Ex Parte Ishii

Patent Trial and Appeal Board

Nov 4, 2016

12801473 (P.T.A.B. Nov. 4, 2016)

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.
12/801,473 06/10/2010 Yukio Ishii SIG-047 7508
32628 7590 11/08/2016
KANFSAKA RFRNFR AND PARTNFRN FT P EXAMINER
2318 Mill Road PANCHOLI, VISHAL J
Suite 1400
ALEXANDRIA, VA 22314-2848 ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
11/08/2016 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):
office@uspatentagents.com
docketing @ ipfirm. com
pair_lhhb @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUKIO ISHII
Appeal 2014—008187
Application 12/801,4731
Technology Center 3700
Before LINDA E. HORNER, JEREMY M. PLENZLER, and
THOMAS F. SMEGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Yukio Ishii (Appellant) seeks our review under 35 U.S.C. § 134 of the
Examiner’s Final Rejection2 under 35 U.S.C. § 103(a) of claims 1, 3—7, 11,
and 13—15 as unpatentable over Von Schuckmann3 (US 2006/0144855 Al,
pub. July 6, 2006), Murray (US 2007/0189644 Al, pub. Aug. 16, 2007), and
Amberg (US 6,568,570 Bl, iss. May 27, 2003); of claims 8—10 as
unpatentable over Schuckmann, Murray, Amberg, and Kadono (US
1 According to Appellant, the real party in interest is Nihon Kim Co., Ltd.
Appeal Br. 2.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Action, dated September 18, 2013 (“Final Act.”).
3 The Examiner and Appellant refer to Von Schuckmann as “Schuckmann.”
See Final Act. 2; Appeal Br. 4. We do likewise.
Appeal 2014—008187
Application 12/801,473
4,545,506, iss. Oct. 8, 1985); and of claim 16 as unpatentable over
Schuckmann, Murray, Amberg, and Geigel (US 3,357,152, iss. Dec. 12,
1967).4 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. A storage container, comprising:
a tube-shaped storing portion formed of a resin, and
having an extraction opening enabling a stored substance to be
sucked in a center area on one end side, and a circular opening
on the other end side; and
a bag-shaped storing portion which is welded along the
circular opening of the tube-shaped storing portion, enters
inside the tube-shaped storing portion to be able to come into
intimate contact with an inner surface of the tube-shaped
storing portion in sucking through the extraction opening, and
is formed of a thin fdm in a shape of a bag to be a non-standing
body,
wherein the tube-shaped storing portion changes in a
cross-sectional shape from a circular shape to an elliptical
shape toward the one end side from the other end side,
the bag-shaped storing portion has a length in a range of
90% to 110% relative to a storing length in a longitudinal
direction of the tube-shaped storing portion,
the bag-shaped storing portion comprises two films, each
of the two films including:
a bottom edge formed on a side opposite to an end
portion welded to the tube-shaped storing portion,
two side edges, and
cut portions formed in comer portions between the
4 Claim 2, 12, and 17 have been canceled. See Amendment filed July 15,
2013.
2
Appeal 2014—008187
Application 12/801,473
bottom edge and the two side edges so that a stored substance is
incapable of remaining in the comer portions, and
the bottom edge, the two side edges, and the cut portions
of each of the two films are welded together to form a three-
side seal bag configuring the bag-shaped storing portion.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief, the Examiner’s Answer, and the Reply Brief.
We disagree with Appellant’s conclusions, and agree with, and adopt as our
own, the Examiner’s findings and conclusions of law set forth at pages 11—
15 of the Examiner’s Answer. Specific arguments are highlighted and
addressed below for emphasis.
Obviousness of Claims 1, 3—7, 11, and 13—15 over Schuckmann,
Murray, and Amberg
Claims 1, 4—7, 11, and 13—15
Appellant argues claims 1, 4—7, 11, and 13—15 as a group. See Appeal
Br. 4—12 and Reply Br. 1—9. We select claim 1 as the representative claim
for this group, and the remaining claims stand or fall with claim 1. 37
C.F.R. § 41.37(c)(l)(iv).
In rejecting claim 1, the Examiner finds that Schuckmann teaches a
storage container, having all the stmctural elements recited by the claim,
including inter alia, a tube-shaped storing portion with “an extraction
3
Appeal 2014—008187
Application 12/801,473
opening ... on one end side, and a circular opening5 on the other end side,”
and “a bag-shaped storing portion . . . which is welded . . . along the circular
opening of the tube-shaped storing portion. . . and is formed of a thin film in
[the shape] of a bag to be a non-independent body.” Final Act. 2—3 (citing
Schuckmann|| 7, 19, and 27; and Fig. 1).
