The Iams Company

Patent Trials and Appeals BoardDec 2, 2021

2021000796 (P.T.A.B. Dec. 2, 2021)

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. 14/205,465 03/12/2014 Romian Rushard McGhee IAM0137 US 2688 132446 7590 12/02/2021 Mars, Inc. c/o Mars Petcare Theresa Shearin 2013 Ovation Parkway Franklin, TN 37067 EXAMINER TAWFIK, SAMEH ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 12/02/2021 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): maria.johnson@effem.com mars.patents@effem.com theresa.shearin@effem.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROMIAN RUSHARD MCGHEE, ALLAN JAY ROOT, JEFFREY WAYNE AUBUCHON, NICHOLAS A. DI BLASI, and SCOTT CLAYTON KECK ____________ Appeal 2021-000796 Application 14/205,465 Technology Center 3700 ____________ Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and WILLIAM A. CAPP, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–11, 14, 15, and 17–20.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM IN PART and enter a NEW GROUND OF REJECTION of claim 1 pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Mars, Incorporated as the real party in interest. Appeal Br. 2. 2 Claims 12, 13, and 16 are withdrawn. Non-Final Act. 1. Appeal 2021-000796 Application 14/205,465 2 THE CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, is reproduced below. 1. A method comprising: contacting an outside surface of a first substrate at a first location with a first heating bar and contacting an outside surface of a second substrate at a second location that is opposite the first location with a first non-heating bar to form a first seal that seals the first substrate and the second substrate together at a location between the first location and the second location, wherein the first substrate and the second substrate form a pet food bag. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Waters US 2,589,756 Mar. 18, 1952 Kristen US 4,941,310 July 17, 1990 Cortigiano US 6,810,642 B2 Nov. 2, 2004 THE REJECTIONS I. Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated by Cortigiano. Non-Final Act. 3. II. Claims 2–10, 14, 15, and 17–19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cortigiano and Waters. Id. at 3–9. III. Claims 11 and 20 stand rejected under 35 U.S.C. § 103 as unpatentable over Cortigiano, Waters, and Kristen. Id. at 9–10. Appeal 2021-000796 Application 14/205,465 3 OPINION Rejection I The Examiner finds that Cortigiano discloses all of the limitations of independent claim 1. In particular, the Examiner finds, among other things, that Cortigiano discloses: contacting an outside surface of [a] first substrate at a first location with a first heating bar (via 74a) and contacting an outside surface of [a] second substrate at a second location that is opposite the first location with a first non-heating bar (74b), to form a first seal [e.g., at location 58] that seals the first substrate and second substrate together at a location between the first location and second location. Non-Final Act. 3 (citing Cortigiano, Fig. 9). In the Answer, the Examiner explains that the “[s]ealing [b]ars appear[] as one unit, comprising upper and lower bars 72/74” and that “[t]op [and] [b]ottom seals 56/58 of the final formed bags [are] formed as a result of positioning the substrates between sealing bars 72/74.” Ans. 5 (Examiner-annotated Figure 9 of Cortigiano). The Examiner further explains that “giving the claims the broadest reasonable meaning,” where the claim is interpreted as “a step of contacting a first substrate with a first heating bar [and] second substrate with a first non-heating bar to form a first seal between both substrates for a final formed bag,” it is the Examiner’s position that Cortigiano “discloses a step of sealing first and second substrates to form a first seal between them, clearly shown in Figs. 9 & 10; via forming bottom seal 56 of the bag between both substrates 12 & 14 and/or top seal 58 of the bag between both substrates 12 & 14 using sealing bars 72 & 74.” Id. at 4. The Examiner points out that “sealing [the] substrates to form top and bottom seals of the Appeal 2021-000796 Application 14/205,465 4 final formed bags using bars 72/74 have nothing to do with sealing the substrates to the zipper flanges.” Id. at 6. Cortigiano describes that The mechanically linked jaws 72 and bars 74 perform four functions concurrently or nearly concurrently . . . . Both cross sealing jaws 72a and 72b are heated to a temperature that causes the opposing walls 10 and 12 of the bag making film to seal together during a preset dwell time (controlled by a programmable controller not shown) in their extended positions, thereby forming a top seal 58 of the just-filled bag and a bottom seal 56 of the immediately preceding unfilled package. . . . Substantially concurrently with formation of the bottom seal 56 and the top seal 58, the unsealed zipper flange 46 is attached to wall 12 of the formed bag by the sealing bar 74a, which is heated. The opposing sealing bar 74b is not heated. In the extended positions, the sealing bars 74a and 74b press the zipper flanges 44 and 46 together, and heat from the heated sealing bar 74a is conducted through the film wall 12 and into the zipper flange 46, forming a permanent seal 54 therebetween. The other zipper flange 44 has already been joined to film wall 10 by a permanent seal 52 formed at the first sealing station. Cortigiano 12:4–40. Appellant argues “Cortigiano fails to teach any