Ex Parte Cerf

Patent Trial and Appeal Board

Nov 27, 2012

11898885 (P.T.A.B. Nov. 27, 2012)

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.
11/898,885 09/17/2007 Alain Cerf 4245
7590 11/28/2012
Sam Silverberg
6820 32nd St. NW
Washington, DC 20015
EXAMINER
GERRITY, STEPHEN FRANCIS
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
11/28/2012 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 ALAIN CERF
____________

Appeal 2010-009996
Application 11/898,885
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and
MICHAEL L. HOELTER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/898,885

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STATEMENT OF THE CASE
Alain Cerf (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting under 35 U.S.C. § 102(b) claims 16
and 17 as anticipated by Stenberg (US 4,050,216, iss. Sep. 27, 1977) and
under 35 U.S.C. § 103(a) claims 1-15 and 18 as unpatentable over Bernard
(US 4,700,528, iss. Oct. 20, 1987) and Stenberg. We have jurisdiction over
this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to “wrapping an article with a heat
shrink film having [a] handle.” Spec. 1, l. 2 and fig. 2.
Claims 1, 6, and 16 are representative of the claimed invention and
read as follows:
1. An apparatus for wrapping an article with a film having a
strip comprising,
means for providing a film having a strip applied to the
film that acts as an handle
means for providing an opening in the film having a strip
prior to heat shrinking the film that would allow one to grip the
handle,
means for wrapping the film having the strip over an the
article so that the strip is enclosed in the wrapping film and the
film is overlapped, and without bonding the overlap, and
means for heat shrinking the wrapped article with non
bonded overlapped film so that the strip will seal to the film in
at least some areas and seal the overlapped film.

6. A process for wrapping an article with heat shrink film
having a strip that acts as a handle comprising,
applying a strip on a film that acts as a handle,
providing openings in the film having a strip prior to heat
shrinking the film that would allow one to grip the handle,
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wrapping the film having the strip over an the article so
that the strip is enclosed in the wrapping film, and the film is
overlapped, and
heat shrinking the wrapped article whereby the strip will
seal to the film in at least some areas.

16. An article wrapped in heat shrink film consisting
essentially of, a strip that acts as a handle that is enclosed in the
wrapping film, and the wrapping film is overlapped, and the
strip is sealed to at leased to some areas of the film, and
openings in the film that would allow one to grip the handle.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
The anticipation rejection based upon Stenberg
The Examiner found that Stenberg discloses overlapping an article
with shrink film 12 including a strip 33 that (1) acts as a handle; (2) “is
enclosed in the wrapping film;” and (3) is sealed without glue to some areas
of the film; and further including openings 26 and 27 that allow gripping of
the handle. Ans. 3; see also Stenberg, col. 3, ll. 4-15 and figs. 3 and 5.
Appellant argues that “Stenberg’s strip is not enclosed in the wrapping
film as defined by the specification” because “Stenberg’s strip is on the
outside of the wrapping film,” whereas “[p]age 1 of the specification defines
that enclosure means that the strip is placed on the inside of the wrapping
material and then wrapping an article so that the strip is enclosed within the
wrapping material.” App. Br. 7. According to Appellant, “[o]ne skilled in
the art would interpret ‘strip enclosed in the wrapping film” in light of the
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specification to mean that the film1 [strip] is placed on the inside of the
wrapping material not on the outside of the film edge.” Reply Br. 4.
At the outset, we note that independent claim 16 is not so limiting as
to require that the strip be placed along the interior length of the wrapping
film, rather than along its edges, as Appellant would have us believe.
Independent claim 16 merely requires “a strip . . . that is enclosed in the
wrapping film.” App. Br., Clms. App’x.
Although we appreciate Appellant’s position that claims are
interpreted in light of the Specification, nonetheless, limitations from the
Specification are not read into the claims. We must be careful not to read a
particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. See Superguide Corp.
v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Here,
Appellant’s Specification does not expressly define the term “enclosure.”
Therefore, we turn to the meaning of the term as it ordinarily would have
been used by one of ordinary skill in the art. In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). We find that an ordinary and
customary meaning of the term “enclose” is “to close in : SURROUND.”
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). Thus, because
Figure 5 of Stenberg shows strip 33 surrounded by overlapping portions 15,
16 of heat shrink film 12, we agree with the Examiner that Stenberg teaches
that strip 33 “is enclosed in the wrapping film,” as called for by independent
claim 16. Ans. 6.
For the foregoing reasons, we sustain the rejection of independent
claim 16 under 35 U.S.C. § 102(b) as anticipated by Stenberg. Since

1 We believe Appellant meant “strip” rather than “film.”
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Appellant does not present any other argument with respect to the rejection
of claim 17 (see App. Br. 7), we likewise sustain the anticipation rejection of
claim 17.

