Ex Parte ActisDownload PDFPatent Trial and Appeal BoardMar 20, 201712626558 (P.T.A.B. Mar. 20, 2017) Copy Citation 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. 12/626,558 11/25/2009 Bradley P. Actis 1144-009.101 2390 22145 7590 03/22/2017 KLEIN, O'NEILL & SINGH, LLP 16755 VON KARMAN AVENUE SUITE 275 IRVINE, CA 92606 EXAMINER CHEUNG, CHUN HOI ART UNIT PAPER NUMBER 3728 NOTIFICATION DATE DELIVERY MODE 03/22/2017 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): KOS_Docketing@koslaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRADLEY P. ACTIS Appeal 2015-0018691 Application 12/626,5582 Technology Center 3700 Before KEVIN W. CHERRY, JAMES A. WORTH, and BRADLEY B. BAYAT, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non- final rejection of claims 14—24, 26—28, and 31—47. Counsel for Appellant appeared for an oral hearing on March 13, 2017. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We AFFIRM-IN-PART. 1 Our decision refers to the Appellant’s Appeal Brief (“Appeal Br.,” filed June 13, 2014) and Reply Brief (“Reply Br.,” filed Nov. 12, 2014), and the Examiner’s Final Office Action (“Final Act.,” mailed Jan. 17, 2014) and Answer (“Ans.,” mailed Sept. 12, 2014). 2 According to Appellant, the real party in interest is H.W.J. Designs for Agribusiness, Inc. (Appeal Br. 1). Appeal 2015-001869 Application 12/626,558 Introduction Appellant’s disclosure relates to a system with a bag for covering a bale of cotton or other fibrous material to protect the bale from damage or contamination during transport, and in some instances to comply with trade requirements (see Spec. 2). Claims 14, 33, and 41 are the independent claims on appeal. Claim 14, reproduced below, is illustrative of the subject matter on appeal: 14. A bag for bagging a pressed bale comprising: a body portion made from a material comprising plastic, nylon, burlap, cotton, or combinations thereof having a bottom end, opposed first and second panels each comprising an exterior surface and an interior surface extending from the bottom end and opposed first and second side panels extending from the bottom end and connecting the first and second panels; the bottom end, the first and second panels, and the first and second side panels defining a receptacle space and defining an open end located opposite the bottom end, the material selected and the open end sized and shaped to receive a pressed bale of fibrous material; a cut portion formed through the first panel and presenting an opening on the exterior surface and the interior surface of the first panel for receiving a probe to lift the body portion, the cut portion positioned at a location on the first panel nearer the open end of the bag than the bottom end of the bag; and wherein when the open end is closed, the interior surface of the first panel around the opening of the cut portion is in contact with and covered by the interior surface of the second panel and the cut portion is flushed with the exterior surface of the first panel. (Appeal Br., Claims App.) 2 Appeal 2015-001869 Application 12/626,558 Rejections on Appeal The Examiner maintains, and the Appellant appeals, the following rejections: I. Claim 38 stands rejected under (pre-AIA) 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. II. Claims 14, 16, 17, 19, 21—24, 26, 27, and 31 stand rejected under (pre-AIA) 35 U.S.C. § 103(a) as being unpatentable over Appel (US 584,659, iss. June 15, 1897) and McDonald (US 6,148,587, iss. Nov. 21, 2000). IIL Claim 15 stands rejected under (pre-AIA) 35 U.S.C. § 103(a) as being unpatentable over Appel, McDonald, and Evans (US 7,886,904 Bl, iss. Feb. 15, 2011). IV. Claims 17, 19, 26, 27, 31, 33—36, 39—42, 45, and 46 stand rejected under (pre-AIA) 35 U.S.C. § 103(a) as being unpatentable over Appel, McDonald, and Tang (US 2005/0031229 Al, pub. Feb. 10, 2005). V. Claim 18 stands rejected under (pre-AIA) 35 U.S.C. § 103(a) as being unpatentable over Appel, McDonald, Evans, and Buske (US 3,524,782, iss. Aug. 18, 1970). VI. Claim 20 stands rejected under (pre-AIA) 35 U.S.C. § 103(a) as being unpatentable over Appel, 3 Appeal 2015-001869 Application 12/626,558 McDonald, and Tan (US 7,093,978 B2, iss. Aug. 22, 2006). VII. Claim 28 stands rejected under (pre-AIA) 35 U.S.C. § 103(a) as being unpatentable over Appel and Harriss (US 983,492, iss. Feb. 7, 1911).3 VIII. Claim 32 stands rejected under (pre-AIA) 35 U.S.C. § 103(a) as being unpatentable over Appel and Muckenfuhs (US 4,966,286, iss. Oct. 30, 1990). IX. Claims 37, 38, 43, and 44 stand rejected under (pre-AIA) 35 U.S.C. § 103(a) as being unpatentable over Appel, McDonald, Tang, and Tan. X. Claim 47 stands rejected under (pre-AIA) 35 U.S.C. § 103(a) as being unpatentable over Appel, McDonald, and Tang, and Evans. ANALYSIS Rejection I (Definiteness) Dependent claim 38 Appellant does not appeal the Examiner’s rejection of claim 38 under § 112, second paragraph. We, therefore, affirm the Examiner’s rejection with respect thereto. Rejection II (Obviousness) Independent claim 14 and dependent claims 16, 17, 19, and 21—24 3 The Final Office Action refers to US 988,492, but Appellant understands this to be a typographical error, and that the Examiner intended to refer to US 983,492 (Appeal Br. 34 n.4). We agree, and we regard this as an inadvertent typographical error. 