light of the
Specification. The Examiner relies on the cross-hatch pattern shown on end
stops 36 and 38 on the plastic bag in Figure 1 of Thieman as indicia.
Thieman does not disclose any purpose for the cross-hatching, which is not
described in its specification, or explicitly describe the function of the end
stops 36 and 38. The end stops appear to serve the functions of stopping the
travel of the slider 48 and providing a gripping surface for holding the bag
when moving slider 48. We find no teaching in Thieman of using the cross
hatching as distinctive marks or of any other distinctive marks that would
meet the claim limitation of indicia under either the Appellant’s or
Appeal 2008-0191
Application 09/872,378

4
Examiner’s definition of the term. Because each of the appealed claims
requires indicia, the Examiner has failed to make a prima facie case of
obviousness of claims 1-36 over Thieman.
The decision of the Examiner is reversed.
REVERSED

hh
Kristin L. Chapman
S.C. Johnson & Son Home Storage
1525 Howe Street
Racine, WI 53403-2236