Ex Parte 7922614 et al

Patent Trial and Appeal Board

May 19, 2016

95002200 (P.T.A.B. May. 19, 2016)

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.
95/002,200 09/12/2012 7922614 386736-614RX (121158) 7772
27526 7590 05/19/2016
HUSCH BLACKWELL LLP
4801 Main Street
Suite 1000
KANSAS CITY, MO 64112
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/19/2016 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
________________

CP PACKAGING, LLC
Appellant, Third Party Requester1
v.
Patent of MULTIVAC, INC.
Respondent, Patent Owner
________________

Appeal 2015-008274
Inter partes Reexamination Control 95/002,200
Ex parte Reexamination Control 90/012,374
Patent US 7,922,614 B22
Technology Center 3900
________________

Before STEVEN D.A. McCARTHY, BRETT C. MARTIN and
JON M. JURGOVAN, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 CP Packaging, LLC, of Appleton, Wisconsin is the real party in
interest. CP Packaging is also identified as the Third Party Requester in the
“Request for Inter partes Reexamination,” dated September 12, 2012, in
Reexamination Control Number 95/002,220.
2 Issued April 12, 2011 to Ivo Ruzik and Elmar Ehrman (the “’614
patent”). The ’614 patent issued from Appl. 11/990,186. Pages 1 and 2 of
the “Patent Owner’s Respondent Brief,” dated October 30, 2014, identifies
stayed litigation involving the ’614 patent.
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STATEMENT OF THE CASE 1
This is an appeal from a merged reexamination proceeding combining 2
Inter partes Reexamination Control 95/002,200 and Ex parte Reexamination 3
Control 90/012,374. The Appellant/Third Party Requester appeals from the 4
Examiner’s decision favorable to the patentability of amended claims 1 and 5
5–7; and newly-added claims 21, 23 and 24. (“Appellant and Third Party 6
Requester CP Packaging’s Appeal Brief,” dated September 11, 2014 7
(“Appeal Brief” or “App. Br. Req’r”), at 9–10). Because this merged 8
proceeding includes an inter partes reexamination requested prior to 9
September 16, 2012, we have jurisdiction under pre-AIA 35 U.S.C. § 134(c) 10
and 35 U.S.C. § 315(b). See Leahy-Smith America Invents Act, PL 112-29, 11
125 Stat. 284, §§ 6(c)(2)(A) and 7(e)(2). 12
13
RECORD ON APPEAL 14
The Examiner’s findings, conclusions, and decision may be found in a 15
“Right of Appeal Notice,” mailed June 17, 2014 (“RAN”).3 The Requester 16
relies on its Appeal Brief and an “Appellant and Third Party Requester CP 17
Packaging’s Rebuttal Brief,” dated January 20, 2015 (“Rebuttal Brief” or 18
“Reb. Br. Req’r”). In addition to the prior art of record, the Requester 19
presents a Declaration of Raymond G. Buchko, executed June 12, 2013 20
(“Buchko Decl.”). The Patent Owner relies on a “Patent Owner’s 21
Respondent Brief,” dated October 30, 2014 (“Respondent Brief” or “Resp. 22

3 The Examiner’s Answer mailed December 19, 2014 incorporates the
RAN by reference.
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Br. PO”). Both the Requester and the Patent Owner participated in an oral 1
argument held on April 13, 2015. 2
Only issues and findings of fact addressed by the Requester or the 3
Patent Owner in their respective briefs have been considered. See 37 C.F.R. 4
§ 41.67(c)(1)(vii); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). In 5
particular, we address only those proposed grounds of rejection listed on 6
pages 9 and 10 of the Requester’s Appeal Brief, as these are the only 7
proposed grounds of rejection argued in the briefs. Any grounds of rejection 8
proposed during the hearing but not addressed in the briefs, as well as any 9
evidence first proffered at the hearing, has not been considered. See 37 10
C.F.R. § 41.73(e)(1). 11
12
GROUNDS OF REJECTION AND DISPOSITION 13
We REVERSE the Examiner’s decision favorable to the patentability 14
of claims 1, 21 and 23. Pursuant to 37 C.F.R. § 41.77(b), we enter new 15
grounds of rejection against independent claims 1, 21 and 23 under pre-AIA 16
35 U.S.C. § 102(e) as being anticipated by Buchko (US 7,575,114 B2, 17
issued Aug. 18, 2009). 18
We do not reach the proposed rejections of claims 1, 21 and 23 under 19
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Buchko in view of 20
either Natterer (US 4,601,421, issued July 22, 1986) or Hamilton (US 21
3,524,298, issued Aug. 18, 1870); alone or further in view of either Webster 22
(US 6,896,125 B2, issued May 24, 2005), Petershack (US 4,353,459, issued 23
Oct. 12, 1982), Case (US 2,971,392, issued Feb. 14, 1961), Casgrain (US 24
538,895, issued May 7, 1895) or St. Louis (US 389,173, issued Sept. 4, 25
1888); once again, alone or even further in view of Weisgerber (US 26
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5,056,773, issued Oct. 15, 1991); Frenker-Hackfort (US 4,747,261, issued 1
May 31, 1988); Strickland (US 4,082,007, issued Apr. 4, 1978) or 2
Wolfelsperger (US 3,610,501, issued Oct. 5, 1971). 3
We AFFIRM the Examiner’s decision not to adopt the proposed 4
rejections of dependent claims 5–7 and 24 under § 103(a) as being 5
unpatentable over Buchko in view of either Natterer or Hamilton; alone or 6
further in view of either Webster, Petershack, Case, Casgrain or St. Louis; 7
once again, alone or even further in view of Weisgerber; Frenker-Hackfort; 8
Strickland or Wolfelsperger. 9
We also AFFIRM the Examiner’s decision not to adopt the proposed 10
rejections of independent claims 1, 5–7, 21, 23 and 24 under § 103(a) as 11
being unpatentable over Spada (US 5,564,556, issued Oct. 15, 1996) in view 12
of either Natterer or Hamilton; alone or further in view of either Webster, 13
Petershack, Case, Casgrain or St. Louis; once again, alone or even further in 14
view of Weisgerber; Frenker-Hackfort; Strickland or Wolfelsperger. 15
We also AFFIRM the Examiner’s decision not to adopt the proposed 16
rejections of claims 23 and 24 under pre-AIA 35 U.S.C. § 112, either under 17
