Ex Parte PriceDownload PDFPatent Trial and Appeal BoardJan 16, 201814147164 (P.T.A.B. Jan. 16, 2018) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/147,164 01/03/2014 Trevor Price 29958/09131 5739 27530 7590 01/18/2018 Nelson Mullins Riley & Scarborough LLP IP Department One Wells Fargo Center 301 South College Street, 23rd Floor Charlotte, NC 28202 EXAMINER COLLINS, RAVEN ART UNIT PAPER NUMBER 3788 NOTIFICATION DATE DELIVERY MODE 01/18/2018 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): ip@nelsonmullins.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TREVOR PRICE1 Appeal 2017-002410 Application 14/147,164 Technology Center 3700 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-6 under 35 U.S.C. § 103(a) as unpatentable over Kras (US 2007/0187352 Al, pub. Aug. 16, 2007), Rho (US 2011/0220651 Al, pub. Sept. 15, 2011), andDunwoody (US 2011/0011866 Al, pub. Jan. 20, 2011). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant is the Applicant, Sonoco Development, Inc., which, according to the Appeal Brief, is the real party in interest. Appeal Br. 1. Appeal 2017-002410 Application 14/147,164 THE CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, is reproduced below and is representative of the claimed subject matter on appeal. 1. A container assembly comprising: a container having an open top end, the top end defining a rim, the rim defining an upper sealing surface formed of a heat- sealable material, the top end further defining an external screw thread extending helically along an outer surface of the top end at a location spaced below the rim; a closure comprising a screw cap formed of plastic ring assembled with a separately formed disk inserted in the cap, the cap defining an internal screw thread extending helically along an inner surface of the cap and engageable with the external screw thread on the top end of the container for attaching the closure to the container when the closure is rotated in a first direction, the cap further comprising an inwardly projecting lip, the disk being constructed of a laminated metal having an upper metal layer and a lower heat-sealable layer affixed to an underside of the metal layer and further comprising a raised peripheral bead and a curl located radially outward from the raised peripheral bead, wherein the raised peripheral bead of the disk is located between the inwardly projecting lip and an outer surface of the cap; and a heat seal between the heat-sealable layer of the disk and the upper sealing surface of the rim, the heat seal affixing the disk to the rim such that the disk seals closed the open top end of the container without depending on a continuous compressive force on the disk by the cap. OPINION The Examiner finds that Kras teaches a container assembly having most of the limitations of independent claim 1, including, inter alia, “a closure comprising a screw cap 10 assembled with a separately formed disk 60 inserted in the cap.” Final Act. 3 (citing Kras ^ 49). The Examiner 2 Appeal 2017-002410 Application 14/147,164 acknowledges that Kras’s closure does not include a metal layer in the disk or a heat seal between the disk and container rim. Id. at 3. However, the Examiner finds: Rho teaches a closure comprising a disk 18 being constructed of a laminated metal layer having an upper metal layer 26 and a lower heat-sealable layer 28 affixed to the underside of the metal layer; [and a] heat seal between the heat-sealable layer of the disk and the upper sealing surface of the rim. Id. at 3—4 (citing Rho 43 44). The Examiner concludes that it would have been obvious “to modify Kras to include the metal layers of Rho in order to allow for easier adhesion.” Id. at 4. The Examiner also acknowledges that “Kras in view of Rho fail[s] to disclose a peripheral curl,” but finds that “Dunwoody teaches a raised peripheral bead and a curl 32 located radially outward from the raised peripheral bead (fig. la).” Id. The Examiner concludes that it would have been obvious “to modify Kras to include the curl of Dunwoody in order to allow for the seal to be easily lifted once the cap has been removed.” Id. Appellant argues “that there is no suggestion or motivation to combine the cited references as proposed by the Examiner” (Appeal Br. 3), and “the Examiner has not articulated a legitimate reason for combining the references” {id. at 5 (emphasis omitted)). In particular, Appellant asserts that the Examiner’s stated reasons for combining Kras with Rho and Dunwoody are conclusory and “have no relation to any recognized problem, deficiency, or purpose of the Kras reference.” Id. at 6. According to Appellant, “nothing in any of the cited references provides a reasonable basis or rationale for why or how one of ordinary skill in the art would modify the teaching of the Kras reference with the teachings of the Rho and Dunwoody references” as proposed by the Examiner. Id.; see also id. at 3 3 Appeal 2017-002410 Application 14/147,164 (asserting that Kras “does not teach or suggest permanent adherence of its liner/gasket”). We are not persuaded by Appellant’s argument in that it appears to insist on an explicit teaching, suggestion, or motivation in the cited references for the modifications proposed by the Examiner, whereas such an insistence has been foreclosed by the Supreme Court. KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 415, 419 (2007) (stating that a rigid insistence on teaching, suggestion, or motivation is incompatible with its precedent concerning obviousness). Rather, the Court requires that we look to whether the Examiner has provided “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). As discussed above, the Examiner articulates adequate reasoning based on rational underpinnings