Ex Parte Wild et al

Board of Patent Appeals and Interferences

Sep 28, 2010

09690409 (B.P.A.I. Sep. 28, 2010)

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.
09/690,409 10/17/2000 Hans-Peter Wild 357153/0004 3320
26610 7590 09/28/2010
STROOCK & STROOCK & LAVAN LLP
180 MAIDEN LANE
NEW YORK, NY 10038
EXAMINER
TRUONG, THANH K
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
09/28/2010 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 HANS-PETER WILD and EBERHARD KRAFT
____________

Appeal 2010-002522
Application 09/690,409
Technology Center 3700
____________

Before JOHN C. KERINS, MICHAEL W. O’NEILL and FRED A.
SILVERBERG, Administrative Patent Judges.

KERINS, 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.
Appeal 2010-002522
Application 09/690,409

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STATEMENT OF THE CASE
Hans-Peter Wild and Eberhard Kraft (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 7, 9 and
11-14, all of the claims currently pending in the application.2 We have
jurisdiction under 35 U.S.C. § 6(b) (2002). We AFFIRM-IN-PART.
An oral hearing in connection with this appeal was held on September
16, 2010, with Steven B. Pokotilow, Esq., appearing on behalf of
Appellants.
THE INVENTION
Appellants’ claimed invention is to a method and apparatus for
applying straw packages onto foil bags. Claims 7 and 13, reproduced below,
are illustrative of the claimed subject matter:
7. A method of attaching a straw package to a foil
bag having a triangular cross section, the method
comprising:

providing a plurality of foil bags having a base and
a first side wall comprising a first film and a
second side wall comprising a second film, the
first wall being connected to the second wall at an
acute angle therewith, the first film including a
plurality of first side edges overlapping and
adhered to a plurality of second side edges of the
second film, the first film having a first top edge
connected to a second top edge of the second film,
the base being connected to a bottom edge of the
first film and to a bottom edge of a second film;
wherein the foil bags are constructed to stand with
the base located toward the bottom of the foil bag;

2 This application was subject to a prior appeal directed to claims 1-6, which
have been canceled from the application. A copy of the decision can be
found in the prosecution file history of the underlying application.
Appeal 2010-002522
Application 09/690,409

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providing a plurality of straw packages having an
adhesive thereon and a cover strip covering the
adhesive;

positioning each of the foil bags on a conveyor belt
such that the foil bag lies on the conveyor belt on
the first side wall, so that the second side wall is at
an acute angle with the conveyor belt;

removing the cover strip from the plurality of
straw packages and exposing the adhesive;

providing a lever having a depressing arm and a
pivoting arm;

rotating the pivoting arm of the lever to displace
the depressing arm downward toward the conveyor
belt to apply one straw package onto the second
side wall at an acute angle to the conveyor belt
such that the adhesive of the straw package
contacts the second side wall.

13. An apparatus for applying straw packages onto
bags having a first rectangular film piece
connected to a second rectangular film piece
along three edges thereof, the foil bag also having
a base connected to a bottom edge of the first
rectangular film piece and to a bottom edge of the
second rectangular film piece such that the foil bag
has a triangular cross section, the apparatus
comprising:

a conveyor belt constructed and arranged to
convey a plurality of bags;

a straw package supplying assembly for supplying
a plurality of straw packages having an adhesive
thereon;
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Application 09/690,409

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a transfer assembly positioned above the conveyor
belt,

the transfer assembly constructed and arranged to
receive a plurality of straw packages from the
straw package supply assembly,

the transfer assembly having a straw retaining
member constructed and arranged to retain the
straw packages at an acute angle to the conveyor
belt such that the adhesive faces the conveyor belt,
the transfer assembly also including a straw
applying member having a depressing arm and a
pivoting arm, wherein rotating the pivoting arm of
the lever displaces the depressing arm downward
toward the conveyor belt to displace a straw
package away from the retaining member and to
apply the straw package onto one of the plurality
of bags.