the first paragraph for failure to comply with the written description 18
requirement or under the second paragraph for indefiniteness. 19
20
THE ’614 PATENT 21
The ’614 patent teaches a packaging machine 25 such as a 22
thermoforming machine for wrapping comestibles in a packaging film 29. 23
The packaging machine 25 includes a link chain 31 with grippers for 24
gripping the packaging film; drawing the film off of a roll; and transporting 25
the packaging film to a processing station. (ʼ614 patent, col. 1, ll. 8–18 & 26
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38–41; col. 5, ll. 11–21; & Fig. 9). The ’614 patent also teaches that the 1
articulations between individual rigid links of prior art chains formed gaps 2
that collected dirt and were difficult to clean. The articulations between the 3
links also required lubrication. The combination of collected dirt and 4
lubrication interferes with efforts to maintain the level of hygiene necessary 5
to safely package comestibles. (ʼ614 patent, col. 1, ll. 19–34). The ʼ614 6
patent addresses the problem by providing a chain of alternating rigid chain 7
links and flexible chain links, with grippers that are included with the rigid 8
links. (ʼ614 patent, col. 1, ll. 42–59). 9
Claims 1, 21 and 23 are independent. Claim 1 recites: 10
1. A packaging machine having a chain for transport 11
of a film material, 12
wherein the chain has a series of successive rigid chain 13
links, connected to one another in a movable manner, and 14
flexible chain links provided between the rigid chain links, the 15
flexible chain links being fixed to the rigid chain links, 16
wherein one or more of the rigid chain links include 17
clamping units for clamping the packaging film wherein the 18
packaging film is in a substantially horizontal plane, 19
wherein a plurality of the rigid chain links further 20
comprising one or more downwardly extending guide elements 21
for resisting movement of the chain and the clamped packaging 22
film material in a direction transverse to a direction of travel of 23
the chain, and 24
the packaging machine having a guide rail 25
wherein said guide elements engage said guide rail. 26
(App. Br. Req’r A1.1). 27
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FINDINGS OF FACT 1
Buchko describes a linear motion reciprocating vacuum packaging 2
system 100. The system 100 includes a conveyor 102 and evacuation 3
chambers 106a, 106b, 106c. (See Buchko, col. 3, l. 66 – col. 4, l. 4; col. 4, 4
ll. 29–31; & Fig. 3). The conveyor 102 includes a flexible conveyor belt 218 5
wrapped around pulleys 212, 214. One of the two pulleys 212, 214 is driven 6
to move the conveyor belt below the evacuation chambers 106a, 106b, 106c. 7
(See Buchko, col. 6, ll. 16–23). The flexible conveyor belt 218 may be 8
either single-sectioned or multi-sectioned. (See Buchko, col. 6, ll. 43–46). 9
Clamps 220 secured to the flexible belt serve three purposes. (See 10
Buchko, col. 8, ll. 39–46 & 49–51). One purpose of the clamps 220 is to 11
tighten the flexible conveyor belt 218 around the pulleys 212, 214. (See 12
Buchko, col. 6, ll. 43–55). A second purpose of the clamps 220 is to mount 13
platens 108, on which pre-filled bags of comestibles are conveyed. (See 14
Buchko, col. 2, ll. 1–7; col. 18, ll. 7–21; and Figs. 3, 16 & 17). Each platen 15
108 is fastened to one of the clamps 220 (see Buchko, col. 7, l. 63 – col. 8, l. 16
7), such that the clamps and the platens combine to form integral, rigid 17
bodies (see, e.g., Buchko, Figs. 16 & 18). A third purpose of Buchko’s 18
clamps 220 is to splice sections of a multi-sectioned flexible conveyor belt 19
218 together. (See Buchko, col. 6, ll. 36–42 & col. 8, ll. 49–59). As a 20
consequence, each section of the multi-sectioned flexible conveyor belt 218 21
is provided between a pair of the rigid clamps 220; and each section of the 22
belt is fixed to a clamp at each of the two ends of the section. Buchko does 23
not appear to describe the materials from which the flexible conveyor belt 24
218 and the clamps 220 are made. 25
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Each of Buchko’s platens 108 includes platen guide blocks 268 1
attached to a front end and a back end of a bottom surface of the platen. 2
Each platen guide block defines a slot 270. The support frame 110 of the 3
system 100 mounts a pair of guide rails 272. The guide rails 272 engage the 4
slots 270 in the platen guide blocks 268 to restrain the platens 108 to travel 5
in a straight line along the length of the system 100 for engagement with the 6
evacuation chambers 106a, 106b, 106c. (See Buchko, col. 8, ll. 10–19 & 7
Figs. 14 & 16). 8
Each of Buchko’s platens 108 also includes a clamp and seal member 9
278 rigidly attached to a top surface of the platen by fasteners 282. (See 10
Buchko, col. 8, ll. 32–38). During a packaging operation, the platens 108 11
position pre-filled plastic bags containing comestibles under the evacuation 12
chambers 106a, 106b, 106c. (See Buchko, col. 18, ll. 7–16). When one of 13
the evacuation chambers 106a, 106b, 106c pivots downwardly onto one of 14
the platens 108, the evacuation chamber and the platen cooperate to form an 15
evacuated space around the bag. (See Buchko, col. 18, ll. 34–43). The 16
vacuum drawn in this evacuated space draws any air from the bag. 17
When one of the evacuation chambers 106a, 106b, 106c pivots 18
downwardly onto one of the platens 108, an upper bag clamp member 710 19
mounted within the evacuated space presses the open end of the bag against 20
the clamp and seal member 282 of the platen 108. As such, the clamp and 21
seal member 278 is designed for clamping the plastic film at the open end of 22
the bag in place on the platen 108. (See Buchko, col. 17, ll. 22–28 & Fig. 23
41). While the film at the open end of the bag is clamped in place on the top 24
