Hootan Farhat et al.

Patent Trials and Appeals Board

Jul 6, 2021

2019003019 (P.T.A.B. Jul. 6, 2021)

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.
14/208,429 03/13/2014 Hootan Farhat J-5881A 4215
28165 7590 07/06/2021
S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE, WI 53403-2236
EXAMINER
THEIS, MATTHEW T
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
07/06/2021 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):
mjzolnow@scj.com
selechne@scj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HOOTAN FARHAT, MARK SOMERS, XINHUA LI,
BRIAN MAYERS, and OLIVIER SCHUELLER
_____________

Appeal 2019-003019
Application 14/208,429
Technology Center 3700
____________

Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–23. An oral hearing was held on July
29, 2020. A transcript of that hearing is included in the record. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as S. C. Johnson &
Son, Inc. Appeal Brief (“Appeal Br.”) 1, filed Aug. 28, 2018.
Appeal 2019-003019
Application 14/208,429

2
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a plastic storage bag with a
microstructure closure mechanism.” Spec. ¶ 2. Claims 1, 11, and 23 are
independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A connecting mechanism comprising:
a first strip that is substantially planar;
a plurality of protrusions extending from a surface
of the first strip, the protrusions extending a distance of
less than about 500 µm from the surface of the first strip,
and the plurality of protrusions defining a plurality of
grooves between adjacent protrusions;
a pressure sensitive adhesive provided in at least
some of the grooves that are defined by the protrusions
extending from the first strip;
a second strip that is substantially planar; and
a plurality of protrusions extending from a surface
of the second strip, the protrusions extending a distance of
less than about 500 µm from the surface of the second
strip, and the plurality of protrusions defining a plurality
of grooves between adjacent protrusions,
wherein the plurality of protrusions extending from
the first strip are configured to be received in the grooves
defined by the plurality of protrusions extending from the
second strip, and
wherein, when the first and second strips are
connected together, the plurality of protrusions extending
from the surface of the second strip is received in the
grooves defined by the plurality of protrusions extending
from the surface of the first strip, with the plurality of
protrusions extending from the surface of the second strip
contacting the pressure sensitive adhesive.

Appeal 2019-003019
Application 14/208,429

3
REJECTIONS
Claims 1–23 stand rejected under pre-AIA 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 1–8, 11–18, 20, and 23 stand rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Hayes (US 2009/0304309 A1,
published Dec. 10, 2009) and Siegel (EP 1088768 A2, published Apr. 4,
2001).2
Claims 9 and 19 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hayes, Siegel, and Mazurek (US 6,315,851 B1, issued
Nov. 13, 2001).
Claim 21 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hayes, Siegel, and Borchardt (US 2010/0299881 A1,
published Dec. 2, 2010).
Claims 10 and 22 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hayes, Siegel, and Clarner (US 6,687,962 B2, issued Feb.
10, 2004).

ANALYSIS
Indefiniteness
Claims 1–23
Each of independent claims 1, 11, and 23 requires a first strip that is
substantially planar and a second strip that is substantially planar. Appeal
Br. i, iv–v, viii–ix (Claims App.).3 The Examiner determines that “[i]t is

2 We reference the machine translation provided in the record.
3 Claim 11 recites “a first closure strip that is substantially planar” and “a
Appeal 2019-003019
Application 14/208,429

4
unclear exactly how close to planar a strip must be in order to meet this
limitation,” that “[i]t is also unclear if one part of the strip must be planar, or
if the strip must include a completely planar side, or if the overall shape of
the entire strip when applied to a planar substrate would meet the limitation
of being ‘substantially planar,’” and that “[f]or the purpose of examination it
is assumed that a strip that is capable of extending along a plane is
‘substantially planar.’” Final Act. 2; Ans. 13–14.4
Appellant contends that “the claim language directed to ‘substantially
planar’ strips would be clear to one of ordinary skill in the art, and the
claims are therefore not indefinite.” Appeal Br. 13. In particular, Appellant
contends that “[i]t is [neither] reasonable to interpret express recitations of
the strips being substantially planar as encompassing, for example, some
‘overall shape’ that is substantially planar only when a strip is applied to a
planar substrate” “[n]or is it a reasonable interpretation of the claims to find
that the recitation of the strips being substantially planar encompasses ‘part’
of the strips being substantially planar. Rather, the claims definitively state
that the strips themselves are substantially planar.” Reply Br. 2; see also
Appeal Br. 10–13.5
Appellant has the better position. When a word of degree, such as the
term “substantially,” is used in a claim, we look to the Specification to
determine whether the Specification provides some standard for measuring
that degree. See Seattle Box Co. Inc., v. Industrial Crating & Packing, Inc.,

