Application of Barnett, Patent Appeal No. 5088.

• Decision Date: 07 June 1946
• Docket Number: Patent Appeal No. 5088.
• Citation: 155 F.2d 540
• Parties: Application of BARNETT.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

155 F.2d 540 (1946)

Application of BARNETT.^*

Patent Appeal No. 5088.

Court of Customs and Patent Appeals.

March 4, 1946.

On Rehearing June 7, 1946.

Louis Barnett, pro se.

W. W. Cochran, of Washington, D. C. (R. F. Whitehead, of Washington, D. C., of counsel), for the Commissioner of Patents.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges.

BLAND, Associate Judge.

The Primary Examiner of the United States Patent Office, after allowing article claims 10, 13, 14, and 16 to 21, inclusive, for a patent relating to infusion packages, or more particularly tea balls, rejected two article claims, 12 and 15, and all the method claims, 1 to 9, inclusive, and 22. The rejection of the examiner of all the claims involved in this appeal was, upon grounds hereinafter discussed, affirmed by the Board of Appeals, and the applicant has appealed here seeking a revision and reversal of the board's decision.

During the prosecution of the case certain references were cited against the claims and they were carried forward in the statement of the examiner and the decision of the board, but in neither of the decisions do the references form the basis of rejection except as to claims 12 and 15 and it is not deemed necessary to discuss any of them here.

The invention relates to a tea bag and like articles made from an oblong section of filter paper folded upon itself and upon the inside face of which, on the three open sides thereof, there is a thin layer of some thermoplastic material. All three of the coated edges are then sealed together by heat and pressure. A slit is next made along one or more of the edges in the mid-portion of the sealed flange, stopping short of complete severance. By thus slitting the flange at a place within the sealed portion the result is obtained of having the two strip portions which are to be used as a handle sealed together and at the same time leaving the closure of the bag intact. The partially severed strip, when displaced from the plane of said flange, forms a handle for manipulation of the bag when the tea is brewed. A number of different forms are shown in which the handle may take the form of a loop, etc., and the bag may also be made in two parts so that it may be separated along a weakened line somewhere in the middle of the whole bag in case only half strength of the tea is desired.

The main controversy and the important question of law involved are concerned with the method claims, and we will first dispose of the appeal as to article claims 12 and 15. There is but little controversy on this subject and since the board's opinion affirming the examiner's rejection of these claims on the ground of aggregation and the lack of invention resting in the printed legend, "tea," on the handle of the bags, especially when the disclosures of Mock and Salfisberg are considered, is so clearly in accordance with well-settled law we do not feel called upon to discuss this question at length, and its decision as to claims 12 and 15 will be affirmed.

The main issue is of such importance that we feel required to here set out all of the rejected method claims, the necessity for which will appear as our discussion progresses. They follow:

"1. In a method of manufacturing infusion bag packages each made with a sealed marginal closure forming a border flange, the step of through-splitting a sufficient amount of said flange along a substantial length thereof to provide a handle solely from a continuous integral segement of said flange when displaced out of the plane of the latter for manipulating said package by the handle during brewing.

"2. The method defined in claim 1 in which said step of through-splitting is continued beyond a length necessary to form the segment-handle to a cut termination for eliminating accidental tearing and stabilizing the suspension of the bag by said handle.

"3. In a method of making an infusion bag package formed with a closure portion, the steps of heat sealing a marginal area of said closure portion to form a border flange, through-splitting a substantial continuous length of said flange short of complete severance while retaining said sealed closure intact to provide an integral handle when only a portion thereof is displaced from the plane of said flange for suspending said package by said handle in manipulating said package during brewing.

"4. The method of manufacturing an infusion package of the character described including the steps of enclosing an essence containing product in a filter sheet material to form a package with a seam joint closure, and constructing solely from an integral portion of said seam joint closure a dependent elongated handle as and for the purpose described and specified.

"5. The method of making an infusion bag package defined in claim 4 including the step of crimping the seam joint closure including the handle forming portion with the ridges produced thereby extending longitudinally said closure and handle to strengthen the structure against tension strains and accidental tearing.

"6. A method of manufacturing infusion packages of the character described including the steps of enclosing an essence containing product in a filter sheet material to form a package with a sealed joint seam closure flange, and through-cutting a mid-portion of the flange wholly within the border of the flange to provide an integral bail-handle segment for suspending the package by said bail-handle segment in manipulating the package during brewing while retaining the sealing of the joint seam closure flange intact.

"7. A method of manufacturing infusion packages of the character described including the steps of enclosing an essence containing product in a filter sheet material to form a package with a sealed joint seam closure flange extending more than half way about the periphery of the package through-cutting a mid-portion of the flange wholly within the border of the flange to provide an integral bail-handle segment displaceable from the plane of said flange for suspending the package by said bail-handle segment in manipulating the package during brewing while retaining the sealing of the joint seam closure flange intact, and shaping the ends at the through-cutting to provide terminals for eliminating accidental tearing of the bail-handle segment from the package.

"8. The method of manufacturing an infusion package of the character described including the steps of sectionalizing an essence containing product in a filter sheet material bag, sealing the sections along a border flange to form a seam joint, constructing solely from an integral portion of the seam joint a dependent handle, and weakening a mid-portion of said seam along a line for folding said sections toward each other when suspending the package by the handle during brewing.

"9. The method defined in claim 8 in which the step of weakening a mid-portion of said seam includes perforating said line to provide tearing means for separating the sections for independent use."

"22. The method defined in claim 1 in which said step of through-splitting is continued inwardly the edge of the flange to form a "tear-proof" termination end and to provide stabilization to the bag suspension by the handle."

In rejecting these claims the examiner said:

"These claims are rejected as being unpatentable since they involve but the obvious method of producing the article. The article may be invention, as indicated by the allowance of article claims, but this does not mean that the method of making the article is patentable. It is thought that any one skilled in the art, having seen the article, would use substantially the same method in producing it. Attention is directed to Ex parte Trevette, 97 O.G. 1173." First italics ours.

It will be noted that the examiner, by the use of the term, "the obvious method of producing the article," implied that there was but one method of doing so. He might have arrived at a different conclusion if he had used the word "an" instead of "the." The importance of this circumstance will appear later.

It will also be observed that the examiner's holding as to the method claims was upon the authority of Ex parte Trevette, 97 O. G. 1173, 1910 C.D. 170. The board, however, in its stated grounds of rejection of the claims has departed materially from those of the examiner, and we must frankly confess we have had some difficulty in arriving at the real position of the board by reason of the language is used. In considering this decision we feel it necessary to call attention to several features of the language used and quote the following (italics and numbers by us):

"1 The objection noted against the appealed claims is that while they are alleged to cover a process no real steps are defined. About all that is said in the claims is that the article is formed so as to have certain structural characteristics. 2 After a careful reading of the detailed description we fail to find any disclosure of procedure followed in making the article. Apparently no special sequence of steps is followed in the making up of the article. 3 Just when the charge of tea is placed in the bag is not stated, nor does it appear in the description when and how the slit is made. 4 It appears to us that whatever patentable merit there may be in this case resides in the particular concept of the structure and after conception the article of manipulative steps employed in making it are so simple that no invention is seen in this feature. It is obvious that bags made from paper by folding a sheet on itself and then sealing the other three sides are very old and common and there is certainly no invention involved in merely making a slit through one of these sealing edges. For reasons stated, we can see no invention in the process claims."

It will be noted that the concluding sentence is "For reasons stated, we can see no invention in the process claims," and the...