Ex Parte Dunman

Board of Patent Appeals and Interferences

Feb 28, 2007

10630982 (B.P.A.I. Feb. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES DUNMAN
____________

Appeal 2007-0293
Application 10/630,982
Technology Center 1700
____________

Decided: February 28, 2007
____________

Before CHUNG K. PAK, THOMAS A. WALTZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Primary Examiner’s non-final
rejection of claims 1 through 11 and 13 through 20, which are the only
claims pending in this application (see the Office action dated Nov. 21,
2005). Although the Examiner’s rejection was not made final, we have
jurisdiction since the claims have been twice examined and rejected. See
Ex parte Lemoine, 46 USPQ2d 1420, 1423 (Bd. Pat. App. & Int. 1998);
35 U.S.C. § 134 (2002).
Appeal 2007-0293
Application 10/630,982

According to Appellant, the invention is directed to a method of
protecting portions of containers from being coated while other portions of
the containers are coated (Br. 7). The method includes the steps of making
the containers from a first material, coating the containers with a second
material, and, prior to coating, covering the portions of the container that
should remain uncoated with shields of the first material, where the shields
are made from scraps of the first material used to make the container (id.).
Claim 1 is illustrative of the invention and is reproduced below:
1. A method of protecting portions of containers from being
coated while other portions of the containers are being coated,
comprising:

making containers from a first material;

coating the containers with a second material; and

prior to coating, covering portions of the containers to remain
uncoated with shields of the first material,

wherein the shields are made from scraps of the first material
produced from the making of the containers.

In addition to Appellant’s admitted prior art (hereafter APA), the
Examiner relies on the following references as evidence of obviousness:
Carl US 3,740,259 Jun. 19, 1973
White US 4,667,620 May 26, 1987
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ISSUES ON APPEAL
Claims 17-20 stand rejected under the first paragraph of 35 U.S.C.
§ 112, first paragraph, for failure to meet the written description requirement
(Answer 3).1
Claims 1-4, 6, 8-11, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Carl in view of White (Answer 4).2 Claims 5,
7, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Carl in view of White and the APA (Answer 6).
Appellant contends that Figure 1 provides support for added claims
17-20, with the only portion of the shield 10 that engages container 18 being
shoulder 10d, but this shoulder does not engage the threaded portion of the
container (Br. 11).
Appellant contends that the Examiner agrees that Carl does not teach
that the main body member 10 is made from scraps of the first material used
to make the container, and the Examiner has not provided any reason or
motivation to modify Carl or combine the disclosures of Carl and White
(Br. 12-13).
Appellant also contends that the discussion in White of recycling is
made in the context of describing disadvantages of dip-coating techniques,
and is not applicable to the claimed process (Br. 13).

1 We refer to and cite from the “edited version” of the Examiner’s Answer
dated Aug. 24, 2006.
2 The Examiner has mistakenly included claim 12 in this rejection (Answer
4). However, as correctly noted by Appellant (Br. 5), claim 12 was canceled
in the Amendment dated May 23, 2005.
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Application 10/630,982

The Examiner contends that the “exploded view” of Appellant’s
Figure 1 shows that the lower section of the upper shield engages and holds
container 18 in view of the overlapping contact (Answer 7).
The Examiner contends that one of ordinary skill in the art would
have been aware of the pervasive recycling of plastic scrap to reduce waste
and enhance cost-effectiveness of plastic resources, as evidenced by White,
and used any scrap material to make a shield of the same material (Answer
7-8).
Accordingly, the dispositive issues in this appeal are as follows: (1)
does Figure 1 provide support for added (non-original) claims 17-20?; and
(2) would it have been within the ordinary skill in this art to have recycled
scrap plastic from making the container to form the shield, where the shield
was known to be made from the same material as the container?
We determine that the Examiner has established that Figure 1 does not
provide sufficient support for the language recited in added (non-original)
claims 17-20. We also determine that the Examiner has established a prima
facie case of obviousness in view of the reference evidence, which Appellant
has not adequately rebutted by their arguments. Therefore we AFFIRM all
rejections in this appeal essentially for the reasons stated in the Answer, as
well as those reasons set forth below.
OPINION
A. The Rejection under § 112, ¶ 1
The Examiner finds that claims 17-20 recite “the shields do not hold a
threaded engagement portion of a finish of the containers” and this language
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Application 10/630,982

