Ex Parte Peronek et al

Board of Patent Appeals and Interferences

Jul 24, 2007

10680510 (B.P.A.I. Jul. 24, 2007)

The opinion in support of the decision being entered today is not binding precedent
of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte MICHAEL H. PERONEK and KEVIN SWEENY
___________

Appeal No. 2007-0020
Application No. 10/680,510
Technology Center 3700
___________

Decided: July 24, 2007
___________

Before TERRY J. OWENS and JENNIFER D. BAHR, and ANTON W.
FETTING, Administrative Patent Judges.
TERRY J. OWENS, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants appeal from a rejection of claims 28-42, 51-65, 74-76
and 79-84. Claims 43-50, 66-73, 77 and 78, which are all of the other pending
claims, stand withdrawn from consideration by the Examiner.

Appeal 2007-0020
Application 10/680,510
THE INVENTION
The Appellants claim a molded plastic container comprising an anti-rotation
neck flange having a plurality of substantially straight surfaces. Claim 28 is
illustrative:
28. A molded plastic container comprising an upper mouth-forming portion,
a lower base-forming portion and a substantially cylindrical sidewall portion
extending between said upper mouth-forming portion and said lower base portion,
said upper mouth-forming portion including a neck having at least one thread to
secure a cap to said upper mouth forming portion and a non-circular anti-rotation
flange to at least partially inhibit full rotation of said container as the cap is
inserted on said container, said non-circular anti-rotation flange including an outer
peripheral edge at least partially formed of a plurality of substantially straight
surfaces totaling an odd number, said straight surfaces symmetrically oriented
about said non-circular anti-rotation flange.

THE REFERENCES
Du Pree US Des. 192,942 May 29, 1962
Tuchii (as translated) JP 61-093093 May 12, 1985
Collette US 4,755,404 Jul. 5, 1988
Nagata (as translated) JP 06-247432 Sep. 6, 1994
Akiyama US 6,752,284 B1 Jun. 22, 2004

THE REJECTIONS
The claims stand rejected as follows: claims 28-42, 52, 59, 74-76 and 79-84
under 35 U.S.C. § 112, second paragraph; claims 28-42, 51-65, 74-76 and 79-84
under 35 U.S.C. § 103 over Collette in view of Du Pree, JP ‘432 or Akiyama;
claims 28-37, 42, 51-60, 65 and 74-76 under 35 U.S.C. § 103 over JP ‘093 in view
of Du Pree or JP ‘432; and claims 38-41, 61-64 and 82-84 under 35 U.S.C. § 103
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over JP ‘093 in view of Du Pree or JP ‘432, further in view of Collette or the
Appellants’ admitted prior art.1
OPINION
We reverse the rejection under 35 U.S.C. § 112, second paragraph, affirm
the rejections under 35 U.S.C. § 103 involving JP ‘432, and affirm the other
rejections under 35 U.S.C. § 103 as to some of the claims and reverse as to the
other claims.

Rejection under 35 U.S.C. § 112, second paragraph
The Examiner argues that an odd number of flange straight surfaces and
apexes cannot be symmetrically oriented, and that it is not clear about what line the
straight surfaces and apexes are symmetrical (Answer 4, 7-8).
“Symmetrical” means “having, involving, or exhibiting symmetry”, where
“symmetry” means “the property of being symmetrical; esp: correspondence in
size, shape, and relative position of parts on opposite sides of a dividing line or
median plane or about a center or axis”.2 As shown in the Appellants’ figures 6A,
6B, 8A and 8B, the Appellants’ flange having an odd number of straight surfaces
and apexes has an apex that is opposite to a straight surface. If a line is drawn
through that apex perpendicular to the opposite straight surface, the halves of the
opposite straight surface, the other straight surfaces, and the other apexes
corresponds in size, shape and relative position about the line. Due to that
correspondence, the straight surfaces and the apexes reasonably can be considered
“symmetrically oriented” as that term is used by the Appellants. Thus, the

