Ex Parte Varriano-Marston

Patent Trial and Appeal Board

Mar 14, 2018

12733470 (P.T.A.B. Mar. 14, 2018)

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.
12/733,470 03/03/2010 Elizabeth Varriano-Marston MARS008-US 2969
24222 7590 03/16/2018
Maine rVmnta Rr RarHin
EXAMINER
547 Amherst Street THAKUR, VIREN A
3rd Floor
Nashua, NH 03063 ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
03/16/2018 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):
patents @ mcr-ip.com
dwitmer@mcr-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELIZABETH VARRIANO-MARSTON
Appeal 2017-002368
Application 12/733,470
Technology Center 1700
Before JAMES C. HOUSEL, GEORGE C. BEST, and
SHELDON M. McGEE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—3, 5—10, 12—14, 18, 20, 21,
24—32, and 35—37 of Application 12/733,470 under 35 U.S.C. § 103(a) as
obvious. Final Act. 5—24 (August 19, 2015). The Examiner also rejected
claims 1-3, 5-10, 12-14, 18, 21, 2A-27, 30-32, and 35-37 under 35 U.S.C.
§ 112,11, as failing to comply with the written description requirement.
Id. at 2-4. The Examiner further rejected claim 36 under 35 U.S.C. § 112, |
2, as indefinite. Id. at 4—5. Appellant seeks reversal of these rejections
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.
Appeal 2017-002368
Application 12/733,470
BACKGROUND
The ’470 Application generally relates to a method for packaging
fresh fruits, especially bananas and plantains. Spec. 1. In particular, the
technology involved is alternatively referred to as MAP (modified
atmosphere packaging) or CAP (controlled atmosphere packaging). Id. The
goal in MAP/CAP is to improve for quality by reducing the fresh fruit’s
aerobic respiration rate while avoiding anaerobic processes that degrade the
fruit’s texture, flavor, and aroma. Id.
According to the ’470 Application’s Specification:
Bananas pose a unique challenge and MAP/CAP. There
is a complex system for distributing bananas which involves
harvesting the fruit when it is green, packaging the green fruit
in cartons, shipping the fruit to distant markets via ocean liners,
initiating ripening at the receiving port by gassing the green
fruit with ethylene, and after sufficient time is allowed for
ripening, the fruit is shipped to the wholesale or retail markets.
In order to provide consumers the best quality of bananas
and plantains, the producers are constantly trying to find a
technology which would provide maintenance of the green life
of bananas during shipping and on the other hand uniform
ripening and long yellow life. Banana or plantain green life and
banana or plantain shelf life are two competing physiological
conditions. By drastically decreasing the oxygen content green
life is greatly increased. On the other hand ripening requires
ethylene gas.
The currently available technology to maintain the green
life while shipping includes depriving oxygen from the bananas
or plantains. This may take place, for example, by closing the
bananas or plantains in plastic bags having a low permeability
to oxygen.
Id. at 2.
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Application 12/733,470
Known plastic bags have limitations with respect to shipping bananas
and plantains. Id. at 3. Some bags are made from polyethylene and lack
holes. Id. Such bags are useful for extending the green life of bananas. Id.
Because the polyethylene is impervious to ethylene gas, each bag must be
ripped open before the bananas can be exposed to ethylene to initiate the
ripening process. Id. Other bags are made from polyethylene but have holes
punched in them. Id. These bags cannot be used to delay the ripening of the
fruit or to extend the shelf life of bananas because there is no control of the
atmosphere within the bag. Id. Still other bags make use of microporous
materials to control gas transfer rate into and out of the bag. Id. at 3—6.
The ’470 Application’s Specification states that “the method of this
invention provides laser microperforated banana and plantain bags having
registered microperforation arrays to allow for transmission of oxygen,
carbon dioxide, and ethylene gases into and out of the packaging for
optimum quality preservation of the fruit.” Id. at 6.
