Ex Parte Wilfong

Board of Patent Appeals and Interferences

Jun 23, 2009

10760925 (B.P.A.I. Jun. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HARRY B. WILFONG Jr.
____________

Appeal 2009-003269
Application 10/760,925
Technology Center 3600
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Decided1: June 24, 2009
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Before JAMESON LEE, SALLY C. MEDLEY and
MICHAEL P. TIERNEY, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 10/760,925

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A. STATEMENT OF THE CASE
Hilex Poly Co., LLC, (“Hilex”) the real party in interest, seeks review
under 35 U.S.C. § 134(a) of a Final Rejection of claims 1-25 and 27-31. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.
References Relied on by the Examiner
Beasley et al. (“Beasley”) 5,562,580 Oct. 8, 1996
Phelps et al. (“Phelps”) 6,230,929 May 15, 2001
Simhaee 6,230,953 May 15, 2001
Chen 6,557,723 May 6, 2003

Rejections on Appeal
The Examiner rejected claims 1-8, 10, 11 and 14-22 under 35 U.S.C.
§ 102(b) as anticipated by Chen.
The Examiner rejected claims 12, 13, 23, 24, 28 and 29 as
unpatentable under 35 U.S.C. § 103(a) over Chen.
The Examiner rejected claim 28 as unpatentable under 35 U.S.C. §
103(a) over Chen and Phelps.
The Examiner rejected claims 9, 27, 30 and 31 as unpatentable under
35 U.S.C. § 103(a) over Chen and Simhaee.
The Examiner rejected claim 25 as unpatentable under 35 U.S.C. §
103(a) over Chen and Beasley.
The Invention
Hilex discloses, referring to Hilex’s figure 2 reproduced below
[numbers from figure 2 inserted], a dispensing apparatus [10] for a packet
[P] of plastic bags. The dispensing apparatus includes a housing [12], a bag
mount [20] and an opening [22]. The mouth portion of the packet of bags is
accessible through the opening [22], while the lower portion of the packet of
bags is located in the housing and not readily accessible. Spec. 5-7.
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Hilex’s figure 2 is below:

Figure 2 depicts a plastic bag dispensing apparatus.
Claim 1, reproduced from the Claim Appendix of the Appeal Brief,
reads as follows:
A dispensing apparatus for a packet of plastic bags, the
packet having a mouth portion at which open ends of the bags
are located, the mouth portion defining severable support means
for the packet, the dispensing apparatus comprising:
a bag mount structured and arranged to engage the severable
support means of the packet of bags so as to secure the packet
to the bag mount; and
a housing connected to the bag mount, the housing defining
an opening in a side of the housing proximate the bag mount
such that the packet secured by the bag mount has the mouth
portion of the packet aligned with the opening in the housing
and a lower portion of the packet is contained in the housing,
whereby the mouth portion of the packet is accessible through
the opening in the housing to allow bags to be removed one at a
time from the packet while the housing substantially prevents
access to the lower portion of the packet,
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wherein the housing comprises a rear portion and a front
cover connected to the rear portion, the front cover being
pivotally attached to the rear portion so as to be movable
between an open position providing access to an interior of the
housing so that a lower portion of a packet of bags hanging
from the bag mount can be received in the interior of the
housing, and a closed position in which the housing
substantially encloses the lower portion of the packet of bags.

