Ex Parte ASTERLIN et al

Board of Patent Appeals and Interferences

Aug 26, 1998

07848856 (B.P.A.I. Aug. 26, 1998)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GUNTHER E. ASTERLIN and H. WILLIAM MORGAN
____________
Appeal No. 96-3465
Application No. 07/848,8561
____________
ON BRIEF
____________
Before KIMLIN, WEIFFENBACH and HANLON, Administrative Patent
Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-4
and 15-17, all of the claims pending in the application. Claims
1, 3 and 15 are representative of the subject matter on appeal
and read as follows:
Appeal No. 96-3465
Application No. 07/848,856
1. A method of forming a bag from a sheet of material
comprising the steps of:
a) providing a mandrel having a plurality of protruding
needlelike members, said mandrel of a general longitudinal shape
approximately resembling the longitudinal shape of the bag;
b) wrapping said bag material having opposite edges around
said mandrel;
c) initially piercing at least one edge of said bag
material with said needlelike members to anchor the material to
the mandrel until said edges are adjacent to each other;
d) securing said bag material at said edges onto said
mandrel by clamping members;
e) retracting said needle-like members from said bag
material;
f) securing said edges of said bag material together.
3. A method for sealing an open end of cylindrically formed
material having an interior surface comprising the steps of:
a) inserting a heating element having a plurality of
heating parts into said open end;
b) expanding said heating parts within said open end into
contact with said interior surface of the cylindrically formed
material to cause the material at its open end to form
overlapping material layers;
c) pressing said overlapping layers onto said heating
element to melt said interior surface about an interior perimeter
of said cylindrically formed material;
Appeal No. 96-3465
Application No. 07/848,856
15. A method of longitudinally sealing a bag comprising the
steps of:
a) providing an elongated mandrel having a longitudinally
extending ridge, said mandrel having an indentation extending
along said ridge;
b) wrapping a sheet of material having interwoven
filaments around said mandrel such that opposite edges of said
sheet of material overlap one another at said ridge forming an
outer material layer overlying said ridge and an inner material
layer overlying said indentation;
c) pressing inwardly on said sheet of material over said
indentation to flex the edge of said outer material layer
outwardly creating a gap between said outer material layer and
inner material layer;
d) inserting a heating element in said gap;
e) pressing said overlapping edges onto said heating
element to melt said edges;
f) removing said heating element;
g) pressing said overlapping melted edges together to
cause said edges to seal to each other.
The references relied upon by the examiner are:
DeWoskin 4,157,719 June 12, 1979
Tumminia 4,396,449 Aug. 2, 1983
Colombo et al. (Colombo) 4,464,219 Aug. 7, 1984
Young et al. (Young) 4,502,906 Mar. 5, 1985
The following rejections are at issue in this appeal:
Appeal No. 96-3465
Application No. 07/848,856
(2) Claim 2 is rejected under 35 U.S.C. § 103 as being
unpatentable over Colombo in view of Young or Tumminia and
further in view of DeWoskin.
(3) Claim 17 is rejected under 35 U.S.C. § 112, second
paragraph, as lacking antecedent basis for the phrase “said gap.”
Grouping of claims
According to appellants, the claims are grouped as follows
for purposes of this appeal (Brief, p. 4):
(1) Claim 1 stands separately;
(2) Claim 2 stands separately;
(3) Claims 3 and 4 stand or fall together;
(4) Claim 15 stands separately;
(5) Claims 16 and 17 stand or fall together.
Claim 1
Claim 1 is rejected under 35 U.S.C. § 103 as being
unpatentable over Colombo in view of Young or Tumminia. We
reverse this rejection.
Appeal No. 96-3465
Application No. 07/848,856
the needle-like members to anchor the material to the mandrel
until the edges of the bag material are adjacent to each other;
(3) securing the bag material at its edges onto the mandrel by
clamping members; (4) retracting the needle-like members from the
bag material; and (5) securing the edges of the bag material
together.