to explain why it would have been obvious to modify Kras’s container assembly to include Rho’s closure having a metal layer and heat seal, as well as Dunwoody’s peripheral curl. Final Act. 3—4; see also Ans. 6 (explaining that the proposed modification of Kras involves replacing one closure with another). The Examiner correctly notes, “[a]n express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious.” Final Act. 4 (citing In re Fout, 675 F.2d 297, 213 (CCPA 1982)). We agree with the Examiner that the proposed modification of Kras’s container assembly amounts to nothing more than the simple substitution of one closure (Rho’s closure with body 16, and sealing member 18 having metallic layer 26 and heated adhesive layer 28) for another (Kras’s closure cap 10 with end panel 20 and gasket 38), or the mere application of a known technique to a piece 4 Appeal 2017-002410 Application 14/147,164 of prior art ready for the improvement. See KSR, 550 U.S. at 417 (“if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Likewise, we are not persuaded that the Examiner’s proposed modification of Kras to include the peripheral curl of Dunwoody would yield anything other than a result that would have been predictable to one of ordinary skill in the art. See id. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Dunwoody specifically teaches pushing a retention feature upward against disc curl 32 to raise disc 30 of a closure from container 50. Dunwoody ^ 42. Appellant’s bald assertion that “the Examiner uses circular reasoning and/or conclusory statements” (Appeal Br. 5) does not does not persuasively refute the Examiner’s reasoning, and, thus, does not identify error in the rejection. Appellant also argues that modifying Kras to include a closure having a disk with a metal layer and a heat seal, as proposed by the Examiner, would render Kras unsatisfactory for its intended purpose and change its principle of operation. Appeal Br. 3, 5. In particular, Appellant asserts that Kras “explicitly requires a continuous compressive force to ‘seal’ the closure 10 to the container finish 27 via the liner/gasket 38, and to indicate that a proper ‘seal’ exists using a visual indicator notch 70.” Id. at 3 (citing Kras 68, 72). According to Appellant, Kras’s closure “would no longer require a continuous compressive force, and there would be no need for a visual indicator notch indicating that sufficient continuous compressive force exists.” Id. at 5. We are not persuaded by Appellant’s argument 5 Appeal 2017-002410 Application 14/147,164 because it too narrowly defines the principle of operation of Kras. The “principle of operation” referred to by Appellant relates to the “basic principles” under which the prior art device was designed to operate. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principles under which the [primary reference] construction was designed to operate.”) (emphasis added). Under Ratti, “a change in the basic principles” refers to change that is fundamental in scope so as to relate to scientific or technical principles under which the invention is designed to operate. Here, Appellant does not provide factual evidence or persuasive technical reasoning to explain how or why replacing the closure cap of Kras’s container with the closure cap of Rho, as proposed by the Examiner, would result in a “change in basic principles” of Kras’s container, or otherwise render it unsatisfactory for its intended purpose as a container for food or beverage. Kras ^ 2. See also Ans. 7 (“[T]he end result of each closure ultimately covers the container for maintaining the integrity of the product.”). Appellant additionally argues that the Examiner relies on impermissible hindsight reconstruction, using the Specification and claims as a blueprint to formulate the rejection. Appeal Br. 7; Reply Br. 3. In particular, Appellant asserts that the claimed invention advantageously provides a seal between the disk and container without relying on a continuous compressive force by the cap. Reply Br. 3 (citing Spec. ^ 25). According to Appellant, Kras, in contrast, “requires a compressive force, and there is nothing in that reference, or any other cited reference, that 6 Appeal 2017-002410 Application 14/147,164 teaches or suggests this advantage” of the claimed invention. Id. (emphasis omitted). Appellant’s argument is unconvincing in that it does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). In particular, with respect to the purported advantage of the claimed invention cited by Appellant (Reply Br. 3 (citing Spec. ^ 25)), Appellant does not point to any reasoning articulated by the Examiner that relies upon such knowledge. Further, we note that the reason to modify a reference may often prompt a person of ordinary skill in the art to do what the inventor has done, but for a different purpose or to solve a different problem; it is not necessary that the prior art suggest the modification to achieve the same advantage or result discovered by an applicant. See, e.g., In re Kahn, 441 F.3d at 987. For the foregoing reasons, Appellant does not apprise us of error in the Examiner’s conclusion that the subject matter of independent claim 1 would have been obvious. Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Kras, Rho, and Dunwoody. We also sustain the rejection of dependent claims 2-6, for which Appellant relies on the same arguments and reasoning we found unpersuasive in connection with the rejection of independent claim 1. Appeal Br. 8. DECISION The Examiner’s decision to reject claims 1-6 under 35 U.S.C. § 103(a) as unpatentable over Kras, Rho, and Dunwoody is affirmed. 7 Appeal 2017-002410 Application 14/147,164 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation