Ex Parte Tseng et alDownload PDFPatent Trial and Appeal BoardDec 14, 201713243410 (P.T.A.B. Dec. 14, 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. 13/243,410 09/23/2011 Ben Tseng IGP 1893 7722 321 7590 12/18/2017 SFNNTOFR POWFR N T T P EXAMINER 100 NORTH BROADWAY ATTEL, NINA KAY 17TH FLOOR ST LOUIS, MO 63102 ART UNIT PAPER NUMBER 3782 NOTIFICATION DATE DELIVERY MODE 12/18/2017 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): uspatents @ senniger.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BEN TSENG, TER-HAI LIN, JOE WANG, and JERRY HSU Appeal 2016-007806 Application 13/243,410 Technology Center 3700 Before MICHELLE R. OSINSKI, JEFFREY A. STEPHENS, and ERIC C. JESCHKE, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ben Tseng et al. (Appellants)1 appeal under 35 U.S.C. § 134 from the Examiner’s Final Rejection of claims 1-3, 6-10, and 12-20, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real party in interest as Inteplast Group, Ltd. Appeal Br. 2. Appeal 2016-007806 Application 13/243,410 THE CLAIMED SUBJECT MATTER Claims 1 and 10 are independent. Claim 1, reproduced below with disputed limitations emphasized, is illustrative of the claimed subject matter on appeal. 1. A plastic bag comprising: a first panel having a bottom edge, first and second side edges, and a top edge; a second panel having a bottom edge, first and second side edges, and a top edge, the Erst and second panels being joined to each other along the respecti ve bottom edges and first and second side edges to define a bag interior, the first and second panels defining an opening between the respective top edges permitting access to the bag interior; a resealahle sealing structure extending continuously s.-’ o -J between the first and second side edges of at least one of the panels generally adjacent to the top edges of the panels, the resealahle sealing structure being configured to repeatedly and nondestructively seal the first and second panels together to prevent access to the bag interior; and a secondary sealing structure comprising a pair of metallocene linear low-density polyethylene clingfilm strips, the secondary' sealing structure extending continuously between the first and second side edges of both of the panels at a location closer to the bottom edge than the resealable sealing structure, the secondary sealing structure being spaced from the resealable sealing structure a distance less than a distance between the secondary sealing structure and the bottom edges of the first and second panels, the secondary7 sealing structure being configured to selectively seal the first and second panels together to prevent access to die bag interior, the secondary sealing structure being constructed to configure itself in a default dosed position such that the secondary sealing structure seais the first and second panels together to prevent access to the bag interior unless a user holds the first and second panels apart. 2 Appeal 2016-007806 Application 13/243,410 EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Adamko Pawloski Borchardt McMahon Steele Zimmerman US 5,948,517 US 2004/0234172 A1 US 2005/0235468 A1 US 2005/0244083 A1 US 2008/0279485 A1 US 2010/0205909 A1 Sept. 7, 1999 Nov. 25, 2004 Oct. 27, 2005 Nov. 3, 2005 Nov. 13, 2008 Aug. 19,2010 THE REJECTIONS I. Claims 1-3 and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over McMahon, Steele, and Adamko. Final Act. 2-8. II. Claims 1-3, 9, 10, and 16-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Zimmerman, Steele, and Adamko. Id. at 9-15. III. Claims 6-8 and 12-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over McMahon or Zimmerman, Steele, Adamko, and Borchardt. Id. at 15-19. IV. Claims 9 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over McMahon, Steele, Adamko, and Pawloski. Id. at 19-20. V. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over McMahon, Steele, Adamko, and Zimmerman. Id. at 20-21. OPINION Rejection I The Examiner finds that McMahon teaches most of the limitations of independent claim 1, including, inter alia, a “secondary sealing structure 3 Appeal 2016-007806 Application 13/243,410 [82, 84], . . comprising] a pair of flexible webs which ... are comprised of strips of cling film typically made from a material which adheres to itself and other non-adherent surfaces.” Final Act. 3 (citing McMahon 59). The Examiner finds that McMahon’ disclosure of “cling film strips . . . itself is sufficient to suggest that the material is capable of functioning as claimed so as to provide ... a default closed position.” Ans. 4 (citing McMahon ^ 59, 70-72). The Examiner further finds that McMahon teaches that the cling films can be made of webs of linear low-density polyethylene coated or blended with a tackifier. Final Act. 21 (citing McMahon ]fl[ 59-62, 70, 72); see also Ans. 4 (stating McMahon “form[s] tacky cling film strips”). In light of this teaching in McMahon, along with Appellants’ disclosure in the Specification of a tacky cling film, the Examiner determines that “one of ordinary skill would have expected the films disclosed by McMahon to have a natural tendency to be drawn or attracted towards one another