Ex Parte Martin et al

Board of Patent Appeals and Interferences

Aug 25, 2009

10287997 (B.P.A.I. Aug. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIM L. MARTIN, LARRY A. HOTTLE, GALEN G. GERMAN,
and C. ROGER HAMRICK
____________

Appeal 2008-001792
Application 10/287,997
Technology Center 3700
____________

Decided: August 25, 2009
____________

Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Jim L. Martin et al. (Appellants) appeal under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 12, 14, 15, and 17-20. Claims
1-11, 13, and 16 have been canceled. We have jurisdiction over this appeal
under 35 U.S.C. § 6 (2002).

The Invention
Appellants’ claimed invention is directed to a method of making a
press-on, twist-off container assembly that is constructed and arranged to
optimize the torque required to remove the closure from the container. Spec.
1:9-11.
Claim 12, reproduced below, is illustrative of the claimed subject
matter.
12. A method of making a press-on, twist-off
container assembly, comprising steps of:
(a) providing a container having a finish
portion with at least one external thread defined
thereon;
(b) providing a press-on, twist-off type
closure including a panel portion and a skirt
portion that together define a generally cylindrical
interior recess and a deformable gasket mounted
within said interior recess that has a thread
engaging portion having a plurality of inwardly
extending raised flutes, said flutes being spaced
circumferentially variably about said thread
engaging portion; and
(c) pressing the closure onto the container so
that at least some of said flutes are in contact with
at least one of said external threads at respective
points of contact, each external thread having a
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total distance spanned by such points of contact,
and wherein an aggregate distance spanned that is
a sum of said total distance spanned for all of said
external threads is less than an internal
circumference of said thread engaging portion.

The Rejections
The following rejections by the Examiner are before us for review.
• Claims 12, 14, 15, and 17-20 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement;
• Claims 12, 14, 15, and 17-20 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as their
invention;
• Claims 12 and 17 under 35 U.S.C. § 103(a) as being unpatentable
over Bayer (US 4,863,030, issued Sep. 5, 1989) in view of any of
Ascasibar-Verdejo (US 4,452,365, issued Jun. 5, 1984), Mumford (US
4,717,034, issued Jan. 5, 1988), and Owen (US 3,371,813, issued Mar.
5, 1968); and
• Claims 14, 15, 18, 19, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Bayer in view of any of Ascasibar-Verdejo,
Mumford, and Owen, and further in view of Luch (US 5,190,178,
issued Mar. 2, 1993).

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SUMMARY OF DECISION
We AFFIRM. More specifically, we sustain the rejection of claims
12, 14, 15, and 17-20 under 35 U.S.C. § 112, second paragraph. We do not
sustain the other rejections.

ISSUES
The following issues are presented in this appeal.
(1) Does the limitation in claims 12 and 17 that the flutes are spaced
circumferentially “variably” about the thread engaging portion render
claims 12 and 17, and the claims depending therefrom, indefinite
because Appellants’ Specification, at page 7, lines 11-14, discloses
that the raised flutes 32 are arranged in six groups 34 that are “evenly
spaced” about the inner circumference of the thread engaging portion
30? See Ans. 4.
(2) Is the language in paragraphs (c) of claims 12 and 17 ambiguous, thus
rendering claims 12 and 17, and the claims depending therefrom,
indefinite? See id.
(3) Does Appellants’ Specification provide written description support for
the limitation in claims 12 and 17 that the flutes are spaced
circumferentially “variably” about the thread engaging portion? See
Ans. 3-4.
(4) Has the Examiner erred in finding that Ascasibar-Verdejo, Mumford,
and Owen teach or suggest variable spacing of flutes, as called for in
claims 12 and 17? See Ans. 5 and App. Br. 7-12.

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FACTS PERTINENT TO THE ISSUES
As described in Appellants’ Specification, and depicted in Figure 1,
Appellants’ closure 20 is provided with a deformable gasket 28, which
includes a thread engaging portion 30 having integrally molded “raised
flutes”1 32 arranged in six groups 34. Spec. 7:3-12. The groups 34 are
evenly spaced about the circumference of the thread engaging portion. Spec.
7:12-14. The circumferential distance between adjacent groups 34 is greater
than the circumferential distance between any of the “flutes” 32 within any
of the groups 34. Spec. 7:14-16. Therefore, the circumferential spacing
between Appellants’ “raised flutes” varies about the thread engaging portion
between at least two values, namely, the greater spacing between the last
“raised flute” in one group 34 and the first “raised flute” in the next adjacent
group 34. This disclosure was present in Appellants’ Specification and
Figure 1 on the filing date of the present application.
Claims 13 and 17, as presented on the filing date of the present
application, included a limitation that the flutes are spaced circumferentially
“irregularly” about the thread engaging portion. This claim language
constitutes description of the spacing of the flutes as being non-uniform or
varying about the thread engaging portion.

