Ex Parte Arning et al

Patent Trial and Appeal Board

Mar 26, 2018

13614490 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/614,490 09/13/2012
39564 7590 03/28/2018
FisherBroyles, LLP
945 East Paces Ferry Road NE
Suite 2000
Atlanta, GA 30328
FIRST NAMED INVENTOR
Hans-Juergen ARNING
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.
06058.006US1 8520
EXAMINER
HELVEY, PETER N.
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
docketing@fisherbroy les .com
patent@fisherbroyles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-JUERGEN ARNING, SVEN LARISCH, and
BJOERN HOESER 1
Appeal2017-006815
Application 13/614,490
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hans-Juergen Arning et al. (Appellants) seek our review under
35 U.S.C. § 134(a) of the Examiner's decision to reject claims 1, 3, 5-8, and
10-18.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
1 The Appeal Brief lists CO FRESCO FRISCHHAL TEPRODUKTE GMBH
& CO. KG. as the real party in interest. Br. 1 (filed Aug. 3, 2016).
2 Appellants filed an Amendment After Final rejection on March 24, 2016,
adding the subject matter of claim 4 into independent claim 1, that was
entered by the Examiner as per the Advisory Action dated April 21, 2016.
Accordingly, the claims that are before us are as they appear in the Claims
Appendix of Appellants' Appeal Brief.
Appeal2017-006815
Application 13/614,490
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claims are directed to a bag for storing and preparing food. Spec.
i-f 2. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A bag for storing and preparing food, comprising:
a bag body including two sheets having edge regions and
being sealed together at least partially along a plurality of the
edge regions to present edge seals and a bag opening at one end
of the bag,
wherein each sheet comprises a composite material
consisting of a plastic inside layer suitable for making contact
with the food, an outside layer consisting of paper or a metal foil,
and glue sealing the inside layer to the outside layer,
wherein the inside layer comprises at least one of PTFE,
biaxial-oriented PET, PSU, PMP, PEEK and PA; and
wherein the composite material is heat resistant up to at
least 200°c.
REFERENCES RELIED ON BY THE EXAMINER
Martin us 4,806,398 Feb.21, 1989
Wood US 6,312,742 Bl Nov. 6, 2001
Harano US 2006/0177162 Al Aug. 10, 2006
Yoffe US 2006/0222271 Al Oct. 5, 2006
Lin US 2007 /0292053 Al Dec. 20, 2007
Mita US 2009/0035424 Al Feb. 5,2009
Sar gin US 2010/0189380 Al July 29, 2010
REJECTIONS
(I) Claims 1, 3, 5, 13, 17, and 18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lin, Martin, and Yoffe. 3
3 The headings for Rejections (II}-(V) do not list Yoffe as applied prior art.
See Final Act. 2-11. Because the subject matter of claim 4 was added to
independent claim 1, as discussed supra (seen. 2), we understand Yoffe to
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(II) Claims 6 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lin, Martin, Y offe, and Mita.
(III) Claims 7, 8, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lin, Martin, Y offe, and Harano.
(IV) Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lin, Martin, Y offe, and Sargin.
(V) Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lin, Martin, Y offe, and Wood.
Claims 1, 5, 13, 17, and 18
OPINION
Rejection (I)
The Examiner finds that Lin discloses most of the limitations of claim
1, including, inter alia, a bag having an inner plastic layer and an outer paper
layer, but the Examiner relies on Martin to teach that the inner plastic layer
is biaxially oriented PET. Final Act. 2-3. According to the Examiner,
"since Martin teaches biaxially oriented PET as an acceptable material for
use as an inner layer of food packaging," it would have been obvious to a
person of ordinary skill in the art to use biaxial oriented PET for the inner
plastic layer of Lin because "select[ion of] a known material on the basis of
its suitability for the intended use [is] a matter of obvious design choice."
Final Act. 3 (citing In re Leshin, 277 F .2d 197 (CCP A 1960); Ballas
Liquidating Co. v. Allied industries of Kansas, Inc., 205 USPQ 331 (D. Kan.
be applied prior art in Rejections (II}-(V) inasmuch as each of the claims in
Rejections (II}-(V) depend from claim 1, and the rejection of claim 1 in
Rejection (I) applies Y offe.
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Application 13/614,490
1979) ). The Examiner relies on Y offe to teach food packaging materials
with the claimed heat resistance of "up to at least 200 °C," and concludes
that it would have been obvious to the same skilled artisan "to construct the
Lin [] packaging with the heat resistant materials as taught by Y offe, since
... select[ing] a known material on the basis of its suitability for the
intended use [is] a matter of obvious design choice." Final Act. 4 (citing In
re Leshin, 277 F .2d 197).