B. ISSUE
Has the Examiner incorrectly found that Chen describes a dispenser
for plastic bags where the mouth portion of the packet of plastic bags is
accessible through an opening in the housing while the housing substantially
prevents access to the lower portion of the packet of plastic bags?
C. FINDINGS OF FACT (“FF”)
1. A “mouth” is defined as: “[t]he opening through which a container is
filled or emptied.” THE AM. HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE (4th ed. 2004).
Hilex’s Specification
2. Hilex discloses “[t]he mouth portion is the portion of the packet at
which the open ends or mouth ends of the bags are located.” Spec. 5.
3. Hilex discloses “[a] bag packet typically has severable support means
at the mouth portion.” Spec. 5.
4. Hilex’s independent claims 1, 14, 30 and 31 each define the packet of
plastic bags as “having a mouth portion at which open ends of the
bags are located . . . ” and “the mouth portion defining severable
support means for the packet . . . .” Claim App’x. 19, 21, 23-24.
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Chen
5. Chen describes, referring to Chen’s figure 3 reproduced below
[numbers from figure 3 inserted], a storing box for storing plastic
bags [40] that includes first and second housing halves [1], [2]
defining an inner space [5]. Col. 2, ll. 23-25.
Chen’s figure 3 is below:

Figure 3 depicts a plastic bag dispensing system.
6. First housing half [1] has a hook member [16] projecting from the rear
wall [11] that extends through holes [410] in the plastic bags [40] and
second housing half [2] has a front opening [26] formed in the front
wall [21] for access to the inner space [5] and the plastic bags [40].
Col. 2, ll. 25-39.
7. Chen describes, referring to Chen’s figure 7 reproduced below
[numbers from figure 7 inserted], the inner space [5] is separated into
front [51] and rear [52] spaces by a limiting plate [3] disposed
between the first [1] and second [2] housing halves. Col. 2, ll. 40-44.
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Chen’s figure 7 is below:

