Ex Parte West et al

Patent Trial and Appeal Board

Dec 27, 2018

13381251 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/381,251
24392 7590
FISH IP LAW, LLP
2603 Main Street
Suite 1000
Irvine, CA 92614
FILING DATE FIRST NAMED INVENTOR
02/01/2012 Ellery West
12/31/2018
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.
101824.0012US 9262
EXAMINER
KIRSCH, ANDREW THOMAS
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
12/31/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
rfish @fishiplaw.com
Patents@fishiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELLERY WEST and GAIL WEST
Appeal2017-010559
Application 13/381,251
Technology Center 3700
Before BRANDON J. WARNER, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-010559
Application 13/381,251
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants Ellery West and Gail West
appeal from the Examiner's decision, as set forth in the Non-Final Office
Action dated August 26, 2016 ("Non-Final Act."), rejecting claims 1-8, 11-
19, and 21-23. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a biodegradable produce enclosure. Claims
1 and 13 are the independent claims on appeal. Claim 1, reproduced below
with disputed limitations italicized for emphasis, is illustrative of the
claimed subject matter:
1. A mesh basket, comprising:
a rigid lattice structure having interior and exterior
surfaces and a fibrous side and bottom, the structure comprising
a plurality of lattice elements, and wherein the interior surface of
the rigid lattice structure includes a permeation barrier material;
a plurality of visually non-occluded lattice holes
collectively defined by the plurality of lattice elements; and
wherein the apparent collective area of the lattice holes is
at least 40% of the apparent collective area of the lattice
structure.
Claims 9, 10, 20 are cancelled. Appeal Brief, dated January 19, 2017
("Appeal Br."), at 14--16 (Claims App.).
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Application 13/381,251
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Avery
Applegate
Utz
Johns
Longhany
Maxwell
us 4,982,872
us 5,595,051
US 6,503,634 Bl
US 2004/0069788 Al
US 2006/0027586 Al
US 2008/0302808 Al
REJECTI0NS 2
The Examiner made the following rejections:
Jan. 8, 1991
Jan.21, 1997
Jan. 7, 2003
Apr. 15, 2004
Feb.9,2006
Dec. 11, 2008
1. Claims 1, 6, 8, 12-14, 17, 19, 21, and 23 stand rejected under 35
U.S.C. § I03(a) as being unpatentable over Avery and Utz.
2. Claims 2--4, 15, and 22 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Avery, Utz, and Applegate.
3. Claims 5 and 16 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Avery, Utz, and Applegate as applied to claims 2 and 14
above, and further in view of Maxwell.
4. Claims 7 and 18 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over A very and Utz as applied to claims 1 and 13 above, and
further in view of Johns.
5. Claim 11 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over A very, Utz, and Longhany.
Appellants seek our review of these rejections.
2 Appellants erroneously assert that the Examiner rejected claims 1, 6,
8, 12-14, 17, 19, 21, and 23 under 35 U.S.C. § 102. See, e.g., Appeal Br. 3-
5; Examiner's Answer dated May 18, 2017 ("Ans."), at 2.
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Application 13/381,251
DISCUSSION
Rejection 1: Claims 1, 6, 8, 12-14, 17, 19, 21, and 23
as Unpatentable Over Avery and Utz
Appellants argue claims 1, 6, 8, 12, 14, 17, 19, 21, and 23 as a group.
Appeal Br. 5-11. We select independent claim 1 as the representative claim,
and claims 1, 6, 8, 12-14, 17, 19, 21, and 23 stand or fall with claim 1. 37
C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that A very discloses all of the limitations of claim
1 except for the "permeation barrier material." Non-Final Act. 3--4. The
Examiner finds that Avery's layers 303f act as a permeation barrier material,
but A very does not disclose that the "permeation barrier material" has a
"surface [that] is treated with an additive that has a transfer rate of less than
or equal to 50 µl of water and/or sunflower oil per cm2 per six-month period
of time at room temperature and normal atmospheric pressure (STP)" as
explicitly defined in paragraph 31 of the Specification. Id.; Spec. ,r 31. For
this missing limitation, the Examiner finds that Utz discloses "a permeation
barrier for foodstuff packaging wherein the barrier has a water vapor
permeability of less than 0.5 grams/(m2 • day) which equates to - 9
microliters/cm2 over 6 months." Id. at 4 (citing Utz, claim 1).
The Examiner determines that it would have been obvious to one of
ordinary skill in the art "to have utilized a known permeation barrier
material having the property [as defined in Appellants'] specification to coat
the inner and outer 303f layers of Avery with the coating taught by Utz"
because "one of ordinary skill would invariably realize the stated property as
being achievable at normal atmospheric pressure for the predictable
purposes of preserving the desired freshness of stored food" and because "it
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Application 13/381,251
has been held to be within the general skill of a worker in the art to select a
known material on the basis of its suitability for the intended use as a matter
of obvious design choice." Id. at 4--5.
Appellants assert that the Examiner's rejection is erroneous for
several reasons. First, Appellants assert that "the Examiner fails to point to
any part of [Avery's] specification that face layer 303 f is a layer attached to
the rigid lattice element 307 and 309." Appeal Br. 8 (see sections 1 and 2);
see Reply Br. 4--5. Appellants' argument is not commensurate with the
scope of claim 1. Contrary to Appellants' arguments, claim 1 requires only
that "the rigid lattice structure includes a permeation barrier material" rather
than that the "permeation barrier material" is attached to the "rigid lattice
structure." See Appeal Br. 14--16 (Claims App.), claim 1 (emphasis added).
The Examiner correctly finds that "Avery teaches that structure 303', which
includes lattice elements 307 and 309, 'is formed of corrugated paperboard