surface of the platen 108, a heated seal bar 552 and a knife 556 act against 25
the clamp and seal member 278 to seal the bag and trim any excess film 26
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from the sealed end. (See Buchko, col. 16, ll. 16–24; col. 18, ll. 43–50; & 1
Figs. 42 & 43). 2
3
Spada 4
Spada describes a conveyor device 2 for use in forming ordered 5
groups of cigarettes in a cigarette packaging machine. (See Spada, col. 2, ll. 6
62–67). The conveyor device 2 includes a continuous conveyor belt 3 7
mounted for continuous travel about two pulleys 4, 5. The conveyor belt 3 8
mounts a plurality of tubular housings 6 at equal intervals along the belt. 9
The housings 6 have hollow interiors of rectangular cross-section. During 10
operation, the conveyor belt 3 positions each housing under a hopper outlet 11
1, 1ʹ, 1ʺ. That housing 6 receives a group of cigarettes from the hopper 12
outlets 1, 1ʹ, 1ʺ and arranges the group of cigarettes into rectangular stacks. 13
When the conveyor belt 3 transports the filled housing 6 to an extraction 14
station near a downstream pulley 5, that housing feeds the group of 15
cigarettes to another mechanism, which wraps the group of cigarettes. (Id.; 16
see also Spada, col. 3, ll. 12–28 and Fig. 1). 17
18
NEW GROUNDS OF REJECTION AGAINST CLAIMS 1, 21, 23 AND 24 19
Claim 1 20
Buchko describes a “packaging machine,” that is, a linear motion 21
reciprocating vacuum packaging system 100 for evacuating, sealing and 22
trimming pre-filled bags of comestibles, satisfying the limitations of 23
independent claim 1. (See Buchko, col. 1, ll. 13–16; col. 3, l. 66 – col. 4, 24
l. 4; & col. 4, ll. 9–16; see also App. Br. Req’r 13 & 21). 25
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Buchko describes a “packaging machine having a chain for transport 1
of a packaging film material, wherein the chain has a series of successive 2
rigid chain links, connected to one another in a movable manner, and 3
flexible chain links provided between the rigid chain links.” Buchko’s 4
system 100 has a conveyor 102 including a flexible conveyor belt 218. (See 5
Buchko, col. 6, ll. 20–23). More specifically, Buchko describes a multi-6
sectioned flexible conveyor belt 218 formed from sections coupled together 7
by clamps 220. (See Buchko, col. 6, ll. 36–42 & col. 8, ll. 49–59). A platen 8
108 is fastened to each clamp 220 such that the combination is an integral, 9
rigid body. (See Buchko, col. 7, l. 63 – col. 8, l. 7 & Figs. 16 & 18). In this 10
arrangement, the chain comprises a series of successive rigid chain links, 11
each such link taking the form of a clamp 220 and a platen 108 fastened 12
integrally with the clamp; and flexible chain links taking the form of 13
sections of the flexible conveyor belt 218. (See App. Br. Req’r 13). The 14
flexible chain links, that is, the sections of the flexible conveyor belt 218, are 15
fixed, that is, clamped, at their ends to the rigid chain links by means of the 16
clamps 220. 17
Buchko describes “wherein one or more of the rigid chain links 18
include clamping units for clamping the packaging film wherein the 19
packaging film is in a substantially horizontal plane.” Buchko also describes 20
“wherein a plurality of the rigid chain links further compris[e] one or more 21
downwardly extending guide elements for resisting movement of the chain 22
and the clamped packaging film material in a direction transverse to a 23
direction of travel of the chain.” Each rigid chain link includes a platen 108. 24
Each platen 108 includes a clamping unit taking the form of a clamp and 25
seal member 278 for clamping the packaging film at the open end of a bag in 26
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a plane defined by the top surface of the clamp and seal member. (See 1
Buchko, col. 8, ll. 32–38; col. 17, ll. 22–28; & Fig. 41). Each platen 108 2
also includes downwardly extending guide elements taking the form of 3
platen guide blocks 268 for resisting movement of the chain (and of a bag 4
carried by the chain) transverse to the length of the system 100. (See 5
Buchko, col. 8, ll. 10–19 & Figs. 14 & 16). Therefore, each rigid chain link, 6
namely, each combination of a clamp 220 and a corresponding platen 108, 7
includes a clamping unit taking the form of a clamp and seal member 278; 8
and guide elements taking the form of platen guide blocks 268. (See App. 9
Br. Req’r 13–14). 10
Finally, Buchko describes “the packaging machine having a guide rail 11
wherein said guide elements engage said guide rail.” Buchko’s system 100 12
includes guide rails 272 that engage slots 270 in the platen guide blocks 268 13
to restrain transverse movement of the chain and the bags carried by the 14
platens 108. (See Buchko, col. 8, ll. 10–19 & Figs. 14 & 16; see also App. 15
Br. Req’r 14). 16
17
Claim 21 18
Buchko also describes a “packaging machine” satisfying the 19
limitations of independent claim 21. (See Buchko, col. 1, ll. 13–16; col. 3, l. 20
66 – col. 4, l. 4; & col. 4, ll. 9–16; see also App. Br. Req’r 13 & 21). 21
Buchko describes a “packaging machine having a chain for 22
transporting a food packaging film, wherein the chain has a series of 23
successive rigid chain links connected to one another in a movable manner, 24
and flexible chain links provided between the rigid chain links and . . . fixed 25
to the rigid chain links.” As discussed earlier, Buchko’s system 100 has a 26
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conveyor 102 including a flexible conveyor belt 218. (See Buchko, col. 6, ll. 1
20–23). More specifically, Buchko describes a multi-sectioned flexible 2
conveyor belt 218 formed from sections coupled together by clamps 220. 3
(See Buchko, col. 6, ll. 36–42 & col. 8, ll. 49–59). A platen 108 is fastened 4
to each clamp 220 such that the combination is an integral, rigid body. (See 5
