Ex Parte Hebert et al

Patent Trial and Appeal Board

Aug 18, 2016

13542998 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/542,998 07/06/2012
826 7590 08/22/2016
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
Robert Charles Hebert
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.
031599/421992 3356
EXAMINER
ATTEL, NINA KAY
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
08/22/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT CHARLES HEBERT,
SCOTT WILLIAM HUFFER, BARRY ROLAND REESE, and
JOHN A. PRIZZI
Appeal2014-008699
Application 13/542,998
Technology Center 3700
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Charles Hebert et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's final decision rejecting claims 1-19. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
THE INVENTION
Appellants' invention relates to packaging that is reclosable after
initial opening. Spec. para. 2.
Appeal2014-008699
Application 13/542,998
Claims 1, 12, 15, and 18 are independent. Claim 1 is illustrative of
the claimed invention and reads as follows:
1. A flexible packaging laminate having a built-in opening
and reclose feature, comprising:
a first structure having opposite sides and comprising at
least one layer of flexible material, the first structure having a
longitudinal length and having opposite longitudinal edges
between which a width of the first structure is defined, the
length and width defining a surface area of the first structure, a
pressure-sensitive adhesive substantially entirely covering the
surface area of the first structure on one of said sides of the first
structure; and
a second structure having opposite sides and comprising
at least one layer of flexible material, the second structure
having a longitudinal length and having opposite longitudinal
edges between which a width of the second structure is defined,
the length and width of the second structure respectively being
the same as those of the first structure, the pressure-sensitive
adhesive joining the second structure to the first structure so as
to form a laminate, respective longitudinal edges of the first and
second structures being substantially coincident with each other
and defining longitudinal edges of the laminate, wherein one of
the first and second structures comprises an outer structure and
the other comprises an inner structure;
an outer score line formed through the thickness of the
outer structure and an inner score line formed through the
thickness of the inner structure, the outer score line delineating
an outer opening portion of the outer structure that is separable
from the outer structure along the outer score line, the inner
score line delineating an inner opening portion of the inner
structure that is affixed to the outer opening portion by the
pressure-sensitive adhesive and is separable from the inner
structure along the inner score line, wherein a region of the
outer opening portion between the outer and inner score lines is
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Application 13/542,998
attached to an underlying surface of the inner structure via the
pressure-sensitive adhesive, the outer opening portion being
peelable from the underlying surface of the inner structure so as
to cause the inner opening portion to also be peeled back to
create an opening in the laminate, and the outer opening portion
being re-attachable to the underlying surface of the inner
structure via the pressure-sensitive adhesive for reclosing the
openmg.
THE REJECTIONS
The Examiner has rejected:
(i) Claims 1, 2, 4--7, 11, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable
overNavarini (US 6,056,141, iss. May 2, 2000) and Forman (US 4,679,693,
iss. July 14, 1987) or Nakamura (US 4,610,357, iss. Sept. 9, 1986);
(ii) Claim 3 under 35 U.S.C. § 103(a) as unpatentable over Navarini, Forman
or Nakamura, and Huffer (US 2002/0114541 Al, pub. Aug. 22, 2002);
(iii) Claims 8-10 under 35 U.S.C. § 103(a) as unpatentable over the
Navarini, Forman or Nakamura, and Ewan (US 5,060,848, iss. Oct. 29,
1991) or Hunkeler (US 4,868,027, iss. Sept. 19, 1989);
(iv) Claims 12-14 under 35 U.S.C. § 103(a) as unpatentable over the
Navarini, Lamping (US 4,673,601, iss. June 16, 1987), Nakamura, and
Forman; and
(v) Claims 15-17 under 35 U.S.C. § 103(a) as unpatentable over Navarini,
Lamping, Palumbo (US 5,938,013, iss. Aug. 17, 1999), and Forman or
Nakamura.
