Ex Parte Mceldowney et al

Patent Trial and Appeal Board

Oct 12, 2016

12246087 (P.T.A.B. Oct. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/246,087 10/06/2008 Craig Allen Mceldowney
3705 7590 10/14/2016
ECKERT SEAMANS CHERIN & MELLOTT, LLC
600 GRANT STREET
44THFLOOR
PITTSBURGH, PA 15219
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.
291448-00435 5421
EXAMINER
DESAI, KAUSHIKKUMAR A
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
10/14/2016 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):
ipmail@eckertseamans.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG ALLEN MCELDOWNEY and
MARK RICHARD MITCHELL
Appeal2014-009034
Application 12/246,087
Technology Center 3700
Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Craig Allen McEldowney and Mark Richard Mitchell (Appellants)
appeal under 35 U.S.C. § 134 from the rejection of claims 1-3 and 13-18. 1
Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Claims 4--12, 19, and 20 are canceled. Appeal Br. 15, 16.
Appeal2014-009034
Application 12/246,087
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A tab structured to be affixed to a can end, the tab comprising:
a body comprising a bottom surface disposed in a plane,
and a top surface disposed opposite the bottom surface at a
preselected height, hi, with respect to the plane of the bottom
surface;
a nose portion located at a first end of the body of the tab;
a lift portion located at a second end of the body of the tab,
opposite the nose portion;
a rivet receiving portion located proximate to the nose
portion, the rivet receiving portion including a rivet hole; and
a flange located at the rearward edge of the lift portion, the
flange including an upper portion and an underside disposed
opposite the upper portion,
wherein the underside of the flange is disposed at a
preselected height, h2, with respect to the plane of the bottom
surface of the body of the tab,
wherein the preselected height, h2, forms a ratio, h2:h1,
with respect to the preselected height, h 1, which has a value of
between about 0.60 to about 0.95,
wherein the tab is made from metal, wherein the body of
the tab has an outer perimeter, the entire outer perimeter being
curled except for the flange,
wherein the flange comprises a single metal thickness
which is devoid of any curl,
wherein the lift portion of the tab includes a finger hole;
wherein the flange has an arcuate edge; and
wherein the arcuate edge of the flange is oriented
concavely with respect to the finger hole, and
wherein the upper portion of the flange comprises a top
surface, the top surface of the flange being coplanar with the top
surface of the body of the tab.
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Appeal2014-009034
Application 12/246,087
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Strobe
Hasegawa
Turner
McEldowney
Cho
us 3,977,561
us 4,276,993
us 6, 129,230
US 2007 /0039961 Al
WO 01/28875 Al
REJECTIONS
Aug.31, 1976
July7, 1981
Oct. 10, 2000
Feb.22,2007
Apr. 26, 2001
I. Claims 1-3, 13, and 14 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Turner and Strobe. 2
II. Claims 15-18 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Turner, Strobe, McEldowney, and Cho.
DISCUSSION
Rejection I
Appellants argue claims 1-3, 13, and 14 together. See Appeal Br. 13.
We select independent claim 1 as the representative claim, and claims 2, 3,
13, and 14 stand or fall with claim 1.
The Examiner finds Turner discloses all of the limitations of claim 1
except a "relative dimension of height ratio[] h2:h1" and "the entire outer
perimeter [of the tab] being curled except for the flange, and wherein the
flange comprises a single metal thickness which is devoid of any curl."
Final Act. 3, 4 (citations omitted). The Examiner notes that:
where the only difference between the prior art and the claims
was a recitation of relative dimensions (ratio of dimensions) of
2 Claims 4--12 are canceled. See Amendment filed January 27, 2014
(entered by the Examiner in the Advisory Act. Mailed February 5, 2014).
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Application 12/246,087
the claimed device and a device having the claimed relative
dimensions would not perform differently than the prior art
device, the claimed device was not patentably distinct from the
prior art device.
Id. at 3--4 (citing Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir.
1984). Then the Examiner determines that it would have been obvious "to
make the height ratio as claimed." Id. at 3.
The Examiner further finds that Strobe "teaches an equivalent tab
comprising the body of the tab has an outer perimeter, the entire outer
perimeter being curled [33a, 3:25-28, fig 1] except for the flange [34, fig 1],
and wherein the flange [34] comprises a single metal thickness which is
devoid of any curl [fig 3]." Id. at 4. Based on this finding, the Examiner
determines that it would have been obvious "to combine [the] teaching of
one known element in this case Turner's flange, with another, in this case
Strobe's flange a single metal thickness which devoid of any curl, to reduce
the complexity and cost of manufacturing." Id. (citing MPEP § 2143(A)).
In addition, the Examiner further notes that the "omission of an element and
its function is obvious if the function of the element is not desired." Id.
(citing MPEP § 2144.04 II A).
Appellants contend that "neither of the cited references disclose an
arcuate edge oriented concavely with respect to the finger hole." Appeal Br.
7 (emphasis omitted). In support of this contention, Appellants note that
"the edge of the flange 34 of Strobe and the edge of the flange of Turner are
oriented convexly (i.e., not concavely) with respect to the finger hole." Id.
Responding to this argument, the Examiner explains that by
"Appellants own [admission a] flange oriented convexly or concavely with
respect to the finger hole of the tab would work equally well to assist in end-
user activation and, in particular, access to and initial lifting of the tab."
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Appeal2014-009034
Application 12/246,087
Ans. 3. As evidence of Appellants' admission, the Examiner quotes portions
of the Specification. Id. Based on this admission, the Examiner determines
