Ex Parte Phung

Patent Trial and Appeal Board

Nov 17, 2016

11718363 (P.T.A.B. Nov. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111718,363 05/01/2007
26161 7590 11/21/2016
FISH & RICHARDSON P,C (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
Quang Phung
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.
11961-004US1
P73112USOO
CONFIRMATION NO.
5539
EXAMINER
HELVEY, PETER N.
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
11/21/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QUANG PHUNG
Appeal2014-008079
Application 11/718,363
Technology Center 3700
Before: CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
BRENT M. DOUGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
3 and 6-9. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm, designating our affirmance as a new ground of rejection
under 37 C.F.R. § 41.50(b).
Appeal2014-008079
Application 11/718,363
CLAIMED SUBJECT MATTER1
The claims are directed to a pack for holding food items. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A pack for holding a food item or items, comprising a bag
having a pair of sides joined at opposing edges by a respective
seam, and a channel shaped holder for the bag formed in card and
comprising a pair of side walls to which the sides of the bag are
adhered, and a base hinged at first fold lines to the side walls, one
side wall of the holder being extended to provide a lid having a
fold line with the top of the side wall to enable the lid to be folded
over the top of the holder to close the upper end of the bag
disposed within the holder, the lid terminating in a flap having a
fold line with the lid to enable the flap to be folded downwardly
along the other side wall of the channel and means being
provided for securing the flap to the other side wall to hold the
lid closed over the channel, characterized in that the base of the
holder has a plurality of spaced second fold lines extending
parallel to the first fold lines to allow the base to take up a
generally convex or concave shape with the side walls of the
holder spaced apart to hold the side walls of the bag apart; in that
the side of the bag adjacent the side wall of the holder on which
the lid is formed extends further than the other side of the bag
over the underside of the lid to which it is adhered to fold over
the top of the bag with the lid; and in that the other side of the
bag extends above the side wall to which it is adhered to provide
a flap which can be folded over the contents of the bag when the
bag is closed by the lid.
REJECTION
Claims 1-3 and 6-9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dold (US 2,987 ,402) in view of Gordon et al. (US
4,575,000), Stegner (US 3,399,818), and Song (US 4,494,785).
1 We refer to the claim listing of Jan. 16, 2013 as the copy appended to the
Brief does not appear to be correct.
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Appeal2014-008079
Application 11/718,363
OPINION
The claims are argued as a group, standing or falling with claim 1. See
37 C.F.R. § 41.37(c)(iv).
In order to arrive at the subject matter of claim 1, we understand the
Examiner to propose folding the Dold device, oriented as depicted in Figure
1, along lines 13 and 14, instead of, or prior to, folding overhanging flaps 27,
28 inwardly as depicted in Figures 2 and 3. Final Act. 2-3 (discussing Dold
and folding in the "opposite order" as taught by Gordon). This operation
would have resulted in a structure where the inner, polyvinylidene chloride
or "Saran," wrap 25 forms a folded bag-like structure albeit with unjoined
sides. We understand the Examiner to also rely on Gordon to demonstrate
that it was known in the art to close the free ends of a wrapper 10 by creating
a seam, for example, by using locking panels 30, 32. Final Act. 3; Ans. 7.
Applying Gordon's seaming technique to the Dold device, as depicted in
Figure 1, folded about a horizontal axis would yield a structure similar in
many respects to that depicted in Appellant's Figures 2--4. This includes, as
the Examiner correctly explains (Ans. 5---6), and Appellant appears to
recognize (Reply Br. 1-2 (shifting the focus of their argument from the
"extends further" limitation (App. Br. 4--5) to the "seam" limitation)), a
height of one side of the wrap 25 that "extends further" than the other.
The only reasoning articulated by the Examiner for applying Gordon's
teachings to Dold is that "it has been held that a mere reversal of the
essential working parts of a device involves only routine skill in the art."
Final Act. 3 (citing Jn re Einstein 8 USPQ 166, 167 (CCPA 1931)); App. Br.
7.
First, our reviewing court cautioned in In re Ochiai, 71 F. 3d 1565,
1572 (Fed. Cir. 1995):
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Application 11/718,363
reliance on per se rules of obviousness is legally incorrect and
must cease. Any such administrative convenience is simply
inconsistent with section 103, which, according to Graham and
its progeny, entitles an applicant to issuance of an otherwise
proper patent unless the PTO establishes that the invention as
claimed in the application is obvious over cited prior art, based
on the specific comparison of that prior art with claim
limitations.
Second, the Examiner's reasoning only appears to relate to the proposed
modification to the folding order and not to employing Gordon's seaming
technique.
Despite the shortcomings discussed above, we nevertheless agree with
the Examiner's conclusion, which is essentially, that plastic bags would have
been an obvious alternative to Dold's Saran wrap for packaging food. The
use of such a bag is the product of providing the Dold wrapper pre-folded
about panel 18 and seamed along the side edges. This would have been an
obvious modification because one skilled in the art would have recognized
that it would have been more convenient to package certain commodities,
particularly those with increased flowability, using a plastic bag instead of a
piece of Saran wrap. Such a modification yields the predictable results of
more easily containing certain commodities during packaging.
