Petar Varbanov

Patent Trials and Appeals Board

Jul 17, 2019

14654297 - (D) (P.T.A.B. Jul. 17, 2019)

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.
14/654,297 06/19/2015 Petar Varbanov 3712036-02436 6909
29157 7590 07/17/2019
K&L Gates LLP-Chicago
P.O. Box 1135
CHICAGO, IL 60690
EXAMINER
THOMAS, KAREEN KAY
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
07/17/2019 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PETAR VARBANOV
____________________

Appeal 2018-0090031
Application 14/654,2972
Technology Center 3700
____________________

Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Petar Varbanov (“Appellant”) seeks our review under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1, 4–7, and 9–26,
which are all the claims pending in the Application. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 Our Decision references Appellant’s Appeal Brief filed March 5, 2018
(“Appeal Br.”), Appellant’s Reply Brief filed September 5, 2018 (“Reply
Br.”), the Examiner’s Answer mailed July 12, 2018 (“Ans.”), and the Final
Office Action mailed August 25, 2017 (“Final Act.”).
2 Appellant identifies Nestec S.A. as the real party in interest. Appeal Br. 2.
Appeal 2018-009003
Application 14/654,297

2
STATEMENT OF THE CASE
Claimed Invention
Appellant’s invention “relates to a flexible pouch having a larger
opening, allowing a better accessibility to its content.” Spec. 1.
Pouch claim 1, kit claim 19, and method claims 23 and 24 are the
independent claims on appeal, and recite substantially overlapping subject
matter. See Appeal Br. 27–30 (Claims Appendix). Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A flexible pouch comprising:
an opening with a first perimeter;
a bottom with a second perimeter, a ratio of the first
perimeter over the second perimeter is from 1.01 to 2;
at least two side walls; and
at least two lateral folding lines, at least one of the at
least two lateral folding lines comprising a lateral welding line,
and the lateral welding line having a length and a first width
near the bottom and a second width near the opening, the first
width is greater than the second width.
Appeal Br. 27, Claims Appendix (emphasis added).

Rejections
The following rejections are before us for review.
Claims 1, 4–7, 9–22, and 24–26 are rejected under 35 U.S.C. § 103(a)
over Geller (US 5,772,332; iss. June 30, 1998). Final Act. 2–7.
Claim 23 is rejected under 35 U.S.C. § 103(a) over Geller and Rogers
(US 2008/0131035 A1; pub. June 5, 2008). Id. at 7.

Appeal 2018-009003
Application 14/654,297

3
ANALYSIS
The Examiner finds that Geller discloses or renders obvious all the
features of claim 1, except for the claimed 1.01–2 range of the ratio of
opening perimeter to bottom perimeter. Final Act. 2–3. As to the claimed
ratio, the Examiner articulates:
It has been held that where the general conditions of a claim are
disclosed in the prior art, discovering the optimum or workable
ranges involves only routine skill in the art. In re Aller, 105
USPQ 233. Therefore, it would have been obvious to one of
ordinary skill within the art, at the time the invention was made,
to employ such a range, as a result of wanting the pouch to be a
specific user friendly size. See MPEP 2144.04 (IV).
Id. at 3.
Appellant contends “routine optimization of Geller would not have
led one of skill in the art to reverse the perimeter ratio from less than 1.0 to a
number greater than 1.0, let alone the specifically claimed ratio of 1.01 to 2.”
Appeal Br. 14 (emphasis omitted). Citing MPEP § 2144.05(B) and In re
Antonie, 559 F.2d 618 (CCPA 1977), Appellant argues the “rejection is
contrary to legal precedent which has consistently applied the requirement
that ‘routine optimization’ be based on recognition of the value as a result-
effective variable as established.” Id. at 15.
Rather than addressing Appellant’s argument, the Examiner responds:
[T]here appears to be no criticality for the claimed ratio
presented in the specification or in other evidence on the record.
And while the specification need not disclose proportions or
values as critical for applicants to present evidence showing the
proportions or values to be critical (see e.g. In re Saunders, 444
F.2d 599, 607, 170 USPQ 213, 220 (CCPA 1971)), the
appellant has provided no secondary evidence establishing this
criticality, Applicants can rebut a prima face case of
obviousness by showing the criticality of the range.
Appeal 2018-009003
Application 14/654,297

4
Ans. 11.
There is no dispute that Geller fails to disclose the claimed ratio of
opening to bottom perimeters. By relying on In re Aller, the Examiner’s
proposed obviousness rationale relies on routine optimization of a result-
effective variable. See MPEP § 2144.05(II)(A). The Examiner’s response
supra, which suggests that Appellant “can rebut a prima facie case of
obviousness by showing the criticality of the range,” fails to address
Appellant’s argument as to the Examiner’s failure to establish a prima facie
case in the first place. Because only result-effective variables can be
optimized, Appellant argues the Examiner has misapplied the law by failing
to first establish “‘a variable which achieves a recognized result, before the
determination of the optimum or workable ranges of said variable might be
characterized as routine experimentation.’” Appeal Br. 15 (citing In re
Antonie).
We agree with Appellant on this issue. In cases involving the
optimization of a result-effective variable, “evidence that the claimed . . .
dimensions are result-effective variables” is generally sufficient to “render[]
their optimization within the ordinary skill in the art.” In re Applied
Materials, Inc., 692 F.3d 1289, 1296 (Fed. Cir. 2012) (citing In re Boesch,
617 F.2d 272, 276 (CCPA 1980)). However, “the absence of any disclosure
regarding the relationship between the variable and the affected property
may preclude a finding that the variable is result-effective.” Id. at 1297; see
also In re Antonie, 559 F.2d at 620 (One exception to “the rule that the
discovery of an optimum value of a variable in a known process is normally
obvious” applies where “the parameter optimized was not recognized to be a
result-effective variable.”).
Appeal 2018-009003
Application 14/654,297

5
Here, the Examiner has made no showing that the ratio of opening to
bottom perimeters is a result effective variable, and the Examiner has failed
to address Appellant’s argument. For example, the Examiner does not point
to any discussion of the effect of the ratio of perimeter sizes on any property
of the pouch. Absent recognition in the prior art of the claimed relationship
as result-effective, the Examiner’s findings are not sufficient to establish a
prima facie case of obviousness. In re Antonie, 559 F.2d at 620. Therefore,
the Examiner has provided insufficient reasoning as to why a person of
ordinary skill in the art at the time of the invention would have further
modified the already-modified pouch in Geller to conform to the claimed
ratio.
Accordingly, we do not sustain the rejection of independent claim 1
and dependent claims 4–7 and 9–18 as obvious over Geller. Because
independent claims 19 and 24 recite the same ratio, and the rejection suffers
the same shortcoming as to the obviousness of this ratio in Geller, we do not
sustain the obviousness rejection of claims 19 and 24, and dependent claims
20–22, 25, and 26. The rejection of independent claim 23, which recites the
same ratio, additionally relies on Rogers. But the Examiner has not shown
that Rogers overcomes the shortcomings in Geller. Thus, we do not sustain
the rejection of claim 23 over Geller and Rogers.

DECISION
The rejections of claims 1, 4–7, and 9–26 under 35 U.S.C. § 103(a)
are reversed.
REVERSED