Advanced Poly-Packaging, Inc.

Patent Trials and Appeals Board

Jul 28, 2020

2019005031 (P.T.A.B. Jul. 28, 2020)

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.
14/064,749 10/28/2013 Tony D. Baker API.P.10 8211
26360 7590 07/28/2020
Renner Kenner Greive Bobak Taylor & Weber Co., LPA
Huntington Tower, Suite 400
106 South Main Street
Akron, OH 44308-1412
EXAMINER
MADISON, XAVIER A
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
07/28/2020 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 TONY D. BAKER
____________

Appeal 2019-005031
Application 14/064,749
Technology Center 3700
____________

Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated June 19, 2018, hereinafter “Final
Act.”) rejecting claims 1–5 and 8–21.2 We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Advanced Poly-Packaging, Inc. is identified as the real
party in interest in Appellant’s Appeal Brief (filed Dec. 18, 2018, hereinafter
“Appeal Br.”). Appeal Br. 2.
2 Claims 6 and 7 are canceled. Appeal Br. 10 (Claims App.).
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Application 14/064,749

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SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention relates to an automated device and method for
“opening, inserting product into and sealing a continuous series of bags” at a
high speed. Spec. 1, ll. 10–11.
Claims 1 and 21 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A bag loading and sealing system, comprising:
a continuous web of bags sharing a common
tubular top strip;
a first station having a slitting blade for slitting
said tubular top strip into a pair of opposed linear strips,
and a gripper associated with each of said pair of
opposed linear strips for gripping, opening and
transporting said bags by each associated linear strip, said
grippers comprise gripper chains of interconnected
gripping links caused to open and close by associated
cam sprockets, said gripper chains moving in unison
along paths that diverge, said diverging movement
opening said bags and defining an open mouth in each
said bag;
a transport and filling section in which an open
mouth of each said bag is exposed for receiving material;
and
a sealing section, sealing said linear strips together
and thereby sealing each of said bags with material
therein.

Appeal 2019-005031
Application 14/064,749

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REJECTIONS

I. The Examiner rejects claims 1–5, 8–18, and 21 under 35 U.S.C.
§ 103 as being unpatentable over Lerner3 and Buhl.4
II. The Examiner rejects claims 19 and 20 under 35 U.S.C. § 103
as being unpatentable over Lerner, Buhl, and Sannohe.5

ANALYSIS
Rejection I
Appellant does not present arguments for the patentability of claims
2–5, 8–18, and 21 apart from claim 1. See Appeal Br. 5–8. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2–5, 8–18, and 21 standing or falling with claim 1.
The Examiner finds Lerner discloses most of the limitations of
independent claim 1, “except for the utilization of a gripper chain of
interconnected gripping links that opens and close[s] by an associated cam
sprocket.” Final Act. 3 (citing Lerner, col. 1, ll. 25–32, col. 3, ll. 4–14, 40–
49, col. 5, ll. 7–13, Fig. 1). Nonetheless, the Examiner finds Buhl discloses
a bag loading and sealing system including, inter alia, “a gripper chain (20)
of interconnected gripping links (34) that opens and close[s] by an
associated cam sprocket.” Id (citing Buhl, col. 9, ll. 1–4, Figs. 1, 3). Thus
the Examiner concludes that it would have been obvious to a skilled artisan
“to have modified Lerner to incorporate the disclosure of Buhl to utilize a

3 Lerner et al., US 7,258,656 B2, issued Aug. 21, 2007.
4 Buhl, WO 92/07764 A1, published May 14, 1992.
5 Sannohe et al., US 5,169,083, issued Dec. 8, 1992.
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Application 14/064,749