4 Appeal 2015-001869 Application 12/626,558 Appel discloses a paper bag with string-hole 2 and flap 4 at the base of string-hole 2. Appellant argues that the Examiner’s proposed modification to remove flap 4 of Appel is contrary to the teaching of Appel that ...the turning back of the flap 4 along the base of the hole where the string is engaged and the weight of the bag is suspended forms a reinforcing transverse fold which materially increases the strength of the edge about the hole for all purposes and makes it much less liable to be tom out than a plain unsupported edge would be. Appel, p. 1, col. 1,11. 44—51 (discussed in Appeal Br. 8). We agree with Appellant and determine that Appel teaches away from removal of flap 4, i.e., to prevent the paper from being tom. We note that it is unclear from the Examiner’s rejection whether the Examiner proposes to remove flap 4 from Appel for purposes of the rejection of independent claim 14, although it is clear that the Examiner proposes to remove flap 4 for purposes of the rejection of dependent claim 24 (see Final Act. 4—5; Ans. 2). We address the two possibilities in turn, i.e., (1) a combination of Appel and McDonald without removing Appel’s flap 4 and (2) a combination of Appel and McDonald removing Appel’s flap 4. First, to the extent that the Examiner does not propose removing Appel’s flap 4 (see Ans. 2), Appellant argues that the proposed combination fails to disclose the limitation of the “wherein” clause, i.e., the interior surface of the first panel around the opening of the cut portion is in contact with and covered by the interior surface of the second panel and the cut portion is flushed with the exterior surface of the first panel 5 Appeal 2015-001869 Application 12/626,558 (Appeal Br. 8—10). Appellant asserts that Appel’s flap 4 would prevent contact between the interior surface of the first panel around the opening in the cut portion and the interior surface of the second panel. We are persuaded by this argument (id.). The Examiner reasons that the claim phrase “around the opening” is broad enough to encompass contact between the first and second panels even if it is “not at the vicinity” of the opening (Ans. 2). We disagree with the Examiner’s construction because it would render the claim phrase “around the opening” redundant and superfluous. We, therefore, understand “around the opening” in the context of the claim as a whole, and the Specification in which it resides, to mean “immediately adjacent the opening.” As such, we agree with Appellant that Appel’s flap 4, if left intact, would prevent the combination of Appeal and McDonald from meeting the “wherein” limitation. Second, to the extent that the Examiner proposes to remove Appel’s flap 4, the Examiner must overcome the teaching away from Appel, discussed above. The Examiner reasons that (a) the materials in modem use are more robust than the paper used in 1897 in Appel and (b) McDonald teaches the use of thermoplastic material, which is stronger than the paper material used by Appel (Final Act. 4; Ans. 2). The Examiner reasons that it would have been obvious to eliminate Appel’s flap 4 because the flap would not have been necessary when stronger material is used (Ans. 3). The Examiner further relies on the principle of design choice for making modifications to Appel’s bag, e.g., to the size of the bag and the shape of the cutouts, and relies on the level of skill in the art (Final Act. 4—5). Appellant argues that if the motivation of a person of ordinary skill in combining Appel and McDonald is to strengthen the bag, as argued by the Examiner, 6 Appeal 2015-001869 Application 12/626,558 then a person of ordinary skill would leave the flap, as taught by Appel, for this very purpose (see Reply Br. 6) and that the Examiner has engaged in hindsight reasoning without taking into account the stresses on the bag (Appeal Br. 14). We agree with Appellant that the Examiner’s reasoning for the proposed modification of Appel is difficult to distinguish from a hindsight reconstruction of independent claim 14. In particular, the Examiner has provided a rationale for the substitution of the material of McDonald for the material of Appel but has not provided a rationale per se for the removal of Appel’s flap. To the extent that the Examiner relies on design choice for the various proposed modifications to the size and shape of Appel’s opening, we do not regard this as more than a conclusory rationale, particularly in view of the teaching away of Appel and the countervailing design considerations submitted by Appellant.4 We, therefore, do not sustain the Examiner’s rejection of independent claim 14 under § 103 over Appel and McDonald. For similar reasons, we do not sustain the Examiner’s rejection under § 103 over Appel and McDonald of claims 16, 17, 19, 21—24, 26, 27, and 31, which each ultimately depend from claim 14. Rejections III—X (Obviousness) The remaining obviousness rejections are subject to the same deficiencies as that of independent claim 14 over Appel and McDonald. 4 We do not address the remainder of Appellant’s arguments. In the event of future prosecution, we encourage the Examiner to review the arguments and record of this proceeding. 7 Appeal 2015-001869 Application 12/626,558 Accordingly, we do not sustain the remaining obviousness rejections for the same reasons. DECISION The Examiner’s decision to reject claim 38 under § 112, second paragraph, is affirmed. The Examiner’s decision to reject claims 14—24, 26—28, and 31—47 under § 103 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation