Ex Parte Doll

Patent Trial and Appeal Board

Apr 4, 2016

12833576 (P.T.A.B. Apr. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/833,576 07/09/2010
48940 7590 04/04/2016
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
PaulE. Doll
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1410-97856 6766
EXAMINER
GERRITY, STEPHEN FRANCIS
ART UNIT PAPER NUMBER
3721
MAILDATE DELIVERY MODE
04/04/2016 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
Exparte PAULE. DOLL1
Appeal2014-002830
Application 12/833,576
Technology Center 3700
Before JAMES P. CAL VE, GEORGE R. HOSKINS, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul E. Doll ("Appellant") appeals under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-14. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellant, the Real Party in Interest is Kraft Foods Group
Brands LLC. Appeal Br. 3.
Appeal2014-002830
Application 12/833,576
CLAIMED SUBJECT MATTER
The invention concerns sealingjaws. Spec., Abstract. Claim 1, the
only independent claim, is illustrative of the subject matter on appeal:
1. A pair of mating sealing jaws for forming a seal between
opposing plastic film segments, one of the pair of sealing jaws
having a non-linear sealing surface with between 2 and 8
curvilinear peaks separated by curvilinear valleys and another
of the pair of sealing jaws having a complementary, non-linear
sealing surface.
Appeal Br. 14, Claims App.
REJECTIONS
The claims stand rejected as follows:
I. Claims 1---6, 9-11, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Martin (US 4,682,976, iss. July 28, 1987) and Molander
(US 6,562,166 B2, iss. May 13, 2003).
II. Claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Martin, Molander, and Anderstedt (EP 1241098 Al, pub. Sept. 18, 2002).
III. Claim 12 under 35 U.S.C. § 103(a) as unpatentable over
Martin, Molander, and Eriksson (US 6,379,483 Bl, iss. Apr. 30, 2002).
IV. Claim 13 under 35 U.S.C. § 103(a) as unpatentable over
Martin, Molander, and Boeckmann (US 5,015,223, iss. May 14, 1991).
ANALYSIS
Obviousness over Martin and Molander- Claims 1-6, 9-11, and 14
Appellant presents common argument regarding claims 1---6, 9-11,
and 14 (Appeal Br. 8-13) and, additionally, presents separate argument
regarding dependent claims 2, 3, 5, and 9 (id. at 10). Therefore, we treat
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Application 12/833,576
claim 1 as representative, and claims 4, 6, 10, 11, and 14 stand or fall with
claim 1. Claims 2, 3, 5, and 9 stand or fall separately.
Claims 1, 4, 6, 10, 11, and 14
The Examiner finds that Martin discloses a pair of sealing jaws 72, 7 4
with non-linear surfaces having curvilinear peaks separated by curvilinear
valleys, which surfaces are complementary. Final Act. 3. The Examiner
finds that Martin does not disclose that the jaws have between two and eight
peaks, but finds that Molander discloses this limitation. Id. The Examiner
concludes that it would have been obvious "to have modified the number of
curvilinear peaks on the [Martin] sealing surface to have been between two
and eight, as suggested by [Molander], since the number of peaks is
dependent on the width of the material and the desired area to be contacted
by the sealing jaws." Id.
We are unpersuaded by Appellant's argument that Martin and
Molander are non-analogous. Appeal Br. 9. Martin is drawn explicitly to
sealing jaws for forming seals and, as such, is in Appellant's field of
endeavor. Final Act. 3. Molander is drawn to a pair of jaws used to modify
properties of a material, for example, by bonding. See id. at 7; Ans. 4; see
also Molander 10:35-37. Appellant does not contend that bonding and
sealing constitute different fields of endeavor. We recognize Appellant's
argument that "Molander only discloses localized bonding at teeth tips,"
however, the fact that Molander's bond may be discontinuous does not alter
or detract from the explicit disclosure of bonding. Appeal Br. 9, 12-13.
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Application 12/833,576
Therefore, the Examiner's finding that Molander is analogous art is
supported by a preponderance of evidence. 2
Appellant's argument that Molander does not disclose the claimed
sealing jaws or the ability to form seals is equally unpersuasive. Appeal Br.
