Mondi Jackson, Inc.Download PDFPatent Trials and Appeals BoardMay 21, 20202019006403 (P.T.A.B. May. 21, 2020) Copy Citation 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. 14/930,858 11/03/2015 Gene WILLIAMSON 30965 3123 535 7590 05/21/2020 KF ROSS PC 311 E York St Savannah, GA 31401-3814 EXAMINER ATTEL, NINA KAY ART UNIT PAPER NUMBER 3734 NOTIFICATION DATE DELIVERY MODE 05/21/2020 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): savannah@kfrpc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GENE WILLIAMSON and CAROLYN KELLER ____________ Appeal 2019-006403 Application 14/930,858 Technology Center 3700 ____________ Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and SEAN P. O’HANLON, Administrative Patent Judges. O’HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 13–29.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. In explaining our Decision, we refer to the Specification filed November 3, 2015 (“Spec.”), the Final Office Action mailed July 26, 2018 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party-in-interest as Mondi Jackson, Inc. Appeal Br. 1. 2 Claims 1–12 are canceled. Appeal Br. 2. Appeal 2019-006403 Application 14/930,858 2 (“Final Act.”), the Appeal Brief filed March 7, 2019 (“Appeal Br.”) and the Examiner’s Answer mailed June 24, 2019 (“Ans.”). SUMMARY OF THE INVENTION Appellant’s claimed invention relates to a bag having dual- compartments. Spec. 1:3–4. Claim 13, the sole independent claim, is reproduced below from page 16 (Claims Appendix) of the Appeal Brief: 13. A dual-compartment bag comprising: similar front and back panels each having a pair of generally parallel and vertical longitudinal edges and top and bottom edges between respective upper and lower ends of the respective longitudinal edges, the panels having inner faces turned toward each other and outer faces turned away from each other; a transversely extending cross weld connecting the front panel and the back panel and forming therebetween an upper compartment above the cross weld and a lower compartment below the cross weld; an upper reclosable fastener having interlocking profile strips at the top edges of the upper compartment and forming an upper reclosable removal opening between the front panel and the back panel giving access to the upper compartment; a lower reclosable fastener of different functionality than the upper fastener and having interlocking profile strips extending in the transverse direction on the inner face of the front panel at the lower compartment across the front panel and at a spacing above the bottom edges, the front panel being openable at the lower fastener to give access through the front panel to the lower compartment; and respective longitudinally extending side gussets connecting the longitudinal edges of the front panel to the longitudinal edges of the back panel. Appeal 2019-006403 Application 14/930,858 3 REFERENCES The Examiner relies on the following prior art references in rejecting the claims on appeal: Wedi US 2003/0210837 A1 Nov. 13, 2003 Simon US 2008/0175520 A1 July 24, 2008 McGruder US 2009/0034885 A1 Feb. 5, 2009 Brauer US 2011/0268372 A1 Nov. 3, 2011 Roesink3 EP 1 913 826 A1 Apr. 23, 2008 REJECTIONS I. Claims 25, 26, 28, and 29 stand rejected under 35 U.S.C. § 112(b) as being indefinite. II. Claims 13–22 and 24–29 stand rejected under 35 U.S.C. § 103 as being unpatentable over Simon, McGruder, Roesink, and Wedi. III. Claim 23 stands rejected under 35 U.S.C. § 103 as being unpatentable over Simon, McGruder, Roesink, Wedi, and Brauer. ANALYSIS Rejection I – Indefiniteness Appellant does not address the rejection of claims 25, 26, 28, and 29 under 35 U.S.C. § 112(b) as being indefinite. See Appeal Br. 8–14 (presenting arguments only as to the rejections of claims 13–29 under 35 U.S.C. § 103); Final Act. 2–3. Accordingly, we summarily sustain this rejection. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without consideration of the 3 Citations herein to Roesink refer to the machine-generated English translation made of record with the Final Action. See Non Patent Literature (dated July 26, 2018). Appeal 2019-006403 Application 14/930,858 4 substantive merits is appropriate where an appellant does not contest a ground of rejection); see also 37 C.F.R. § 41.31(c) (2018) (“An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office.”). Rejection II – Obviousness based on Simon, McGruder, Roesink, and Wedi In contesting this rejection, Appellant presents arguments for independent claim 13 and does not separately argue dependent claims 14–22 and 24–29. See Appeal Br. 8–14. We select claim 13 as representative, and claims 14–22 and 24–29 stand or fall with claim 13. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Simon teaches a dual compartment bag comprising most of the limitations recited in claim 13. Final Act. 4 (citing Simon ¶¶ 15–22, Figs. 1–4). The Examiner finds that Simon “fails to teach the transversely extending connection being a transversely extending cross weld, wherein the cross weld is formed with the transversely throughgoing weakened tear line.” Id. However, the Examiner finds that McGruder teaches an analogous bag comprising front and back panels having a transversely extending connection that forms an upper compartment and a lower compartment, wherein each of the upper and lower compartment[s] comprise[s] a reclosable fastener and wherein each of the upper and lower compartment[s] [is] capable of being separated from each other along a line of weakness. McGruder further teaches that it is known and desirable in the prior art to provide a transversely extending connection that comprises a cross weld having weakened tear lines in order to ensure that the upper and lower compartments are completely sealed while also ensuring that Appeal 2019-006403 Application 14/930,858 5 the upper and lower compartments are capable of being easily separated as desired. Id. at 4–5 (citing McGruder ¶¶ 1–12, 15–26, Fig. 1). The Examiner determines that it would have been obvious to modify the transversely extending connection and the transversely throughgoing weakened tear line of Simon to alternatively comprise a transversely extending cross weld having a throughgoing weakened tear line formed therein, as taught by McGruder, in order to ensure that the upper and lower compartments are completely sealed while also ensuring that the upper and lower compartments are capable of being easily separated as desired. Id. at 5 (citing Simon ¶¶ 1–12, 15–26, Fig. 1). The Examiner finds that “Simon fails to teach the lower reclosable fastener having a different functionality than the upper fastener and being configured such that the front panel is openable at the lower fastener to give access through the front panel to the lower compartment.” Final Act. 5. However, the Examiner finds that Roesink teaches an analogous dual-compartment bag comprising a transversely extending cross weld defining an upper compartment having an upper reclosable fastener above the cross weld and a lower compartment having a lower reclosable fastener below the cross weld. Roesink further teaches that it is known and desirable in the prior art to configure the lower reclosable fastener to be accessible through the front panel such that the front panel is openable at the lower fastener to give access through the front panel to the lower compartment and such that the lower fastener has a different functionality than the upper fastener. Id. at 5–6 (citing Roesink ¶¶ 1–21, Figs. 1–3). The Examiner determines that it would have been obvious to modify Simon by replacing the lower reclosable fastener with the lower reclosable fastener as taught by Roesink, such that the front Appeal 2019-006403 Application 14/930,858 6 panel is openable at the lower fastener to give access through the front panel to the lower compartment and such that the lower fastener has a different functionality than the upper fastener, in order to provide a dual compartment bag with a lower compartment that is accessible when the upper and lower compartments are connected. Id. at 6. The Examiner also finds that Simon fails to teach longitudinally- extending side gussets. Final Act. 6. However, the Examiner finds that Wedi teaches a packaging bag forming a reclosable compartment having interlocking profile strips at top edges of the compartment and further teaches that it is known and desirable in the prior art to configure reclosable bags with respective longitudinally extending side gussets connecting longitudinal edges of a front panel to longitudinal edges of a back panel, wherein the side gussets end at a spacing from upper edges of the panels and wherein at least one of the profile strips has a connecting section and a connecting lip adjacent thereto such that upper ends of the side gussets are closed by the connecting lip. Id. at 6–7 (citing Wedi ¶¶ 3–17, Figs. 1–4). The Examiner determines that it would have been obvious to modify Simon by configuring the bag to additionally comprise respective longitudinally extending side gussets connecting the longitudinal edges of the front panel to the longitudinal edges of the back panel, wherein the side gussets end at a spacing from the upper edges of the panels and wherein at least one of the profile strips of the upper reclosable fastener has a connecting section and a connecting lip adjacent thereto such that upper ends of the side gussets are closed by the connecting lip, as taught by Wedi, in order to provide the bag with greater filling capacity while also effectively providing a reclosable closure device. Id. at 7. Appeal 2019-006403 Application 14/930,858 7 Appellant first argues that Simon does not disclose “[t]hat the fasteners have profile strips.” Appeal Br. 11. The Examiner responds that Simon teaches “a variety of resealable closures for top edges (26, 28), including respective beads (29) extending at or near the top edges, and that after food is placed within the storage compartments/areas the corresponding beads are sealed.” Ans. 4 (citing Simon ¶¶ 7, 15, 17, 19). The Examiner takes the position that Simon’s “beads define a profile.” Id. Simon discloses that “food storage areas 23, 25 include respective beads 29 extending at or near top edges 26, 28” and “[f]ood is placed within compartments 23, 25 . . . and the operation is completed by sealing the corresponding beads 29.” Simon ¶¶ 17, 19. Appellant’s argument does not persuasively refute the Examiner’s position, which is supported by Simon, and, thus, does not apprise us of error. Appellant next argues that Simon does not disclose “[t]hat the two fasteners have different functionality.” Appeal Br. 11. We are not persuaded by this argument because, as discussed above, the Examiner does not rely on Simon for teaching that the lower reclosable fastener has different functionality than the upper reclosable fastener. See Final Act. 5. Rather, the Examiner relies on Roesink for disclosing a lower reclosable fastener of a bag having different functionality than an upper reclosable fastener of the bag. Id. at 5–6; see also Ans. 5 (explaining that “Simon was not . . . relied on or intended to teach the upper and lower reclosable fasteners having different functionality”). Thus, Appellant’s argument against Simon individually is unpersuasive of error because the rejection is based on the combined teachings of Simon and Roesink. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by Appeal 2019-006403 Application 14/930,858 8 attacking references individually where, as here, the rejections are based on combinations of references.”). We note that Appellant acknowledges that “Roesink describes two fasteners of different functionality.” Appeal Br. 12. Appellant next argues that Simon does not disclose “[t]hat the profile strips are attached to the first and back panels in the top fastener and that the profile strips are attached only to the front panel in the second fastener.” Appeal Br. 11–12; see also id. at 13–14 (asserting that “none of the publications discloses a front reclosable fastener in which the two profile strips are attached only to the front panel”). This argument is unpersuasive because it is not commensurate with the scope of claim 13. Claim 13 recites, in relevant part, an upper reclosable fastener having interlocking profile strips at the top edges of the upper compartment and forming an upper reclosable removal opening between the front panel and the back panel giving access to the upper compartment; a lower reclosable fastener of different functionality than the upper fastener and having interlocking profile strips extending in the transverse direction on the inner face of the front panel at the lower compartment across the front panel. Appeal Br. 16 (Claims App.). In other words, the claim requires upper and lower reclosable fasteners with interlocking profile strips. The upper fastener forms a reclosable opening between the front and back panels, and the lower fastener extends in the transverse direction across the inner face of the front panel. The claim does not recite that the upper reclosable fastener is “attached” to the front and back panels or that the lower reclosable fastener profile strips are “attached only to the front panel,” as asserted by Appellant. Id. at 11–12. Limitations not appearing in the claim cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA Appeal 2019-006403 Application 14/930,858 9 1982) (“Many of appellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Appellant next argues that Simon does not disclose “[t]hat there are side gussets.” Appeal Br. 12. This argument is unpersuasive because the Examiner relies on Wedi, not Simon, for disclosing side gussets. See Final Act. 6–7 (citing Wedi ¶¶ 3–17, Figs. 1–4); Ans. 8. Appellant’s argument against Simon individually is not responsive to the rejection as presented, which is based on a combination of reference teachings. See Keller, 642 F.2d at 426. Thus, Appellant does not apprise us of error. Appellant next argues that McGruder “shows a multicompartment bag” in which “[a]ll [of] the fasteners . . . are identical” and for which “[t]here is no access of the lower compartment through the front panel.” Appeal Br. 12. This argument is unpersuasive because the Examiner relies on Roesink, not McGruder, for disclosing fasteners having different functionality and accessing the lower compartment through the front panel. See Final Act. 5–6; Ans. 9. Appellant’s arguments against McGruder individually are not persuasive to show error in the rejection based on the combined teachings of the cited references. Appellant next argues that Roesink does not disclose “the system of claim 13 ‘having interlocking profile strips extending in the transverse direction on the inner face of the front panel at the lower compartment.’ Instead one of the profile strips 21 is on the front panel 12 and the other strip 20 to the rear panel 13.” Appeal Br. 12. The Examiner explains that, “while one of [Roesink’s] fastener strips (20) is attached (26, 27) to the rear panel (13), the fastener strip (20) is also attached (27) to the front panel (12).” Ans. 9 (citing Roesink, Figs. 1–3). Appellant does not persuasively refute Appeal 2019-006403 Application 14/930,858 10 the Examiner’s position, and, therefore, does not apprise us of error. We note that the Specification explains that “profile strip,” as used in claim 13, includes the connecting lip in addition to the connecting section. See, e.g., Spec. 11:9–12, Fig. 3A. Appellant next argues that Wedi “in no way relates to a bag as defined in claim 13 having one slide fastener at an upper edge and between the front and back panels and another slide fastener wholly on the front panel and of different functionality.” Appeal Br. 13. This argument is unpersuasive because, as discussed above, the Examiner relies on Roesink, not Wedi, for disclosing fasteners having different functionality. See Final Act. 5–6. Appellant’s argument against Wedi individually is not persuasive to show error in the rejection based on the combined teachings of the cited references. Moreover, Appellant’s argument is not commensurate with the scope of claim 13, which does not recite a slide fastener, much less one that is wholly on the front panel. See Appeal Br. 16 (Claims App.). Finally, Appellant argues that “[a] person skilled in the art would . . . have no reason to combine the individual documents with each other.” Appeal Br. 13. In particular, Appellant asserts that “Simon describes a bag that is to be produced in an especially cost-effective manner and is marketed in a dispenser in the form of a continuous roll.” Id. According to Appellant, it does not appear expedient to deviate from what is really the basic idea of Simon and to provide two different functionalities for the first and the second fasteners. This appears even more inconvenient if side gussets are also provided according to Wedi, since a person skilled in the art then also has to think about how the individual fasteners will be attached to the bag. Id. This argument is unpersuasive because, even if modifying Simon’s bag to include upper and lower fasteners with different functionality and side Appeal 2019-006403 Application 14/930,858 11 gussets would be inconvenient or less cost-effective, our reviewing court has recognized that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Moreover, Appellant does not proffer any factual evidence or persuasive technical reasoning to show that modifying Simon’s bag to have side gussets and different-functionality upper and lower fasteners would have been beyond the level of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). For the above reasons, Appellant does not apprise us of error in the Examiner’s determination that the subject matter of claim 13 would have been obvious. Accordingly, we sustain the rejection of claim 13, and claims 14–22 and 24–29 falling therewith, as unpatentable over Simon, McGruder, Roesink, and Wedi. Rejection III – Obviousness based on Simon, McGruder, Roesink, Wedi, and Brauer In contesting the rejection of claim 23, Appellant acknowledges that “Brauer . . . discloses a laminate used in a bag,” but argues that Brauer does Appeal 2019-006403 Application 14/930,858 12 not disclose a “two-compartment bag . . . with two different fasteners.” Appeal Br. 14. As the features noted by Appellant appear in claim 13, we understand Appellant’s statement to rely on the arguments advanced for the patentability of claim 13. For the reasons discussed above, Appellant’s arguments fail to apprise us of error in the rejection of claim 13, and, likewise, fail to apprise us of error in the rejection of claim 23, which depends from claim 13. Accordingly, we sustain the rejection of claim 23 as unpatentable over Simon, McGruder, Roesink, Wedi, and Brauer. CONCLUSION In summary, Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 25, 26, 28, 29 112(b) Indefiniteness 25, 26, 28, 29 13–22, 24–29 103 Simon, McGruder, Roesink, Wedi 13–22, 24–29 23 103 Simon, McGruder, Roesink, Wedi, Brauer 23 Overall Outcome 13–29 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation