Ex Parte Fergusson et al

Patent Trial and Appeal Board

Oct 25, 2016

12836705 (P.T.A.B. Oct. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/836,705 07/15/2010
23377 7590 10/27/2016
BAKER & HOSTETLER LLP
CIRA CENTRE 12TH FLOOR
2929 ARCH STREET
PHILADELPHIA, PA 19104-2891
FIRST NAMED INVENTOR
Stuart Fergusson
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.
LB5036 US DIV 2756
EXAMINER
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
10/27/2016 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STUART FERGUSSON,
LARIN GODFROY, TONY REID,
JIM SADLER, and DAVID L. SCHIELE
Appeal2015-004833
Application 12/836,705
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 36--40 and 42-44 under 35 U.S.C.
§ 112, iJ 1 for failing to comply with the written description requirement and
under 35 U.S.C. § 103(a) as obvious. Non-Final Act. (February 24, 2014).
Appellants 1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction. 35 U.S.C. § 6(b). For the reasons set forth below, we
AFFIRM.
1 Li qui-Box Corporation is identified as the real party in interest. Appeal
Br. 1.
Appeal2015-004833
Application 12/836,705
BACKGROUND
The '705 Application describes a process for forming a pouch
containing a flowable material, such as juice, milk, or wine. Spec. 1, 12.
According to the Specification, evacuating headspace within the pouch
extends the shelf life of the flowable material by limiting its exposure to
oxygen. Id. at 2.
Claim 36 is representative of the '705 Application's claims and is
reproduced below:
36. A series of pouches, each pouch having an evacuated
headspace containing a flowable material formed according to a
process, said process comprising the steps of:
(A) providing a continuous tube of flexible and sealable
film;
(B) supplying the continuous tube with a predetermined
amount of flowable material;
(C) pinching said continuous tube above a sealing region
so as to form a pinched portion of said continuous tube
. 1 rl" "rl" . h 1nc"'"uu1ng prov1u1ng an evacuation passage t"'""'"at passes
through the pinched portion, said evacuation passage
being formed by controlling the force applied to the
pinched portion;
(D) transversely compressing the continuous tube
beneath said pinched portion with deflating jaws thereby
evacuating said headspace between said pinched portion
and said predetermined amount of flowable material
wherein the air from the headspace passes through said
pinched portion and flow of flowable material there-
through is limited;
(E) releasing said deflating jaws after evacuating said
headspace before sealing said continuous tube; and
(F) sealing said continuous tube at the sealing region to
form a top seal of a previously formed pouch containing
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Application 12/836,705
flowable material and a bottom seal of a next-to-be filled
pouch;
wherein said headspace in each pouch in said series of
pouches has a volume equal to or less than about 4
percent by volume of said pouch; and
wherein said series of pouches has a fill-accuracy,
measured in terms of variability in weight between
pouches of said series of pouches, that is less than about
0.25% standard deviation.
Appeal Br. 16 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 36--40 and 42--44 are rejected under 35 U.S.C. § 112, iJ 1
for failing to comply with the written description requirement.
Ans. 3.
2. Claims 36 and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Murray2 and Rondeau3 or
Condo.4 Ans. 4.
2 WO 04/041656 A2, published May 21, 2004.
3 US 4,887,411, issued Dec. 19, 1989.
4 US 3,381,441, issued May 7, 1968.
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Application 12/836,705
3. Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Murray, Shimizu,5 and Anderson.6
Ans. 7.
4. Claims 39, 40, and 42--44 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Murray and "DINKUM
AUSSIES INVENTION WINE CASK."7 Ans. 8.
5. Claims 36, 37, and 42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sadler,8 Murray, Seward,9
Ylvisaker10 and Rondeau or Condo. Ans. 9.
6. Claims 37 and 42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sadler and Jones. 11
Ans. 15.
7. Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Sadler, Shimizu, Anderson, and Jones.
Ans. 16.
5 JP 08324592 A, published Dec. 10, 1996. We cite an English translation
made of record on October 27, 2010.
