Ex Parte Bezek

Patent Trial and Appeal Board

Apr 16, 2013

11608170 (P.T.A.B. Apr. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/608,170 12/07/2006 Edward Anthony Bezek CFLAY.00402 8872
110933 7590 04/17/2013
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
EXAMINER
CASTELLANO, STEPHEN J
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
04/17/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD ANTHONY BEZEK
____________

Appeal 2011-002533
Application 11/608,170
Technology Center 3700
____________

Before GAY ANN SPAHN, BENJAMIN D.M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Edward Anthony Bezek (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 57-64, 69, and 70. Appellant
cancelled claims 1-56. The Examiner withdrew claims 65-68 and 71 from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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Claimed Subject Matter
The claimed subject matter relates to “a blow molded container for
storing potato chips and/or crisps, corn based chips and/or crisps, cookies
and the like which is capable of adapting to changing environmental
conditions while maintaining its visual aesthetic appearance.” Spec. 2, ll. 8-
11. Claims 57 and 61 are the independent claims on appeal. Claim 57,
reproduced below is illustrative of the appealed subject matter.
57. A thermo-plastic container for hermetically
sealing a single stack of fragile articles,
comprising:
a tubular body having a central longitudinal
axis, said body comprised of a sidewall having a
flowing geometries mechanism formed therein,
which is positioned between a closed end and an
open end having a hermetically sealable opening;
wherein said hermetically sealable opening of said
open end and portions of said sidewall at said
closed end have circular lateral cross-sections of
substantially equivalent diameters, and said
sidewall includes a plurality of three-dimensional
figures formed therein.

Rejections
The following Examiner’s rejections, under 35 U.S.C. § 103(a), are
before us for review:
I. claims 57, 58, 61, 62, 69, and 70 as unpatentable over Carew
(US 6,044,996, issued Apr. 4, 2000) and Bizzarri (US 4,155,474, issued
May 22, 1979);
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II. claims 59, 60, 63, and 64 as unpatentable over Carew, Bizzarri,
and Garver (US 5,067,622, issued Nov. 26, 1991);1
III. claims 61, 62, and 70 as unpatentable over Ludder (US
3,680,763, issued Aug. 1, 1972) and Bizzarri; and
IV. claims 63 and 64 as unpatentable over Ludder, Bizzarri, and
Garver.2, 3

