Ex Parte Bezek et al

Patent Trial and Appeal Board

Oct 26, 2017

14153810 (P.T.A.B. Oct. 26, 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.
14/153,810 01/13/2014 Edward Anthony BEZEK CFLAY.00919 1064
110933 7590
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
EXAMINER
LAN, YAN
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
10/27/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD ANTHONY BEZEK,
ANTHONY ROBERT KNOERZER, and STEVEN KENNETH TUCKER
Appeal 2017-002013
Application 14/153,810
Technology Center 1700
Before: ROMULO H. DELMENDO, JENNIFER R. GUPTA, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
1 In our Opinion, we refer to the Specification filed January 13, 2014
(“Spec.”); the Final Action mailed November 12, 2015 (“Final Act.”); the
Advisory Action mailed January 21, 2016 (“Adv. Act.”); the Appeal Brief
filed April 7, 2016 (“Appeal Br.”); the Examiner’s Answer mailed
September 22, 2016 (“Ans.”); and the Reply Brief filed November 18, 2016
(“Reply. Br.”).
Appeal 2017-002013
Application 14/153,810
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—3 and 5.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to food packages made from partially
metallized packaging film. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A food package made from a partially metallized
packaging film comprising:
product viewing window comprising a section of
unmetallized transparent packaging film and defined by
two partially metallized translucent film strips on
opposite sides of said product viewing window, and
two product package graphics on opposite sides of
said product viewing window.
Appeal Br. 12 (Claims App’x) (some paragraphing and indentation added
for clarity).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Tomita et al. (“Tomita”) US 3,887,744 June 3, 1975
Knigge et al. (“Knigge”) US 2003/0044492 Al Mar. 6, 2003
Ramchandra et al.
(“Ramchandra”)
US 2005/0170161 Al Aug. 4, 2005
2 Appellant is the applicant, Frito-Lay North America, Inc. , which according
to the Appeal Brief, is also the real party in interest. Appeal Br. 2.
3 Claims 6—15 are withdrawn by the Examiner pursuant to 37 C.F.R.
§ 1.142(b) as drawn to nonelected inventions. Final Act. 2.
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REJECTIONS
The Examiner maintains and Appellant seeks review of the rejections
under 35 U.S.C. § 103(a) of (1) claims 1 and 5 over Ramchandra in view of
Knigge; and (2) claims 2 and 3 over Ramchandra in view of Knigge and
Tomita. Final Act. 4 and 9; Appeal Br. 4.
OPINION
Appellant argues for the reversal of the obviousness rejection of
claims 1—3 and 5 on the basis of limitations present in independent claim 1.
See Appeal Br. 5—10. We, therefore, limit our analysis to claim 1. Claims 2,
3, and 5 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
With respect to claim 1, the Examiner finds that Ramchandra teaches
a food package made from a partially metallized packaging film comprising
partially metallized translucent films. Final Act. 5. The Examiner finds that
Knigge teaches a food package comprising unmetallized transparent
packaging film. Id. The Examiner also finds that Knigge teaches inclusion
of package graphics for product identification. Id. at 7. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
at the time of the invention to (1) modify the package of Ramchandra to
include a product viewing window provided with Knigge’s transparent film
for the benefit of providing the consumer with improved view and visibility
to view the package product; (2) place the viewing window in the center of
the package, as taught by Knigge, such that two partially metallized
translucent film strips are on opposite sides of the product viewing window;
and (3) include package graphics to provide necessary product identification
and meet the aesthetic design need. Id. at 6—7.
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Application 14/153,810
Appellant makes several arguments for patentability of claim 1.
Appeal Br. 7—10. We address these arguments in turn.
Appellant argues that Knigge teaches away from use of a transparent
viewing window in any package other than an opaque package. Id. at 7.
Appellant contends that Knigge’s disclosure of a transparent viewing
window is only in the context of an opaque bag, and the Examiner goes
beyond the disclosure to suggest a bag that is even in-part translucent when a
product viewing window is present. Id. at 7—8.
Teaching away requires that a reference “criticize, discredit, or
otherwise discourage the solution claimed” by Appellant. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). As the Examiner points out, no such
discouragement is found in Knigge. See Ans. 10. One of ordinary skill in
the art at the time of the invention reading Knigge would have reasonably
inferred that the disclosed transparent viewing window could be used in
combination with a translucent bag. In re Preda, 401 F.2d 825, 826 (CCPA
1968) (“[I]n considering the disclosure of a reference, it is proper to take
into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”); see also KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (“[T]he [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”).
In the same vein, Appellant argues that Ramchandra teaches away,
i.e., suggest that a transparent viewing window is unnecessary7 because