method or configuration forming a pet food bag where a first seal is formed between a first substrate and a second substrate using a heating bar and a non-heating bar.” Appeal Br. 5. Appellant explains that “Fig. 9 shows items 74a and 74[b] aligned with region 2, identified in the specification at col. 11, line 53 as ‘slider-zipper assemblies 2 . . . .’” Id. at 7. Appellant further explains that “[i]t is clear from the teachings of Cortigiano that the cross sealing bars (items 74a and 74b) do not form any seal between the first and second substrate films (items 12 and 14) to form a bag.” Id. Appeal 2021-000796 Application 14/205,465 5 The Examiner’s broadest reasonable interpretation of the claim acknowledges that “contacting a first substrate with a first heating bar, second substrate with a first non-heating bar [is] to form a first seal between both substrates for a final formed bag.” Ans. 4. The Examiner’s position appears to be that when considering the mechanical linkage between elements 72 and 74, the claimed “second location” at which the “first non- heating bar” “contact[s] an outside surface of a second substrate” so as “to form a first seal that seals the first substrate and the second substrate together,” as recited in claim 1, includes the location of formed seals 56 and 58, even though the portion of assembly 72/74 at the location of the formation of seals 56, 58 is clearly heated. Merely because assembly 72/74 comprises non-heated sealing bar 74b that is mechanically linked to heated sealing jaw 72b does not render the entirety of assembly 72/74 a non-heating bar. More specifically, it does not render the portion of assembly 72/74 comprising heating element 72b (i.e., the portion of assembly 72/74 that actually forms seals 56, 68 so as to seal the first and second substrates together) a non-heating bar. It is simply not reasonable to consider a heating element a non-heating element merely because it is mechanically linked to a non-heating element. It is only at the zipper area of a bag that the portion of assembly 72/74 that includes non-heating bar 74b is used. However, the use of the portion of assembly 72/74 including non-heating bar 74b has no effect on the formation of seal 56 and/or 58 that seals the first and second substrate together. It is used only to form a permanent seal between a second zipper flange and the second substrate, and the Examiner is clear that the Examiner’s position is not based on “sealing the substrates to the zipper Appeal 2021-000796 Application 14/205,465 6 flanges.” Ans. 6. In short, the Examiner has not explained adequately how Cortigiano discloses contacting an outside surface of a second substrate with a non-heating bar to form a seal that seals first and second substrates together, as required by the broadest reasonable construction of claim 1. For the foregoing reasons, Appellant apprises us of error in the Examiner’s determination that Cortigiano anticipates claim 1. Accordingly, we do not sustain the rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by Cortigiano. Rejection II Claims 2–10 and 17–19 Claim 2 adds: contacting the outside surface of the first substrate at a third location with a second heating bar and contacting the outside surface of the second substrate at a fourth location that is opposite the third location with a second non-heating bar to form a second seal that seals the first substrate and the second substrate together at a location between the third location and the fourth location. Appeal Br. 20 (Claims App.). Claim 3 similarly adds: contacting the outside surface of the first substrate at a third location with a second nonheating bar and contacting the outside surface of the second substrate at a fourth location that is opposite the third location with a second heating bar to form a second seal that seals the first substrate and the second substrate together at a location between the third location and the fourth location. Id. In this rejection, the Examiner acknowledges that Cortigiano teaches “two heated controlled bars 72a & 72b” when the Examiner identifies third and fourth locations of contact between the substrates and sealing elements Appeal 2021-000796 Application 14/205,465 7 in Cortigiano so as to form a second seal that seals the first and second substrates together. Non-Final Act. 4. The Examiner finds that Waters teaches a “similar method with a use of a heated bar touching non-heated bar to seal bags.” Id. (citing Waters, Fig. 1, 1:8–12). The Examiner concludes that it would have been obvious to modify “Cortigiano’s method by substituting the step of sealing at the fourth location with two heated bar[s], to have one of the bars to be non-heated, as suggested by Waters, in order to be able to uniformly distribute heat along the heating bar effectively.” Id. (citing Waters 1:25–33) (discussing claim 2); id. at 5 (italics omitted) (discussing claim 3 and also reiterating that “Cortigiano has been modified to substitute the upper two heated/seal bars with another two bars, one to be heated while the other [to be a] non-heated bar, as suggested by Waters”). Appellant argues that “Cortigiano at items 74a and 74b fails to disclose a heating bar and a non-heating bar forming a first seal between first and second substrates” and “[t]he Examiner points to no other reference for overcoming this specific deficiency in Cortigiano with respect to [c]laim 1.” Appeal Br. 8 (emphasis omitted). Even assuming