Ex Parte Santos

Patent Trial and Appeal Board

Oct 26, 2018

14665052 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/665,052 03/23/2015
8131 7590 10/29/2018
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
FIRST NAMED INVENTOR
Richard J. Santos
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MSH-1015CIP 7625
EXAMINER
HELVEY, PETER N.
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
10/29/2018 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 PATENT TRIAL AND APPEAL BOARD
Exparte RICHARD J. SANTOS 1
Appeal2018-001980
Application 14/665,052
Technology Center 3700
Before STEVEN D.A. McCARTHY, JAMES P. CALVE, and
BRETT C. MARTIN, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 1-11, 13-15, and 17-19. Br. 2. Claims 12, 16, and
20 are withdrawn. See id. at 7-8 (Claims App.). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Mr. Santos is identified as the real party in interest. Appeal Br. 2.
Appeal2018-001980
Application 14/665,052
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. A multiple pocket storage bag comprising in
combination; a first and second panels joined along multiple
sides and bottom thereof; forming an enclosure, within said
enclosure being formed multiple pockets;
said multiple pockets extending from said bottom to
opening of said enclosure capable of holding items;
said pockets forming at least one row;
said pockets forming at least one level;
said pockets being capable of sealing such that the seals
are impervious to air and liquid water;
said enclosure being capable of sealing such that the seals
are impervious to air and liquid water.
Br. 6 (Claims App.).
REJECTION
Claims 1-11, 13-15, and 17-19 are rejected under 35 U.S.C. § 103 as
unpatentable over Santos (US 2003/0230612 Al, pub. Dec. 18, 2003) and
MacDonald (US 2012/0002904 Al, pub. Jan. 5, 2012).
ANALYSIS
Appellant argues claims 1-11, 13-15, and 17-19 as a group. Br. 3-5.
We select claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1 recites a multiple pocket storage bag with multiple pockets
extending from the bottom of the bag to the opening of the bag enclosure.
The pockets include seals that are impervious to air and liquid water. The
enclosure bag also includes seals that are impervious to air and liquid water.
Br. 6 (Claims App.). Appellant discloses that such multi-compartment bags
are not new, but prior art bags lack a water and air impervious seal that can
be resealed with multiple pockets within the same enclosure. Spec. 1: 18-20.
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Appeal2018-001980
Application 14/665,052
The Examiner relies on Santos to teach a multiple pocket storage bag,
as recited in claim 1, including zippers or other types of fasteners to seal the
pockets and bag, but finds that Santos does not expressly disclose that the
seals are impervious to air and liquid water as claimed. Final Act. 2-3.
The Examiner finds that MacDonald teaches a storage bag that can be
sealed with zippers, Velcro fasteners, and ziplock closures, (rib and groove
closure elements) that are impervious to air and liquid water. Id. at 3.
The Examiner determines it would have been obvious to substitute the
zip lock type closures of MacDonald for the zipper closure of Santos based
on Santos' s teaching of the substitutability of other types of fasteners for the
zippers and MacDonald's teaching of the equivalence and substitutability of
ziplock type closures for zippers, sliders, and other releasable seals. Id.
Appellant does not dispute that Santos teaches a multiple pocket
storage bag. However, Appellant argues that Santos teaches a bag made of a
commercial grade fabric that is closed with a zipper, so the bag (enclosure)
is not impervious to air and liquid water. Br. 4. Appellant also argues that
Santos fails to teach pockets that are capable of being sealed so the seals are
impervious to air and liquid water and Santos fails to teach an enclosure that
is capable of sealing so the seals are impervious to air and liquid water. Id.
As to the first issue, the Examiner correctly finds that claim 1 does not
require the enclosure (i.e., the bag) to be impervious to air and liquid water.
Ans. 5. We agree with the Examiner that claim 1 requires the seals of the
multiple pockets and the enclosure to be impervious to air and liquid water.
Id. ("The instant application's claims only require the seals to be impervious
to air and liquid water, the scope of which is met by the closure disclosed by
MacDonald (see paragraph 0010)."). Appellant does not dispute this fact.
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Appeal2018-001980
Application 14/665,052
As to the second issue, the Examiner correctly finds that MacDonald
uses ziplock seals that are impervious to air and water to seal an enclosure
and auxiliary pockets and teaches the equivalence and interchangeability of
the seals with zippers like those used in Santos. MacDonald ,r 10, 36; Final
Act. 3--4; Ans. 5. Appellant does not dispute that MacDonald teaches seals
that are impervious to air and liquid water. Indeed, Appellant agrees that
Macdonald teaches a bag enclosure made of impermeable material that can
be sealed by a Ziploc, zipper, slider, watertight seal, airtight seal, frictional
seal, elastic seal, and other sealing apparatuses. See Br. 3--4.
