Ex Parte Beimesch

Board of Patent Appeals and Interferences

Mar 30, 2012

10724564 (B.P.A.I. Mar. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WAYNE EDWARD BEIMESCH
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Appeal 2009-010459
Application 10/724,564
Technology Center 2800
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Before CARLA M. KRIVAK, THOMAS S. HAHN, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-010459
Application 10/724,564

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Appellant invokes our review under 35 U.S.C. § 134(a) from a final
rejection of claims 23-34 (Final Action 2-12). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

STATEMENT OF CASE
Introduction
Claim 23 is exemplary of the appealed claims and reads:
23. A kit for measuring the volatile organic compounds of a
substance, said kit comprising:
(a) an enclosed collapsible bag having a sealable opening to allow an
amount of said substance to be placed in said enclosed bag such that
there is headspace above said substance, said bag being formed by
materials that do not release significant amounts of volatile organic
compounds (VOCs); and
(b) instructions for analyzing samples from said headspace in said
enclosed bag, thereby providing said volatile organic compounds of
said substance.
Rejection
Claims 23-34 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Hemphill (US 4,930,906; Jun. 5, 1990) (Final Action 2-9).
Issue
Has the Examiner erred under § 103(a) by concluding that Hemphill
teaches or suggests a collapsible bag usable to measure volatile organic
compounds as recited in claims 23-25 and 32?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
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1. Hemphill describes an improved cooking grease disposal bag
“formed with a multi-ply construction and having an internal layer
of a heavy gage deformable aluminum foil, an intermediate layer
formed by a puncture resistant polyethylene sheet, and an outer
layer formed by an insulating paper material” (col. 1, l. 62 – col. 2,
l. 1).
2. Hemphill teaches that the described bag when closed is “aided by
the relatively heavy gage aluminum foil lining material. The outer
insulating paper layer 12 protects an individual from being burned
by the hot grease” (col. 4, ll. 24-28).

ANALYSIS
Claim 23
The Examiner’s rejection of claim 23 was reviewed in light of
Appellant’s arguments that are found unavailing. Disputed limitations cover
a “bag . . . formed by materials that do not release significant amounts of
volatile organic compounds (VOCs)” (App. Br. 10).1,2
The Examiner identified finding:
Hemphill discloses an enclosed bag (reference item 10)
and having instructions (reference items 18 and 20).
Hemphill’s bag, being foldable, is also inherently collapsible in
that it is formed of thin plies of materials. The enclosed bag

1 Appellant does not argue that identified convincing evidence renders any
specialized meaning for the recited “significant amount.” Accordingly, the
terms are given their broadest reasonable interpretation using ordinary and
plain meanings. In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
2 The Appeal Brief (filed July 1, 2008), Answer (mailed Sep. 23, 2008),
Reply Brief (filed Nov. 24, 2008), and Supplemental Answer (mailed May 8,
2009) are referred to for their respective details.
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also has a maximum fill line (reference item 19). This bag,
when sealed, would have a headspace above the maximum fill
line. Hemphill’s bag is formed of a multi-ply construction.
The inner layer (reference item 13) is formed of aluminum.
The intermediate layer (reference item 11) is formed of
polyethylene. The outer layer (reference item 13) is formed of
paper.
(Ans. 3.) Reviewing Hemphill and the record, we agree with and adopt
these identified findings (accord FF 1). The Examiner then finds and
reasons:
According to Hemphill the outer paper layer is provided
to “protect an individual from being burned by the hot grease.”
See column 4 (lines 26-28). It is considered obvious to
eliminate the outer paper layer when protection from hot grease
is not an issue. For example, the bag could be used to store
cooler materials, including cold grease, so that burning is not
design consideration.
(Ans. 3 (citation omitted).) Again, based on our review of the record,
including Appellant’s arguments, we agree with and adopt the Examiner’s
findings and conclusion. Accordingly, we find Appellant’s arguments that
the Examiner erred unavailing.
Considered arguments include Appellant contending that the
“Hemphill patent relates to the field of grease disposal, and is thus non-
analogous art. . . . [I]t relates to a grease disposal bag and would not
logically commended [sic] itself to the attention of an inventor in chemical
engineering” (App. Br. 11). Our reviewing court, however, has held:
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
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In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
We agree with Appellant that Hemphill addresses cooking grease
disposal, but we disagree that the “inventor’s” field of endeavor is defined
merely as “chemical engineering.” More descriptively, we find the
“inventor’s” field to be measuring produced VOCs (see generally Spec. 1,
Field of the Invention). Hemphill’s and the “inventor’s” fields of endeavor
both address organic material, but their fields may not be said to be the
“same.” Turning to the second part of the test, though, the Examiner finds
Hemphill addresses the problem of securely containing cooking grease
without burning handlers (see Ans. 3), which unavoidably includes
containing the grease without leakage, i.e., release from a bag. We agree
(accord FF 2). The disputed limitations cover a “bag . . . formed by
materials that do not release significant amounts of volatile organic
compounds (VOCs)” (App. Br. 10), which likewise encompasses the
problem of containing organic materials without release, i.e., leakage from a
bag. Consequently, we find these identified problems establish Hemphill as
reasonably pertinent to the particular problem with which the “inventor” is
involved (see Supp. Ans. 2), and therefore we find Hemphill is analogous
art.
Accordingly, we will sustain the obviousness rejection of claim 23
and its dependent claims 26 and 29 that are not separately argued with
particularity (App. Br. 19; see Ans. 19-20). See In re Nielson, 816 F.2d
1567, 1572 (Fed. Cir. 1987).
Claim 24
Appellant relies on arguments asserted for claim 23 (App. Br. 16) and
also argues (id.) Hemphill fails to teach or suggest a bag that is safe at
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process exit temperatures. The disputed limitations cover a “bag . . . formed
by materials that can be safely stored at the exit temperature of said process
system” (App. Br. 15). The Examiner’s rejection of claim 24 was reviewed
in light of Appellant’s arguments that are found unavailing.
As addressed supra we find the patentability arguments asserted for
claim 23 unpersuasive and we also find them unavailing in the context of
claim 24.
Appellant’s arguments directed to process exit temperature are found
unpersuasive because no temperature limitation is recited in claim 24 and no
convincing evidence of record has been identified to persuasively dispute
that the Hemphill bag would fail in any way if subjected to the broadly
recited process exit temperature.
Accordingly, we will sustain the obviousness rejection of claim 24
and its dependent claims 27 and 30 that are not separately argued with
particularity (App. Br. 20; see Ans. 19-20). See Nielson, 816 F.2d at 1572.
Claim 25
Appellant relies on arguments asserted for claim 23 (App. Br. 17) and
also argues (id.) that the “term ‘consisting of’ . . . defines the scope of the
claim as a kit comprising a bag that has two and only two layers,” which is
not taught or suggested by Hemphill’s three layer bag. The disputed
limitations cover a “bag having a wall consisting of two layers, wherein the
inside layer is vapor impermeable and the outside layer is made of polymer.”
The Examiner’s rejection of claim 25 was reviewed in light of Appellant’s
arguments that are found unavailing.
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As addressed supra we find the patentability arguments asserted for
claim 23 unpersuasive and we also find them unavailing in the context of
claim 25.
The Examiner correctly finds Hemphill teaches that an “outer paper
layer is provided to ‘protect an individual from being burned by . . . hot
grease.’ See column 4 (lines 26-28)” (Ans. 3). The Examiner consequently
reasons that it is obvious “to eliminate the outer paper layer when protection
from hot grease is not an issue” (id.). No convincing evidence contradicting
this reasoning has been found. Accordingly, we agree with and adopt the
Examiner’s findings and conclusion. In the Reply Brief Appellant alleges to
have “found out unexpectedly that the dual layers made of aluminum and
polymer were sufficient in protecting a user from burning” (Reply Br. 8).
No citation to corroborating disclosure in the Specification has been found
for this asserted unexpected discovery, nor has other convincing evidence
been provided. Based on this record, we adopt the Examiner’s conclusion
that Hemphill renders claim 25 obvious.
Accordingly, we will sustain the obviousness rejection of claim 25
and its dependent claims 28 and 31 that are not separately argued with
particularity (App. Br. 21; see Ans. 19-20). See Nielson, 816 F.2d at 1572.
Claim 32
Appellant relies on arguments asserted for claims 23 and 25 (App. Br.
18). The disputed claim 32 limitations cover a “bag having a wall consisting
of an inner liner and an outer liner, wherein said inner liner and outer liner
do not release significant amounts of volatile organic compounds (VOCs).”
The Examiner’s rejection of claim 32 was reviewed in light of Appellant’s
arguments that are found unavailing for the reasons addressed supra.
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Accordingly, we will sustain the obviousness rejection of claim 32
and its dependent claims 33 and 34 that are not separately argued with
particularity (App. Br. 21-22; see Ans. 19-20). See Nielson, 816 F.2d at
1572.

ORDER
The Examiner’s decision rejecting claims 23-34 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)(1)(v).

AFFIRMED

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