Claim 1 is representative of the ’470 Application’s claims and is
reproduced below from the Claims Appendix.
1. A method of packing bananas or plantains, said method
having means for both ripening and extending the shelf life of
said bananas or plantains, the method comprising:
selecting a quantity of bananas or plantains to be
packaged;
providing a box of sufficient capacity to enclose the
selected quantity of bananas or plantains;
providing a plastic bag having a bottom at a distal end
thereof, and a top at an initially open proximal end, said plastic
bag being configured to enclose the selected quantity of
bananas or plantains;
laser microperforating the plastic bag only in a
distributed plurality of target areas on the bag, each of said
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Application 12/733,470
target areas including a plurality of microperforations, each of
said target areas being separated from all of its neighbors by
distances that are greater than its largest dimension, said target
areas including target areas located at both the bottom and the
top of the bag, said microperforations allowing a limited gas
exchange through the bag;
inserting the microperforated bag in the box;
inserting the selected quantity of green bananas or
plantains into the bag with their concave sides facing down;
hermetically sealing the proximal end of the plastic bag;
storing the bananas or plantains for a green storage
period during which said limited gas exchange through the bag
creates a modified atmosphere within the bag; and
inducing banana or plantain ripening inside the
hermetically sealed bag by exposing the bag to a ripening gas
without opening the bag.
Appeal Br. 33.
REJECTIONS
On appeal, the Examiner maintains1,2 the following rejections:
1. Claims 1—3, 5—10, 12—14, 18, 21, 24—27, 30—32, 35, and 36 are
rejected under 35 U.S.C. § 112,11, as failing to comply with the
written description requirement. Final Act. 2.
2. Claims 1—3, 5—7, 10, 12, 25, 30, and 31 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Mir
1 Appellant has cancelled claim 37. Amendment After Final 8 (January 27,
2016; entered February 17, 2016).
2 The Examiner has withdrawn the rejection of claim 36 as indefinite.
Advisory Action (February 17, 2016).
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Application 12/733,470
’129,3 Varriano-Marston,4 Wendt,5 Hayashi,6 Rodriguez,7
Sanabria,8 Mir ’770,9 and Umiker.10 Final Act. 5.
3. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Mir ’129, Varriano-Marston, Wendt,
Hayashi, Rodriguez, Sanabria, Mir ’770, Umiker, and Clarke.11
Final Act. 16.
4. Claims 8, 9, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mir ’129, Varriano-
Marston, Wendt, Hayashi, Rodriguez, Sanabria, Mir ’770,
Umiker, and either Clayton12 or Porchia.13 Final Act. 17—18.
5. Claims 18 and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mir ’129, Varriano-
3 US 2005/0266129 Al, published December 1, 2005.
4 US 7,083,837 Bl, issued August 1, 2006.
5 US 2,689,678, issued September 21, 1954.
6 US 5,698,249, issued December 16, 1997.
7 US 5,617,711, issued April 8, 1997.
8 US 2005/0051450 Al, published March 10, 2005.
9 WO 2005/118770 A2, published December 15, 2005.
10 EP 0 823 387 Al, published February 11, 1998. This is a German-
language document. We rely upon the translation of the abstract that was
entered into the prosecution history of the ’470 Application on August 19,
2015.
11 US 2002/0127305 Al, published September 12, 2002.
12 US 3,718,059, issued February 27, 1973.
13 US 5,492,705, issued February 20, 1996.
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Application 12/733,470
Marston, Wendt, Hayashi, Rodriguez, Sanabria, Mir ’770,
Umiker, Clarke, and either Clayton or Porchia. Final Act. 19.
6. Claims 20, 21, 29, 32, and 35 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Mir ’129,
Varriano-Marston, Wendt, Hayashi, Rodriguez, Sanabria, Mir
’770, Umiker, Clarke, Franaszek,14 and either Clayton or Porchia.
Final Act. 19.
