Ex Parte Cobler

Patent Trial and Appeal Board

Mar 20, 2018

13688369 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/688,369
91623 7590
Poly-America, L.P.
Legal Department
FILING DATE
11129/2012
03/22/2018
2000 West Marshall Drive
Grand Prairie, TX 75051
FIRST NAMED INVENTOR
Brad A. Cobler
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.
PAT-US-0064 1088
EXAMINER
BATTISTI, DEREK J
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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):
BrandonL@poly-america.com
DanL@poly-america.com
PatentDkt@poly-america.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRAD A. COBLER
Appeal2017-002825
Application 13/668,369
Technology Center 3700
Before WILLIAM A. CAPP, BRADLEY B. BAY AT, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 2, 7, 8, and 16-22. We have jurisdiction under 35
U.S.C. § 6(b). 2
We AFFIRM.
1 Appellant identifies Poly-America, L.P. as the real-party-in-interest.
Appeal Br. 2.
2 This case came before the Board on a regularly scheduled hearing on
February 28, 2018. Citations to the transcript are indicated by the prefix
"Tr."
Appeal2017-002825
Application 13/668,369
THE INVENTION
Appellant's invention relates to polymeric trash bags. Spec. i-f 2.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A thermoplastic bag comprising:
a front panel and a back panel, the front panel and back
panel generally joined along a first side edge, a second side
edge, and a bottom edge of the respective front panel and back
panel,
the front panel having a distal edge opposite the bottom
edge, the distal edge of the front panel resulting from a folded
over portion of the front panel providing a first hem and a first
overlap area immediately below the first hem, a top of the first
hem defining an upper opening of the thermoplastic bag,
the first overlap area comprising at least two layers of
polymeric film below the first hem, a first hem seal formed
between the first hem and the first overlap area, the first hem
seal extending generally from the first side edge to the second
side edge,
a first lower seal continuously sealing the distal edge of the
front panel to the front panel from the first side edge to the
second side edge,
a hem height extending from the top of the first hem to the
first hem seal, a height from the first lower seal to the first hem
seal greater than the hem height, and
a first enclosed overlap area defined by the first overlap
area, the front panel, the first hem seal and the first lower seal,
the first enclosed overlap area devoid of a drawstring.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Piazze
Kugler
Meyer
Wernz
us 3,029,853
us 3,114,497
us 4,878,764
us 4,883,675
2
Apr. 17, 1962
Dec. 17, 1963
Nov. 7, 1989
Nov. 28, 1989
Appeal2017-002825
Application 13/668,369
The following rejections are before us for review:
1. Claims 1, 2, 7, 8, and 22 are rejected under 35 U.S.C. § 103(a),
as being unpatentable over Meyer and W emz.
2. Claims 16-18, and 20 are rejected under 35 U.S.C. § 103(a), as
being unpatentable over Piazze, Meyer, and Wernz.
3. Claims 19 and 21 are rejected under 35 U.S.C. § 103(a), as
being unpatentable over Piazze, Meyer, Wernz, and Kugler.
OPINION
Unpatentability of Claims 1, 2, 7, 8, and 22
over Meyer and Wernz
Appellant argues claims 1, 2, and 22 as a group and does not
otherwise advance separate arguments for the patentability of claims 7
and 8. Appeal Br. 7-10. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
In the "Background Of The Invention" section of the Specification,
Appellant admits that polymeric bags are consumer products that are
"ubiquitous" in modem society. Spec. i-f 3. Appellant admits that
"drawstring" trash bags, and their method of manufacture, are known. Id.
f 4. Appellant identifies two known problems with existing drawstring trash
bags. Id. i-fi-16, 7. The first known problem is that the portion of the bag near
the drawstring hem can fail when the bag is grabbed there and lifted,
especially when its contents are heavy. Id. i-f 6. The second known problem
is that the seal defining the drawstring hem can fail causing the drawstring to
"zipper" and detach from the rest of the bag. Id. i-f 7. Appellant's solution to
these problems is to reinforce the bag with a second ply of material creating
an "overlap" area adjacent the drawstring hem and then attach the lower end
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Application 13/668,369
of the overlapping ply with a seal. Id. i-f 9, Fig. 4 (elements 142, 144 and
172, 174); Claims App. claims 1, 16.
"One of the ways in which a patent's subject matter can be proved
obvious is by noting that there existed at the time of invention a known
problem for which there was an obvious solution encompassed by the
patent's claims." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419--20
(2007). The question presented here is whether the Examiner is correct in
concluding that the subject matter encompassed by Appellant's claims
would have been obvious. We answer that question in the affirmative.
The Examiner finds that Meyer discloses the invention substantially
as claimed except for being ambiguous as to a first of two hem seals. Final
Action 2. The Examiner relies on Wernz as disclosing a bag with first and
second hem seals. Id. at 3. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time of the invention to
place a seal at the dashed line of Figure 8 of Meyer so as to achieve the
claimed invention. Id. According to the Examiner, a person of ordinary
skill in the art would have done this to prevent the drawstring from falling
too far into the bag. Id.
Appellant traverses the Examiner's rejection by arguing that the seals
in Meyer and Wernz are distinguishable from one another such that
modifying Meyer by the teachings of Wernz is not an obvious modification
"because of their inherent differences." Appeal Br. 8. Appellant also
argues that the Examiner's reason for modifying the prior art, namely, to
prevent the drawstrings from falling too far into the bag, reflects
impermissible hindsight. Id.
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Application 13/668,369
Appellant argues that Wernz is distinguishable from Meyer because
seals 7 and 8 serve the "the singular purpose" of defining the bottom of
compartment 23. Id.
Thus, transverse seals 7, 8 of Wernz are more akin to a bottom
seal of a bag than a "lower seal" as claimed with respect to the
Appellant's invention. The transverse seals 5, 6 of Wernz,
moreover, are similar to a typical hem seal.
Id. Appellant further intimates that rigidly restraining the vertical location
of Meyer's drawstring is undesirable. Id. at 9. Therefore, according to
Appellant, the Examiner's "falling too far" reason for modifying Meyer is
not reasonable. Id.
In response, the Examiner states that Meyer's seal 5 is a first, lower
seal. Ans. 4. The Examiner further notes that, arguably, the bottom line of
hollow duct 6 is also a seal, although conceding that Meyer does not
explicitly state as such. Id. The Examiner reiterates that, if there is no hem
seal at or near the bottom of hollow duct 6, the drawstring would fall
unnecessarily deep into the overlap area. Id.
In reply, Appellant argues that Wernz fails to disclose explicitly the
function of transverse seal lines 5, 6. Reply Br. 4. Appellant further argues
that Meyer's drawstrings are properly located without the use of seals. Id.
Meyer discloses a draw-string carry bag. Meyer, col. 1, 11. 41--45.
The drawstring(s) is/are disposed in ducts 6. Id. at Figs. 1, 2, 8. Ducts 6 are
formed by folding flap 8 over fold-over edge 13 to form channels 3 and 4.
Id. at col. 2, 1. 60-col. 3. 1. 30. Flap 8 is seamed (or welded) at element 5 by
heat-sealing. Id. col. 3, 11. 2--4. In Figures 1 and 2 of Meyer, seam 5 appears
to be disposed at and defines the bottom of duct 6. Id. Fig. 1. In Figure 8,
however, seam 5 is shown to be spaced apart from what appears to be the
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Application 13/668,369
bottom of hollow duct 6. Id. Fig. 8. Figures 1, 2, and 8 consistently portray
drawstring elements 9, 10, 11, as being disposed within hollow duct 6. Id.
Figs. 1, 2, 8. Thus, we find that there is support in the record for the
Examiner's statement that "one could argue that the dotted bottom line of
hem ( 6) is a seal." Ans. 4. 3
Wernz is directed to a flexible package with an upper and lower
compartment. Wernz, Abstract. The upper compartment can be opened and
closed using drawstring 18. Id. Fig. 7. The upper compartment of Wernz is
formed by folding blank 3 along transverse fold lines 12 and 13. Id. Fig. 5,
col. 3, 11. 30-33. This results in the sidewalls of the upper compartment
being two plies in thickness. See id. Fig. 5. Wernz has one, upper, heat
sealed, seal line at elements 5 and 6 and a second, spaced apart, lower, heat
sealed, seal line at elements 7 and 8. Id. col. 3, 11. 34--44.