when proximately positioned and therefore, . . . the cling films disclosed by McMahon are concluded to be capable of configuring themselves in a default closed position.” Final Act. 22. The Examiner finds that “[tjhere is no apparent or obvious functional difference between the cling film presently disclosed by [Appellants] and the cling film disclosed by McMahon.” Id. (emphasis omitted). Appellants’ Specification teaches that a cling film made of linear low- density polyethylene/ethylene vinyl acetate, formulated without a slip additive, results in a “tacky” cling film strip (Spec. ^ 16) and then states that “[b]ecause of the tackiness of the cling film strips . . . they will engage each other even without pressure applied by the user” and have a “default closed position” {Id. ^[ 17). In view of Appellants’ Specification suggesting a 4 Appeal 2016-007806 Application 13/243,410 correlation between the tackiness of the cling film strips and the cling film strips being constructed so as to engage each other even without pressure from a user (i.e., being constructed to configure itself in a default closed position) (Spec. 16-17), we agree with the Examiner’s finding that McMahon’s cling films, being tacky, are constructed to configure themselves in a default closed position. Final Act. 22.2 The Examiner finds that McMahon’s “cling film strips are comprised of linear low-density polyethylene coated or blended with a tackifier.” Id. at 4 (citing McMahon ^ 72). The Examiner acknowledges that McMahon fails to teach metallocene linear low-density polyethylene (“mLLDPE”) cling film strips. Id. The Examiner finds that “Adamko teaches that cling films are known to comprise a linear low-density polyethylene and further teaches that linear low-density polyethylene is preferably polymerized with metallocene as metallocene polymers are known in the prior art to be tacky, blocky and self-adherent.” Id. (citing Adamko, 1:54-59, 2:27-36, 3:54-65). 2 We note that in connection with this rejection we do not rely on the Examiner’s additional finding that “as cling films have been shown in the prior art by Steele to have high surface energy or static charge properties which tend to draw, attract and cling opposing films together, the cling films which form the secondary sealing structure as disclosed by McMahon are concluded to further be constructed to configure themselves in a default closed position.” Final Act. 3-4 (citing Steele ^ 89). We further note that in connection with this rejection we do not rely on the Examiner’s conclusion that “it would have been obvious to modify the bag of McMahon by specifically forming the pair of cling strips of a material having a high surface energy or static charge as taught by Steele such that the cling strips which form the secondary sealing structure are constructed to configure themselves in a default closed position.” Id. at 4. Accordingly, we do not address these positions by the Examiner, or Appellants’ arguments in response thereto, in connection with Rejection I. 5 Appeal 2016-007806 Application 13/243,410 The Examiner concludes that it would have been obvious to modify McMahon’s cling strips to comprise mLLDPE “in order to ensure that the cling film strips have tacky and self-adherent properties ... as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.” Id. at 4-5 (citing In re Leshin, 227 F.2d 197 (CCPA I960)). The Examiner notes that “Adamko discloses that tacky and sealing engageable films are known to comprise a LLDPE preferably polymerized with metallocene as metallocene polymers are known in the prior art to be tacky, blocky and self-adherent.” Ans. 9-10 (citing Adamko, 1:54-59, 2:27-36, 3:54-65). The Examiner determines that “there is sufficient teaching and suggestion in the prior art references to support the conclusion that the films disclosed by McMahon and Adamko would function equivalently to provide a . . . default closed position.” Id. Appellants argue that “McMahon does not. . . disclose or suggest that the flexible webs 82, 84 . . . configure themselves in a default closed position.” Appeal Br. 7. Rather, Appellants assert, “McMahon expressly discloses that ‘[ijnitially the webs 82 and 84 of cling film are separated.’” Id. at 9 (quoting McMahon 71). Moreover, Appellants assert if “cling film webs 82, 84 [were] defaulted to a closed position, it would be impossible to remove air enclosed between the webs 82, 84 and zipper 92 using the vacuum system.” Id. Although features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997); see also Hewlett-Packard Co. v. 6 Appeal 2016-007806 Application 13/243,410 Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[AJpparatus claims cover what a device is, not what a device does”). Therefore, the apparatus of the prior art meets the recited functionally defined limitation (i.e., the secondary sealing structure being constructed to configure itself in a default closed position such that the secondary seal structure seals the first and second panels together to prevent access to the bag interior unless a user holds the first and second panels apart) if it is capable of the recited function. The prior art reference need