Appellants argue that because Y offe' s disclosed temperature
resistance "is given for a composite material comprising two biodegradable
paper plies," whereas Lin's bag comprises an inner plastic layer and an
outer layer of paper, "Y offe provides no teaching whatsoever with respect to
temperature resistance of the composite material of Lin modified by Martin,
which is a plastic inner layer of biaxially oriented PET laminated to a
paper outer layer." Br. 9--10. Appellants assert that substituting the two
ply paper material disclosed in Y offe for the materials in Lin "would not
result in the invention of amended claim 1, since the two ply paper
composite material is not the same thing as a composite material comprising
a plastic inner layer and a paper outer layer." Br. 10.
In response, the Examiner states "[ t ]hat Y offe does not teach a plastic
inner layer does not change the fact that Y offe teaches the desirability of
providing heat resistance in packaging material, which is the teaching relied
upon by the rejections." Ans. 9-10. According to the Examiner, Yoffe's
"desirability of heat resistance is applicable to dual paper layers as well as
paper/plastic layer combinations." Ans. 10. The Examiner notes that
previously cited references "demonstrates the obviousness of applying the
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Y offe heat resistance material properties to the paper/plastic laminate layers
taught by the Lin/Martin combination." Ans. 10.
We agree with Appellants' argument that the Examiner has not
established sufficiently that one of ordinary skill in the art would have been
motivated to apply the teachings of heat resistance in Y offe to the composite
material of Lin. In the Final Action, the Examiner suggests constructing
Lin's packaging "with the heat resistant materials as taught by Yoffe." Final
Act. 4. However, as Appellants correctly note, Yoffe's two ply paper
composite material does not meet the claimed composite material
comprising a plastic inner layer and a paper outer layer. See Br. 10. The
Examiner does not adequately explain why heat resistance is desirable in
Lin. Y offe requires heat resistance because Y offe' s bags are "exposed to a
food-heating temperature ... within a conventional oven and are durable to
the food heating conditions within a microwave oven" (Y offe i-f 61 ), whereas
Lin's bags are used to store "bulk material such as pet food, agricultural
commodities, chemicals and the like." Lin i-f 3. The Examiner does not
point to any portion of Lin that suggests that the bags containing these
materials would be subject to food-heating temperatures.
Although the Examiner asserts that previously cited references
"demonstrate[ s] the obviousness of applying the Y offe heat resistance
material properties to the paper/plastic laminate layers" (Ans. 10), these
references are not applied prior art in Rejection (I). Absent evidence that the
composite material of Lin as modified by Martin is used for heating food, so
as to require Y offe' s heat resistance, or is known to have the heat resistant
properties required by claim 1, Y offe' s disclosure of a heat resistant bag, as
applied in Rejection (I), would not have led one of ordinary skill in the art to
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construct Lin's packaging, as modified by Martin, to have Yoffe's heat
resistant properties, as the Examiner proposes. For these reasons, we do not
sustain the rejection of claim 1 and of claims 5, 13, 17, and 18, depending
from claim 1 as unpatentable over Lin, Martin, and Y offe.
Claim 3
Claim 3 includes many of the same or similar limitations as those in
claim 1, but is broader in that it does not include the requirement that the
composite material be heat resistant up to at least 200°C. See Br. 13 (Claims
App.).
The Examiner relies on the same findings and reasoning discussed
above for claim 1 with respect to Lin and Martin to reject claim 3,
specifically, that Lin discloses a bag having an inner plastic layer and an
outer paper layer, and Martin teaches that the inner plastic layer is biaxially
oriented PET, and reasons using PET would have been obvious to the skilled
artisan as a matter of obvious design choice. Final Act. 2-3.
Appellants argue that the Examiner's reliance on Lesh in is improper
because Lin's plastic material is "suitably strong" for Lin's intended purpose
of carrying heavy loads, whereas Martin does not disclose the strength
characteristics of biaxially oriented PET, and the Examiner has not
established that "one skilled in the art would suspect that the biaxially
oriented PET disclosed in Martin might be a suitable substitute, in terms [of]
strength, for use in place of the woven scrim as the inside plastic layer in the
polywoven material employed in Lin." Br. 7. Appellants assert that because
there is no rational basis for concluding that the biaxially oriented PET of
Martin would be a suitable substitute for the woven scrim of Lin, "the
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obviousness of the proposed combination set forth in the Final Action is
based on an unsupported conclusion." Br. 8. Appellants contend, moreover,
that because the barrier capabilities of the biaxially oriented PET of Martin
"have no application to the packaging of dry bulk material such as pet food,
agricultural commodities, chemicals and the like that fill the heavy duty
polywoven bag disclosed by Lin," this also shows that there is no motivation
for combining the references as proposed by the Examiner. Br. 7-8.
