Ex Parte Matthews

Board of Patent Appeals and Interferences

Jan 13, 2009

10369964 (B.P.A.I. Jan. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ILLINOIS TOOL WORKS INC.
____________________

Appeal 2009-1013
Application 10/369,964
Technology Center 3700
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Decided: January 13, 2009
____________________

Before RICHARD E. SCHAFER, JAMESON LEE, and SALLY C.
MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Illinois Tool
Works Inc. (ITW), under 35 U.S.C. § 134(a) from a final rejection of claims
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1-3, 6-14, and 28-30. ITW requests reversal of the Examiner’s rejection of
those claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

References Relied on by the Examiner
Rosenberg 3,719,021 Mar. 6, 1973
McDonald 5,085,031 Feb. 4, 1992
Bois 6,789,374 B1 Sep. 14, 2004

Schneider 2002/0194816 A1 Dec. 26, 2002

The Rejections on Appeal
The Examiner rejected claims 1-3, 8-11, 13, 14, 29, and 30 under
35 U.S.C. § 103(a) as unpatentable over Schneider, Bois, and Rosenberg.
The Examiner rejected claims 1, 6, 7, 10, 12, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over McDonald and Rosenberg.
The Examiner rejected claims 11 and 28-30 under 35 U.S.C. § 103(a)
as unpatentable over McDonald, Rosenberg, and Schneider.

The Invention
The invention relates to methods for making package strips having a
pre-selected number of individual packages of a consumer product. (Spec.
1:22-25).
Claim 1 is reproduced below:
1. A method for manufacturing package strips having a
preselected number of individual packages of a consumer product,
each of said individual packages having a reclosable plastic zipper,
said method comprising the steps of:

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a) providing a top sheet of polymeric film material and a
bottom sheet of polymeric film material, said top sheet and said
bottom sheet being of substantially equal width;

b) providing a supply of reclosable zipper strip;

c) attaching preselected lengths of said reclosable zipper strip,
one for each individual package being manufactured, transversely
upon one of said top and bottom sheets at package-length intervals
thereon;

d) depositing a consumer product to be packaged on said
bottom sheet at package length intervals thereon;

e) covering said consumer product with said top sheet;

f) sealing said top sheet to said bottom sheet, whereby said top
sheet is over the consumer product and said bottom sheet is under the
consumer product so as to enclose said consumer product between
said top and bottom sheets;

g) attaching said preselected lengths of said reclosable zipper
strip to the other of said top and bottom sheets;

h) making a cross seal on a side of said consumer product
opposite to said preselected length of reclosable zipper strip to form
said individual packages thereof;

i) making perforations between each pair of individual packages
to enable said individual packages to be separated from one another;
and

j) cutting between pairs of individual packages at preselected
intervals to obtain said package strips having a preselected number of
individual packages.

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B. ISSUES
1) Has ITW shown that the Examiner erred in determining that in
the field of package manufacturing, the techniques of folding a film along
either multiple longitudinal lines or about a single longitudinal line are art
recognized equivalents of one another?
2) Has ITW shown that the Examiner erred in determining that a
person of ordinary skill in the art would have had adequate reason to
combine the teachings of McDonald with Rosenberg?
C. FINDINGS OF FACT
1. Schneider discloses an apparatus for horizontally forming,
filling, and sealing packaging about a packaged product. (Schneider 1: ¶1.)
2. In Schneider, a packaging film 12 is drawn through a forming
box 26 that includes interior guide bars 40. (Schneider 2: ¶19.)
3. Schneider’s Figure 6 is reproduced below:

Figure 6 depicts one embodiment in which a packaging film is
folded around guide bars 40. (Schneider 1:¶14.)

4. As shown in Figure 6, a film is guided around guide bars 40
such that the longitudinal edges 50 of the film are adjacent one another.
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5. In that configuration, a product receiving surface 54 is formed
on each side of edges 50 and a center portion 44 is formed above the guide
bars 40. (Schneider 1:¶20.)
6. The edges 50 are then sealed together to form a closed
envelope. (Schneider 2:¶21.)
7. Bois discloses a method of forming bags connected one after
the other. (Bois 1:11-15.)
8. Figure 3 of Bois illustrates a film 10 that is folded over on itself
along multiple longitudinal lines to form an enclosure where the film edges
15 and 16 are arranged adjacent to one another. (Bois 4:13-15; Figure 3.)
9. Figure 3 of Bois is reproduced below:

Figure 3 shows one embodiment of a method of folding a film
to form a string of plastic bags. (Bois 2:55-57.)

