Ex Parte Owen et al

Patent Trial and Appeal Board

Aug 28, 2013

11054032 (P.T.A.B. Aug. 28, 2013)

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.
11/054,032 02/09/2005 Kevin Owen 121981-00195 7229
51468 7590 08/29/2013
McCarter & English LLP
ACCOUNT: ILLINOIS TOOL WORKS INC.
245 Park Avenue
NEW YORK, NY 10167
EXAMINER
HELVEY, PETER N.
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
08/29/2013 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 KEVIN OWEN and KENNY E. MCCRACKEN
____________

Appeal 2011-008408
Application 11/054,032
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008408
Application 11/054,032

2

STATEMENT OF THE CASE
Kevin Owen and Kenny E. McCracken (“Appellants”) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-3, 8-10, 14,
15, 20, 22, and 24.1 We have jurisdiction under 35 U.S.C. § 6(b).
The Claimed Subject Matter
Claims 1, 8, 9, 14, 20, 22, and 24 are the independent claims on
appeal. Claim 1 is illustrative of the claimed subject matter and is
reproduced below.
1. A reclosable bag comprising:
a front wall and a rear wall;
a reclosable zipper including first and second
interlocking profiles and respective first and second flanges,
and a slider to open and close said first and second interlocking
profiles; and
wherein a sheet of web is folded whereby edges of said
web are brought together in a central portion of said front wall
and joined with said reclosable zipper in a fin seal, wherein said
zipper extends across substantially an entire length of said fin
seal; and
wherein said first and second flanges are sealed within
said fin seal and said first and second interlocking profiles
protrude from said fin seal.
App. Br. 12 (Claims App’x, Claim 1).

1 Claims 4-7, 11-13, 16-19, 21, and 23 were previously cancelled. Br. 2.
Appeal 2011-008408
Application 11/054,032

3
References
The Examiner relies upon the following prior art references:
Spiegelberg US 4,252,238 Feb. 24, 1981
Murphy ’820 US 4,570,820 Feb. 18, 1986
May US 5,480,230 Jan. 2, 1996
Schmidt US 6,481,183 B1 Nov. 19, 2002
Schneider US 6,799,890 B2 Oct. 5, 2004
Murphy WO ’896 WO 84/02896 Aug. 2, 1984
Rejections
The Examiner makes the following rejections:
I. Claims 1-3 and 20 are rejected under 35 U.S.C. § 102(b) as
anticipated by Schmidt;
II. Claims 14, 15, and 24 are rejected under 35 U.S.C. § 102(b) as
anticipated by May;
III. Claims 1-3 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schmidt and Murphy WO ’896;
IV. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Spiegelberg and Schneider; and
V. Claims 9, 10, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Murphy ’820 and Schneider.
SUMMARY OF DECISION
We AFFIRM-IN-PART.
Appeal 2011-008408
Application 11/054,032

4
OPINION
Rejection I – Anticipation by Schmidt
The Examiner found that Schmidt discloses each and every element of
claims 1-3 and 20. Ans. 4-5. In particular, the Examiner construed the
phrase “wherein said zipper extends across substantially an entire length of
said fin seal” to mean wherein said zipper extends across substantially “a
complete measured portion” of the fin seal. Id. at 4 (emphasis added). The
Examiner explained that, in applying the broadest reasonable construction,
because the phrase is “an entire length” rather than “the entire length,” the
extension of the zipper need not be from end to end. See id. In light of that
construction, the Examiner found that Schmidt discloses this element of the
claims. Id. at 4-5.
Appellants contend that Schmidt discloses a zipper “extending across
a portion of the fin seal, rather than substantially an entire length thereof.”
Br. 8 (emphases added). Appellants assert that they employed the phrase
“an entire length” rather than “the entire length” to “avoid [an] objection
related to lack of antecedent basis” and that “this is normal usage within the
field of patent claiming.” Id. As construed by Appellants, Schmidt does not
disclose this element of the claims and thus cannot anticipate. See id.
We construe claims by applying the broadest reasonable interpretation
consistent with the specification, reading the claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art.
E.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Applying that standard here, we disagree with the Examiner’s
construction because the construction essentially renders the term “entire”
superfluous. E.g., Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950
Appeal 2011-008408
Application 11/054,032

5
(Fed. Cir. 2006) (“claims are interpreted with an eye toward giving effect to
all terms in the claim”). If “an entire length” is construed as any complete
measured length it would be synonymous with “a length” because the phrase
“entire” would be of no consequence. For example, if the length from side
to side of the fin seal were 10 inches, “an entire length,” under the
Examiner’s construction, could be any measured length, e.g., 5 inches.
Similarly, “a length” could also be 5 inches because, under the Examiner’s
construction, there is no limitation on how much of the length is measured.
Thus, because the Examiner did not give appropriate meaning to the term
“entire,” we disagree with the Examiner’s construction.2
We also note that our construction is consistent with the Specification.
The Examiner acknowledges that the only portion of the Specification
referencing the length of the fin seal and associated zipper is Figure 1.
Ans. 7. Figure 1 clearly shows the zipper extending across substantially the
entire length of the fin seal from one side to the other. See fig. 1. Further,
the Examiner’s position that Figure 1 provides the sole written description
support for the claim phrase (see Ans. 7) means that the Specification does
not provide support for interpreting “an entire length” as anything other than
substantially the full length of the fin seal.
In light of our construction, it is clear that Schmidt does not disclose
this element of the claims. Accordingly, we do not sustain Rejection I.

2 We understand and agree with the Examiner that Appellants could have
drafted the claim differently to accomplish the same meaning (see Ans. 8),
but we do not agree that the existence of different, and perhaps better,
claiming options renders claim terms superfluous.
Appeal 2011-008408
Application 11/054,032

6
Rejection II – Anticipation by May
The Examiner found that May discloses the subject matter of claims
14, 15, and 24. Ans. 5. In particular, the Examiner interpreted tear bead 36
of May as identifying the claimed “top edge” and primary header 28 as
identifying the claimed “bottom edge,” with “the area of bag between these
two edges (the rest of the bag) . . . considered the central portion.” Id. The
Examiner identified the bottom of May’s bag as depicted in Figure 4 as
corresponding to the claimed fin seal. Id. The Examiner also found “that
the bag is made using the steps of claim 24.” Id.
Appellants contend that the Examiner’s interpretation has “virtually
extinguish[ed]” the claim phrase “central portion of said front wall” by
pointing to Figure 4 of May which shows a “fin seal at the bottom of the
package.”3 Br. 8-9. Appellants also assert that May does not disclose two
steps of method claim 24, which call for:
folding said web whereby outward longitudinal quarters of said
web are brought over a central longitudinal half of said web
thereby bringing longitudinal edges of said web and said zipper
together and forming a top fold and a bottom fold, said first and
second flanges being within said top fold; and forming a fin
seal with said longitudinal edges away from said top fold and
said bottom fold.
Id. at 9 (quoting Claim 24).
In response, the Examiner explained that “[t]he only difference the
examiner can tell between the appellant’s invention and May is the nominal
labels (top, bottom, central, etc[.]) and May showing the packaging in a

3 Appellants do not separately argue claims 14 and 15. See Br. 8-9. We
select claim 14 as representative. Accordingly, claim 15 stands or falls with
claim 14. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also In re Lovin,
652 F.3d 1349, 1351 (Fed. Cir. 2011).
Appeal 2011-008408
Application 11/054,032

7
more folded condition, none of which the Examiner considers to render the
applied interpretations improper.” Ans. 9.
The phrases “top edge,” “bottom edge,” “central portion,” and “front
wall,” are relative terms. The simple rotation of May’s bag as reflected in
Figures 3 and 4 can alter the designations of top, bottom, and front. Further,
Appellants do not contend that “central portion” is limited by the claim
language or Specification to an area central with respect to the top and
bottom edges as opposed to an area central with respect to the lateral or side
edges of the bag. Thus, we agree with the Examiner’s finding that May’s
Figures 3 and 4 disclose the relative arrangement of the “reclosable bag” of
claims 14 and 15, even if reflected in a different overall position (e.g., with
the bottom edge at the top of the figures).4 Accordingly, we sustain
Rejection II with respect to claims 14 and 15.
Claim 24 is directed to a method of forming a reclosable bag. The
entirety of the Examiner’s findings with respect to this claim is that May’s
bag is made using the steps of claim 24. Ans. 5. The Examiner, however,
fails to cite to any portion of May disclosing any steps for forming the bag
reflected therein. Further, it is not evident from May that specific steps for
forming the bags are disclosed. Accordingly, we are not persuaded that a
preponderance of the evidence supports the Examiner’s finding that May’s
bag is made using the steps of claim 24. Thus, we do not sustain Rejection
II as applied to claim 24.

4 We also note that May discloses an alternative embodiment wherein the
“recloseable system could be located in the containment section of each
illustrated bag.” May, col. 5, ll. 48-49. Placement of the recloseable system
in a central location on the front face of the containment section of the bag
shown in Figure 3 would also disclose this claim element.
Appeal 2011-008408
Application 11/054,032

8
Rejection III – Obviousness over Schmidt and Murphy WO ’896
The Examiner concluded that the combination of Schmidt and
Murphy WO ’896 would have rendered obvious the subject matter of claims
1-3 and 20. Ans. 6. For the purposes of this rejection, the Examiner
interpreted Schmidt as not specifically disclosing a zipper extending across
substantially an entire length of the fin seal. Id. The Examiner found that
Murphy WO ’896 discloses a bag with a fin seal having a zipper extending
across substantially the entire length. Id. The Examiner determined that it
would have been obvious to one of ordinary skill at the time of invention “to
provide the bag of Schmidt with a zipper extending the entire length of the
fin seal in order to allow more access to the bag as taught by Murphy [WO
’896].” Id.
Appellants contend that because Schmidt discloses a “limited slider
zipper section applied to the outside of a bag” and Murphy WO ’896
discloses a “non-slider zipper within a bag,” the “two references are drawn
to different constructions, opposite in many respects, and are therefore not
properly combinable.”5 Br. 9.
We disagree. The only alleged “different” or “opposite” constructions
identified by Appellants are whether the zipper has a slider and whether the
zipper is on the outside of or within a bag.6 See Br. 9. As explained by the

