Ex Parte RE42,240 E et al

Patent Trial and Appeal Board

Mar 30, 2016

95001694 (P.T.A.B. Mar. 30, 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.
95/001,694 07/21/2011 RE42,240 E 006759.00134 8121
22907 7590 03/31/2016
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
SPEER, TIMOTHY M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/31/2016 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
____________

SEALED AIR CORPORATION,
Requester,

v.

Patent of FREE-FLOW PACKAGING INTERNATIONAL, INC.,
Patent Owner and Appellant
____________

Appeal 2014-007360
Reexamination Control 95/001,694
Patent RE 42,240 E
Technology Center 3900
____________

Before STEVEN D.A. McCARTHY, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON REHEARING
In a Decision on Appeal issued June 26, 2015 (“Decision”), the panel
affirmed the Examiner’s rejections of claims 1–39 of United States Reissued
Patent RE 42,240 E (hereinafter the “’240 Patent”).
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In particular, the panel affirmed the Examiner’s rejections of all the
claims as follows:
VI. Claims 1–15, 17–19, 21–31, and 33–39 under 35 U.S.C.
§ 103(a) as obvious over U.S. Patent 4,096,306 to Larson
("Larson") in view of 4,551,379 to Kerr ("Kerr"); and

VII. Claims 16, 20, and 32 under 35 U.S.C. § 103(a) as
obvious over Larson in view of Kerr and U.S. Patent
4,874,093 to Pharo ("Pharo").
(Decision 1, 5, 16–17.)
Patent Owner requests rehearing of the decision affirming the
rejection of the claims under 37 C.F.R. § 41.79. Request for Rehearing
(“Request” or “Req. Reh’g”) dated July 24, 2015. Requester submitted
comments on Patent Owner’s Request for Rehearing on August 24, 2015
(hereinafter “Req. Comments”).
Patent Owner contends generally that the Decision erred in its
findings with respect to the scope and content of the prior art, and in the
ultimate conclusion of obviousness. (Req. Reh’g 2.) Patent Owner argues
more specifically that the Decision improperly discounted that Larson
purportedly teaches away from the proposed modification with the teachings
of Kerr. (Req. Reh’g 2–3.) In addition, Patent Owner contends that the
Decision erred by disregarding the principle of operation of Larson, which is
identified by Patent Owner as the ability to advance film material through an
inflation machine; and the Decision erroneously relied on precedent
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concerning physical combinability and bodily incorporation. (Req.
Reh’g 3.)
Requests for rehearing are governed by the standard set forth in 37
C.F.R. § 41.79(b), which reads:
(b)(1) The request for rehearing must state with
particularity the points believed to have been misapprehended
or overlooked in rendering the Board’s opinion reflecting its
decision. Arguments not raised in the briefs before the Board
and evidence not previously relied upon in the briefs are not
permitted in the request for rehearing except as permitted by
paragraphs (b)(2) and (b)(3) of this section.
(2) Upon a showing of good cause, appellant and/or
respondent may present a new argument based upon a recent
relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of
rejection made pursuant to § 41.77(b) are permitted.

We have reviewed the Request, and we agree with Requester that
Patent Owner has not “state[d] with particularity the points believed to have
been misapprehended or overlooked in rendering the Board’s opinion
reflecting its decision” as required by 37 C.F.R. § 41.79(b)(1). (See Req.
Comments 2, 5.)
Specifically, with respect to Patent Owner’s argument that Larson
teaches away (Req. Reh’g 4–7), the Decision stated:
. . . Larson discloses one fifth as an example for the dimension
of the constrictions (“e.g. less than approximately one fifth”),
and also Larson does not set forth a particular dimension of
constrictions that would fall into the category of “wider relative
to the width of the chamber portions.” (FF5.)
As noted by Patent Owner, Larson discloses that
narrower constrictions reduce stress concentration at the
constriction and increase the damping between the chamber
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portions. (FF1–FF5.) Kerr discloses that the sinuous partitions
form restrictions that act as damping orifices and assist in the
distribution of load to increase the shock handling capacity.
(FF 6–8.) Accordingly, the disclosures of Larson and Kerr are
consistent with respect to the effects of the particular seal line
configurations disclosed in each reference. (See Req. Resp’t
Br. 16–19.) The evidence of record does not support Patent
Owner’s contention that Larson teaches away from the
sinusoidal seal lines with restrictions disclosed in Kerr. For
these reasons, we are unpersuaded by Patent Owner’s argument.