7. Claims 24 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mir ’129, Varriano-
Marston, Wendt, Hayashi, Rodriguez, Sanabria, Mir ’770,
Umiker, Clarke, Badran,15 and either Clayton or Porchia. Final
Act. 21.
8. Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Mir ’129, Varriano-Marston, Wendt,
Hayashi, Rodriguez, Sanabria, Mir ’770, Umiker, Clarke,
Franaszek, Badran, and either Clayton or Porchia. Final Act. 23.
9. Claim 36 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Mir ’129, Varriano-Marston, Wendt,
Hayashi, Rodriguez, Sanabria, Mir ’770, Umiker, Clarke, and
Badran. Final Act. 23.
DISCUSSION
Rejection 1. Independent claims 1 and 21 include the limitation
“each of said target areas being separated from all of its neighbors by
14 US 5,899,084, issued May 4, 1999.
15 US 3,450,542, issued June 17, 1969.
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distances that are greater than its largest dimension.” Independent claim 18
recites “each of said target areas being separated from all of its neighbors by
distances that are greater than its size.” Independent claim 20 recites “each
of said upper and lower target areas on the front side of the plastic bag being
separated from each other by at least 16 inches.”
The Examiner found that each of these limitations lacked written
description support in the ’470 Application’s Specification. Final Act. 2—3.
Appellants argue that Figure 4 of the Specification provides adequate
written description support for these limitations. Appeal Br. 19—23.
The Examiner responds that Figure 4 is inadequate written description
support because “the drawings are not clear regarding the size of each array
[of microperforations] such that the drawings do not clearly show that the
target areas [sic] would be separated from all of its neighbors by distances
that are greater than its largest dimension.” Answer 12—13.
Having reviewed the ’470 Application’s Specification and drawings,
we determine that the Examiner reversibly erred by finding that the
independent claims of the ’470 Application did not comply with the written
description requirement. We find that the Specification and drawings
convey with reasonable clarity to a person of ordinary skill in the art that, as
of the filing date, Appellant was in possession of the claimed invention
recited in each of the independent claims. See Carnegie Mellon Univ. v.
Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting
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Application 12/733,470
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991)). For
ease of understanding, we reproduce Figure 4 of the ’470 Application below.
Microperfs are Microperfc are
12.5" from left side. 12.5" from right
Figure 4 illustrates microperforation target areas registered in a
polyethylene bag intended to hold 40 pounds of bananas. Spec. 8. As the
labels demonstrate, Appellant was in possession of an invention in which
each of the target areas is separated from all of its neighbors by distances
that are greater than the largest dimension of the target areas.
In view of the foregoing, we reverse this rejection.
Rejections 2—9. First, Appellant argues that all of the obviousness
rejections must be reversed because each of the rejections relies, in part,
upon non-analogous prior art. Appeal Br. 10-14. In particular, Appellant
argues that at least four references—Sanabria, Rodriguez, Wendt, and
Umiker—are non-analogous prior art. Id. at 14.
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To rely upon a reference as a basis for an obviousness rejection of
Appellant’s claims, the reference must either (1) be in the field of the
inventor’s endeavor or (2) be reasonably pertinent to the particular problem
with which the inventor was concerned. In re Kahn, 441 F.3d 977, 986-87
(Fed. Cir. 2006); In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
We begin by ascertaining Appellant’s field of endeavor. The primary
resource for this inquiry is the ’470 Application’s Specification. See In re
Mettke, 570 F.3d 1356, 1359 (Fed. Cir. 2009) (relying on specification to
determine applicant’s field of endeavor). Under the heading “TECHNICAL
FIELD,” the Specification offers a broad definition of the field of endeavor:
“The present invention generally relates to a method of packaging fresh
fruits, especially bananas and plantains. More particularly^] the present
invention relates to a method to control banana and plantain quality by
packaging.” Spec. 1. Our inquiry, however, does not end here. Our review
of the entirety of Appellant’s Specification demonstrates that Appellant’s
field of endeavor is a specialized category of fresh fruit and vegetable
packaging, namely MAP/CAP. Id. at 1—7. Indeed, the Specification
identifies the problem confronting the inventor: “What is needed to address
the shortcomings in current banana/plantain packaging is an efficient and
less costly system to produce MAP/CAP packaging for bananas and
plantains.” Id. at 6; see generally id. at 1—6 (“BACKGROUND OF THE
INVENTION”).
