Ex Parte Jones

Patent Trials and Appeals Board

Jul 27, 2015

12750081 - (D) (P.T.A.B. Jul. 27, 2015)

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.
12/750,081 03/30/2010 Robert C. Jones 1410/96500 8204
48940 7590 07/28/2015
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
JALLOW, EYAMINDAE CHOSSAN
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
07/28/2015 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 ROBERT C. JONES
____________________

Appeal 2013-005362
Application 12/750,081
Technology Center 3700
____________________

Before LYNNE H. BROWNE, ANNETTE R. REIMERS,
and MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Robert C. Jones (“Appellant”) seeks our review under
35 U.S.C. § 134(a) of the final rejection of claims 1–28. Appeal Br. 5. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to “filling a container with a pouch and a
flowable food product.” Spec. 1, ¶ 1. Claims 1, 9, 17, and 28 are
independent and claim 1 is reproduced below.
1. A method of placing an insert and a flowable food
product into a container, the method comprising:
transporting a container in an upright orientation in a
downstream direction with a conveyor, the container having a
closed bottom with an upstanding sidewall defining an interior
accessible through an open top;
moving the container from the upright orientation to a
tilted orientation when the container is at a different position in
the downstream direction so that there is an inclined segment of
the sidewall;
placing a generally planar insert into the interior of the
container either prior to or after the step of moving the
container to the titled orientation so that the insert can
substantially rest against the inclined segment of the sidewall;
and
at least partially filling the interior of the container with a
flowable food product while the container is in the tilted
orientation and after the step of placing the generally planar
insert into the interior of the container.
Appeal Br. 25, Claims App.

THE REJECTIONS
I. Claim 28 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Bezek (US 7,178,313 B2, issued Feb. 20, 2007) and
Tisma (5,058,634, issued Oct. 22, 1991). Final Act. 2.
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II. Claims 1, 2, 4–10, 12–18, and 20–27 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Ferris (US 5,855,105, issued Jan. 5,
1999), Bezek, and Tisma.1 Final Act. 3.
III. Claims 3, 11, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ferris, Bezek, Tisma, and Prakken (US 6,668,522 B2,
issued Dec. 30, 2003). Final Act. 8.

ANALYSIS
Rejection I: Claim28
In rejecting claim 28, the Examiner finds that Bezek discloses, inter
alia, a method for placing insert 720 and a flowable food product 718 into
container 600. Final Act. 2 (citing Bezek, Figs. 4 and 5b).

1 Although the heading of the rejection lists claims 1–26 as unpatentable
over Ferris, Bezek, and Tisma, we note that a review of the body of the
rejection indicates that claims 1, 2, 4–10, 12–18, and 20–27 are instead
rejected. See Final Act. 3–9. We further note that claims 3, 11, and 19 are
instead rejected as unpatentable over Ferris, Bezek, Tisma, and Prakken
(Rejection III). See id. at 8–9.
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Figures 4 and 5b of Bezek are reproduced below:

Figure 4 (left) depicts Bezek’s form, fill, and seal machine, which fills
first food item 718 and second food 720 item into package 600 shown, but
not numbered, in Fig. 5b (right). Bezek, col. 3, ll. 38–40 and 43–44, and col.
5, ll. 5–8.
The Examiner further finds that Bezek does not disclose the claimed
step of “moving the container from the upright orientation to a tilted
orientation . . . so that . . . the insert can substantially rest against the inclined
segment of the [container] sidewall.” Final Act. 2. The Examiner instead
relies on Tisma for disclosing the tilting step and concludes, “it would have
been obvious to one having ordinary skill in the art to modify the invention
of [Bezek] with the tilting of Tisma in order to guarantee[] that the planar
insert is weighed down by the product that is being inserted into the
container.” Id. at 3 (citing Tisma, Fig. 12 E and col. 7, ll. 52–54).
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In contesting the rejection, Appellant asserts that the Examiner’s
reason for modifying Bezek ignores the fact that Bezek solves the problem
with a different solution. Appeal Br. 23; see also Reply Br. 3. In particular,
Appellant argues that Bezek’s package provides separate food
compartments, which are designed to ensure that the secondary food pouch
rests against the package’s sidewall, so that the food pouch does not obstruct
the filling of the main food product. See Appeal Br. 14–16 and 20 (citing, in
relevant part, Bezek, Figs. 4, 5c, and 5d).
Upon reviewing the record before us, we find Appellant’s argument
persuasive. In particular, we do not agree with the Examiner’s reasoning
that a person of ordinary skill in the art would modify Bezek to incorporate
Tisla’s tilting “in order to guarantee[] that the planar insert is weighed down
by the product that is being inserted into the container.” Final Act. 3. As
correctly pointed-out by Appellant, Bezek’s package 600 already solves the
problem that the Examiner proposes to solve with the proposed
modification.

