12993997 - (D) (P.T.A.B. Jul. 24, 2019)

Riccardo Palumbo

Patent Trials and Appeals BoardJul 24, 2019

12993997 - (D) (P.T.A.B. Jul. 24, 2019)

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. 12/993,997 11/22/2010 Riccardo Palumbo D-44227-01 1001 28236 7590 07/24/2019 Sealed Air Corporation Patent Department 2415 Cascade Pointe Boulevard Charlotte, NC 28208 EXAMINER TAWFIK, SAMEH ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 07/24/2019 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): patents@sealedair.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RICCARDO PALUMBO ____________________ Appeal 2019-000132 Application 12/993,997 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, JAMES P. CALVE, and LISA M. GUIJT, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims 1–6. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The real party in interest is Cryovac, Inc. App. Br. 2. Appeal 2019-000132 Application 12/993,997 2 CLAIMED SUBJECT MATTER The claims are directed to a method for vacuum skin packaging a product arranged in a tray. Claim 1, reproduced below, is the sole independent claim before us and is illustrative of the claimed subject matter2: 1. A vacuum skin packaging process comprising the steps of: providing a vacuum chamber comprising an upper portion opposing a lower tray-holding portion; placing in the lower tray-holding portion of the vacuum chamber a semi-rigid or rigid tray loaded with a product, the tray comprising a bottom wall, a circumferential side wall upwardly extending from the bottom wall and terminating in an outwardly projecting rim, the side wall comprising at least one hole; heating a film in contact with the upper portion of the vacuum chamber;- evacuating air from within the tray through the at least one hole while the film is in contact with the upper portion of the vacuum chamber; and introducing air to push the film from contact with the upper portion to contact the product and weld the film around the product to the whole of the inner surface of the tray not occupied by the product and to close the at least one hole in the side wall. REJECTION Claims 1–6 are rejected under 35 U.S.C. § 102(b) as being anticipated by Fisher (US Patent No. 4,933,193 iss. June 12, 1990). 2 Appellant relies heavily on amendments to the disclosure to demonstrate support for the claimed subject matter. App. Br. 2–3. No issues concerning new matter or descriptive support are presently before us for review. Appeal 2019-000132 Application 12/993,997 3 OPINION The Examiner’s anticipation rejection is predicated on the following finding: Inherently, by placing the film on the skin packaging machine as suggested by ’193, the film will be “in contact with the upper portion” of the machine while being heated, which meets the claimed limitation “heating a film in contact with the upper portion of the vacuum chamber”. Ans. 3. However, there is no supporting evidence or technical reasoning of record to demonstrate that simply placing a film in a packaging machine that relies on vacuum pressure to seal a product in a tray will cause the film to be in contact with the upper portion of the vacuum chamber when it is heated as required by claim 1. The Examiner attempts to account for this deficiency by relying on additional evidence, Swick (US 3,371,464 iss. Mar. 5, 1968), incorporated by reference into Fisher, but not previously relied upon by the Examiner, without following the procedures for doing so of 37 C.F.R. § 41.39(a)(2). In any case, the Examiner’s general citation to Swick that does not point out specifically how Swick satisfies the claim language in question is unavailing. Reply Br.3 2–3. Swick relies on open frames 25, 26 to grip the sheet material 19. Swick col. 3, ll. 4–7. A vacuum box 21 is disposed under the sheet. As the product 85 can be seen from Figure 2 of Swick, there does not appear to be any element, particularly any element of a vacuum chamber, disposed over or otherwise contacting the sheet 19 as required by claim 1. 3 The Reply Brief, which was filed on September 10, 2018, is incorrectly identified as an Appeal Brief in the Image File Wrapper. Appropriate correction should be made. Appeal 2019-000132 Application 12/993,997 4 “[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be entitled to a patent unless,’ concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103.” In re Warner, 379 F.2d 1011, 1016 (CCPA 1967). The Patent Trial and Appeal Board is primarily a tribunal of review. See Ex parte Frye, 94 USPQ2d 1072, 1075–1077 (BPAI 2010) (precedential). For that review to be meaningful it must be based on some concrete evidence in the record to support the Examiner’s factual findings and legal conclusions. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). A rejection must be set forth in a sufficiently articulate and informative manner as to meet the notice requirement of § 132, such as by identifying where or how each limitation of the rejected claims is met by the prior art references. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.”); Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) (PTO must create a record that includes “specific fact findings for each contested limitation and satisfactory explanations for such findings.”). It is neither our place, nor Appellant’s burden, to speculate as to the basis for rejecting claims. In re Stepan Co., 660 F.3d 1341, 1345 (Fed. Cir. 2011) (it is the PTO’s obligation to provide timely notice to the applicant of all matters of fact and law asserted.) Appeal 2019-000132 Application 12/993,997 5 On the record before us the Examiner has not established that claim 1 or those claims depending therefrom are anticipated by Fisher, with or without placing any reliance on Swick. DECISION The Examiner’s rejection is reversed. REVERSED