PREGIS INNOVATIVE PACKAGING LLC

Patent Trials and Appeals Board

Jan 10, 2022

2021003306 (P.T.A.B. Jan. 10, 2022)

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. 15/960,187 04/23/2018 Thomas D. Wetsch 194313.04311 6494 29880 7590 01/10/2022 Fox Rothschild LLP 997 Lenox Drive Lawrenceville, NJ 08648 EXAMINER GERRITY, STEPHEN FRANCIS ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 01/10/2022 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): ipdocket@foxrothschild.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS D. WETSCH and CHRISTOPHER M. RAINS Appeal 2021-003306 Application 15/960,187 Technology Center 3700 Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Pregis Innovative Packaging LLC. Appeal Br. 3. Appeal 2021-003306 Application 15/960,187 2 CLAIMED SUBJECT MATTER The claims are directed to a resiliently flexible nozzle for an inflation and sealing device. Claims 1 and 20 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A flexible structure inflation and sealing assembly, comprising: a driver configured for engaging the flexible structure to drive the structure in a downstream direction longitudinally along a material path; and a nozzle including: an elongated portion having a longitudinal axis aimed generally longitudinally and configured for reception in an inflation channel that extends through the flexible structure, and a fluid conduit including an outlet that directs an inflation fluid from the conduit into the flexible structure via the elongated portion; wherein at least a portion of the nozzle is resiliently flexible to allow the longitudinal axis of the elongated portion to bend resiliently in a transverse, vertical, or combined direction to accommodate variable positions of the flexible structure being fed onto the nozzle. Appeal Br. 19 (Claims App.). REFERENCES Name Reference Date Sperry US 7,220,476 B2 May 22, 2007 Wetsch US 9,950,491 B2 Apr. 24, 2018 Kempster US 2006/0197315 A1 Sept. 7, 2006 Appeal 2021-003306 Application 15/960,187 3 REJECTIONS Claims Rejected 35 U.S.C. § References 1-19, 21, 22 112(a) Written Description 1-19, 21, 22 112(b) Indefiniteness 1-19, 21, 22 Nonstatutory Double Patenting Wetsch, claims 1-18; Sperry 20 102 Kempster OPINION Claims 1-19, 21, and 22-§ 112(a)-Written Description The Examiner finds that the term “resiliently flexible” used in claim 1, as well as similar terms in claims 2, 3, 6, 8, and 18, “has been used to describe a feature which is not described in the specification.” Final Act. 2- 4. The Examiner explains that while the Specification uses the phrases “sufficiently flexible” and “flexible,” the Specification “does not make use of the term ‘resiliently’ or the phrase ‘resiliently flexible’ in connection with the portion of the nozzle.” Id. at 4. The Examiner acknowledges that the Specification discloses that “flexible member 153 may be a coiled wire such as a spring,” but notes that the Specification “does not mention the coiled wire being resilient.” Id. at 4-5. Appellant responds that the Specification “clearly discloses a portion of the nozzle that maintains its general shape and direction (i.e., the portion is resilient).” Appeal Br. 10. Appellant also refers to Paragraph 46 of the Specification, which “describes an embodiment in which at least a portion of the nozzle is a flexible member 153 that is both flexible and resilient because it ‘may be a coiled wire such as a spring which extends from the nozzle base 144 to the tip 142.’” Id. Appellant submits that one of ordinary skill in the art would “understand that a spring is inherently resilient,” relying on a Appeal 2021-003306 Application 15/960,187 4 dictionary definition of “spring” as “‘an elastic body or device that recovers its original shape when released after being distorted.’” Id. (quoting https://merriam-webster.com/dictionary/spring). In the Answer, the Examiner counters that “[t]here may be instances where a spring may be flexible and perhaps even resilient, but not all springs are resilient.” Ans. 8. To satisfy the written description requirement, a disclosure must reasonably convey to one skilled in the art that the applicant had possession of the subject matter in question when the application was filed. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[I]psis verbis disclosure is not necessary to satisfy the written description requirement of Section 112.” Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996). Thus, it is not fatal to Appellant’s claims that the Specification does not expressly use the term “resiliently flexible” or “resilient.” The Examiner and Appellant apparently agree that “resilient” means being “able to recoil or spring back into shape after bending, stretching, or being compressed.” Final Act. 5; Appeal Br. 10. Appellant relies primarily on Paragraph 46 and Figure 3A of the Specification to describe “at least a portion of the nozzle” being “resiliently flexible.” Figure 3A is reproduced below: Appeal 2021-003306 Application 15/960,187 5 Figure 3A depicts a side view of an inflation nozzle. Spec. ¶ 13. The nozzle includes “flexible member 153.” Id. ¶ 46. Flexible member 153 “may be a coiled wire such as a spring which extends from the nozzle base 144 to the tip 142.” Id. “Under the doctrine of inherent disclosure, when