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Application 13/542,998
ANALYSIS
Claims 1, 2, 4-7, 11, 18, and 19--0bviousness--Navarini/Forman/Nakamura
Appellants argue claims 1, 2, 4--7, 11, 18, and 19 as a group. Appeal
Br. 7-10. We take claim 1 as representative of this group, and claims 2, 4--
7, 11, and 19 stand or fall with claim 1.
Independent claims 1 and 18 both require an outer score line formed
through the thickness of the outer structure and an inner score line formed
through the thickness of the inner structure.
The Examiner finds that N avarini discloses most of the limitations of
claims 1 and 18 including a flexible packaging laminate having a first outer
structure 2, a second inner structure 3, and an inner score line formed
through the thickness of the inner structure that creates an opening in the
laminate that is reclosable by re-attaching the outer structure to the
underlying surface of the inner structure. See Adv. Act. 2, para. 3. 1 The
Examiner relies on Forman or Nakamura as teaching an outer structure with
an outer score line in combination with an inner score line of the inner
structure, with the outer structure having an outer opening portion that is
"peelable from the underlying surface of the inner structure to cause the
inner opening to be peeled back to create an opening (in) the laminate" and
that is "re-attachable to the underlying surface of the inner structure via the
pressure sensitive adhesive for reclosing the opening." Id. at 2, para. 6. The
Examiner concludes that it would have been obvious to modify the outer
structure ofNavarini to include an outer score line so that "the combination
The Final Action mailed August 6, 2013 does not include the grounds
of rejection on appeal, therefore, citation is to the Advisory Action mailed
December 5, 2013.
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Application 13/542,998
of an outer score line in an outer structure and an inner score line in an inner
structure []together function to form an opening," as taught by Forman and
Nakamura, and that the modification would be "a known alternative to a
single inner score line in an inner structure which functions in combination
with an outer structure to form an opening." Id. para. 7.
Appellants argue that based on the location and necessity of the
tamper evident welds 12 ofNavarini, "[t]here is no legitimate reason or
advantage that would motivate such a modification" of the lid ofNavarini,
because "lid (1) functions perfectly well according to the Navarini
reference's objectives, and the proposed modification would not improve
upon the lid or achieve any further objective taught by the prior art." Appeal
Br. 7-9.
In the Answer, the Examiner responds that the tamper evident welds
12 ofNavarini are not required. See Answer 3 (citing Navarini, elm. 8).
In reply, Appellants assert that the Examiner is improperly solely
relying on the claims ofNavarini, and that from "the description and
drawings of the Navarini reference, it is clear that the Navarini reference
expressly teaches the use of tamper-evident thermo-weldings (12) in the one
and only embodiment described therein." Reply 2. Based on this,
"Appellant(s) maintain[s] that there is no legitimate reason or advantage that
would motivate such a modification of the Navarini reference's lid structure.
Id. at 3.
We do not agree that the tamper evident welds 12 ofNavarini are
necessary. This is evidenced not only by claim 8 ofNavarini (see Answer
3), but also by column 5, line 53---column 6, line 33 and Figure 6 ofNavarini,
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which describe an embodiment of the process to manufacture a finished
package and do not include a tamper-evident weld. We are thus not apprised
of Examiner error by this argument.
Appellants also argue that Forman and Nakamura use an outer score
line for a particular reason that does not apply to Navarini. Appeal Br. 9; see
also Reply Br. 3. Appellants thus assert that, "there would be no reason to
combine the Navarini reference with the Nakamura and/or Forman
references." Id. at 10; see also Reply Br. 3.
The Examiner responds to this argument by pointing out that Navarini
is "not restricted to one particular opening and reclosing means," and stating
that "replac[ing] one known opening and reclosing means with an alternative
known opening and reclosing means" would have been obvious to one
having ordinary skill in the art. Ans. 5-6.
