TNA AUSTRALIA PTY LIMITED

Patent Trials and Appeals Board

Dec 4, 2020

2019004596 (P.T.A.B. Dec. 4, 2020)

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.
13/692,937 12/03/2012 Alfred Alexander TAYLOR 068559-008300US-0858802 3866
20350 7590 12/04/2020
Kilpatrick Townsend & Stockton LLP - West Coast
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
WITTENSCHLAEGER, THOMAS M
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
12/04/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALFRED ALEXANDER TAYLOR
____________

Appeal 2019-004596
Application 13/692,937
Technology Center 3700
____________

Before BENJAMIN D. M. WOOD, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.

WARNER, 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, 3–7, and 11–19, which are all the
pending claims. See Appeal Br. 1; Non-Final Act. 1 (Office Action
Summary). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
An oral hearing was held on July 23, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as TNA
Australia Pty Limited. Appeal Br. 3.
Appeal 2019-004596
Application 13/692,937

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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates to “former shoulders employed
in the packaging industry to deliver tubular bag material to packaging
machines which form bags of product.” Spec. ¶ 1. Claim 1, reproduced
below, is the sole independent claim and is representative of the subject
matter on appeal.
1. A former shoulder for a packaging machine, the former
shoulder being configured to receive a strip of film bag material
and to configure the strip of film bag material into tubular bag
material, the former shoulder having a generally upright central
axis and comprising:
an external surface over which the strip of film bag
material is to pass upwardly to be configured into the tubular
bag material, the external surface extending upwardly and
surrounding an aperture through which the axis passes with the
aperture configured for product to be delivered through the
aperture, the external surface facing outwardly away from the
central axis;
an internal surface inclined relative to said axis so as to
extend upwardly and toward said axis, and surrounding and in
direct communication with a cavity through which the tubular
bag material passes, the internal surface facing inwardly toward
the central axis; and
a heater fixed to the internal surface and positioned to
heat the outwardly facing external surface to in turn heat the
strip of film bag material passing over the outwardly facing
external surface prior to being configured into tubular bag
material.

Appeal 2019-004596
Application 13/692,937

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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Xiao US 2006/0163240 A1 July 27, 2006
Tada US 7,114,307 B2 Oct. 3, 2006
Taylor US 7,152,387 B2 Dec. 26, 2006

REJECTIONS
The following rejections are before us for review:
I. Claims 1, 3–7, and 11–19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Taylor and Tada.
Non-Final Act. 3–7.
II. Claims 1, 3–7, and 11–19 also stand alternatively rejected under
35 U.S.C. § 103(a) as being unpatentable over Taylor, Tada,
and Xiao. Id. at 7–12.

ANALYSIS
All the claims require a former shoulder for a packaging machine,
where the former shoulder includes an external surface (over which a strip of
film bag material passes upwardly and is thereby configured into tubular bag
material), an internal surface (in communication with a cavity through which
the tubular bag material passes), and a heater. See Appeal Br., Claims App.
In particular, the claimed heater must be “fixed to the internal surface [of the
former shoulder] and positioned to heat the outwardly facing external
surface [of the former shoulder] to in turn heat the strip of film bag material
passing over the outwardly facing external surface prior to being configured
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Application 13/692,937

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into tubular bag material.” Id. (emphasis added). Stated another way, the
claims specifically require the recited heater to be positioned on the internal
surface of the former shoulder so as to indirectly heat the strip material as it
passes over the external surface of the former shoulder, before the strip
material is configured into tubular material.
In rejecting all the claims, for both Rejections I and II, the Examiner
relies on a combination of teachings from Taylor (for the structure of a
former shoulder) and Tada (for a heater). See Non-Final Act. 3–12. As the
requisite articulated reasoning for combining Taylor with Tada, the
Examiner states that it would have been obvious “to have modified the
former shoulder of Taylor by incorporating a heater as taught by Tada in
order to preheat the film material and allow the packaging rate to increase.”
Id. at 4. The Examiner further states that this combination “would result in a
heater fixed to the internal surface of Taylor since the film does not pass
over that surface.” Id.
Appellant persuasively argues, however, that “Tada does not disclose
an external surface” as recited in the claims, such that “the assertion that the
heater of Tada would be combined with Taylor at the location recited . . . is
based on hindsight reasoning.” Appeal Br. 10 (emphasis added). Further,
Appellant explains that the location of Tada’s heater “is specific to the
configuration of the folded film and the location of the sealing after the
pre-heating” in that reference, which is downstream of the stages of
processing by the forming member in Taylor. Id.; see also id. at 7–9; Reply
Br. 2–4 (discussing Tada’s lack of a former shoulder and the placement of
Tada’s heater as being downstream of any analogous forming member, such
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Application 13/692,937

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that a reason to place a heater on a former shoulder as claimed is not found
in Tada).2
In short, we agree with Appellant’s hindsight argument that the
rejections do not sufficiently explain an objective reason why a person of
ordinary skill in the art would have combined these separate teachings to
place Tada’s heater on a former shoulder in the manner claimed without
impermissibly using Appellant’s disclosure as a roadmap. See Appeal
Br. 9–10; Reply Br. 3–4.
In other words, the Examiner has not sufficiently articulated reasoning
based on rational underpinnings as to why one skilled in the art would have
been prompted to combine the teachings of Taylor and Tada in the manner
proposed to place a heater on a former shoulder as claimed. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (stating that “[r]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))). Here, in response to
Appellant’s arguments, the Examiner simply reiterates the conclusion and
notes that the combination would not rely on teachings from Appellant’s
disclosure “as one of ordinary skill in the art would have modified the
former shoulder of Taylor by incorporating a heater as taught by Tada in
order to preheat the film material and allow the packaging rate to increase.”

2 With respect to Rejection II, we note that Xiao’s general teaching of
indirect heating is not relied on to address any suggestion as to a placement
for a heater relative to a former shoulder in a packaging machine. See
Non-Final Act. 9.
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Application 13/692,937

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Ans. 15. But, as discussed above, we agree with Appellant that “the
references do not disclose any placement locations of a heater on a former
shoulder,” such that the Examiner’s suggestion of doing so (including the
notion that a heater could only be placed on Taylor’s former shoulder on
either the external surface or the internal surface thereof, which presupposes
placement on the former shoulder initially (see Ans. 14)) “was gleaned from
Appellant’s own disclosure and is therefore impermissible hindsight.”
Reply Br. 4.
Rejections based on obviousness must rest on a factual basis; in
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). Absent improper hindsight
reconstruction, we do not see a sufficient reasoned explanation based on a
rational underpinning as to why one of ordinary skill in the art would have
been led to modify Taylor’s former shoulder to include Tada’s heater
positioned as claimed, and a reason for such modification is not otherwise
evident from the record.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a sustainable case of obviousness. On this basis,
we do not sustain the rejections.

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Application 13/692,937

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DECISION
We REVERSE the Examiner’s decision rejecting claims 1, 3–7,
and 11–19 under 35 U.S.C. § 103(a) as being unpatentable over Taylor and
Tada.
We REVERSE the Examiner’s decision rejecting claims 1, 3–7,
and 11–19 under 35 U.S.C. § 103(a) as being unpatentable over Taylor,
Tada, and Xiao.

CONCLUSION
In summary:

Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7,
11–19 103(a) Taylor, Tada
1, 3–7,
11–19
1, 3–7,
11–19 103(a) Taylor, Tada, Xiao
1, 3–7,
11–19
Overall
Outcome
1, 3–7, 11–19

REVERSED