Thomas Jalowiec

Patent Trials and Appeals Board

Aug 11, 2021

2020004493 (P.T.A.B. Aug. 11, 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.
15/627,802 06/20/2017 Thomas Walter Jalowiec 16939-DIV 9847
90042 7590 08/11/2021
Melcher Patent Law PLLC
1101 Connecticut Ave. N.W.
Suite 450
Washington, DC 20036
EXAMINER
GOLIGHTLY, ERIC WAYNE
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
08/11/2021 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):
melcher@melcherpatentlaw.com
melcherlaw@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS WALTER JALOWIEC
Appeal 2020-004493
Application 15/627,802
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
HASTINGS, 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 1–3, 5 and 6.2 See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 “the inventor”.
Appeal Br. 1.
2 The Examiner indicated dependent claim 4 would be allowable if rewritten
in independent form (Final Act. 5).
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Application 15/627,802

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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An insulation collection bag constructed to collect insulation
from a building comprising:
a sheet of non-porous, heat-sealable, plastic having a heat
sealed seam and defining an enclosed space in the bag;
a plurality of inlets spaced out along a top of the bag
constructed and sized to connect the enclosed space to an exit
hose of a vacuum device so that the exit hose can be connected
to different inlets to fill different parts of the bag with the
insulation and any sharp objects enter the bag in a direction
towards a bottom of the bag so that the sharp objects strike the
insulation present in the bag and/or the bottom of the bag; and
a filter connected to the bag constructed to allow air to
solely escape the enclosed space through the filter.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Natale US 4,812,700 Mar. 14, 1989
Wall US 7,195,678 B1 Mar. 27, 2007
Edwards US 2010/0282083 A1 Nov. 11, 2010

REJECTIONS
Claims 1–3 and 6 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined prior art of Wall and Natale. Final Act. 3.
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combined prior art of Wall, Natale, and Edwards. Final Act. 4.

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OPINION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions as set forth in the Appeal Brief and the
Reply Brief, we determine that Appellant has not identified reversible error
in the Examiner’s rejections (see generally Ans.). In re Jung, 637 F.3d
1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice
of requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejection for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
Appellant’s arguments focus on the use of the recited bag for
collecting insulation from an attic, and argues that (1) no one would have
looked to the “glove” bags of Wall or Natale3 for this purpose (Appeal Br.
4), (2) that the Wall bag is sealed to a pipe and is under vacuum pressure
with clean air entering the bag via the filter versus the present bag is
intended to be connected to the outlet of a vacuum hose with air exiting via
the filter (Appeal Br. 6–8), and (3) that the large opening(s) in both Wall and
Natale to allow a pipe inspection port to be installed therein and/or a pipe to
be contained therein would not have met the claim requirement of “a filter
connected to the bag constructed to allow air to solely escape the enclosed
space [of the bag] through the filter” (Appeal Br. 11–12). These arguments
are reiterated in the Reply Brief. These arguments are not persuasive of
reversible error in the Examiner’s rejection for reasons given by the

3 Natale is mainly used to exemplify that making a containment bag for
insulation (e.g., Wall’s bag) of non-porous plastic (e.g., polyethylene) and
heat-sealing any seams was known (Final Act. 3; Natale col. 4, ll. 38–56).
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Application 15/627,802

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Examiner (Ans. 3–7). These arguments also do not take into account the
applied prior art as a whole and the inferences one of ordinary skill in the art
would have made therefrom.
Notably, it is well established that when there is a reason to conclude
that the structure of the prior art is capable of performing the claimed
function, the burden shifts to the applicant to show that the claimed function
patentably distinguishes the claimed structure from the prior art structure.
See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellant’s
contention that the Examiner’s position is improper because no one would
have used the bag of Wall/Natale for collecting insulation in the manner
recited in claim 1 appears misdirected, since the Examiner’s position was
premised on the bag of the applied prior art being capable of the recited
function(s) (Ans. generally). Attorney’s arguments in a brief cannot take the
place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
While we appreciate Appellant’s argument that the larger opening in
the bag of Wall (or Natale) may allow insulation to escape when the bag is
used as Appellant intends, the Appellant has not provided any persuasive
reasoning or credible evidence to refute the Examiner’s determination that
one of ordinary skill in the art would have taped any opening shut if it were
not needed in use (e.g., Ans. 5, 7). Indeed, Appellant’s Specification teaches
that the inlet holes that are not needed may be taped shut (Spec. ¶ 37). Wall
also teaches that holes may be taped shut to prevent accidental release of
asbestos insulation (e.g., Wall col. 8, ll. 37–40). Thus, even assuming
Appellant’s claim interpretation were adopted that air would only be allowed
to escape via the filter, the bag of Wall/Natale would have met this
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requirement, since any unneeded openings for the task at hand could be
taped shut.4
Finally, these arguments do not take into account the applied prior art
as a whole and the inferences one of ordinary skill in the art would have
made therefrom. These arguments are not sufficient to overcome the
Examiner’s implicit determination that one of ordinary skill, using no more
than ordinary creativity, could have used the known Wall/Natale bag for any
insulation collection and would have closed any holes not needed for the
task at hand. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“the
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.”); see also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir.
1992) (a reference stands for all of the specific teachings thereof as well as
the inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom). Appellant has not come forward with adequate
evidence that the Examiner erred in characterizing the references or in
concluding that the claimed combination of familiar elements for known
purposes would have been obvious. Ball Aerosol & Specialty Container,
Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (Under the
flexible inquiry set forth by the Supreme Court, the PTO must take account

4 Claim 1 uses the open-ended term “comprising” as well as recites “a
plurality of inlets” and thus the claimed bag may have unlimited openings.
It thus appears any openings not in use must be taped shut or otherwise
closed off in order to meet the claim requirement for air to solely escape
through the filter.
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of the “inferences and creative steps,” or even routine steps, that an ordinary
artisan would employ).
Appellant does not present any further arguments towards the
rejection of claim 5 (Appeal Br. 12).
Accordingly, the Examiner’s § 103 rejections are affirmed with
respect to all of the claims on appeal.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6 103 Wall, Natale 1–3, 6
5 103 Wall, Natale,
Edwards
5
Overall
Outcome
1–3, 5, 6

TIME PERIOD FOR RESPONSE
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