second closure strip that is substantially planar.” Appeal Br. iv–v (Claims
App.).
4 Final Office Action (“Final Act.”), dated Mar. 29, 2018; Examiner’s
Answer (“Ans.”), dated Jan. 11, 2019.
5 Reply Brief (“Reply Br.”), filed Mar. 4, 2019.
Appeal 2019-003019
Application 14/208,429

5
731 F.2d 818, 826 (Fed. Cir. 1984). In addition, the term “substantially,”
which is often used in conjunction with another term to describe a particular
characteristic of the claimed invention, is a broad term. In re Nehrenberg,
280 F.2d 161, 165 (CCPA 1960). In this case, the qualifying term
“substantially” modifies the term “planar” to include geometric planes that
are approximately planar. In other words, a geometric plane that is
“substantially planar” includes geometric planes that are absolutely planar as
well as geometric planes that are approximately planar.
As correctly pointed out by Appellant, “[t]he claims of the subject
application do not recite that the ‘closure mechanisms’ are substantially
planar; rather, the claims recite that the strips of closure mechanisms are
substantially planar” and “[n]otably, the claims also recite that a plurality of
protrusions extend from [those] substantially planar strips.” Reply Br. 3; see
also Appeal Br. 10–13; id. at i, iv–v, viii–ix (Claims App.). To provide a
better understanding, Appellant presents an annotated version of Figure 1 of
the subject application, reproduced below.

Appellant’s annotated Figure 1 of the subject application “is a view of
a microstructure connecting mechanism according to an embodiment of the
Appeal 2019-003019
Application 14/208,429

6
invention in a disconnected position” illustrating planar top and bottom
strips 102, 104, respectively. Spec. ¶ 7; see also id. ¶ 14. As can be seen in
Appellant’s annotated version of Figure 1 of the subject application,
reproduced above, the strips of the subject application are both substantially
planar, in that both first strip 102 and second strip 104 are “substantially
planar” and that each strip (i.e., first strip 102 and second strip 104,
respectively) includes protrusions extending from the respective
substantially planar strip, as claimed. See In re Mraz, 455 F.2d 1069, 1072
(CCPA 1972) (“[T]hings patent drawings show clearly are [not] to be
disregarded.”).
Upon review of Appellant’s Specification and Figures, we agree with
Appellant that an ordinarily skilled artisan “would understand the metes and
bounds of the term ‘substantially planar’ in the context of a connecting/
closure mechanism, as in the claimed invention.” Appeal Br. 11. We
further agree with Appellant that the Examiner’s concern with respect to the
claimed first and second strips being “substantially planar” appears to relate
to the breadth of the claim, and is not a consideration of the possible
indefiniteness of the claim. Reply Br. 2; see also Final Act. 2; Ans. 13–14;
See SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed.
Cir. 2005) (breadth is not indefiniteness).
For these reasons, we do not sustain the Examiner’s rejection of
claims 1–23 for indefiniteness.

Appeal 2019-003019
Application 14/208,429

7
Obviousness over Hayes and Siegel
Claims 1–8, 11–18, 20, and 23
Claim 1 is directed to a connecting mechanism including “a pressure
sensitive adhesive provided in at least some of the grooves that are defined
by the protrusions extending from the first strip” and “the plurality of
protrusions extending from the surface of the second strip contacting the
pressure sensitive adhesive [of the first strip].” Appeal Br. i (Claims App.).
Independent claims 11 and 23 recite similar limitations. Id. at iv–v, viii–ix
(Claims App.). The Examiner finds that Hayes discloses the connecting
mechanism of claim 1 substantially as claimed except for the above listed
limitations. Final Act. 3–4; see also id. at 5–6. The Examiner looks to the
teachings of Siegel for these limitations. In particular, the Examiner finds
that “Siegel teaches the ability to have a package closure device including a
first and second strip (Figs. 3 and 9) including a pressure sensitive adhesive
(7/35/36/37) within a groove on a first strip,” wherein “an opposing
protrusion on a second strip contacts the adhesive when the strips are
brought together (Figs. 3 and 9).” Final Act. 4; see also id. at 6. The
Examiner reasons that it would have been obvious to an ordinarily skilled
artisan to incorporate the teachings of Siegel of a pressure sensitive adhesive
in some of the grooves of the first or second strips of Hayes’ device “in
order to contact the protrusions in a closed condition in order to further seal
open space between the strips as well as add an additional adhesion
component between the strips.” Final Act. 4; see also id. at 6.
Appellant contends that “[t]he Examiner’s conclusion as to the
obviousness of providing pressure sensitive adhesive to the device of
[Hayes] . . . would have been viewed by an artisan as impractical, and, in
Appeal 2019-003019
Application 14/208,429

