Ex Parte Hutchison et alDownload PDFPatent Trial and Appeal BoardApr 18, 201812202502 (P.T.A.B. Apr. 18, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/202,502 09/02/2008 72275 7590 04/20/2018 STUART WILKINSON 833 CALDER ROAD MISSISSAUGA, ON L5J 2N6 CANADA FIRST NAMED INVENTOR Brian George Hutchison 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PPLOOl 1489 EXAMINER THEIS, MATTHEW T ART UNIT PAPER NUMBER 3782 NOTIFICATION DATE DELIVERY MODE 04/20/2018 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): SWILKINSON@IPSOIP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN GEORGE HUTCHISON and WILLIAM TROOST Appeal2017-007316 Application 12/202,502 Technology Center 3700 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Brian George Hutchison and William Troost ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 5, 8, 9, and 19--21.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is Peel Plastic Products Limited. Appeal Br. 1. 2 Claims 2--4, 6, 7, and 10-18 are cancelled. Appeal Br. 22-23 (Claims App.). Appeal2017-007316 Application 12/202,502 THE CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, is reproduced below and is representative of the claimed subject matter on appeal. 1. A bag having a flexible thermoplastic film panel, the panel having an inner surface and an outer surface and a pair of holes through the panel, a handle strip of flexible thermoplastic film material having a handle part thereof disposed adjacent the panel outer surface and extending between the holes, the handle strip having an extension at each end projecting through respective ones of the holes, the extension at each hole having a first portion and a second portion with a first part of the second portion folded onto and heat sealed against the first portion, the first portion heat sealed against a first part of the panel inner surface surrounding a first part of the hole, and a second part of the second portion heat sealed against a second part of the panel inner surface surrounding the remaining part of the hole, thereby to attach the end of the handle strip to the panel and to seal the bag at the hole, the folded over, heat sealed second portion forming a reinforcing strip to reinforce the attachment between the handle strip and the panel, the heat sealing of the first and second extension portions to each other and the heat sealing of the first and second portions to the respective first and second parts of the panel inner surface causing the first and second extension portions to remain fixed to each other and to the panel inner surface at the heat sealing locations when weight is placed in the bag. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Frank us 3,456,865 July 22, 1969 Lazerand us 4,166,570 Sept. 4, 1979 Armor us 5,299,732 Apr. 5, 1994 Tanaka US 7,165,677 B2 Jan.23,2007 Kruse US 2008/0080794 Al Apr. 3, 2008 2 Appeal2017-007316 Application 12/202,502 Kujat EP 1712482 Al Oct. 18, 2006 REJECTIONS I. Claims 1 and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kujat, Lazerand, and Armor. Final Act. 2-5. II. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Kujat, Lazerand, Armor, and Tanaka. Id. at 5---6. III. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Kujat, Lazerand, Armor, and Frank. Id. at 6-7. IV. Claims 19-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kujat, Lazerand, Armor, and Kruse. Id. at 7-9. OPINION Rejection I Claim 1 The Examiner finds that Kujat teaches a bag with a thermoplastic film panel having an inner and outer surface (Fig. 2) with a pair of holes through the panel (Fig. 1), a handle strip of thermoplastic film material (Page 2, Paragraph 0017) having a handle part thereof disposed adjacent to the panel outer surface (Fig. 1, Item 4 ), a reinforcing strip disposed adjacent to the panel inner surface (Fig. 2, Item 19), the handle strip and reinforcing strip are sealed together through the holes and further secured and sealed to the panel inner surface (Fig. 2, Item 18'), a reinforcing strip (19) further heat sealed against surrounding parts of the panel inner surface at the holes thereby to form reinforcing strips and seal the bag (Noting the sealing area surrounding the hole (Fig. 2), and further the heat sealed portions ( 18) seal the bag at the holes. 