Buchko, col. 7, l. 63 – col. 8, l. 7 & Figs. 16 & 18). In this arrangement, the 6
chain comprises a series of successive rigid chain links, each such link 7
taking the form of a clamp 220 and a platen 108 fastened integrally with the 8
clamp; and flexible chain links taking the form of sections of the flexible 9
conveyor belt 218. (See App. Br. Req’r 13). The flexible chain links, that 10
is, the sections of the flexible conveyor belt 218, are provided between the 11
rigid chain links and are fixed, that is, clamped, at their ends to the rigid 12
chain links by means of the clamps 220. 13
Buchko also describes “the packaging machine further comprising a 14
guide rail.” The frame 110 of Buchko’s system 100 mounts guide rails 272. 15
(See Buchko, col. 8, ll. 10–15 & Fig. 16). 16
Buchko describes “wherein at least some of the rigid chain links 17
include . . . clamping unit[s], for clamping the packaging film.” Buchko also 18
describes “wherein at least some of the rigid [chain] links hav[e] a pair of 19
downwardly extending legs configured to engage the guide rail to 20
substantially prevent displacement of the chain and the food packaging film 21
in a direction substantially transverse to a direction of travel of the chain.” 22
Each rigid chain link includes a platen 108. Each platen 108 includes a 23
clamping unit taking the form of a clamp and seal member 278 for clamping 24
the packaging film at the open end of a bag in a plane defined by the top 25
surface of the clamp and seal member. (See Buchko, col. 8, ll. 32–38; col. 26
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17, ll. 22–28; & Fig. 41). Each platen 108 also includes downwardly 1
extending guide elements taking the form of platen guide blocks 268. Each 2
platen guide block 268 has a slot 270 so as to define a downwardly 3
extending leg on each side of the slot. (See Buchko, col. 8, ll. 10–15 & Fig. 4
14). The downwardly extending legs surrounding the slots 270 in the guide 5
elements 268 engage the guide rails 272 to substantially prevent 6
displacement of the chain and the food packaging film in a direction 7
substantially transverse to a direction of travel of the chain. (See Buchko, 8
col. 8, ll. 10–19 & Fig. 16; see also App. Br. Req’r 14). Therefore, each 9
rigid chain link, namely, each combination of a clamp 220 and a 10
corresponding platen 108, includes a clamping unit taking the form of a 11
clamp and seal member 278; and downwardly extending legs defined by the 12
platen guide blocks 268. (See App. Br. Req’r 13–14). 13
14
Claim 23 15
Buchko also describes a “packaging machine” satisfying the 16
limitations of independent claim 23. (See Buchko, col. 1, ll. 13–16; col. 3, l. 17
66 – col. 4, l. 4; & col. 4, ll. 9–16; see also App. Br. Req’r 13 & 21). 18
Buchko describes a “packaging machine having a chain for 19
transporting a food packaging film, . . . wherein the chain comprises a 20
continuous flexible traction element and the rigid chain links are clamped on 21
the continuous flexible traction element, wherein the regions of the flexible 22
traction element in-between the rigid chain links are the flexible chain 23
links.” As discussed earlier, Buchko’s system 100 has a conveyor 102 24
including a flexible conveyor belt 218. (See Buchko, col. 6, ll. 20–23). 25
More specifically, Buchko describes an embodiment in which the flexible 26
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conveyor belt 218 comprises a continuous flexible traction element, taking 1
the form of a continuous belt with parallel alternating ridges 226 and 2
grooves 228 on an inner side 224 for tractional engagement with the pulleys 3
212, 214. (See Buchko, col. 6, ll. 36–42 & col. 7, ll. 58–62). Clamps 220 4
fasten platens 108 to the flexible conveyor belt 218 at intervals along the 5
belt. (See Buchko, col. 7, l. 63 – col. 8, l. 7 & Figs. 16 & 18). Each 6
combination of a clamp 220 and a corresponding platen 108 constitutes one 7
of a plurality of rigid chain links, arranged in a successive series and 8
connected to one another by the flexible conveyor belt 218 in a movable 9
manner. The regions of the flexible conveyor belt 218 in-between the 10
successive clamps 220 and platens 108 constitute flexible chain links 11
provided between, and fixed to, the rigid chain links. 12
Buchko describes “wherein at least some of the rigid chain links 13
include a clamping unit for clamping the packaging film.” Buchko also 14
describes “wherein one or more of the rigid chain links further compris[e] 15
one or more downwardly extending guide elements for resisting movement 16
of the chain and the clamped packaging film material in a direction 17
transverse to a direction of travel of the chain.” Each rigid chain link 18
includes a platen 108. Each platen 108 includes a clamping unit taking the 19
form of a clamp and seal member 278 for clamping the packaging film at the 20
open end of a bag in a plane defined by the top surface of the clamp and seal 21
member. (See Buchko, col. 8, ll. 32–38; col. 17, ll. 22–28; & Fig. 41). Each 22
platen 108 also includes downwardly extending guide elements taking the 23
form of platen guide blocks 268 for resisting movement of the chain (and of 24
a bag carried by the chain) transverse to the length of the system 100. (See 25
Buchko, col. 8, ll. 10–19 & Figs. 14 & 16). Therefore, each rigid chain link, 26
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namely, each combination of a clamp 220 and a corresponding platen 108, 1
includes a clamping unit taking the form of a clamp and seal member 278; 2
and guide elements taking the form of platen guide blocks 268. (See App. 3
Br. Req’r 13–14). 4
Finally, Buchko describes “the food packaging machine having a 5
guide rail wherein said guide elements engage said guide rail.” Buchko’s 6
system 100 includes guide rails 272 that engage slots 270 in the platen guide 7