6 AU 8810080 A, published July 28, 1988.
7 http://www.dinkumaussies.com/INVENTION/Wine%20Cask.htm made of
record on October 27, 2010.
8 US 5,231,817, issued Aug. 3, 1993.
9 US 6,543,206 B2, issued Apr. 8, 2003.
10 US 4,964,259, issued Oct. 23, 1990.
11 US 6,554,164 Bl, issued Apr. 29, 2003.
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Application 12/836,705
8. Claims 39, 40, 43, and 44 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Sadler and "DINKUM
AUSSIES INVENTION WINE CASK." Ans. 17.
9. Claims 36, 37, and 42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Wirsig, 12 Murray, Seward,
Ylvisaker, and Rondeau or Condo. Ans. 18.
10. Claims 37 and 42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Wirsig and Jones. Ans. 22.
11. Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Wirsig, Shimizu, Anderson, and Jones.
Ans. 23-24.
12. Claims 39, 40, 43, and 44 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Wirsig and "DINKUM
AUSSIES INVENTION WINE CASK." Ans. 25.
DISCUSSION
Appellants argue for the reversal of the rejections to claims 37--40 and
42-44 on the basis of limitations present in claim 36. See Appeal Br. 5-15.
We, therefore, limit our analysis to the rejections to claim 36. Claims 37--40
and 42--44 will stand or fall with claim 36. 37 C.F.R. § 41.37(c)(l)(iv).
Rejection 1. Claim 36 recites the limitation "wherein said series of
pouches has a fill-accuracy, measured in terms of variability in weight
between pouches of said series of pouches, that is less than about 0.25%
standard deviation." This limitation was added to the '705 Application by
way of a January 30, 2014, Amendment. The Examiner rejected claims 36-
12 US 5,038,550, issued Aug. 13, 1991.
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Application 12/836,705
40 and 42--44 under 35 U.S.C. § 112, ii 1 for failing to comply with the
written description requirement, alleging that the limitation is new matter.
Ans. 3.
Appellants argue that "col. 11 of parent application US 7,779,612"
provides sufficient support for the limitation because "the standard deviation
for a 3000-g pouch is 7 g or less than 0.25% in terms of the weight of the
pouch." Appeal Br. 5; see also January 30, 2014, Remarks (citing Spec.
Example 2). Therefore, according to Appellants, "[t]he matter added is not
new matter .... " Appeal Br. 5.
To comply with the 35 U.S.C. § 112, ii 1, written description
requirement, the applicant's specification must "convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she
was in possession of the invention." Carnegie Mellon Univ. v. Hoffmann-La
Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)). The inquiry into
whether the description requirement is met is a question of fact. In re
Wertheim, 541F.2d257, 262 (CCPA 1976).
US 7,779,612, filed as divisional Application 12/074,571, contains no
indication that Appellants were in possession of independent claim 3 6' s
subject matter at the time the '705 Application was filed. The disclosure in
column 11 of US 7,779,612, cited by Appellants as support for their
contention, is identical to the Comparative Example and Example 2 of the
'705 Application's Specification. Spec. 18:24-19: 12. These cited passages
support, at most, that for the 3000 gram pouches produced, a fill-accuracy of
7 gram was reported. According to the cited passages, this single reported
fill-accuracy provides the pouch weight standard deviation. Appellants have
not adequately responded to the Examiner's assertion that the Examples: (i)
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do not clearly support the range of less than about 0.25% in terms of the
pouch weight standard deviation, Ans. 3, and (ii) do not clearly show how
the standard deviation was calculated without any disclosure as to the
particular fill weights or volumes of more than one pouch. See id. at 26-27.
Thus, the Examiner's rejection of claims 36--40 and 42-44 as
containing new matter is supported by a preponderance of the evidence, and
we affirm it.
Rejection 2-Rejection 12. On appeal, Appellants present
substantially similar arguments for reversal of all eleven obviousness
rejections maintained by the Examiner. See Appeal Br. 5-15. We affirm
these rejections based upon the factual findings and reasoning set forth in the
Examiner's Answer, which we adopt. We add the following for emphasis.
In Rejection 2, Rejection 5, and Rejection 9, the Examiner found,
Ans. 4-7; 9-15; and 18-22, that the applied prior art teaches each of the
structural limitations of the product recited in claim 36, namely: (i)
"wherein said headspace in each pouch in said series of pouches has a
volume equal to or less than about 4 percent by volume of said pouch; and"
(ii) "wherein said series of pouches has a fill-accuracy, measured in terms of
variability in weight between pouches of said series of pouches, that is less
than about 0.25% standard deviation."
Appellants argue that Rejection 2 should be reversed because, in
either Murray, Rondeau or Condo, "[t]he necessary steps of Applicants'
process are not taught or suggested, e.g.[,] forming an evacuation passage,
compressing the tube that forms the pouch with deflating jaws to evacuate
the head space and the formation of seals that do not entrap product and are
tight and leak proof." Appeal Br. 6.
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Appellants argue for the reversal of Rejection 5 because the claimed
steps are neither taught nor suggested by Sadler, Murray, Seward, Ylvisaker,
Rondeau, or Condo. Id. at 8-9. Therefore, according to Appellants, a pouch
manufactured according to the primary reference Sadler' s teachings would
exhibit "inferior quality." Id. at 8. In particular, Appellants argue that
"unless the steps 'C', 'D' and 'E' are followed[,] a pouch would not be
formed that has the headspace and fill-accuracy as set forth in Claim 36."
Id.
Appellants argue that Rejection 9 should be reversed because the
claimed steps of (C), (D), or (E) are not taught or suggested by either Wirsig,
Murray, Seward, Ylvisaker, Rondeau, or Condo. Id. at 11. Appellants
further argue that in order "[t]o arrive at Applicants' novel pouch, a person
skilled in the art would need to follow the outlined steps of Claim 36." Id.
at 12.
We are not persuaded by these arguments. As the Examiner found,
Ans. 5-6; 11-12; and 20, iviurray teaches that the headspace is zero, i.e., less
than 4% volume, because Murray's container is 100% product. With respect
to the limitation reciting the requisite fill-accuracy standard deviation range,
the Examiner found Rondeau teaches that it is conventional to have variance
between filled pouches of liquids of less than 0.25%. See, e.g., id. at 6
(citing Rondeau Abstract, 4:19; 4:26); see also Ans. 12, 21. Likewise, the
Examiner found Condo teaches a fill-accuracy that is less than 0.25%
standard deviation for liquid filled pouches. See, e.g., Ans. 6 (citing Condo
9:18-20); see also Ans. 12, 21. Thus, we do not discern reversible error in
the Examiner's findings or in the Examiner's conclusion that the applied
prior art would have suggested the claimed series of pouches, each pouch
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having an evacuated headspace containing a flowable material with the
requisite headspace and fill-accuracy as set forth in Claim 36.
Appellants assert that "unless the steps 'C', 'D' and 'E' are
followed[,] a pouch would not be formed that has the headspace and fill-
accuracy as set forth in Claim 36." See, e.g., Appeal Br. 8; see also Appeal
Br. 5, 6, 12, and 15. In so doing, Appellants are relying upon product-by-
process limitations regarding the manufacture of the series of pouches. It
has long been the law that such limitations do not add a patentable
distinction when the claimed product is the same as the cited art's product.
See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) ("[E]ven though
product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself."). Appellants
do not point to any evidence that the methods used to produce the series of
pouches described in the applied prior art effect the properties of headspace
accuracy and fill-accuracy variability of each pouch. Without such
evidence, this assertion is not persuasive. See Estee Lauder Inc. v. L 'Orea!,
S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) ("[A]rguments of counsel cannot
take the place of evidence lacking in the record.").
CONCLUSION
For the reasons provided in the Examiner's Answer, and above, we
affirm the rejections of claims 36--40 and 42-44 of the '705 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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