3 Appeal2017-007316 Application 12/202,502 Final Act. 2-3. The Examiner acknowledges that Kujat does not teach "the handles projecting through the holes with each extension having a first portion folded onto a second portion and sealed where the folded extension forms one of the reinforcing strips, or the handle strip extending directly between the holes." Id. at 3. However, the Examiner finds that Lazerand teaches a handle with extensions that protrude through a hole (Fig. 6) in the outer wall where a first portion of the extension is folded over a second portion (Figs. 3A and 3B) and they are secured to one another as well as to the surface of the panel and thereby create reinforcing strip portions made of the same piece of material as the handle body. Id. The Examiner determines that, based on the teachings of Lazerand, it would have been obvious to modify Kujat's bag to have the handle and the reinforcement strip be constructed of a single piece of material i.e. the handle strip and have extensions project though the holes of the panel and have portions of the handle portion folded over and secured to one another where the folded over portion makes up the reinforcing strip rather than separate pieces of material that are subsequently sealed together[,] since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Id. at 4 (citing Howard v. Detroit Stove Works, 150 U.S. 164 (1983)). The Examiner also finds that Armor teaches a handle portion attached through a wall of a container having ... first and second extension portions where a first portion (FP) contacts a first part surrounding the holes, and a second portion (SP 1) heat sealed against the first portion, and a second part of the second portion (SP2) contacting the panel inner surface surrounding a remaining part of the hole. 4 Appeal2017-007316 Application 12/202,502 Id. at 3; see also id. at 4 (including an annotated reproduction of Figure 6 of Armor). The Examiner determines that it would have been obvious to further modify Kujat's bag by "arrang[ing] the material portions of the handle and wall similarly to that shown by Armor ... to create a handle having a holding portion and folded reinforcement extensions formed from the same material." Id. at 4--5. The Examiner further explains that "Kujat demonstrates sealing entirely around the hole portions to seal the holes in the wall of the package, and thereby seal all of the portions of the handle in close proximity to the interior surface of the wall thereto in order to seal the hole." Id. at 5. According to the Examiner, "[s]uch a configuration would allow for a continuous handle strip to have ample contact area around the hole for secure sealing." Id. Appellants argue that Kujat's "handle part 4 forming part of the handle strip is not disposed adjacent to the panel outer surface," as claimed. Appeal Br. 5 (citing Kujat, Fig. 1 ). In particular, Appellants assert that "[t]he handle strip of Kujat has end portions (10) adjacent to the panel outer surface[,] but the end portions are not a handle part that will, in use, be grasped by the hand." Id.; see also Reply Br. 2 (asserting that "the vertical part of Kujat feature 4 (FIG. 1) is not, and would not be used as, a handle given the existence of the horizontal part of feature 4 which is clearly what is gripped for carrying"). This argument is not persuasive because Appellants do not explain an error in the Examiner's finding that "the vertically extending portions [of Kujat] are considered to be handle parts as they are part of the handle and can be grasped by a hand." Ans. 9 (emphasis added). We agree with the Examiner that at least part of handle 4 is adjacent the bag panel outer surface, and, thus, the Examiner's finding that Kujat 5 Appeal2017-007316 Application 12/202,502 teaches a handle strip having a handle part that is adjacent to the panel outer surface is supported by a preponderance of the evidence. 3 Appellants argue that "Lazerand does not show an end extension of the handle strip protruding through the single slot (28) and does not show an extension at each end projecting through respective ones of the holes" and, instead, "[t]he only part of the Lazerand handle strip that protrudes through the slot (28) is a center or handle part labelled as 35 in Lazerand Fig. 6." Appeal Br. 6. Appellants also argue that "Armor does not disclose handle end extension[] portions (SPl - 71) and (FP) being heat sealed to one another," or "a second part of the second portion (SP2) contacting the panel inner surface surrounding a remaining part of the hole." Id. at 8 (boldface omitted). Appellants' arguments against Lazerand and Armor are not persuasive because they address each reference individually, rather than the rejection as articulated by the Examiner, which is based on the combined teachings of Kujat, Lazerand, and Armor. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (one cannot show nonobviousness by attacking references individually when the rejection is based on a combination of the references). As discussed above, the Examiner relies on Kujat for teaching a bag having a handle strip with ends that are heat sealed to reinforcing strips through 3 Even assuming arguendo that only the horizontal part of element 4 of Kujat is the claimed "handle portion," Appellants do not persuasively explain why the horizontal part of element 4 of Kujat cannot be considered "adjacent" the panel outer surface, considering that the term "adjacent" has a broad meaning of "close to" that has not been shown to be inconsistent with Appellants' Specification. See American Heritage Dictionary 2000, 2003 (defining "adjacent" as "close to; lying near"). 