8
fact, an arrangement that potentially would prevent the intended seal from
being formed.” Appeal Br. 18. In support of its contention, Appellant
presents experimental evidence provided in the declaration of Hootan Farhat
(“Farhat Declaration”) filed under 37 C.F.R. § 1.132 on August 14, 2017.6
See Appeal Br. 18–20. According to Appellant, “[t]he Farhat Declaration . .
. describes experiments wherein a pressure sensitive adhesive was applied to
a structure as disclosed in [Hayes], with the result being that the pressure
sensitive adhesive prevented the final nested position where the sheet
structures seal together as intended by [Hayes].” Id. at 18 (citing Farhat
Declaration ¶¶ 15–25).
Appellant has the better position. As an initial matter, we note that
Appellant presents experimental evidence of a comparison to the closest
prior art cited by the Examiner (i.e., Hayes, Siegel, and Mazurek). See e.g.,
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). In particular, the
Farhat Declaration states that “[i]n the experiments, polymeric sheets as
generally described at paragraph [0041] of [Hayes] were created,” that “[t]o
simulate the effect [] of providing a pressure sensitive adhesive to the
structure disclosed by [Hayes], a pressure sensitive adhesive was applied to
the experimental ridge and groove sheets,” and that the pressure sensitive
adhesive “[was] an acrylic polymer . . . [in] the same class as the pressure

6 Hootan Farhat is “one of the named inventors in the subject application.”
Farhat Declaration ¶ 2.
Appeal 2019-003019
Application 14/208,429

9
sensitive adhesives described at column 14, line 23 through column16, line
27 of [Mazurek].” Farhat Declaration ¶¶ 16, 17.7,8
The Farhat Declaration provides the following photos of the
experiments, reproduced below.

7 The Examiner relies on the teachings of Mazurek for the pressure sensitive
adhesive limitation of claims 9 and 19. Final Act. 10; see also Appeal Br.
iv, vii (Claims App.). Specifically, the Examiner finds that Mazurek
“teaches the ability to have an acrylic adhesive as well as the ability to be an
emulsion.” Final Act. 10 (citing Mazurek 14:53–15:14).
8 The Farhat Declaration notes that “[w]ith respect to th[e] choice of
pressure sensitive adhesive vis-à-vis the cited art, . . . [Hayes] does not
provide pressure sensitive adhesive to its closure mechanism, and that Siegel
does not name a specific pressure sensitive adhesive.” Farhat Declaration
¶ 17. Additionally, we note Siegel discloses that “[t]he adhesive fastener or
the adhesive closure tape are preferably made of the plastic polyethylene
LDPE. However, they can also be made of any other plastic, preferably the
same plastic material is used, from the existence of the bag or packaging or
its film or parts of this film.” Siegel ¶ 14.
Appeal 2019-003019
Application 14/208,429

10

The first photo above illustrates “one of the experimental ridge and groove
sheets with the added pressure sensitive adhesive.” Farhat Declaration ¶ 19;
see also id. ¶ 18. The second and third photos above illustrate the position at
which the ridges and grooves on the two experimental sheets are stuck
together due to the pressure sensitive adhesive, such that the ridges and
Appeal 2019-003019
Application 14/208,429

11
grooves do not move into a nested position. See id. ¶¶ 21, 22. In other
words, as pointed out in the Farhat Declaration, “the pressure sensitive
adhesive caused the experimental ridge and groove sheets to stick together
before the ridges were nested in the grooves.” Id. ¶ 21. Based on this
experimental evidence, the Farhat Declaration concludes that “[b]ecause the
experimental ridge and groove sheets could not be moved to the secure
engagement position described by [Hayes], that is, [because] the
experimental ridges and grooves were not nested together, an effective seal
was not formed between the experimental sheets.” Id. ¶ 23; see also Appeal
Br. 19.
Moreover, Appellant points out that “the Farhat Declaration also
describes another problem with adding a pressure sensitive adhesive to the
device disclosed by [Hayes]. With the additional adhesive, there would be a
tendency for the ridges/grooves on each sheet to adhere to adjacent
ridges/grooves on the same sheet.” Appeal Br. 19 (citing Farhat Declaration
¶¶ 24–25). The Farhat Declaration provides the following photo of the
phenomenon, reproduced below.

The photo above illustrates adhesion between adjacent ridges/grooves on the
same sheet as a result of pressure sensitive adhesive being applied to the
adjacent ridges/grooves. Farhat Declaration ¶¶ 24–25. Based on this
Appeal 2019-003019
Application 14/208,429

12
experimental evidence, the Farhat Declaration concludes that “[i]t is evident
that the adhesion between adjacent ridges/grooves would be highly
detrimental to the functionality of the closure mechanism of [Hayes]. Once
adjacent ridges/grooves on a sheet adhere to each other, those ridges/grooves
cannot be made to nest into the ridges/grooves on a second sheet.” Id. ¶ 25.
Rather than addressing the experimental evidence provided by
Appellant, the Examiner merely states that the claims require “a pressure
sensitive adhesive provided in at least some of the grooves” and takes the
position that adhesive “could be applied to all or some of the areas (A)”
depicted in the Examiner’s annotated version of Figure 1 of Hayes and that
adhesive provided in this manner “would meet the limitations of the claim[s]
and would not interfere with the function” of Hayes’ device. Ans. 18–19.
We find the Examiner’s position that applying a pressure sensitive
adhesive “would not interfere with the function” of Hayes’ device to be
speculative, particularly, given Appellant’s experiments utilized parameters
mirroring the closest cited prior art and the results obtained from those
experiments. Id.; see also Appeal Br. 20 (“[T]he Examiner has speculated as
to ways the pressure sensitive adhesive could have possibly been applied.”);
Farhat Declaration ¶¶ 15–25; Alza Corp. v. Mylan Labs., Inc., 464 F.3d
1286, 1290 (Fed. Cir. 2006) (Patentability determinations “should be based
on evidence rather than on mere speculation or conjecture.”). Additionally,
we agree with Appellant that upon review of the experimental evidence
provided in the Farhat Declaration, the ordinarily skilled artisan “would have
understood that the application of an adhesive would preclude the basic
functionality of the closure mechanism of [Hayes], namely, to nest the
Appeal 2019-003019
Application 14/208,429

13
grooves and ridges and thereby form a secure seal.” See Appeal Br. 18–20;
see also Reply Br. 6–7; Farhat Declaration ¶ 26.
In conclusion, after reviewing all the evidence before us, including the
totality of Appellant’s evidence, it is our conclusion that, on balance, the
evidence of obviousness discussed above does not outweigh the evidence of
nonobviousness submitted by Appellant and, accordingly, the subject matter
of claims 1, 11, and 23 would not have been obvious to one of ordinary skill
in the art within the meaning of 35 U.S.C. § 103(a) at the time Appellant’s
invention was made.
For these reasons, we do not sustain the Examiner’s rejection of
claims 1–8, 11–18, 20, and 23 as unpatentable over Hayes and Siegel.

Obviousness over Hayes, Siegel, and any of Mazurek, Borchardt, or Clarner
Claims 9, 10, 19, 21, and 22
The Examiner does not rely on the teachings of Mazurek, Borchardt,
or Clarner to remedy the deficiencies discussed above in the rejection of
claims 1 and 11, from which these claims respectively depend. See Final
Act. 10–13. Accordingly, for reasons similar to those addressed above in the
rejection of claims 1 and 11, we do not sustain the Examiner’s rejections of
claims 9, 10, 19, 21, and 22 as unpatentable over the various combinations
of cited prior art.

Appeal 2019-003019
Application 14/208,429

14
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–23 112, second
paragraph
Indefiniteness 1–23
1–8, 11–18,
20, 23
103(a) Hayes, Siegel 1–8, 11–18,
20, 23
9, 19 103(a) Hayes, Siegel,
Mazurek
9, 19
21 103(a) Hayes, Siegel,
Borchardt
21
10, 22 103(a) Hayes, Siegel,
Clarner
10, 22
Overall
Outcome
1–23

REVERSED