Ex Parte Swain et alDownload PDFPatent Trial and Appeal BoardMar 28, 201712631087 (P.T.A.B. Mar. 28, 2017) Copy Citation 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 2 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 3 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. *,.v*S»W-w V. SSJf: . ^#7* x-\> >■,; : >A A' TvV " ' -V. V r.. i Li • A'"''' •• y ,A‘' „v-“‘ Sf>y-.:A ,'S>V'rtV< • a. Ax v . • 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 4 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, 5 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. 6 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 7 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) 8 Copy with citationCopy as parenthetical citation