Ex Parte Actis

Patent Trial and Appeal Board

Mar 20, 2017

12626558 (P.T.A.B. Mar. 20, 2017)

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.)
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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,
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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.
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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
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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,
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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.
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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
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