The obviousness rejection based upon Bernard and Stenberg
Independent claim 1 requires “means for heat shrinking the wrapped
article with non bonded overlapped film so that the strip will seal to the film
in at least some areas and seal the overlapped film.” Similarly, independent
claim 6 requires “heat shrinking the wrapped article whereby the strip will
seal to the film in at least some areas.” App. Br., Clms. App’x.
The Examiner found that Bernard discloses all the limitations of
independent claims 1 and 6, but does not disclose “the specific means (as
disclosed in the applicant’s specification or equivalents thereof) for
providing a strip and film as well as heat shrinking bonded and overlapped
film.” Ans. 4. The Examiner further found that Stenberg discloses: “ . . .
supplying a non-bonded strip and film to a machine which overlaps the film
and heat shrinking the film at stations 4 and 5, causing the strip to be sealed
to the film in at least some areas (see figures 1, 2, 5 and 8 and col. 2, line 14
– col. 3, line 15).” Id.
In response, Appellant argues that “[n]either reference teaches
bonding the overlap during heat shrinking,” rather, “[t]hese references
require that the strip be bonded prior to heat shrinking.” App. Br. 4.
The Examiner responds that:
The sealing of the strip to at least some areas
of the film is an inherent feature of the Stenberg
reference. . . . An inherent feature of this shrink
process is that strip (if manufactured from a
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polymer or tape) will also become heated, partially
melting and shrinking in at least the vicinity of the
edges severed by the cutting device 22, thereby
sealing itself to the film. In view of this inherent
feature, the limitation is satisfied.

Ans. 9. Emphasis added.
The Examiner is relying on a theory of inherency to establish that strip
33 of Stenberg is bonded to film 12 during heat shrinking of film 12. In
relying upon the theory of inherency, the Examiner must provide a basis in
fact and/or technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the teachings of
the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).
In this case, the question raised is whether strip 33 of Stenberg necessarily
melts and is bonded to film 12 during heat shrinking of film 12.
While the Examiner correctly points out that during heat shrinking of
film 12, strip 33 also becomes heated, this in no way demonstrates that strip
33 is heated so as to bond with film 12, as the Examiner contends. Just
because strip 33 also gets heated as film 12 passes through heat shrinking
tunnels 4 and 5 of Stenberg, it does not necessarily mean that strip 33 also
bonds with film 12. For example, the temperature in heat shrinking tunnels
4 and 5 may be adequate for shrinking film 12, but may not necessarily be
suitable for bonding strip 33 to film 12. Furthermore, Stenberg specifically
teaches bonding of strip 33 and film 12 by pressing roller 19 against guide
baffle 17 and if needed, application of heat, prior to film 12 entering heat
shrinking tunnels 4 and 5. Stenberg, col. 3, ll. 4-15; Compare Figures 1 and
8 of Stenberg. Therefore, the Examiner’s finding that strip 33 of Stenberg is
bonded to film 12 during heat shrinking of film 12 is mere speculation and
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conjecture based on an unfounded assumption that the temperature in heat
shrinking tunnels 4 and 5 would necessarily cause bonding of strip 33 and
film 12.
Since speculation and conjecture cannot form the basis for concluding
obviousness, the rejection of independent claims 1 and 6, and their
respective dependent claims 2-5, 7-15, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Bernard and Stenberg cannot be sustained. See In re Fine,
837 F.2d 1071, 1076 (Fed. Cir. 1988).

SUMMARY
The Examiner’s decision is reversed as to claims 1-15 and 18 and
affirmed as to claims 16 and 17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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