1 The Examiner does not list this rejection in the section entitled “Grounds of
Rejection to be Reviewed on Appeal,” but indicates that this ground of
rejection has not been withdrawn, and “[i]t is believed that [A]ppellant
doesn’t wish to contest this rejection.” Ans. 3-4. However, Appellant
discusses this rejection at pages 6 and 9 of the Appeal Brief and indicates at
page 8 of the Reply Brief that this rejection is being contested.
2 The Examiner withdrew the provisional rejection of claims 57-71 on the
ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 57-88 of copending US Patent Application No. 11/608,215 and
Bizzarri. Ans. 4; see also Final Rej. 6-7.
3 Appellant lists the Examiner’s withdrawal of claims 65-68 and 71 from
consideration under the heading of “GROUNDS OF REJECTION TO BE
REVIEWED ON APPEAL.” App. Br. 5. However, the propriety of the
Examiner's withdrawal of claims 65-68 and 71 from consideration relates to
a petitionable matter and not to an appealable matter. Thus, the relief sought
by the Appellant should have been presented by a petition under 37 C.F.R.
§ 1.181 instead of by appeal to this Board. Ex Parte Frye, 94 UPSQ2d
1072, 1077-78 (BPAI 2010) (precedential); see also In re Berger, 279 F.3d
975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403-04
(CCPA 1971) (stating that there are many kinds of decisions made by
examiners that are not appealable to the Board when they are not directly
connected with the merits of issues involving rejections of claims, and
holding that “the kind of adverse decisions of examiners which are
reviewable by the board must be those which relate, at least indirectly, to
matters involving the rejection of claims”)).
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OPINION
Rejection I – Obviousness based on Carew and Bizzarri
Independent claim 57 is directed to a thermo-plastic container and
recites that “said hermetically sealable opening of said open end and
portions of said sidewall at said closed end have circular lateral cross-
sections of substantially equivalent diameters.” Similarly, claim 61 is
directed to a blow-molded, thermo-plastic container and recites that “said
lower base section and said hermetically sealable opening of said upper
section hav[e] circular lateral cross-sections of substantially equivalent
diameters.”
The Examiner finds that Carew discloses a thermoplastic container
including, inter alia, a “closed lower base, . . . and upper section with
sealable opening, the upper section extends above top land 7, the lower base
extends below lower land 7, the base and upper section have circular lateral
cross sections of substantially equivalent diameters.” Ans. 5-6.
Appellant argues that Carew “discloses a container comprising a neck
1, a cylindrical body 2, a neck-to-body transition 3, and a base 4,” wherein
“the neck and the base do not have cross sections of substantially equivalent
diameters.” Reply Br. 2. In fact, according to Appellant, “[a]ll figures of
Carew illustrate a neck comprising a smaller diameter than the base.” Id.
Appellant’s Specification does not define the claim terminology of
“substantially equivalent diameters.” However, where the specification does
not assign or suggest a particular definition to a claim term, it is appropriate
to consult a general dictionary definition of the word for guidance in
determining the ordinary and customary meaning of the claim term as
viewed by a person of ordinary skill in the art. Comaper Corp. v. Antec,
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Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). The ordinary and customary
meaning of the words “substantially,” “equivalent,” and “diameter” are:
“being largely but not wholly that which is specified,” “equal in force,
amount, or value,” and “the length of a straight line through the center of an
object,” respectively. MERRIAM-WEBSTER’S COLLEGIATE® DICTIONARY,
10th Edition (1997). Therefore, one of ordinary skill in the art would
understand the claim terminology of a “substantially equivalent diameter” to
mean “largely but not wholly equal in length of a straight line through the
center of an object.”
In applying this interpretation of the claim terminology “substantially
equivalent diameters” to Carew, one of ordinary skill in the art would find
that Carew’s opening of the container’s open end (i.e., neck 1) does not have
a diameter which is substantially equivalent to the diameter of Carew’s
sidewall at the container’s closed end (i.e., base 4), because as depicted in
Carew’s Figures 1, 4, and 5, Carew’s neck 1 is substantially smaller than
Carew’s base 4.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 57 and 61, and claims 58, 62, 69, and 70 dependent
thereon, under 35 U.S.C. § 103(a) as unpatentable over Carew and Bizzarri.
Rejection II – Obviousness based on Carew, Bizzarri, and Garver
Appellant does not present any separate arguments against the
rejection based on the combination of Carew, Bizzarri, and Garver, but
instead relies upon those arguments already presented against the rejection
based on the combination of Carew and Bizzarri. See App. Br. 6-11. For
the reasons discussed supra, we were persuaded by Appellant’s arguments
that the Examiner erred in combining Carew and Bizzari. Accordingly, for
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the same reasons, we do not sustain the Examiner’s rejection of claims 59,
60, 63, and 64 under 35 U.S.C. § 103(a) as unpatentable over Carew,
Bizzarri, and Garver.
Rejection III – Obviousness based on Ludder and Bizzarri
Independent claim 61 and dependent claim 62
Appellant argues claims 61 and 62 as a group and we select
independent claim 61 as the representative claim. See App. Br. 9-11; see
also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 62 falls with claim 61.
In addition to the subject matter discussed supra, independent claim
61 also recites “a tubular body having a central longitudinal axis, said body
comprising a sidewall having a plurality of three-dimensional figures formed
therein.”
The Examiner finds that Ludder substantially discloses the subject
matter of independent claim 61, including “letters or figures (A, B, C),” but
fails to disclose that its letters or figures are three-dimensional figures. Ans.
6. To cure the deficiency of Ludder, the Examiner turns to Bizzarri to teach
“3-D figures (the letters that identify the product, . . . ).” Id. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
“to modify the letters/ figures of Ludder to be raised letters and 3-D figures
to (1) add product identifying information, (2) add structural rigidity to the
container sidewall and (3) to add surface roughening to improve hand
gripping of the container.” Ans. 6-7.
