Ex Parte Gray

Patent Trial and Appeal Board

Jun 25, 2018

13776066 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131776,066 02/25/2013
23387 7590 06/27/2018
IP Practice Group
Harter Secrest & Emery LLP
1600 Bausch & Lomb Place
Rochester, NY 14604-2711
FIRST NAMED INVENTOR
William R. Gray
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.
85946.000069 1186
EXAMINER
HARMON, CHRISTOPHER R
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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):
patent@hselaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM R. GRAY
Appeal2016-008581
Application 13/776,066
Technology Center 3600
Before JAMESON LEE, SALLY GARDNER LANE, and
SALLY C. MEDLEY, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-12. App. Br. 2. 1 We have jurisdiction under 35 U.S.C.
§ 6. We affirm.
Related Appeals
The present application is a divisional of U.S. Patent Application No.
11/144,498 ("the '498 application"). Spec. [l]. We previously decided an
1 Our decision will make reference to Appellant's Appeal Brief ("App. Br.,"
filed December 30, 2015), Appellant's Reply Brief ("Reply Br.," filed
September 14, 2016), the Examiner's Answer ("Ans.," mailed July 14,
2016), and the Final Office Action ("Fin. Act.," mailed April 29, 2015).
Appeal2016-008581
Application 13/776,066
appeal in the '498 application. See Ex parte William R. Gray, No. 2010-
009668 (Bd. Pat. App. & Int. Sept. 25, 2012) (non-precedential) (reversing
the Examiner's obviousness rejection of claims 1--4, 7-9, and 19-31).
Appellant's Invention
The invention relates to a method for retaining a longitudinally
compressed article. Spec. [0004]. Specifically, the method makes use of a
container to hold the compressed article. Id. [0029]. In the context of the
appealed claims, the article is a duct and the method makes use of a strap.
App. Br. (Claim Appendix 1-2).
Claims 1 and 9 are independent and reproduced below:
1. A method of restraining a longitudinally
compressed flexible duct, the method comprising:
(a) disposing a flexible container about a
longitudinally compressed flexible duct;
(b) closing the flexible container to retain the
longitudinally compressed flexible duct within the flexible
container prior to engaging a permanent longitudinal strap with
the flexible container; and
( c) securing the permanent longitudinal strap about the
closed flexible container to resist longitudinal expansion of the
duct, the permanent longitudinal strap extending longitudinally
about the flexible container and the longitudinally compressed
flexible duct.
9. A method of restrammg a longitudinally
compressed flexible duct, the method comprising:
(a) securing a permanent longitudinal strap about a
longitudinally compressed flexible duct to form a longitudinally
compressed flexible duct assembly, the permanent longitudinal
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Application 13/776,066
Id.
strap precluding longitudinal expansion of the longitudinally
compressed flexible duct; and
(b) disposing the longitudinally compressed flexible
duct assembly within a flexible container.
Prior Art Relied Upon
Wirfel U.S. Patent No. 3,521,424 July 21, la70
Smalley U.S. Patent No. 3,827,210 Aug. 6, 1974
Westaway U.S. Patent No. 5,088,271 Feb. 18, 1992
O'Connor U.S. Patent No. 6,702,118 B2 March 9, 2004
Rejections on Appeal
Claims 1-5, 7, and 8 stand finally rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Smalley in view of Wirfel. Fin. Act. 2-3.
Claims 1-8 stand finally rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Smalley and O'Connor. Id. at 3.
Claims 9-12 stand finally rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Smalley and Westaway. Id. at 3--4.
II. ANALYSIS
A. Obviousness of Claims 1-5, 7 and 8 over Smalley and Wirfel
Smalley discloses a method for packaging a flexible duct. Smalley,
Abstr. Figure 5 of Smalley is reproduced below:
2 For clarity and ease of reference, we only list the first named inventor.
3
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Application 13/776,066
0,.., t'UI --
38
Figure 5 is a cross-sectional view of a duct within a bag at one point in the
process for packaging the duct. Smalley, 1 :55-57. Smalley describes its
process as follows:
The present invention provides a method of packaging an
axially collapsible duct which includes inserting an axially
collapsible duct into an open end of a tube, placing an open end
of a bag over the tube with the bag enclosing the open end of
the tube, compressing the duct, and ejecting the duct from the
tube into the bag while the duct is compressed. The open end
of the bag is closed about the duct while the duct is compressed
and the open end is fastened to retain the duct within the bag in
a compressed state. The duct is compressed and ejected from
the tube by means of a ram.