Figure 7 depicts a plastic bag dispensing system.
8. The bottom end [34] of limiting plate [3] is spaced apart from the
bottom walls [13], [23] of the first and second housing halves [1], [2]
to define a gap [35] that permits the plastic bags to extend
downwardly from the hook member [16] through the rear space [52]
and gap [35] and then turn around bottom end [34] to extend upwardly
into the front space [51]. Col. 2, ll. 40-50.
9. Chen depicts, in figure 7, an opening [26] that allows access to the
lower portion of the packet of plastic bags [40].
10. Chen depicts, in figure 7, the bag openings of the packet of plastic
bags [40] are blocked from access through opening [26] by the walls
of the housing halves [1], [2], the limiting plate [3] and the portion of
the plastic bags [40] folded about the limiting plate [3].
D. PRINCIPLES OF LAW
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
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whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
E. ANALYSIS
Anticipation of claims 1-8, 10, 11 and 14-22 by Chen
Claims 1 and 14 are independent. Claim App’x. 19, 21. Claim 1 is
representative and recites (disputed limitations in italics): “[a] dispensing
apparatus for a packet of plastic bags, the packet having a mouth portion at
which open ends of the bags are located, the mouth portion defining
severable support means for the packet . . . ; a bag mount . . . ; a housing . . .
defining an opening in a side of the housing proximate the bag mount . . . ,
whereby the mouth portion of the packet is accessible through the opening in
the housing to allow bags to be removed one at a time from the packet while
the housing substantially prevents access to the lower portion of the
packet . . . .” Claim App’x. 19. Claim 14 recites nearly identical limitations
as the disputed limitations of claim 1. Compare Claim App’x. 21 with
Claim App’x. 19. The differences in limitations between claims 1 and 14
are of no consequence to our analysis.
The Examiner finds that Chen describes a dispensing apparatus for
plastic bags [40] comprising a hooked bag mount [16], a housing having a
front cover [2] with a front panel with a slot [26] and a rear portion [1] with
the bag mount [16] affixed thereto. Final Rejection 2-3; Ans. 3-4, citing
Chen’s figs. 3-7. The Examiner interprets a mouth portion as the entire
upper half or upper portion of the bag. Ans. 11. The Examiner finds that the
opening [26] in the lower portion of Chen’s housing allows for access to the
packet of bags, enabling one to access the mouth portion of a bag by simply
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pulling on the bag. Ans. 11. The Examiner also finds that the housing
substantially prevents access to the lower portion of the bags by limiting the
area exposed to the user. Ans. 11.
Hilex argues that the Examiner’s regarding the entire top half [42] of
Chen’s bag as the “mouth portion” is incorrect. Reply Br. 3. Hilex argues
that the accepted meaning of “mouth” is “the opening through which a
container is filled or emptied”. Reply Br. 3.
We agree. The Examiner’s regarding as the mouth portion the entire
upper half or portion of the bag is unreasonable. The claim language recites
the packet of plastic bags as “having a mouth portion at which open ends of
the bags are located . . .” and “the mouth portion defining severable support
means for the packet . . . .” Consistent with the claim language, the ordinary
meaning of the term “mouth” is an opening. FF 1. Based on the ordinary
meaning of the term “mouth” and the definition of “mouth portion” in the
claims, one with ordinary skill in the art would not regard the “mouth
portion” of the packet as the entire upper half or upper portion of the packet
of bags. One with ordinary skill in the art would understand the “mouth
portion” of the packet of bags to mean the portion of the packet located at
the bag openings and severable support means.
Hilex further argues that the mouth portion of Chen’s packet is not
accessible through the opening [26] and Chen’s housing [1], [2] does not
substantially prevent access to a lower portion of the packet of bags. App.
Br. 9. Hilex argues that even when individual bags are removed from
Chen’s housing, the mouth portion of the packet of bags remains inside the
housing and is inaccessible through the opening [26]. App. Br. 10. Hilex
further argues that Chen specifically prevents access to the mouth portion of
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the packet of bags while the bags are in the housing. App. Br. 10.
Specifically, Hilex argues that access to the top of Chen’s packet of bags
proximate the hook member [16] is prevented by both the folded lower half
of the packet of bags as well as the limiting plate [3] about which the bags
are folded. App. Br. 10.
Hilex’s arguments are persuasive. Chen does not describe that the
mouth portion of the packet of bags [40] (located at the openings of the bags
and the seam portion [43]) is accessible through the opening [26] while the
housing [1], [2] substantially prevents access to the lower portion of the
packet [40]. To the contrary, Chen describes that the opening [26] in the
housing [1], [2] allows access to the lower portion of the packet of bags [40].
FFs 6, 9. Chen also describes that access to the mouth portion of the packet
of bags [40] through the opening [26] is blocked by the walls of the housing
[1], [2], the limiting plate [3] and the portion of the packet of bags [40]
folded about the plate [3]. FFs 7-8, 10. In addition, the Examiner’s finding
that the opening [26] in Chen’s lower portion of the housing enables one to
access the mouth portion of a bag by simply pulling on the bag does not