not envision the device actually being used to perform the claimed function. See Schreiber, 128F.3dat 1477 (“Although Schreiber is correct that [the prior art] Harz does not address the use of the disclosed structure to dispense popcorn, the absence of a disclosure relating to function does not defeat the Board’s finding of anticipation.”). “[CJhoosing to define an element functionally, i.e., by what it does, carries with it a risk.” Id. at 1478. This risk is that Appellants may bear the burden to prove that the prior art does not possess the functional characteristic. Appellants’ argument that McMahon’s default position is separated is not evidence or persuasive technical reasoning as to why McMahon’s cling film strips are incapable of the claimed function of configuring themselves in a default closed position, at least when they are in sufficient proximity to each other and there is no force holding them apart. As explained by the Examiner, “to a certain degree (i.e., if held far enough apart or if held apart by force), there is no cling film that can be positioned in a default closed position.” Final Act. 22. As to the ability to remove air when in a default closed position, the Examiner responds that “the interior volume is capable of being evacuated regardless of the positon of the webs and regardless of the type of material of the cling films forming the webs.” Ans. 8. The 7 Appeal 2016-007806 Application 13/243,410 Examiner maintains that the basic purpose of the vacuum bag would not be undermined. Id. Appellants additionally argue that “McMahon specifies that it is only after a vacuum creates a differential pressure between the interior volume 58 and atmosphere that the seals are drawn together.” Reply Br. 2 (citing McMahon ^ 71). According to Appellants, “[ujnder default conditions in which there is no pressure differential between the interior volume 58 and atmosphere, [McMahon’s] webs are separated; and under non-default conditions in which there is a differential pressure across the webs due to a vacuum in the interior volume, the webs are drawn into contact.” Id. Appellants, thus, argue that “upon completion of [a sequence of operations consisting of opening, filling, and closing a bag], the interior volume would be at equilibrium with atmospheric pressure,” not a “pressurized interior volume” {id.), such that the webs in McMahon would be separated in default conditions. Again, Appellants’ argument that McMahon’s default position is open does not provide evidence or persuasive technical reasoning as to why McMahon’s cling film strips are incapable of the claimed function of configuring themselves in a default closed position at least when they are in sufficient proximity to each other and there is no force holding them apart. The Examiner finds that “the cling film strips are initially separated because of pressure inside the interior volume (58) pushing them apart” (Ans. 4) and that “the initial separation of the cling film strips is dependent on the pressure inside the interior volume” {id. at 5). The Examiner maintains that “one of ordinary skill would have expected the cling film strips disclosed by McMahon to have a tendency to be drawn/attracted towards one another 8 Appeal 2016-007806 Application 13/243,410 absent excess pressure inside the interior volume.” Id. at 5. McMahon specifically teaches that a user is inserting an article to be stored into the interior volume of the bag, which would necessitate the webs being sufficiently separated to allow entry of the article into the bag. Under conditions in which the webs are in closer proximity, Appellants have not persuasively explained why McMahon’s cling film strips would be incapable of configuring themselves in a default position. Appellants also argue that “types of cling film hav[ing] much lower surface energies . . . rely on other properties such as tackiness to create cling.” Reply Br. 3. According to Appellants, “[tjhese tacky materials remain closed after being forced together but do not substantially attract one another over space because of their low surface energy.” Id. The Examiner responds that “[t]he present invention provides no disclosure of any type of surface energy (i.e., low or high)” and “there is no evidence to support that the type of surface energy of a cling film is critical.” Ans. 3. We agree with the Examiner in that Appellants’ Specification clearly suggests that, “[bjecause of the tackiness of the cling film strips 40, 42, they will engage each other even without pressure applied by the user” such that “the bag 10 will be closed by the cling film strips 40, 42 . . . unless a user selectively chooses to hold the bag open” (Spec. ^ 17), rather than any particular type of surface energy being required to achieve a default closed position. Appellants bear the burden to show that McMahon’s cling film strips do not inherently possess the functionally defined limitations of the claimed apparatus (Schreiber, 128 F.3d at 1478), and Appellants’ contentions are attorney’s argument, not persuasive evidence, that McMahon’s cling film strips are incapable of performing the functionally defined limitation. See In 9 