Id. at 1 :30-40. Numeral 36 designates the flexible compressible duct and
numeral 38 designates the bag containing the duct. Id. at 3:55---65. In a
disclosed embodiment, the duct is first placed in tube 22 and then collapsed
to one third its length by vacuum pressure and introduced by a movable ram
into bag 38. Id. at 3:55--4:18. An operator then twists the bag and applies a
clip or other fastening means to the neck portion of the bag to close the open
end of the bag. Id. at 4:29-32.
With respect to claim 1, there is no dispute that Smalley discloses step
(a) of disposing a flexible container about a longitudinally compressed
flexible duct. Step (b) of claim 1, however, requires engaging a permanent
longitudinal strap with the flexible container. Additionally, step ( c) of claim
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Application 13/776,066
1 requires: "securing the permanent longitudinal strap about the closed
flexible container to resist longitudinal expansion of the duct, the permanent
longitudinal strap extending longitudinally about the flexible container and
the longitudinally compressed flexible duct."
Smalley does not disclose applying a longitudinal strap to its bag for
any purposes.
Figure 5 of Wirfel is reproduced below:
Figure 5 of Wirfel provides a perspective view of a compressed foam article
within a restraining case. Wirfel, 2:37-38. Laminate 1 of polyurethane
sheet 2 and polyvinyl chloride film 3 is rolled up on hollow cylinder or spool
5 and encased by polyethylene bag 7. Wirfel, 7:25--43. The rolled up and
compressed foam 1 and container 7 are enclosed in a layer of kraft paper 11
which is strong enough to maintain the foam at its compressed volume. 3 Id.
at 7:43--48. Kraft paper is secured in place by tape 12. Id. at 7:48--49.
The Examiner regarded Wirfel's tape 12 as a permanent strap
and proposes to add Wirfel's tape 12 to Smalley's bag 38 to meet
claim 1 's limitation of "securing the permanent longitudinal strap
3 Rolled foam 1 in bag 7 is compressed by a vacuum pump. Id. at 7 :22-25,
7:35-38.
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Appeal2016-008581
Application 13/776,066
about the closed flexible container to resist longitudinal expansion of
the duct, the permanent longitudinal strap extending longitudinally
about the flexible container and the longitudinally compressed flexible
duct." (Emphasis added). Specifically, the Examiner stated: "It
would have been obvious to one of ordinary skill in the art at the time
of the invention to include securing a permanent strap as taught by
Wirfel in the invention to Smalley et al. for added resistance against
duct expansion." Fin. Act. 2.
Appellant notes that Wirfel' s compressed foam is in a rolled
configuration and thus is not longitudinally compressed, and that
Wirfel's tape 12, which the Examiner regarded as a longitudinal strap,
is not used in Wiefel to resist longitudinal expansion of the
compressed foam. App. Br. 3--4. Appellant further notes that in
Wirfel, it is kraft paper 11 that is used to resist radial expansion of the
foam and that tape 12 is only used to secure kraft paper 11 in place.
Id. Based on the foregoing, Appellant argues that Wirfel "clearly
does not teach or suggest use of a permanent strap to resist
longitudinal expansion of a longitudinally compressed product." Id.
at 4. Also based on the foregoing, Appellant argues that the
combination of Smalley and Wiefel still does not teach all the
limitations of claim 1, and that the Examiner has relied on improper
hindsight in light of Appellant's own disclosure to meet the
limitations of claim 1. Id. For two reasons discussed below, the
arguments are unpersuasive.
First, although it is true that the rolled and compressed foam in
Wirfel expands radially and not longitudinally, tape 12 is applied in
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Application 13/776,066
Wirfel longitudinally about the foam and manifestly resists
longitudinal expansion if there were any such expansion. As the
Examiner has indicated, as taught by Wirfel, resisting longitudinal
expansion necessarily occurs, based on the configuration disclosed by
Wirfel, and as would have been understood by one with ordinary skill
in the art. Ans. 6. Furthermore, Appellant has not asserted that
Wirfel's longitudinally disposed tape 12 would not necessarily resist
longitudinal expansion, or that one with ordinary skill in the art would
not have recognized from Wirfel that tape 12, as disposed in Wirfel,
would resist longitudinal expansion as well as radial expansion.