According to the examiner (Answer, p. 4):
[P]roviding needlelike members on said mandrel is a
mere obvious matter of apparatus design choices and do
[sic, does] not patentably distinguish the claimed
process steps. Such design, it is submitted, was
provided by applicant to anchor the fusible material on
said mandrel. Likewise the aspect of drawing the
needle like member serves only to release the fusible
material. Colombo et al teaches the claimed steps of
holding the material onto the mandrel and later
releasing said material off the mandrel.
Appellants point out (Brief, pp. 5-6):
In Claim 1, the method includes the step of
“initially piercing at least one edge of said bag
material with said needlelike members to anchor the
material to the mandrel until said edges are adjacent
to each other.” . . . The novelty of this method does
not solely rest in the design limitations of the
apparatus. Providing a mandrel with needlelike members
merely sets the stage for the process step of piercing
the bag material found in Step c). . . .
Appeal No. 96-3465
Application No. 07/848,856
In response to appellants’ argument, the examiner2
The examiner has failed to provide a basis for the
conclusion that “providing needlelike members on said mandrel is
a mere obvious matter of apparatus design choices” (Answer,
p. 4). See In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209,2
212 (CCPA 1971) (a proper judgment of obviousness “does not
include knowledge gleaned only from applicant’s disclosure”).
Moreover, the examiner’s reliance on Colombo is not persuasive.
Although Colombo discloses a method for heat sealing plastic film
whereby the film is held onto a mandrel while the film is sealed
and is later released from the mandrel, Colombo uses an
electrostatic charger to hold the film onto the mandrel and
releases it from the mandrel using gas pressure (col. 3, lines
40-44; col. 4, lines 20-34).
Therefore, we agree with appellants that the cited
references, either taken alone or in combination, fail to teach
or suggest the method recited in claim 1.
Appeal No. 96-3465
Application No. 07/848,856
Claim 3
Claim 3 is rejected under 35 U.S.C. § 103 as being
unpatentable over Colombo in view of Young or Tumminia. We
reverse this rejection.
Claim 3 recites a method for sealing an open end of
cylindrically formed material comprising (1) inserting a heating
element having a plurality of heating parts into the open end;
(2) expanding the heating parts into contact with an interior
surface of the cylindrically formed material to cause the
material at its open end to form overlapping material layers;
(3) pressing the overlapping layers onto the heating element to
melt the interior surface of the material; (4) collapsing the
heating parts and removing the heating element from the open end;
and (5) pressing the overlapping layers together at the melted
interior surface to seal the layers to each other.
According to the examiner (Answer, p. 6):
[I]nserting particular types of heating elements which
expands [sic, expand]/collapse on demand is directed to
specifics of apparatus limitation as opposed to process
limitations. Indeed, the manipulative step of
Appeal No. 96-3465
Application No. 07/848,856
Appellants point out (Brief, p. 11):
Claim 3 includes the method steps of “inserting a
heating element” into a [sic, an] open end of a
cylindrical formed material. None of the references
cited by the Examiner show or suggest a step of
inserting a heating element within an open end of bag
material. The methods disclosed in the Examiner’s
cited references relate to cutting and/or sealing
layered materials. In Tumminia and Young, the layers
are pressed together as part of the heat sealing
process; however, none of the references teach the step
of inserting the heating element between the layers or
the open ends of the bag material.
The examiner has failed to provide a basis for the
conclusions that “the manipulative step of inserting the heating
element is taught by the obvious combined references” and
“[h]eating elements with plurality of heating parts are directed
to mere matters of apparatus design choices” (Answer, p. 6). See
McLaughlin, 443 F.2d at 1395, 170 USPQ at 212 (a proper judgment
of obviousness “does not include knowledge gleaned only from
applicant’s disclosure”). To the extent that Colombo discloses
(Supplemental Answer (Paper No. 19), p.1):
[W]rapping material (a) about heating [element] and
pressing the material to facilitate its melting . . . .
[and] the removal of his heating element “off” the
Appeal No. 96-3465
Application No. 07/848,856
Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336,
345 (1961) (in determining obviousness under 35 U.S.C. § 103
there is “no legally recognizable or protected ‘essential’,
‘gist’, or ‘heart’ of the invention[,]” rather each claimed
invention must be considered as a whole).