5 Appellants argue the claims subject to Rejection III as a group. See Br. 9.
We select claim 1 as representative. Accordingly, claims 2, 3, and 20 stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii); see also Lovin,
652 F.3d at 1351.
6 Appellants also note that Schmidt discloses a “limited” zipper section,
which we understand to mean a zipper not extending substantially the entire
length of the fin seal. See Br. 9. That difference between the references,
however, is precisely why the Examiner relied on Murphy WO ’896 in the
Appeal 2011-008408
Application 11/054,032

9
Examiner, “[s]lider zippers and non-slider zippers are clearly related areas of
art and the benefits and motivations applicable to one are almost invariably
applicable to the other.” Ans. 9. We are also unpersuaded by Appellants’
argument as to whether the zipper is on the outside of or within a bag.
Appellants have not identified anything about the difference to suggest that
one of ordinary skill in the art would not consider looking to Murphy ’896
and be prompted thereby to extend Schmidt’s zipper across substantially an
entire length of the fin seal for precisely the rationale identified by the
Examiner—to allow more access to the bag. Further, Appellants have not
asserted, much less demonstrated, that the proposed combination is beyond
the level of ordinary skill in the art.
Accordingly, we sustain Rejection III.
Rejection IV – Obviousness over Spiegelberg and Schneider
The Examiner concluded that the combination of Spiegelberg and
Schneider would have rendered obvious the subject matter of claim 8.
Ans. 6.
Appellants contend that
it is difficult to see how a person of ordinary skill in the art
would extract the mere presence of flanges from the Schneider
reference and apply this to the Spiegelberg reference in order to
derive the claimed “said zipper is substantially free of
protrusion from said first and second edges, and said first and
second edges are substantially free of sealing to each other.”
Br. 10.

first place, i.e., because the Examiner assumed Schmidt does not disclose
that element of the claims.
Appeal 2011-008408
Application 11/054,032

10
The Examiner’s rejection makes no specific findings with respect to
which elements of the claim are disclosed by Spiegelberg and where those
elements are disclosed. See Ans. 6. Rather than identify the elements that
are disclosed, the rejection indicates which elements are not disclosed.
See id. As such, the Examiner has failed to establish a prima facie case of
obviousness.
Accordingly, we do not sustain Rejection IV.
Rejection V – Obviousness over Murphy ’820 and Schneider
The Examiner concluded that the combination of Murphy ’820 and
Schneider would have rendered obvious the subject matter of claims 9, 10,
and 22. Ans. 6-7. The Examiner found that Murphy ’820 discloses the
elements of the claims except a zipper having flanges and a slider. Id. The
Examiner found that Schneider discloses these elements of the claims.
Id. at 7. The Examiner determined that it would have been obvious to one of
ordinary skill in the art at the time of invention to “create the bag of Murphy
[’820] with a flanged zipper with slider as taught by Schneider et al. in order
to more easily open and close the bag.” Id.
Appellants assert that “the structure of the Schneider reference is so
dissimilar from the towel dispenser of the Murphy reference, that . . . there
would be no reason or motivation to combine these references.”7 Br. 10.
We disagree. First, as noted above, the Examiner provided a reason
with a rational underpinning for the combination. See Ans. 7. Second, as
the Examiner correctly explained, “the Schneider reference is a bag having a

7 Appellants argue the claims subject to Rejection V as a group. See Br. 10.
We select claim 9 as representative. Accordingly claims 10 and 22 stand or
fall with claim 9. See 37 C.F.R. § 41.37(c)(1)(vii); see also Lovin, 652 F.3d
at 1351.
Appeal 2011-008408
Application 11/054,032

11
zipper strip, and the Murphy [’820] reference is a bag having an alternate
type of zipper strip, and one of ordinary skill in the art would look to other
bags for different types of zipper strips.” Id. at 10-11. Thus, we agree with
the Examiner that “zipper strip similarities [are] sufficient to consider the
two [references] related art.” Id.; see In re Bigio, 381 F.3d 1320, 1325-26
(Fed. Cir. 2004) (if the structure and function of the prior art would have
been considered by a person of ordinary skill in the art because of similarity
to the structure and function of the claimed invention as disclosed in the
application, the prior art is properly considered within the same field of
endeavor); see also In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973) (“the
similarities and differences in structure and function of the inventions
disclosed in the references . . . carry far greater weight” in assessing whether
a reference is analogous art). Third, Appellants have not asserted, much less
demonstrated, that the proposed combination is beyond the level of ordinary
skill in the art.
Accordingly, we sustain Rejection V.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1-3 and 20 as
reflected in Rejection I. We REVERSE the Examiner’s decision rejecting
claim 24 as reflected in Rejection II. We REVERSE the Examiner’s
decision rejecting claim 8 as reflected in Rejection IV.
We AFFIRM the Examiner’s decision rejecting claims 1-3, 9, 10, 14,
15, 20, and 22 as reflected in Rejections II, III, and V.

Appeal 2011-008408
Application 11/054,032

12
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

hh