Robert Olness

Patent Trials and Appeals Board

Jun 1, 2020

15096676 - (D) (P.T.A.B. Jun. 1, 2020)

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.
15/096,676 04/12/2016 Robert C. Olness RBM-001 6515
959 7590 06/01/2020
NELSON MULLINS RILEY & SCARBOROUGH LLP
FLOOR 30, SUITE 3000
ONE POST OFFICE SQUARE
BOSTON, MA 02109
EXAMINER
ATTEL, NINA KAY
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
ipboston.docketing@nelsonmullins.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT C. OLNESS

Appeal 2019-006239
Application 15/096,676
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
ERIC C. JESCHKE, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
non-final decision rejecting claims 1–14 and 16–28. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 “Appellant” refers to the “applicant” under 37 C.F.R. § 1.42. Appellant
identifies himself as the sole real party in interest. Appeal Br. 1.
Appeal 2019-006239
Application 15/096,676

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STATEMENT OF THE CASE
The Specification
The Specification “relates generally to a vertically self-supporting
bag, which can be used in a variety of different ways, e.g., as a container for
refuse.” Spec. ¶1.
The Claims
Claims 1–14 and 16–28 are rejected. Non-Final Act. 1. No other
claims are pending. Id. Claims 1 and 16 are independent. Appeal Br. 18–
21. Claim 1 is illustrative and reproduced below.
1. A bag comprising:
a plurality of independent inflatable enclosures, the
plurality of independent inflatable enclosures being coupled to
one another and configured to collectively form a vertical
structure that extends from a distal end of the bag to a proximal
end of the bag upon inflation of the enclosures;
a floor coupled to said inflatable enclosures at the distal
end of the bag such that said inflatable enclosures are, once
inflated, substantially perpendicular to the floor and form, in
combination with the floor, a vertically self-supporting
container; and
a deflation strip coupled to at least one of the inflatable
enclosures on an outer surface of the bag and configured to
deflate the at least one inflatable enclosure, after inflation, by
generating a tear in the at least one inflatable enclosure.
Id. at 21 (emphasis added).
Appeal 2019-006239
Application 15/096,676

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The Examiner’s Rejections
The Examiner’s rejections, all pursuant to 35 U.S.C. § 103, are:
1. claims 1–6, 10, 14, 16–19, and 23–26 as unpatentable over
Tanaka,2 Koyanagi,3 and Bosman4 (Non-Final Act. 2);
2. claim 7 as unpatentable over Tanaka, Koyanagi, Bosman and
Norman5 or Brodsky6 (id. at 8);
3. claims 8 and 9 as unpatentable over Tanaka, Koyanagi,
Bosman, and Reid7 or Lanouette8 (id. at 8–9);
4. claim 11 as unpatentable over Tanaka, Koyanagi, Bosman, and
Sadow9 (id. at 9);
5. claims 12 and 13 as unpatentable over Tanaka, Koyanagi,
Bosman, and Orion10 (id. at 10);
6. claims 20–22 as unpatentable over Tanaka, Koyanagi, Bosman,
and Norman, Brodsky, or Siler11 (id. at 11);
7. claim 27 as unpatentable over Tanaka, Koyanagi, Bosman, and
Sadow (id. at 12); and
8. claim 28 as unpatentable over Tanaka, Koyanagi, Bosman, and
Orion (id.).

2 US 2002/0064319 Al, published May 30, 2002 (“Tanaka”).
3 US 7,066,331 B2, issued June 27, 2006 (“Koyanagi”).
4 US 2011/0103718 Al, published May 5, 2011 (“Bosman”).
5 US 2,462,215, issued Feb. 22, 1949 (“Norman”).
6 US D234,751, issued Apr. 8, 1975 (“Brodsky”).
7 US 2005/0232517 A1, published Oct. 20, 2005 (“Reid”).
8 US 5,407,111, issued Apr. 18, 1995 (“Lanouette”).
9 US 2005/0284791 A1, published Dec. 29, 2005 (“Sadow”).
10 US 2009/0274395 A1, published Nov. 5, 2009 (“Orion”).
11 US 5,346,311, issued Sept. 13, 1994 (“Siler”).
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Application 15/096,676