blocks 268 to restrain transverse movement of the chain and the bags carried 8
by the platens 108. (See Buchko, col. 8, ll. 10–19 & Figs. 14 & 16; see also 9
App. Br. Req’r 14). 10
11
Response to Argument 12
The Patent Owner’s arguments do not distinguish between the 13
language of claim 1, claim 21 and claim 23. (See Resp. Br. PO 9–10 and 14
21). The Examiner finds that Buchko does not anticipate claim 1, claim 21 15
or claim 23 because: 16
Buchko does not show a guide rail for links on a chain. In 17
Buchko, the guide elements are attached to a platen that is 18
affixed to the drive belt. These guide elements on the platen 19
engage guide rails. However, there is no teaching in Buchko of 20
the rigid links having guide elements engaging a guide rail. 21
Buchko also fails to show clamping units for engaging a 22
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packaging film.4 1
(RAN 19–20). The Patent Owner echoes these findings in its Respondent 2
Brief. (See Resp. Br. PO 17). The Patent Owner’s argument turns on the 3
scope and meaning of the term “rigid chain link.” 4
The Patent Owner does not identify any formal definition or clear 5
disclaimer in the written description of the ʼ614 patent that might limit the 6
scope of the term “rigid chain link” so as to exclude the rigid body 7
combining a clamp 220 and a corresponding platen 108 described by 8
Buchko. Neither does the Patent Owner provide evidence of any specialized 9
usage of the term “rigid chain link,” or even of the word “link,” in the 10
pertinent art. (See Reb. Br. Req’r 7 (pointing that the Patent Owner “has 11
never proposed any formal claim construction to this effect and cites no 12
evidence supporting this construction”). A traditional definition of a “chain” 13
denotes a “flexible series of metal links or rings fitted into one another.” 14
(MCGRAW-HILL DICTIONARY OF ENG’RING (McGraw-Hill Cos., New York, 15
2nd edition 2003) (“chain,” Design Eng’ring, def. 1)). Reacting to this 16
traditional usage, more recent general purpose dictionaries have defined 17
“link” as, for example, “a section of something resembling a chain.” 18

4 The Examiner does not appear to explain the last sentence further.
The Patent Owner in its Respondent Brief argues only that Buchko fails to
describe clamping units included on the clamps 220 as opposed to the
platens 108. (See, e.g., Resp. Br. PO 9–10 and 17; Reb. Br. Req’r 7). This
argument is not persuasive, as discussed below. If prosecution is reopened
under 37 C.F.R. § 41.77(b)(1), the Examiner may address whether one of
Buchko’s clamp and seal members 278, alone or in combination with the
platen 108 bearing the reaction force applied to the clamp and seal member
by the corresponding upper bag clamp member 710, is a “clamping unit” as
that term is used in the claims.
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(WEBSTER’S NEW WORLD COLLEGE DICTIONARY (Wiley Publ’g, Inc., 1
Cleveland, 4th edition 2010) (“link,” entry 1, def. 2a)). Although the ʼ614 2
patent describes particular chains, the Patent Owner does not point out any 3
disclosure in the ʼ614 patent inconsistent with a broad reading of “rigid 4
chain link.” 5
Claims 1, 21, and 23 recite that at least some of the rigid chain links 6
“include a clamping unit.” (Italics added for emphasis.) This recitation 7
implies that the term rigid chain links reads on the combination of the 8
structure connected to the flexible links; the clamping unit; and whatever 9
structure might be used to couple the structure connected to the flexible links 10
to the clamping unit. 11
Buchko describes rigid chain links, each such link taking the form of a 12
combination of a clamp 220 and a corresponding platen 108. The clamp 220 13
and the corresponding platen 108 are affixed to each other by fasteners so as 14
to form an integral, rigid body. (See, e.g., Buchko, col. 7, l. 63 – col. 8, l. 7 15
& Figs. 16 & 18). Nothing in either the ʼ614 patent or the ordinary usage of 16
the term “rigid chain links” precludes the term reading on the combination 17
of a clamp 220 and a corresponding platen 108. (See Reb. Br. Req’r 7 18
(arguing that “the Buchko platen 108 is a ‘rigid link’ according to claims 1, 19
21 and 23”)). The corresponding platen includes a clamping unit taking the 20
form of a clamp and seal member 278; and guide elements taking the form 21
of platen guide blocks 268. Therefore, Buchko describes rigid chain links 22
including both clamping units as recited in claims 1, 21 and 23; guide 23
elements as recited in claims 1 and 23; and downwardly extending legs as 24
recited in claim 21. (See Reb. Br. Req’r 7–9). On this basis, we reverse the 25
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Examiner’s decision not to reject claims 1, 21 and 23 under § 102(e) as 1
anticipated by Buchko. 2
Because we reverse the Examiner’s decision not to reject claims 1, 21 3
and 23 as anticipated by Buchko, we need not reach the issue whether the 4
subject matter of one or more of these claims would have been obvious from 5
the teachings of Buchko in combination with the teachings of one or more 6
other prior art references. There is, in fact, good reason not to reach these 7
proposed rejections in this appeal. Under the circumstances of the present 8
appeal, the anticipatory teachings of Buchko alone may provide an adequate 9
factual underpinning to conclude that the subject matter of claims 1, 21 and 10
23 would have been obvious from Buchko and the cited secondary 11
reference. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). (See Reb. 12
Br. Req’r 10–11). On the other hand, as discussed in greater detail in the 13
following section of this opinion, the Examiner correctly finds that the 14
Requester has not suggested a persuasive reason why one of ordinary skill in 15
the art might have modified Buchko’s machine in view of the teachings of 16