10. In the embodiment of Figure 3, the edges 15 and 16 run along a
face of the enclosure in a manner similar to that shown in Schneider’s
Figure 6.
11. Bois also shows in Figure 16 a second alternative embodiment
in which web 10 is folded to form an envelope. (Bois 6:28-30.)
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12. In that embodiment, rather than being folded along two
longitudinal fold lines, web 10 is folded along a single fold line. (Bois
Figure 16.)
13. Figure 16 of Bois is reproduced below:

Figure 16 shows an alternative embodiment of a method of
folding a film to form a string of plastic bags. (Bois 3:13-15.)

14. As shown in Figure 16, film 10 is folded in half along a single
fold line such that edges 15 and 16 are arranged on one side of the film.
15. Edges 15 and 16 are then bonded together. (Bois 6:35-38.)
16. Each of McDonald and Rosenberg disclose methods for
manufacturing sealed packages. (McDonald 1: ¶ 4; Rosenberg 1:6-8.)
17. Neither reference distinguishes between a horizontal form fill
and seal apparatus and a vertical form fill and seal apparatus.
18. Neither reference even uses the term “vertical form fill and
seal.”
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19. Rosenberg expressly discloses that its teachings apply to “many
types of packages.” (Rosenberg 1:23.)
20. In Rosenberg, perforations are formed between adjacent
packages in a package string without completely severing one package from
another. (Rosenberg 4:14-21.)
21. Rosenberg further discloses that a predetermined number of
packages may then be connected to one another into a single group.
(Rosenberg 4:22-31.)
22. That single group is then cut from the remaining packages in
the package string into a separate unit containing the desired number of
connected packages. (Rosenberg 4:21-36.)
D. PRINCIPLES OF LAW
A basis to combine teachings need not be expressly stated in any prior
art reference. In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006). There need
only be an articulated reasoning with rational underpinnings to support a
motivation to combine teachings. Id. at 988. Furthermore, a combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results. KSR Int’l Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1739 (2007).
The test for obviousness is what the combined teachings of the
references would have suggested to a person of ordinary skill in the art. In
re Keller, 642 F.2d 413, 425 (CCPA 1981). If a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill. KSR Int’l
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Co., 127 S. Ct. at 1740. Furthermore, a person of ordinary skill in the art is
also a person of ordinary creativity, not an automaton. Id. at 1742.
A prior art reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect. EWP Corp. v. Reliance Universal Inc.,
755 F.2d 898, 907 (Fed. Cir. 1985).
E. ANALYSIS
The Examiner rejected ITW’s claims as follows:
1) Claims 1-3, 8-11, 13, 14, 29, and 30 are rejected over Schneider,
Bois and Rosenberg;
2) Claims 1, 6, 7, 10, 12, and 14 are rejected over McDonald and
Rosenberg;
3) Claims 11 and 28-30 are rejected over McDonald, Rosenberg, and
Schneider.
ITW argues the three grounds of rejection separately.
Claims 1-3, 8-11, 14, 29, 30 - Schneider, Bois, Rosenberg
We focus on the disputed limitations. Each of the independent claims
1, 6, 10, and 14 include the requirement of “providing a top sheet of
polymeric film material and a bottom sheet of polymeric film material” that
are “of substantially equal width” and “sealing said top sheet to said bottom
sheet.” (Claims App’x pp. 1, 14, 15, 17.) ITW disputes that the references
satisfy the “of substantially equal width” requirement. According to ITW,
Schneider does not disclose top and bottom sheets of substantially equal
width and neither Bois nor Rosenberg remedy that deficiency. (App. Br.
9:13-10:5.)
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The Examiner does not disagree with ITW that Schneider does not
disclose top and bottom sheets of substantially equal width. The Examiner
found that Schneider discloses “providing a plastic packaging film material
(12) that forms a top sheet (central portion 44 + left portion 54L) and a
bottom sheet (right portion 54R)” and “sealing the top sheet to the bottom
sheet by longitudinal sealing bars (52).” (Ans. 3:12-20.) The Examiner
determined that a top sheet formed by central portion 44 and left portion
“54L” is not substantially equal in width to bottom sheet “54R.” (Ans. 4:9-
10.)
Schneider discloses an apparatus for horizontally forming, filling, and
sealing packaging about a packaged product. (Schneider 1: ¶1.) In
Schneider, a packaging film 12 is drawn through a forming box 26 that
includes interior guide bars 40. (Schneider 2: ¶19.)
Schneider’s Figure 6 is reproduced below:

Figure 6 depicts one embodiment in which a packaging film is
folded around guide bars 40. (Schneider 1:¶14.)

