COMMISSIONER'S DECISION
Indefinite claims: Plastic bag for Packaging Fresh Red Meat
Meat is packaged in a container made from two separate and distinct plastic
films. Indefinite claim 1 calls for the films to be joined together in a
totally undefined or unspecified manner. That claim and other dependent
claims were refused for failing to define the invention. An additional
claim was suggested for allowance.
Final Action: Affirmed, modification suggested.
*****************
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated May 3, 1976, on applica-
tion 049,742 (Class 217-20). The application was filed on April 25,
1969, in the name of Selwyn Simon et al, and is entitled "Plastic Bag
For Packaging Fresh Red bleat And Method For Making The Same." The Patent
Appeal Board conducted a Hearing on January 25, 1978, at which Mr. A.
Koller represented the applicant.
The application is directed to a plastic film package for packaging fresh
meats and to the method of producing the package. The package is made
by joining together two different plastic films each exhibiting distinct
properties and characteristics. The claims under rejection in the Final
Action however, are directed to a kit suitable for forming such packages.
In the Final Action the examiner rejected claims 1 through 10 for "indefin-
iteness and being directed to unpatentable subject matter." We note how-
ever, that claims 11 to 26 are considered as allowable claims. In that
action the examiner, inter alia, had this to say:
Claims 1 through 5, 8, 9 and 10 are rejected as being directed
to subject matter that is not patentable under the Canadian
Patent Act. It is again brought out that these claims, as
amended, merely define the juxtaposition of two sheets of
commercially available plastic films having certain desired
specific physical properties. These films do not in any way
cooperate to produce a result that is other than the sum of
the results of each integer. The various parts or films set
forth are merely capable of being put together to carry out a re-
quired function. This is brought out in claim 1 by applicant's
use of the terms "being joinable" and "to permit the ready
formation".
Claims 6 and 7 are rejected as being indefinite. The claims
are not directed to a "kit" as set forth in the preamble.
The parts have been preformed into a series of bags. However,
applicant has not sit forth sufficient detail in regard to
the structure of the preform, particularly in regard to which
sides have been sealed and the orientation of the open end.
In addition in claim 7 it is not clear as to whether the bags
are inter-connected er completely separate. The only alternative
to an individual bag composed of these two particular films
is that presented on page 18 at lines 3 to 21 which is directed
to a series of bags which are interconnected but separable.
In his response to the Final Action the applicant, inter alia, made
the following points:
In the Final Action of May 3, 1976 the Examiner has alleged that
claims 1 through 5, 8, 9 and 10 merely define the juxtaposition
of two sheets of commercially available plastic films having
certain desired specific physical properties and that these films
do not in any way cooperate to produce a result that is other than
the sum of the results of each integer. Such an allegation
is clearly in error as main claim l is drawn to "a kit" that
comprises a particular combination of film materials that are
assembled and disposed therein to permit the ready use thereof
for packaging of fresh red meat. Accordingly, the kit as claimed
defines a unique composite packaging medium that is assembled
and disposed to cooperatively act in a manner that makes possible
its use as a packaging medium for the ready formation of a
package. That this unique combination in films cooperate in a
particular way to form a packaging medium is pointed out in detail and
at long length in the specification and that such claims define
patentable subject matter, are proper in form and would he clear
to those skilled in the art should, it is respectfully, be
clear under the law.
In the Final Action the Examiner has further alleged that claims
6 and 7, which depend from claim 1 are indefinite, that the claims
are not directed to a "kit" as set forth in the preamble and that
even though the parts have been preformed into a series of bags,
applicant has not set forth sufficient detail in regard to the
structure of the preform. Such an allegation is clearly in error
as in these claims are defined preferred embodiments of the
disposition of particular combination of films in the kit and the
disposition thereof as defined in each of claims 6 and 7 would be
clear and definite to anyone having ordinary skill in the art. It
is respectfully submitted, that claims 6 and 7 are proper in form
and the rejection thereof should be withdrawn.
On July 20, 1977 the applicant also submitted a voluntary amendment in
which he cancelled refused claims 1 to 10 and presented new claims 1 to
9. The effect of this amendment was to cancel claim 5 and amend claim 1.
The amendment to claim 1 changes the term "kit" to "combination" and to
add to the later part of the claim "... and at least partially joined."
At the Hearing Mr. Koller argued that the rejected claims were indeed
directed to patentable subject matter. The examiner allowed claims to
a method for producing packages of red meat and to a novel practical
embodiment in the form of a composite plastic film bag which characterizes
the invention made and limits the scope of the monopoly grant. The
applicant however, argued for claims of broader scope.
We are satisfied that the patentable advance in the art is in the discovery
that some unexpected meritorious result has been achieved from the properties
and characteristics of the respective films when used in packaging fresh
red meat. A claim then may be directed to a novel practical embodiment
of that discovery, but the exclusive right granted must be limited to
embodiments of the idea, or invention that has been made (vide, Farbwerke
Hoechst A.G. v Commissioner of Patents (1962) 22 Fox C 141 at 169). In
other words the claim must characterize the invention made and define the
limits of the scope of the monopoly grant.
We will now consider the claims. Amended claim 1 reads:
A packaging combination for forming packages for fresh red
meats, said combination comprising a pair of flexible plastic
films having dissimilar properties, a first length of one
of said pair of films being selected from the group of
flexible thermoplastic films consisting of ethylene vinyl
acetate and polyvinyl chloride, said film being formulated so
as to have a tendency to block to itself and so as to be
clear, transparent, non-fogging and to provide an oxygen
transmission rate in a package formed from said pair of films
of at least about 140 cc/100 sq.in./24 hrs./atm. at 32.degree.F.,
and a second length of the other of said pair of films
being selected from the group consisting of ethylene vinyl
acetate, polyethylene and polyvinyl chloride, said film being
formulated so as to be non-blocking with respect to said first
length of film, and said pair of films being joinable by heat
sealing said first and second lengths of films being assembled
and at least partially joined in combination to permit the
ready formation of a composite film package having red meat
completely enveloped therebetween.
Claim 1, inter alia, calls for the two specified films to be at least
partly joined together, but in a totally undefined or unspecified manner.
The claim, in part, merely covers a securing means somewhere between
the two layers and the product would, at least in some instances, have no
practical utility. The claim is not specifically directed to a novel
practical embodiment of the discovery made. How, for example, would one
know when he was infringing that claim? Also the fact that the claim refers
to a "combination" does not change anything. This claim, in our view, should
be refused for failing to clearly define the invention, or more correctly
for failing to define any invention.
Claims 2 to 4 and 7 to 9, which depend directly or indirectly on claim 1,
are directed to inherent characteristics of the plastic film which does not
make these claims inventive over refused claim 1. The applicant, by his
own admission, is not the inventor of the individual films.
Claim 6 is again refused for being indefinite and should be refused as
presented. This claim however, will be discussed below in conjunction with
claim 5.
Claim 5, which depends on claim 1, is indefinite due mainly to the lack
of inventive subject matter in claim 1. Claims 5 and 6 however, appear to
relate to some structure, which if properly defined, could form the basis
of an additional claim. At the Hearing Mr. Koller argued along these lines
and stated that the longitudinal edges of the top and bottom film could
be joined together and be presented on a composite roll. In support of
that argument he referred to page 18, lines 3 f.f., which read:
As an alternate embodiment of the kit for forming the packages,
the longitudinal edges of the top and bottom film plies can
be similarly joined together followed by joining the film
plies together transversely at predetermined intervals to form
a plurality of consecutive, connected pouches. These pouches
or bags in tandem can be fed from reel stock to the packaging
station. After fresh meat items have been inserted into the
thusly formed pouches, the open edges of the film plies can be
joined together. The pouches containing the fresh meat items
can then be severed to provide individual, fresh meat packages.
In this embodiment, as well as in the previous embodiment, the
transverse joints should either be of sufficient width to provide
a joint for two, adjacent pouches or the transverse points of
each adjacent pouch should be spaced apart so that severing can
be accomplished therebetween without destroying the integrity
of the transverse joints.
In our view then a claim supported by the disclosure, supra, could
be made if drafted along the format of claim 11 and would read:
Composite plastic bags or pouches for forming packages for
fresh red meats, ... and the other of said pair of films
formulated so as to be non-blocking with said oxygen trans-
mitting film, said bars or pouches formed from a composite
roll of said films having their longitudinal edges
continuously joined and providing spaced transverse joins
to provide a plurality of interconnected bags or pouches.
To summarize, we are not satisfied that claims 1 to 9 are allowable in
their present form and we recommend that the decision in the Final Action
to refuse these claims be affirmed. We also recommend the allowance of
an additional claim if drawn in the format suggested.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have studied the prosecution of this application and have reviewed the
recommendation of the Patent Appeal Board. I concur with the recommenda-
tion and I refuse to accept claims 1 to 9. I will however, accept an
additional claim for allowance if presented as suggested by the Board.
The applicant has six months within which to cancel the refused claims
and submit an appropriate amendment, or to appeal my decision under the
provision of Section 44 of the Patent Act.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 8th. day of February, 1978
Agent for Applicant
William G. Hopley
Union Carbide (Canada) Ltd.
123 Eglinton Ave. East,
Toronto, Ontario