Ex Parte Pendergraph

Patent Trials and Appeals Board

Apr 2, 2019

13833409 - (D) (P.T.A.B. Apr. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/833,409 03/15/2013
10800 7590 04/03/2019
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Melvin A. Pendergraph
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.
1576-0913 4206
EXAMINER
JALLOW, EYAMINDAE CROSSAN
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
04/03/2019 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 ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEL VIN A. PENDERGRAPH
Appeal2018-001077
Application 13/833,409
Technology Center 3700
Before BRUCE T. WIEDER, T ARAL. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
TheAppellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
fmal decision rejecting claims 1, 3-5, 8-11, and 21-23, which are all of the
pending claims. We have jurisdiction under 35 U.S. C. § 6(b ).
We REVERSE.
1 Throughout this Decision, we refer to the Appellant's Appeal Brief ("Br.,"
filed Dec. 28, 2015, as amended May 27, 2016) and Specification ("Spec.,"
filed Mar. 15, 2013), and to the Examiner's Answer ("Ans.," mailed
Sept. 26, 2016) and Final Office Action ("Final Act.," mailed July 22, 2015).
2 According to the Appellant, the real parties of interest are "Robert Bosch
Tool Corporation and Robert Bosch GmbH." Br. 2.
Appeal 2018-001077
Application 13/833,409
STATEMENT OF THE CASE
The Appellant's invention "relates generally to [a] packaging system
and manufacturing thereof' (Spec. ,r 1) and particularly to "a packaging
assembly for a product, such as a tool, accessory tool, part, and the like, and
a method of packaging such products" (id. ,r 19).
Claim 1 (Br. 7 (Claims App.)) is the only independent claim on
appeal, is representative of the subject matter on appeal, and is reproduced
below ( with added bracketing for reference):
1. A method of packaging a product comprising:
[ (a)] heating a frrst film of plastic material to a forming
temperature at a thermoforming station until it 1s
thermoformable;
[ (b)] positioning a plurality of products to be packaged in
the thermoforming station along with the heated frrst film;
[ ( c)] moving at least one of the heated frrst film and the
plurality of products to be packaged in relation to each other until
the plurality of products deforms the heated frrst film and forms
a plurality of pockets in the heated frrst film, each of the pockets
at least partially encapsulating at least one of the products in the
plurality;
[ ( d)] forming flange portions in the heated frrst film
around each of the pockets;
[ ( e)] curing the deformed frrst film with the plurality of
products at least partially encapsulated in the pockets in the frrst
film·
'
[ ( f)] attaching security tags to a frrst side of a packaging
panel;
[ (g)] covering the security tags with a second plastic film,
the second film being placed over each of the security tags and
attached to the frrst side of the packaging panel around each of
the security tags;
2
Appeal 2018-001077
Application 13/833,409
[(h)] securing the flange portions of the first film to a
second side of the packaging panel; and
[(i)] singulating the cured frrst film and the packaging
panel to form a plurality of packaging assemblies, each of the
packaging assemblies including a portion of the frrst film and a
portion of the packaging panel, the portion of the frrst film having
a pocket in which at least one of the products is retained and a
flange which surrounds the pocket, the flange being secured to
the portion of the packaging panel, the portion of the packaging
panel of each of the packaging assemblies including one of the
security tags covered by the second film.
REJECTIONS
Claims 1, 3, 4, and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stratton, Jr. (US 2,931,495, iss. Apr. 5, 1960) ("Stratton"),
Zelnick (US 3,701,229, iss. Oct. 31, 1972), and Yang
(US 2010/0315239 Al, pub. Dec. 16, 2010).
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stratton, Zelnick, Yang, and Tilton
(US 2010/0025278 Al, pub. Feb. 4, 2010).
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stratton, Zelnick, Yang, and Murray
(US 2010/0314277 Al, pub. Dec. 16,2010).
Claims 10 and 11 standrejectedunder35 U.S.C. § 103(a)as being
unpatentable over Stratton, Zelnick, Yang, and Hagel et al.
(US 6,540,073 Bl, iss. Apr. 1, 2003) ("Hagel").
Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stratton, Zelnick, Yang, and Ferrar et al. (US 4,642,239,
iss. Feb. 10, 1987) ("Ferrar").
3
Appeal 2018-001077
Application 13/833,409
ANALYSIS
The Appellant argues all of the claims as a group. See Br. 6 (relying
on the arguments presented for the rejection of claim 1 for the rejections of
the dependent claims). We select claim 1 from the group with the dependent
claims standing or falling therewith. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Appellant contends that the Examiner's rejection of independent
claim 1 is in error because Yang, upon which the Examiner relies, does not
"disclose" limitations (f) and (g) of attaching security tags to a first side and
covering the security tags with a second plastic film. See Br. 4--5.
The Examiner finds, in relevant part, that
Yang teaches attaching an EAS unit ( 14) to an outer surface of a
package (Fig. 10), covering the EAS unit (14) with a plastic
carrier structure (12; para. [0035]), the plastic carrier structure
(12) being placed over the EAS unit (14) and attached to outer
surface of the package around EAS unit (14; Figs. 1 and 10) for
the purpose of tagging an article (para. [0006]).
Final Act. 4--5. In response to the Appellant's arguments, the Examiner
asserts that "the claims do not recite directly attaching the security tag to the
frrst side of the packaging panel; therefore, Yang still reads on this
limitation." Ans. 2. The Examiner finds that "[t]he security tag (14) of
Yang is attached to the frrst side of a packaging panel via the covering,
which allows the security tag to be held in place. Following the applying
[sic] of the film, the tag is attached, and constrained in its movement,
relative to the panel." Id.
Yang discloses a surveillance apparatus comprising a carrier
comprising a housing having an interior void, a tag including an electronic
article surveillance ("EAS ") unit, and a means for attaching the housing to
an article. See Yang, Abstract, Figs. 1, 10, ,r,r 6, 27. Carrier 12 may have a
4
Appeal 2018-001077
Application 13/833,409
removable tab for dividing housing 120 into multiple parts to facilitate
possible removalofEAS unit 14 from the housing of carrier 12. See id. if 27
( describing Fig. 1 ). Housing 120 of carrier 12 may have a void for receiving
EAS 14. Id. Carrier 12, including EAS 14, may be attached or affixed by
adhesive or fasteners to an article that "may comprise the retail article for
sale (if unpackaged), or the packaging in which the retail article is provided,
such as thin thermoplastic wrappings, packaging comprising thermoplastic,
plastic, cardboard, wood or metal materials, or a combination thereof." Id.
,r 35; see also id. ,r 27.
However, we do not see, and the Examiner does not adequately
explain, where or how Yang teaches that its EAS unit is covered in a plastic
film that is attached to the housing or the article around the EAS unit. Yang
teaches EAS unit 14 secured to housing 120 of carrier 12 via a removable
tab or in a void (see Yang ,r 27) and attaching carrier 12 including EAS
unit 14 to an outer surface of a package wrapped in a plastic film (see id.
,r 35). But, it is not clear that Yang teaches that the EAS unit is covered with
a plastic film placed over the unit and attached to the panel around the unit.
To the extent the Examiner finds that the EAS unit is covered by the plastic
film of carrier 12 (see Final Act. 4--5), we do not see where Yang teaches the
carrier having a plastic film covering. And, we do see where or how Yang
teaches that the EAS unit "is attached to the frrst side of a packaging panel
via the covering, which allows the security tag to be held in place.
Following the applying of the film, the tag is attached, and constrained in its
movement, relative to the panel." Ans. 2.
Based on the foregoing, we are persuaded of error in the Examiner's
rejection of independent claim 1 under 35 U.S.C. § 103(a), and we do not
5
Appeal 2018-001077
Application 13/833,409
sustain the rejection of claim 1. We also do not sustain the rejections of the
dependent claims 3-5, 8-11, and 21-23, which fall with claim 1 and for
which the Examiner relies on the same unsupported fmding.
DECISION
The Examiner's rejections of claims 1, 3-5, 8-11, and21-23 under
pre-AIA 35 U.S.C. § 103(a) are REVERSED.
REVERSED
6