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gripper chain of interconnected gripping links that opens and close[s] by an
associated cam sprocket” because “[d]oing so would allow the continuous
web of bags to be transported through the filling and sealing apparatus safely
without any prior special preparation.” Id. at 3–4.
Appellant argues that the Examiner’s modification of Lerner’s belts
with Buhl’s gripper chain is based on impermissible hindsight because
Lerner warns against making such a combination. See Appeal Br. 7–8.
According to Appellant, even though Lerner would not be rendered
inoperative in the Examiner’s modification, nonetheless, Lerner teaches
away from making the modification because “Lerner teaches the mating of a
pair of uniquely configured belts . . . as being much preferred over the
utilization of individual and separate grippers and clamps as in Buhl.” Id. at
5, 7 (emphasis added) (bolding and underlining omitted). In particular,
Appellant notes that Lerner incorporates by reference Lerner ’218 (US
5,722,218, issued Mar. 3, 1998), which “unequivocally teach[es] that
discrete grippers should be avoided in favor of” mating novel belts that do
“not rely on externally applied clamping forces.” Id. at 6 (citing Lerner
’218, col. 1, ll. 44–46, col. 2, ll. 5–29) (emphasis omitted).
We are not persuaded by Appellant’s arguments because “[a] known
or obvious [product] does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use.” In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, we appreciate that
neither Lerner nor Lerner ’218 relies on a gripping and transport system
having “externally applied clamping forces,” but rather on an “improved . . .
gripping and transport system utilizing . . . improved web gripping belts.”
See Lerner ’218, col. 1, ll. 43–46, col. 2, ll. 60–62 (emphasis added).
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Application 14/064,749

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However, the Examiner is correct in that Appellant’s argument ignores that
Buhl’s gripper chain of interconnected gripping links does not “giv[e] rise to
any noticeable friction, because the simple web edges may be held without
any pressure from outside.” Examiner’s Answer (dated Apr. 16, 2019,
hereinafter “Ans.”) 4 (emphasis added); see also Buhl, p. 4, ll. 28–30. Such
disclosure would not have led a person of ordinary skill away from the
Examiner’s modification; rather, such disclosure would have been
instructive as “Buhl describes a gripper chain system includ[ing] gripping
characteristics that resolves” Lerner’s issue of avoiding “externally applied
clamping forces.” See Ans.at 4–5; see also W.L. Gore & Assoc., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983) (A prior art reference
must be considered in its entirety, i.e., as a whole, including portions that
would lead away from the claimed invention).
We further agree with the Examiner that Lerner’s disclosure of a
gripping and transport system having a pair of belts rather than a gripping
and transport system having “externally applied clamping forces,” such as,
Buhl’s gripper chains of interconnected gripping links, is merely a
preference based upon a different solution to a similar problem, and does not
criticize, discredit or otherwise discourage the solution claimed. See Ans. 5
(“Lerner merely suggests other gripping mechanisms should be avoided in
favor of an improved plastic transport system embodying enhanced plastic
gripping characteristics which does not rely on externally applied clamping
forces.”); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior
art does not teach away from claimed subject matter merely by disclosing a
different solution to a similar problem unless the prior art also criticizes,
discredits, or otherwise discourages the solution claimed).
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Application 14/064,749

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Finally, we are not persuaded by Appellant’s argument that the
Examiner’s determination of obviousness is based on impermissible
hindsight reconstruction. The Examiner relies on Buhl’s gripper chains of
interconnected gripping links as being well-known when modifying Lerner.
See Ans. 4 (“It should be pointed out that Appellant[’]s instant specification
(see []p. 5, lines 24-26) discloses ‘[s]uch gripper chains are well known in
the art.’”), 7 (“Buhl also discloses knowledge in the art for utilizing gripper
chains for advancing web material.”) (citing Buhl, p. 4, ll. 6–13).
Furthermore, the Examiner has provided an adequate reason with rational
underpinnings to combine the teachings of Lerner and Buhl, namely, to
“allow the continuous web of bags to be transported through the filling and
sealing apparatus safely without any prior special preparation.” Final Act.
3–4; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”) (cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Accordingly, for the foregoing reasons, we are not persuaded that the
Examiner relies on impermissible hindsight, but rather on the knowledge of
those skilled in the art at the time of the invention. Therefore, we sustain the
rejection under 35 U.S.C. § 103 of independent claim 1 as unpatentable over
Lerner and Buhl. Claims 2–5, 8–18, and 21 fall with claim 1.

Rejection II
Appellant does not separately argue the Examiner’s rejection of
claims 19 and 20. See Appeal Br. 5–8. Therefore, for the same reasons
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discussed above, we also sustain the rejection under 35 U.S.C. § 103 of
claims 19 and 20 as unpatentable over Lerner, Buhl, and Sannohe.

CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–5, 8–18, 21 103 Lerner, Buhl 1–5, 8–18, 21
19, 20 103 Lerner, Buhl,
Sannohe
19, 20
Overall
Outcome
1–5, 8–21

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