Second, key to the Examiner's stated rationale is the specific
finding that "[p ]roviding redundant securing of a package is
commonplace in the art." Ans. 5. The determination is not disputed
by Appellant. Thus, the Examiner has provided reasoning with
rational underpining to support the proposed combination of
teachings, i.e., adding Wirfel's tape 12 as a strap to Smalley's bag for
"added resistance against duct expansion." Fin. Act. 2. Contrary to
Appellant's contention, the reasoning stems from the prior art. We
are not persuaded that the Examiner applied hindsight in light of
Appellant's own disclosure. Also, Appellant's focusing on which
direction Wirfel's rolled foam expands is misplaced. Nonobviousness
cannot be established by attacking references individually where the
rejection is based on the teachings of a combination of references. In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant further argues that because, in Wirfel, tape 12 is
already applied when vacuum is pulled from the foam to compress it,
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Application 13/776,066
the Wirfel tape is applied prior to the package being closed. App. Br.
5. Appellant notes that that does not meet claim 1 's requirement that
the flexible container is closed prior to engaging a permanent
longitudinal strap with the flexible container. Id. The argument is
unpersuasive, because the Examiner has not relied on the pumping
operations of Wirfel. Instead, the Examiner relied on Wirfel for its
teaching that a tape applied longitudinally about a compressed article
in a container would resist expansion of the article. As applied by the
Examiner, the strap is attached to Smalley's bag after Smalley's bag
has been closed. Ans. 6. Appellant asserts that to conclude that the
strap would be added to Smalley after Smalley's bag is closed is
"entirely unsupported." We disagree and find nothing speculative in
the Examiner's proposal. Indeed, it is rational that if the motivation is
to "add" a second mechanism for redundant resistance against
expansion, then the addition is made after the original configuration is
complete. 4 That approach requires the least modification of the
disclosure of Smalley.
In its Reply, Appellant takes issue with the Examiner's
statement that application of a restraining member to a closed package
is "deemed within the skill of one of ordinary skill in the art." Reply,
3. We note simply that we do not read the statement, as Appellant
evidently has, as indicating that the Examiner in a conclusory manner
attempted to justify the obviousness conclusion in an unsupportable
4 In its Reply, Appellant argues that in Smalley there is not a separate
securing step after the step of closing the bag. Reply, 3. The argument is
misplaced because the rejection on appeal is based on obviousness and not
anticipation.
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Appeal2016-008581
Application 13/776,066
manner. Rather, we read it as the Examiner expressing that the task of
implementing that step, if already given the step to do, is technically
within the level of ordinary skill in the art. From that perspective, we
see no contrary argument from Appellant, i.e., that one with ordinary
skill in the art would not have known how, as a technical matter, to
attach a strap to a container.
In its Reply, Appellant argues that because Wirfel does not
disclose an article that expands longitudinally, combining Smalley and
Wirfel would not reflect using a similar device in the same way.
Reply, 3. That view is excessively narrow, as tape 12 ofWirfel wraps
around the container longitudinally and would resist expansion in all
directions including the longitudinal direction. We do not see
application of Wirfel's tape 12 to Smalley's bag as using the tape in a
fundamentally different way.
Claims 2-5, 7, and 8 each depend, directly or indirectly from
claim 1. Appellant has not presented separate arguments for those
claims. Accordingly, they stand or fall with independent claim 1.
37 C.F.R. § 41.37(c)(iv).
For the foregoing reasons, Appellant has not shown error in the
Examiner's rejection of claims 1-5, 7 and 8 as obvious over Smalley
and Wirfel.
B. Obviousness of Claims 1-8 over Smalley and O'Connor
For this rejection, the Examiner indicated that the reasoning is
essentially the same as that for the combination of Smalley and Wirfel, but:
If applicant disagrees that the strap of Wirfel is not a
"permanent" strap then the teachings of O'Connor et al. are
relied upon. 0 'Connor et al. teaches compressing and
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Application 13/776,066
packaging a product comprising providing straps 144 upon the
package; see col. 21, lines 8+. It would have been obvious to
one of ordinary skill in the art at the time of the invention to
include securing a permanent strap as taught by 0 'Connor in
the invention to Smalley et al. in order to completely restrain
the duct from expanding.
Fin. Act. 3. Notably, even with O'Connor, the Examiner still relies on the
desirability of having "redundancy in packaging." Ans. 7. The Examiner
further explained: "O'Connor is directly concerned with retaining a
compressed product within a flexible package, closing the package (via heat
sealers) and providing a permanent strap for added securing force; see all
figures; col. 21, lines 8+." Id. at 5; Ans. 7.
With regard to claim 6, 5 which depends from claim 1, the Examiner
stated: "Regarding claim 6, O'Connor discusses conventional straps or heat
shrink material; col. 21, lines 8+. The Examiner notes that heat fused straps
are considered a conventional strap and/or obvious design choice that would
require a heat fusing process to complete." Id.