The Examiner also finds that while “Schuckmann teaches that cut
portions ... are formed in comer portions [of the bag-shaped storing
portion] on an end portion side opposite to an end portion welded to the
tube-shaped storing portion,” that Schuckmann “is silent to the process of
making the bag,” and “does not explicitly teach that the storage container is
made of resin.” Final Act. 3. However, the Examiner looks to Murray for
teaching “a [bag-shaped storage portion] made of two panels with the side
and bottom edges of the two panels joined together by a heat [seal] to form a
bag” (citing Murray, H 18 and 19) and to Amberg for teaching “a storage
container that is made of plastic.” Id. (citing Amberg, col. 2,11. 54—58).
Based upon the foregoing factual analysis, the Examiner reasons it
would have been obvious “to manufacture the tube shaped storing portion of
Schuckmann out of plastic as taught by Amberg since it is old and well-
known in the art and [to manufacture] the bag shaped storing portion using
the process taught by Murray since plastic bag portions made of multiple
welded films [are] old and well-known in the art.” Id. at 4.
Appellant takes issue with the analysis and conclusions presented in
the Final Action, first contending that paragraph 19 of Schuckmann sets
5 In relying on |19 of Schuckmann, the Examiner observes that “the other
end of the tube-shaped portion is elliptical but a circle is a subset of an
ellipse.” Final Act. 2.
4
Appeal 2014—008187
Application 12/801,473
forth that “container 1 is of an elongate form, flat and of unround cross-
section, preferably elliptical,” which “tends to lead the reader of ordinary
skill away from the claimed round - elliptical ‘tube’ shape and is suggestive
of a flat and unrounded constantly elliptical one,” while also asserting that
“the Examiner has not made clear what relevance ‘a circle is a subset of an
ellipse’ is and its specific relevance to this rejection.” Appeal Br. 5; See also
Reply Br. 1—2.
The Examiner responds to this argument by pointing out that
“Schuckmann teaches a storage container comprising a tube-shaped storing
portion (2) in the top half, [that] is not of a uniform cross-section but
changes in shape and is generally of an elliptical shape,” and that claim 1
merely recites “‘wherein the tube-shaped storing portion changes in a cross-
sectional shape from a circular shape to an elliptical shape toward the one
end side from the other end side.’” Ans. 11; See also Appeal Br. 13, Claims
App.
The Examiner reasons that “a circle is a subset of ellipse and therefore
a circular shape is also considered an elliptical shape,” and explains that
“Schuckmann teaches a tube-shaped storing portion that changes shape from
a more elliptical shape at the mid-point to a less elliptical shape or a circular
shape at the extraction opening at the top.” Ans. 11. The Examiner
concludes that “[cjontrary to Appellant's arguments that the figures and
paragraph 19 [of Schuckmann] do not teach a tube-shaped storing portion
with a circular shape changing to an elliptical shape, [that] Schuckmann
does teach the limitation as recited in claim 1.” Id. at 11—12.
Appellant responds by again quoting |19 of Schuckmann, and
asserting that “it clearly leads the reader of ordinary skill to understand that
5
Appeal 2014—008187
Application 12/801,473
Schuckmann teaches away from the use of a circular cross section per se and
is suggestive of a constantly unrounded elliptical one.” Reply Br. 3.
However, absent any persuasive argument or evidence that a particular
configuration of the claimed tube-shaped storing portion is significant, a
change in shape is generally recognized as being within the level of ordinary
skill in the art. See In re Dailey, 357 F.2d 669, 672 (CCPA 1966). Thus,
because Appellant does not argue that the claimed shape has a significance
(or unexpected result), we are not persuaded that the Examiner’s reasoning
is in error. See Gardner v. TEC Sys. Inc., 725 F.2d 1338 (Fed. Cir. 1984)
Appellant also contends that paragraph 27 of Schuckmann “fails to
support the [Examiner’s] assertions [that the bag-shaped storage portion is
formed ‘to be a ‘non-independent’ body],” arguing that “the Examiner has
failed to note that the term ‘non-independent’ was amended to ‘non­
standing’ (in both specification and claims) in the first response. Appeal Br.
6. However, we agree with the Examiner that figures 3 and paragraph 27
“demonstrate that the bag (10) of Schuckmann is indeed a ‘non-independent’
‘non-standing’ bag-shaped storing portion since the bag (10) cannot stand on
its own and is dependent [for support] on the tube-shape storing portion (2).”
Ans. 12.
