Ex Parte Ausnit

Board of Patent Appeals and Interferences

Jun 24, 2009

11010689 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN AUSNIT
____________

Appeal 2009-001405
Application 11/010,689
Technology Center 3700
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Decided: 1 June 25, 2009
____________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001405
Application 11/010,689
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Steve Ausnit (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 4-6. Claims 1-3 and 7-9 have been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
The Appellant’s invention is drawn towards a method of
manufacturing a carrier web having a zipper profile for making a reclosable
zipper bag with gusseted sides. Specification 1, ll. 3-4.
Claim 4 is representative of the claimed invention and reads as
follows:
4. A method of forming a carrier web assembly with axially
spaced discrete sections of zipper profile thereon,
comprising the steps of:

a) providing a zipper, in a machine direction, having
mated profiles with one of said profiles above the
other of said profiles so as to provide lower and upper
profiles;

b) cutting a first discrete length of said zipper, and at a
first station applying said lower one of said profiles of
said first discrete length of zipper to a first carrier
web;

c) moving said first carrier web in said machine direction
with said applied zipper from said first station to a
second station and, at said second station, applying a
second carrier web onto the upper one of said profiles;

d) sealing said lower one of said profiles to said first
carrier web and said upper one of said profiles to said
second carrier web; and

e) providing said carrier web assembly for sealing to
front and rear films of bag making material.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Tilman (Tilman ‘537) US 5,024,537 Jun. 18, 1991
Tilman (Tilman ‘613) US 5,558,613 Sep. 24, 1996
Malin US 6,044,621 Apr. 4, 2000

The following rejections are before us for review:
The Examiner rejected claims 4-6 under 35 U.S.C. § 103(a) as
unpatentable over Tilman ‘537 and Malin.
The Examiner rejected 4-6 under 35 U.S.C. § 103(a) as unpatentable
over Tilman ‘613 and Tilman ‘537.

THE ISSUES
1. Has the Appellant shown that the Examiner erred in
determining that the combined teachings of Tilman ‘537 and
Malin would have prompted a person of ordinary skill in the art
to seal the bag material 31 to the upper zipper profile of Tilman
‘537 as taught by Malin?
2. Has the Appellant shown that the Examiner erred in
determining that the combined teachings of Tilman ‘613 and
Tilman ‘537 would have prompted a person of ordinary skill in
the art to provide, cut, and move zipper profiles and carrier
webs as taught by Tilman ‘537 in the zipper profile sealing
process of Tilman ‘613?

SUMMARY OF DECISION
We AFFIRM.
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FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Tilman ‘537 discloses a method for forming a carrier web
assembly including providing a zipper with upper profile 10
and lower profile 11, cutting a discrete length of zipper 22, and
applying and sealing the flanges 15 of the lower profile of the
discrete zipper 22 to a continuous carrier web 28 (first web).
Tilman ‘537, col. 2, ll. 28-30 and 64-65; col. 3, 7-11; and fig.
1A.
2. Tilman ‘537 further discloses moving the carrier web 28 and
discrete zipper length 22 in a machine direction and applying
and sealing the carrier web 28 along the mouth ends of bag
walls 34 and 34 of J-fold bag section 30 along seals 37. Tilman
‘537, col. 3, ll. 31-35 and 42-49; and figs. 2 and 3.
3. Malin discloses a process for making a carrier web assembly
including providing an interlocking zipper strip 10 having a
male profile 12 and a female profile 14. Malin, col. 3, ll. 24-28
and fig. 1.
4. The process of Malin includes applying the male profile 12
against a thermoplastic sheet material 50 (carrier web) and
sealing the male profile along both the leading and trailing
edges 24, 26 (flanges). Malin, col. 3, ll. 56-67 and figs. 1, 3,
and 7.
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5. After sealing the male profile 12 against the thermoplastic sheet
material 50, the two lateral edges 96 of the sheet 50 are folded
and sealed together to form a continuous film tube (package)
holding the product 99 and zipper strips 10 inside. Malin, col.
6, ll. 35-40.
6. The top flange 26 of the male profile is sealed to the portions of
the film web forming both the package bottom 114 and the
package top 116. The other flange 24 of the male profile 12 is
sealed only to the film web forming the package bottom 114.
Finally, the narrow flange 22 of the female profile 14 is sealed
only to the portions of the film web forming the package top
116. Malin, col. 6, ll. 44-52 and fig. 8.