address the additional claim limitations. In order to pull on a bag through
the opening [26], a user would have to grasp the lower portions of the bags
through the opening [26]. However, the claim language specifically requires
the mouth portion to be accessible through the opening “while the housing
substantially prevents access to the lower portion of the packet”.
For all these reasons, the Examiner erred in finding claims 1-8, 10, 11
and 14-22 anticipated by Chen.
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Obviousness of claims 12, 13, 23, 24, 28 and 29 over Chen
Claims 12, 13, 23, 24, 28 and 29 are ultimately dependent on
independent claims 1 or 14. Claim App’x. 20-23. Claims 12 and 28 are
representative. Claim 12 recites: “the bag mount is directed generally away
from the front cover [of the housing] such that the packet of bags can be
engaged to the bag mount and folded over the top edge of the rear portion
[of the housing] . . . .” Claim App’x. 20-21. Claim 28 recites: “the front
cover defines the opening . . . , a second opening, and a slot extending
between the openings, the second opening being wider than the slot.” Claim
App’x. 23.
Although the Examiner has phrased the rejection of the claims as
obvious over Chen and the MPEP (Manual of Patent Examining Procedure),
we understand the rejection as based on Chen alone, with the MPEP simply
providing guidance for the supporting rationale. Final Rejection 3; Ans. 4.
Specifically, the Examiner relies on portions of the MPEP for the
proposition that aesthetic design changes, variations in shape and
rearrangement of parts are not patentable so long as they do not produce any
unexpected results. Final Rejection 3; Ans. 4. The Examiner finds that
Hilex admits in its Specification disclosure that there are obvious design
variations for the claimed embodiment. Final Rejection 3; Ans. 4; citing
Spec. p. 10, ll. 1-2. The Examiner finds that extending the bag mount in a
different direction, so that the bags fold over the rear portion is simply a
rearrangement of parts and aesthetic design choice since it does not change
the utility or operation of the claimed invention. Final Rejection 3; Ans. 4-5.
The Examiner also finds that the shape of the opening on the front cover
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intended for the extraction of plastic bags is an aesthetic design choice.
Final Rejection 3-4; Ans. 5.
As applied by the Examiner, aesthetic design changes, variations in
shape and rearrangement of parts do not make up for the deficiencies of
Chen described before with respect to independent claims 1 and 14.
Rearrangement of parts, aesthetic variations in shape and rearrangement of
parts are not patentable in some circumstances. Here, the Examiner does not
sufficiently explain how to make changes to, or provide a reason for making
changes to, Chen’s plastic bag dispensing system that would result in the
mouth portion of the packet of bags [40] being accessible through the
opening [26] while the housing [1], [2] substantially prevents access to the
lower portion of the packet [40]. Final Rejection 3-4; Ans. 4-5. For these
reasons, in addition to those explained before, the Examiner erred in
determining that claims 12, 13, 23, 24, 28 and 29 would have been obvious
over Chen.
Obviousness of claim 28 over Chen and Phelps
Claim 28 is ultimately dependent on claim 1. Claim App’x. 19, 23.
As applied by the Examiner, Phelps does not make up for the deficiencies of
Chen. Final Rejection 4; Ans. 5-6. For the same reasons explained before,
the Examiner erred in determining that claim 28 would have been obvious
over Chen and Phelps.
Obviousness of claims 9, 27, 30 and 31 over Chen and Simhaee
Claims 9 and 27 are ultimately dependent on claim 1. Claim App’x.
19, 20, 23. Claims 30 and 31 are independent and recite identical limitations
to the disputed limitations discussed before with respect to claim 1.
Compare Claim App’x. 23-24 with Claim App’x. 21. As applied by the
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Examiner, Simhaee does not make up for the deficiencies of Chen. Final
Rejection 4-6; Ans. 6-8. For the same reasons explained before, the
Examiner erred in determining that claims 9, 27, 30 and 31 would have been
obvious over Chen and Simhaee.
Obviousness of claim 25 over Chen and Beasley
Claim 25 is dependent on claim 14. Claim App’x. 23. As applied by
the Examiner, Beasley does not make up for the deficiencies of Chen. Final
Rejection 5; Ans. 6-7. For the same reasons explained before, the Examiner
erred in determining that claim 25 would have been obvious over Chen and
Beasley.
F. CONCLUSION
The Examiner incorrectly found that Chen describes a dispenser for
plastic bags where the mouth portion of the packet of plastic bags is
accessible through an opening in the housing while the housing substantially
prevents access to the lower portion of the packet of plastic bags.
G. ORDER
The decision of the Examiner rejecting claims 1-8, 10, 11 and 14-22
under 35 U.S.C. § 102(b) as anticipated by Chen is reversed.
The decision of the Examiner rejecting claims 12, 13, 23, 24, 28 and
29 as unpatentable under 35 U.S.C. § 103(a) over Chen is reversed.
The decision of the Examiner rejecting claim 28 as unpatentable under
35 U.S.C. § 103(a) over Chen and Phelps is reversed.
The decision of the Examiner rejecting claims 9, 27, 30 and 31 as
unpatentable under 35 U.S.C. § 103(a) over Chen and Simhaee is reversed.
The decision of the Examiner rejecting claims 25 as unpatentable
under 35 U.S.C. § 103(a) over Chen and Beasley is reversed.
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REVERSED

ack

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