the cited secondary references so as to yield the subject matter of claim 1, 17
claim 21 or claim 23. Entering new grounds of rejection under § 103(a) on 18
the same factual basis as the rejection under § 102(e) would multiply the 19
issues to be resolve in this reexamination proceeding without providing the 20
Requester any significant additional opportunity to be heard as to 21
patentability. 22
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OBVIOUSNESS 1
The Requester relies only on Buchko or Spada as a primary reference 2
in each of the obviousness rejections listed on pages 9 and 10 of its Appeal 3
Brief. Buchko describes a system 100 in which the plastic film plies at the 4
open ends of bags pre-filled with comestibles are clamped, heat-sealed and 5
trimmed within an evacuated space. (See Buchko, col. 16, ll. 16–24; col. 17, 6
ll. 22–28; col. 18, ll. 43–50; & Figs. 41–43). Spada describes a machine for 7
forming ordered groups of cigarettes. Another machine subsequently wraps 8
the groups of cigarettes in packaging sheets. (See Spada, col. 2, ll. 62–67). 9
Neither Buchko nor Spada teaches the conveyance or use of continuous 10
webs or sheets of plastic film. 11
Of the two secondary references listed on pages 9 and 10 of the 12
Requester’s Appeal Brief, Natterer describes a web feeding means 6 for use 13
in a packaging machine. (See Natterer, col. 1, ll. 7–19 & col. 2, ll. 29–36). 14
The feeding means 6 includes a pair of parallel feeding chains 8, 9 running 15
on sprocket wheels 10, 11. (See Natterer, col. 2, ll. 45–50 & Fig. 2). Each 16
link of the two chains 8, 9 includes a clamp 12 for gripping a transverse edge 17
of a material web 4 and transporting the web parallel to the lengths of the 18
chains. (Natterer, col. 1, ll. 7–19; col. 2, ll. 37–44 & 51–53; & Fig. 4). 19
Hamilton describes a machine designed for making hermetically 20
sealed and evacuated packages from a pair of continuous webs of flexible 21
plastic packaging material. (Hamilton, col. 1, ll. 13–28 (Abstract)). 22
Hamilton’s machine includes a pair of side-by-side endless chains 26 23
mounted on sprockets 22, 24. (See Hamilton, col. 2, ll. 28–32 & Fig. 2). As 24
depicted in Figures 5 and 6 of Hamilton, each link of the two chains 26 25
mounts a spring loaded clip 36. The clips grip transverse edges of flexible 26
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plastic packaging film drawn from a roll 28 and transport the film parallel to 1
the length of the chains 26 toward packaging stations in the machine. (See 2
Hamilton, col. 2, ll. 41–47 & Figs. 2–6). 3
At pages 24 and 25 of its Brief, the Requester says that “it would have 4
been obvious to a person of skill in the art to substitute a sheet of packaging 5
film in lieu of preformed packaging bags or receptacles,” but does not 6
explain why. Elsewhere, the Requester argues that: 7
A person of ordinary skill in the art would [have been] 8
motivated to combine the teachings of Spada and Natterer. The 9
methods to combine these mechanical devices [were] well 10
known and [would have] yield[ed] predictable results. See, e.g., 11
MPEP 2243.A. Both Spada and Natterer are packaging 12
machines using different kinds of chains, and Buchko teaches 13
that a traction element chain as in Spada is a replacement for 14
conventional chains (i.e., as used by Natterer). See Buchko at 15
1:17–45, Buchko Provisional p. 6 ll. 1–2, p. 7 ll. 3–4 16
(discussing substitution of one for the other). It would [have 17
been] a simple substitution for a person of ordinary skill in the 18
art to [have] add[ed] Natterer’s clamping units to Spada’s rigid 19
links (clamps and housing units), with predictable results. See, 20
e.g., MPEP 2243.B. Similarly, Natterer’s guide elements could 21
simply [have been] substituted beneath Spada’s clamps and 22
housing units. Id. 23
(See App. Br. Req’r 40). The Requester makes similar arguments regarding 24
the combination of Buchko and Natterer at page 26 of its Appeal Brief; and 25
regarding the combination of Buchko and Hamilton at pages 35 and 36 of its 26
Appeal Brief. (See also Reb. Br. Req’r 16). The argument is not persuasive. 27
As the Patent Owner correctly points out, one of ordinary skill in the 28
art would not have had reason to merely substitute clamps of the type 29
described by Natterer or Hamilton for Buchko’s clamp and seal member 30
278. (See Resp. Br. PO 22–23 & 26). Buchko’s clamp and seal member 31
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278 acts as an anvil against which an upper bag clamp member 710 mounted 1
within the evacuated space presses to clamp the open end of a pre-filled bag 2
in place for heat sealing. (See Buchko, col. 17, ll. 22–28 & Fig. 41). If one 3
were to have substituted the clamps described by Natterer or Hamilton for 4
the clamp and seal members 278, Buchko’s upper bag clamp member 710 5
would not have properly engaged the substituted clamp to secure the open 6
end of the pre-filled bag in place on the platen 108 for heat sealing and 7
trimming. 8
Instead of a mere substitution of one known clamping unit for another, 9
the proposed replacement would have required one of ordinary skill in the 10
art to further modify the platens 108 and the evacuation chambers 106a, 11
106b, 106c of Buchko’s system 100 to provide either for clamping 12
engagement of the upper bag clamp member 710 against the substituted 13
clamp; or a mechanism to open and close the substituted clamp. The 14
Requester has not provided a persuasive reason why one of ordinary skill in 15
the art might have undertaken the substitution in view of the further 16
modification required for implementation. This is particularly true in view 17
of the different functions carried out by the described clamps, namely, 18
immobilizing the film plies at the open end of a bag for heat sealing and 19
trimming, in the case of Buchko’s clamp and seal member 278; and 20
