Ex Parte Hefner et al

Board of Patent Appeals and Interferences

Apr 28, 2010

10435752 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CORBETT T. HEFNER and SCOTT ERICKSON
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Appeal 2009-005332
Application 10/435,752
Technology Center 3700
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Decided: April 28, 2010
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Before JOHN C. KERINS, STEFAN STAICOVICI and
FRED A. SILVERBERG, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-005332
Application 10/435,752

STATEMENT OF THE CASE
Corbett T. Hefner and Scott Erickson (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 4-9, 12-
14, 17, 40 and 41. Claims 2, 3, 10, 11, 15 and 16 have been withdrawn from
consideration, and claims 18-39 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellants’ claimed invention is to a bag having one entire face of the
bag being formed from a thermoplastic resin film, and a strip formed from
an open mesh fabric. Claim 1, reproduced below, is illustrative of the
overall claimed subject matter:
1. A bag having a top end and a bottom end, the
bag comprising:

a) a first vertically extending strip formed of an
open mesh fabric and having a pair of opposed
longitudinal vertically extending side edges;

b) a second vertically extending strip formed of a
film of at least one thermoplastic resin, the second
strip having a pair of opposed longitudinal
vertically extending side edges, an inner surface of
one of the side edges of the second strip
overlapping an outer surface of a mating side edge
of the first strip without being folded over the
mating side edge of the first strip and being
bonded to the mating side edge of the first strip to
form an overlap seal to thereby form a first
vertically extending longitudinal seam;
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c) a first horizontally extending end seam
extending laterally across the top end of the bag
and joining the first strip and the second strip; and

d) a second horizontally extending end seam
extending laterally across the bottom end of the
bag and joining the first strip and second strip, the
first and second end seams overlapping the first
longitudinal seam, wherein at least one entire face
of the bag is formed from a film of at least one
thermoplastic resin and is formed at least in part
from the second strip.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Rusert US 6,371,645 B1 Apr. 16, 2002
Daiwa1 JP07-315391A Dec. 5, 1995

The Examiner has rejected:
(i) claims 1, 4-8, 12-14 17, 40 and 41 under 35 U.S.C. § 102(b) as
being anticipated by Daiwa;
(ii) claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Daiwa; and
(iii) claims 1, 4-9, 12-14, 17, 40 and 41 under 35 U.S.C. § 103(a) as
being unpatentable over Daiwa in view of Rusert.

1 An English language translation of the bibliographic data for this published
application shows the assignees to be Daiwa Hozai KK and Nippon
Petrochemicals Co Ltd. Both the Examiner and Appellants refer to this
reference as “Daiwa”, and thus we will as well. References to the Daiwa
disclosure will be to the English language translation dated June 6, 2007.
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Application 10/435,752

ISSUE
Whether the Daiwa reference discloses “a first horizontally extending
end seam extending laterally across the top end of the bag”, giving the term
“end” its broadest reasonable interpretation consistent with the
specification?
PRINCIPLES OF LAW
Anticipation under 35 U.S.C. § 102 requires that “each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union
Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Under principles of inherency,
when a reference is silent about an asserted inherent characteristic, it must be
clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991). Inherency may not be established by probabilities or
possibilities. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).
In interpreting claim language, we apply the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
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Application 10/435,752