(Decision 13.)
Thus, the Decision addresses the impact of Larson’s disclosure of one
fifth for the relative width of the constriction. In conjunction with this
discussion, we necessarily considered whether Larson’s example of one fifth
was a maximum value for the constriction width and the impact of the
proposed modification with Kerr. (See Req. Reh’g 4–5.) We see no reason
to revisit that determination here.
Regarding Patent Owner’s argument of the effect of the “corners” on
damping as it relates to the alleged teaching away (Req. Reh’g 5–6), we
observe that Patent Owner did not previously emphasize this aspect of
Larson. (See PO App. Br. 39–40, PO Reb. Br. 12–14.) Nevertheless, we
considered this teaching in the course of rendering the Decision (see FF5),
and as noted in the reproduced portion of the Decision above, did not find
the disclosure in Larson probative of a teaching away because of the
consistency between the disclosure of Kerr and Larson regarding a desire to
increase damping effect. There is insufficient evidence of record to support
Patent Owner’s view that utilizing the sinuous seal lines as disclosed in Kerr
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would frustrate the overall objective of Larson of providing an increased
damping effect between the chamber portions.
Accordingly, contrary to Patent Owner’s arguments, we did not ignore
the prior art as a whole in reaching the conclusion that Larson does not teach
away from the combination with Kerr. (Req. Reh’g 6–7.)
Regarding Patent Owner’s arguments pertaining to relocating the
inflation of channel of Larson to the longitudinal edge of the film material in
view of Kerr (Req. Reh’g 7–11), the Decision stated:
The Examiner found that Kerr teaches an inflation
channel, manifold 40, positioned near the edge of the
cushioning material and that it would have been obvious to
have positioned the inflation channel disclosed by Larson near
an edge as a suitable alternative location. (RAN 25.) We agree
that it would have been obvious to have positioned an inflation
channel near a longitudinal edge such that each row of bubble
chambers has a first chamber with an opening near a first
longitudinal edge of a film in view of Larson and Kerr.
Specifically, Kerr discloses that it is known to inflate
passageways in packaging materials by inflating the
passageway from one edge. (FF9.) This disclosure supports
the Examiner’s position that inflating a packaging material by
supplying air at an edge of the packaging material is a known
alternative to the location of the inflation channel disclosed by
Larson.

(Decision 14.)
In addition, as noted by Patent Owner (Req. Reh’g 8–11), we stated
that in view of the teachings of the prior art as a whole, positioning the
location channel near a longitudinal edge would have been obvious to one of
ordinary skill in the art. (Decision 14–15.) We agree with Requester, that
Patent Owner’s arguments were previously made and considered in the
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Decision, and as a result, are not appropriate for a request for rehearing.
(Req. Comments 2, 7–9; PO App. Br. 41–42, PO Reb. Br. 14–15.)
Regarding Patent Owner’s contentions that precedent cited in the
Decision relating to the physical combinability of references, bodily
incorporation, and the consideration of the prior art as a whole, are not on
point, to the extent that Patent Owner’s argument could be construed as
being a point misapprehended by the Decision, we do not agree. The cited
case law relates to the obviousness of the combination of Larson and Kerr,
and while Patent Owner contends that it would “defy common sense” that a
designer of a material would not take into account the method of inflation
(Req. Reh’g 10), Patent Owner fails to provide persuasive evidence that the
combination proposed would have been incapable of being inflated by an
inflation machine as disclosed in Larson when appropriately modified as
required by one of ordinary skill in the art.
Therefore, we decline to make any changes in the Decision mailed
June 26, 2015. Accordingly, the Request for Rehearing is denied.

DENIED

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Reexamination Control 95/001,694
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PATENT OWNER:
Banner & Witcoff, Ltd.
1100 13th Street, NW
Suite 1200
Washington, DC 20005-4051

THIRD-PARTY REQUESTER:

Alston & Bird, LLP
Bank of America Plaza
101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000

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