conveying a continuous web of film material through a packaging machine, 21
in the case of Natterer and Hamilton. The Requester does not persuade us 22
that it would have been obvious to modify Buchko’s system 100 in view of 23
the teachings of Natterer or Hamilton. 24
One of ordinary skill in the art could not merely have substituted a 25
clamp of the type described by Natterer or Hamilton for a clamp taught by 26
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Spada because Spada does not describe any clamping units. Furthermore, 1
the Requester suggests no persuasive reason why one of ordinary skill in the 2
art would have attempted to modify Spada’s machine to combine the 3
functions of grouping and wrapping the cigarettes (see Reb. Br. Req’r 22–4
23). Spada describes a single packaging machine including separate 5
mechanisms for grouping and wrapping the cigarettes. The Requester has 6
not suggested a persuasive reason why one of ordinary skill in the art would 7
have undertaken the redesign necessary to combine the two functions in one 8
mechanism. 9
On pages 29 and 30 of its Respondent Brief, the Patent Owner 10
identifies design problems that might result from attempting to impose 11
clamps of the type described by Natterer or Hamilton on Spada conveyor 12
belt 3. The Requester has not suggested a persuasive reason why one of 13
ordinary skill in the art would have wished to undertake the modification 14
necessary to make the proposed “substitution.” The Requester does not 15
persuade us that it would have been obvious to modify Buchko’s system 100 16
in view of the teachings of Natterer or Hamilton. 17
Each of the tertiary references, Webster, Petershack, Case, Casgrain 18
and St. Louis, describes a belt, band or chain. The Requester does not argue 19
that any of the tertiary references describes a chain specifically designed for 20
a food packaging machine, however. (See generally App. Br. PO 17–19). 21
As such, none of these references would have provided one of ordinary skill 22
in the art reason to modify Buchko’s system 100 or Spada’s conveyor belt 3 23
in view of the teachings of these references. Likewise, the Requester’s 24
proposal to use any one or more of Weisgerber; Frenker-Hackfort; 25
Strickland or Wolfelsperger to teach a guide element (see, e.g., App. Br. 26
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Req’r 37–38) does not remedy the deficiencies in the combined teachings of 1
the primary and secondary references. 2
The Requester does not argue in this appeal that claims 5–7 and 24 are 3
anticipated by Buchko. We sustain the Examiner’s decision not to adopt the 4
proposed rejections of dependent claims 5–7 and 24 under § 103(a) as being 5
unpatentable over Buchko in view of either Natterer or Hamilton; alone or 6
further in view of either Webster, Petershack, Case, Casgrain or St. Louis; 7
once again, alone or even further in view of Weisgerber; Frenker-Hackfort; 8
Strickland or Wolfelsperger, based on the pendency of claims 5–7 from 9
claim 1 and the pendency of claim 24 from claim 23. (See Resp. Br. PO 32–10
33). We also sustain the Examiner’s decision not to adopt the proposed 11
rejections of independent claims 1, 5–7, 21, 23 and 24 under § 103(a) as 12
being unpatentable over Spada (US 5,564,556, issued Oct. 15, 1996) in view 13
of either Natterer or Hamilton; alone or further in view of either Webster, 14
Petershack, Case, Casgrain or St. Louis; once again, alone or even further in 15
view of Weisgerber; Frenker-Hackfort; Strickland or Wolfelsperger. 16
17
INDEFINITENESS 18
We sustain the Examiner’s decision not to reject claims 23 and 24 19
under the second paragraph of pre-AIA 35 U.S.C. § 112. Claim 23 recites a 20
“packaging machine having a chain for transporting a food packaging film, 21
. . . the food packaging machine having a guide rail wherein said guide 22
elements engage said guide rail.” (Italics added for emphasis.) The 23
Requester argues that claim 23 (and, by way of dependency, claim 24) is 24
indefinite because the italicized term lacks antecedent basis. Lack of 25
antecedent basis is not, in and of itself, a basis for concluding that a claim is 26
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indefinite. (See App. Br. Req’r 43). Instead, lack of antecedent basis must 1
be taken into account in determining whether one of ordinary skill in the art 2
would have been able to determine the scope of the claim with reasonable 3
precision. See Energizer Holdings, Inc. v. International Trade Comm’n, 435 4
F.3d 1366, 1369–70 (Fed. Cir. 2006). The Examiner correctly concludes 5
that one of ordinary skill in the art reading claim 23 would have recognized 6
that the term “food packaging machine” recited in the body of the claim 7
referred back to the “packaging machine having a chain for transporting a 8
food packaging film” recited in the preamble. (See RAN 18). Therefore, we 9
sustain the Examiner’s decision not to reject claims 23 and 24 under § 112, 10
second paragraph, as indefinite. 11
12
WRITTEN DESCRIPTION 13
Claim 23 recites “wherein the chain comprises a continuous flexible 14
traction element and the rigid chain links are clamped on the continuous 15
flexible traction element.” The written description of the ʼ614 patent states 16
that “[f]urther embodiments, e.g. resulting from the rigid chain links being 17
clamped on a continuous traction element, are likewise conceivable.” (ʼ614 18
patent, col. 2, ll. 55–64). The Requester argues that the quoted recitation of 19
claim 23 lacks written description support because the clamping units 9, the 20
only clamps described in detail in the ʼ614 patent, are not designed to clamp 21
a rigid chain link to a continuous flexible traction element. (See App. Br. 22
Req’r 43–44). 23
The test for compliance with the written description requirement is 24
