Ex Parte Tindoll et al

Board of Patent Appeals and Interferences

Nov 30, 2010

11516583 (B.P.A.I. Nov. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AVALON G. TINDOLL, FRED H. PAGE,
MERRILL JOHNSTON, and GARY COOPER
____________

Appeal 2009-009473
Application 11/516,583
Technology Center 3700
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Avalon G. Tindoll et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 12-22. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
Appellants’ claimed invention is a machine for making bags.
Spec. 1:12-13. Claim 12, reproduced below, is representative of the subject
matter on appeal.
12. A machine for making bags from thermoplastic
sheet material of indefinite length, having an entry end for said
sheet material and an outlet end for bags, comprising,
in a direction from said entry end toward said outlet end,
a folder for folding said sheet material lengthwise about a fold
line into two layers, and
apparatus for thermowelding said layers together along
lines extending transversely of the sheet material and for
severing or perforating said sheet material along said lines,
wherein said apparatus comprises a heated die on one
side of the material, means moving the heated die toward and
away from the material, an unheated die on the other side of the
material and movable only by the heated die and resiliently
urged toward the heated die,
the unheated die being in two portions with a knife
between them, the knife extending transversely of the material
and being respectively shielded and exposed by the unheated
die in two end positions of movement of the unheated die,
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the heated die being movable toward and away from the
material first to press the material against the unheated die
when the unheated die shields the knife and then to move the
material and the unheated die together until the unheated die
exposes the knife and the knife severs or perforates the
material,
wherein the machine applies heat to the material only
from the side of the material opposite the knife.
THE EVIDENCE
The Examiner relies upon the following evidence:
Shea US 2,347,439 Apr. 25, 1944
Stenberg US 3,940,305 Feb. 24, 1976
Fowler US 5,284,002 Feb. 8, 1994
THE REJECTIONS
The Examiner made the following rejections:
1. The Examiner rejected claim 21 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description
requirement.
2. The Examiner rejected claim 21 under 35 U.S.C. § 112, second
paragraph as being indefinite.
3. The Examiner rejected claims 12-16 and 19-22 under 35 U.S.C.
§ 102(b) as being anticipated by Fowler.
4. The Examiner rejected claims 12-22 under 35 U.S.C. § 103(a) as
being unpatentable over Shea, Stenberg, and Fowler.
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ISSUES
The issues presented by this appeal are:
Does Appellants’ disclosure reasonably convey to those skilled in the
art that Appellants had possession, as of the filing date, of “means [for]
maintaining the material in contact with the unheated die prior to movement
of the heated die toward the material” as called for claim 21?
Is claim 21 indefinite?
Does Fowler disclose an unheated die that is “movable only by the
heated die” as called for in claim 12?
Would the combined teachings of Shea, Stenberg, and Fowler result in
a machine having an unheated die that is “movable only by the heated die”
as called for in claim 12?
ANALYSIS
Written Description
In order 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 Lily & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. (citations omitted). “[T]he level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
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Id. (citing Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)). The
claimed invention need not be recited in haec verba in the original
specification in order to satisfy the written description requirement. Id. at
1352. “[T]he written description requirement is satisfied by the patentee’s
disclosure of ‘such descriptive means as words, structures, figures, diagrams,
formulas, etc., that fully set forth the claimed invention.’” Enzo Biochem,
Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
Claim 21 calls for the machine of claim 12 further comprising “means
[for] maintaining the material in contact with the unheated die prior to
movement of the heated die toward the material.” Appellants identify hold-
down bars 89 and guide strip 91 as the structure corresponding to this recited
function. App. Br. 10-11. Appellants argue that the disclosure in
Appellants’ Specification on page 12, lines 1-4 and the accompanying