Appellants' arguments appear to be based on the position that the
Examiner is modifying the existing lid ofNavarini by adding an outer score
line as taught by Forman or Nakamura. However, this is not the
modification proposed by the Examiner, and rather, as the Examiner
explains, the proposed modification would have been an obvious
replacement of the Navarini lid based on alternative known approaches for
opening and reclosing a laminate structure. See Ans. 5---6. This comports
with the considerations for obviousness enunciated in KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398 (2007), in that the Examiner concludes that the
modifications involve the simple substitution of one known element for
another with predictable results with respect to opening and closing a
package. Identifying a specific deficiency may be used in considering the
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obviousness of a proposed combination, but such is not an absolute
necessity. Furthermore, given that both the resealing structure of Forman
and the resealing structure of Nakamura perform the same function as the
reclosing structure ofNavarini, namely, to enable multiple openings and
reclosings of a package, the Examiner has a sound basis for finding that
either the resealing structure of Forman or the resealing structure of
Nakamura would have been a suitable substitute for the reclosing structure
ofNavarini. See Ans. 6-8.
Hence, because the Examiner has articulated that either the resealing
structure of Forman or the resealing structure of Nakamura is being
substituted for the reclosing structure ofNavarini, as they perform similar
functions, and because Appellants have not provided persuasive reasoning
showing that the Examiner's substitution would have been beyond the level
of ordinary skill in the art or would produce unpredictable results, we are not
persuaded that the Examiner's position is in error. See also KSR, 550 U.S. at
417 (citing Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)) ("when a
patent 'simply arranges old elements with each performing the same
function it had been known to perform' and yields no more than one would
expect from such an arrangement, the combination is obvious.").
Accordingly, we sustain the rejection of claim 1 as unpatentable over
Navarini and Forman or Nakamura, with claims 2, 4--7, 11, 18, and 19
falling with claim 1.
Claim 3--0bviousness--N avarini/F orman/N akamura/Huffer
Claims 8-10--0bviousness--N avarini/F orman/N akamura/Ewan/Hunkeler
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Appellants argue that none of Huffer, Ewan, and Hunkeler overcome
the alleged deficiencies in the base combination of the teachings ofNavarini,
Forman, and Nakamura. Appeal Br. 10. Because we are not persuaded that
the combination ofNavarini, Forman, and Nakamura suffers from such
deficiencies, as discussed above, we sustain the rejection of claim 3 and the
rejection of claims 8-10 as well.
Claims 12-14--0bviousness--Navarini/Lamping/Nakamura/Forman
Independent claim 12, like claim 1, requires an outer score line
formed through the thickness of the outer structure and an inner score line
formed through the thickness of the inner structure, and the Examiner relies
on the base combination ofNavarini, Forman, and Nakamura for this
feature. Adv. Act. 4--5, paras. 20-28.
Appellants do not separately argue claim 12 and instead rely on the
same arguments discussed above with respect to claim 1. Appeal Br. 7-10;
Reply Br. 1-3. For the same reasons noted supra, Appellants' arguments do
not apprise us of Examiner error.
Accordingly, for the same reasons discussed above, we sustain the
rejection of claim 12, and of claims 13 and 14 depending therefrom.
Claims 15-17--0bviousness--
N avarini/Lamping/Palumbo/F orman/N akamura
Independent claim 15, like claim 1, requires an outer score line
formed through the thickness of the outer structure and an inner score line
formed through the thickness of the inner structure, and the Examiner again
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relies on the base combination ofNavarini, Forman, and Nakamura for this
feature. Adv. Act. 5---6, paras. 31-37.
Appellants do not separately argue claim 15 and instead rely on the
same arguments discussed supra with respect to claim 1. Appeal Br. 7-1 O;
Reply Br. 1-3. For the same reasons stated above, Appellants' arguments do
not apprise us of Examiner error.
Therefore, for the same reasons noted above, we sustain the rejection
of claim 15, and of claims 16 and 17 depending therefrom.
DECISION
The rejections of claims 1-19 under 35 U.S.C. § 103(a) are 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)(l )(iv).
AFFIRMED
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