Ex Parte McMahon et al

Board of Patent Appeals and Interferences

Aug 30, 2012

10883369 (B.P.A.I. Aug. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/883,369 07/01/2004 Michael J. McMahon 769-236 Div. 9 4066
51468 7590 08/31/2012
McCarter & English LLP
ACCOUNT: ILLINOIS TOOL WORKS INC.
245 Park Avenue
NEW YORK, NY 10167
EXAMINER
GERRITY, STEPHEN FRANCIS
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
08/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL J. McMAHON, ART MALIN,
STEVEN AUSNIT, DONALD L. CREVIER, JOEL JOHNSON, and
DAVID J. MATTHEWS
____________________

Appeal 2010-004329
Application 10/883,369
Technology Center 3700
____________________

Before: GAY ANN SPAHN, WILLIAM V. SAINDON, and
PATRICK R. SCANLON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004329
Application 10/883,369
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 28 and 30-33 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 28, reproduced below, is illustrative of the claimed subject
matter.
28. A method of making reclosable packages, said method
comprising the steps of:
feeding a supply of package film in a package forming
direction;
folding said package film about a bottom crease to form
opposing package walls, said opposing package walls
advancing in said package forming direction;
feeding a supply of interlocked reclosable zipper between
said opposing package walls;
sealing one-half of said reclosable zipper to a first of said
package walls;
providing a supply of sliders, each of said sliders being
insertable on to said reclosable zipper and adapted to open and
close said zipper as said slider is moved along said zipper in
opening and closing directions, respectively;
removing sliders from said slider supply;
after said step of sealing one-half of said reclosable
zipper, inserting sliders on to said reclosable zipper; and
cross-sealing said folded film at package-width intervals
to form a chain of packages, each of said packages having a
reclosable zipper and a slider;
filling each of said packages; and
sealing the unsealed half of the reclosable zipper of each
of said packages to the other package wall.

Appeal 2010-004329
Application 10/883,369
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OPINION
The dispositive issue in this case is whether the Specification
adequately provides written description support for a method of making a
package with a step of, “after said step of sealing one-half of said reclosable
zipper, inserting sliders on to said reclosable zipper,” as required by claim
28 (emphasis added)1.
The Examiner found that Appellants’ originally filed Specification
and figures did not provide adequate support for the above-quoted language
of claim 28. Specifically, the Examiner found that the Specification and
figures disclose a process whereby one half of a zipper is sealed to a first of
two package walls, later sealing the other half of the zipper to the second
package wall. Ans. 3; see also Spec. 11:13 to 12:11, fig. 14 (the sealing of
the second half of the zipper occurs after filling). However, the Examiner
found that the Specification does not describe a method wherein a slider is
applied to the zipper after one half of the zipper has been sealed to the
package wall, but rather before one half of the zipper has been sealed to the
package wall. Ans. 3-4, 4-5.
Appellants argue that figure 13 of the Specification illustrates that
sliders are inserted downstream of (i.e., after) the zipper sealing station 90.
App. Br. 4. Appellants further note that the step of sealing a first half of a
zipper prior to a second half of the zipper is supported by figures 15 and 16
and pages 11-12 of the Specification. Id. Appellants conclude that the

1 As set forth in the Specification, the disclosed package comprises walls
made of a folded film 82, a zipper element 36 heat sealed to the package
walls, and a slider element 44 that moves along the zipper to open and close
the zipper. Spec. 10:4-15.
Appeal 2010-004329
Application 10/883,369
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presence of the disclosures in the Specification supports the claimed
sequence of inserting the slider after sealing the first half of a zipper. Id.
In evaluating the sufficiency of a written description, the question is
not whether one of ordinary skill in the art might be able to combine the
disclosed embodiments to arrive at the claimed invention, but whether the
Specification discloses the specifically claimed invention. See Lockwood v.
Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Turning to the Specification, Appellants disclose several
embodiments, including the fourth embodiment shown in figure 12. In this
embodiment, both sides of zipper 36 (with slider 44 already attached) are
sealed to the package walls at sealing station 90. Spec. 10:8-13. Figure 13
depicts a first variation of the fourth embodiment depicted in figure 12.
Spec. 11:5. The figure 13 variation provides the slider downstream of (i.e.,
after) the sealing station and uses an outside means to pull open the package
for filling. 2 Given that the package is opened by forcing open the zippers, it
appears that the zippers are sealed to the package wall.
The embodiment of figure 14 is a second variation of the fourth
embodiment. Spec. 11:13-14. The disclosure sets forth the steps of
providing the zipper 36, sealing one half of the zipper to a first package wall,
filling the bag, then sealing the second half of the zipper to the second
package wall. See Spec. 11:13 to 12:11; fig. 14. This two-step sealing

2 In the fourth embodiment shown in figure 12, the package is opened for
filling by moving the slider member from a closed position to an open
position. After filling, the slider is moved back to the closed position. Spec.
10:16 to 11:2. However, in the first variation of the fourth embodiment
(figure 13), the sliders are placed at the opening end and outside means force
open the zipper to fill the package. Spec. 11:5-10. After filling, the slider is
moved to a closed position. Spec. 11:11-12.
Appeal 2010-004329
Application 10/883,369
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process avoids the need to open the zipper for filling, which eliminates the
danger of contaminating the zipper. Spec. 11:14-15, 12:5-6. Figures 14-16
depict the slider 44 already engaged with the zipper prior to sealing one-half
of the zipper to the wall. 3
Upon review of the written description, Appellants’ arguments do not
apprise us of error in the Examiner’s rejection. Appellants simply point to
different embodiments in the written description, but do not acknowledge
that they are separate embodiments. Cf. Lockwood, 107 F.3d at 1572 (“The
question is not whether a claimed invention is an obvious variant of that
which is disclosed in the specification”). As is clear from our discussion
above, the Examiner was correct in finding the Specification indicates that
the method illustrated in figure 13 (slider installed after sealing) is a separate
embodiment from the method illustrated in figures 14, 15, and 16 (half
sealing). See Spec. 11:13 to 12:11. Both have the slider in a particular
configuration to facilitate the particular filling method of the different
embodiments.4 The Specification does not indicate whether it is possible or
desirable to combine the features of these two disclosed embodiments to
arrive at the claimed invention. Appellants do not attempt to establish that a
person having ordinary skill in the art at the time of invention would have
understood that the different slider attachment schemes of these different
embodiments were an equivalent description of the claimed subject matter.

3 While figure 15 does not label the slider, the same structure is illustrated
and labeled as slider 44 in figure 16. Accordingly, we consider the structure
in figure 15 to be a slider. This interpretation is also consistent with figure
14, which shows the slider attached to the zipper prior to the first sealing
step at 90.
4 Namely, the slider is in the normal, closed position in the figure 14
embodiment (Spec. 10:8-10) and in a modified, open position in the figure
13 embodiment (Spec. 7-8).
Appeal 2010-004329
Application 10/883,369
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Lockwood, 107 F.3d at 1572 (“Although the exact terms need not be used in
haec verba … the specification must contain an equivalent description of the
claimed subject matter”). In light of the above, we are not apprised of error
in the Examiner’s rejection of claims 28 and 30-33 as failing to comply with
the written description requirement.

DECISION
We AFFIRM the Examiner’s decision to reject claims 28 and 30-33 as
failing to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph.
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)(1)(iv).

AFFIRMED

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