a specification describes an invention that has certain undisclosed yet inherent properties, that specification serves as adequate written description to support a [claim] that explicitly recites the invention’s inherent properties.” Yeda Research and Development Co., Ltd., v. Abbott GmbH & Co., 837 F.3d 1341, 1345 (Fed. Cir. 2016) (internal citation omitted). Appellant has provided a dictionary definition of “spring” as being “an elastic body or device that recovers its original shape when released after being distorted.” Appeal Br. 10 n.13. Based on the agreed-upon definition of “resilient,” a device that “recovers its original shape when released after being distorted” is necessarily “resilient.” The Examiner does not appear to dispute Appellant’s proffered definition of “spring,” or otherwise respond to it with evidence or persuasive argument supporting the Examiner’s finding that not all springs are resilient. Accordingly, we agree with Appellant that springs are inherently resilient. Under Yeda, the disclosure of a nozzle comprising a Appeal 2021-003306 Application 15/960,187 6 flexible member in the form of a spring therefore serves as adequate written description for the limitation in claim 1 reciting “at least a portion of the nozzle is resiliently flexible,” as well as the similar limitations in claims 2, 3, 6, 8, and 18. This determination is consistent with the Specification’s description of flexible member 153 as being “sufficiently flexible such that it can bend or deform,” and also “sufficiently rigid such that [it] maintains its general shape and direction.” Spec. ¶ 46. One of ordinary skill in the art would likely consider structure that “can bend or deform” while “maintain[ing] its shape and direction” to be resiliently flexible. For the above reasons, we do not sustain the Examiner’s rejection of claims 1-19, 21, and 22 under § 112(a) as failing the written-description requirement. Claims 1-19, 21, 22-§ 112(b)-Indefiniteness The Examiner determines that the term “resiliently flexible” used in claim 1, and similar terms used in claims 2, 3, 6, 8, and 18, are “vague and indefinite” because they are not adequately described in the Specification. Final Act. 5-7. As we do not agree that these terms are inadequately described, we likewise do not agree that these terms are indefinite for this reason. The Examiner also determines that the term “resiliently flexible” in claim 1 is “relative terminology, which renders the claim indefinite.” Final Act. 7. The Examiner submits that the term “is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.” Id. at 7-8. Appeal 2021-003306 Application 15/960,187 7 Appellant disagrees that this is a relative term because it “does not require a degree of resilience or flexibility.” Appeal Br. 14. Appellant contends that the term “refers to a property of a portion of the nozzle that retains its shape after being deformed and is also bendable.” Id. The Examiner responds that it is proper to consider “resiliently flexible” to be “relative terminology” because “the subject matter of the claim is attempting to define a property or something that is subjective in a manner that cannot be determined from the written description because the subject matter is directed to new matter.” Ans. 14. We are not persuaded that claim 1 is indefinite because it uses relative terminology. First, we are not persuaded that “resiliently flexible” is “relative terminology.” This phrase does not contain a term of degree, an approximation, or a subjective term. See MPEP § 2173.05(b). Further, even if “resiliently flexible” can be considered relative terminology, “[t]he use of relative terminology in claim language . . . does not automatically render the claim indefinite under 35 U.S.C. § 112(b).” Id. (citing Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818 (Fed. Cir. 1984)). Finally, the Examiner determines that claim 22 is indefinite. Final Act. 8. The Examiner finds that claim 22 recites “a heat sealer configured for sealing opposing web layers,” and depends from claim 19 which also recites “a sealing mechanism . . . for sealing opposing web layers.” Id. According to the Examiner, “[i]t is unclear if the heat sealer of claim 22 is intended to be a further limitation of the sealing mechanism of claim 19.” Id. Appeal 2021-003306 Application 15/960,187 8 Appellant does not specifically respond to this analysis. Further, we agree with the Examiner that it is unclear whether the “heat sealer” of claim 22 further limits the “sealing mechanism” of claim 19. For the above reasons, we sustain the Examiner’s rejection of claim 22 as indefinite, and do not sustain the Examiner’s rejection of claims 1-19 and 21 as indefinite. Claims 1-19, 21, 22-Obvious-Type Double Patenting The Examiner rejects claims 1-19, 21, and 22 on the ground of nonstatutory double patenting over claims 1-18 of Wetsch in view of Sperry. Final Act. 10. Appellant does not respond to the substance of this rejection. Instead, Appellant argues that: [T]he claims of an application can be rejected for obviousness- type double patenting in view of claims of patents or applications that have at least one common inventor, that are commonly assigned/owned or non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. §103(c)(2)(3) [footnote