Figures 7 and 8 provide adequate written descriptive support for the recited
function of maintaining the material in contact with the unheated die prior to
movement of the heated die toward the material. Id.
Appellants’ Specification describes:
Hold-down bars 89 ensure that the material 21 will not
follow die 83 to its upper position. A guide strip 91 is also
found to be useful to keep the material down.
Spec. 12:1-4. Appellants’ Figure 7 shows the machine with the parts in
position at the beginning of the thermowelding and severing or perforating
operation, with the top die 83 raised and the material 21 stopped.
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Spec. 15:16-20. Appellants’ Figure 8 shows the machine once the heated
top die 83 has descended into contact with material 21. Spec. 15:25-26.
We find that one having ordinary skill in the art would understand
Figure 7 to show guide strip 91 and hold-down bars 89 maintaining the
material 21 against the top surface of unheated die 79 while the top die 83 is
raised, i.e., prior to movement of heated die 83 toward the material 21. As
such, we find that Appellants’ disclosure reasonably conveys to those skilled
in the art that Appellants had possession, as of the filing date, of “means
[for] maintaining the material in contact with the unheated die prior to
movement of the heated die toward the material.” Therefore, we will not
sustain the Examiner’s rejection of claim 21 under 35 U.S.C. § 112, first
paragraph.
Indefiniteness
The Examiner rejected claim 21 under 35 U.S.C. § 112, second
paragraph, because “[i]t is unclear as to what means applicant is referring to
maintain the material in contact with the unheated die prior to movement of
the heated die toward the material.” Ans. 4. As we found supra,
Appellants’ disclosure reasonably conveys to those skilled in the art that the
“means [for] maintaining the material in contact with the unheated die prior
to movement of the heated die toward the material” corresponds to the guide
strip 91 and hold-down bars 89 as shown in Figure 7 and described on
page 12, lines 1-4 of Appellants’ Specification. As such, we will not sustain
the Examiner’s rejection of claim 21 under 35 U.S.C. § 112, second
paragraph.
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Anticipation by Fowler
Independent claim 12 calls for “an unheated die on the other side of
the material [from the heated die] and movable only by the heated die.” The
Examiner found that Fowler anticipates claim 12 because Fowler discloses
“a second movable unheated sealing jaw (161) comprising unheated die (163
or 165) … the unheated die (163 or 165) is only movable with respect to the
unheated sealing jaw (161) by the die (164 or 166) of the heated sealing jaw
(162) by a spring structure (194).” Ans. 4. See also Ans. 9.
With reference to Figures 4-9, Fowler discloses a form, fill and seal
pouch apparatus in which seals on the pouch are formed by front and rear
sealing jaws 161 and 162. Fowler, col. 6, ll. 50-53 and ll. 65-68. Fowler
describes that sealing jaws 161 and 162 initially are brought together in a
horizontal plane to grab the web material 153 from either side and then
moved vertically to pull the material 153 to a lower position. Fowler, col. 7,
ll. 1-5. Fowler describes that during the vertical travel, the bags are
perforated and cut, then the sealing jaws form an upper seal in one bag and a
lower seal in another bag, and then when the jaws 161 and 162 reach the
bottom of vertical travel, they retract. Fowler, col. 7, ll. 5-13.
Fowler further discloses that a frame member 180 supports the heated
sealing jaw 162 and a mounting plate 181 attaches by bolting or other
conventional means to the frame member 180. Fowler, col. 7, ll. 53-55.
Fowler describes that the sealing jaws 161 and 162 move from a retracted
position shown in Figure 5 to a closed position shown in Figure 6. Fowler,
col. 8, ll. 2-4. In particular, Fowler describes that front (unheated) sealing
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jaw 161 includes a frame structure 183 that slides along rails 184 to move
from the position shown in Figure 5 to the position shown in Figure 6.
Fowler, col. 8, ll. 26-30. Fowler further describes that the upper and lower
gripper bars 163 and 165 on sealing jaw 161 are permitted horizontal motion
over a limited range, and that spring structures 194 urge the upper and lower
gripper bars 163 and 165 to the right when the sealing jaws 161 and 162 are
retracted. Fowler, col. 8, ll. 47-54. Fowler further describes:
When a drive unit, not shown, moves the sealing jaw 161
toward the seal jaws 162 along the rails 184, the ends of the