ANALYSIS
Claims 1, 4-8, 12-14, 17, 40 and 41--Anticipation by Daiwa
Appellants present arguments directed to independent claim 1, and,
separately, directed to claims 14, 17, and 40-41. We will first address the
rejection of claim 1.
Appellants contend that the Daiwa reference fails to disclose the
claimed top seal, as well as the claimed bottom seal. (Appeal Br. 12). More
specifically, with respect to the top seal, Appellants argue that certain
embodiments disclosed by Daiwa do not have an end seam extending
laterally across the top end of the bag, and that the embodiment illustrated in
Figure 2(b) of Daiwa, which is apparently relied upon by the Examiner, does
not meet the claimed end seam limitation because there is no seam extending
“across the top end of the bag”, but instead the seam would be spaced apart
from the top end of the bag. (Appeal Br. 12-13). The Examiner counters
that,
[t]he top seam of the [Daiwa] bag is located at the
top end of the bag to the same degree as claimed in
the instant claims. It is noted that the instant
claims do not require the top seam to be located at
the uppermost edge of the top of the bag walls,
only at the top end of the bag.
(Answer 5).
Appellants’ Specification does not provide a definition of the claim
term “end” that is used in reciting “a first horizontally extending end seam
extending laterally across the top end of the bag” in claim 1. The
Specification refers to a “conventional end sealing and cutting device 70”
which is used to “simultaneously form a lateral top seam 71 on the bag 43 . .
. and a lateral bottom seam 72 on the next bag 43”, with the bag and next
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bag then being severed through the seam to produce a succession of bags 43
having top and bottom seams. (Spec., p. 16, ll. 19-23; p. 17, ll. 3-6; Figs. 4,
5). The customary and ordinary meaning of the term “end” is: “[e]ither
extremity of something that has length” and, “[t]he outside or extreme edge
or physical limit; a boundary”. THE AMERICAN HERITAGE® DICTIONARY OF
THE ENGLISH LANGUAGE (4th ed. 2009), accessed at Dictionary.com, last
viewed on April 23, 2010. These definitions are fully consistent with what is
shown and described in Appellants’ Specification as end seams at the
extreme top and bottom of the bags created by the disclosed end sealing and
cutting device.
As acknowledged by Appellants, the Daiwa bag illustrated in Figure
2(b) shows a strip of adhesive 8 extending across the top end of a flap of the
mesh layer, and the bag can be sealed by folding the flap down over the
front wall of the bag and pressing the strip 8 against the film layer. (Daiwa,
Fig. 2(b), para. [0006]; Appeal Br. 13, ll. 1-3). We agree with Appellants,
and the Examiner does not appear to dispute, that the seam thus formed
would be spaced apart from the top extremity or outside or extreme edge of
the bag, and that a fold, and not a seam, would be present at the top
extremity. (Id.). We additionally conclude that a claim interpretation of
“end seam” and “top end” that would include a region spaced apart from the
top extremity, as does the Examiner’s interpretation, is unreasonably broad
in that it is inconsistent with the common and ordinary meaning of “end” as
well as with the manner in which the term is used in Appellants’
Specification and drawings.
Accordingly, the Daiwa reference fails to disclose the claimed “end
seam extending laterally across the top end of the bag” using the broadest
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reasonable interpretation of the term “end.” As such, the rejection of claim 1
as being anticipated by Daiwa is in error, and will not be sustained. The
anticipation rejection of claims 4-8, 12-14, 17, 40 and 41, which all contain
the same limitation, will also not be sustained.
Claim 9--Obviousness--Daiwa
Claim 9 depends from claim 1 and thus also contains the limitation
discussed above as being lacking in the Daiwa reference. The Examiner
does not assert that such an end seam extending across the top end of the bag
would have been obvious in view of Daiwa. Accordingly, the rejection of
claim 9 will not be sustained.
Claims 1, 4-9, 12-14, 17, 40 and 41--Obviousness--Daiwa in view of Rusert
The Examiner does not rely on Rusert to cure the deficiency in Daiwa
noted in the discussion of the anticipation rejection of claim 1. The rejection
of these claims as being obvious over Daiwa in view of Rusert will thus not
be sustained.
CONCLUSIONS
Appellants have established that the Examiner erred in rejecting
claims 1, 4-8, 12-14, 17, 40 and 41 under 35 U.S.C. § 102(b) as being
anticipated by Daiwa. Appellants have established that the Examiner erred
in rejecting claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Daiwa. Appellants have also established that the Examiner erred in rejecting
claims 1, 4-9, 12-14, 17, 40 and 41 under 35 U.S.C. § 103(a) as being
unpatentable over Daiwa in view of Rusert.

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DECISION
The decision of the Examiner to reject claims 1, 4-9, 12-14, 17, 40
and 41is reversed.

REVERSED

Klh

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