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Application 14/153,810
Ramchandra’s translucent film already allows the packaged product to be
visible from the outside. Appeal Br. 8.
Appellant’s argument is not persuasive. One of ordinary skill in the
art at the time of the invention would have understood that a translucent bag,
as taught by Ramchandra, may not provide as clear a view of an enclosed
product as would a transparent window in the bag. “If a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
KSR, 550 U.S. at 417.
Appellant also argues that Knigge discloses a viewing window bound
on all sides by opaque film, thus two of the sides of opaque film that define
the viewing window of Knigge must be replaced with preprinted product
information in order to arrive at the claimed product window. Appeal Br. 8—
9. Appellant states that omission of an element and retention of its function
is an indication of unobviousness. Id. at 9.
Appellant’s statement regarding omission of an element is correct, as
far as it goes. See In re Fleissner, 264 F.2d 897, 900 (CCPA 1959); In re
Edge, 359 F.2d 896, 900 (CCPA 1966). However, Appellant fails to
articulate adequately how the statement applies to the facts of this case to
result in patentability of claim 1. To the extent that Appellant contends that
opaque films sections in Knigge are omitted and their function is replaced by
the claimed partially metallized translucent film strips, we disagree. The
Specification defines “partially metallized packaging film” as “a polymer
film with at least one surface that has at least one area fully coated with a
thin metal layer and at least one area that is either not coated with a thin
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Application 14/153,810
metal layer or that is partially coated with a thin metal layer.” Spec. 147.
Given this definition, claim 1 merely requires, at most, slight modification of
Knigge’s opaque portions, not replacement. It would have been obvious and
within the skill in the art to metallize a portion of a package and leave other
portions transparent.
Appellant also argues that nothing in Knigge or Ramchandra teaches
or suggests how to produce the presently claimed product package. Appeal
Br. 9. This argument is not persuasive of reversible error. The cited prior
art need not teach how to produce the claimed product package, as no
method of manufacture is claimed.
Appellant contends that the arrangement of the elements that define
the claimed product viewing window are not merely aesthetic or design
choices. Id. Appellant argues that “[t]he partially metallized translucent
strips that frame two opposing sides of the product viewing window still
resist moisture and oxygen migration through the package, just not quite as
well as the fully metalized opaque film.” Id.
The Examiner finds that Appellant does not show any results that are
improved compared to the prior art. Ans. 14. The Specification states that
product packages made using partially metallized films, wherein
approximately 80% of the area of the film was metallized, resulted in vastly
improved barrier properties over unmetallized films. Spec. 1 67.
In addition, Ramchandra teaches that metallization of films imparts
additional water vapor, gas and UV barrier properties to the film.
Ramchandra 16. It would have been obvious and within the ordinary skill
in the art at the time of the invention to include a window in a partially
metallized package in order to have some transparency so a consumer could
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Application 14/153,810
view the enclosed product, while retaining barrier properties to preserve
freshness of the package contents. “[T]he [obviousness] analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418.
Appellant contends that a sharp transition between transparent film
and opaque film will show a distinct, distracting line behind the graphics that
are printed on the film. Appeal Br. 5—6. Appellant allegedly solved this
problem by providing a gradual transition from transparent film to opaque
film at the product viewing window boundary. Id. at 6. Appellant argues
that the lack of a distracting line running through the product package
graphics can prevent confusion on the part of a consumer trying to read text
on the printed package, thus the arrangement of elements is not merely
aesthetic. Id. at 10.
However, claim 1 does not require any gradual transition from
transparent film to opaque film at the product viewing window boundary.
Id. at 12. Appellant’s definition of “partially metallized packaging film”
does not require any gradual transition. See Spec, f 47. Nor does claim 1
exclude a package with a sharp transition between the opaque and
transparent film, and Appellant’s argument otherwise is unpersuasive.
We do not consider the Examiner’s findings regarding Hirotsu, as the
Examiner introduced the reference for the first time after the Final Action
was mailed. Hirotsu is not properly of record in the case.
On the record before us, Appellant does not show reversible error in
the Examiner’s rejection of claims 1—3 and 5.
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DECISION
For the above reasons, the Examiner’s rejections of claims 1—3 and 5
are affirmed.
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
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