After considering the competing positions of the Examiner and
Appellant, we are persuaded that the Examiner has the better position. We
find unpersuasive Appellant's argument that the "singular purpose" of
Wernz' s seals 7 and 8 is to define the bottom of the upper compartment.
Appeal Br. 8. It is not necessary for the prior art to serve the same purpose
as that disclosed in Appellant's Specification in order to support the
conclusion that the claimed subject matter would have been obvious. See In
re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). Common sense teaches that
familiar items may have obvious uses beyond their primary purposes. KSR,
550 U.S. at 420. Therefore, "[a] reference may be read for all that it teaches,
including uses beyond its primary purpose." In re Mouttet, 686 F.3d 1322,
3 If Figure 8 is interpreted in this manner, one must account for the fact that
hollow duct 6 does not appear to be vertically co-extensive with channel 3.
See Meyer, Fig. 8.
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Appeal2017-002825
Application 13/668,369
1331 (Fed. Cir. 2012), citing KSR, 550 U.S. at 418-21. Here, Wernz teaches
two spaced apart seals with a two-ply side wall disposed between them. A
person of ordinary skill in the art would have been able to adapt such a
structure to alternative purposes and uses. KSR, 550 U.S. at 421 ("A person
of ordinary skill is also a person of ordinary creativity, not an automaton.").
Furthermore, the Examiner's interpretation of Figure 8 of Meyer
merits due consideration. A drawing teaches all that it reasonably discloses
and suggests to a person of ordinary skill in the art. In re Aslanian, 590 F.2d
911, 914 (CCPA 1979).
[A] drawing in a utility patent can be cited against the claims of
a utility patent application even though the feature shown in the
drawing was unintended or unexplained in the specification of
the reference patent.
Id. (emphasis added). Here, Figure 8 of Meyer fairly suggests that the
bottom of hollow duct 6 is a separate feature that is spaced apart from seal 5.
See Meyer, Fig. 8. The Examiner properly qualified the findings of fact in
the final rejection as "ambiguous" on this point (Final Action 2), but such is
no reason to ignore entirely what the drawing fairly suggests to a person of
ordinary skill in the art. Aslanian, 590 F.2d at 914. Figure 8 of Meyer fairly
suggests that the bottom of hollow duct 6 is (or at least could be) defined by
a seal.
Moreover, under the facts and circumstances of this case, we find
persuasive the Examiner's findings and analysis stemming from knowledge
that is generally available to one of ordinary skill. Ans. 3. The obviousness
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."
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Application 13/668,369
KSR, 550 U.S. at 418. Here, the Examiner has reviewed the prior art and
recognized that, if Meyer's hollow duct 6 lacked a lower seal that is
vertically proximate to opening 814, the drawstring might fall downward
toward seal 5 such that the drawstring is no longer accessible to the user. A
person of ordinary skill in the art would readily discern the need to provide a
lower seal for hollow duct 6 to facilitate access to cord (drawstring) 10
through opening 814 without the need for explicit, written guidance. See In
re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (explaining that an artisan must
be presumed to know something about the art apart from what the references
disclose); see also KSR, 550 U.S. at 419 ("The obviousness analysis cannot
be confined by ... overemphasis on the importance of published articles and
the explicit content of issued patents.").
Finally, we are not persuaded by Appellant's hindsight argument. An
Appellant's hindsight argument is of no moment where, as here, the
Examiner provides a sufficient, non-hindsight reason to combine the
references. See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016).
Furthermore, under the correct analysis, any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed. KSR,
550 U.S. at 420. The Examiner's reason, to ensure access to the drawstring,
is sufficient to support the rejection. Final Action 3. This is particularly so
where Wernz is only needed and relied on to substantiate and clarify what is
already, albeit ambiguously, disclosed in Meyer.
We sustain the Examiner's unpatentability rejection of claims 1, 2, 7,
8, and 22.
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Appeal2017-002825
Application 13/668,369
Unpatentability of Claims 16-18 and 20
over Piazze, Meyer, and Wernz
Appellant argues claims 16-18 and 20 as a group. Appeal Br. 6-7.
