Thomas Jalowiec

Patent Trials and Appeals BoardAug 11, 2021

2020004493 (P.T.A.B. Aug. 11, 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. 15/627,802 06/20/2017 Thomas Walter Jalowiec 16939-DIV 9847 90042 7590 08/11/2021 Melcher Patent Law PLLC 1101 Connecticut Ave. N.W. Suite 450 Washington, DC 20036 EXAMINER GOLIGHTLY, ERIC WAYNE ART UNIT PAPER NUMBER 1714 NOTIFICATION DATE DELIVERY MODE 08/11/2021 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): melcher@melcherpatentlaw.com melcherlaw@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS WALTER JALOWIEC Appeal 2020-004493 Application 15/627,802 Technology Center 1700 Before KAREN M. HASTINGS, JAMES C. HOUSEL, and DEBRA L. DENNETT, Administrative Patent Judges. HASTINGS, 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 1–3, 5 and 6.2 See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “the inventor”. Appeal Br. 1. 2 The Examiner indicated dependent claim 4 would be allowable if rewritten in independent form (Final Act. 5). Appeal 2020-004493 Application 15/627,802 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An insulation collection bag constructed to collect insulation from a building comprising: a sheet of non-porous, heat-sealable, plastic having a heat sealed seam and defining an enclosed space in the bag; a plurality of inlets spaced out along a top of the bag constructed and sized to connect the enclosed space to an exit hose of a vacuum device so that the exit hose can be connected to different inlets to fill different parts of the bag with the insulation and any sharp objects enter the bag in a direction towards a bottom of the bag so that the sharp objects strike the insulation present in the bag and/or the bottom of the bag; and a filter connected to the bag constructed to allow air to solely escape the enclosed space through the filter. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Natale US 4,812,700 Mar. 14, 1989 Wall US 7,195,678 B1 Mar. 27, 2007 Edwards US 2010/0282083 A1 Nov. 11, 2010 REJECTIONS Claims 1–3 and 6 are rejected under 35 U.S.C. § 103 as being unpatentable over the combined prior art of Wall and Natale. Final Act. 3. Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over the combined prior art of Wall, Natale, and Edwards. Final Act. 4. Appeal 2020-004493 Application 15/627,802 3 OPINION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief and the Reply Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejections (see generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellant’s arguments focus on the use of the recited bag for collecting insulation from an attic, and argues that (1) no one would have looked to the “glove” bags of Wall or Natale3 for this purpose (Appeal Br. 4), (2) that the Wall bag is sealed to a pipe and is under vacuum pressure with clean air entering the bag via the filter versus the present bag is intended to be connected to the outlet of a vacuum hose with air exiting via the filter (Appeal Br. 6–8), and (3) that the large opening(s) in both Wall and Natale to allow a pipe inspection port to be installed therein and/or a pipe to be contained therein would not have met the claim requirement of “a filter connected to the bag constructed to allow air to solely escape the enclosed space [of the bag] through the filter” (Appeal Br. 11–12). These arguments are reiterated in the Reply Brief. These arguments are not persuasive of reversible error in the Examiner’s rejection for reasons given by the 3 Natale is mainly used to exemplify that making a containment bag for insulation (e.g., Wall’s bag) of non-porous plastic (e.g., polyethylene) and heat-sealing any seams was known (Final Act. 3; Natale col. 4, ll. 38–56). Appeal 2020-004493 Application 15/627,802 4 Examiner (Ans. 3–7). These arguments also do not take into account the applied prior art as a whole and the inferences one of ordinary skill in the art would have made therefrom. Notably, it is well established that when there is a reason to conclude that the structure of the prior art is capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellant’s contention that the Examiner’s position is improper because no one would have used the bag of Wall/Natale for collecting insulation in the manner recited in claim 1 appears misdirected, since the Examiner’s position was premised on the bag of the applied prior art being capable of the recited function(s) (Ans. generally). Attorney’s arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). While we appreciate Appellant’s argument that the larger opening in the bag of Wall (or Natale) may allow insulation to escape when the bag is used as Appellant intends, the Appellant has not provided any persuasive reasoning or credible evidence to refute the Examiner’s determination that one of ordinary skill in the art would have taped any opening shut if it were not needed in use (e.g., Ans. 5, 7). Indeed, Appellant’s Specification teaches that the inlet holes that are not needed may be taped shut (Spec. ¶ 37). Wall also teaches that holes may be taped shut to prevent accidental release of asbestos insulation (e.g., Wall col. 8, ll. 37–40). Thus, even assuming Appellant’s claim interpretation were adopted that air would only be allowed to escape via the filter, the bag of Wall/Natale would have met this Appeal 2020-004493 Application 15/627,802 5 requirement, since any unneeded openings for the task at hand could be taped shut.4 Finally, these arguments do not take into account the applied prior art as a whole and the inferences one of ordinary skill in the art would have made therefrom. These arguments are not sufficient to overcome the Examiner’s implicit determination that one of ordinary skill, using no more than ordinary creativity, could have used the known Wall/Natale bag for any insulation collection and would have closed any holes not needed for the task at hand. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”); see also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Appellant has not come forward with adequate evidence that the Examiner erred in characterizing the references or in concluding that the claimed combination of familiar elements for known purposes would have been obvious. Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (Under the flexible inquiry set forth by the Supreme Court, the PTO must take account 4 Claim 1 uses the open-ended term “comprising” as well as recites “a plurality of inlets” and thus the claimed bag may have unlimited openings. It thus appears any openings not in use must be taped shut or otherwise closed off in order to meet the claim requirement for air to solely escape through the filter. Appeal 2020-004493 Application 15/627,802 6 of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ). Appellant does not present any further arguments towards the rejection of claim 5 (Appeal Br. 12). Accordingly, the Examiner’s § 103 rejections are affirmed with respect to all of the claims on appeal. CONCLUSION The Examiner’s rejections are AFFIRMED. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6 103 Wall, Natale 1–3, 6 5 103 Wall, Natale, Edwards 5 Overall Outcome 1–3, 5, 6 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