Appeal 2016-007806 Application 13/243,410 re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (An attorney’s argument in a brief cannot take the place of evidence.) For the foregoing reasons, we do not find that the Examiner erred in concluding that the subject matter of independent claim 1 is unpatentable as obvious over McMahon, Steele, and Adamko.3 We sustain the rejection of independent claim 1. We also sustain the rejection of claims 2 and 3, which depend therefrom, and independent claim 10, which recites similar language as independent claim 1, because Appellants rely on the same arguments and reasoning we found unpersuasive in connection with independent claim 1. See Appeal Br. 12. Rejection II Claims 1-3, 9, 10, and 16-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Zimmerman, Steele, and Adamko. Final Act. 9-15. The Examiner finds that Zimmerman teaches most of the limitations of independent claim 1, including, inter alia, “a secondary sealing structure (182, 184). . . being configured to selectively seal the first and second panels together to prevent access to the bag interior.” Id. at 9 (citing Zimmerman 24-34, Figs. 1-3). The Examiner finds Zimmerman’s secondary sealing structure “comprises a pair of light tack adhesive peel seals.” Id. at 10. The Examiner acknowledges that Zimmerman “fails to specifically teach the secondary sealing structure comprising a pair of [mLLDPE] cling film strips, wherein the cling film strips are constructed to configure itself in a default closed position.” Id. at 9-10. 3 Although we rely principally on McMahon and Adamko, we note that in affirming a multiple reference rejection under 35 U.S.C. § 103, the Board may rely on fewer than all of the references relied on by the Examiner in an obviousness rationale. In re Bush, 296 F.2d 491, 496 (CCPA 1966). 10 Appeal 2016-007806 Application 13/243,410 The Examiner finds that Steele “teaches that as an alternative to adhesives, it is known in the prior art to form the pair of barrier films of a material having a high surface energy or static charge, such that the barrier films have a tendency to adhere and/or cling to themselves or other objects.” Id. at 10 (citing Steele ^ 89). The Examiner further finds that “Adamko teaches that cling films are known to comprise a linear low-density polyethylene and further teaches that linear low-density polyethylene is preferably polymerized with metallocene as metallocene polymers are known in the prior art to be tacky, blocky and self-adherent.” Id. (citing Adamko, 1:54-59, 2:27-36, 3:54-65). The Examiner concludes that: as cling films having a high surface energy or static charge properties which tend to draw, attract and cling opposing films together have been shown in the prior art to be a known alternative to adhesive films, it would have been obvious to . . . modify the bag [of] Zimmerman by specifically forming the secondary sealing structure of a pair of cling film strips comprising a material having a high surface energy or static charge as taught by Steele such that [the] secondary sealing structure is constructed to configure itself in a default closed position .... Further, it would have been obvious to specifically form the secondary sealing structure of a material comprising [mLLDPE] as taught by Adamko in order to ensure that the cling film strips have tacky and self-adherent properties ... as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. Id. at 10-11 (citing In re Leshin, 227 F.2d 197 (CCPA I960)). Appellants argue that “the Examiner has not reasonably articulated how the proposed combination would function or why one skilled in the art would have reasonable expectations of success in combining the references 11 Appeal 2016-007806 Application 13/243,410 as suggested.” Appeal Br. 13. More particularly, Appellants take the position that the combination of Steele with the primary reference achieves a default closed position “through use of a high surface energy material as shown by Steele,” whereas “mLLDPE, such as the species of material disclosed in Adamko, has low surface energy and static charge.” Id. at 10. Appellants assert that “the difference between low surface energy and high surface energy material directly affects the function of the materials in this context.” Id. Appellants argue that: the Examiner provides no articulated reasoning to show that mLLDPE material would function like the high surface energy material described in Steele to orient the sealing webs [of the primary reference] to draw themselves together when positioned proximally to each other. Furthermore, . . . one skilled in the art would not have a reasonable expectation from the cited references that the proposed substitution of low surface energy mLLDPE would successfully produce a bag that configures the cling film strips to draw themselves together. To support aprima facie case based on the cited references requires ... an explanation of why one skilled in the art would expect low surface energy mLLDPE to perform the same as the high surface energy film of Steele, when Steele states that it is the high surface energy of the material that causes its film strips to draw themselves