that it would have been obvious "to make the arcuate edge of the flange
oriented concavely with respect to the finger hole." Id.
Regarding the orientation of the arcuate shaped edge 66, the
Specification states:
The flange 62 has an arcuate shaped edge 66, which in the
example shown is oriented convexly with respect to the finger
hole 40 of the tab 10 (see also flange 162 and convex edge 166
thereof of tab 110 of Figure 9). However, it will be appreciated
that it could be oriented concavely (see, for example, flange 262
and concave edge 266 thereof of tab 210 of Figure 10).
Spec. i-f 38. Thus, the Examiner is correct that the Specification does not
consider a convex shape to be superior to a concave shape, but rather,
supports a determination that the orientation of the arcuate shape is not
critical. Accordingly, Appellants' argument is unconvincing. 3
Next, Appellants argue that "the Examiner has failed to articulate '(3)
a finding that one of ordinary skill in the art would have recognized that the
results of the combination were predictable.'" Appeal Br. 9. Although, the
Examiner does not explicitly find that "one of ordinary skill in the art would
have recognized that the results of the combination were predictable," as the
art in question is mechanical, and therefore, predictable in nature, this
finding is implicit in the Examiner's reasoning. See id. at 3--4. Moreover,
the Examiner's obviousness determination is not required to strictly adhere
to the examples provided in MPEP § 2143. Rather, as noted in Section
2143, "the list of rationales provided is not intended to be an all-inclusive
3 We note that Appellants did not file a Reply Brief in response to the
Examiner's further explanation of the reasons for the proposed modification.
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Appeal2014-009034
Application 12/246,087
list. Other rationales to support a conclusion of obviousness may be relied
upon by Office personnel." MPEP § 214 3 I. Thus, Appellants do not
apprise us of error.
In addition, Appellants argue that "the advantages of the instant
invention are disclosed as assisting in end-user activation of the tab, not
reducing complexity and cost of manufacture, neither of which is mentioned
in the instant application." Appeal Br. 9. However, it is not necessary for
the prior art to serve the same purpose as that disclosed in Appellants'
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. See KSR Int 'l Co. v. Teleflex, Inc., 550
U. S.398, 419 (2007)("In determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the [Appellants] controls."); see also In re Linter, 458 F.2d 1013, 1016
(CCPA 1972). Accordingly, Appellants' argument is unconvincing.
Next, Appellants argue that "the Examiner has improperly used
hindsight reconstruction in maintaining the final rejection" and "has
improperly used 'hindsight reconstruction to pick and choose among isolated
disclosures in the prior art to depreciate the claimed invention."' Appeal Br.
10, 11. However, Appellants do not identify any knowledge relied upon by
the Examiner that was gleaned only from Appellants' disclosure and that
was not otherwise within the level of ordinary skill at the tirne of the
invention. See Jn re McLaughlin, 443 F.2d 1392 (CCPA 1971). Rather,
Appellants complain that the Examiner indicated that subject matter was
allowable, then found a new reference and changed his mind. See Appeal
Br. 10. Appellants argue that the Examiner made a "tacit admission" that
the subject matter of canceled claim 20, the subject matter of which is now
incorporated in claim 1, was allowable. See id. However, an Examiner
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Application 12/246,087
cannot make an admission that subject matter is allowable. While it is
unfortunate that the Examiner found new prior art after contacting
Appellants requesting an amendment, such sequence of events does not
obviate the teachings of the new prior art. Furthermore, the Supreme Court,
in KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), has provided
guidance when addressing a concern about picking and choosing.
For over a half century, the Court has held that a "patent for a
combination which only unites old elements with no change in
their respective functions ... obviously withdraws what already is
known into the field of its monopoly and diminishes the
resources available to skillful men." Great Atlantic & Pacific Tea
Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152-153
(1950). This is a principal reason for declining to allow patents
for what is obvious. The combination of familiar elements
according to known methods is likely to be obvious when it does
no more than yield predictable results.
KSR 550 U.S. at 415-16. Appellants do not explain why Turner fails to
disclose "the upper portion of the flange comprises a top surface, the top
surface of the flange being coplanar with the top surface of the body of the
tab," as required by claim 1. Thus, Appellants do not apprise us of error.
Moreover, Appellants argument that Strobe fails to disclose a top surface of
the flange that is coplanar with the top surface of the body of the tab (Appeal
Br. 11) is not responsive to the rejection as articulated by the Examiner
which relies upon Turner to meet this limitation of claim 1. Appellants'
similar arguments (Appeal Br. 11-12) with respect to canceled claims 19
and 20 also do not apprise us of error.
For these reasons, we sustain the Examiner's decision rejecting claim
1, and claims 2, 3, 13, and 14, which fall therewith.
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Application 12/246,087
Rejection II
Claims 15-18 depend from claim 1. Appeal Br. 15-16. Appellants
argue that claims 15-18 distinguish over the prior art based on their
dependency from claim 1. Appellants do not apprise us of error in the
rejection of claim 1 for the reasons discussed supra. Accordingly, we
sustain the Examiner's decision rejecting claims 15-18.
DECISION
The Examiner's rejections of claims 1-3 and 13-18 are AFFIRMED.
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)(l )(iv).
AFFIRMED
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