Appellant responds that “as long as the bag 10 is wholly or partially
received in [] half shell 3, the Examiner's position is rendered untenable [as]
the bag can be supported in a standing position in the completed
Schuckmann structure.” Reply Br. 4. However, we disagree, as the
presence of additional structure in Schuckmann does not undermine a
rejection where the claim uses “comprising.” See Exergen Corp. v. Wal-
Mart Stores, Inc., 575 F.3d 1312, 1319 (Fed. Cir. 2009) (“The claim uses the
6
Appeal 2014—008187
Application 12/801,473
term ‘comprising,’ which is well understood in patent law to mean
‘including but not limited to.’” (quoting CIAS, Inc. v. Alliance Gaming
Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007)).
Appellant next takes issue with the Examiner having found that
“Schuckmann teaches that cut portions are formed in comer portions on an
end portion side opposite to an end portion welded to the tube-shaped
storing portion in the bag-shaped storing portion,” contending that
Schuckmann “is devoid of any specific disclosure or suggestion that such a
cut stmcture is formed in bag 10 in the manner purported in this rejection.”
Appeal Br. 6 (citing the Examiner’s annotated version of Fig. 1 of
Schuckmann).
We determine the scope of the claims in a patent application by giving
claims “their broadest reasonable interpretation consistent with the
specification” and “in light of the specification as it would be interpreted by
one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (citations omitted). “Construing claims broadly
during prosecution is not unfair to the applicant. . . because the applicant
has the opportunity to amend the claims to obtain more precise claim
coverage.” Id.
Appellant has not pointed to any lexicographic definition in the
Specification of the term “cut portion” or identified any other disclosure
therein that precludes the Examiner from constming “rounded comer
portions at the bottom edge and side edges [of the bag-shaped storing
portion (10) of Schuckmann, to be] exactly the same stmcture [that
functions] in a similar manner.” Ans. 12.
7
Appeal 2014—008187
Application 12/801,473
Appellant next contends that “[t]he Examiner has failed to establish
how [the method and structure disclosed in Murray] could be considered in
combination with the teachings of Schuckmann.” Appeal Br. 8; see also
Reply Br. 5—6. However, we find the Examiner’s use of a portion of
Murray’s teaching to be appropriate in that all of the features of a secondary
reference need not be bodily incorporated into the primary reference. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981). Furthermore, the Examiner
reasons that “Murray also teaches a specific structure of pouch that is related
to . . . Schuckmann,” which is “relied upon to demonstrate that it is known in
the art to form a bag by heat sealing the edges of two films [so that] it would
have been obvious that the bag-shaped storing portion of Schuckmann
would be formed similarly.” Ans. 13.
While acknowledging that Amberg is directed to “a flexible, closed
storage container . . . using negative pressure, permitting substantially
complete emptying of the container,” Appellant contends that the fact that
“the flexible storage container [of Amberg is] configured with a thinner wall
in its upper section than in its lower section . . . cannot be ignored just to
justify the position that this reference suggests the use of plastic.” Appeal
Br. 8 ; see also Reply Br. 6—7. However, Appellant is simply attacking
Amberg in isolation for lacking support for findings not relied upon by the
Examiner, rather than addressing the Examiner’s combination of
Schuckmann, Murray, and Amberg. Nonobviousness cannot be established
by attacking references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
8
Appeal 2014—008187
Application 12/801,473
As previously explained, in rejecting claim 1 the Examiner has relied
on Amberg only for teaching “a storage container that is made of plastic.”
See Final Act 3 (citing Amberg, col. 2,11. 54—58). The Examiner again
explains that “Amberg discloses a package (1) [that] contains a top half (3)
and a bottom half (2) [that] are welded together at the mid-point (5) to create
a storage container [that is] made of plastic which is a resin.” Ans. 13.
Appellant does not apprise us of error in the Examiner’s factual findings or
conclusions regarding Amberg, by merely observing that “if complete
emptying of the container were to be considered of importance, [one of
ordinary skill in the art] would be strongly drawn to . . . using Amberg
alone.” Reply Br. 7.
Appellant has also furnished evidence in rebuttal of obviousness, that
it is our duty to consider anew. See, e.g., In re Eli Lilly and Co., 902 F.2d
943, 945 (Fed. Cir. 1990). However, we are also mindful that objective
evidence of non-obviousness in any given case may be entitled to more or
less weight depending on its nature and its relationship with the merits of the
invention. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538—39
(Fed. Cir. 1983). Accordingly, we consider anew the issue of obviousness
under 35 U.S.C. § 103, carefully evaluating and weighing both the evidence
relied upon by the Examiner and the objective evidence of non-obviousness
provided by Appellant.
Appellant relies on evidence of secondary considerations of
nonobviousness in the form of a Declaration of the inventor, Yukio Ishii,
filed March 29, 2013. Appellant contends that “the declaration in fact
demonstrates unexpected and advantageous results” because “container A
9
Appeal 2014—008187
Application 12/801,473
was stated to have a self-standing bag while container D6 was stated to have
a non-standing bag,” with the result that “container A had a 2.20 % of the
remaining material while Container D unexpectedly had only 0.92 % of
remaining material.” Appeal Br. 10-12; see also Reply Br. 7-9. .