THE REJECTIONS
The Examiner has rejected claims 7, 9 and 11-14 under 35 U.S.C.
§ 103(a) as being unpatentable over Geyssel (US 4,584,046, issued April 22,
1986) in view of Wild (US 4,572,758, issued February 25, 1986)
ISSUES
Whether the Examiner erred in concluding that the method and system
for applying straw packages set forth in claims 7, 9, 11, 12 and 14 would
have been obvious over Geyssel in view of Wild?
Whether the Examiner erred in concluding that the apparatus for
applying straw packages set forth in claim 13 would have been obvious over
Geyssel in view of Wild?
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Application 09/690,409

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ANALYSIS
The Examiner found, in reaching the conclusion that the claims would
have been obvious, that
. . . Geyssel clearly teaches and suggests that the
apparatus and method discloses [sic] by Geyssel
can accommodate the containers of any material
and shapes (packages, bottles, bags, etc., &
packages, bottles or other objects) and those
containers can be placed on the conveyor in any
desired angular position - in other words, the
container can be placed on the conveyor from an
upright position all the way down to laying with
one side flat on the conveyor.
(Ans. 9).
Appellants note that all claims, with the exception of claim 13, are
directed to a straw application process or system in which the bags to which
the straws are to be applied are moved on a conveyor belt lying on their
sides, and that Geyssel does not disclose, and would require substantial
reconstruction and modification, in order to operate to apply straws to foil
bags conveyed in a lying position. (Appeal Br. 26-27). We agree with
Appellants that, contrary to the Examiner’s interpretation, the Geyssel patent
does not fairly teach or suggest a method or system for applying straws to
packages that are conveyed with one side laying on the conveyor belt, so as
to be in a lying position.
The Examiner’s position quoted above, in particular the assertion that
the containers in Geyssel can be placed on the conveyor “in any desired
angular position - in other words . . . from an upright position all the way
down to laying with one side flat on the conveyor”, is based principally on
language found in the Abstract and at column 2, lines 19-31, in Geyssel.
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(Ans. 8-9). The Abstract notes that “[t]he applicator device (10) can be
tilted about two perpendicular directions . . . in order that the drinking straws
(11) can be secured in different directions and on variously inclined surfaces
of the package (12).” (Geyssel, Abstract). The passage at column 2 of
Geyssel essentially repeats that the applicator device can be tilted about two
perpendicular axes, so as to be “tipped” in several directions, and discloses
that the “applicator element can be placed in any desired angular position
against the objects to which the articles are to be secured.” (Geyssel, col. 2,
ll. 19-31).
Notwithstanding the relatively ambitious language appearing in the
Geyssel patent, Geyssel never expressly discloses that the apparatus would
be suitable for use in conveying packages lying on their sides (as is
intimated by the Examiner), and being capable of applying straw packages
to the exposed side surfaces of the packages. It is clear from viewing the
drawings of the Geyssel apparatus, and Figures 1 and 9 in particular, that the
usable range of tilting motion around axis 16 is quite limited. For example,
in Figure 9, were the carrier 14 and applicator wheel 20 rotated clockwise
any more than is actually shown in that figure, at least the lower of the
forked arms 41 (see Fig. 7) would move downwardly relative to conveyor
belt 13 to a position where it would essentially be useless, and both the
lower part of the applicator wheel 20 and arm 41 would, at some fairly small
angle β, appear to physically interfere with the conveyor belt 13.
Accordingly, we can not support the Examiner’s finding that Geyssel
clearly teaches and suggests a method or system in which the containers may
be placed on the conveyor in any desired angular position, that is, from an
upright position all the way down to laying with one side flat on the
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conveyor. Appellants have the better argument here, that substantial
modification of the Geyssel apparatus would appear to be necessary in order
to perform a method of applying straw packages to bags which are conveyed
while lying on their side.
We will thus not sustain the rejection of claims 7, 9, 11, 12 and 14 as
being unpatentable over Geyssel and Wild.
Claim 13 is an apparatus claim that does not positively recite the
provision of bags. Accordingly, Appellants’ arguments directed to the
nonobviousness of providing a method or system of applying straw packages
to bags lying on their sides are unavailing here.
Appellants’ principal argument for the patentability of claim 13 is that
the combined teachings of Geyssel and Wild do not disclose or suggest the
claimed “transfer assembly . . . including a straw applying member having a
depressing arm and a pivoting arm, wherein rotating the pivoting arm of the
lever displaces the depressing arm downward toward the conveyor belt” to
displace the straw package and apply it onto a bag. (Appeal Br., Claims
Appendix, Claim 13). In support of their position, Appellants contend that:
Geyssel is directed to applying straws to the
packages from the side rather than the top and does
not teach and has no reason to suggest the use of a
depressing arm that exerts a downward motion as
claimed.
(Reply Br. 12).