Figures 16 and 17 of O'Connor are reproduced below:
5 Claim 6 depends from claim 1 and further recites: "wherein securing the
permanent longitudinal strap about the flexible container includes one of
heat fusing and stapling."
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!-~: .· ·, \:
_,_
; ~: •"' :•:.-\•1 "c"
FIG, 16
;.:!(;, !7
Figures 16 and 17 of O'Connor illustrate respective vertical cross
sectional views of a container, in a process of packing strip material therein,
containing a stack of folded strip material, with Figure 16 showing a view
prior to application of compression and Figure 17 showing the resulting
package including top cover 142 and strap 144. O'Connor, 9:57---60, 20:53-
21: 11. In pertinent part, O'Connor describes:
[A] top cover 142 is applied onto the top of the stacks and the
package is compressed as indicated at C by a suitable
mechanical compression member which applies a force to the
top surface of each of the stacks compressing the stacks
downwardly until the stacks reach the height of a top edge 126.
Thus as shown in FIG. 17 the package is completely closed by
the rigid container defined by the sleeve portion 120, the end
cover 121 which is now at the bottom of the structure and the
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Application 13/776,066
end cover 142 which is now at the top of the structure.
The package is maintained closed by a wrapped layer 144
of strapping material of a conventional type. The strapping
material can be individual wrapping straps or can be a shrink
wrap film material.
Id. at 20:53-21: 11.
Appellant asserts that O'Connor uses strap 144 only in connection
with an embodiment including not a flexible bag but a rigid container, to
keep the multiple separate components of the rigid container closed. App.
Br. 6. Appellant's argument is as follows:
As each of Smalley and O'Connor teach the use of a
flexible bag itself to maintain a compressed product in
compressed condition (i.e., restrain the product from
expanding), there is no teaching or suggestion based on such
references to employ the wrapping layer 144 of O'Connor,
which is taught for use only in maintaining separate
components of a rigid container in a closed position, on the
already closed flexible bag container of Smalley, which is
taught as already restraining the duct from expanding. Rather,
as neither of Smalley or O'Connor teach use of a permanent
longitudinal strap to resist longitudinal expansion of a
longitudinally compressed product in a flexible container
(again, as O'Connor only teaches use of wrapping layer 144 to
maintain parts of a rigid multicomponent container in a closed
position), it is clear the asserted rejection is made using
improper hindsight reconstruction based at least in significant
part on Applicant's teachings, rather than only the teachings of
the cited references.
App. Br. 6-7.
We agree with Appellant that in 0 'Connor strap 144 is disclosed for
use with a rigid container and has not been described in 0 'Connor as being
used with O'Connor's flexible bag embodiments. However, that argument
is of no consequence, in light of the Examiner's stated rationale, i.e., add a
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Application 13/776,066
permanent strap, like that provided in O'Connor, to Smalley's bag to provide
an additional securing force. That motivation transcends whether the
container being secured is flexible or rigid, because the strap would resist
expansion of the contained item regardless of whether the container is a
flexible bag as in Smalley or a rigid box-like structure as in O'Connor's
Figure 17.
As noted above in the context of the rejection based on Smalley and
Wirfel, the Examiner has determined that "[p ]roviding redundant securing of
a package is commonplace in the art." Ans. 5. Because providing redundant
securing of a package is commonplace in the art, and because O'Connor
reasonably conveys the use of a permanent strap to resist longitudinal
expansion, the Examiner has provided reasoning with rational underpinning
how the strap limitation would have been met by the combined teachings of
Smalley and O'Connor. We do not find persuasive Appellant's argument
that the Examiner has applied impermissible hindsight in light of
Appellant's own Specification.
Appellant further argues that O'Connor's wrapping layer 144 is the
only securing force for its container and not an additional securing force.
Reply, 5. The argument is misplaced because the Examiner does not rely on
O'Connor for the motivation to add a redundant securing force for Smalley's
container.
Claims 2-8 each depend, directly or indirectly from claim 1.
Appellant has not presented separate arguments for those claims.
Accordingly, they stand or fall with independent claim 1. 37 C.F.R.
§ 41.37(c)(iv).
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For the foregoing reasons, Appellant has not shown error in the
Examiner's rejection of claims 1-8 as obvious over Smalley and
O'Connor.
