Ex Parte Bussey et al

Board of Patent Appeals and Interferences

Jul 31, 2007

11062725 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board
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UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HARRY BUSSEY, JR. and HARRY (BUDDY) BUSSEY, III
____________________

Appeal 2006-2859
Application 11/062,725
Technology Center 3700
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Decided: July 31, 2007
____________________

Before: MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and LINDA E.
HORNER Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 (2002) from a Final
Rejection of claims 1 to 11. Claims 12 to 20 have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Appellants invented a packaging module comprising a porous
deformable membrane with a mass of loose fill elements. The porous
Appeal 2006-2859
Application 11/062,725

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deformable membrane is deformable in three dimensions to envelop an item
of three-dimensional shape (Specification 2).
Claim 1 under appeal reads as follows:
1. A package module for an item of three-dimensional
shape comprising
a porous deformable membrane defining an enclosed
space and characterized in being deformable in three
dimensions to envelop the item of three-dimensional shape
therein; and
a mass of loose fill elements disposed within said
membrane and occupying an amount of said space sufficient to
permit said membrane to be shaped about the item of three
dimensional shape and to permit said elements to move within
said membrane to accommodate the three-dimensional shape of
the item and to envelop the item therein.

The Examiner rejected claims 1 to 3, 5, 7, 8, 10, and 11 under 35
U.S.C. § 102(b) as being anticipated by Tate.
The Examiner rejected claims 1 to 3, 5 to 8, 10, and 11 under 35
U.S.C. § 102(b) as being anticipated by Alivizatos.
The Examiner rejected claims 1, 2, and 5 to 10 under 35 U.S.C.
§ 102(b) as being anticipated by Olesen.
The Examiner rejected claims 1, 3 and 6 under 35 U.S.C. § 102(b) as
being anticipated by Groth.
The Examiner rejected claims 1, 4, 5, and 6 under 35 U.S.C. § 102(b)
as being anticipated by Fuss.
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Application 11/062,725

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The Examiner rejected claims 1 to 11 under 35 U.S.C. § 103 as being
unpatentable over Fuss in view of Alivizatos.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Olesen US 3,459,179 Aug. 5, 1969
Groth US 4,566,831 Jan. 28, 1986
Tate US 5,316,149 May 31, 1994
Alivizatos US 5,618,263 Apr. 8, 1997
Fuss US 5,826,404 Oct. 27, 1998

Appellants contend that none of the references relied on by the
Examiner discloses a porous membrane that is deformable in three
dimensions to envelop an item of three-dimensional shape. Appellants also
contend that Tate, Alivizatos and Olesen do not disclose that the membrane
is a net bag. Appellants further contend that Fuss and Alivizatos do not
disclose a membrane with self-adherent characteristics.
ISSUES
The first issue is whether the Appellants have shown that the
Examiner erred in finding that Tate, Alivizatos, Olesen, Groth, and Fuss
disclose a porous membrane deformable in three dimensions to envelop an
item of three-dimensional shape.
The second issue is whether the Appellants have shown that the
Examiner erred in the finding that Tate, Alivizatos, and Olsen disclose a
membrane that is a net bag.
The third issue is whether the Appellants have shown that the
Examiner erred in finding that Fuss and Alivizatos disclose membranes with
self-adherent characteristics.
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Appeal 2006-2859
Application 11/062,725

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FINDINGS OF FACT
Appellants’ claim 1 recites that the membrane is deformable in three
dimensions to envelop an item of three-dimensional shape. The term
“envelop” as disclosed and claimed by the Appellants is interpreted to mean
that the membrane completely encloses the item of three-dimensional shape
(see Fig. 5). This definition is consistent with the definition of the term
“envelop” in the Merriam-Webster Online Dictionary which is: to enclose
or enfold completely with or as if with a covering.
Tate discloses a porous deformable membrane having an enclosed
space filled with a mass of loose fill elements that can be molded to fit
around an object (col. 2, ll. 39 to 41). The membrane can be deformed to
totally envelop an item (col. 2, ll. 62 to 64). The item may be surrounded by
one or more bags (col. 1, ll. 61 to 63; col. 2, ll. 62 to 64). The membrane of
Tate is comprised of a plastic sheet material with perforations 20 (col. 2, ll.
32 to 33). As such, the membrane is porous by virtue of perforations 20.
The membrane of Tate does not form a net bag.
Alivizatos discloses a membrane defining an enclosed space filled
with a mass of loose fill elements (col. 3, ll. 39 to 47). The bag is formed of
flexible soft fabric (col. 5, ll. 33 to 34). The soft fabric is preferably cotton
fabric having an open mesh construction to facilitate the passage of air (col.
6, ll. 47 to 49) which is a porous material. The open mesh material is a net
as broadly claimed by the Appellants. The membrane is deformable in three
dimensions (see Fig, 2, for example). However, the membrane wraps
around an item so as to have two open ends (see Figs. 2 and 3). The
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membrane does not envelop an item of three dimensions. Alivizatos does
not disclose a membrane with self-adherent characteristics.
Olesen discloses supporting pad which is filled with plastic beads for
supporting a person. The pad may be shaped to conform to the shape of the
person being supported (col. 1, ll. 14 to 20). The Olesen pad is not
deformable in three dimensions to envelop an item of three-dimensional
shape.
Groth discloses a shock absorbent dunnage device which comprises
an outer envelope or bag which is air-tight and contains sawdust (col. 3, ll. 7
to 11; col. 4, ll. 63 to 68). Groth does not disclose a porous membrane.
Fuss discloses a packing module which comprises a membrane made
of flexible plastic material (col. 1, ll. 31 to 35). The membrane defines an
interior space filled with a mass of fill elements (col. 3, ll. 4 to 11). The
membrane may be placed about a three dimensional item to cushion same
(col. 3, ll. 45 to 49). Figure 7 depicts the membranes enveloping an item.
Fuss discloses that the membrane has vent holes 27 and therefore is porous
(col. 2, ll. 27 to 32). The membrane of Fuss does not have self-adherent
characteristics.

