Ex Parte Swain et al

Patent Trial and Appeal Board

Mar 28, 2017

12631087 (P.T.A.B. Mar. 28, 2017)

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.
121981-00284 1075
EXAMINER
COLLADO, CYNTHIA FRANCISCA
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
12/631,087 12/04/2009
51468 7590 03/28/2017
McCarter & English LLP
ACCOUNT: ILLINOIS TOOL WORKS INC.
245 Park Avenue
NEW YORK, NY 10167
Henry L. Swain
03/28/2017 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 HENRY L. SWAIN, JENNIFER M. COPES,
JOSEPH T. COWIN, DONALD L. CREVIER,
OWEN J. MCGAREL, STANLEY PIOTROWSKI,
MICHAEL J. MCMAHON, and ELDRIGE J. PRESNELL
Appeal 2015-005095
Application 12/631,087
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Henry L. Swain et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision to reject claims 1—11 and 13—21.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and designate our affirmance as a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
i Claim 12 is canceled. Br. 2.
Appeal 2015-005095
Application 12/631,087
CLAIMED SUBJECT MATTER
The claims are directed to a water-resistant asset protection bag.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A bag for protecting contents thereof, comprising:
a first planar half including four sides and a second planar
half including four sides, wherein one of the four sides of the first
planar half is attached to one of the four sides of the second
planar half, wherein the first and second planar halves can be
spread apart from each other to form a side-by-side adjacent
configuration;
a vacuum port in the first planar half, the vacuum port
allowing a user to remove a portion of air from an interior of the
bag, the vacuum port including a base which surrounds an
opening in the first planar half of the bag, a cap attached to the
base by a living hinge, and a flapper which is held in place over
the opening by the cap in its closed position;
a water-resistant zipper including a first zipper profile and
a second zipper profile, the first zipper profile extending around
at least three sides of the first planar half in a U-shaped
configuration and the second zipper profile extending around at
least three sides of the second planar half in a U-shaped
configuration, whereby the bag can be folded from the side-by-
side adjacent configuration so as to bring the first planar half over
the second planar half thereby bringing the first zipper profile
against the second zipper profile thereby forming a closed
configuration;
the water-resistant zipper further including a water-
resistant slider.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Manko
Thomas
US 5,579,916
US 5,713,669
Dec. 3, 1996
Feb. 3, 1998
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Appeal 2015-005095
Application 12/631,087
Pratt
Tilman
Siegel
US 5,996,800 Dec. 7, 1999
US 2006/0048483 A1 Mar. 9, 2006
US 2006/0246242 A1 Nov. 2, 2006
REJECTIONS
(I) Claims 1, 8, 11, and 13—19 are rejected under 35 U.S.C. §
103(a) as unpatentable over Tilman, Pratt, and Manko.
(II) Claims 2—7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tilman, Pratt, Thomas, and Manko.
(III) Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tilman, Pratt, Siegel, and Manko.
(IV) Claims 20 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tilman, Pratt, Siegel, Thomas, and Manko.
Claim 1 requires that (1) the first and second planar halves can be
spread apart from each other to form a side-by-side adjacent configuration
and (2) the bag can be folded from the side-by-side adjacent configuration so
as to bring the first planar half over the second planar half thereby bringing
the first zipper profile against the second zipper profile. Independent claim
11 includes a substantially similar limitation. See Br. 10, 12 (Claims App.).
The Examiner finds that Tilman discloses most of the limitations of
claim 1, including a bag formed from two planar halves, wherein one side of
the first planar half is attached to one side of the second planar half, and
wherein the halves can be spread apart from each other to form a side-by-
OPINION
Rejection (I): Tilman, Pratt, and Manko
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Appeal 2015-005095
Application 12/631,087
side adjacent configuration. Final Act. 2—3. The Examiner provides an
annotated copy of Figure 14 of Tilman to indicate what the Examiner
considers a side-by-side configuration. Final Act. 5. We reproduce the
Examiner’s annotated copy of Figure 14 of Tilman below.
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The Examiner’s annotated copy of Figure 14 of Tilman illustrates an
isometric view of Tilman’s storage device in a folded condition. The
Examiner also finds that Tilman discloses that the bag can be folded so as to
bring the first half over the second half thereby bringing the first zipper
profile against the second zipper profile. Final Act. 3.
Appellants argue that because the container of Tilman includes three
coextensive walls that are permanently sealed together and a single unsealed
side that is reclosable using a zipper, “the coextensive walls cannot be
‘spread apart from each other to form a side-by-side adjacent configuration’
