7922614 et al.

Patent Trials and Appeals Board

Sep 30, 2019

95002200 - (D) (P.T.A.B. Sep. 30, 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.
95/002,200 09/12/2012 7922614 386736-614RX (121158) 7772
27526 7590 09/30/2019
HUSCH BLACKWELL LLP
4801 Main Street, Suite 1000
KANSAS CITY, MO 64112
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/30/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
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.
90/012,374 06/22/2012 7,922,614 B2 469506.10026 8487
27526 7590 09/30/2019
HUSCH BLACKWELL LLP
4801 Main Street, Suite 1000
KANSAS CITY, MO 64112
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/30/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CP PACKAGING, LLC
Appellant and Third Party Requester

v.

MULTIVAC, INC.
Respondent and Patent Owner

Appeal 2019-004953
Reexamination Control 95/002,200 and 90/012,374
Patent US 7,922,614 B2
Technology Center 3900

Before JEFFREY B. ROBERTSON, BRETT C. MARTIN, and
JON M. JURGOVAN, Administrative Patent Judges.
Administrative Patent Judge MARTIN.

DECISION ON APPEAL
STATEMENT OF THE CASE
This proceeding is a Reexamination of U.S. Patent 7,922,614 B2,
issued April 12, 2011 to Ivo Ruzic and Elmar Ehrmann (“’614 patent”). In a
“New Decision under 37 C.F.R. § 41.77(f),” mailed September 11, 2018
(“New Decision,”), the Board reversed the Examiner's decision favorable to
the patentability of claims 1, 21, and 23. The Board entered new grounds of
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rejection against claim 21 under § 112, second paragraph, for failure to
particularly point out and distinctly claim the subject matter that the Patent
Owner regards as the invention; against claims 1 and 21 under § 103(a) as
being unpatentable over either Hepner (US 3,029,007, issued Apr. 10, 1962)
or Lovas (US 3,303,628, issued Feb. 14, 1967) in view of Petershack (US
4,353,459, issued Oct. 12, 1982); and against claims 1, 21, and 23 under
§ 103(a) as being unpatentable over Lovas in view of either Grevich (US
4,336,680, issued June 29, 1982) or Arnold (US 3,868,053, issued Feb. 25,
1975).
The Board granted Patent Owner’s request to reopen prosecution and
remanded the case to the Examiner on January 18, 2019 (“Dec.”) to
determine whether the proposed claim amendments place the claims in
condition for allowance. The Examiner issued an Examiner’s Determination
(“Det.”) on February 5, 2019 considering the amendments made along with
Patent Owner’s Response after Board Decision, dated November 12, 2018
and Requester’s Comments after Board Decision, dated December 12, 2018
(“Req. Comments”). The Examiner determined that Patent Owner’s
amendment to claim 21 overcame the indefinite rejection of claim 21 due to
lack of antecedent basis, the amendments of claims 21 and 23 fail to
overcome the art of record, and the amendment of claim 23 introduces
indefinite claim language. Det. 4, 5.
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed “to a chain for a machine drive, transport of
material in a machine or the like, and to a packaging machine having one
such chain.” Spec., col. 1, ll. 8–10. Claim 21, reproduced below with
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underlining and strikethrough to indicate the most recent amendment, is
illustrative of the claimed subject matter:
21. A packaging machine having a chain for transporting a
continuous food packaging film through a plurality of work
stations of the packaging machine, wherein the chain has a
series of successive rigid chain links connected to one another
in a movable manner, and flexible chain links provided between
the rigid chain links and are fixed to the rigid chain links, and
wherein at least some of the rigid chain links include a
clamping unit, each clamping unit having a pair of opposing
clamping lips for gripping a portion of the continuous food
packaging film, the packaging machine further comprising a
guide rail, and wherein at least some of the rigid links having a
pair of opposing downwardly extending legs configured to
straddle and engage the guide rail to substantially prevent
displacement of the chain and the gripped portion of the
continuous food packaging film in a direction substantially
transverse to a direction of travel of the chain, wherein the
chain transports the gripped portion of the continuous food
packaging film through the plurality of workstations of the
thermoforming packaging machine by a movement of the chain.
REJECTIONS
Claim 21 stands rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. Det. 4.
Claims 1 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lovas or Hepner and Petershack. Id.
Claims 1, 21, and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lovas and Grevich or Arnold. Id.

