Ex Parte Wegner et al

Patent Trials and Appeals Board

Jun 17, 2019

13065227 - (D) (P.T.A.B. Jun. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/065,227 03/17/2011
2387 7590 06/19/2019
Olson & Cepuritis, LTD.
20 NORTH WACKER DRIVE
36THFLOOR
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Kenneth E. Wegner
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.
JLS-110 7407
EXAMINER
FERRERO, EDUARDO R
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/19/2019 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):
docket@olsonip.com
firm@olsonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH E. WEGNER,
ANTHONY SIMON RICHARDS, and ANDREW J. RUSH
Appeal2017-007493
Application 13/065,227
Technology Center 3700
Before MICHELLE R. OSINSKI, JEREMY M. PLENZLER, and
GEORGE R. HOSKINS, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellants filed a Request for Rehearing under 37 C.F.R. § 41.52
(hereinafter "Request" or "Req.") of our Decision mailed March 8, 2019
(hereinafter "Decision" or "Dec."). In the Decision, we affirmed the
Examiner's rejection of claims 15 and 16 under 35 U.S.C. § 103(a) based on
the combined teachings of Kopp '0471, Center2, Kopp '5403, Maloney4,
1 US 3,391,047, issued July 2, 1968.
2 US 5,235,794, issued Aug. 17, 1993.
3 US 4,603,540, issued Aug. 5, 1986.
4 US 4,631,905, issued Dec. 30, 1986.
Appeal2017-007493
Application 13/065,227
Gaylor5, and Sandolo6. Dec. 7. We reversed all other rejections involved in
the appeal. Id.
DISCUSSION
Appellants request rehearing of our Decision affirming the
Examiner's rejection of claims 15 and 16 noted above. Req. 1-5.
A request for rehearing is limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See
37 C.F.R. § 41.52. "The request for rehearing must state with particularity
the points believed to have been misapprehended or overlooked by the
Board," and, generally, "[a]rguments not raised, and Evidence not
previously relied upon, pursuant to§§ 41.37, 41.41, or 41.47 are not
permitted in the request for rehearing." 37 C.F.R. § 4I.52(a)(l).
Appellants set forth three bases for reconsideration in the Request.
First, Appellants contend that "[t]he holding that '[]there is no requirement
that the references provide a suggestion or motivation for the proposed
modification' overlooks the criteria for determination of obviousness
established by KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 418-
419 (2007)." Req. 1. Second, Appellants contend that "[t]he record is
devoid of any evidentiary finding why one of ordinary skill in the art would
have been motivated to modify Kopp '047, the primary reference, as
contended by the Examiner." Id. Third, Appellants contend that "[t]he
record is devoid of any evidentiary finding that supports the Examiner's
reason" to "modif[y] Kopp '047's transverse heat sealing device." Id. at 2.
Appellants do not contend that we overlooked or misapprehended any
5 US 5,466,474, issued Nov. 14, 1995.
6 US 5,361,560, issued Nov. 8, 1994.
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Appeal2017-007493
Application 13/065,227
particular argument made on appeal. Rather, Appellants contend that we
misunderstood and, therefore, misapplied the law related to obviousness.
We disagree.
Appellants' position requires that the references, themselves, provide
an express suggestion or motivation for a proposed combination of teachings
from the references. Again, we disagree. "The obviousness analysis cannot
be confined by a formalistic conception of the words teaching, suggestion,
and motivation, or by overemphasis on the importance of published articles
and the explicit content of issued patents." KSR v. Teleflex, 550 U.S. at 419.
Appellants also allege that the Examiner's rationale lacks support.
However, the Examiner's rationale is well-founded.
As explained in our Decision, Appellants do not dispute any finding
made by the Examiner with respect to this rejection. See Dec. 5 ( citing
Appeal Br. 8-10). Appellants do not dispute the Examiner's finding that
Kopp '04 7' s ribs 7 form a sachet of fixed length due to their location on
roller-shaped welding clamps (i.e., on the circular welding jaws). See, e.g.,
Final Act. 5 ( discussing the periphery of the rolls limiting sachet length).
Instead, Appellants acknowledge that in order to vary sachet length, Kopp
'04 7 would need to change its machine for each variation of sachet length
desired (i.e., circular welding jaws of different diameters would be required).
See, e.g., Appeal Br. 9 ("[I]f one of ordinary skill wished to make longer
packages, all he/she had to do was to increase the outside diameter of the
circular welding jaws."). Appellants also do not dispute the Examiner's
finding that the additional references cited by the Examiner teach separate
heat seal and cutting devices that make sachet length independent of roll
geometry. See Final Act. 5 (the additional references "all teach a transverse
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Appeal2017-007493
Application 13/065,227
heat sealing cutting devices adapted to fuse together portions of the
membrane sheet and the outer film sheets mounted to the frame placed
below the heating seal rolls ... to be able to make packages longer than the
periphery of the rolls"). The Examiner's rationale, which is the subject of
this Request, simply applies the teachings of the additional references to
accommodate any desired variation in sachet length without requiring a
different machine for each desired length.
Based on the record before us, we see no error in the Examiner's
rationale or the underlying fact findings supporting that rationale, which
were the basis for our Decision. Rather, Appellants disagree with the
outcome in our Decision. After review of the Request, we are not apprised
of anything that was misapprehended or overlooked that requires
modification of our Decision.
DECISION
We grant the Request to the extent that we have considered the
arguments, but otherwise deny the Request.
DENIED
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