6 Appeal2017-007316 Application 12/202,502 holes in the panel, and the reinforcing strips are heat sealed to the bag panel. Final Act. 2-3. The Examiner relies on Lazerand for teaching a handle having folded ends to create a reinforcing structure. Id. at 3; see also Ans. 9 (explaining that "Lazerand is relied on to teach the ability to have a handle with a portion attached to an interior portion of a bag all including folded ends to create a reinforced handle anchor structure (Figs. 3A, 3B, and 6)"). The Examiner also explains that Armor is relied upon for teaching "the orientation of the folded portion of the extension of a handle through an aperture." Ans. 10; see also id. at 9-10 (explaining that Armor "teach[ es] the ability to have a handle with a fold and secured to a handle extension portion wherein the fold is in the direction as demonstrated in the current application and further having portions of a handle extension making contact with a front wall of a container (Fig. 6)"). Appellants argue that it would not have been obvious to "to take the modified device of Kujat and arrange the material portions of the handle and wall similarly to that shown by Armor in view of the Lazerand modification to create a handle having a holding portion and folded reinforcement extensions formed from the same material." Appeal Br. 9 (boldface omitted). Appellants assert that "[i]t is invariably of advantage in manufacturing to have a reduced number of parts, inasmuch as the manufacturing process will involve fewer steps in making the parts and fewer steps in constructing the bag to the extent of using those parts." Id. at 10. According to Appellants, "Kujat did not propose such a reduced component structure (and associated manufacturing process)," and "did not conceive of using a single strip to provide the functions achieved as a preferential alternative to using three parts." Id. We are not persuaded by 7 Appeal2017-007316 Application 12/202,502 this argument because it appears to insist on an explicit teaching, suggestion, or motivation in Kujat for the modification proposed by the Examiner, whereas such an argument has been foreclosed by the Supreme Court. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415, 419 (2007) (stating that a rigid insistence on teaching, suggestion, or motivation is incompatible with its precedent concerning obviousness). Rather, the Court requires that we look to whether the Examiner has provided "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). Here, as discussed above, the Examiner explains that modifying Kujat's bag such that the separate handle and reinforcement strips are a single piece of material would have been obvious in view of Lazerand's teaching of "a reinforced handle anchor structure" formed by a handle "including folded ends" (Ans. 9) and because forming separate pieces as one piece involves only routine skill in the art (Final Act. 4). The Examiner also explains that further modifying Kujat so that the handle extension folds are oriented as taught by Armor "would allow for a continuous handle strip to have ample contact area around the hole for secure sealing." Id. at 5. In this regard. Appellants' argument does not persuasively explain why the Examiner's articulated reasoning lacks rational underpinnings. Appellants argue that "[t]here would be several problems in attaining the structure recited in claim 1, [with] solution[ s] to such problems requiring inventive ingenuity," and "it is not just a matter of forming in one piece an article formerly formed in three pieces." Appeal Br. 10. In particular, Appellants assert that there exists "a [first] problem in getting ends of the 8 Appeal2017-007316 Application 12/202,502 flexible film handle strip through the spaced holes in the panel of Claim 1." Id. at 11. Appellants next assert that "[t]o project a piece of one size through a wall aperture of smaller size, whether the materials are flexible film as in Kujat or relatively stiff as in Armor, presents a [second] problem." Id. Appellants also assert that "[t]he two process steps [needed to heat seal folded handle portions projected through the holes of modified Kujat] -the first to attach the folded portions together before the strip is projected through the holes and the second to heat seal folded over portions to the inside surface of the panel-present a [third] problem when viewed against the objective of achieving a workable manufacturing process." Id. at 12. Appellants identify the need for the fold to "be exactly sized and positioned so that ... [the fold] is effective in sealing and reinforcing" as a fourth problem. Id. at 13. Appellants assert that "[i]t would be necessary to make modifications not taught in Lazerand and Armor in order to combine the references with Kujat in the way suggested." Id. at 15 (boldface omitted). Whether or not Lazerand's and Armor's handles would be physically combinable with Kujat's bag without encountering any potential problems and/or without any modification is not the relevant inquiry in resolving the obviousness of claim 1. A person of ordinary skill in the art is "a person of ordinary creativity, not an automaton." KSR, 550 U.S. at 420. We are not persuaded that the ability to address any implementation problems that might arise in combining the teachings of Lazerand and Armor with Kujat would be beyond the skill and creativity of an ordinary artisan. Appellants argue that the "manufacturing method described in the instant application with reference to Figs. 5 and 13" "is an ingenious method for overcoming Problem 3 and results in a non-obvious product solution." 