Wintz, Trevor et al.

Patent Trials and Appeals Board

Nov 4, 2019

14776061 - (D) (P.T.A.B. Nov. 4, 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.
14/776,061 09/14/2015 Trevor Wintz B372.0071US1 5983
27367 7590 11/04/2019
WESTMAN CHAMPLIN & KOEHLER, P.A.
SUITE 1100
121 South Eighth Street
MINNEAPOLIS, MN 55402
EXAMINER
WITTENSCHLAEGER, THOMAS M
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/04/2019 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):
docketing@wck.com
tsorbel@wck.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TREVOR WINTZ and DAVID SCHILLER

Appeal 2019-002065
Application 14/776,061
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and
LISA M. GUIJT, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appellant, Bedford Industries, Inc.,1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1–8, 10, 15, 17–19, 21,
and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant is the applicant pursuant to 37 C.F.R. § 1.42(b) and identifies
itself as the sole real party in interest. Appeal Br. 1.
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Application 14/776,061

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STATEMENT OF THE CASE
The Specification
The Specification’s disclosure relates to a bundling article for
collectively attaching items together, such as bottled products. Spec. ¶¶1–2.
The Claims
Claims 1–8, 10, 15, 17–19, 21, and 22 are rejected. Final Act. 1. No
other claims are pending. Id. Claims 1 and 15 are independent. Claim 1 is
illustrative and reproduced below.
1. A bundling article including:
a panel of a flexible sheet material defining a first panel
opening;
a first elastomer element including:
at least one bonded portion that is cohered to the panel;
and
a first inner portion extending inward from the at least
one bonded portion, wherein the first inner portion is not
bonded to the panel, and wherein the first inner portion overlays
the first panel opening and defines a first aperture having
dimensions that are smaller than respective dimensions of the
first panel opening; and
a second elastomer element including:
at least one bonded portion that is cohered to the panel;
and a second aperture.
Appeal Br. 11.
The Examiner’s Rejections
The rejections before us are:
1. claims 1–6, 10, 15, 21, and 22, under pre-AIA 35 U.S.C.
§ 102(b), as being anticipated by Guenther2 (Final Act. 3);

2 US 3,884,354, issued May 20, 1975 (“Guenther”).
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2. claims 7, 17, and 18, under pre-AIA 35 U.S.C. § 103(a), as
being unpatentable over Guenther and Weaver3 (id. at 6); and
3. claims 8 and 19, under pre-AIA 35 U.S.C. § 103(a), as being
unpatentable over Guenther and Marco4 (id. at 8).
DISCUSSION
Rejection 1
Appellant argues the rejection of these claims together. Appeal Br. 6–
8. We select claim 1 as representative, with claims 2–6, 10, 15, 21, and 22
standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1 recites “a first elastomer element” and “second elastomer
element.” Appeal Br. 11. At the time of the Final Action, claim 1 recited
that each of these elastomer elements includes “at least one bonded portion
that is bonded to the panel.” See Claims filed April 13, 2018 (emphasis
added). The Examiner found that Guenther’s retainers 5 (the asserted
elastomer elements) are “in contact with” Guenther’s carrier 1 (the asserted
panel) and that each retainer “is pressed down into the panel by the crown”
of a bottle. Final Act. 3, 9 (both citing Guenther Fig. 2). The Examiner
construed the term “bond” to mean “to join two materials together,” and
found that the above-described Guenther arrangement met the claim
language. Final Act. 9.
Appellant then amended claim 1 to recite that the elastomer elements
each include “at least one bonded portion that is bonded cohered to the
panel.” See Claims filed June 20, 2018. The Examiner entered the
amendment but maintained the rejection, having determined that the

3 US 2006/0118432 A1, published June 8, 2006 (“Weaver”).
4 US 2003/0192788 A1, published Oct. 16, 2003 (“Marco”).
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Application 14/776,061

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amendment did “not change the scope of the claims.” Advisory Action filed
July 17, 2018.
The Specification as filed does not use the terms “cohere” or
“cohered.” Appellant, however, cites two dictionary definitions:
According to the Random House Unabridged Dictionary,
“cohere” means “to stick together; be united; hold fast, as parts
of the same mass.” Accordingly to the Merriam-Webster
Dictionary, “cohere” means “to hold together firmly as parts of
the same mass; broadly: stick, adhere.”
Appeal Br. 8. Appellant argues that Guenther’s arrangement, which
involves a third structure, namely the bottle crown, to hold the retainer
against the carrier, does not meet the claim language requiring the elastomer
elements to include “at least one bonded portion that is cohered to the
panel,” as recited in claim 1. Id. at 6–8. We agree with Appellant. The
Examiner’s construction of “cohered” is unreasonably broad.
Although the Specification does not use the term “cohered” (or
“cohere”), it does shed some light on what it means to be bonded in the
context of the claimed invention. For example, the Specification states that
“face 26 may be surface treated in the intended regions of bonded portions
24 for the bundling articles 10, such as with a bond-promoting coating.”
Spec. 10:26–28; see also id. at 13:28–29 (“Initially, panel web 38 may be
surface treated at the intended locations of faces 26 for panels 16, such as
with a bond-promoting coating.”). Thus, the Specification discloses, at least
in some embodiments, that the bonding is the result of coating. See also id.
at 8:12–14 (with reference to Figure 3, “Elastomer elements 18 and 20 may
be bonded to panel 16 at their respective bonded portions 24 using any
suitable bonding technique, such as heat sealing, adhesive application, and
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Application 14/776,061

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the like.”). This is consistent with the dictionary definition of “cohered” on
which Appellant relies.
For the forgoing reasons, we reverse the rejection of claim 1, as well
as that of claims 2–6, 10, 15, 21, and 22, which stand therewith. See 37
C.F.R. § 41.37(c)(1)(iv).
Rejections 2 and 3
In Rejections 2 and 3, the Examiner relies on an additional prior art
reference, either Weaver or Marco, to meet additional limitations recited in
dependent claims 7, 8, and 17–19. Final Act. 7–8. The Examiner relies
exclusively on Guenther to disclose the limitations of independent claims 1
and 15. See, e.g., id. at 6 (“Regarding claims 7 and 18, Guenther discloses
essentially all of the elements of the claimed invention in respective claims 1
and 15.”). Accordingly, for similar reasons as Rejection 1, we reverse
Rejections 2 and 3.
SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–6, 10, 15,
21, 22
102(b) Guenther 1–6, 10, 15,
21, 22
7, 17, 18 103(a) Guenther,
Weaver
7, 17, 18
8, 19 103(a) Guenther,
Marco
8 , 19
Overall
Outcome
1–8, 10, 15,
17–19, 21, 22

REVERSED