After considering the entirety of the ’470 Application’s Specification,
we find that Appellant’s field of endeavor is MAP/CAP packaging of
produce. This is a narrower definition than that apparently adopted by the
Examiner. The Examiner appears to have implicitly found that Appellant’s
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field of endeavor is produce packaging of any type. To the extent that the
Examiner has so found, the Examiner has erred.
Having identified Appellant’s field of endeavor, we next consider
whether any of the four references specifically identified by Appellant—
Sanabria, Rodriguez, Wendt, and Umiker—fall outside that field of
endeavor. Even a cursory review of these four references reveals that
Appellant is correct in arguing that they are directed to and describe
ventilated produce packaging that is fundamentally different than the
claimed packaging process. As such, it is outside Appellant’s field of
endeavor.
Because Sanabria, Rodriguez, Wendt, and Umiker are outside
Appellant’s field of endeavor we turn to the second prong of the test for
determining whether a particular prior art reference is analogous art: whether
or not these references are reasonably pertinent to the particular problem
confronting the inventor. See Kahn, 441 F.3d at 986—87. “A reference is
reasonably pertinent if... it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering his [or her] problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992).
We again turn to the Specification to determine the particular problem
confronting Appellant. As the Specification makes clear, Appellant
confronted several problems in developing the subject matter of the ’470
Application. Appellant wanted to use MAP/CAP technology to extend the
green life of bananas in transport, allow for initiation of fruit ripening
without requiring opening of each bag of bananas, and improve the quality
of the fruit by preventing dehydration and microorganism access. Spec, at 5.
As the Specification explains,
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Application 12/733,470
Currently available technology for banana and plantain
packaging provide solutions that are either expensive
(microporous membrane technology) or insufficient to meet the
specific needs related to fruit ripening (Banavac bags or
Tubopac bags). Therefore, this disclosure address these
problems and the invention according to this disclosure
provides a method to pack bananas and plantains, a method to
extend the green life and shelf live [sic] of bananas and
plantains, and a method to improve the quality of the bananas
and plantains.
Id. at 8.
We have reviewed the four references that Appellant argues are non-
analogous art. Our review leads us to find that none of these four references
would have logically commended itself to the inventor’s attention in
considering her problem. As discussed above, none of these references use
MAP/CAP technology. Furthermore, these references do not address the
particular problems Appellant was attempting to solve. Sanabria concerns
with the provision of adequate ventilation in the corrugated cardboard boxes
used to ship bananas to facilitate temperature control. See Sanabria ]ff[ 4—8.
Rodriguez describes a banana packaging technique that facilitates transfer of
bananas from one container to another, and only describes a bag having
ventilation apertures that are located in such a manner so as to align with
ventilation apertures on a shipping container. See Rodriguez col. 1 11. 8—13
and col. 7,11. 43—53. Wendt describes a bag formed of imperforate tubular
material that becomes self-ventilating when chunk form commodities are
placed therein. Wendt col. 1,11. 1—18. Umiker describes an air bubble foil
bag that is inserted into a transport container. Umiker Abstract. Umiker
does not appear to discuss modification or control of the atmosphere inside
the packaging or ripening of the fruit contained in the packaging. Thus, it
appears that none of the four references identified by Appellant would have
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logically commended itself to her attention when considering the problems
she was confronting.
For this reason, we reverse Rejections 2—9.
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims 1—
3, 5—10, 12—14, 18, 20, 21, 24—32, 35 and 36 of the ’470 Application.
REVERSED
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