Appellant argues that Ludder teaches away from combination with
Bizzarri because “Ludder discloses . . . that the preforms should be
nestable,” to allow for “‘less bulky and therefore more convenient
shipping,’” and “[a]ltering the printed indicia of Ludder to the three
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dimensional objects of [Bizzarri] could ruin the nesting ability of the cups of
Ludder.” App. Br. 10-11.
We are not persuaded by Appellant’s argument that Ludder teaches
away from combination with Bizzarri. Whether a reference teaches away
from a claimed invention is a question of fact. In re Harris, 409 F.3d 1339,
1341 (Fed. Cir. 2005). “A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, . . . would be led in a
direction divergent from the path that was taken by the applicant.” In re
Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v.
Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). In the
present case, a person of ordinary skill in the art would not be led in a
direction divergent from the path that was taken by Appellant. Although
Ludder teaches that the “nestable, generally cup-shaped, all-plastic ‘pre-
form’ or ‘parison’” 10 is used to make the hexagonal shaped container 16
illustrated in Figure 3 on which the Examiner relies, and the pre-form or
parison 10 is nestable “for less bulky and therefore more convenient
shipment,” the pre-form or parison is “ultimately . . . converted, by final
blow-molding, to a container of any desired shape.” Ludder, col. 3, l. 37
through col. 4, l. 3. Thus, as the 3-dimensional figures may be formed
during the final blow molding, Appellant has not shown that Ludder would
teach away from modifying the container 16 of Ludder’s Figure 3 to include
3-dimensional figures as taught by Bizzarri.
Appellant also argues that that Examiner has “failed to demonstrate a
reasonable likelihood of success in the resulting combination” of Ludder and
Bizzarri, because the “Examiner has failed to demonstrate that the three-
dimensional objects of Bizzarri could be incorporated into the cups of
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Ludder without destroying the nesting feature.” App. Br. 11. For the
reasons discussed supra, we are not persuaded by Appellant’s argument
because it has not been shown that the three-dimensional figures would have
to be formed on the pre-form or parison in order to be incorporated into the
final container 16. Even if the three-dimensional figure were incorporated
into the pre-form or parison, it has not been dispositively shown that this
would prevent the pre-form or parison from nesting and consequently, that
there would be no reasonable likelihood of success in the resulting
combination. We note that absolute predictability that the resulting
combination will be successful is not required. See In re O'Farrell 853 F.2d
894, 903-904 (Fed. Cir. 1988). Here, because the three-dimensional figures
do not necessarily have to be formed on the pre-form or parison, but could
be formed during the final blow molding, there is a reasonable likelihood
that modifying Ludder’s container 16 to have the three-dimensional figures
(A, B, C) as taught by Bizzarri will be successful.
Accordingly, we sustain the Examiner’s rejection of independent
claim 61, and claim 62 which falls therewith, under 35 U.S.C. § 103(a) as
unpatentable over Ludder and Bizzarri.
Dependent claim 70
Claim 70 depends from independent claim 61 and recites that “said
plurality of three-dimensional figures increase structural rigidity.”
Appellant notes the Specification discloses that “[t]he randomly
spaced three-dimensional figures 30a-j distribute compressive and expansive
forces over a larger area thereby resulting in a more structurally rigid
container,” and Appellant argues that “[t]hese concerns have no relevance in
the glass-bottle of Bizzarri.” App. Br. 12. Appellant also argues that
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Bizzarri does not discuss the compressive/expansive problems or structural
rigidity, and “because Bizzarri discloses a glass bottle, the issues of an
implosion are non-existent.” Id.
We are not persuaded by Appellant’s arguments. The Examiner
concluded that it would have been obvious to one of ordinary skill in the art
to modify Ludder’s container 16 to include the three-dimensional figures
30a-j as taught by Bizzarri in order “to add surface roughening to improve
hand gripping of the container.” This reasoning has a rational underpinning.
Thus, the application of the teaching of the three-dimensional figures of
Bizzarri to Ludder would increase the structural rigidity of Ludder’s
thermoplastic container regardless of the fact that Bizzarri’s container is
made of glass.
Moreover, Appellant’s arguments are unconvincing because they do
not address the rejection as articulated by the Examiner, which is based on
modification of Ludder’s thermoplastic container to include three-
dimensional figures, not bodily incorporation of Bizzarri’s glass bottle with
three-dimensional figures thereon, into Ludder’s container. See In re Keller,
642 F.2d 413, 425 (CCPA 1981) (all features of secondary reference need
not be bodily incorporated into the primary reference, but consideration
should be given to what the combined teachings would have suggested to
those of ordinary skill in the art).
Accordingly, we sustain the Examiner’s rejection of claim 70 under
35 U.S.C. § 103(a) as unpatentable over Ludder and Bizzarri.
Rejection IV – Obviousness based on Ludder, Bizzarri, and Garver
Appellant does not present any separate arguments against the
rejection based on the combination of Ludder, Bizzarri, and Garver, but
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instead relies upon those argument already presented against the rejection
based on the combination of Ludder and Bizzarri. See App. Br. 9-11. For
the reasons discussed supra, we were not persuaded by Appellant’s
arguments that the Examiner erred in combining Ludder and Bizzarri.
Accordingly, for the same reasons, we also sustain the Examiner’s rejection
of claims 63 and 64 under 35 U.S.C. § 103(a) as unpatentable over Ludder,
Bizzarri, and Garver.

DECISION
We reverse the Examiner’s decision to reject: claims 57, 58, 61, 62,
69, and 70 under 35 U.S.C. § 103(a) as unpatentable over Carew and
Bizzarri; and claims 59, 60, 63, and 64 under 35 U.S.C. § 103(a) as
unpatentable over Carew, Bizzarri, and Garver.
We affirm the Examiner’s rejection, under 35 U.S.C. § 103(a), of:
claims 61, 62, and 70 as unpatentable over Ludder and Bizzarri; and claims
63 and 64 as unpatentable over Ludder, Bizzarri, and Garver.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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