as recited in the presently pending claims.” Br. 6.
We agree with Appellants on this point. In the side-by-side
configuration upon which the Examiner relies, as seen in the Examiner’s
annotated Figure 14 of Tilman above, the sheet forming the bag is already
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Appeal 2015-005095
Application 12/631,087
folded over and sealed on three sides to form the bag, and the two zipper
profiles are aligned. Further, folding bag 10 of Tilman (or the sheet
comprising bag 10) does not “bring the first planar half over the second
planar half thereby bringing the first zipper profile against the second zipper
profile” as claimed. Thus, the Examiner erred in finding “the bag [of
Tilman] can be folded (sheet is folded to form storage device 10, [0035]) so
as to bring the first half over the second half thereby bringing the first zipper
profile against the second zipper profile” (Final Act. 3).
Notwithstanding the above-noted error in the Examiner’s rejection of
claims 1, 8, 11, and 13—19, we agree with the Examiner that it would have
been obvious to combine Tilman, Pratt, and Manko to provide a bag that can
be folded from a side-by-side adjacent configuration so as to bring a first
planar half over a second planar half as claimed. The rationale for this
modification is, as the Examiner states in the Answer, that it would have
been obvious to use a zipper along three sides of the bag because “it allows
the bag to be fully opened allowing easier access/exposure to contents.”
Ans. 13. Tilman starts with a rectangular sheet 16 that is folded over upon
itself, and, as such, starts in a side-by-side adjacent configuration and then,
“can be folded from the side-by-side adjacent configuration so as to bring
the first planar half over the second planar half,” as required by claim 1. See
Tilman, para. 32. In addition, as the Examiner notes, Manko teaches using a
zipper on three sides, which also presents a side-by-side adjacent
configuration and allows the bag to be folded from the side-by-side adjacent
configuration so as to bring the first planar half 14 over the second planar
half 14 (and associated zipper profile arrangement), as claimed. See Manko,
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Appeal 2015-005095
Application 12/631,087
Figs. 1 and 2. The implementation of a zipper on three sides of the bag of
Tilman would have been within the level of skill in the art inasmuch as the
design and construction of the zipper does not depend on the number of
sides it is to seal. This configuration results in a structure capable of being
folded into the “the side-by-side adjacent configuration” required by claim 1
and erroneously found by the Examiner to exist in Tilman’s bag in its
unmodified state. Further, replacing sealed lateral sides 15 of Tilman with
zippered lateral sides, as taught by Manko would predictably result in closed
and sealed lateral sides, and would allow easier access/exposure to the
contents of the bag. See Tilman, para. 37; see also Manko, col. 3,11. 35—37.
As to claim 11 and Appellants’ additional assertion that, “nothing in
the cited references is particularly relevant to a vehicular protection bag,”
this limitation is an intended use that Tilman is capable of meeting
depending on the size of the bag. Br. 7.
For these reasons, we affirm the Examiner’s rejection of claims 1, 8,
11, and 13—19, but with the determination that it would have been obvious to
provide the bag of Tilman with zippers on three sides, as taught by Manko,
so that the bag can be folded from the side-by-side adjacent configuration so
as to bring the first planar half over the second planar half, as recited, instead
of a finding that Tilman discloses such an arrangement in its unmodified
state. The rationale for this modification is to allow easier access/exposure
to the contents of the bag. As our reasoning and findings differ from those
of the Examiner, we designate the affirmance of the rejection of claims 1,8,
11, and 13—19 as unpatentable over Tilman, Pratt, and Manko a NEW
GROUND OF REJECTION.
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Appeal 2015-005095
Application 12/631,087
Rejections (II) to (IV): Tilman, Pratt, Thomas, Siegel, and Manko
In support of claims 2—7, 9, 10, 20, and 21, Appellants rely only on
the arguments discussed above relating to Rejection (I). Br. 7—8.
Accordingly, claims 2—7, 9, 10, 20, and 21 fall with claim 1. As claims 2—7,
9, and 10 depend from claim 1, and claims 20 and 21 depend from claim 11,
we denominate our affirmance as a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b), because our analysis relies upon facts and
reasoning that the Examiner did not use.
SUMMARY
The Examiner’s decision to reject claims 1—11 and 13—21 is affirmed.
For the reasons discussed above, we designate our affirmance a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 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
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
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Appeal 2015-005095
Application 12/631,087
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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