Ex Parte Lindlbauer

Board of Patent Appeals and Interferences

May 14, 2012

10598848 (B.P.A.I. May. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANZ LINDLBAUER
____________

Appeal 2010-002207
Application 10/598,848
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 10-20. Claims 1-9 have been cancelled. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE.
Appeal 2010-002207
Application 10/598,848

2
REJECTIONS
Claims 10-20 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 10-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Combrink (US 5,493,844, issued Feb. 27, 1996), Barnes (US
4,672,684, issued Jun. 9, 1987) and Scoville (US 4,596,696, issued Jun. 24,
1986).

CLAIMED SUBJECT MATTER
Claim 10 is representative of the subject matter on appeal, and with
emphasis added, recites:
10. A multilayer, self-sealing packaging sack, comprising a
broad front side and a broad rear side joined by first and second
narrower side areas, and closed at an upper end and a lower
end, an opening for filling being free at the upper end, the
packaging medium having an inner wall made of air-permeable
material surrounded by an outer wall of air-impermeable
material, wherein
a) on at least one of the front side and the rear side, the
outer wall overlaps a subregion of up to 50% of the total area of
the respective side to form an overlap region having an inner
surface and an outer surface of the outer wall,
b) in the overlap region, the inner surface of the outer
wall is perforated,
c) at edges of the overlap region, the edges of the inner
and outer surfaces of the outer wall lying one above the other
are joined to each other by means of seams forming joints,
d) at one or both edges of the overlap region, the joint on
the respective edge is interrupted over a continuous region
which covers 10 to 50% of the total length of the joint to form
an interruption through which gas exiting the sack through
perforations can pass,
Appeal 2010-002207
Application 10/598,848

3
e) 10 to 50% of the area of the overlap region is provided
with perforations, and
f) a distance of 0.5 to 10 cm from the edges of the
overlap region at which the joint is interrupted is maintained
free of perforations, such that upon filling of the sack, the two
layers lying one above the other in the overlap region bear
against each other forming a self-sealing seal.

OPINION
The Written Description Requirement
The Examiner determines that the originally filed specification does
not contain the “self-sealing limitation” added to claim 10, and is
impermissible new matter. Ans. 3. We understand the reference to the
“self-sealing limitation” of claim 10 to refer to the following: “self-sealing
packaging sack” in the preamble of the claim; and “such that upon filling of
the sack the two layers lying one above the other in the overlap region bear
against each other forming a self-sealing seal” in paragraph f).1 See also
App. Br. 5, Reply Br. 2. The “Appellant argues that claim 1 [sic 10] is
supported by the original specification[,] which states that ‘the opening in
the overlap region is closed by the inherent weight of the filled packaging
medium.’” Reply Br. 2; see App. Br. 5, citing Spec. 4:32-37.
To satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc).

1 The majority of the quoted terms from claim 10 were introduced in an
amendment to claim 10 filed September, 18, 2008.
Appeal 2010-002207
Application 10/598,848

4
The Examiner determines that the “Appellant’s specification requires
that the packaging medium must be filled by an unspecified material in order
to close an opening of an overlap region.” Ans. 8. The Examiner further
determines that “claim 1 [sic 10] does not claim a filling material within the
sack and therefore there is no inherent weight within the claimed sack to
self-seal it.” Ans. 8. However, the self-sealing limitation is a functional
limitation (see Reply Br. 3-4), and a patent applicant is free to recite features
of an apparatus either structurally or functionally. See In re Swinehart, 439
F.2d 210, 212 (CCPA 1971) (“[T]here is nothing intrinsically wrong with
[defining something by what it does rather than what it is] in drafting patent
claims.”). The Appellant’s disclosure in the original Specification at page 4,
along with Figures 1 and 2 and their associated description, reasonably
conveys to those skilled in the art that the Appellant had possession of the
claimed subject matter as of the filing date. See Ariad at 1351.
Thus, the rejection of claims 10-20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
not sustained.

The Obviousness Rejection
All of the pending claims call for a multilayer sack including an outer
wall with an overlap region having 10 to 50% of the area of the overlap
region provided with perforations. See App. Br., Claims Appendix.
The Appellant contends that Combrink discloses that 100% of the
overlap region 13 is perforated. App. Br. 9, 11; see Combrink, col. 5, ll. 57-
60, figs. 1-3. The Examiner finds Combrink discloses a multilayer sack 22'
having perforations 20 in 10-50% of the area of the overlap region 13. Ans.
Appeal 2010-002207
Application 10/598,848

5
4, 9-10; see figs. 2, 3. Further, the Examiner finds that “[t]he overlap region
13 comprises equally sized layers 14 (50% of 13) and 15 (50% of 13), of
which only 14 is perforated; therefore, 10-50% of the overlap region is
perforated.” Ans. 10. In other words, this finding necessitates that the
Examiner considers the area of overlap region 13 of Combrink to include the
overlapping areas of both inner layer 14 and outer layer 15, and since only
inner layer 14 is perforated, the Examiner concludes that 10-50% of overlap
region 13 is perforated. This finding is inconsistent with the ordinary
meaning of the term “overlap”2 and the Appellant’s Specification.
The area of overlap region 13 in Combrink is represented by the area
common to inner layer 14 and outer layer 15. Hence, the area of overlap
region 13 can either be the area of inner layer 14 that is common
(overlapping) with outer layer 15 or vice versa, but not both, as the
Examiner proposes.
This interpretation is consistent with Appellant’s Specification which
describes overlap region 11 as outer layer 10b placed over inner layer 10a.
Spec. 2: 10-17. Thus, since Combrink discloses that inner layer 14 is
provided in overlap zone 13 with perforations 20, we agree with Appellant
that in contrast to claim 10, Combrink discloses that 100% of the overlap
region 13 is perforated. App. Br. 9. See also, Combrink, col. 5, ll. 57-60
and fig. 1.
The Examiner also includes findings from Scoville and Barnes (see
Ans. 6-7, 8-9, 11), but does not find that either Barnes or Scoville discloses a

2 An ordinary and customary meaning of the term “overlap” is “to
occupy the same area in part.” MERRIAM WEBSTER’S COLLEGIATE
DICTIONARY (10th Ed. 1997).

Appeal 2010-002207
Application 10/598,848

6
multilayer sack including an outer wall with an overlap region having 10 to
50% of the area provided with perforations, as called for by the claims. As
such, the Examiner’s rejection does not articulate how the disclosures of
Scoville and Barnes might remedy the deficiency of Combrink, as discussed
supra.
Thus, for the foregoing reasons, the Examiner’s rejection of claims
10-20 as unpatentable over Combrink, Barnes, and Scoville is not sustained.

DECISION
We REVERSE the rejection of claims 10-20 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
We REVERSE the rejection of claims 10-20 under 35 U.S.C. § 103(a)
as unpatentable over Combrink, Barnes, and Scoville.

REVERSED

Klh