As shown in Figure 6, a film is guided around guide bars 40 such that
the longitudinal edges 50 of the film are adjacent one another. In that
configuration, a product receiving surface 54 is formed on each side of the
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edges 50 and a center portion 44 is formed above the guide bars 40. The
edges 50 are then sealed together to form a closed envelope. (Schneider
2:¶21.) Because the edges are sealed along a bottom face of the envelope
between the left and right portions of product receiving surface 54, a top
sheet formed by central portion 44 and left product receiving surface 54 is
greater in width than a bottom sheet formed by right product receiving
surface 54.
Recognizing that the “substantially equal width” requirement is not
satisfied by Schneider alone, the Examiner pointed to Bois to make up the
deficiency. Bois discloses a method of manufacturing a string of re-
closeable bags. (Bois 1:10-19.) Figure 3 of Bois illustrates a film 10 that is
folded over onto itself along multiple longitudinal lines to form an enclosure
where the film edges 15 and 16 are arranged adjacent to one another. (Bois
4:13-15; Figure 3.)
Figure 3 of Bois is reproduced below:

Figure 3 shows one embodiment of a method of folding a film
to form a string of plastic bags. (Bois 2:55-57.)

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In the embodiment of Figure 3, the edges 15 and 16 run along a face
of the enclosure in a manner similar to that shown in Schneider’s Figure 6.
However, Bois also shows in Figure 16 a second alternative embodiment in
which web 10 is folded to form an envelope. (Bois 6:28-30.) In that
embodiment, rather than being folded along two longitudinal fold lines, web
10 is folded along a single fold line. (Bois Figure 16.)
Figure 16 of Bois is reproduced below:

Figure 16 shows an alternative embodiment of a method of
folding a film to form a string of plastic bags. (Bois 3:13-15.)

As shown in Figure 16, film 10 is folded in half along a single fold
line such that edges 15 and 16 are arranged on one side of the film. Edges
15 and 16 are then bonded together. (Bois 6:35-38.) According to the
Examiner, in the configuration of Figure 16, the top and bottom sheets of the
envelope are “of substantially equal width.” (Ans. 4:14-16.) The Examiner
explained that a person of ordinary skill in the art would have known to form
Schneider’s plastic bags with top and bottom sheets of substantially equal
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width, as taught in Bois’ Figure 16, because that is a recognized alternative
forming technique in the package manufacturing art. (Ans. 4:18 to 5:3.)
A basis to combine teachings need not be expressly stated in any prior
art reference. In re Kahn, 441 F.3d at 989. There need only be an
articulated reasoning with rational underpinnings to support a motivation to
combine teachings. Id. at 988. Furthermore, a combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results. KSR Int’l Co., 127 S. Ct. at 1739.
Here, both Schneider and Bois are in the field of package
manufacturing. In the embodiment of Figure 3, Bois discloses a package
forming technique in which a film is folded along multiple fold lines to form
an envelope that is sealed about a face of the envelope. In the alternative
embodiment of Figure 16, Bois teaches that a film is folded along a single
fold line forming an envelope with edges at one side. In that alternative
embodiment, top and bottom sheets of the envelope are substantially equal
in width. In light of those Bois’ teachings, the Examiner determined that it
would have been obvious to a person of ordinary skill in the art to select the
folding technique illustrated in Bois’ Figure 16 to form the envelope in
Schneider. The Examiner’s determination is credible as it accounts for a
skilled artisan’s ability in the packaging art to reasonably select either of two
known alternative folding techniques in forming a plastic bag. ITW does not
address the teachings of Bois and does not explain why there is error in the
Examiner’s determination. We reject ITW’s argument that the combined
teachings of Schneider and Bois do not satisfy the requirement of top and
bottom sheets that are “of substantially equal width.”
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We sustain the rejection of claims 1-3, 8-11, 13, 14, 29, and 30 under
35 U.S.C. § 103(a) as unpatentable over Schneider, Bois, and Rosenberg.
Claims 1, 6, 7, 10, 12, and 14 – McDonald and Rosenberg
The Examiner also rejected claims 1, 6, 7, 10, 12, and 14 as
unpatentable over McDonald and Rosenberg.
The Examiner determined that McDonald discloses a method of
manufacturing a series of individual packages that satisfies all the claim
requirements with the exception of steps from each of independent claims 1,
6, 10, and 14 that read (Claims App’x 13:3-6; 14:18 to 15:2; 16:13-16; 18:5-
8):
making perforations between each pair of individual packages
to enable said individual packages to be separated from one another;
and

cutting between pairs of individual packages at preselected
intervals to obtain said package strip having a preselected number of
individual packages.