upper and lower gripper bars 163 and 165 initially displace the
web material 153 against the gripper bars 164. As the sealing
jaw 161 moves to a final position, the upper gripper bars 163
and 164 and the lower gripper bars 165 and 166 begin to
produce a clamping force.
…
More specifically, the upper gripper bars 163 and 164
and the lower gripper bars 165 and 166 make initial contact
with the intermediate web 153. Thereafter the front seal bar
161 continues to move toward the rear seal bar 162 through an
incremental distance until it reaches a mechanical stop (not
shown). During this incremental motion, the gripper bars 163
and 165 displace horizontally on the shoulder extensions 193
and compress the spring mechanisms 194. Adjusting the spring
mechanisms establishes the final gripping force that the gripper
bars 163 through 166 exert on the web 153.
Fowler, col. 8, l. 55 – col. 9, l. 10.
As such, we find Fowler discloses that heated sealing jaw 162 and its
corresponding upper and lower gripper bars 164 and 166 remain stationary
and do not move in the horizontal direction. We further find Fowler
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discloses that only unheated sealing jaw 161 moves along rails 184 toward
the stationary heated sealing jaw die 162. Fowler further discloses that only
the gripper bars 163 and 165 disposed on unheated sealing jaw 161 are
capable of displacing horizontally on shoulder extensions 193 and that such
displacement is the result of the incremental movement of unheated sealing
jaw 161 as it approaches a mechanical stop. As such, we disagree with the
Examiner’s finding (Ans. 4) that Fowler’s “unheated die (163 or 165) . . . is
only movable with respect to unheated sealing jaw (161) by the die (164 or
166) of the heated sealing jaw (162) . . . by a spring structure (194).”
Rather, Fowler discloses that its unheated die (163 and 165) is movable with
respect to the unheated sealing jaw (161) by the drive unit, which moves the
sealing jaw 161 toward the stationary sealing jaw 162 along the rails 184.
As such, we will not sustain the rejection of independent claim 12, or its
dependent claims 13-16 and 19-22 under 35 U.S.C. § 102(b) as being
anticipated by Fowler.
Unpatentability over Shea, Stenberg, and Fowler
The Examiner’s rejection based on Shea, Stenberg, and Fowler
proposes to modify Shea’s machine to use the sealing apparatus of Fowler,
such that the heated sealing jaw 162 of Fowler would move Shea’s double-
layer web 2a toward and against the unheated sealing jaw 161 of Fowler.
Ans. 7. The Examiner’s conclusion of obviousness is based on the finding
that “the unheated die (163 or 165) is only movable with respect to the
unheated sealing jaw (161) by the die (164 or 166) of the heated sealing jaw
(162).” Id. We find this underlying finding of fact to be in error for the
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same reasons discussed supra in our analysis of the anticipation rejection
based on Fowler. In particular, Fowler discloses that its unheated die (163
and 165) is movable with respect to the unheated sealing jaw (161) by the
drive unit, which moves the sealing jaw 161 toward the sealing jaw 162
along the rails 184. As such, we will not sustain the rejection of claims 12-
22 under 35 U.S.C. § 103(a) as being unpatentable over Shea, Stenberg, and
Fowler.
CONCLUSIONS
Appellants’ disclosure reasonably conveys to those skilled in the art
that Appellants had possession, as of the filing date, of “means [for]
maintaining the material in contact with the unheated die prior to movement
of the heated die toward the material” as called for claim 21.
Claim 21 is not indefinite under 35 U.S.C. § 112, second paragraph.
Fowler does not disclose an unheated die that is “movable only by the
heated die” as called for in claim 12.
The combined teachings of Shea, Stenberg, and Fowler would not
result in a machine having an unheated die that is “movable only by the
heated die” as called for in claim 12.
APPELLANTS’ REQUEST FOR REMAND
Appellants filed a Request for Remand along with their Reply Brief.
Request for Remand (“Request”) dated January 26, 2009. Appellants
requested that the Board remand the application to the Examiner to require
the Examiner to admit or deny each one of the facts set forth in the
“Statement of Facts” section of the Appeal Brief. Since we have reversed
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the Examiner’s rejections, we do not find it necessary to reach the merits of
this Request. As such, we dismiss this Request as moot.
DECISION
The decision of the Examiner to reject claims 12-22 is REVERSED.

REVERSED

nlk

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