The Examiner responds that Appellants provide no evidence that Lin
relies on the inner layer being a woven scrim material for strength, and that
one of ordinary skill in the art would understand that strength arises from
combining the layers. Ans. 7-8. Nonetheless, the Examiner notes that the
level of skill in this art "include[ s] the ability to vary the thickness of a
laminate layer as needed to obtain the needed strength." Ans. 8. The
Examiner states that Lin would have benefitted from the barrier protection
afforded by the PET of Martin because "the intended contents of the Lin
packaging, namely pet food, agricultural commodities, or chemicals, each
potentially being benefitted from protection of oxygen, etc." Ans. 9.
We have considered all of Appellants' arguments against the rejection
of claim 3, but we find the Examiner to have the better position. We agree
with the Examiner's use of Lesh in inasmuch as Appellants' arguments
regarding the strength of the material in Lin are not supported by objective
evidence or persuasive technical reasoning. Although Lin discloses a "bag
that is generally suitably strong" (Lin, i-f 3) and "closures have adequate
strength for most uses" (Lin, i-f 4), both of these references to strength are in
the background of the invention, and do not refer to the strength of any
particular material. Appellants do not point to any portion of Lin that
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discloses that a particular material is required to achieve "adequate
strength." Nor is any particular level of strength a requirement of claim 3.
Given that both Lin and Martin use their bags for food storage, a person of
ordinary skill in the art would know about the material properties of PET,
and would have the ability to, among other things, "vary the thickness" of
the PET material "to obtain the needed strength." Ans. 8.
We also agree with the Examiner that Lin would have benefitted from
the barrier protection afforded by the PET of Martin because the contents of
Lin's packaging, namely, pet food, agricultural commodities, or chemicals,
would have benefitted from protection from oxygen. See Ans. 9. For
example, pet food can spoil when subject to air (oxygen) and some
chemicals react violently to oxygen.
Finally, Appellants assertion that "there is no rational basis" for
substituting the PET of Martin for the woven scrim of Lin is unavailing
because the differences in structure identified by Appellants are not pertinent
to the Examiner's proposed combination of references. Even if there is a
difference in strength of the materials, Appellants provide no persuasive
explanation as to why these differences would have made the result of the
Examiner's proposed modification unpredictable or would have placed the
modification beyond the level of a person of ordinary skill in the art. We
agree with the Examiner that one of ordinary skill in this art is capable of
varying the thickness of the laminate layer to obtain the needed strength.
Nor does any purported difference diminish the Examiner's rationale for
making the proposed combination, because the Examiner's rationale for
modifying Lin, namely, to have an acceptable material to use as an inner
layer of food packaging, is explicitly taught by Martin. Martin, 3: 12-15
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("the industry has recognized the desirable barrier capabilities of
polyethylene terephthalate (PET) with respect to its use in the storage of
volatile or degradable food products."). Thus, the Examiner's stated
rationale for combining Lin and Martin is supported by rational
underpinnings.
We have carefully considered all of Appellants' arguments for claim
3, but we do not agree that the decision by the Examiner to reject this claim
is in error. Accordingly, we affirm the Examiner's rejection of claim 3 as
unpatentable over Lin, Martin, and Y offe.
Rejections (11)-(V); claims 6-8, 10-12, and 14-16
Claims 6-8, 10-12, and 14--16 depend from claim 1. The Examiner
does not rely on the disclosures of Mita, Harano, Sargin, and Wood in any
manner that would remedy the deficiencies in the rejection of claim 1
discussed supra. For the same reasons discussed above regarding Rejection
(I), we also do not sustain Rejections (II}-(V).
DECISION
(I) The Examiner's rejection of claims 1, 3, 5, 13, 1 7, and 18 as
unpatentable over Lin, Martin, and Y offe is affirmed as to claim 3 and
reversed as to claims 1, 5, 13, 17, and 18.
(II) The Examiner's rejection of claims 6 and 12 as unpatentable
over Lin, Martin, Y offe, and Mita is reversed.
(III) The Examiner's rejection of claims 7, 8, 10, and 11 as
unpatentable over Lin, Martin, Y offe, and Harano is reversed.
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(IV) The Examiner's rejection of claim 14 as unpatentable over Lin,
Martin, Y offe, and Sargin is reversed.
(V) The Examiner's rejection of claims 15 and 16 as unpatentable
over Lin, Martin, Y offe, and Wood is reversed.
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)(l )(iv).
AFFIRMED-IN-PART
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