Ex Parte GUM et al

Patent Trial and Appeal Board

Jun 26, 2018

14098795 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/098,795 12/06/2013
535 7590 06/28/2018
KFROSS PC
311 E York St
Savannah, GA 31401-3814
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Mark GUM
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.
30624 2741
EXAMINER
HELVEY, PETER N.
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
savannah@kfrpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK GUM and JULIE GREASER
Appeal2017-008275
Application 14/098,795
Technology Center 3700
Before ANNETTE R. REIMERS, LISA M. GUIJT, and
ERIC C. JESCHKE, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3-14, and 16. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm in part.
1 Appellants identify the real party in interest as Roehm GmbH. Br. 1.
2 Appeal is taken from the Final Office Action dated September 22, 2015, as
supplemented by the Advisory Action dated February 1, 2016.
Appeal2017-008275
Application 14/098,795
STATEMENT OF THE CASE
Claims 1 and 13 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal, with
disputed claim limitations italicized for emphasis.
1. A compartmentalized bag with at least two pouches that
can be separated along a tear line, each pouch having:
front and back panels;
a standing base formed of a base gusset panel;
a longitudinal weld directly connecting the front and back
panels of the pouches to each other along the tear line above the
base gusset panel; and
side panels between the front and back panels at edges
opposite the tear line, the front and back panels along with the
base gusset panels and the side gusset panels being constituted
of separate pieces of film with the side gusset panels and base
gusset panels being fastened by weld to the front and back
panels.
THE REJECTIONS
I. Claims 1, 3, 4, 6, 7, 13, and 14 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Trani (US 6,409,386 Bl; issued June 25,
2002) and Galomb (US 7,153,026 B2; issued Dec. 26, 2006).
II. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Trani, Galomb, and Leone (US 5,669,504; issued Sept.
23, 1997).
III. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Trani, Galomb, and Kugler (US 3,580,486; issued May
25, 1971).
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IV. Claims 9, 10, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Trani, Galomb, and Hoover (US 4,696,403; issued Sept.
29, 1987).
V. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Trani, Galomb, and Piraneo (US 5,924,573; issued July
20, 1999).
VI. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Trani, Galomb, and Rowe (US 4,807,754; issued Feb. 28,
1989).
ANALYSIS
Rejection I
Independent claims 1 and 13, and dependent claims 4, 6, 7, and 14
Appellants argue claims 1, 4, 6, 7, 13, and 14 as a group, and present a
separate argument for dependent claim 3. See Br. 8-13. We select
independent claim 1 as representative, with claims 4, 6, 7, 13, and 14 falling
with claim 1, and we address claim 3 separately infra. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Regarding independent claim 1, the Examiner finds, inter alia, that
Trani discloses a compartmented bag, as claimed (see, e.g., Trani, Fig. 8),
except for front and back panels and base and side gusset panels that are
constituted of separate pieces of film, with the base and side gusset panels
being fastened by a weld to the front and back panels. Final Act. 2-3. The
Examiner relies on Galomb for teaching that "integrally formed gusset
panels and gusset panels constituted of a separate piece of film that is
fastened by welds to the front and back panels are known equivalents." Id.
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at 3 (citing Galomb, Figs. lOA, lOB, 1 lA, 1 lB). The Examiner reasons that
it would have been obvious "to create the gusset panels taught by Trani as a
separate component as taught by Galomb, in light of Galomb teaching the
equivalence thereof." Id. (citing Galomb 9:18-36).
Br. 8.
Appellants argue that
[t]he main problem with the teachings of Trani and Galomb is
that they do not take into account how bags are made. These are
mass-production items produced in large numbers in a
continuous process, so that the person skilled in the art would not
consider combining features unless the manufacturing process
permits such combination. In other words, it is not obvious to
combine features in a manner that make the bag impossible to
manufacture efficient! y.
We are not persuaded by Appellants' argument. The test for
obviousness "is what the combined teachings of the references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
425 (CCPA 1981). Further, our reviewing court has explained that "just
because better alternatives exist in the prior art does not mean that an
interior combination is inapt for obviousness purposes" (Jn re Afouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012)). See also In re Farrenkopf, 713 F.2d 714,
718 (Fed. Cir. 1983) ("That a given combination would not be made by
businessmen for economic reasons does not mean that persons skilled in the
art would not make the combination because of some technological
incompatibility. Only the latter fact would be relevant."). Thus, we do not
agree that potentially inefficient manufacture demonstrates in the non-
obviousness of the Exarniner' s proposed combination, but rather supports
the Examiner's rationale that Galomb suggests an obvious alternative
method (i.e., welding separate panels together), for consideration, to the
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Application 14/098,795
method disclosed in Trani (i.e., folding a single sheet to create panels), to
form a compartmented package or bag.