fails to find support in the original disclosure (Answer 3 and 7). Appellant
relies on original Figure 1 as support for this language in claims 17-20
(Br. 11).
If the Examiner establishes that Appellant claims embodiments that
are completely outside the scope of the specification, then the Examiner has
met the initial burden of proof. See In re Alton, 76 F.3d 1168, 1175,
37 USPQ2d 1578, 1583 (Fed. Cir. 1996). The drawings alone may provide
“written description” of the invention as required by the first paragraph of
§ 112. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991); Ex parte Holt, 19 USPQ2d 1211, 1213 (Bd.
Pat. App. & Int. 1991).
Appellant agrees with the Examiner that shoulder 10d of shield 10
engages or “holds” the container 18, but argues that this portion engages
only the top of the container, not the threaded engagement portion (Br. 11;
see the Answer 7). However, as clearly seen in the “exploded view” of
Figure 1 attached to the Answer, we agree with the Examiner that the lower
section of the upper shield “engages and holds” by virtue of the overlapping
contact of the shield shoulder and the top portion of the threaded portion of
container 18 (Answer 7). Accordingly, we do not find any support in Figure
1 for the exclusionary language recited in claims 17-20 on appeal. We note
that Appellant has not disputed the Examiner’s analysis of the “exploded
view” of Figure 1.
For the foregoing reasons and those stated in the Answer, we
determine that the Examiner has established a prima facie case of lack of
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“written description” under § 112, ¶ 1, which Appellant has not adequately
rebutted. Therefore we affirm the Examiner’s rejection of claims 17-20
under 35 U.S.C. § 112, first paragraph, for failure to meet the “written
description” requirement.
B. The Rejections based on § 103(a)
We determine the following factual findings from this record:
(1) Carl disclose a method for masking [shielding] a portion of a
container to prevent the coating of this portion while permitting
the coating of the remaining surface of the container (abstract;
Answer 4);
(2) Carl teaches that the container may be made from various
compositions such as ceramics, glasses, and polymers such as
polyethylene, polypropylene, and polyvinyl chloride (col. 1, ll. 46-
48; Answer 4);
(3) Carl discloses that the body member or chuck 10 masks or shields
a portion of the container 12 from the coating (col. 4, ll. 16-19;
Answer 4);
(4) Carl discloses that the body member or chuck 10 may be made
from “plastic materials such as bakelite, high density polyethylene,
phenolic oxidative coupling polymers, and the like” (col. 2, l. 61-
col. 3, l. 1; Answer 4);
(5) White discloses coating portions of a plastic container while
shielding other portions from the coating material (Figure 2 and
col. 56-59; Answer 5);

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(6) White teaches that, in the food and beverage industry, the trend is
to move away from glass and metal containers and turn to plastic
containers, most preferably polyethylene terephthalate (PET) (col.
1, ll. 13-19; Answer 5); and
(7) White teaches that “[i]n light of the trend toward compulsive
container return laws in various states and a probable federal
deposit/return law, all future container designs must be quickly
and easily recyclable” (col. 1, l. 66-col. 2, l. 1).
“When relying on numerous references or a modification of prior art,
it is incumbent upon the examiner to identify some suggestion to combine
references or make the modification. [Citation omitted].” In re Mayne,
104 F.3d 1339, 1342, 41 USPQ2d 1451, 1454 (Fed. Cir. 1997). A
suggestion, teaching, or motivation to combine the relevant prior art
teachings does not have to be found explicitly in the prior art, but may be
implicit. “The test for an implicit showing is what the combined teachings,
knowledge of one of ordinary skill in the art, and the nature of the problem
to be solved as a whole would have suggested to those of ordinary skill in
the art.” In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed.
Cir. 2000) (internal citations omitted).
With regard to claim 1 on appeal, the only claimed step that Appellant
argues is the last step, namely that Carl does not teach that the main body
member 10 [the shield] is made from scraps of the first material used to
make the container (Br. 13). As found above, Carl teaches that the same
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material may be used for both the container and the main body member
[shield]. We determine that the Examiner has identified an implicit
motivation for the modification of Carl, namely that one of ordinary skill in
this art would have been motivated by the well-known use of recycling and
economic sense to have used any scraps of plastic material leftover from the
container formation in the making of the shield of the same plastic material
(Answer 7-8).3 It is well established that economics alone can provide the
motivation or suggestion to modify a reference. See In re Clinton, 527 F.2d
1226, 1229, 188 USPQ 365, 367 (CCPA 1976). Recycling has also been
recognized as a cost-effective measure. See In re Marsheck, 438 F.2d 606,
608-09, 168 USPQ 721, 723 (CCPA 1971). Therefore, especially in view of
the teachings of White regarding the trend of recycling plastics in the
container art, we determine that the Examiner has met the initial burden of
identifying the reason or suggestion to modify the process of Carl to yield
the claimed subject matter.
With regard to claim 15, Appellant argues that Carl fails to disclose
that the main body member 10 is removably held on a conveyor, let alone by
a friction fit (Br. 14). With regard to claim 16, Appellant additionally argues
that Carl does not disclose that the chuck 10 is capable of being disposed of
during a shutdown (Br. 15).

3 There is no dispute that “recycling” includes recycling of scraps (Answer
8).
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As can readily be seen from Figures 4 and 5 of Carl, the main body
member 10 is removably held on conveyor 25 by a “friction fit” with support
means 21 (col. 4, ll. 1-12). Of course, the chuck or main body member 10 is
capable of being removed (and disposed of if necessary) during any
shutdown (Answer 9-10).
With regard to the separate rejection of claims 5, 7, 13, and 14
(Answer 6), Appellant merely repeats the arguments set forth above (Br. 15).
Accordingly, we adopt our remarks as noted above.
For the foregoing reasons and those stated in the Answer, we
determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence. Based on the totality of the
record, including due consideration of Appellant’s arguments, we determine
that the preponderance of evidence weighs most heavily in favor of
obviousness within the meaning of § 103(a). Therefore we affirm both
grounds of rejection in this appeal based on § 103(a).
C. Summary
The rejection of claims 17-20 under 35 U.S.C. § 112, first paragraph,
is affirmed.
The rejection of claims 1-4, 6, 8-11, 15, and 16 under 35 U.S.C.
§ 103(a) over Carl in view of White is affirmed. The rejection of claims 5,
7, 13, and 14 under 35 U.S.C. § 103(a) over Carl in view of White and the
APA is also affirmed.
The decision of the Examiner is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).
AFFIRMED

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