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Figure 5c of Bezek is reproduced, below:

Figure 5c depicts Bezek’s package 600 as comprising two
compartments, main portion 618 and secondary compartment 620, which are
separated by compartment wall 640. Bezek col. 4, ll. 45–57. Main portion
618 holds first item 718, while secondary compartment 620 holds second
item 720. Id. at col. 4, ll. 54–57.
As can be seen from Figure 5c, the Examiner’s proposed modification
of Bezek does not yield any perceived benefit, because Bezek’s package 600
ensures that pouch 720 is snugly held in compartment 620, and flush with
package 600’s sidewall, through the presence of compartment wall 640.
Accordingly, we do not agree with the Examiner that a person of ordinary
skill in the art would tilt Bezek’s package “in order to guarantee[]that the
planar insert is weighed down by the product that is being inserted into the
container.” Final Act. 3 (emphasis added).
For the foregoing reasons, we do not sustain the rejection of claim 28
as unpatentable over Bezek and Tisma.
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Rejection II: Claims 1, 2, 4–10, 12–16, 26, and 27
In rejecting independent claims 1 and 9, including their respective
dependent claims 2, 4–8, 10, 12–16, 26, and 27, the Examiner finds that
Ferris discloses, inter alia, a method of placing insert P into container 22
prior to or after the step of moving container 22 to a tilted orientation, so that
insert P can substantially rest against the inclined segment of sidewall 26.
Final Act. 3 (citing, in relevant part, Ferris, Fig. 3 and col. 3, ll. 16–24).
Figure 3 of Ferris is reproduced below:

Figure 3 depicts Ferris’s cartoner, including pin conveyor 10, which
receives pouch units P. Ferris, col. 4, ll. 23–24. Indexing carton holder 24
supports a series of cartons 22, and each carton 22 includes end walls 26, 28.
Id. at col. 4, ll. 45–49.
The Examiner further finds that Ferris does not disclose the step of
transporting a container in an upright position and at least partially filling the
container with a flowable food product, and instead relies on Bezek for
disclosing these steps. Final Act. 6 (citing Bezek, Fig. 4). In light of the
teachings of Ferris and Bezek, the Examiner concludes, “ it would have been
obvious to one having ordinary skill in the art to modify the invention of
Ferris with the funnel used for filling a receptacle with a flowable food
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product of Bezek in order to facilitate the addition of flowable food product
to already situated pouches, therefore packaging more than one item in a
container and guaranteeing that there is enough room to fit both items.” Id.
The Examiner further finds that Ferris in view of Bezek does not
disclose the step of moving the container in an upright orientation to a tilted
orientation and relies on Tisma for teaching moving container 114 in an
upright orientation K to a tilted orientation L. Id. at 7 (citing Tisma, col. 7,
ll. 52–54).
Figures 12A–12G of Tisma are reproduced below:

