Ex Parte Bohn et alDownload PDFPatent Trials and Appeals BoardDec 11, 201312322144 - (D) (P.T.A.B. Dec. 11, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/322,144 01/29/2009 Michael Bohn 247097-001355USD1 7406 56356 7590 12/11/2013 PACTIV CORPORATION c/o NIXON PEABODY LLP 300 S. Riverside Plaza 16TH FLOOR CHICAGO, IL 60606 EXAMINER TAWFIK, SAMEH ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 12/11/2013 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 ________________ Ex parte MICHAEL BOHN, ROGER E. DOWLER, and MATTHEW OSWALD ________________ Appeal 2012-000433 Application 12/322,144 Technology Center 3700 ________________ Before: MICHAEL L. HOELTER, JAMES P. CALVE, and LYNNE H. BROWNE, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000433 Application 12/322,144 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner’s final rejection of claims 11 and 13-16. App. Br. 2. Claims 1-10, 12, and 17-20 have been withdrawn from this application.1 App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates generally to a continuous process for making slider reclosable fastener segments that may be applied to bags.” Spec. para. [0002]. Independent claim 11 is illustrative of the claims on appeal and is reproduced below: 11. A method of forming a bag, the method comprising the acts of: providing a reclosable fastener track, the track having a first fin portion and a second fin portion, the first fin portion having a first profile and the second fin portion having a second profile, the first and the second profiles cooperating to form a reclosable seal; forming a slit in the track, the slit being formed through the profiles of the track and portions of the fins nearest the profiles; attaching a slider to the track, the slider attaching over the slit in the track; sealing the slit in the track creating a resealed area; attaching the fastener track to a film or the bag after the act of attaching the slider to the track and after the act of sealing the slit in the track creating a resealed area; and if attaching the fastener track to the film, then forming the bag from the film. 1 The question as to whether or not withdrawn claims 1-10, 12, and 17-20 may be rejoined with the elected invention is not a matter before the Board, but rather an issue which the Examiner should address upon return of the application to the Examiner’s jurisdiction subsequent to our decision. Appeal 2012-000433 Application 12/322,144 3 REFERENCES RELIED ON BY THE EXAMINER Kosky US 4,262,395 Apr. 21, 1981 Donovan US 5,431,760 Jul. 11, 1995 Thomas WO 01/70491 A1 Sep. 27, 2001 THE REJECTIONS ON APPEAL 1. Claims 11 and 13-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Thomas. Ans. 4. 2. Claims 11 and 13-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Donovan and Kosky. Ans. 5. ANALYSIS The rejection of claims 11 and 13-16 as being unpatentable over Thomas The Examiner finds that “Thomas discloses a method of forming a bag as described” in independent claim 11 but acknowledges that “Thomas does not disclose attaching the fastener track to a film or the bag after the act of sealing the slit in the track” as claimed. Ans. 4 (emphasis added). This is because the Examiner finds that “Thomas discloses attaching the fastener track to the bag before sealing the slit in the track.” Ans. 4 (emphasis added), see also Thomas Figs. 5, 6. The Examiner, however, concludes that “it has been held that rearranging parts/steps of an invention involves only routine skill in the art” and hence Thomas renders the claimed invention obvious. Ans. 5. More specifically, the Examiner finds that “[i]t is a matter of designing the device, which is a matter of rearranging parts/steps of manufacturing.” Ans. 8. Appellants dispute this rejection and reference Paragraph [0024] of their Specification which discusses the advantages of attaching the fastener Appeal 2012-000433 Application 12/322,144 4 track to the bag material “after the act of sealing the slit in the track” as claimed. App. Br. 10. These advantages include preventing the open slit from catching on other equipment; preventing portions of the track from breaking off and falling into the bag’s contents; the resealed area increases the strength of the bag; and there is no loss of structural integrity of the track. Spec. para. [0024]. Appellants contend that the method taught by Thomas does not have such advantages because Thomas attaches the track to the bag material before the slit is resealed. App. Br. 10. Thomas addresses a different set of manufacturing issues that arise when the entire bag-making process, including installation of the sliders, is not performed on a single manufacturing line. Thomas 2:9-11. Thomas teaches that it is becoming “increasingly common for a first manufacturer or manufacturing line to mount sliders on a continuous fastener, and a second manufacturer or manufacturing line to attach such a slider-carrying fastener to a continuous web of bag material and form individual bags” such that the bag closure device must be moved from the one to the other. Thomas 2:11-14. In this regard, Appellants contend that “[m]odifying Thomas’s process would also change the principle of its operation by changing its functionality.” App. Br. 10. We are instructed that if a claimed invention functions differently from the prior art, then the claimed invention is not an obvious matter of design choice. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (claimed chip design was not a matter of design choice over the prior art where applicant disclosed that the claimed design achieved desired functions different from the prior art); In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995) (holding that claimed feature was not a matter of design choice where there Appeal 2012-000433 Application 12/322,144 5 was no suggestion or teaching to modify the prior art in this manner and applicant introduced evidence showing the benefits of the claimed feature). In accordance with these instructions from our reviewing court and because Appellants have shown that the claimed method functions differently from Thomas’s method, the Examiner’s articulated reason that rearrangement of the parts/steps of Thomas is a matter of design lacks a rational underpinning. Appellants also contend that “the law of obviousness requires the [E]xaminer to clearly articulate ‘an apparent reason’ why a person skilled in the art would be compelled to combine ‘the known elements’ to achieve the invention claimed. KSR, 550 U.S. at 418.” App. Br. 10. More succinctly, Appellants contend that “[t]he Examiner still has not provided a reason [] why one skilled in the art would be motivated to modify [] Thomas’s process.” Reply Br. 2. The Examiner’s sole reason for rearranging Thomas is that it “involves only routine skill in the art.” Ans. 5. The Examiner does not explain how, in Thomas, the step of resealing the slit (see Figure 6) prior to attaching the track to the bag (see Figure 5) is to occur since in Thomas, the resealing of the slit and the sealing of the bag occurs at the same time with the same heated bar 46. Thomas 6:20-26. In other words, the Examiner’s proposed rearrangement of Thomas would (presumably) involve divorcing the single sealing operation shown in Figure 6 into a new slit- resealing-only operation occurring prior to bag attachment with the bag- sealing-only operation following such bag attachment, with each involving different components. In essence, the Examiner’s proposal is more than simply moving (rearranging) the operation depicted in Thomas’ Figure 6 before that depicted in Figure 5. Appeal 2012-000433 Application 12/322,144 6 The Supreme Court in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) stated that “‘simply arrang[ing] old elements with each performing the same function it had been known to perform’ and yield[ing] no more than one would expect from such an arrangement, the combination is obvious” (quoting Sakraida v. Ag Pro, Inc. 425 U.S. 273, 282 (1976)). Here, the Examiner does not provide an explanation as to how Thomas’ elements, and particularly the operation depicted in Figure 6, performs “the same function it had been known to perform” (KSR, 550 U.S. at 417) since, as understood, this step is to be rearranged into two different operations occurring at two different points in time. The Court also provides instruction 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.’” KSR, 550 U.S. at 418, quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also App. Br. 10. Here, the Examiner does not provide any reason why one skilled in the art would rearrange Thomas or explain how doing so “involves only routine skill in the art” as asserted. Ans. 5. Accordingly, we reverse the rejection of independent claim 11 and dependent claims 13-16 as being obvious over Thomas. The rejection of claims 11 and 13-16 as being unpatentable over Donovan and Kosky In this rejection, the Examiner relies on Kosky for disclosing the method step of “attaching the track to the film/bag after the act of attaching the slider to the track, see for example (Figs. 7 and 8)” as found in independent claim 11. Ans. 5-6. Appellant disagrees asserting that “strips 2 Appeal 2012-000433 Application 12/322,144 7 and 4 of Kosky are formed by extrusion to the sheet 5 and then after the bag is formed, the clasp is mounted.” App. Br. 12. Kosky teaches extrusion of the track (strips 2 and 4) along with bag 5. Kosky 1:19-28, 2:67-68. Accordingly, since the track is already secured to the bag, the Examiner does not explain how Kosky also teaches the claimed step of attaching the sliders to the track before the track is attached to the bag. In other words, as Kosky’s track and bag are “extruded in one” piece (Kosky 2:67-68), Kosky teaches attaching the sliders to the track after the track has been attached to the bag. Kosky 2:67 to 3:8. In other words, Kosky’s sliders are not attached before the track is attached to the bag as claimed. Accordingly, the Examiner has not made the initial requisite factual findings and as such, we agree with Appellants that the Examiner failed to “establish prima facie obviousness” as required for a proper rejection under § 103(a). App. Br. 6. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (the examiner has the initial duty 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). We reverse the rejection of independent claim 11 and dependent claims 13-16 as being obvious over Donovan and Kosky. DECISION The Examiner’s rejections of claims 11 and 13-16 are reversed. REVERSED rvb Copy with citationCopy as parenthetical citation