The references, either taken alone or in combination, do not
teach or suggest inserting a heating element into an open end of
a cylindrically formed material, melting the interior surface of
overlapping material layers formed at the open end, and sealing
the layers together. See APPLICANT’S REPLY TO EXAMINER’S NEW
GROUND OF REJECTION (Paper No. 20), p. 2. Therefore, we agree
with appellants that the references, either taken alone or in
combination, fail to teach or suggest the method recited in claim
3.
Claim 15
Claim 15 is rejected under 35 U.S.C. § 103 as being
unpatentable over Colombo in view of Young or Tumminia. We
reverse this rejection.
Appeal No. 96-3465
Application No. 07/848,856
b) wrapping a sheet of material having interwoven
filaments around said mandrel such that opposite edges
of said sheet of material overlap one another at said
ridge forming an outer material layer overlying said
ridge and an inner material layer overlying said
indentation;
c) pressing inwardly on said sheet of material over
said indentation to flex the edge of said outer
material layer outwardly creating a gap between said
outer material layer and inner material layer;
d) inserting a heating element in said gap;
e) pressing said overlapping edges onto said heating
element to melt said edges;
f) removing said heating element;
g) pressing said overlapping melted edges together to
cause said edges to seal to each other.
According to the examiner (Answer, p. 7):
Studying the Tumminia patent, it seems the instant
patent places heating element (20) between an apparent
gap on surface (10). More relevant, Colombo et al in
figure 2, teaches heating element (35) between “gapped”
surface (19). It is believed that as material (9) is
payed off roller (11), its journey would take it to
overlapping junction, shown in figure 2, and to be in
close proximity to heating element (35). Thus both
references to Colombo et al and Tumminia teaches [sic,
teach] forming gaps into their respective material and
later heat sealing the edges together (see Tumminia,
figures 6B and 6C).
Appeal No. 96-3465
Application No. 07/848,856
surface formed in the surface of the drum. The method recited in
claim 15 requires that a heating element be inserted in a gap
created between overlapping outer and inner material layers of a
sheet of material. In Colombo, Tumminia and Young the layered
material is sealed along its adjacent edges, not on opposite
edges of the same section of material as required by the claimed
method. Therefore, we agree with appellants that the cited
references, either taken alone or in combination, fail to teach
or suggest the method recited in claim 15.
Rejection under 35 U.S.C. § 112, second paragraph
Claim 17 is rejected under 35 U.S.C. § 112, second
paragraph, as lacking antecedent basis for the phrase “said gap”
(Answer, pp. 7-8).
According to appellants (Brief, pp. 9-10):
During the preparation of this brief, the
Applicant/Appellant discovered that Claim 17 is
erroneously dependent on Claim 2 and consequently lacks
an antecedent for “said gap.” Claim 17 should be
dependent on Claim 16. Upon the successful resolution
of this appeal, the appropriate amendment will be made
to Claim 17.
Appeal No. 96-3465
Application No. 07/848,856
should give favorable consideration to an amendment filed
correcting the dependency of claim 17.
Claims 2, 4, 16 and 17
Claims 2 and 16 are dependent on claim 1 and claim 4 is
dependent on claim 3. Since the rejections of claims 1 and 3
have been reversed, the rejections of claims 2, 4 and 16 are also
reversed. Furthermore, since claim 17 is dependent on claim 1
and the rejection of claim 1 has been reversed, the rejection of
claim 17 based on 35 U.S.C. § 103 is also reversed. See 37 CFR
§ 1.75(c) (“Claims in dependent form shall be construed to
include all the limitations of the claim incorporated by
reference into the dependent claim.”). However, the rejection of
claim 17 under 35 U.S.C. § 112, second paragraph is affirmed for
the reasons stated herein.
The decision of the examiner is affirmed-in-part.
Appeal No. 96-3465
Application No. 07/848,856
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CAMERON WEIFFENBACH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ADRIENE LEPIANE HANLON )
Administrative Patent Judge )
Appeal No. 96-3465
Application No. 07/848,856
OLTSCH, KNOBLOCK & HALL
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