To account for those limitations, the Examiner relied on the teachings
of Rosenberg. The Examiner found that Rosenberg teaches a method of
producing package strips that includes steps of perforating and cutting the
packages into a predetermined number of packages. The Examiner
determined it would have been obvious to a person of ordinary skill in the
art to modify McDonald to incorporate the perforating and cutting steps of
Rosenberg. (Ans. 8:2-13.)
Evidently, ITW does not dispute the teachings of either McDonald or
Rosenberg. Instead, ITW contends that McDonald relates to a horizontal
thermoform apparatus while Rosenberg relates to a vertical form fill and seal
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apparatus. According to ITW, the two references use different materials,
have a different orientation, and a different mode of operation from each
other rendering them so diverse that a person of ordinary skill in the art
would have no motivation to combine their teachings. (App. Br. 10:8-15.)
ITW’s arguments are not well supported.
Each of McDonald and Rosenberg discloses a method for
manufacturing sealed packages. (McDonald 1: ¶ 4; Rosenberg 1:6-8.)
Neither reference substantively distinguishes a horizontal form fill and seal
apparatus from a vertical form fill and seal apparatus. Indeed, neither
reference even uses the term “vertical form fill and seal.” Furthermore,
Rosenberg is not limited to packages of any particular material and expressly
discloses that its teachings apply to “many types of packages.” (Rosenberg
1:23.) In Rosenberg, perforations are formed between adjacent packages in
a package string without completely severing one package from another.
(Rosenberg 4:14-21.) Rosenberg further discloses that a predetermined
number of packages may then be connected to one another into a single
group. (Rosenberg 4:22-31.) That single group is then cut from the
remaining packages in the package string into a separate unit containing the
desired number of connected packages. (Rosenberg 4:21-36.)
The test for obviousness is what the combined teachings of the
references would have suggested to a person of ordinary skill in the art. In
re Keller, 642 F.2d at 425. If a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill. KSR Int’l Co., 127 S.
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Ct. at 1740. Furthermore, a person of ordinary skill in the art is also a
person of ordinary creativity, not an automaton. Id. at 1742.
The Examiner determined that a person of ordinary skill in the art
would have modified McDonald’s packages to include perforating and
cutting steps, such as those of Rosenberg, for the benefit of connecting a
predetermined number of packages into a single associated group. That
determination reasonably takes into account how a person of ordinary skill
and creativity in the field of package manufacturing would view the
combined teachings of the references to obtain the benefits disclosed by
Rosenberg in a packaging method such as that of McDonald. ITW does not
account for a person of ordinary creativity’s evaluation of the combined
teachings of the references in resolving the obviousness of the claims.
Moreover, even if Rosenberg is a “vertical form fill and seal”
packaging apparatus, a prior art reference must be considered for everything
it teaches by way of technology and is not limited to the particular invention
it is describing and attempting to protect. EWP Corp., 755 F.2d at 907. As
discussed above, the perforating and cuttings steps disclosed in Rosenberg
are beneficial in separating a collection of individual packages into a single
group. ITW does not explain why that benefit would not also apply to other
packaging methods, such as that of McDonald, regardless of how the
package is filled and sealed, i.e. either horizontally or vertically. ITW has
essentially pointed out a difference without distinction between “horizontal
thermoform” type prior art and “vertical form and seal” type prior art.
For the foregoing reasons, we reject ITW’s argument that a person of
ordinary skill and creativity in the art would have no motivation to combine
the teachings of the McDonald and Rosenberg.
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We sustain the rejection of claims 1, 6, 7, 10, 12, and 14 under
35 U.S.C. § 103(a) as unpatentable over McDonald and Rosenberg
Claims 11 and 28-30 – McDonald, Rosenberg, and Schneider
Claims 11 and 28-30 are dependent on one of claims 1, 6, 10, and 14.
ITW again argues that McDonald and Rosenberg are so diverse from one
another that a person of ordinary skill in the art would have no motivation to
combine their teachings. (App. Br. 11:4-9). For the same reasons as those
above, we reject ITW’s argument.
We sustain the rejection of claims 11 and 28-30 under 35 U.S.C.
§ 103(a) as unpatentable over McDonald, Rosenberg, and Schneider
F. CONCLUSION
1) ITW has not shown that the Examiner erred in determining that
in the field of bag manufacturing, the techniques of folding a film along
either multiple longitudinal lines or about a single longitudinal line are art
recognized equivalents of one another.
2) ITW has not shown that the Examiner erred in determining that
a person of ordinary skill in the art would have had adequate reason to
combine the teachings of McDonald with Rosenberg.
G. ORDER
The rejection of claims 1-3, 8-11, 13, 14, 29, and 30 under 35 U.S.C.
§ 103(a) as unpatentable over Schneider, Bois, and Rosenberg is affirmed.
The rejection of claims 1, 6, 7, 10, 12, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over McDonald and Rosenberg is affirmed.
The rejection of claims 11 and 28-30 under 35 U.S.C. § 103(a) as
unpatentable over McDonald, Rosenberg, and Schneider is affirmed.
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AFFIRMED

ack

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