Ex Parte Perkins - Page 4


                Appeal 2007-2743                                                                                
                Application 10/766,754                                                                          

                       essentially constant to effect partial separation along the lines of                     
                       perforation within the series of bags, as previously shown in Fig. 2A                    
                       by segment AB for example. [col. 4, ll. 13-20]                                           

                       The Examiner argues that Bolton partially tears the lines of                             
                perforation at their edge portions (Ans. 4).2  The Examiner is incorrect.                       
                Bolton’s torn portion is in the central portion of each line of perforation, i.e.,              
                the portion AB in Fig. 2A.                                                                      
                       The Examiner argues that “one skill[ed] in the art when applying the                     
                teaching, as taught by Bolton, would apply the tearing rollers where the                        
                partial tearing is needed, in this case, at the edge of the string of perforated                
                bags” (Ans. 8).  The Examiner, however, has not provided evidence of a                          
                need for tearing a line of perforation at its edge portion.  The record                         
                indicates that for that claim feature the Examiner relies only upon the                         
                Appellant’s disclosure and, therefore, used impermissible hindsight.  See                       
                W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ                          
                303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re                          
                Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).                                    
                       We therefore reverse the rejections as to claims 1-5 and 7-20.                           




                                                                                                               
                2 The Appellant’s tear rollers (56, 57) partially tear the lines of perforation at              
                their edge portions because the central portions are occupied by air-filled                     
                cushions (see Appellant’s fig. 1, where item 51 is the partial tearing                          
                mechanism).                                                                                     

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