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OPINION
As an initial matter, as discussed in our Remand Decision, we note
that Patent Owner both amended certain claims and presented arguments as
to unamended claims as well as arguments unrelated to the amendments
made to allow for reopening of prosecution. Dec. 5. We reopened
prosecution solely “to consider the patentability of claims 1, 21 and 23 in
view of the newly-submitted amendments in the Patent Owner’s Second
Request to Reopen.” Dec. 6. We note that claim 1, however, was not
amended and the amendments to claims 21 and 23 do not alter the scope or
interpretation of claim 1 that led to the new grounds rejecting claim 1.
Accordingly, we will address only arguments that pertain to the amendments
made to claims 21 and 23.
Claim 1
As noted above, Patent Owner made no amendments with regard to
claim 1. As such, we will not address any arguments as to the patentability
of claim 1. The previous rejections of claim 1 stand.
Claim 21
Indefiniteness
Patent Owner amended claim 21 to remove the term “thermoforming”
so as to overcome an indefiniteness rejection for lack of antecedent basis.
We agree with the Examiner that this amendment overcomes the prior
indefinite rejections and sustain the Examiners’ determination that the claim
no longer lacks antecedent basis. Accordingly, we withdraw our previous
indefiniteness rejection.
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Obviousness
We agree with the Examiner “that this newly-added limitation is
obvious in view of both (a) the teachings of Lovas, which is already relied
upon in GROUNDS 2 and 3, and (b) the additional teachings of Buchko
[’]114[1], which is already of record and has already been considered by the
PTAB.” Det. 7. Patent Owner alleges that the amended language
overcomes the rejection because, as Requester notes, legs 245 of Lovas that
straddle guide 225 are mounted on the packaging machine and not the rigid
link. Req. Comments 14. We agree with Requester, however, that “Patent
Owner has simply inverted the orientation of the guide and legs, requiring
the straddling legs to be mounted on the rigid link and guide to be mounted
on the machine.” Id. This is merely a reconfiguration of the structure in
Lovas to achieve the same result, namely to reduce potential lateral
movement of the chain, a modification that would have been obvious to one
of ordinary skill in the art. We further agree that Buchko already teaches the
claimed configuration via legs 268 that straddle guide rail element 272.
Buchko, Figs. 14, 16, col. 8, ll. 10–18. Accordingly, although the
amendment raises new issues not previously addressed, it does not overcome
the prior art of record and, therefore, does not overcome the rejections.
Claim 23
Indefiniteness
The Examiner determined “that the scope of this newly-added
limitation cannot be ascertained with a reasonable degree of certainty.” Det.
8. Requester points out that the limitation is indefinite because “[t]here is no

1 Buchko. US 7,575,114 B2, Aug. 18, 2009.
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benchmark(s) against which to test to determine if a machine (or a chain or a
closed surface) is ‘more’ hygienic and ‘easier’ to clean or not,” “[t]here are
no standard units that quantify how ‘hygienic’ something is, nor how ‘easy’
it is to clean,” and “[t]here is no accepted testing method to determine
‘hygiene’ nor ‘easiness of cleaning.’” Req. Comments 21. We agree with
Requester on all of these points. The Specification provides no basis on
which to determine what is being compared when determining hygiene or
ease of cleaning. Although it would make sense that a closed surface is
easier to clean than an open surface, such may not be the case. Nor are we
provided with any manner to determine the level of cleanliness in comparing
two closed surfaces. As to closed versus open, it is entirely possible that a
closed surface would be more difficult to clean than an open surface because
it could have surface depressions that could hold dirt whereas dirt
accumulated in an open space may be more easily removed. In sum, we
have no way to know how to determine whether any particular surface is
more or less hygienic or easier to clean, thus rendering the term indefinite.
Obviousness
Focusing specifically on the claimed “closed surface” separately from
the additional, indefinite language, we agree with Requester that the ’614
patent defines this term as “lacking any gaps.” Req. Comments 29 (citing
Spec., col. 1, ll. 48–49). Arnold’s integral construction provides a surface
that lacks gaps and, thus, meets the claims. See Req. Comments 30.
Likewise, Grevich has rigid and flexible links that are fixed together in a
continuous, integral surface, therefore, also lacking gaps. As the Examiner
states, “Grevich is specifically concerned with replacing prior art roller
chains with an endless conveyor band in order to improve cleanability and
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provide sanitary (hygienic) conditions.” Det. 8 (citing Grevich, col. 1, ll.
21–31, col. 2, ll. 12–1, 28–31). As such, this modification would have been
within the ordinary skill in the art. Accordingly, the amendment to claim 23
does not overcome the prior art of record and the rejections stand.
Conclusion
Patent Owner’s remaining arguments address alleged deficiencies
either in the teachings of the references themselves, unrelated to the
amended claim language, or generally as to the combination thereof. Such
argument would have been proper for a rehearing, but is not proper once
Patent Owner chose to reopen prosecution. As noted above, after reopening
prosecution, we only deal with arguments related to the actual amended
claim language. Accordingly, we agree with Requester and the Examiner
that Patent Owner’s amendments do not result in claims that are patentable
over the prior art of record. As such, we affirm the Examiner’s
determination as to all outstanding rejections and sustain those rejections.
DECISION
The Examiner’s determination is AFFIRMED.
More specifically, we withdraw the indefiniteness rejection of claim
21 and AFFIRM the Examiner’s determination as to the remaining
rejections, thus, maintaining the prior art rejections of claims 1, 21, and 23
with the additional conclusion that the new language included in claim 23 is
indefinite.
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FINALITY AND 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

For Patent Owner:

HUSCH BLACKWELL LLP
4801 Main Street, Suite 1000,
KANSAS CITY, MO 64112

For Third Party Requester:

DECHERT LLP
P.O. BOX 390460,
MOUNTAIN VIEW, CA 94039-0460