1 Numerous other rejections are withdrawn in the Examiner’s Answer (Answer 3).
2 Webster’s New Collegiate Dictionary 1181 (G. & C. Merriam 1973).
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Examiner erred in rejecting the Appellants’ claims under 35 U.S.C. § 112, second
paragraph.
Rejection over Collette in view of Du Pree
Claims 28-35, 38-42, 74-76, 79 and 80
Collette discloses a molded polyester bottle having an upper mouth-forming
portion, a lower base-forming portion and a substantially cylindrical sidewall
portion (fig. 5) as required by the Appellants’ claims. Collette’s bottle has a neck
flange (figs. 2, 5) but the shape of that flange is not disclosed.
Du Pree discloses a decanter having a flange with ten straight sides and
apexes (figs. 1, 3).
The Appellants argue that because Du Pree does not disclose a neck having a
substantially circular cross-section or at least one thread, it is not apparent why one
of ordinary s kill in the art would have combined Du Pree with Collette (Br. 18).
Neck flanges are not mentioned in the “Background of the Invention” section of
the Appellants’ Specification. However, JP ‘093 (not applied in this rejection)
indicates (p. 2) that capping-load support neck flanges were conventional in the art
long before the Appellants’ filing date.3 It would have been readily apparent to
one of ordinary skill in the art that Du Pree’s neck flange shape on Collette’s bottle
would be effective for carrying out the desired gripping of the neck during
capping.
The Appellants argue that Du Pree does not disclose a flange having an odd
number of straight surfaces (Br. 19; Reply Br. 12-13). As pointed out by the
Examiner (Answer 5, 8-9), the Appellants’ claims require that the outer peripheral

3 Because the JP ‘093 capping-load support flange is non-circular (fig. 2-B), the
Appellants’ argument that “the examiner’s assertion that it is well known to use a
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Application 10/680,510
edge of the flange is at least partially formed of a plurality of substantially straight
surfaces totaling an odd number. The Appellants state that the Examiner’s point is
unclear (Reply Br. 13-14). Why the Examiner’s point would be considered unclear
is not apparent. Du Pree’s flange having ten straight surfaces (fig. 3) is partially
formed of any 3, 5, 7 or 9 of the straight surfaces, any of which totals an odd
number.
The Appellants argue that the Appellants’ figures 6A and 6B indicate that
“outer peripheral edge at least partially formed of a plurality of substantially
straight surfaces totaling an odd number” means that the outer peripheral edge is at
least partially formed of substantially straight surfaces, the total number of
substantially straight surfaces on the outer peripheral edge being an odd number,
and does not mean that the outer peripheral edge is at least partially formed of an
odd number of substantially straight surfaces (Reply Br. 10-11). Both of the
Appellants’ figures 6A and 6B support the interpretation of “outer peripheral edge
at least partially formed of a plurality of substantially straight surfaces totaling an
odd number” as meaning that at least a portion of the substantially straight surfaces
(any 3, 5 or 7 substantially straight surfaces in figures 6A and 6B) totals an odd
number.
We therefore are not convinced of reversible error in the Examiner’s
rejection of claims 28-35, 38-42, 74-76, 79, 80 over Collette in view of Du Pree.

Claims 36, 37 and 81-84
The Appellants argue that Du Pree does not disclose a flange outer perimeter
in the shape of a heptagon (Br. 20). The Examiner argues that it would have been

non-circular flange during the filling and capping process of the container is also
not supported by the art of record” (Reply Br. 8) is not well taken.
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obvious to one of ordinary skill in the art to use a flange having an outer perimeter
in the shape of a heptagon to provide the desired number of flange edges
(Answer 5-6). The Examiner, however, has not provided evidence or reasoning as
to why one of ordinary skill in the art would have desired a flange having seven
edges. Thus, the Examiner has not established a prima facie case of obviousness
over Collette and Du Pree of the inventions claimed in the Appellants’ claims 36,
37, and 81-84.

Claims 51-65
The Appellants argue regarding claims 51 and 52-65 that depend directly or
indirectly therefrom that Du Pree’s ten-sided flange does not have an apex
diametrically opposed from a center of at least one of the substantially straight
sides (Br. 19-21). The Examiner argues that a polygonal shape having an odd
number of straight sides inherently would have the corresponding number of
apexes (Answer 6). The Examiner, however, has not established that one of
ordinary skill in the art would have been led by Collette and Du Pree to use a
flange having an odd number of straight sides. The Examiner, therefore, has not
established a prima facie case of obviousness over Collette and Du Pree of the
inventions claimed in the Appellants’ claims 51-65.