DISCUSSION
We will sustain the Examiner’s rejection of claim 1 as being
anticipated by Tate because we find that Tate discloses each element of
claim 1. We do not find the Appellants’ argument (Appeal Br. 7) that Tate
does not discloses a shipping carton persuasive because this argument is not
commensurate in scope with claim 1. Claim 1 does not recite a shipping
carton. We are also not persuaded by Appellants’ argument (Appeal Br. 7-
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8) that Tate does not disclose that one bag envelops an item of three-
dimensional shape because claim 1 does not recite that one bag envelops an
item. In any case, Tate discloses that one bag may surround the item (col. 1,
ll. 61 to 63; col. 2, ll. 63 to 65). In view of the foregoing, we will sustain the
Examiner’s rejection under 35 U.S.C. § 102(b) of claim 1 as being
anticipated by Tate. We will also sustain the rejection as it is directed to
claims 5 and 7 because the Appellants have not argued the separate
patentability of these claims.
We will, however, not sustain this rejection as it is directed to claims
2, 3, 8, 10, and 11 because Tate does not disclose a net bag.
We will not sustain the Examiner’s rejection of claims 1 to 3, 5 to 8,
10 and 11 under 35 U.S.C. § 102(b) as being anticipated by Alivizatos
because Alivizatos does not disclose a membrane that is deformable in three
dimensions to envelop an item of three dimensional shape.
We will not sustain the Examiner’s rejection of claims 1, 2, and 5 to
10 under 35 U.S.C. § 102(b) as anticipated by Olesen because Olesen does
not disclose a membrane that is deformable in three dimensions to envelop
an item of three dimensional shape.
We will not sustain the Examiner’s rejection of claims 1, 3, and 6
under 35 U.S.C. § 102(b) because Groth does not disclose a porous
membrane.
We will sustain the Examiner’s rejection of claims 1, 4, 5, and 6 under
35 U.S.C. § 102(b) as being anticipated by Fuss as we find that Fuss
discloses each element of claim 1. We do not find the Appellants’ argument
(Appeal Br. 14) that Fuss does not disclose a shipping carton persuasive
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because this argument is not commensurate in scope with claim 1, which
does not recite a shipping carton. We will also sustain the rejection of claims
4, 5, and 6 because the Appellants have not argued the separate patentability
of these claims.
We will also sustain the Examiner’s rejection of claims 1, 4, 5, and 6
under 35 U.S.C. § 103 as being unpatentable over Fuss in view of Alivizatos
because Fuss alone discloses the subject matter of these claims.
We will sustain the Examiner’s rejection of claims 2, 3, 8, 9, and 10 as
we find that Alivizaros discloses a net bag. In this regard we are not
persuaded by the Appellants’ argument (Appeal Br. 16) that the combination
requires that the net would not allow beads between 1.5 and 5 millimeters to
pass through while at the same time allowing the net to be deformable in
three-dimensions. Firstly, we find no disclosure in Fuss that the beads are
between 1.5 and 5 millimeters. In addition, in our view a person of ordinary
skill in the art would adjust the openings in the net so that the beads would
not pass through. We note that Fuss discloses holes 27 can be any suitable
size and spacing (col. 2, ll. 29 to 31). We will likewise sustain this rejection
as it is directed to claim 7 because the Appellant has not argued the separate
patentability of this claim.
We will not sustain this rejection as it is directed to claim 11 because
neither Fuss nor Alivizatos discloses a membrane having self-adherent
characteristics.
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Application 11/062,725

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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) (2006).
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AFFIRMED-IN-PART

jlb

Francis C. Hand, Esq.
c/o Carella, Byrne, Bain, Gilfillan,
Cecchi, Stewart & Olstein
5 Becker Farm Road
Roseland, NJ 07068
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