Ex Parte Kessler

Patent Trial and Appeal Board

Sep 5, 2018

14448013 (P.T.A.B. Sep. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/448,013 07/31/2014 Robert H. Kessler
21888 7590 09/07/2018
THOMPSON COBURN LLP
ONE US BANK PLAZA
SUITE 3500
ST LOUIS, MO 63101
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.
38165-131702 4017
EXAMINER
POON, ROBERT
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
09/07/2018 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):
IPDOCKET@THOMPSONCOBURN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT H. KESSLER
Appeal2018-000922
Application 14/448,013
Technology Center 3700
Before JENNIFER D. BAHR, FRANCES L. IPPOLITO, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1-7 and 12-15. 3 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellant, Kessler Containers, Ltd., is the Applicant as provided in 37
C.F .R. § 1.46, and is identified as the real party in interest. Appeal Br. 2.
2 Appeal is taken from the Final Office Action dated October 18, 2016.
3 Claims 8-11, which recite, in relevant part, a method comprising blow
molding a container, have been withdrawn. See Response to Restriction
Requirement dated Feb. 2, 2016.
Appeal2018-000922
Application 14/448,013
STATEMENT OF THE CASE
Claims 1 and 12 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A monolithic blow molded container having a top,
a bottom, a front, a rear, and opposite sides, the container
comprising a cavity that is configured and adapted to hold liquid,
the top having an opening configured and adapted to allow liquid
to be dispensed form the cavity of the container, the container
having a horizontal perimeter and comprising an opaque wall
portion and transparent wall portion, the opaque wall portion
extending a majority of the way around the perimeter and
bounding a main portion of the cavity, the transparent wall
portion being vertically elongate and having a convex outer
surface and a concave inner surface, the concave inner surface
defining a vertically extending channel portion of the cavity that
is external to the main portion of the cavity, the transparent wall
portion protruding from adjacent portions of the opaque wall
portion of the container in a manner such that liquid in the
channel portion of the cavity can be observed through the
transparent wall portion from two opposite viewing angles.
THE REJECTIONS
I. Claims 1--4, 7, and 12-15 stand rejected under 35 U.S.C. § 103
as unpatentable over Howard (US 5,449,088; issued Sept. 12, 1995) and
Price (US 3,217,923; issued Nov. 16, 1965).
II. Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as
unpatentable over Howard, Price, and Hirst (US 6,070,753; issued June 6,
2000).
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Application 14/448,013
ANALYSIS
Rejection I
Regarding independent claim 1, the Examiner finds, inter alia, that
Howard discloses a monolithic container (i.e., container 12) "capable of
being blow molded," including an opaque portion (i.e., front wall 18) and a
transparent wall portion (i.e., transparent insert 50), as claimed. Final Act.
2-3 (citing Howard, Fig. 3). The Examiner also finds that Appellant's
Specification admits that "it was known in the art to manufacture a blow
molded container with both a transparent portion and opaque portion in a
single blow molding process." Ans. 6 (citing Spec. ,r 6). The Examiner
relies on Price for disclosing a transparent portion (i.e., level indicator 28)
that protrudes from an opaque wall (i.e., side of vessel 10), as claimed. Final
Act. 3 (citing Price Figs. 2, 3); see also Ans. 6 ("the final product of Howard
and Price has the same structure [as] the claimed invention").
Appellant correctly argues that claim 1 recites a monolithic container,
and that "neither the container of Howard nor the container of Price
discloses a monolithic container comprising both opaque and transparent
portions," because "the containers of Price and Howard are each formed of
multiple parts, one being opaque and the other transparent." Appeal Br. 4
(citing citing Price 2:24--34, Figs. 2-3; Howard 4:67-5:7, Fig. 6); see also
Reply Br. 2.
The Examiner disagrees with Appellant's assertion "that both the
transparent and opaque portions must be blow molded in a single process
and together as a single part in order to meet the limitation of the container
being monolithic" because, according to the Examiner, "the claim is a
product-by-process claim and so long as the prior art final product has the
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Application 14/448,013
same structure as that claimed, then it meets the claim limitation so long as it
is capable of being made by the process recited." Ans. 4--5. However, to the
extent the Examiner construes the claim term "monolithic" as a product-by-
process limitation, we disagree, in that the claim term "monolithic" connotes
structure and does not recite a process for making the container. See, e.g.,
Ans. 4---6.
Notably, the claim term "monolithic blow molded container" is in the
preamble of independent claims 1 and 12. We are mindful that, generally,
the preamble does not limit the claims. Allen Eng 'g Corp. v. Bartell Indus.,
Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (citation omitted). However, a
preamble may be limiting if: "it recites essential structure or steps"; claims
"depend[] on a particular disputed preamble phrase for antecedent basis";