Rejection over Collette in view of JP ‘432
Claims 28-35, 38-42, 74-76, 79 and 80
JP ‘432 discloses a molded plastic container having an upper mouth-forming
portion, a lower base-forming portion and sidewalls that can be cylindrical
(¶¶ 0009, 0026, fig. 1). The container has a neck flange that “is formed in
hexagonal shape, but this flange part can be formed in a square or even octagonal
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shape as long as it is in a shape with flat sides, it can be easily held by a machine in
a factory and thus pouring and filling developing liquids can be achieved easily at
a factory” (¶ 0021).
The Appellants argue that JP ‘432 does not disclose a flange having an odd
number of straight edges (Br. 23; Reply Br. 12-13). That argument is not
persuasive for the reason given above regarding the rejection over Collette in view
of Du Pree, i.e., any 3 or 5 edges of the flange in JP 432’s figure 1 total an odd
number. Moreover, JP ‘432 discloses that the flange can have shapes other than
orthogonal, such as square and octagonal, and that as long as the flange has flat
sides it can be easily held by a machine in a factory and thus pouring and filling
easily can be achieved (¶ 0021). Although each of the three shapes mentioned in
JP ‘432 has an even number of sides, the disclosure that the flange can have shapes
other than hexagonal as long as the shape has flat sides would have indicated to
one of ordinary skill in the art that the flange can have not only an even number of
sides but also the only other possibility, i.e., an odd number, provided that the sides
are flat. See KSR Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d
1385, 1397 (2007)(“When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a person
of ordinary skill has good reason to pursue the known options within his or her
technical grasp.”).
For the above reasons we are not convinced of reversible error in the
rejection of claims 28-35, 38-42, 74-76, 79 and 80 over Collette in view of JP ‘432.

Claims 36, 37, 59, 60 and 81-84
The Appellants argue that Collette and JP ‘432 do not disclose a flange
having an outer perimeter in the shape of a heptagon (Br. 24). JP ‘432 discloses a
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flange having one more side than a heptagon, i.e. an octagonal shaped flange
(¶ 0021). As discussed above, JP ‘432 would have rendered obvious, to one of
ordinary skill in the art, a flange having an odd number of sides. Accordingly,
JP ‘432 would have led one of ordinary skill in the art to use a flange having seven
sides instead of the eight disclosed in JP ‘423.
The Appellants argue that a flange such as those in the Appellants’
figures 8C-8E having straight sides does not necessarily have apexes (Reply Br. 7).
Flanges having the regular shape disclosed by JP ‘432, however, i.e., square,
hexagonal and octagonal (¶0021) have apexes.
We therefore are not convinced of reversible error in the rejection of
claims 36, 37, 59, 60 and 81-84 over Collette in view of JP ‘432.

Claims 51-58 and 61-65
The Appellants argue regarding claims 51 and 52-58 and 61-65 that depend
directly or indirectly therefrom that JP ‘432’s six-sided flange does not have an
apex diametrically opposed from a center of at least one of the substantially
straight sides (Br. 19-21). As discussed above, JP ‘432 would have rendered
obvious to one of ordinary skill in the art a flange having an odd number of straight
surfaces, i.e., heptagon, pentagon, etc. Such a flange necessarily would have an
apex diametrically opposed from a center of at least one substantially straight
surface.
We therefore are not convinced of reversible error in the rejection of
claims 51-58 and 61-65 over Collette in view of JP ‘432.

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Rejection over Collette in view of Akiyama
Akiyama discloses a molded plastic container having an upper mouth-
forming portion, lower base-forming portion and substantially cylindrical sidewall
portion (fig. 1) as required by the Appellants’ claims. The container has a neck
flange (holder ring 6) that may “be regularly hexagonal or octagonal like the holder
ring 6a shown in FIG. 33” (col. 15, ll. 9-12).

Claims 28-35, 38-42, 74-76, 79 and 80
The Appellants’ Brief does not include a discussion of the rejection over
Collette in view of Akiyama. In the Reply Brief the Appellants’ discuss together
the rejections over Collette in view of secondary references Akiyama, Du Pree or
JP ‘432.
The Appellants argue that none of Collette or the secondary references
indicates that a problem with bottle rotation exists (Reply Br. 9). As indicated by
JP ‘093 (p. 3), problems of bottle rotation and deformation or crushing during
capping were known in the art.
The Appellants argue that there would be no motivation to modify the
circular flange of Collette to prevent disengagement from a railing system during
bottling (Reply Br. 9). References need not be combined for the purpose of
solving the problem addressed by the Appellants. See In re Kemps, 97 F.3d 1427,
1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312,
24 USPQ2d 1040, 1042 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688, 693, 16
USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc), cert. denied, 500 U.S. 904 (1991).
As pointed out by the Appellants, “[t]he only problem with a circular flange is that
such a circular flange cannot be easily secured at the edge to inhibit or prevent
rotation of the bottle during the capping process” (Reply Br. 8-9). The reason for
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using a flange having straight sides on Collette’s bottle would have been to provide
the needed improved gripping of the flange during the capping process.
The Appellants argue that the secondary references disclose flanges having
an even number of sides, and the Appellants repeat their argument that a flange at
least partially formed of a plurality of straight surfaces totaling an odd number
cannot have an even number of straight surfaces (Reply Br. 9-11). Those
arguments are not persuasive for the reasons given above regarding the rejections
over Collette in view of Du Pree and JP ‘432.
We therefore are not convinced of reversible error in the rejection of
claims 28-35, 38-42, 74-76, 79 and 80 over Collette in view of Akiyama.

Claims 36, 37, 51-65 and 81-84
The Examiner’s arguments as to why Collette and Akiyama would have
rendered obvious to one of ordinary skill in the art a flange having a heptagonal
shape or an apex diametrically opposed from a center of a substantially straight
surface are the same as those set forth with respect to the rejection over Collette in
view of Du Pree (Answer 5-6) and are not persuasive for the reasons given above
regarding that rejection. Hence, the Examiner has not established a prima facie
case of obviousness over Collette in view of Akiyama of the inventions claimed in
the Appellants’ claims 36, 37, 51-65 and 81-84.

Rejections over JP ‘093 in view of Du Pree or JP ‘432
JP ‘093 discloses a molded plastic bottle with a capping-load support
flange (9) having notches (13) around part of its perimeter to prevent rotation of
the bottle during capping (p. 11; fig. 2-B).
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The Appellants’ arguments as to why it would not have been obvious to
1) substitute the flange shapes of Du Pree or JP ‘432 for that of JP ‘093, 2) use a
hexagonal shaped flange, or 3) use a flange having an apex diametrically opposed
from the center of a straight side are comparable to those discussed above with
respect to the rejections over Collette in view of Du Pree or JP ‘432 (Br. 26-35;
Reply Br. 12-15). We therefore incorporate regarding the rejections over JP ‘093
in view of Du Pree or JP ‘432 our reasoning and decisions set forth above with
respect to the rejections over Collette in view of Du Pree or JP ‘423.
Rejection over JP ‘093 in view of Du Pree or JP ‘432, further
in view of Collette or the Appellants’ admitted prior art

The Appellants do not provide a substantive argument as to the separate
patentability of dependent claims 38-41, 61-64 and 82-84 (Br. 35-36). Claims 38-
41 and 61-64 therefore, stand or fall with the claims from which they depend. The
claims from which claims 82-84 directly or indirectly depend, i.e., claims 74-76
and 79-81, are not rejected over JP ‘093 in view of Du Pree or JP ‘432, further in
view of Collette or the Appellants’ admitted prior art. The Appellants have not
separately addressed the rejection of claims 82-84 over JP ‘093 in view of Du Pree
or JP ‘432, further in view of Collette or the Appellants’ admitted prior art and,
therefore, have not convinced us of error in those rejections.4
DECISION
The rejection of claims 28-42, 52, 59, 74-76 and 79-84 under
35 U.S.C. § 112, second paragraph, is reversed. The rejections of claims 28-42,

4 Claim 74, from which claims 82-84 ultimately depend, is similar to independent
claim 28. As set forth above, the Appellants have not convinced us of reversible
error in the rejection of claim 28 over JP ‘093 in view of Du Pree or JP ‘432,
further in view of Collette or the Appellants’ admitted prior art.
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51-65, 74-76 and 79-84 under 35 U.S.C. § 103 over Collette in view of Du Pree or
Akiyama are affirmed as to claims 28-35, 38-42, 74-76, 79 and 80, and reversed as
to claims 36, 37, 51-65 and 81-84. The rejection of claims 28-42, 51-65, 74-76
and 79-84 under 35 U.S.C. § 103 over Collette in view JP ‘432 is affirmed. The
rejection of claims 28-37, 42, 51-60, 65 and 74-76 under 35 U.S.C. § 103 over
JP ‘093 in view of Du Pree is affirmed as to claims 28-35, 42 and 74-76, and
reversed as to claims 36, 37, 51-60 and 65. The rejection of claims 28-37, 42, 51-
60, 65 and 74-76 under 35 U.S.C. § 103 over JP ‘093 in view of JP ‘432 is
affirmed. The rejection of claims 38-41, 61-64 and 82-84 under 35 U.S.C. § 103
over JP ‘093 in view of Du Pree, further in view of Collette or the Appellants’
admitted prior art, is affirmed as to claims 38, 40 and 82-84, and reversed as to
claims 39, 41 and 61-64. The rejection of claims 38-41, 61-64 and 82-84 under
35 U.S.C. § 103 over JP ‘093 in view of JP ‘432, further in view of Collette or the
Appellants’ admitted prior art, is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED

JRG

ROBERT V. VICKERS
FAY, SHARPE, FAGAN, MINNICH & McKEE
Seventh Floor
1100 Superior Avenue
Cleveland, OH 44114-2579
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