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DISCUSSION
Rejection 1
Tanaka discloses a “buffer packing bag.” Tanaka ¶1. The Examiner
found that Tanaka teaches much of the subject matter of independent claims
1 and 16. See Non-Final Act. 2–4 (regarding claim 1), 5–7 (regarding claim
16). The Examiner conceded that “Tanaka fails to expressly teach the
inflatable enclosures being vertically self-supporting when inflated.” Id. at
3. The Examiner found that “Koyanagi teaches an analogous inflatable bag
having a plurality of inflatable enclosures that form a vertical structure and
further teaches that it is known in the prior art to configure the bag as a
vertically self-supporting structure when inflated (FIG. 1–4).” Id.
Appellant disputes that Koyanagi teaches or suggests “a vertically
self-supporting container,” as recited in claim 1 (or “vertically self-
supporting” “inflatable bladders” as recited in claim 16). Appeal Br. 11. In
particular, Appellant argues that, although Koyanagi discloses its cells can
be formed in a vertical direction, Koyanagi does not teach or suggest they
are self-supporting in that orientation, let alone to “form . . . a vertically self-
supporting container” (claim 1) or “vertically self-supporting . . . to form at
least a portion of a perimeter of wall of the trash bag” (claim 16). Id. at 13
(citing Koyanagi 2:47–54,12 3:1–12).
The Examiner responds that “Figure 4 of Koyanagi reasonably
discloses and provides clear suggestion to one of ordinary skill in the art that
the cushioning medium is vertically self-supporting when inflated.” Ans. 8.
Appellant has the better position.

12 The Appeal Brief cites “2:4–54” but it appears that 2:47–54 was intended.
Appeal Br. 13.
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Application 15/096,676

5
Figure 4 of Koyanagi is a cross-sectional view of inflated cubiform
cushioning medium (or bag) 4. Koyanagi 3:57–60, 6:39. The inflated bag is
oriented vertically in Figure 4. Id. at Fig. 4. But the bag is not shown by
itself; the bag is shown with a bottle occupying most of its interior. Id. It
requires speculation to find that the Koyanagi bag 4 would support itself in
the vertical orientation as shown in the absence of the bottle. Instead, the
bottle might very well be supporting the bag’s sidewalls, i.e., “lateral
cushioning faces 31, 34” (id. at 1:54–55), from collapsing from their vertical
orientation shown in Figure 4.
The Examiner states that “Appellant fails to provide factual and
persuasive evidence to support that Koyanagi is not vertically self-
supporting when inflated.” See Ans. 8. However, Appellant bears no such
burden. The burden was on the Examiner to prove that the prior art teaches
or suggests the limitation. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992) (“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.”).
For the foregoing reasons, we reverse the rejection of independent
claims 1 and 16 as unpatentable over Tanaka, Koyanagi, and Bosman. For
the same reasons, we likewise reverse the same rejection of dependent
claims 2–6, 10, 14, 17–19, and 23–26. See In re Fine, 837 F.2d 1071, 1076
(Fed. Cir. 1988) (“Dependent claims are nonobvious under section 103 if the
independent claims from which they depend are nonobvious.”).
Rejections 2–8
Each of these rejections explicitly relies on the rejection of claim 1 or
claim 16 as unpatentable over Tanaka, Koyanagi, and Bosman. See, e.g.,
Non-Final Act. 8 (Rejection 2: “Claim 7 is rejected under 35 U.S.C. 103 as
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Application 15/096,676

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being unpatentable over Tanaka in view of Koyanagi and Bosman, as
applied to claim 1 above, and further in view of Norman et al. (US
2,462,215 A, hereinafter Norman) or Brodsky (US D234,751 S).”). Further,
none of these rejections relies on additional prior art in a manner that could
remedy the deficiency noted above.
Accordingly, we reverse Rejections 2–8.
SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–6, 10,
14, 16–19,
23–26
103 Tanaka, Koyanagi,
Bosman
1–6, 10,
14, 16–
19, 23–26
7 103 Tanaka, Koyanagi,
Bosman,
Norman/Brodsky
7
8, 9 103 Tanaka, Koyanagi,
Bosman,
Reid/Lanouette
8, 9
11 103 Tanaka, Koyanagi,
Bosman, Sadow
11
12, 13 103 Tanaka, Koyanagi,
Bosman, Orion
12, 13
20–22 103 Tanaka, Koyanagi,
Bosman,
Norman/Brodsky/Siler
20–22
27 103 Tanaka, Koyanagi,
Bosman, Sadow
27
28 103 Tanaka, Koyanagi,
Bosman, Orion
28
Overall
Outcome
1–14, 16–
28

REVERSED