Geyssel . . . does not teach or suggest any rotation
of carrier 14 such that the straws are applied to the
packages from the top using a downward moving
arm
(Reply Br. 13).

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[T]here is no teaching or suggestion in Geyssel
that the carrier may be repositioned so that the
wheel is suspended over the package.
(Reply Br. 14).
These arguments are unavailing as well. Claim 13 does not explicitly
or implicitly require that the apparatus must apply the straws to the packages
from the top, nor that the transfer assembly or straw retaining member be
positioned such that it is suspended over the top of the package. Appellants
appear to contend that the claim language requiring that the transfer
assembly is to be positioned “above the conveyor belt” and that the
depressing arm is displaced “downward toward the conveyor belt”
necessitate that the claim be interpreted in that more restrictive manner.
While Appellants’ disclosed preferred embodiment applies the straws
from the top, and has the transfer assembly positioned over the top of the
package, we agree with the Examiner that to construe claim 13 so
restrictively would amount to reading limitations from the Specification into
the claims. The Examiner points out that, in the Geyssel apparatus as
illustrated in Figure 1 (as well as in Figures 7-9), the transfer assembly or
wheel 20 of carrier 14 is positioned at a higher elevation than is the
conveyor belt, thus meeting the claim limitation that the transfer assembly
be positioned “above [at a higher elevation than] the conveyor belt.” (Ans.
4).
The Examiner further maintains that the depressing arm 40, 41 of
Geyssel is fully capable of being displaced toward the conveyor belt. (Ans.
11-12). That assertion is supported by viewing the Geyssel apparatus in the
position illustrated in Figure 9. There, because the wheel is tilted to be at an
acute angle to the conveyor belt, a person of ordinary skill in the art would
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readily understand that, as arms 40, 41 are displaced away from wheel 20 to
apply a straw to a container, the movement of the arms will have a
downward component in the direction of the conveyor belt. Stated another
way, the planes in which the movement of arms 40, 41 lie intersect the plane
of the upper surface of the conveyor belt, and thus there is movement or
displacement of the arms toward the conveyor belt. The claim as written
does not require movement from directly atop the conveyor belt, nor
perpendicular downward movement, as apparently is Appellants’ position.
We are thus not persuaded of error in the Examiner’s conclusion that
the subject matter of claim 13 would have been obvious in view of Geyssel
and Wild. The rejection of that claim will be sustained.
CONCLUSIONS
The Examiner erred in concluding that the method and system for
applying straw packages set forth in claims 7, 9, 11, 12 and 14 would have
been obvious over Geyssel in view of Wild; and the Examiner did not err in
concluding that the apparatus for applying straw packages set forth in claim
13 would have been obvious over Geyssel in view of Wild.
DECISION
The decision of the Examiner to reject claims 7, 9, 11, 12 and 14 is
REVERSED. The decision of the Examiner to reject claim 13 is
AFFIRMED.
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) (2007).

AFFIRMED-IN-PART
Appeal 2010-002522
Application 09/690,409

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