1 Appellants’ use of the phrase “raised flutes” is unusual, as a “flute” is
generally understood to be a long groove or recess. See, e.g., Webster's New
World Dictionary 538 (David B. Guralnik ed., 2nd Coll. Ed., Simon &
Schuster, Inc. 1984). We understand Appellants’ use of the terminology
“raised flutes” to refer either to raised ribs or to lands between flutes
(grooves).
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A “point” is “an element in geometry having definite position, but no
size, shape, or extension.” Webster's New World Dictionary at 1100. Thus,
a point does not span any distance.
Although Appellants’ Specification refers to “contact points 50”
(Spec. 7:20), in reality, Appellants’ flutes will contact the threads at contact
areas when the closure is pressed onto the container. See Fig. 2. The
spanned distance for each thread described in Appellants’ Specification, and
depicted in Figure 4, appears to be the distance spanned by and between the
first and last contact areas of the raised flutes within each thread. See Spec.
8:3-21.
The number of contact points of “regularly” (equally) spaced raised
flutes on the closure gasket within each thread on the container finish will
vary depending upon the circumferential distance between the flutes.
Without defining the spacing distance, one cannot ascertain the number of
contact points, and thus the distance spanned between such contact points.
The Examiner found that Bayer does not disclose the deformable
gasket 40 containing raised areas (“raised flutes”) that engage the thread 26.2
Ans. 5.
The Examiner found that Ascasibar-Verdejo teaches, at column 3,
lines 34-40, providing on gaskets flutes 6 that can be variably sized and
variably spaced around the circumference of the gasket. Ans. 5. The
Examiner does not rely on any other portion of Ascasibar-Verdejo to teach

2 The Examiner inadvertently referred to the finish 22 as a thread. Ans. 5.
As correctly pointed out by the Appellants, on page 6 of the Appeal Brief,
Bayer describes a thread 26 on finish 22. Col. 4, l. 52.
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providing ribs, or “raised flutes,” on a closure gasket at spacings which vary
about the circumference of the gasket.
We find that the portion of Ascasibar-Verdejo relied upon by the
Examiner does not teach providing ribs, or “raised flutes,” on a closure
gasket at spacings which vary about the circumference of the gasket.
Rather, Ascasibar-Verdejo teaches a gasket 5 having a number of interior
projections 6. Col. 3, l. 34. Ascasibar-Verdejo further teaches that the width
of each projection may vary as a function of the number of projections and
as a function of the diameter of the lid. Col. 3, ll. 36-40. Ascasibar-Verdejo
provides no hint that the spacing of the projections should be anything other
than uniform about the circumference of the gasket, as depicted in Figure 1
of Ascasibar-Verdejo.
The Examiner found that Mumford teaches, at column 4, lines 24-39,
that it is known to variably space ribs 40, which contact threads 21, with the
total width of the ribs being less than 10% of the total circumference of the
skirt. Ans. 5. The Examiner does not rely on any other portion of Mumford
to teach providing ribs, or “raised flutes,” on a closure gasket at spacings
which vary about the circumference of the gasket.
We find that the portion of Mumford relied upon by the Examiner
does not teach providing ribs, or “raised flutes,” on a closure gasket at
spacings which vary about the circumference of the gasket. Rather,
Mumford teaches providing, on the skirt of closure 20, generally vertical ribs
40, which are “generally spaced apart” and have a total width that is
generally less than 10% of the total length of the circumference of the skirt.
Col. 4, ll. 25-34. Mumford gives no hint that the spacing of ribs 40 should
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be anything other than uniform about the gasket, as depicted in Figure 2 of
Mumford.
The Examiner found that Owen teaches, at column 4, lines 1-12,
providing thread-contacting flutes 25, which can be variably spaced,
occupying 30-70% of the total circumferential distance of the cap, or about
12 to 20 flutes, for the purpose of increasing or decreasing security, thereby
increasing or decreasing opening force. Ans. 5. The Examiner does not rely
on any other portion of Owen to teach providing ribs, or “raised flutes,” on a
closure gasket at spacings which vary about the circumference of the gasket.
We find that the portion of Owen relied upon by the Examiner does
not teach providing ribs, or “raised flutes,” on a closure gasket at spacings
which vary about the circumference of the gasket. Rather, Owen teaches
that shock resistance can be increased by providing ribs 25 which occupy
between 30% and 70% of the total circumferential side surface area of the
cap. Col. 4, ll. 3-6. On a closure cap for a 40 mm finish, this is equivalent
to about 12 to 20 ribs 25, but this number will be adjusted depending on the
dimensions of the container finish, rib size, or changes in other variables.
Col. 4, ll. 7-12. While Owen describes adjusting design parameters
generally, Owen gives no hint that the spacing of ribs 25 should be anything
other than uniform.
Referring to Figure 14, the Examiner relies upon Luch for a teaching
to provide closure members 96 and 97 arranged in groups and spaced apart
to reduce gas pressure on the cap, thereby reducing the torque required to
open a container. Ans. 6. The Examiner does not rely on Luch to teach
providing ribs, or “raised flutes,” on a closure gasket at spacings which vary
about the circumference of the gasket.
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PRINCIPLES OF LAW
Definiteness
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
The primary purpose of the definiteness
requirement is to ensure that the claims are written
in such a way that they give notice to the public of
the extent of the legal protection afforded by the
patent, so that interested members of the public,
e.g., competitors of the patent owner, can
determine whether or not they infringe.
All Dental Prodx, LLC v. Advantage Dental Products, Inc., 309 F.3d 774,
779-80 (Fed. Cir. 2002).
Written Description
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
the applicant was in possession of the invention as now claimed. Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
Obviousness
The Examiner cannot read a claim limitation so unreasonably broadly
as to effectively ignore the limitation in determining whether to reject a
claim under § 103(a). This is true even if the Examiner believes the
limitation to be unclear or insufficiently supported by the Specification. See
In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).

