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).
4
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