Appellants also argue that "Trani relates expressly and exclusively to
a holder for viscous substances or liquids and the only manufacturing
process that is described is in the statement that the bag is ' ... made by
folding and heat-sealing a single sheet of flexible material.'" Br. 8.
Appellants submit that "[t]hese features -the use of a single sheet,
'flowable' bag contents-are critical" features ofTrani's container. Id.
(citations omitted). Appellants conclude that modifying Trani' s container to
include separate pieces of film fastened by welds, as claimed, "is clearly and
unequivocally excluded by Trani" because "Trani undeniably teaches away
from such multipart construction" and "clearly discourages" it. Id. at 9.
The Examiner correctly responds that although Trani teaches an
alternative to the Examiner's proposed modification, Appellants have not
provided any evidence that Trani criticizes, discredits, or otherwise
discourages the use of more than one sheet. Ans. 8. In other words, a
teaching away requires a reference to actually criticize, discredit, or
otherwise discourage the claimed solution, which Trani does not. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed."). Notably,
Galomb' s package is also for "flowable materials." See Galomb, Abstract.
In addition, we do not agree with Appellants that Trani excludes the
Examiner's proposed modification. "While a prior art reference may
indicate that a particular combination is undesirable for its own purposes, the
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reference can nevertheless teach that combination if it remains suitable for
the claimed invention." In re Zhang, 654 Fed. Appx. 488, 490 (2016)
(referencing In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) ("[T]he teaching
of [a reference] is not limited to the specific invention disclosed.")). In other
words, although a multi-piece construction of the container does not feature
the single sheet improvement of Trani' s invention, the combination remains
suitable for the claimed invention. An object of Trani' s invention is "to
provide containers having such a shape to be self-supporting," which
continues to be addressed by the Examiner's proposed modification of
Trani' s container regardless of whether the container is formed from a single
sheet or multiple sheets. Trani 1 :37-38.
Appellants also argue that "combining the teachings of Galomb and
Trani is impossible." Br. 11. However, Appellants do not provide any
support for why it is impossible to weld separate panels of sheets, rather than
to create them by folding. The Examiner relies on Galomb not for the
structure of a compartmentalized bag (i.e., front, back, base gusset, and side
gusset panels), but for teaching that folding a single sheet to form panels and
welding separate sheets to form panels are known equivalents for forming a
package or bag.
Appellants further argue that "[n]othing in Trani and/or Galomb
suggests the two-pouch, five-piece bag, with folded side and floor panels" as
claimed. Br. 11. To the extent Appellants are holding the Examiner to the
TSM (teaching, suggestion, or motivation) standard, such a standard is not
required. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007).
Moreover, the Examiner provides sufficient rationale for the proposed
combination, which Appellants do not challenge, namely, applying a known
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technique (i.e., welding separate film panels to form a container) to a known
device (i.e., a container having front, back, base gusset, and side gusset film
panels) to yield predictable results. See id. at 416. This is particularly so
given the combination would not be "uniquely challenging or difficult for
one of ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 420-21).
Accordingly, we sustain the Examiner's rejection of independent
claim 1, and claims 4, 6, 7, 13, and 14 fall with claim 1.
Dependent claim 3
Claim 3, which depends from claim 1, recites, "wherein the side
gusset panels end at a spacing from top edges of the pouches." Br. 31
(Claims App.). The Examiner determines that Trani, as modified by
Galomb, "results in a device wherein the side gusset panels end [as
claimed]." Final Act. 3. In support, the Examiner relies on the depiction of
Trani's side gusset panels in Figures 2 and 3, wherein the side gusset panels
end at a spacing from the top edge. Id.
Appellants argue that, with respect to Trani, "[t]he single-sheet
construction means that the side gusset has to extend all the way from the
top seam to the bottom seam," and therefore, Trani fails to disclose the
construction recited in claim 3. Br. 10.
A preponderance of the evidence fails to support the Examiner's
finding that Trani's side gusset panels (i.e., "fourth side 16 ... provided with
a second accordion-like portion 17" (Trani 2:31-33)) end where the heat
sealing portion of side 12 begins, such that Trani's side gusset panels would
be spaced from a top edge of the pouch, because one cannot tell from
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Figures 2 and 3 whether fourth side 16 of Trani is within the weld, such that
fourth side 16 extends to the top edge of the pouch or not.