9 Appeal2017-007316 Application 12/202,502 Appeal Br. 12. To the extent Appellants are arguing that the resulting product is nonobvious because the ability to address the problem of locating "projected-through, folded portions" that have "been maneuvered through the two holes of Kujat" for heat sealing (Appeal Br. 12) requires ingenuity beyond the skill and creativity of an ordinary artisan, we remain unpersuaded that a solution would be beyond the skill and creativity of an ordinary artisan. More particularly, we are not persuaded that one of ordinary skill in the art would be unable to place folded portions in a particular position relative to the aperture of modified Kujat, as taught by Armor, for heat sealing, so as to arrive at the structure of the bag as claimed. That the manner in which an ordinary artisan may arrive at the claimed bag might be a less "workable manufacturing process" in that it might not utilize Appellants' methodology that "automatically locate[s] [the reduced width region of the handle strip] at the center of respective holes, this being the exact position required for both effective sealing and optimized reinforcement" (Appeal Br. 12), we note that claim 1 is directed to a bag (i.e., an apparatus), and does not recite any particular process for manufacturing the bag. In short, we are not persuaded that locating the folded portions of modified Kujat in a location as taught by Armor would be beyond the skill and creativity of an ordinary artisan. Appellants also argue that "the critical positioning of the folds in such a putative handle strip to enable effective sealing, effective reinforcing, and effective functioning as a carrying handle, militate against this being a simple choice by a person of ordinary skill in the art, absent considerable hindsight." Appeal Br. 14. Appellants do not identify any knowledge relied upon by the Examiner that was gleaned only from Appellants' disclosure 10 Appeal2017-007316 Application 12/202,502 and that was not otherwise within the level of ordinary skill at the time of the invention so as to persuade us that the Examiner engaged in impermissible hindsight. See In re McLaughlin, 443 F.2d 1392 (CCPA1971). We note the Examiner points to Kujat's teaching of securing, via seal 18, 18', a patch 8 "to the interior of [a] panel [of a handled bag] on opposite ends of [an] aperture" (Ans. 10), Lazerand's teaching of the "reinforced handle anchor structure" being made up of "folded ends" of the handle, instead of a separate patch (id. at 9), and Armor's teaching of "the orientation of the folded portion of the extension of a handle through an aperture" (id. at 10). Appellants argue that "Lazerand and Armor are not practicably combinable with Kujat since doing so would destroy their intended functions." Appeal Br. 15 (boldface omitted). However, this argument is not persuasive as neither Lazerand nor Armor is the prior art invention being modified. Instead, the Examiner proposes to modify Kujat based on the teachings of Lazerand and Armor. Final Act. 2-5. Appellants argue that "Lazerand teaches away from Kujat and Armor in having folded over end portions of the handle strip that are deliberately not located at a hole because to do so would mean that the handle end parts (50, 52) are not stuck fast between [adhesively secured] flaps (21A1 and 21A2)." Appeal Br. 16 (referring to element numbers 21A1 and 21A2 from Appellants' annotated version of Lazerand's Figure 3A on page 6 of the Appeal Brief). This argument is unpersuasive. Merely because Lazerand discloses a solution of locating folded over end portions away from the hole through which a handle extends does not teach away from Kujat's location of its patch 8 at the hole. "A reference does not teach away ... if it merely expresses a general preference for an alternative invention but does not 11 Appeal2017-007316 Application 12/202,502 'criticize, discredit, or otherwise discourage' investigation into the invention claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004)). Appellants also argue that "Armor teaches away from flexible heat sealable film material by the requirement for a measure of strength and rigidity sufficient to form barbs (SP2 - 72) that support the weight of the main package body at each aperture (H-20)." Id. According