material including a core 303c and face layers 303f. "' Ans. 7. Appellants'
argument is not persuasive.
Second, Appellants assert that "the Examiner fails to provide any
factual support in Avery that the face layer 303f is a permeation barrier layer
as defined in the present application." Appeal Br. 8; see Reply Br. 4--5.
Appellants assert that "Avery's structure 303' includes face layers 303f, but
this structure is different from claims 1 and 13, which require the rigid
lattice structure to have a surface treated with an additive," and assert that,
"to fall within the definition, core 303c would have to have a surface treated
with an additive." Reply Br. 5 (emphasis omitted). Appellants also assert
that the Examiner's finding is inconsistent with the express definition
provided at paragraph 31 of the Specification. Id.
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Appellants, however, are attacking the disclosure of A very in
isolation. Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, the Examiner finds that, although Avery's layers 303fbroadly act as a
barrier to permeation, it is Utz that explicitly discloses a permeation barrier
material as defined in paragraph 31 of the Specification. Non-Final Act. 4;
Ans. 7. Appellants do not address the rejection as articulated by the
Examiner, and, thus, do not identify error by the Examiner.
Third, Appellants assert that the Examiner failed to resolve the level
of ordinary skill in the art and the "written record is completely void of any
discussion of who the PHOSIT A is and what their knowledge would
include." Appeal Br. 1 O; see Reply Br. 6. In response, the Examiner
explains that the prior art reflects the level of skill in the art. Ans. 8 ( citing
MPEP § 2141.03). We do not find error where the prior art itself reflects an
appropriate level of skill and Appellants did not demonstrate a need for
specific evidence on this issue. In re Chaganti, 554 F. App'x 917, 922 (Fed.
Cir. 2014) ("We agree with the PTO that the absence of factual findings with
respect to the level of ordinary skill in the field of the invention does not
'give rise to reversible error' where, as here, 'the prior art itself reflects an
appropriate level and a need for testimony is not shown.' Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (citations omitted).")
Fourth, Appellants assert that there is no motivation to modify Avery
with the teachings of Utz in the manner proposed by the Examiner. Appeal
Br. 10-11; Reply Br. 7. Appellants assert that Avery's "core 303c and face
layer 303f is encapsulated by the film material layers 301 and 302" (Appeal
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Br. 11 (citing Avery 18:31-35)), and conclude that "[b]ecause the container
itself is enclosed with the film material layers, which can protect the
container from water or gas permeation, there is no motivation to include
another permeation barrier material on face layer located inside of the film
material layers." Id. Appellants also assert that the Examiner "can satisfy
the burden of showing obviousness of the combination 'only by showing
some objective teaching in the prior art or that knowledge generally
available to one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.'" Id. ( citing In re Fritch,
972 F.2d 1260, 1265 (Fed. Cir. 1992) (emphasis omitted)).
Contrary to Appellants' argument, an express teaching or motivation
in the references is not required. KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007). Instead, the Examiner need only articulate a reason to
combine the references with some rational underpinning to support the legal
conclusion of obviousness. Id. Here, the Examiner reasons that it would
have been obvious to one having ordinary skill in the art "to have utilized a
known permeation barrier material having the property [ as defined in
Appellants'] specification to coat the inner and outer 303f layers of Avery
with the coating taught by Utz" because "one of ordinary skill would
invariably realize the stated property as being achievable at normal
atmospheric pressure for the predictable purposes of preserving the desired
freshness of stored food" and because "it has been held to be within the
general skill of a worker in the art to select a known material on the basis of
its suitability for the intended use as a matter of obvious design choice."
Non-Final Act. 4--5. The Examiner also explains that the "condensation of
the air located between the inner and outer sheath would potentially
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permeate and weaken uncoated section of the lattice were it not for coating
the paperboard lattice with a known substance as taught by Utz." Ans. 8.
Appellants do not address the Examiner's articulated reasoning for
combining A very and Utz, and, thus, do not identify error by the Examiner.
For the reasons above, the rejection of claim 1 is sustained.
Appellants do not argue claims 6, 8, 12, 14, 17, 19, 21, and 23 apart from
their dependency on claims 1 and 13. Appeal Br. 11. We discern no error in
the Examiner's rejection of claims 6, 8, 12-14, 17, 19, 21, and 23, and also
sustain the rejection of those claims.
Rejections2-5: Claims2-5, 7, 11, 15, 16, 18, and22
As to Rejections 2-5, Appellants assert that "there is no indication
that the Examiner actually applied the Graham factor analysis to analyze
claims 1 and 13 ", and "the Examiner fails to establish that there is a
motivation to modify Avery to reach the claimed invention of claims 1 and
13." Appeal Br. 12. Appellants conclude that "at least for the same reasons
above, the Examiner's rejection on claims [2-5, 7, 11, 15, 16, 18, and 22]
should be reversed." Id. Because the rejection of claims 1 and 13 is
sustained, as discussed above, Appellants' arguments are not persuasive.
We discern no error in the Examiner's rejections of claims 2-5, 7, 11, 15,
16, 18, and 22, and also sustain the rejections of those claims.
DECISION
For the above reasons, the Examiner's rejections of claims 1-8, 11-
19, and 21-23 are AFFIRMED.
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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)(l )(iv).
AFFIRMED
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