“whether the disclosure of the application relied upon reasonably conveys to 25
those skilled in the art that the inventor had possession of the claimed 26
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subject matter as of the filing date.” Ariad Pharmas., Inc. v. Eli Lilly & Co., 1
598 F.3d 1336, 1351 (Fed. Cir. 2010). The quoted passage from column 2 2
of the ʼ614 patent would have indicated to one of ordinary skill in the art that 3
the named inventors had possession of a packaging machine satisfying the 4
quoted limitation as of the filing date. The failure to specifically describe a 5
clamp designed to clamp a rigid chain link to a continuous flexible traction 6
element goes to the question whether the description was sufficient to enable 7
one of ordinary skill in the art to make the subject matter of claim 23, not to 8
whether the named inventors had possession of the claimed subject matter. 9
Therefore, we sustain the Examiner’s decision not to reject claims 23 and 24 10
under § 112, first paragraph for lack of written description. 11
12
DECISION 13
We REVERSE the Examiner’s decision not to reject claims 1, 21 and 14
23 under § 102(e) as being anticipated by Buchko. We do not reach the 15
proposed rejections of claims 1, 21 and 23 under § 103(a) as being 16
unpatentable over Buchko in view of either Natterer or Hamilton; alone or 17
further in view of either Webster, Petershack, Case, Casgrain or St. Louis; 18
once again, alone or even further in view of Weisgerber; Frenker-Hackfort; 19
Strickland or Wolfelsperger. 20
We AFFIRM the Examiner’s decision not to reject claims 1, 5–7, 21, 21
23 and 24 on the remaining grounds listed on pages 9–10 of the Requester’s 22
Appeal Brief. 23
In summary, we AFFIRM the Examiner’s decision not to reject 24
dependent claims 5–7 and 24; and REVERSE the Examiner’s decision not to 25
reject independent claims 1, 21 and 23. 26
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Pursuant to 37 C.F.R. § 41.77(b), we enter new grounds of rejection 1
against independent claims 1, 21 and 23 under pre-AIA 35 U.S.C. § 102(e) 2
as being anticipated by Buchko (US 7,575,114 B2, issued Aug. 18, 2009). 3
This decision contains new grounds of rejection pursuant to 37 C.F.R. 4
§ 41.77(b), which provides that "[a]ny decision which includes a new 5
ground of rejection pursuant to this paragraph shall not be considered final 6
for judicial review." Correspondingly, no portion of the decision is final for 7
purposes of judicial review. The Patent Owner or the Requester may request 8
rehearing under 37 C.F.R. § 41.79, if appropriate; however, the Board may 9
elect to defer issuing any decision on such request for rehearing until such 10
time that a final decision on appeal has been issued by the Board. 11
For further guidance on new grounds of rejection, see 37 C.F.R. 12
§ 41.77(b)–(g). The decision may become final after it has returned to the 13
Board. 37 C.F.R. § 41.77(f). 14
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN 15
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one 16
of the following two options with respect to the new grounds of rejection to 17
avoid termination of the appeal as to the rejected claims: 18
(1) Reopen prosecution. The owner may file 19
a response requesting reopening of prosecution 20
before the examiner. Such a response must be 21
either an amendment of the claims so rejected or 22
new evidence relating to the claims so rejected, or 23
both. 24
(2) Request rehearing. The owner may 25
request that the proceeding be reheard under 26
§ 41.79 by the Board upon the same record. 27
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Any request to reopen prosecution before the examiner under 1
37 C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected." 2
Accordingly, a request to reopen prosecution is limited to issues raised by 3
the new ground(s) of rejection entered by the Board. A request to reopen 4
prosecution that includes issues other than those raised by the new ground(s) 5
is unlikely to be granted. Furthermore, should the Patent Owner seek to 6
substitute claims, there is a presumption that only one substitute claim would 7
be needed to replace a cancelled claim. Any claim amendments should 8
comply with the requirements of pre-AIA 35 U.S.C. § 112. 9
The Requester may file comments in reply to a Patent Owner 10
response. 37 C.F.R. § 41.77(c). The Requester’s comments under 37 C.F.R. 11
§ 41.77(c) shall be limited in scope to the issues raised by the Board’s 12
opinion reflecting its decision to reject the claims and the patent owner’s 13
response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed 14
rejection is not permitted as a matter of right. A newly proposed rejection 15
may be appropriate if it is presented to address an amendment and/or new 16
evidence properly submitted by the patent owner, and is presented with a 17
brief explanation as to why the newly proposed rejection is now necessary 18
and why it could not have been presented earlier. 19
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for 20
all Patent Owner responses and Requester comments, is required. 21
The Examiner, after the Board’s entry of a Patent Owner response and 22
Requester comments, will issue a determination under 37 C.F.R. § 41.77(d) 23
as to whether the Board’s rejection is maintained or has been overcome. 24
The proceeding will then be returned to the Board together with any 25
comments and reply submitted by the owner and/or requester under 37 26
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C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by the 1
Board as provided by 37 C.F.R. § 41.77(f). 2
3
AFFIRMED-IN-PART; § 41.77(b) 4

PATENT OWNER:

HUSCH BLACKWELL LLP
4801 Main Street
Suite 1000
KANSAS CITY, MO 64112

THIRD PARTY REQUESTER:

DECHERT LLP
P.O. BOX 390460
MOUNTAIN VIEW, CA 94039-0460