to Appellants, "Armor further teaches away from an aperture (20) in a panel wall ( 6) being sealed by teaching the requirement for the handle end engagement at the aperture (20) to enable articulation of the handle end (50, 70) relative to the aperture (20)." Id. These arguments are not persuasive. Merely because Armor offers a different solution that does not involve heat sealing does not teach away from Kujat's heat sealing. Appellants have not identified any passage in Lazerand or Armor that actually criticizes, discredits, or discourages the modifications to Kujat proposed in the rejection. For the foregoing reasons, Appellants do not apprise us of error in the Examiner's conclusion that the combination of Kujat, Lazerand, and Armor renders obvious the subject matter of independent claim 1. Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Kujat, Lazerand, and Armor. Claim 9 The Examiner acknowledges that "modified Kujat does not specifically disclose the holes having a shape of a circle, oval, or a D," but finds that "Armor further shows the shape of the holes in the shape of a circle." Final Act. 5. The Examiner determines that it would have been 12 Appeal2017-007316 Application 12/202,502 obvious to further modify the bag of Kujat by "chang[ing] the shape of the holes to circles[,] as taught by Armor[,] because circular holes and[,] in tum[,] circular sealing areas may provide a better stress distributing configuration on the sealed parts of the bag by removing sharp comers in the seals." Id. According to the Examiner, "[i]f the maker of the bag were interested in reducing the effects of force concentration in his seals, they could simply choose a shape of the holes[,] and in tum the seals[,] to cover up such holes in the shape of a circle rather than a square." Id. Appellants initially rely on the arguments and reasoning that we found unpersuasive in connection with independent claim 1, from which claim 9 depends. Appeal Br. 16-1 7. Appellants further argue that there would be no motivation to modify Kujat's square holes to be round because "it would compromise the Kujat bag strength at the handle." Id. at 17. Appellants assert that Kujat's "vertical welds bounding the openings (7), being aligned with the vertical carrying forces, are better adapted than a circular structure to prove a desirable stress distribution in the face of the applied vertical carrying forces that exist when the Kujat bag is being carried." Id. The Examiner has noted an advantage to modifying a square hole to be in the shape of a circle-namely, "removing sharp comers in the [resulting] seals" so as to "reduc[e] the effects of force concentration." Final Act 5. The possible disadvantage identified by Appellants--------namely, no longer having vertically oriented welds that would align with vertical carrying forces--does not necessarily outweigh the advantage identified by the Examiner. Appellants' argument is unpersuasive in that it fails to point to evidence or provide sound technical reasoning establishing that a person of ordinary skill in the art would recognize that the identified possible 13 Appeal2017-007316 Application 12/202,502 disadvantage would outweigh the benefit identified by the Examiner such that the proposed modification would not have been obvious. Although tradeoffs may be required in balancing the benefits and drawbacks of different shaped holes, such tradeoffs do not necessarily prevent the proposed combination or negate the obviousness of the claimed subject matter. See Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another."). Moreover, the evidence before us shows that round holes were a known alternative for attaching a handle to a bag, and the Examiner's proposed modification of Kujat's bag to have round holes does not amount to "more than the simple substitution of one known element for another" and is therefore obvious. KSR, 550 U.S. at 417 (internal citation omitted). For the foregoing reasons, Appellants do not apprise us of error in the Examiner's conclusion of obviousness with respect to claim 9. Accordingly, we sustain the rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over Kujat, Lazerand, and Armor. Rejections II and IV In contesting the rejections of claims 5 and 19--21, Appellants rely on the same arguments and reasoning we found unpersuasive in connection with independent claim 1, from which these claims depend. Appeal Br. 17, 20-21. Accordingly, we also sustain the rejections, under 35 U.S.C. § 103(a), of claim 5 as unpatentable over Kujat, Lazerand, Armor, and 14 Appeal2017-007316 Application 12/202,502 Tanaka, and of claims 19-21 as unpatentable over Kujat, Lazerand, Armor, and Kruse. Rejection III In rejecting claim 8, the Examiner acknowledges that "Kujat does not disclose the handle strip having parts of reduced width at locations where the strip projects through the holes, the width being substantially the same width as the holes." Final Act. 7. The Examiner