Ex Parte BERLEPSCH et al

Patent Trial and Appeal Board

Oct 23, 2018

14729649 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/729,649 06/03/2015
27752 7590 10/25/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Joseph Allen BERLEPSCH
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
13404 1538
EXAMINER
ELOSHWAY, NIKI MARINA
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH ALLEN BERLEPSCH and
RAMZI TAKIEDDINE
Appeal2018-005468
Application 14/729,649
Technology Center 3700
Before PHILIP J. HOFFMANN, KENNETH G. SCHOPPER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's rejection of claims 1---6 and 8-18. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM-IN-PART, and ENTER A NEW GROUND OF
REJECTION PURSUANT TO 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is "The Procter &
Gamble Company." Appeal Brief filed Nov. 6, 2017 ("Appeal Br."), 1.
Appeal2018-005468
Application 14/729,649
According to Appellants, the invention is directed to a faceted
container for a product. Spec., Title, 1, 1. 4. Claims 1 and 18 are the
independent claims on appeal. Below, we reproduce claim 1 as illustrative
of the appealed claims.
1. A container comprising:
an open end circumscribing a longitudinal axis; and
a peripheral wall extending from said open end about said
longitudinal axis to a closed end;
wherein said peripheral wall and said closed end comprise
a thermoplastic material;
wherein said peripheral wall comprises a faceted region
comprising a plurality of facets arranged edge to edge with at
least one adjacent facet, at least a portion of said faceted region
being located nearer to said closed end than to said open end;
wherein said peripheral wall in said faceted region is
defined by a plurality of substantially straight line segments
arranged end to end with one another;
wherein said peripheral wall has a peripheral wall exterior
surface oriented away from said longitudinal axis, said peripheral
wall exterior surface having a peripheral wall exterior surface
area;
wherein each of said plurality of facets has a facet exterior
surface oriented away from said longitudinal axis and each of
said facets has a facet exterior surface area that is between
about 0.0001 % and about 4% of said peripheral wall exterior
surface area;
wherein at local positions along said longitudinal axis said
container has a local maximum internal dimension orthogonal to
said longitudinal axis, a local major axis coincident with said
local maximum internal dimension, a local minor axis orthogonal
to said local major axis and said longitudinal axis, a local minor
internal dimension coincident with said local minor axis, and a
local aspect ratio defined as a ratio of said local maximum
internal dimension to said local minor internal dimension;
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Application 14/729,649
wherein said container comprises a neck proximal said
open end, wherein said neck has a local aspect ratio from 1 to
about 1.1;
wherein said neck has an open cross-section between
about 5 cm2 and about 60 cm2; and
wherein said peripheral wall is substantially free from said
facets above said neck.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1-3 and 9-17 under 35 U.S.C. § 103 as unpatentable
over Kim (US Des. 411,740, iss. June 29, 1999), Hendricks et
al. (US D544,363 S, iss. June 12, 2007) ("Hendricks"), and
Tanaka et al. (US 7,556,164 B2, iss. July 7, 2009) ("Tanaka");
II. Claims 4 and 5 under 35 U.S.C. § 103 as unpatentable over
Kim, Hendricks, Tanaka, and Kisela (US 2014/0217054 Al,
pub. Aug. 7, 2014);
III. Claim 6 under 35 U.S.C. § 103 as unpatentable over Kim,
Hendricks, Tanaka, Kisela, and Baum et al.
(US 2007/0252382 Al, pub. Nov. 1, 2007) ("Baum"); and
IV. Claims 8 and 18 under 35 U.S.C. § 103 as unpatentable over
Kim, Hendricks, Tanaka, Kisela, Baum, and Delage et al.
(US 2013/0200036 Al, pub. Aug. 8, 2013).
ANALYSIS
New ground of rejection
For the reasons set forth below, we reject independent claim 18, and
claims 3---6 and 14 that depend from independent claim 1, under 35 U.S.C.
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Application 14/729,649
§ 112(b ), as indefinite for failing to particularly point out and distinctly
claim the subject matter that Appellants regard as the invention.
Independent claim 18 recites, in relevant part, "wherein individual ...
facets have a radius of curvature of the principal curvatures at a center point
of said facets greater than about 60 mm." Appeal Br., Claims App.
Claims 3---6 and 14, depending from claim 1, also include recitations related
to radii of curvature. See id. Appellants argue that the Examiner errs in
rejecting certain claims as obvious because the prior art does not teach or
suggest the claimed radii. See, e.g., id. at 4--5, 7-8. Further, Appellants
essentially argue that the Examiner misunderstands what the claimed radii
are. See, e.g., Reply Br. 3 ("The radius of curvature of the principal
curvatures at a centroid of the facets defines an aspect of the shape of the
individual facets, not the size of the individual facets. The radius of
curvature of the principal curvatures at a centroid of the facets defines the
flatness of the facets."); see also, e.g., Appeal Br. 4--5.
While the Examiner's misunderstanding does not compel an
indefiniteness rejection, it is indicative of the underlying issue. Specifically,
it is not clear to us what radii Appellants are claiming. As shown in
Appellants' Figure 2, both the interior surface 180 and exterior surface 170
of container 10 appear to be straight line segments. See Fig. 2. None of
Appellants' figures appear to illustrate any radius of curvature for an
individual facet, or any radius' center point, for example. Further,
Appellants' descriptions of the radii, in the Specification, are almost