Accordingly, we do not sustain the Examiner's rejection of dependent
claim 3.
Rejection II
Appellants argue that "[ s ]ince the Leone bag is made of one piece,
this reference is largely cumulative to Trani, and the combination with the
structure of Galomb is impossible for the reasons advanced above [ (with
respect to claim 1)]." Br. 15. Because we do not agree that there are any
deficiencies in the Examiner's findings or reasoning with respect to the
Examiner's proposed combination of Trani and Galomb as applied to claim
1 supra, we are not apprised of error in the Examiner's rejection of claim 5.
In other words, Appellants fail to point out any error in the Examiner's
findings or reasoning with respect to Leone. See Final Act. 4--5 (relying on
Leone for teaching a releasable closure).
Accordingly, we sustain the Examiner's rejection of claim 5.
Re} ection III
Claim 8, which depends from claim 6, which depends from
independent claim 1, recites "wherein a notch provided at the bottom edge of
the pouches has a width of more than 5% of the total width of the
compartmented bag." Br. 32 (Claims App.). The Examiner relies on Kugler
for teaching that "square comers" (as depicted in Figure 8) and "notched
comers" (as depicted in Figure 1) at the bottom edge of a bag are "known
equivalents." Final Act. 5. The Examiner reasons that it would have been
obvious "to create the bag assembly taught by Trani as modified [by
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Galomb] with notched bottom edge comers as taught by Kugler, in light of
Kugler teaching the equivalence thereof." Id. (citing Kugler, Figs. 1, 8).
Appellants argue that
[t]here are no notches in this structure, much less at a central tear
line, as claimed. The detail at the center of the gusset 28 is
sectioned for illustration purposes only, so this is not a notch in
a production model, and the comers are simply the folds created
by folding in the bottom panel, and are offset from any center
line, which is not here anyhow. This is a bag with no side
gussets, which is why it has the angled comers.
Br. 18-19.
Although claim 6 requires top and/ or bottom notches at top and/ or
bottom edge of the pouches at the tear line, claim 8 recites yet another notch
("a notch," rather "one of said notches") and therefore, does not require the
claimed notch to be at the tear line. Notwithstanding, an ordinary meaning
of the claim term "notch" is "a V-shaped indentation or hollow (as in a
surface or edge)," although the Specification makes clear that the claimed
notch is not limited to a V-shape. WEBSTER'S THIRD NEW INT'L DICTIONARY
1543 (1993); Spec. 11:17-18 ("It is possible forthe notch 9a to have a U- or
V-type shape."). Kugler describes the "notched comers," as relied on by the
Examiner, as follows: "The satchel bottom is readily distinguishable from a
conventional gusset however, in the opposite marginal edges of the wall
portions 28b and 28c are each oriented at a 45Q angle as clearly shown in the
drawings." Kugler 2:8-13. Thus, a preponderance of evidence fails to
support the Examiner's finding that Kugler's comers are notched, in that
there is a U- or V-shaped indentation or hollow in the surface or edge of wall
portions 28b and 28c. Rather, the wall portions 28b and 28c are simply
angled. See Kugler, Fig. 1.
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Accordingly, we do not sustain the Examiner's rejection of claim 8.
Rejection IV
Claim 9 depends from independent claim 1, and recites "wherein at
least one of the pouches has a carry handle," and claim 10 depends from
claim 9 and recites "wherein each pouch has a carry handle on the respective
side gusset panel." Br. 31-32 (Claims App.). Similarly, claim 16 depends
from independent claim 13 and recites "first and second handle loops
attach[ed] centrally to the outer side-gusset panels." Id. at 34 (Claims App.).
The Examiner finds that Hoover teaches a similar dual-pouch device
with a carry handle (i.e., handle 24) on a respective side gusset panel (i.e.,
gussets 16). Final Act. 6. The Examiner reasons that it would have been
obvious "to add handles as taught by Hoover to the pouch assembly taught
by Trani as modified [by Galomb ], in order to allow convenient carrying
thereof." Id.
Appellants argue that "Hoover shows loops at the top of the bag, not
in the side gusset as claimed." Br. 22.
The Examiner responds that Hoover's handles (or loops) are "formed
with holes in the side gussets" and that "the side gussets form[] the inner
layer of the handle loops themselves." Ans. 10 (citing Hoover, Figs. 2, 3).