C. Obviousness of Claims 9-12 over Smalley and Westaway
Unlike claim 1, claim 9 requires first securing a permanent
longitudinal strap about a longitudinally compressed flexible duct to
form a longitudinally compressed flexible duct assembly, and then
disposing the assembly within a flexible container. The Examiner
relies on Westaway' s disclosure of first placing longitudinal bale
bands 36 and 37 (straps) around a bale of compressed hay, and then
placing the bale, together with the bale bands, within a flexible bag.
Fin. Act. 4---6. The Examiner further explained: "It would have been
obvious to one of ordinary skill in the art at the time of the invention
to include securing a longitudinal strap to the duct product of Smalley
prior to sealing a flexible container/package around in order to reduce
tension on the container material and avoid tears when loading the
container." Id. at 4. The Examiner additionally explained:
Regarding Westaway, straps are common binding agents
well known to those in the packaging art. Straps are commonly
provided in agriculture bales to resist expansion of a
compressed product as claimed. Without some expansion
resistance of the baled product the bale simply falls apart and is
not easily handled. One of ordinary skill in the art could easily
recognize utilizing a strap for retaining a compressed duct in a
compressed state ie. preclude expansion thereof in an
axial/longitudinal direction. Westaway provides a clear
teaching of sequential strapping and bagging steps in the
claimed manner.
Id. at 5---6.
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Appellant argues that the Examiner misread Westaway, because "the
straps in Westaway are specifically designed so as not to preclude
longitudinal expansion of the compressed bale in the closed bag thereof."
App. Br. 8-9. Appellant points to disclosure in Westaway conveying that
each bale is compressed to half its original length, loaded into a bag, and
then allowed to partially re-expand back to about 2/3 its original length, all
the while having the bale band on the bale. Id. at 8; see also Westaway,
6:9-24. On that basis, Appellant argues that bale bands 36 and 37 in
Westaway do not preclude expansion of the bale but implement the contrary,
i.e., allow partial expansion of the bale. App. Br. 8.
Appellant's argument is misplaced. Appellant focuses on further
compression after bale bands 36 and 37 have been installed on an initially
compressed bale. It is after the further compression that the bale is allowed
to partially expand. Now here has Appellant identified disclosure in
Westaway that the bale would expand to a length longer than it was at the
time bale bands 36 and 37 were first installed on the bale. It is unreasonable
to regard bale bands 36 and 37 as allowing expansion of the bale, on the sole
basis that after further compression of the bale with the bands already on the
bale there is partial re-expansion of the bale. We agree with the Examiner's
position that when bale bands 36 and 37 are first installed on an initially
longitudinally compressed bale, the bale is precluded from expanding.
Appellant does not dispute that that is the case. In that regard, Figure 1 of
Westaway is reproduced below:
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Figure 1 illustrates a perspective view of Westaway's bale cutting,
compacting, and bagging apparatus. Westaway, 4:27-29. As shown in
Figure 1, initially longitudinally compressed bale 1 is wrapped
longitudinally by two bale bands 3 6 and 3 7. 6
Appellant further argues that Westaway constitutes nonanalogous art.
Id. at 8-9. We are not persuaded that Westaway constitutes nonanalogous
art to the claimed invention. Appellant has not explained why Westaway
would not have been reasonably pertinent to the problem with which the
inventor of the instant application was concerned. See e.g., In re Bigio,
381F.3d1320, 1325 (Fed. Cir. 2004). We note that the Specification states:
"Therefore, a need exists for a packaging restraint and container that can
retain a longitudinally compressed article, without requiring special
manufacturing consideration." Spec. [0007]. Westaway is reasonably
pertinent to the stated problem, based on its use of bale bands as restraint,
longitudinal compression of bales, and use of a bag to contain the bale.
6 Appellant has noted that in each bale the cut crop is disposed transversely.
App. Br. 8. That, however, does not change the fact that the bale as a
product is compressed longitudinally along its length.
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Claims 10-12 each depend from claim 9. Appellant has not
presented separate arguments for those claims. Accordingly, they
stand or fall with independent claim 9. 37 C.F.R. § 41.37(c)(iv).
For the foregoing reasons, Appellant has not shown error in the
Examiner's rejection of claims 10-12 as obvious over Smalley and
Westaway.
III. CONCLUSION
For the foregoing reasons, Appellant has not shown that the Examiner
erred in the (1) rejection of claims 1-5, 7, and 8 under 35 U.S.C. § 103 as
obvious over Smalley and Wirfel, (2) rejection of claims 1-8 under
35 U.S.C. § 103 as obvious over Smalley and O'Connor; and (3) rejection of
claims 9-12 under§ 103(a) as obvious over Smalley and Westaway.
The rejection of claims 1-12 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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