However, Appellant argues that a skilled artisan would not have used
one of MacDonald's air and liquid water impervious seals on a fabric bag of
Santos because such "[ fJabric by its nature is not impervious to air and liquid
water." Br. 4. As a result, "there is no need in Santos to have a seal that is
impervious to air and liquid water thus motivating one skilled in the art to
change the zipper of the bag" [of Santos]." Id. Appellant further argues that
attaching a sealing apparatus of MacDonald to fabric of Santos is different
than attaching a sealing apparatus to plastic so "the sealing apparatuses are
not necessarily substitutable as the examiner suggests." Id. Appellant also
argues that a skilled artisan would recognize that one cannot readily attach a
Ziploc type fastener to a fabric bag of Santos. Id.
In response, the Examiner correctly points out that the enclosure bag
of Santos can be made of other materials to which fastening devices can be
attached. Ans. 6. The Examiner also points out that Santos teaches that its
bag is intended to carry baby and infant care items such as formula and juice
that would benefit from water-tight seals on the pockets, particularly when
the item is folded and carried. Id. We agree.
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Appeal2018-001980
Application 14/665,052
In this regard, Santos teaches a combination diaper bag/convertible
travel tote bag that is particularly suitable for use with infants and toddlers.
Santos ,r 2. The bag can be converted from a folded carrying condition to an
unfolded/unzippered condition in which the bag is secured to a seat front or
a seat back to reveal individual item carrying compartments suitable to hold
personal and infant/toddler related items. Id. Such items include cups or
cans of formula or juice 44, 46 and cellular phones 48. Id. ,r 21, Figs. 1-5.
Santos also teaches that the convertible bag can be made from fabric,
cloth, vinyl, leather material, or other durable commercial grade fabric. Id.
Thus, the commercial grade fabric of Santos includes air and liquid water
impervious materials that would benefit from seals that are air and liquid
impervious to prevent accidental spills of formula and juice from staining
the seats or damaging a cellular phone as the Examiner reasons. See Ans. 6.
MacDonald provides a basis for such modification by teaching bags
for paint trays with watertight and airtight seals that include ziplock, slider,
zipper, and Velcro seals. MacDonald ,r,r 5, 10, 36. MacDonald thus teaches
the equivalence or substitutability of a ziplock seal for a zipper seal used in
Santos such that a skilled artisan would have been motivated to substitute a
ziplock seal taught by MacDonald for the zippers of Santos to provide an air
and liquid water impervious seal that would be advantageous to use with the
infant and toddler care items in Santos' s bag to contain leakage. Ans. 6.
MacDonald also teaches that bag 103 is liquid impervious so paint
does not soak through bag 103 and air impervious so paint in bag 103 does
not dry. MacDonald ,r 3 8. MacDonald teaches that suitable materials for
such resealable bags include any suitable plastic, rubber, fabric, or the like.
Id. ,I,I 36, 38.
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Appeal2018-001980
Application 14/665,052
MacDonald's teachings to place airtight and watertight seals such as
ziplock seals on a suitable plastic or fabric to provide an airtight, watertight
bag provides sufficient motivation to substitute such seals on the durable
commercial grade fabric (e.g., vinyl, leather, fabric (not cloth)) tote bag of
Santos for similar benefits. See Ans. 6. MacDonald thus provides evidence
that a skilled artisan would have had a reasonable expectation of success in
substituting MacDonald's ziplock seals for zippers on Santos's bag to
provide an air and water impervious seal that contains spills from baby juice
or formula within the pockets of Santos' s tote bag. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) ("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").
Indeed, we have repeatedly held that an implicit motivation to
combine exists not only when a suggestion may be gleaned
from the prior art as a whole, but when the 'improvement' is
technology-independent and the combination of references
results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the desire to
enhance commercial opportunities by improving a product or
process is universal-and even common-sensical-we have
held that there exists in these situations a motivation to combine
prior art references even absent any hint of suggestion in the
references themselves. In such situations, the proper question is
whether the ordinary artisan possesses knowledge and skills
rendering him capable of combining the prior art references.
DyStar Textilfarben GmbH & Co. Deutsch/and KG v. CH Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
Thus, we sustain the rejection of claims 1-11, 13-15, and 17-19.
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Appeal2018-001980
Application 14/665,052
DECISION
We affirm the rejection of claims 1-11, 13-15, and 17-19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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