Hoover discloses that "[t]he formed bag will thus include opposed
overlying front and rear panels defining front and rear walls 12 and 14 with
integral outwardly expandable side walls or gussets 16, a heat sealed closed
bottom or lower edge 18 and a heat sealed top edge 20." Hoover 2:47-50
(emphasis in italics added); cf id. at 2:52-55 ("As desired, the basic
configuration of the bag 10 can be formed without the side gussets.").
Hoover further discloses that "the bag 10 is cut away inwardly and centrally
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through the heat sealed upper edge 20 thereof for a minor portion of the
height of the bag to define both an open bag mouth 22 and a pair of laterally
opposed handles 24." Id. at 2:57---61; see also id., Figure 2 (depicting an
inward cut in side wall or gusset 16 to form a handle in conjunction with
front and rear walls 12, 14 ). Thus, because Hoover describes and depicts
handles 24 as formed by the side walls or gussets 16, Appellants' specific
argument that Hoover's handles are at the top of the bag, not in the side
gusset, is unpersuasive of Examiner error.
Accordingly, we sustain the Examiner's rejection of claims 9, 10, and
16.
Rejection V
Claim 11 depends from independent claim 1 and recites "wherein the
front and back panels are each formed of a respective piece of multilayer
laminated film." Br. 32 (Claims App.). The Examiner finds that "Piraneo
teaches creating a bag out of single layer film or multilayer film." Final Act.
6 (citing Piraneo 4:20-25). The Examiner reasons that it would have been
obvious "to create the bag assembly taught by Trani as modified [by
Galomb] with a multilayer laminated film as taught by Piraneo, in light of
Piraneo teaching the equivalence thereof." Id. (citing Piraneo 4:20-25).
Appellants argue that "Piraneo discloses a multilayer film in a bag,
but not in a multipart bag with the construction described in detail in the
claims." Br. 26.
We are not persuaded by Appellants' argument because the Examiner
relies on Trani for the structure of the compartmented bag, as claimed, and
on Piraneo only for teaching that single and multilayer laminated films are
known, alternative merchandise bag constructions. See Piraneo 4:20-25
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("the merchandise bags can also have a multi-layer construction comprised
of layers of different compositions and properties").
Accordingly, we sustain the Examiner's rejection of claim 11.
Rejection VI
Claim 12 depends from independent claim 1 and is reproduced below.
The compartmented bag defined in claim 1 with four pouches,
wherein the pouches can be separated from each other at first tear
line and at a second tear line, the first tear line extending along
the longitudinal edges of the pouches, the second tear line
separating the pouches in such a manner that the second tear line
is a on the individual pouches opposite the respective based
gusset panel.
Br. 32-33 (Claims App.). The Examiner finds that "Rowe teaches
manufacturing a similar bag style with connected adjacent bags." Final Act.
7 (citing Rowe, Fig. 4). The Examiner reasons that it would have been
obvious
to create the bag assembly taught by Trani as modified [by
Galomb] in a multi-bag roll as taught by Rowe, in order to
accommodate a large number of bags in a compact package, the
provision of a package which is easily stored and handled, and
the provision of a package from which the individual bags can b
conveniently and expeditiously removed for use.
Id. (citing Rowe 1:10-23). The Examiner determines that
Id.
[ w ]hen viewed in combination, Trani as modified [by Galomb]
results in a device with four pouches, wherein the pouches can
be separated from each other at a first tear line and at a second
tear line, the first tear line (Trani 26) extending along the
longitudinal edges of the pouches, the second tear line (Rowe 58)
separating the pouches in such a manner that the second tear line
is on the individual pouches opposite the respective base gusset
panel.
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Appellants argue that "Rowe teaches a system for stamping out
sequential bags, but not pairs of separable side-by-side pouches as defined
here." Br. 29. However, Appellants' argument does not address the
rejection as articulated by the Examiner supra, which relies on applying
Rowe's teaching of a second tear line between sequential bags, and Trani' s
teaching of two compartmentalized bags, to result in the claimed subject
matter.
Accordingly, we sustain the Examiner's rejection of claim 12.
DECISION
The Examiner's rejections of claims 1, 4--7, 9-14, and 16 under 35
U.S.C. § 103(a) are AFFIRMED.
The Examiner's rejections of claims 3 and 8 under 35 U.S.C. § 103(a)
are REVERSED.
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-IN-PART
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