9; Reply Br. 2. The test for obviousness is what the combined teachings of
the references as a whole would have suggested to those of ordinary skill in
the art, not merely what Molander discloses. In re Keller, 642 F.2d 413, 425
(CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986) ("Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references."). Here, the Examiner relies on Martin as
disclosing the claimed "pair of sealing jaws for forming a seal." Final Act.
3. Molander is relied upon to modify the number of peaks on Martin's
sealing jaws, based on its analogous disclosure of bonding jaws. Id. at 3, 7.
Therefore, whether Molander discloses sealing jaws or the creation of seals
is not dispositive. 3
We recognize Appellant's argument that "the fact that Molander's
horn and anvil structure does not create seals as recited in claim 1 produces a
structural difference therefrom." Reply Br. 2. However, Appellant has not
explained persuasively what "structural difference" is present in the
proposed combination, where Martin teaches sealing jaws with non-linear
sealing surfaces, as claimed, and Molander teaches the claimed number of
2 We note additionally that claim 1 does not recite a "continuous" seal.
3 Appellant's argument that clearances in Molander's apparatus preclude the
formation of a satisfactory seal is equally unpersuasive. Appeal Br. 11. The
Examiner relies on Martin to form a seal. Final Act. 3, 7.
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Application 12/833,576
peaks. Appellant has not articulated persuasively how the structure rendered
obvious by this combination would be incapable of "forming a seal between
opposing plastic film segments."
We are also unpersuaded by Appellant's argument that Molander
teaches away from compression. Appeal Br. 10-11; Reply Br. 3--4. Neither
Appellant's claims nor Specification requires that the claimed seal be
formed by compression. Ans. 3--4. Indeed, Appellant cites to only one
paragraph of the Specification in support of this argument. Appeal Br. 11.
And that paragraph concerns the state of the art, not Appellant's invention.
See Spec. ,-r 3. Therefore, we are not persuaded that the claimed seals require
compression. Nonetheless, even if the claims require compression,
Molander discloses compression. Ans. 3--4; Molander 10:50-54
("Compression 66 combined with ultrasonic energy may cause bonding or
cutting of certain parts of the workpiece.").
We are unpersuaded by Appellant's conclusory argument that "the
proposed modification of Martin with Molander is improper because it
would cause Martin's sealing jaws to be non-functional." Appeal Br. 11.4
Appellant has neither explained persuasively nor cited any compelling
evidence to suggest that Martin's jaws would operate less effectively with
between two and eight peaks.
4 Appellant's argument that "modifying Molander's workpiece to eliminate
the spaces would render both inoperable for their intended purpose" (Appeal
Br. 11) is also unpersuasive because this is not the modification that the
Examiner concluded to have been obvious. See Final Act. 3, 7; see also
Reply Br. 4--5.
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Application 12/833,576
Appellant argues that the claimed sealing jaws have a "low
frequency" of peaks "specifically engineered to achieve desired sealing
properties," in contrast to Martin's jaws having twenty-eight peaks. Id. at
12. Appellant contends that the Examiner's modification of Martin with the
teachings of Molander "ignores common sense and the teachings provided
by Martin. This somehow suggests that X width requires Y sealing peaks.
The Examiner offers no support for this." Id. at 12; Reply Br. 5. Appellant
also contends that the modification "somehow suggests that the width of the
material and the sealing jaws provided by Martin is somehow insufficient,
while the width and jaws provided by Molander are sufficient. This position
cannot be supported." Appeal Br. 13.
We are unpersuaded by this argument. Even if Martin discloses
twenty-eight peaks, as Appellant argues, Appellant has not explained why it
would not have been obvious to modify Martin's sealing jaws to include, for
example, seven peaks, for the purpose of sealing a narrower width of
material, as proposed by the Examiner (for example, when sealing a material
that is one-quarter the width of that disclosed by Martin). Final Act. 7; Ans.
7. Appellant has not explained why, in such a case, a person of ordinary
skill in the art would "simply use the sealing jaws having 28 peaks utilized
by Martin ... rather than modify Martin with Molander." Reply Br. 5.
