Ex Parte BezekDownload PDFPatent Trial and Appeal BoardApr 16, 201311608170 (P.T.A.B. Apr. 16, 2013) Copy Citation 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. Appeal 2011-002533 Application 11/608,170 2 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); Appeal 2011-002533 Application 11/608,170 3 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”)). Appeal 2011-002533 Application 11/608,170 4 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, Appeal 2011-002533 Application 11/608,170 5 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 Appeal 2011-002533 Application 11/608,170 6 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 Appeal 2011-002533 Application 11/608,170 7 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 Appeal 2011-002533 Application 11/608,170 8 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 Appeal 2011-002533 Application 11/608,170 9 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 Appeal 2011-002533 Application 11/608,170 10 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 Klh Copy with citationCopy as parenthetical citation