However, we agree with the Examiner that “the bag disclosed by
Schuckmann is not a self-standing bag [and therefore is] similar to the
current invention and the declaration does not demonstrate how the
container D is more advantageous over the container of Schuckmann,”
because “the declaration does not clearly compare the invention to the
closest prior art, i.e. Schuckmann,” and therefore “does not overcome any of
the rejections raised over the prior arts (sic).” Ans. 14—15 (citing MPEP §
716.02(e)).
Furthermore, we are not persuaded by Appellant’s reference to MPEP
§ 716.02(e), permitting a comparison of “the claimed invention with prior art
that is more closely related to the invention than the prior art relied upon by
the Examiner,” to support the contention that “the Examiner has not
specifically demonstrated that Schuckmann is in fact the closest prior art or
closer than the three examples compared in the declaration.”7 Reply Br. 8—
9. While we appreciate that there sometimes may be difficulty in
determining the closest prior art, Appellant offers no evidence in support of
6 The Declaration states that Container D is the “Present Invention.” See
Declaration, page 2.
7 In an appeal under 35 U.S.C. § 134(a), it is the Examiner’s final rejection
that we review. See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990).
10
Appeal 2014—008187
Application 12/801,473
containers A, B, and C being closer prior art than Schuckmann.8 Arguments
of counsel cannot take the place of evidence lacking in the record. Meitzner
v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974). See also In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984) (holding that arguments and conclusions unsupported
by factual evidence carry no evidentiary weight).
After reviewing all of the evidence before us, including the totality of
Appellant’s evidence, it is our conclusion that, on balance, the evidence of
obviousness discussed above outweighs the evidence of nonobviousness
submitted by Appellant and, accordingly, the subject matter of claims 1, 4—7,
11, and 13—15 would have been obvious to one of ordinary skill in the art
within the meaning of 35 U.S.C. § 103(a) at the time Appellant’s invention
was made.
Based on the foregoing, we sustain the Examiner’s unpatentability
rejection of claims 1, 4—7, 11, and 13—15 over Schuckmann, Murray, and
Amberg.
Claim 3
Appellant contends that the Examiner’s assertion that Schuckmann
teaches “that the tube-shaped storing portion . . . has a curved portion . . .
such that the diameter decreases toward the extraction opening,” is “based
on nothing more than the Examiner’s annotated figure 1 [of Schuckmann].”
Appeal Br. 9. We are not persuaded that the Examiner erred by relying on
8 In fact, Appellant has not even identified containers A, B, and C as prior
art, merely describing them as the “First to Third Experiments conducted on
February 13, 2013 by the inventor.” See Declaration, page 13.
11
Appeal 2014—008187
Application 12/801,473
the disclosure shown in the figure of Schuckmann. See In re Aslanian, 590
F.2d 911, 914 (CCPA 1979) (“[A] drawing in a utility patent can be cited
against the claims of a utility patent application even though the feature
shown in the drawing was unintended or unexplained in the specification of
the reference patent.”).
Based on the foregoing, we sustain the Examiner’s unpatentability
rejection of claim 3 over Schuckmann, Murray, and Amberg.
Obviousness of Claims 8—10 over Schuckmann, Murray, Amberg, and
Kadono
Other than observing that “this rejection inherits the flaws associated
with at least [the rejection of] claims 1 and 3,” (Appeal Br. 9), we
understand Appellants’ appeal of the rejection of claims 8—10 rests on the
arguments presented against the rejection of claim 1, which we found not
demonstrative of error in the Examiner’s rejection of claims 1, 3—7, 11, and
13—15 over Schuckmann, Murray, and Amberg, as set forth supra. Thus, we
sustain the Examiner’s unpatentability rejection of claims 8-10 over
Schuckmann, Murray, Amberg, and Kadono.
Obviousness of claim 16 over Schuckmann, Murray, Amberg, and
Geigel
Other than observing that “this rejection . . . inherits the flaws
associated with at least [the rejection of] claim 1,” (Appeal Br. 9-10), we
understand Appellant’s appeal of the rejection of claim 16 rests on the
arguments presented against the rejection of claim 1, which we found not
demonstrative of error in the Examiner’s rejection of claims 1, 3—7, 11, and
12
Appeal 2014—008187
Application 12/801,473
13—15 over Schuckmann, Murray, and Amberg, as set forth supra. Thus, we
sustain the Examiner’s unpatentability rejection of claim 16 over
Schuckmann, Murray, Amberg, and Geigel.
DECISION
We AFFIRM the Examiner’s rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
13