arguendo that the Examiner has explained adequately that it would have been obvious to make one of heating bars 72a or 72b non-heated (Non-Final Act. 4–6), this would result in only a first non-heating bar (e.g., modified element 72a or modified element 72b) that forms a seal between the first and second substrates, whereas claims 2 and 3 require a second non-heating bar to form a second seal between the first and second substrates. As explained above in connection with Rejection 1, the other non-heating bar of modified Cortigiano (e.g., non-heating bar 74b) has no effect on formation of a seal that seals the first and second substrates together. It is used only to form a Appeal 2021-000796 Application 14/205,465 8 permanent seal between a second zipper flange and the second substrate. The Examiner has not explained adequately how the proposed combination of Cortigiano and Waters results in a method that includes both (i) contacting an outside surface of a second substrate at a location with a first non-heating bar to form a first seal that seals the first and second substrates together; and (ii) contacting an outside surface of the second substrate at another location with a second non-heating bar to form a second seal that seals the first and second substrates together. For the foregoing reasons, Appellant apprises us of error in the Examiner’s determination that the combination of Cortigiano and Waters renders obvious the subject matter of dependent claims 2 and 3. Accordingly, we do not sustain the rejection of claims 2 and 3, or claims 4–10 and 17–19 depending therefrom, under 35 U.S.C. § 103 as unpatentable over Cortigiano and Waters. Claim 14 Claim 14 depends from claim 1 (rather than claim 2 or 3), and thus does not require two non-heating bars to form first and second seals that seal first and second substrates together. Appeal Br. 23 (Claims App.). Claim 14 merely requires a first non-heating bar to form a first seal that seals first and second substrates together. Id. Claim 14 further requires “the first heating bar comprises a thermally conductive material configured to contact the outside surface of the first substrate.” Id. The Examiner rejects claims 14 based on the combination of Cortigiano and Waters described above, in which Cortigiano’s element 72a or 72b (that forms a seal between the first and second substrates) is modified so as to be non-heated as taught by Waters. Non-Final Act. 4–6. The Examiner further finds that “Cortigiano Appeal 2021-000796 Application 14/205,465 9 discloses that the first heating bar comprises a thermally conductive material configured to contact the outside surface of the first substrate.” Id. at 8 (citing Cortigiano, Figs. 9, 10). Appellant argues that “[t]he proposed modification to Cortigiano would impermissibly change the principle of operation of Cortigiano with respect to the substrate seal between items 72a and 72b” and that “Cortigiano actually teaches away from using heating and non-heating bars for forming a seal between substrates 12 and 14.” Appeal Br. 11. More specifically with respect to the first argument, Appellant argues that “[e]ach and every reference to the temperature control of the cross sealing jaws (items 72a and 72b) in Cortigiano teaches that the jaws are heated to the same temperature using a single temperature controller that controls both cross sealing jaws.” Id. at 9 (citing Cortigiano 12:14–16). Appellant further argues that “[a]pplying a temperature gradient between heated and non- heated bars (as suggested by the Examiner) is a fundamentally different principle of operation as compared to sealing with a uniform temperature applied evenly on both sides of the substrate films (as taught in Cortigiano).” Id. at 10 (emphasis omitted). Appellant points out that “Cortigiano relies on a temperature gradient principle between 74a and 74b to attach each zipper flange with its respective side (where no seal between opposing substrates 12, 14 is desired)” and relies on uniform temperature when a seal is desired. Id. Appellant’s argument appears to be premised on an unduly narrow interpretation of the principle of operation of Cortigiano. The “principle of operation” referred to by Appellant relates to the “basic principles” under which the prior art device was designed to operate. In re Ratti, 270 Appeal 2021-000796 Application 14/205,465 10 F.2d 810, 813 (CCPA 1959). Under Ratti, “a change in the basic principles” refers to change that is fundamental in scope so as to relate to scientific or technical principles under which the invention is designed to operate. Id. (“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)). We do not find that a “change in basic principles” occurs by the Examiner’s proposed modification to Cortigiano so as to substitute one heated bar with a non-heated bar, thereby resulting in a temperature gradient instead of uniform temperature, where the overall principle of Cortigiano remains more broadly directed to “form[ing] a package, fill[ing] it with product, and then seal[ing] the product inside the package using any one of the known form- fill-seal (FSS) methods.” Cortigiano 5:45–47; With respect to Appellant’s teach-away argument, Appellant argues that “Cortigiano teaches that heat should be used whenever a seal is desired, and that heat should be avoided when a seal is not desired.” Appeal Br. 10 (citing Cortigiano 7:4–11, 12:7–61). In order to “teach away,” a reference must “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Although we acknowledge that Cortigiano teaches use of opposed heating elements to form a seal between two substrates in the portions of the Specification identified by Appellant, we note that “[a] reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 Appeal 2021-000796 Application 14/205,465 11 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting Fulton, 391 F.3d at 1201). Here, Appellant has not identified any passage in Cortigiano that actually criticizes, discredits, or discourages the use of both a heating bar and non- heating bar to form a seal that seals two substrates together. Appellant does not make any separate argument regarding the specific limitations of dependent claim 14. Appeal Br. 16. For the foregoing reasons, Appellant does not apprise us of error in the Examiner’s determination that the combination of Cortigiano and Waters renders obvious the subject matter of claim 14. Accordingly, we sustain the rejection of claim 14 under35 U.S.C. § 103 as obvious over Cortigiano and Waters. New Ground of Rejection of Claim 1 Settled law maintains that a broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is obvious. See Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1315 (Fed. Cir. 2015) (citing Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009) (a broader independent claim is obvious if a dependent claim stemming from that independent claim is obvious); Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007). In view of our determination that claim 14 is unpatentable over Cortigiano and Waters, we hereby exercise our discretion under 37 C.F.R. § 41.50(b) and enter a new ground of rejection of independent claim 1 as unpatentable over Cortigiano and Waters. Claim 15 Claim 15 also depends from claim 1. Appeal Br. 23 (Claims App.). Claim 15 requires the first heating bar to comprise “a substantially trapezoidal shape comprising steel, and the thermally conductive material Appeal 2021-000796 Application 14/205,465 12 configured to contact the outside surface of the substrate further has a width from 1/32 inch to 1/2 inch.” Id. The Examiner rejects claim 15 based on the combination of Cortigiano and Waters described above, finding that “Cortigiano discloses that the first heating bar . . . comprises a substantially trapezoidal shape comprising a steel, and the thermally conductive material configured to contact the outside surface of the substrate.” Non-Final Act. 4–6, 8 (citing Cortigiano, Figs. 9, 10). Appellant argues that “nothing in Cortigiano discloses a thermally conductive material on the first heating bar with a thickness from 1/32 inch to 1/2 inch.” Appeal Br. 16. Appellant further argues that “the [E]xaminer doesn’t even address the thickness [i.e., width] limitations as being present or inherent in Cortigiano.” Id. We agree with Appellant that the Examiner makes no findings regarding the width of the thermally conductive material that is configured to contact the outside surface of the first substrate in either Cortigiano or Waters, and provides no reasoning in support of a determination of the obviousness of the claimed width of the thermally conductive material. Non-Final Act. 8; Ans. 3–9. Accordingly, we have no basis upon which we may sustain the rejection of claim 15. For the foregoing reasons, Appellant apprises us of error in the Examiner’s determination that the combination of Cortigiano and Waters renders obvious the subject matter of claim 15. Accordingly, we do not sustain the rejection of claim 15 under 35 U.S.C. § 103 as obvious over Cortigiano and Waters. Appeal 2021-000796 Application 14/205,465 13 Rejection III Claims 11 and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cortigiano, Waters, and Kristen. Non-Final Act. 9–10. Claims 11 and 20 depend indirectly from claim 3. Appeal Br. 20–24 (Claims App.). The rejection of these claims relies on the Examiner’s erroneous determination that the combination of Cortigiano and Waters renders obvious a method that includes both (i) contacting an outside surface of a second substrate at a location with a first non-heating bar to form a first seal that seals the first and second substrates together; and (ii) contacting an outside surface of the second substrate at another location with a second non-heating bar to form a second seal that seals the first and second substrates together. Non-Final Act. 9–10. The Examiner does not explain how Kristen might cure this underlying deficiency and instead relies only on Kristen for teaching multi-ply substrates. Id. Accordingly, we do not sustain the rejection of claims 11 and 20 under 35 U.S.C. § 103(a) as unpatentable over Cortigiano, Waters, and Kristen. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1 102(b) Cortigiano 1 2–10, 14, 15, 17–19 103(a) Cortigiano, Waters 14 2–10, 15, 17–19 1 103(a) Cortigiano, Waters 1 11, 20 103(a) Cortigiano, Waters, Kristen 11, 20 Overall Outcome 14 1–11, 15, 17–20 1 Appeal 2021-000796 Application 14/205,465 14 We enter a NEW GROUND OF REJECTION of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Cortigiano and Waters. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 40.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 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 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. Appeal 2021-000796 Application 14/205,465 15 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). AFFIRMED IN PART; 37 C.F.R. § 41.50(b)