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ANALYSIS
The indefiniteness rejection
The Examiner sets forth two separate bases for rejecting claims 12
and 17, and their dependent claims, as being indefinite. The first basis, as
we understand it, is that the limitation in claims 12 and 17 that the flutes are
spaced circumferentially “variably” about the thread engaging portion is
somehow inconsistent with the description in Appellants’ Specification of
the raised flutes 32 being arranged in six groups 34 that are “evenly spaced”
about the inner circumference of the thread engaging portion 30. We do not
agree with the Examiner. As shown in our findings above, while
Appellants’ Specification describes the groups 34 of “raised flutes” 32 as
being “evenly spaced,” the Specification also describes the circumferential
distance between adjacent groups, that is, between the last “raised flute” of
one group and the first “raised flute” in the next adjacent group, as being
different from (greater than) the distance between any of the flutes within a
single group. Stated differently, in accordance with the description in
Appellants’ Specification, the circumferential spacing between Appellants’
“raised flutes” varies about the thread engaging portion between at least two
values, namely, the smaller spacing between “raised flutes” 32 within a
group 34 and the greater spacing between the last “raised flute” 32 in one
group 34 and the first “raised flute” 32 in the next adjacent group 34.
While perhaps Appellants could have selected a more precise term
than “variably” to describe the different spacing distances between various
of the “raised flutes,” we find that a person of ordinary skill in the art
reading the claims consistent with the Specification would understand the
limitation in claims 12 and 17 that the flutes are spaced circumferentially
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“variably” about the thread engaging portion to mean that the spacing
between the flutes varies about the thread engaging portion. We construe
this limitation accordingly.
On the other hand, the Examiner’s second stated rationale for
rejecting the claims as indefinite, namely, that the language in paragraphs (c)
of claims 12 and 17 is ambiguous, does have merit. In particular, reference
to a distance spanned by points of contact, strictly speaking, does not make
sense, as a point of contact has no extension, and thus spans no distance. On
the other hand, as noted in our findings, in reality, Appellants’ flutes will
contact the threads at contact areas, not points, when the closure is pressed
onto the container. Accordingly, construction of the claims requires
speculation as to whether the claimed “total distance spanned by such points
of contact” is to be read as the total distance spanned between the points of
contact or as the total of the distances spanned by each of the contact areas.
The language in paragraphs (c) of claims 12 and 17 is thus ambiguous,
thereby rendering the claims indefinite. See Ex parte Miyazaki, 89 USPQ2d
1207, 1211 (BPAI 2008) (“if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.”).
Moreover, claim 17 does not define the flute spacing of the regularly
spaced flutes against which the aggregate spanned distance of Appellants’
claimed closure is compared. As noted in our findings above, the number of
contact points of “regularly” (equally) spaced raised flutes on the closure
gasket within each thread on the container finish will vary depending upon
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the circumferential distance between the flutes. Without defining the
spacing distance, one cannot ascertain the number of contact points, and thus
the distance spanned between such contact points. Accordingly, the artisan
would not be able to ascertain whether a particular closure and container
assembly has an aggregate spanned distance satisfying the limitations of
paragraph (c) of claim 17, namely, a distance that is less than it would be
were the flutes spaced regularly. Therefore, those skilled in the art would
not be able to ascertain the metes and bounds of what is claimed.
For the above reasons, the language in paragraphs (c) of claims 12 and