verbatim that which is recited in the claims. See Spec. 15, 11. 1-9. For
example, the Specification states "[i]ndividual facets 100 can have a radius
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Application 14/729,649
of curvature of the principal curvatures at the centroid of the facet 100
greater than about 60 mm," without further explanation. Id. at 11. 3--4.
A claim is properly rejected as being indefinite under 35 U.S.C.
§ 112(b) if, after applying the broadest reasonable interpretation in light of
the Specification, the metes and bounds of a claim are not clear because the
claim "contains words or phrases whose meaning is unclear." In re
Packard, 751 F.3d 1307, 1310 (Fed Cir. 2014). In this case, for the reasons
set forth above, the metes and bounds of claims 3---6, 14, and 18 are not clear
to us. Thus, we reject claims 3---6, 14, and 18, as indefinite.
Rejection I
Based on our review of the record, including the Examiner's Final
Office Action and Answer, and Appellants' Appeal Brief and Reply Brief,
Appellants do not persuade us that the Examiner errs in rejecting
independent claim 1, and its dependent claims 2, 9-13, and 15-1 7.
Appellants argue that the rejection is in error for the following reason:
Kim does not disclose a peripheral wall in the faceted region
defined by a plurality of substantially straight line segments
arranged end to end with one another. Although the exterior
surface and a limited portion of the interior of the top portion the
container is disclosed, the remaining structure defining portions
of the container other than the exterior surface of the container
and portions of the interior of the container not in view in
Fig[ ures] 1 and 6 is not shown. [Appellants] submit[] that it is
unreasonable to definitively understand from the disclosure in
Kim that the peripheral wall in the faceted region is defined by a
plurality of substantially straight line segments arranged end to
end with one another. For example, the interior space of the light
beverage container might be an open smooth walled cylinder.
Reply Br. 1-2. This argument does not demonstrate error in any of the
Examiner's specific findings regarding Kim's disclosure of the claimed
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Application 14/729,649
"facets," "faceted region," "peripheral wall," and "substantially straight line
segments." Answer 3 ( citing Kim Fig. 2 (annotated)). Further, the
significance of Appellants' statement that "the interior space of [Kim's] light
beverage container might be an open smooth walled cylinder" is not
understood, as the claim does not recite, for example, that an interior wall is
faceted, or that an interior wall must be defined by substantially straight line
segments. Instead, in the absence of evidence or a compelling line of
technical reasoning, we agree with the Examiner that the claim recitation
that "said peripheral wall in said faceted region is defined by a plurality of
substantially straight line segments arranged end to end with one another" is
disclosed by Kim's "peripheral wall" and "substantially straight line
segments," both of which the Examiner identifies in the annotated figure.
Thus, based on the foregoing, we sustain the Examiner's rejection of
independent claim 1, and dependent claims 2, 9-13, and 15-17 that
Appellants do not argue separately.
With respect to dependent claims 3 and 14, for the reasons set forth
above, the scope of these claims is unclear. Consequently, we do not sustain
the obviousness rejection of claims 3 and 14 because to do so would require
speculation as to the scope of the claims. See In re Steele, 305 F.2d 859,
862---63 (CCP A 1962) (holding that the Board erred in affirming a rejection
of indefinite claims under 35 U.S.C. § 103(a), because the rejection was
based on speculative assumptions as to the meaning of the claims). It should
be understood, however, that our decision in this regard is proforma and
based solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejection.
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Rejections II and III
For the reasons set forth above, the scope of claims 4--6 is unclear.
Consequently, we do not sustain the obviousness rejections of claims 4--6
because to do so would require speculation as to the scope of the claims.
See In re Steele, 305 F.2d at 862-63.
Rejection IV
Regarding claim 8, which depends from claim 1, Appellants argue
that the rejection is in error for the same reasons claim 1 's rejection is in
error. Appeal Br. 5---6. Inasmuch as we sustain claim 1 's rejection, we also
sustain claim 8 's rejection.
Regarding claim 18, for the reasons set forth above, the scope of the
claim is unclear. Consequently, we do not sustain the obviousness rejection
of claim 18 because to do so would require speculation as to the scope of the
claims. See In re Steele, 305 F.2d at 862-63.
DECISION
We AFFIRM the Examiner's obviousness rejections of claims 1, 2, 8-
13, and 15-17.
We REVERSE, proforma, the Examiner's obviousness rejections of
claims 3---6, 14, and 18.
We ENTER A NEW GROUND OF REJECTION of claims 3-6, 14,
and 18 under 35 U.S.C. § 112(b), as indefinite for failing to particularly
point out and distinctly claim the subject matter Appellants regard as the
invention.
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Application 14/729,649
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 4I.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new [ e ]vidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the [E]xaminer, in which event the [proceeding]
will be remanded to the [E]xaminer ....
(2) Request rehearing. Request that the proceeding be
reheard under §[]41.52 by the Board upon the same [r]ecord ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R § 4I.50(b)
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