PRINCIPLES OF LAW
Obviousness
It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
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considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 ("While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.")
The Supreme Court stated that in cases involving more than the
simple substitution of one known element for another, or the mere
application of a known technique to a piece of prior art ready for the
improvement, it will be necessary to "determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue." Id. at 417-418. The Court noted that "[t]o facilitate
review, this analysis should be made explicit." Id. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.")
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
need not seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
550 U.S. at 418 (2007).
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
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recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 417. We “must ask whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id.
OPINION
Issue (1)
The obviousness rejection over Tilman ‘537 and Malin
The Appellant argues the rejection under 35 U.S.C. § 103(a) of claims
4-6 together as a group. Br. 5. Accordingly, we have selected claim 4 as the
representative claim to decide the appeal, with claims 5 and 6, standing or
falling with claim 1.
The Appellant argues that the combined teachings of Tilman ‘537 and
Malin do not disclose a method for making a carrier assembly including two
separate carrier webs, as required by claim 4. Br. 5. Specifically, the
Appellant argues that because Tilman ‘537 uses a single carrier web and
Malin does not use any carrier web, it would be impossible that the
combined teachings of Tilman ‘537 and Malin would result in the
Appellant’s claimed invention, which requires two carrier webs. Id.
Although we appreciate the Appellant’s position, we note that the
Appellant’s arguments appear to attack the teachings of Tilman ‘537 and
Malin individually, rather than the combination of Tilman ‘537 and Malin.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). In this case, Tilman ‘537 discloses a method for forming a carrier
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web assembly including applying and sealing a discrete (cut) length of
zipper 22 to a continuous carrier web 28 (first carrier web). FF 1. Further,
Tilman ‘537 discloses applying and sealing the carrier web 28 along the
mouth ends of bag walls 34 and 34 of J-fold bag material 31 along seals 37.
FF 2. However, as noted by the Examiner, “the second carrier web 31 is not
applied onto the upper profile and sealed thereto.” Ans. 5. In other words,
the Examiner is taking the position that the bag material 31 of Tilman ‘537
constitutes the claimed “second carrier web,” which in Tilman ‘537 is sealed
to the lower profile, rather than the upper profile as required by claim 4.
Ans. 3. The Examiner then points to Figure 8 of Malin, to show that Malin
discloses providing “a [zipper] profile and attach[ing] it to upper and lower
carrier webs.” Ans. 5. Specifically, we find that Malin discloses a process
for making a carrier web assembly including providing a zipper 10 having a
male profile 12 and a female profile 14 and a thermoplastic sheet 50 that is
folded to form a package having a bottom 114 and a top 116. FF 3-5. Malin
further discloses sealing the male zipper profile 12 (lower profile) to the
bottom 114 of the package along flanges 24, 26 and to the top 116 of the
package along flange 26. FF 4 and 6. Furthermore, Malin discloses sealing
the female zipper profile 14 (upper profile) to the top 116 of the package
(upper carrier web) along the flange portion 22. FF 6.
Based on the teachings of Malin, the Examiner then concludes that,
[i]t would have been obvious in the invention to
Tilman to include the step of applying and sealing
a second carrier web onto the upper profile as
taught by Malin et al. as an alternative to the
construction as depicted in figure 3.

Therefore it would have been obvious to one of
ordinary skill in the art in the modified invention
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to Tilman to provide the web assembly for sealing
with front and rear films of bag making material
for reinforcement.
Ans. 4. Emphasis added.
In view of the explicit teachings of Malin, we find that the Examiner
is merely proposing an alternative method of sealing a zipper profile to a
carrier web, namely, an alternative method of sealing the bag material 31 to
the upper zipper profile of Tilman ‘537. Hence, a person of ordinary skill in
the art would have readily recognized that the combined teachings of Tilman
‘537 and Malin would result in a first carrier web 28 sealed to the lower
zipper profile and a second carrier web 31 (bag material) sealed to the upper
zipper profile. Hence, we find that the Examiner’s proposed modification
would not have been uniquely challenging to a person of ordinary skill in the
art, because it is no more than “the mere application of a known technique to
a piece of prior art ready for the improvement.” KSR Int'l. Co. v. Teleflex
lnc., 550 U.S. 398, 417 (2007). Therefore, the modification appears to be
the product not of innovation but of ordinary skill and common sense.
Moreover, the Appellant has not alleged, much less shown, that the
modification of Tilman ‘537 to seal the bag making film 31 (second carrier
web) to the upper zipper profile as taught by Malin would have been beyond
the skill of a person of ordinary skill in the art. After all, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR at 421.
For the foregoing reasons, the Appellant’s arguments do not persuade
us that the Examiner erred in rejecting claim 4, and claims 5 and 6 standing
or falling with claim 4. Accordingly the rejection of claims 4-6 is sustained.

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Issue (2)
The obviousness rejection over Tilman ‘613 and Tilman ‘537
The Appellant’s sole argument against the combination of Tilman
‘613 and Tilman ‘537 is that:
[T]he Tilman '613 reference discloses attaching the
zipper bases with lower melting strips directly to
the front and rear package or bag walls and
therefore, either alone or in combination with the
previously discussed Tilman '537 reference, is no
more relevant than the art previously discussed and
distinguished herein.
Br. 6.
However, the Appellant does not provide evidence showing
how the Appellant’s claimed invention differs from the combined
teachings of Tilman ‘613 and Tilman ‘537. Merely reciting what the
Appellant believes Tilman ‘613 discloses without showing where the
Examiner has erred in combining the teachings of Tilman ‘613 and
Tilman ‘537 does not amount to an argument for patentability.
Accordingly, the Appellant has failed to establish that the Examiner
erred by rejecting claims 4-6 under 35 U.S.C. § 103(a) over the
combination of Tilman ‘613 and Tilman ‘537. Therefore, the
rejection of claims 4-6 under 35 U.S.C. § 103(a) as unpatentable over
Tilman ‘613 and Tilman ‘537 is likewise sustained.

CONCLUSIONS
1. The Appellant has failed to show that the Examiner erred in
determining that the combined teachings of Tilman ‘537 and
Malin would have prompted a person of ordinary skill in the art
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to seal the bag material 31 to the upper zipper profile of Tilman
‘537 as taught by Malin.
2. The Appellant has failed to show that the Examiner erred in
determining that the combined teachings of Tilman ‘613 and
Tilman ‘537 would have prompted a person of ordinary skill in
the art to provide, cut, and move zipper profiles and carrier
webs as taught by Tilman ‘537 in the sealing process of zipper
profiles to bag walls of Tilman ‘613.

DECISION
The Examiner’s rejection of claims 4-6 under 35 U.S.C. § 103(a) as
unpatentable over Tilman ‘537 and Malin is affirmed.
The Examiner’s rejection of claims 4-6 under 35 U.S.C. § 103(a) as
unpatentable over Tilman ‘613 and Tilman ‘537 is affirmed.
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) (2007).

AFFIRMED

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LV

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