17 is ambiguous, thus rendering claims 12 and 17, and the claims depending
therefrom, indefinite.
The written description rejection
As explained above, we construe the limitation in claims 12 and 17
that the flutes are spaced circumferentially “variably” about the thread
engaging portion to mean that the spacing between the flutes varies about
the thread engaging portion. We found above that Appellants’ Specification,
as of the filing date of the present application, conveys, with reasonable
clarity, that the circumferential spacing between Appellants’ “raised flutes”
varies about the thread engaging portion between at least two values,
namely, the smaller spacing between “raised flutes” 32 within a group 34
and the greater spacing between the last “raised flute” in one group 34 and
the first “raised flute” 32 in the next adjacent group 34. Accordingly, the
limitation at issue is supported in Appellants’ Specification so as to satisfy
the written description requirement of 35 U.S.C. § 112, first paragraph.
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The obviousness rejections
As explained above, consistent with Appellants’ Specification, we
construe the limitation in claims 12 and 17 that the flutes are spaced
circumferentially “variably” about the thread engaging portion to mean that
the spacing between the flutes varies about the thread engaging portion. The
Examiner’s rejections under 35 U.S.C. § 103(a) are grounded in part on the
Examiner’s findings that Ascasibar-Verdejo, Mumford, and Owen each
teach variable spacing of the flutes that contact the threads on the container
finish. The Examiner’s findings with respect to these references appears to
stem from an interpretation of “spaced circumferentially variably” as having
“the ability to have the spacing or number of flutes adjusted” (Ans. 8), in the
sense of freedom to adjust design parameters. Such an interpretation
effectively ignores the limitation “variably,” and thus is improper. See
Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“claims
are interpreted with an eye toward giving effect to all terms in the claim”)
and Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir.
2007) (denouncing claim constructions which render phrases in claims
superfluous). As noted in our findings above, none of these references
provides any hint that the spacing of the flutes should be anything other than
uniform about the circumference of the gasket. Therefore, none of these
references can provide that which is lacking in Bayer, namely, a teaching to
vary the spacing between the flutes about the thread engaging portion, so as
to satisfy the limitation in claims 12 and 17 that the flutes are spaced
circumferentially “variably” about the thread engaging portion.
The Examiner does not rely on Luch to teach providing ribs, or
“raised flutes,” on a closure gasket at spacings which vary about the
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circumference of the gasket. Therefore, the Examiner’s application of the
additional teachings of Luch likewise does not remedy the deficiency in the
combination of Bayer with Ascasibar-Verdejo, Mumford, or Owen.

CONCLUSIONS
(1) The limitation in claims 12 and 17 that the flutes are spaced
circumferentially “variably” about the thread engaging portion does
not render claims 12 and 17, and the claims depending therefrom,
indefinite.
(2) The language in paragraphs (c) of claims 12 and 17 is ambiguous,
thus rendering claims 12 and 17, and the claims depending therefrom,
indefinite. Therefore, we sustain the rejection of claims 12, 14, 15,
and 17-20 under 35 U.S.C. § 112, second paragraph.
(3) Appellants’ Specification provides written description support for the
limitation in claims 12 and 17 that the flutes are spaced
circumferentially “variably” about the thread engaging portion. We
therefore do not sustain the rejection of claims 12, 14, 15, and 17-20
under 35 U.S.C. § 112, first paragraph.
(4) The Examiner erred in finding that Ascasibar-Verdejo, Mumford, and
Owen teach or suggest variable spacing of flutes, as called for in
claims 12 and 17. We therefore do not sustain the rejections of claims
12, 14, 15, and 17-20 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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