The Examiner recognizes that Dold's device, modified as described
above in light of the teachings of Gordon, would still lack a side of the bag
on the side 12 of the holder opposite the lid 17 extending above that side 12
of the holder. See, e.g., Application Figures 2, 3. For this feature the
Examiner relies on Stegner, which as the Examiner correctly finds, discloses
extending the walls 12 of bag material 10 above side panels 20. Final Act. 3;
Stegner Fig. 2. Once again, however, the Examiner appears to rely on a per
se rule as opposed to a particularized inquiry as a basis for determining
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Application 11/718,363
obviousness. See Final Act. 3 (citing In re Reese, 129 USPQ 402)("such a
modification would have involved a mere change in the proportions of
components. A change in proportion is generally recognized as being within
the level of ordinary skill in the art."); App. Br. 7.
While it is true that Stegner depicts (Fig. 2) and discusses (col. 2, 11.
56-58) the bag 10 extending above paperboard support 18 side panels 20
and receptacle 30, Stegner does not explain why Stegner's bag may be made
from "paper, cloth, foil, laminated materials, or plastic materials such as
polyethylene and polyvinyl chloride." Stegner col. 3, 11. 18-19. One skilled
in the art would reasonably infer that bag 10 extends over the support and
receptacles so as to provide an additional closure further protecting the
contents of the bag. This is particularly true where the bag is composed of
plastics that may create a better moisture barrier than the paperboard support
18 or box 30. Dold's device would similarly benefit from this modification,
thereby ensuring the packaged commodity is fully encased in the bag.
We additionally note that the extension of the bag above the holder
sidewall is dictated in part by the size of the sidewall, 1 7 in Dold, and in part
by the height of the bag. The function of the sidewall 17 is to cooperate with
the flap 21 having a locking tab 23 inserted into slit 22 to form a wall of the
finished product (Fig. 10). There does not appear to be any criticality as to
the relative sizes of flap 21 and sidewall 17 or the amount of overlap they
exhibit. Nor does there appear to be anything more than a routine
optimization involved in sizing the bag appropriately for its expected
contents. In situations where an applicant seeks to rely on a seemingly
uncritical or arbitrarily selected dimension as a basis for distinguishing the
claimed invention over the prior-art the applicant bears the burden to come
forward with evidence or argument showing criticality of the feature relied
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Application 11/718,363
upon so that the Examiner may consider such evidence in judging
obviousness. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (citation
omitted). Appellant has not made any such showing.
Turning to Song, the Examiner correctly found Song discloses a
technique for making a holder concave or convex. 2 Final Act. 2. However
the Examiner provides circular reasoning for applying this technique to Dold
that essentially presumes the conclusion:
it further would have been obvious to a person having ordinary
skill in the art to provide the secondary fold lines taught by Song
to the panels of the holder assembly taught by Dold, in order to
allow the holder to take on a convex or concave shape as taught
by Song
Final Act. 4; App. Br. 7.
Song states that the purpose of the disclosed sandwich holder is
"the comfortable enjoyment of the round sandwich by the consumer." Col.
1, 11. 11-13. Perhaps Dold's package could be used for a round commodity
intended to be consumed directly from the package. Ho\x1ever, as Dold does
not discuss this, Song's stated purpose, arguably, may not be particularly
relevant to Dold's device. Nevertheless, it has been recognized that "familiar
items may have obvious uses beyond their primary purposes." KSR Int'! Co.
v. Teleflex, Inc., 127 S.Ct. 1727, 1742, 167 L.Ed.2d 705 (2007). Dold is
depicted as packaging an unspecified commodity which appears to be a
frankfurter or some other type of sausage. Sausages or the like generally
exhibit some convexity. Applying Song's technique of forming a package
with a concavity corresponding to the convexity of its contents would cause
2 As concavity or convexity is, in this instance, dependent upon perspective
alone, for the sake of brevity we will hereinafter refer to this feature only as
concavity.
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Application 11/718,363
Dold's outer wrap 12 to conform more closely to the shape of the packed
commodity. This would have the predictable result of decreasing stress on
the outer wrap and minimizing excess material, both of which would
predictably make Dold's outer wrap have a neater appearance and be less
prone to damage. For these reasons, we are also in agreement with the
Examiner's conclusion that, in light of Song, it would have been obvious to
provide Dold's panel 18 with a convex or concave shape.
Many of Appellant's arguments do not appear to address the
Examiner's rejection as we have either understood it or modified it. We do
think it is clear that the cited references are reasonably relevant or derive
from the so-called analogous arts, to the extent Appellant argues otherwise.
See App. Br. 7. As we have acknowledged some shortcomings in the
Examiner's rejection and set forth additional facts and reasoning, pursuant to
our authority under 37 C.F.R. § 41.50(b), we designate our affirmance of the
Examiner's rejection as including a "new ground" so as to afford Appellant
a full and fair opportunity to respond.
DECISION
The Examiner's rejection is affirmed and our affirmance is designated
as including a "new ground" of rejection under 37 C.F.R. 41.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
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Application 11/718,363
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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; 37 C.F.R. 41.50(b)
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