citing In re Hubbell, 709 F.3d 1140 (Fed. Cir. 2013)]. If none of these touchstones exists, then the rejection is prima facie improper. Here, the Sperry reference is neither commonly owned/assigned nor subject to a joint research agreement with the current application, making the rejection improper. Appeal Br. 17. The Examiner responds that “the nonstatutory obviousness-type double patenting rejection was made based on the claims of [Wetsch] in view of Sperry,” and “[Wetsch] is based on the parent application [to the application on appeal], and is commonly owned.” Ans. 19. The Examiner explains that “[a] nonstatutory double patenting rejection of the claims of the application is based on the claims of the [commonly-owned] patent, and may Appeal 2021-003306 Application 15/960,187 9 rely on other prior art when determining obviousness, as is similarly done under 35 U.S.C. [§] 103.” Id. The Examiner submits that “the use of [Sperry] is appropriate based on the guidelines set forth in MPEP 804, and there is no requirement that [Sperry] be commonly owned/assigned nor subject to a joint research agreement with the current application as alleged by appellant.” Id. at 20. A nonstatutory-type double patenting rejection may “tak[e] into account the skill in the art and prior art other than the invention claimed in the issued patent.” MPEP § 804 (quoting In re Zickendraht, 319 F.2d 225, 232 (CCPA 1963) (Rich, J., concurring) (emphasis added). Thus, it was appropriate for the Examiner to base the double-patenting rejection on Sperry as well as Wetsch. We therefore agree with the Examiner’s analysis in the double-patenting rejection, to which Appellant does not respond. Accordingly, we sustain the Examiner’s rejection of claims 1-19, 21, and 22 on the ground of nonstatutory obvious-type double patenting over claims 1-18 of Wetsch in view of Sperry. Claim 20-§ 102-Kempster Claim 20 is drawn to a “flexible structure inflation and sealing assembly” comprising, e.g., a nozzle with an “elongated portion,” the elongated portion including “a flexible portion including a spring” that is “flexible to adapt to variation in a feed angle and a feed direction of the flexible structure.” Appeal Br. 21-22 (Claims App.). The Examiner finds that Kempster anticipates independent claim 20, and particularly finds that hollow cylinder 14, spring 22, fixed back plate 26, and adaptor 30 collectively correspond to the claimed nozzle/elongated portion/flexible Appeal 2021-003306 Application 15/960,187 10 portion. Final Act. 11-13 (citing Kempster ¶¶ 6-7, 12, 70-80, Fig. 3); see Kempster Figs. 1, 2. Appellant argues, inter alia, that Kempster “fails to describe ‘a flexible portion including a spring extending from the base and being flexible to adapt to variation in a feed angle and a feed direction of the flexible structure.’” Appeal Br. 16. Appellant asserts that “[n]one of the parts in Kempster are flexible to adapt to variation in a feed angle and a feed direction of the flexible structure,” but rather “all the elements of the purported nozzle in Kempster are fixed inflexible structures.” Id. Appellant notes, for example, that “spring 22 that is attached to the end of the cartridge is only used for forcing the cylinder 30 over the spreader 30,” and “[t]here is no description in Kempster that the spring 22 can adapt to the variation in feed angle/feed direction of the plastic film.” Id. (citing Kempster ¶ 70). Appellant reasons that “since the spring 22 is located at the downstream end of the cylinder 14 onto which the plastic film is mounted as a bunched up tube, the spring never comes in contact with the plastic film and/or cannot be affected by the feed angle/feed direction of the plastic film, as required by claim 20.” Id. In response, the Examiner points to paragraphs 6, 7, and 12 of Kempster as “clearly teach[ing] the subject matter in question.” Ans. 17-18. We disagree. At most, these paragraphs disclose that the “supply station” (i.e, tube of plastic film 18 depicted in Figures 1 and 2 of Kempster) may move back and forth along the longitudinal axis of the supply station (which also is feed direction (Kempster ¶¶ 74-80), and this movement is only “[d]uring mounting of the supply station.” Kempster ¶ 12. The Examiner does not explain how this movement is sufficient to “adapt to Appeal 2021-003306 Application 15/960,187 11 variation in a feed angle and a feed direction.” Appeal Br. 22. Even if we were to agree that it may adapt to variation in feed direction, we do not see how it would adapt to a variation in feed angle, since Kempster does not disclose that the supply station is able to move angularly once it is installed in Kempster’s bag forming machine. Because we are not persuaded that Kempster discloses all of the limitations of claim 20, we do not sustain the Examiner’s rejection of claim 20 as anticipated by Kempster. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-19, 21, 22 112(a) Written Description 1-19, 21, 22 1-19, 21, 22 112(b) Indefiniteness 22 1-19, 21 1-19, 21, 22 Nonstatutory Double Patenting Wetsch, claims 1- 18; Sperry 1-19, 21, 22 20 102 Kempster 20 Overall Outcome 1-19, 21, 22 20 TIME PERIOD FOR RESPONSE 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)(1)(iv) (2020). AFFIRMED IN PART