Ex parte McDonough

Board of Patent Appeals and Interferences

Jul 30, 1998

08513705 (B.P.A.I. Jul. 30, 1998)

Application for patent filed August 11, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KEVIN C. MCDONOUGH
__________
Appeal No. 97-3402
Application No. 08/513,7051
__________
ON BRIEF
__________
Before CALVERT, COHEN and ABRAMS, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-3, 6, 7, 9, 11-19 and 21-23, which
constitute all of the claims remaining of record in the
application.
Appeal No. 97-3402
Application No. 08/513,705
2
The appellant's invention is directed to a recycleable
polypropylene bulk ban container. The subject matter before
us on appeal is illustrated by reference to claim 1, which
reads as follows:
1. A recycleable polypropylene bulk bag container
comprising:
(a) an outer bag of woven polypropylene fabric having
walls, a top panel, and a bottom panel;
(b) an inner polypropylene film liner without a top
panel consisting of walls and a bottom panel, the liner being
larger in size than the outer bag and joined to the outer bag
in a top setting seam; and
(c) polypropylene lifting means attached to the walls.
THE REFERENCE
The reference relied upon by the examiner to support the
final rejection is:
Futerman 4,948,265 Aug. 14,
1990
THE REJECTION
Claims 1-3, 6, 7, 9, 11-19 and 21-23 stand rejected under
35 U.S.C. § 103 as being unpatentable over Futerman.
Appeal No. 97-3402
Application No. 08/513,705
3
The rejection is explained in Paper No. 6 (the final
rejection), and in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
After consideration of the positions and arguments set
forth by both the examiner and the appellant, we have
concluded that the teachings of the reference relied upon fail
to establish a prima facie case of obviousness with respect to
the claimed subject matter. This being the case, we will not
sustain the rejection. Our reasons for this decision follow.
The claims are rejected under 35 U.S.C. § 103, and
therefore the examiner bears the initial burden of presenting
a prima facie case of obviousness (see In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993)), which is
established when the teachings of the prior art itself would
appear to have suggested the claimed subject matter to one of
ordinary skill in the art (see In re Bell, 991 F.2d 781, 783,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993)).
Appeal No. 97-3402
Application No. 08/513,705
4
All four independent claims recite an outer bag and an
inner liner joined to the outer bag, and require that the
inner liner be “larger in size than the outer bag.” As the
appellant explained in the specification, there is a reason
for this, and it is “to allow for complete filling and
stretching of the bulk bag container to occur” (specification,
page 7). The appellant argues that this is a patentable
distinction over the bulk bag disclosed by Futerman, equating
“larger in size” to “larger in volume” (Brief, page 5). This
interpretation is supported by the examples set forth on pages
9 and 10 of the specification, wherein the dimensions of the
inner liner are appreciably greater than those of the outer
bag (pages 9 and 10).
This feature is not taught by Futerman, which also is
directed to a bulk storage container having an outer bag and
an inner liner. The reference teaches that the circumference
of the liner is “slightly less” than that of the outer bag
(column 2, lines 50 and 51). Notwithstanding this, the
examiner has taken the position that since in Futerman the
length of the inner liner is greater than the outer bag, the
volume of the inner liner will be greater even when
Appeal No. 97-3402
Application No. 08/513,705
5
considering that the circumference of the inner liner is less
than the outer bag, and thus the conditions of the appellant’s
claims are met. We do not agree with this reasoning.
The inner bag disclosed by Futerman has no bottom (column
2, lines 49 and 50), and Futerman teaches making the sides of
the inner bag longer than those of the outer bag so that they
can fold inward at the bottom corners of the outer bag to
“ensure that the base seams [of the outer bag] are covered
without any need to stitch the liner to the base of the bag”
(column 3, lines 1-5). The examiner has proposed to modify
the Futerman bag by adding a bottom (Paper No. 4) in order to
meet another condition of the claims. Even considering,
arguendo, that such would have been obvious, it is our view
that one of ordinary skill in the art would have had no reason
to maintain the extra length of the sides, for the presence of
a bottom would have alleviated the problem solved by that
extra length. The inner bag of the modified Futerman
container therefore would have had a circumference less than
that of the outer bag and a length no greater than that of the
outer bag, with the result being that its size would not be
larger than that of the outer bag.
Appeal No. 97-3402
Application No. 08/513,705
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It therefore is our opinion that the teachings of the
reference fail to establish a prima facie case of obviousness
with regard to the claimed limitation that the inner liner be
larger in size than the outer bag.
Appeal No. 97-3402
Application No. 08/513,705
7
The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge)
)
)
)
IRWIN CHARLES COHEN ) BOARD OF
PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
NEAL E. ABRAMS )
Administrative Patent Judge)
Appeal No. 97-3402
Application No. 08/513,705
8
Darryl P. Frickey
Rohm and Haas Company
100 Independence Hall West
Philadelphia, PA 19106-2399