finds that Frank teaches "the use of a handle strip with a reduced width at locations where it projects through the holes (Fig. 7) where [its] width is substantially the same as the holes (Fig. 6)." Id. The Examiner determines that it would have been obvious to further modify the bag of Kujat to reduce the width of the handle where it protrudes through the holes and have its width be substantially the same as the width of the holes[,] as taught by Frank[,] because having an area of reduced width between two wider portions of a handle, coupled with holes made to fit the width of the reduced width section allows for the handle to be anchored to the bag and can be used to secure a handle to a bag in conjunction with sealing or even by itself. Having an expanded area inside of the bag allows for more surface area to be sealed between the handle strip and the bag panel which can allow overall for a stronger seal. Id. (emphasis added). Appellants initially rely on the arguments and reasoning that we found unpersuasive in connection with independent claim 1, from which this claim depends. Appeal Br. 18. Appellants further argue that Frank's reduced width handle sections are not "substantially the same as the width of the holes," because "the reduced width portions of the handle (22) are less than half the width of the slot ends (20a, 20b ). " Id. (citing Frank, Fig. 6). Even assuming arguendo that Frank fails to teach a reduced width handle section 15 Appeal2017-007316 Application 12/202,502 having a width that is substantially the same as the holes, Appellants do not specifically address or identify error in the Examiner's reasoning as to why it would have been obvious, after having made a handle with an area of reduced width between two wider portions as taught by Frank, to then use "holes made to fit the width of the reduced width section" to allow "the handle to be anchored to the bag." Final Act. 7. Appellants argue that modifying Frank to have holes that are the same width as the reduced width handle portions would "render more difficult the insertion and turning of the reduced width handle sections in the slot ends (20a, 20b )." Appeal Br. 18. We are not persuaded of error because the Examiner is not proposing to modify Frank, but to further modify Kujat. With respect to Appellants' arguments regarding the additional advantages of having reduced width handle portions that exactly fit holes (id. at 19, 20), we are not persuaded of error because these arguments do not explain why the Examiner's articulated reasoning lacks rational underpinnings. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (citing In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en bane) (supporting that for the purposes of an obviousness inquiry, there is no requirement that an artisan's reasons for making modifications of the prior art be the same as that of the patent applicant). Appellants argue that even if Frank's reduced width parts were substantially the same width as the holes "this would not enable use in 'securing a handle to a bag in conjunction with sealing or even by itself."' Id. at 20 (quoting Final Act. 7). More particularly, Appellants argue that "[ s ]ealing requires something more than having the handle part region and the hole being the same width at the 'through site"' and "requires that the handle have a face that is 16 Appeal2017-007316 Application 12/202,502 presented to the junction between the handle part and the hole at the through site and that the presentation face should cover that junction at that site." Id. Appellants assert that "[t]here is no evidence in Frank of a presentation face that could be readily configured in combination with Kujat and Lazerand to cover and provide sealing of the junction between a reduced thickness part of the handle strip and the hole at the through site." Id. Appellants' argument is not commensurate with the scope of claim 8, which merely requires a reduced width portion of a handle being substantially the same width as holes through which it projects, rather than any more particular type of presentation face. As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), "the name of the game is the claim." It is well established that limitations not appearing in the claim cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Thus, Appellants' argument is not persuasive. For the foregoing reasons, Appellants do not apprise us of error in the Examiner's conclusion that the combination of Kujat, Lazerand, Armor, and Frank renders obvious the subject matter of claim 8. Accordingly, we sustain the rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over Kujat, Lazerand, Armor, and Frank. DECISION The Examiner's decision to reject claims 1, 5, 8, 9, and 19-21 under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with 17 Appeal2017-007316 Application 12/202,502 this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 18 Copy with citationCopy as parenthetical citation