Therefore, Appellant has not persuaded us that the Examiner's obviousness
conclusion lacks articulated reasoning with rational underpinning. 5
5 We are unpersuaded by Appellant's argument that the combination would
not have been obvious because Molander teaches "bonding spaced lines"
while Martin teaches sealing using the entire face of the jaw. Appeal Br. 13;
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Because Appellant has not persuaded us of error in the Examiner's
rejection of claim 1, we affirm the rejection of claim 1 and claims 4, 6, 10,
11, and 14, for which no separate argument is presented.
Claims 2, 3, 5, and 9
Regarding claims 2, 3, 5, and 9, Appellant argues that the structure
recited in these claims was "ignored" by the Examiner "as allegedly mere
design choice." Appeal Br. 10.
We are persuaded by Appellant's argument. The Examiner does not
provide articulated reasoning with rational underpinning to support the
conclusion that Martin and Molander would have rendered obvious the
subject matter recited in claims 2, 3, 5, and 9. See Final Act. 3-5. Instead,
the Examiner states only that one skilled in the art could modify the
combination of Martin and Molander to achieve the claimed limitations,
without providing any analysis. See, e.g., id. at 3 (concluding that the
modification "is merely a design choice"). This is insufficient.
"' [R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness."' KSR, 550 U.S. at 418 (citing Jn re Kahn, 441F.3d977, 988
(Fed. Cir. 2006)).
The Examiner made no findings regarding the claimed ranges of extra
travel per linear inch, depth and height of valleys and peaks, wavelengths,
Reply Br. 4. This argument does not address the modification proposed by
the Examiner, which modifies only the number of peaks, not the extent of
material sealed by Martin's jaws.
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Application 12/833,576
and stretch marks of claims 2, 3, 5, and 9 to support a determination that the
claimed values are a matter of design choice. For example, the Examiner
did not find the ranges are not critical or that they do not produce improved
or unexpected results over the prior art.
Appellant discloses preferred ranges of these claimed features. Spec.
i-fi-1 21, 26. Appellant discloses examples in which sealing operations were
performed with extra travel, valleys and peaks, and wavelengths within the
claimed ranges. Id. i-fi-133--47. A table of the results of these tests indicates
that high-frequency sealing jaws with these claimed characteristics produced
very little crease in most tests as compared to traditional flat sealing jaws,
and low-frequency sealing jaws produced improved results over traditional
flat sealing jaws. Id. i1 41; see Reply Br. 2-3 (arguing that significant
experimentation and inventive process were involved to produce seal jaws
configured as recited in claims 2, 3, 5, and 9); see also In re Chu, 66 F.3d
292, 298-99 (Fed. Cir. 1995) ("design choice" is appropriate where an
applicant fails to set forth any reasons why differences between the claimed
invention and prior art would function differently); In re Gal, 980 F.2d 717,
719-20 (Fed. Cir. 1992) (claimed structure of logic cells functioned
differently than prior art and therefore was not rendered obvious by that
prior art); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1349 (Fed. Cir.
1984) (where no unique pressure profile arose from the claimed combination
of features, the claimed device did not operate differently than the prior art
and therefore was obvious over prior art).
Therefore, we reverse the Examiner's rejection of these claims.
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Application 12/833,576
Obviousness over Martin and Molander, in further combination with
Anderstedt, Eriksson, or Boeckmann - Claims 7, 8, 12, and 13
Appellant does not present separate argument regarding the rejections
of dependent claims 7, 8, 12, and 13. See Appeal Br. 8-13. Therefore,
Appellant has not apprised us of error in the Examiner's rejections of these
claims and we sustain the Examiner's rejections.
DECISION
The Examiner's rejection of claims 1, 4, 6, 10, 11, and 14 under 35
U.S.C. § 103(a) as unpatentable over Martin and Molander is AFFIRMED;
the Examiner's rejection of claims 2, 3, 5, and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Martin and Molander is REVERSED;
the Examiner's rejection of claims 7 and 8 under 35 U.S.C. § 103(a)
as unpatentable over Martin, Molander, and Anderstedt is AFFIRMED;
the Examiner's rejection of claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Martin, Molander, and Eriksson is AFFIRMED; and
the Examiner's rejection of claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Martin, Molander, and Boeckmann is 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).
AFFIRMED-IN-PART
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