Figures 12A–12G depict Tisma’s sequence of filling tipped box 114.
Tisma, col. 2, ll. 49–51, and col. 7, ll. 46 and 51–54.
In light of the aforementioned teachings, the Examiner concludes that
“it would have been obvious to one having ordinary skill in the art to modify
the invention of Ferris in view of [Bezek] with the tilting of Tisma in order
to guarantee that the planar insert is weighed down by the product that is
being inserted into the container.” Final Act. 7.
In contesting the rejection, Appellant argues that the Examiner has
failed to provide a sufficient reason for combining Ferris, Bezek, and Tisma.
Appeal Br. 19. In particular, Appellant asserts that the rejection “fails to
explain why a person of skill in the art would not use Bezek alone,” as
“Bezek provides a package that separates food components . . . [and]
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provides an alternative solution to the problem addressed by” Appellant. Id.
at 20. Appellant further asserts, “Ferris already has a tilted carton, and there
is no reason to add the tilting mechanism of Tisma.” Id. at 20–21.
In response to Appellant’s argument, the Examiner explains that
Ferris and Tisma teach tilting a carton in order to settle particulate at the
bottom and that Bezek teaches incorporating packets which have been
separated from the particulate matter. Ans. 4. In light of these teachings,
the Examiner explains that the proposed combination “would include tilting
a carton with a package that has now settled at the bottom, due to gravity,
and adding particulate material on top of said package in order to optimize
on space.” Id.
Upon reviewing the record before us, including a careful review of the
stated rejection, we find Appellant’s argument persuasive. In particular, we
do not agree with the Examiner’s reason for combining Ferris, Bezek, and
Tisma.
Notably, the Examiner first reasons that it would have been obvious to
modify Ferris’s method with Bezek’s funnel and flowable food product “in
order to facilitate the addition of flowable food product to already situated
pouches, therefore packaging more than one item in a container and
guaranteeing that there is enough room to fit both items.” Final Act. 6
(emphasis added). The Examiner then reasons that it would have been
obvious to further modify the combined Ferris and Bezek method by adding
Tisma’s tilting “in order to guarantee that the planar insert is weighed down
by the product that is being inserted into the container.” Id. at 7 (emphasis
added).
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First, we are not convinced that a person of ordinary skill in the art
would combine Bezek with Ferris for the purpose of “guaranteeing that there
is enough room to fit both items.” Final Act. 6. As explained supra with
respect to Rejection I, because Bezek’s “container” 600 prevents “planar
insert” 720 from interfering with the filling of “flowable food product” 718,
we see no reason to combine Bezek with Ferris for the purpose of
guaranteeing “enough room to fit both items.”
Second, we are not convinced that a person of ordinary skill in the art
would combine Tisma’s tilting with Ferris and Bezek simply to “guarantee
that the planar insert is weighed down,” as Ferris’s inclined design already
performs this function. See, e.g., Ferris, col. 3, ll. 16–24; see also Appeal
Br. 20–21 (“Ferris already has a tilted carton, and there is no reason to add
the tilting mechanism of Tisma.”) In other words, and as acknowledged by
the Examiner, Ferris’s inclined design already provides for the orderly and
“weighed down” stacking of pouches P within carton 22. Ans. 4 (Examiner
stating, “Ferris and Tisma [each teach] tiling a carton in order to settle
particulate at the bottom.”)
For the foregoing reasons, we do not sustain the rejection of claims 1,
2, 4–10, 12–16, 26, and 27 as unpatentable over Ferris, Bezek, and Tisma.

Rejection II: Claims 17, 18, and 20–25
As distinguished from independent claims 1, 9, and 28, which are
directed to methods, claim 17 recites, “[a]n apparatus for inserting a pouch
into a container.” Appeal Br. 28, Claims App.
In rejecting independent claim 17, including its dependent claims 18
and 20–25, the Examiner apparently relies on the teachings of Ferris, Bezek,
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and Tisma, and concludes, “it would have been obvious to one having
ordinary skill in the art to modify the invention of Ferris in view of Bezek
with the horizontal conveyance of Tisma in order to ensure that the product
is contained securely in an upright position, within the container, throughout
its conveyance.” Final Act. 8; see also id. at 4.
Although the rejection of claim 17 provides a reason for combining
Tisma’s horizontal conveyance with “the invention of Ferris in view of
Bezek,” we cannot find a reason for combining Ferris with Bezek. See id. at
3–8. Accordingly, we do not sustain the rejection of claim 17, and its
dependent claims 18 and 20–25, as unpatentable over Ferris, Bezek, and
Tisma.

Rejection III: Claims 3, 11, and 19
The rejection of dependent claims 3, 11, and 19 is based on the same
unsupportable combination of Ferris, Bezek, and Tisma relied on with
respect to Rejection II. See Final Act. 8–9. The Examiner does not rely on
Prakken to remedy the deficiencies of Ferris, Bezek, and Tisma discussed
above. Therefore, we do not sustain the rejection of claims 3, 11, and 19.

SUMMARY
The Examiner’s decision to reject claim 28 under 35 U.S.C. § 103(a)
as unpatentable over Bezek and Tisma is reversed.
The Examiner’s decision to reject claims 1, 2, 4–10, 12–18, and 20–
27 under 35 U.S.C. § 103(a) as unpatentable over Ferris, Bezek, and Tisma
is reversed.
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The Examiner’s decision to reject claims 3, 11, and 19 under 35
U.S.C. § 103(a) as unpatentable over Ferris, Bezek, Tisma, and Prakken is
reversed.
REVERSED
JRG