Ex Parte Selle et al

Patent Trial and Appeal BoardApr 29, 2016

13042870 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/042,870 03/08/2011 22222 7590 05/03/2016 GEORGE R CORRIGAN CORRIGAN LAW OFFICE 2168 COLLADAY POINT DRIVE STOUGHTON, WI 53589 FIRST NAMED INVENTOR Paul A. Selle 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. CMD235C 7787 EXAMINER HARMON, CHRISTOPHER R ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 05/03/2016 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): george.corrigan@corrigan.pro gcorrigan@new.rr.com kari.brekke@corrigan.pro PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte PAUL A. SELLE and GREGORY T. PRELLWITZ Appeal2013-002418 Application 13/042,870 Technology Center 3700 Before STEFAN STAICOVICI, JILL D. HILL, and RICHARD H. MARSCHALL, Administrative Patent Judges. MARSCHALL, Administrative Patent Judge. DECISION ON APPEAL Paul A. Selle and Gregory T. Prellwitz (Appellants) seek our review under 35 U.S.C. Â§ 134 of the Examiner's final decision rejecting claims 34-- 39. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER Appellants' claimed subject matter relates to bag making machines. Spec. i-f 2. Claim 34, reproduced below, is the only independent claim and is representative of the claimed subject matter. 34. A cap for a sealer for a rotary bag machine comprising a base having a layer of material mounted thereon, wherein the layer of material is such that melted film is less likely to stick to Appeal2013-002418 Application 13/042,870 the layer than the base, and wherein the layer is disposed to the film when a seal or perforation is being created, and a heating wire stitched into the release layer and into the base, and wherein the cap includes a sealing area and a perforating area. Appeal Br. 13 (Claims App.). THE EVIDENCE The Examiner relied upon the following prior art references in rejecting the claims on appeal: Buob Schott us 3,586,821 us 3,271,560 THE REJECTIONS June 22, 1971 Sept. 6, 1966 Appellants seek review of the following rejections: 1. Claim 34 under 35 U.S.C. Â§ 102(b) as anticipated by Buob, or, in the alternative, under 35 U.S.C. Â§ 103(a) as unpatentable over Buob. 2. Claims 34--36 under 35 U.S.C. Â§ 102(b) as anticipated by Schott, or, in the alternative, under 35 U.S.C. Â§ 103(a) as unpatentable over Schott. 3. Claims 35-39 under 35 U.S.C. Â§ 103(a) as unpatentable over Buob. 4. Claims 35-39 under 35 U.S.C. Â§ 103(a) as unpatentable over Buob and Schott. 2 Appeal2013-002418 Application 13/042,870 ANALYSIS Rejections of Claim 34 Based upon Buob In support of the anticipation rejection under 35 U.S.C. Â§ 102(b) and the alternative rejection under 35 U.S.C. Â§ 103(a) based on Buob, the Examiner found that Buob discloses a heating wire 6 stitched into a release layer and cap 2 as required by claim 34. Final Act. 3. The Examiner also found that Buob 's cap 2 includes a metal base and an insulating layer, where melted film is less likely to stick to the insulating layer than the base. Id. at 5; Ans. 4. In support of this finding, the Examiner further found that the metal base of Buob, when in contact with the wire 6 of Buob, "will transfer heat generally with more efficiency than that of 'insulated materials"' and the higher heat will cause the plastic film to stick. Ans. 4. Appellants argue that Buob does not show the heating wire stitched into the insulating layer and base. Appeal Br. 9. Appellants further argue that Buob fails to teach that the insulating layer material "is such that melted film is less likely to stick to the layer than the base" as required by claim 34. Id. at 10. According to Appellants, "[n]othing in Buob teaches that the top layer of the laminate would help prevent melted film from sticking to the surface" and that reducing heat transfer does not make the film less sticky. Id. Appellants also assert that asbestos and other insulating materials such as those Buob discloses contain voids that the melted film can flow into, making the melted plastic more likely to stick to such materials in comparison to the metal base of Buob. Id. We agree with Appellants that the Examiner has not adequately supported the finding that Buob discloses a layer of material with properties 3 Appeal2013-002418 Application 13/042,870 "such that melted film is less likely to stick to the layer than the base" as required by claim 34. Id. Buob discloses a metal base, as the Examiner found, in the following passage: "The insulating material may also be mounted or cemented to a rigid backing member (not shown), such as a metal bar or plate." Buob, 2:23-25. The metal bar or plate does not appear in the figures, and no other details are provided regarding its composition, properties, or surface finish. Without such details, the Examiner's finding that the melted film would be less likely to stick to the insulating layer than the metal base lacks adequate support and is based on speculation. For example, it is not apparent how or to what extent heat from the wire 6 transfers to the metal base because Buob does not disclose any details regarding the manner in which the two are combined or how much heat transfer takes place. See Ans. 5. Similarly, Buob does not disclose the nature of the metal surface of the base, i.e., surface roughness, which could have an impact on the likelihood that the melted film will stick to the metal. In light of the foregoing, and because the Examiner's modification of Buob does not remedy the deficiency of Buob, we cannot sustain the Examiner's rejections of claim 34 based upon Buob. Rejections of Claim 34 Based on Schott In support of the anticipation rejection under 35 U.S.C. Â§ 102(b) and the alternative rejection under 35 U.S.C. Â§ 103(a) based on Schott, the Examiner found that Schott discloses a heating wire 32 stitched into a release layer 47 and cap 40 as required by claim 34. Final Act. 4. The Examiner also found that Schott discloses a metal base and an insulating 4 Appeal2013-002418 Application 13/042,870 layer, where metal film is less likely to stick to the insulating layer than the base. Id. at 5; Ans. 4. Appellants argue that Schott merely discloses a wire stitched into cement layer 47, not the cap 40 or any other base as required by claim 34. Appeal Br. 11. Appellants also argue that cement layer 4 7 is not a release layer as the Examiner found because "melted plastic will certainly stick to cement." Id. The Examiner's findings regarding Schott are not adequately supported for reasons similar to those discussed above in the context of Buob. As an initial matter, the Examiner does not make an express finding that the cap 40 (i.e., the claimed "base") is made from a particular material, and our review of the relevant portions of Schott does not reveal the material used for the cap 40. Even if the Examiner correctly assumed that Schott discloses a metallic cap material, the silence of Schott regarding the nature of that material, its properties, and its surface provide no support for the Examiner's finding that melted film is less likely to stick to the cement layer 47 than the cap 40. See Ans. 4. Because Schott does not disclose any of the details regarding the material of the cap 40 that would allow one of ordinary skill in the art to determine whether melted film is likely to stick to the cap 40, the Examiner did not adequately support the finding that melted film is less likely to stick to the cement layer 4 7 than the cap 40 and thus, the Examiner's findings are based on speculation. Accordingly, we do not sustain the rejections of claim 34 based upon Schott. 5 Appeal2013-002418 Application 13/042,870 Remaining Claims The remaining claims 35-39 depend from claim 34. Appeal Br. 13 (Claims App.). The Examiner's rejections of claims 35-39 rely upon the same findings discussed above in the context of claim 34, and none of the findings related to claims 35-39 remedy the deficiencies identified above. See Final Act. 3-5. Accordingly, we do not sustain the rejections of claims 35-39 for the same reasons discussed above regarding the rejection of claim 34. DECISION We reverse the decision of the Examiner to reject claims 34--39. REVERSED 6