We select claim 16 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 16 is an independent claim. Claims App. The Examiner relies
on Piazze as disclosing the claimed invention except for an overlap area, for
which the Examiner relies on Meyer in view of Wernz. Final Action 4. 4
The Examiner concludes that a person of ordinary skill in the art would have
found it obvious to add an overlap area to Piazze. Id. at 5. According to the
Examiner, a person of ordinary skill in the art would have done this to
further anchor the drawstring and prevent accidental tearing of the hem. Id.
Appellant argues against the combinability of Meyer and Wernz with
Piazze. Appeal Br. 6-7. Appellant argues that adding an overlap area and
lower seal as taught by Meyer and Wernz to the bag of Piazze would not
reinforce the hem material around the drawstring. Id. at 7.
Id.
The overlap area is below the hem and drawstring; hence, the
modification would fail to influence the performance of the
drawstring encapsulated within the hem. Thus, there is no
logical connection between the modification and the Office's
motivation of "anchor[ing] the drawstring and prevent[ing]
accidental tearing of the hem when grabbing for the
drawstring."
In response, the Examiner states that adding an overlap area to anchor
a drawstring is a matter that is within the knowledge generally available to
one of ordinary skill in the art. Ans. 3. Furthermore, the Examiner relies on
4 We agree that Wernz discloses an overlap area between spaced apart seal
lines 5 and 7. See Wernz, Fig. 5.
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Application 13/668,369
the teachings of Meyer and Wernz as evidence that one of ordinary skill
would anchor a drawstring with an overlap area defined by two seals. Id.
Id.
By having a hem area and overlap area there are at least two
seals. In the case that one seal fails, there is another to further
anchor the drawstring. Ultimately, a purpose of Piazze is to
prevent the drawstring from dislodging from the bag itself. By
having two seals as described such a purpose of drawstring
failure is better achieved. Additionally, with another seal below
the hem seal there would be less chance to grab the bag at the
first hem seal and tear it.
In reply, Appellant argues that Piazze makes no mention of preventing
the drawstring from dislodging from the bag. Reply Br. 2. Appellant argues
that the only disclosure of the advantage of preventing tears at or below the
drawstring hem is provided by Appellant's own disclosure. Id.
We do not find Appellant's arguments persuasive. Essentially,
Appellant's arguments suffer from the same "overemphasis on the
importance of published articles and the explicit content of issued patents"
that plagued Appellant's challenge to the rejection of claim 1. KSR, 550
U.S. at 419. Appellant offers neither evidence nor persuasive technical
reasoning to rebut the Examiner's position that anchoring a drawstring with
an overlap area is a matter that is within the knowledge generally available
to one of ordinary skill in the art. Ans. 3; Jacoby, 309 F.2d at 516. Merely,
reinforcing the weak area of a bag where it is grasped and pulled is an
obvious solution to a known problem. Id.
Finally, during the oral hearing, Appellant raised a new argument
directed to secondary considerations of non-obviousness. Tr. 3. In
particular, Appellant argued that the issue dates of the Examiner's prior art
references is evidence of a long-felt, unmet need. Tr. 4, 1. 11 - 5, 1. 15.
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Application 13/668,369
This argument was not raised in the briefs and, consequently, will not be
accorded any weight in our decision. See 37 C.F.R. § 41.47(e)(l). In any
event, however, such an argument is devoid of merit as it is well settled that
"[a ]bsent a showing of long-felt need or the failure of others, the mere
passage of time without the claimed invention is not evidence of
nonobviousness." Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d
1317, 1324--25 (Fed. Cir. 2004).
Together, Piazze, Meyer, and Wernz disclose all of the elements of
claim 16, and the Examiner has given cogent reasons as to why a person of
ordinary skill in the art would have found it obvious to combine them in a
manner that achieves the claimed invention.
We sustain the rejection of claims 16-18 and 20.
Unpatentability of Claims 19 and 21
over Piazze, Meyer, Wernz, and Kugler
Claims 19 and 21 depend from claim 17. Claims App. Appellant
does not argue for the separate patentability of these claims apart from
arguments presented with respect to claim 17 which we have previously
considered. Consequently, we sustain the rejection of claims 19 and 21. See
37 C.F.R. § 41.37(c)(iv) (failure to separately argue claims).
DECISION
The decision of the Examiner to reject claims 1, 2, 7, 8, and 16-22 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)(l )(iv).
AFFIRMED
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