together. Id. at 10-11. We have considered these arguments, but find them unavailing. The Examiner has adequately explained why one of ordinary skill in the art would be led to form modified Zimmerman’s cling film strips from mLLDPE—namely, to provide cling film strips that have tacky and self adherent properties. Final Act. 10-11. As explained above in connection with Rejection I, tacky and self-adherent cling film strips are structurally indistinguishable from the claimed secondary sealing structure constructed 12 Appeal 2016-007806 Application 13/243,410 to configure itself in a default closed position, as evidenced by the statement in the Specification that the cling film strips will engage each other even without pressure applied “[bjecause of the tackiness of the cling film strips.” Spec. 17. Accordingly, we are not persuaded that forming modified Zimmerman’s cling film strips of Adamko’s mLLDPE material would cause the cling film strips to fail to be constructed to configure themselves in a default closed position, or otherwise fail to perform the same as Steele’s material that has “a tendency to adhere and/or cling to [itself].” Steele ^ 89. Steele itself expressly recognizes the suitability of adhesives in place of its high surface energy material in other embodiments. Id. Accordingly, we are not persuaded that the Examiner has failed to articulate reasoning having rational underpinnings to explain why and how one of ordinary skill in the art would combine the references to achieve the claimed subject matter. Appellants also argue that “any substitution of the low surface energy mLLDPE material of Adamko would contradict the principle of operation by which the proposed combination of references achieves the default sealed position” because the Examiner “relies solely on Steele to explain the principle of operation by which cling film strips are drawn into default sealing engagement.” Appeal Br. 13. The “principle of operation” referred to by Appellants relates to the “basic principles” under which the prior art device was designed to operate. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principles under which the [primary reference] construction was designed to operate.”) (emphasis added). Under Ratti, “a change in the basic principles” refers to change that 13 Appeal 2016-007806 Application 13/243,410 is fundamental in scope so as to relate to scientific or technical principles under which the invention is designed to operate. Here, making modified Zimmerman’s cling film strips out of a tacky and self-adherent material does not affect the overall principle of operation of sealing the opposing panels of a plastic bag, nor configuring the cling strips in a default position to prevent access unless a user holds the first and second panels apart, as explained in more detail above. For the foregoing reasons, we determine that the Examiner did not err in concluding that the subject matter of independent claims 1 and 10 is unpatentable over Zimmerman, Steele, and Adamko. We sustain the rejection of claims 1 and 10 as unpatentable over Zimmerman, Steele, and Adamko. We also sustain the rejection of claims 2, 3, 9, and 16-20, which depend therefrom, and for which Appellants rely on the same arguments we found unpersuasive in connection with the independent claims. Appeal Br. 13. Rejections III, IV, and V Claims 6-8 and 12-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over McMahon or Zimmerman, Steele, Adamko, and Borchardt. Final Act. 15-19. Claims 9 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over McMahon, Steele, Adamko, and Pawloski. Id. at 19-20. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over McMahon, Steele, Adamko, and Zimmerman. Id. at 20-21. Appellants’ arguments in support of the patentability of claims 6-9 and 12-18 solely relate to the perceived deficiencies of McMahon or Zimmerman, Steele, and Adamko. Appeal Br. 14-15. Because we have found no such deficiencies, we also sustain the rejections, under 35 U.S.C. 14 Appeal 2016-007806 Application 13/243,410 § 103(a), of: claims 6-8 and 12-15 as unpatentable over McMahon or Zimmerman, Steele, Adamko, and Borchardt; claims 9 and 16 as unpatentable over McMahon, Steele, Adamko, and Zimmerman, and claims 17 and 18 as unpatentable over McMahon, Steele, Adamko, and Zimmerman. DECISION The Examiner’s decision to reject claims 1-3 and 10 under 35 U.S.C. § 103(a) as unpatentable over McMahon, Steele, and Adamko is affirmed. The Examiner’s decision to reject claims 1-3, 9, 10, and 16-20 under 35 U.S.C. § 103(a) as unpatentable over Zimmerman, Steele, and Adamko is affirmed. The Examiner’s decision to reject claims 6-8 and 12-15 under 35 U.S.C. § 103(a) as unpatentable over McMahon or Zimmerman, Steele, Adamko, and Borchardt is affirmed. The Examiner’s decision to reject claims 9 and 16 under 35 U.S.C. § 103(a) as unpatentable over McMahon, Steele, Adamko, and Pawloski is affirmed. The Examiner’s decision to reject claims 17 and 18 under 35 U.S.C. § 103(a) as unpatentable over McMahon, Steele, Adamko, and Zimmerman is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 15 Copy with citationCopy as parenthetical citation