the preamble "is essential to understand limitations or terms in the claim
body"; the preamble "recit[ es] additional structure or steps underscored as
important by the specification"; or there was "clear reliance on the preamble
during prosecution to distinguish the claimed invention from the prior art."
Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.
Cir. 2002). In the instant proceeding, we agree with Appellant that the claim
term "monolithic blow molded container," recites additional structural
limitations, specifically, that the container is a monolithic container having
structure connoted by the process of blow molding. See, e.g., Appeal Br. 4
(arguing that "[c]laims 1 and 12 each require, among other things, the
container to be a monolithic blow molded container").
Regarding the Examiner's determination that Howard's gas container
is "capable of being blow molded" (Final Act. 2) or that "it would have been
obvious ... to utilize a single blow molding process to manufacture the final
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Application 14/448,013
product [of Howard, as modified by Price]" (Ans. 6) to result in "[a]
monolithic, blow molded container," Appellant argues that "[t]here is no
evidence presented that the structures of Howard and Price could be made
monolithically using blow molding or why a person of ordinary skill in the
art would be motivated to do so." Reply Br. 4. Appellant also argues that to
modify Howard and Price to be monolithic structures "is beyond the scope"
of each of the references and would render their entire teachings and
purposes "superfluous." Id.
Appellant's position is persuasive because Appellant's arguments are
consistent with the record before us, whereas the Examiner's findings are
not supported by the record. First, we agree with the Examiner that the
claim term "blow molded" describes a process for making a product (i.e., a
product made by the process of blow molding). See, e.g., Ans. 4----7. Our
reviewing court instructs us that "when considering the patentability of
product claims that contain process limitations, claim scope is generally
based on the product itself~ not the process;" however, "[i]f the process
limitation connotes specific structure and may be considered a structural
limitation, ... that structure should be considered." In re Nordt Dev. Co.,
LLC, 881 F.3d 1371, 1374 (Fed. Cir. 2018) (internal citations omitted). In
view of In re Nordt Dev. Co., LLC, our first inquiry is whether the claim
term "blow molded" is a process or structural limitation, and if structural, we
must determine the precise meaning of the structural limitation "blow
molded." Id. at 1375. The court in In re Nordt Dev. Co., LLC gleaned the
structural nature of the process limitation from "the plain claim language and
the specification itself." Id. (holding that the claim term "injection molded"
was not a process limitation, but connoted an integral structure).
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Application 14/448,013
Here, the Specification describes the claimed blow molding process in
the context of "a method compris[ing] blow molding a container from a
single parison in a manner such that the container is monolithic." Spec. ,r 9
( emphasis added). However, the Specification also discloses that "[t ]he
container consists of an opaque wall portion 26 and a plastic transparent wall
portion 28 that are integrally blow molded from a single plastic parison."
Spec. ,r 17 (emphasis added). Claim 1 does not limit the process of blow
molding to one using a single plastic parison, and as set forth supra, claim 1
recites the structural limitation "monolithic" in addition to the term "blow
molded." Thus, on the record before us, we glean from the Specification
and language of claim 1 that the claim term "blow molded" is not limited to
monolithic structures, but rather encompasses the structure of an integral
container (i.e., wherein the top, bottom, front, rear, and opposite sides, as
well as the opaque and transparent wall portions, are joined to form a unit)
as well as a monolithic structure.
We are persuaded, therefore, by Appellant's argument that the
Examiner erred by relying on the capability of blow molding Howard's gas
container (as blow molding is disclosed in the Specification) for disclosing a
blow molded gas container that is necessarily monolithic, as claimed.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1, and claims 2--4 and 7 depending therefrom. The
Examiner relies on the same findings and reasoning to reject independent
claim 12, which also recites "a monolithic blow molded container," and
therefore, we also do not sustain the Examiner's rejection of independent
claim 12, and claims 13-15 depending therefrom, for essentially the same
reasons as set forth supra. Final Act. 2-3.
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Rejection II
The Examiner's reliance on Hirst fails to make up for the deficiencies
in the Examiner's reliance on Howard, Price, and the admitted prior art in
the Specification, as applied to independent claim 1 supra, and therefore, we
also do not sustain the Examiner's rejection of claims 5 and 6, which depend
from independent claim 1. Final Act. 4--5.
DECISION
The Examiner's decision rejecting claims 1-7 and 12-15 is reversed.
REVERSED
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