Stolle Machinery Company, LLC

Patent Trials and Appeals Board

Jun 15, 2020

2019006877 (P.T.A.B. Jun. 15, 2020)

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.
15/399,795 01/06/2017 James Alan Sines 291448-01368 9954
3705 7590 06/15/2020
ECKERT SEAMANS CHERIN & MELLOTT LLC
U.S. Steel Tower
600 Grant Street, 44th Floor
Pittsburgh, PA 15219
EXAMINER
EKIERT, TERESA M
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
06/15/2020 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 JAMES ALAN SINES and
CHRISTOPHER MICHAEL HARMON
____________
Appeal 2019-006877
Application 15/399,795
Technology Center 3700
____________

Before JONI Y. CHANG, MICHAEL R. ZECHER, and
BARBARA A. BENOIT, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s Final Office Action rejecting claims 2–5, 7–10, 12–15, and 17–
20. Appeal Br. 1, 9–22. Claims 1, 6, 11, and 16 have been cancelled. Id. at
2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Stolle Machinery
Company, LLC. Appeal Br. 1.
Appeal 2019-006877
Application 15/399,795

2
CLAIMED SUBJECT MATTER
The disclosed invention generally relates to “a can bodymaker” and,
in particular, “to a can bodymaker having a redraw assembly including a
redraw sleeve with a shaped contour.” Spec. 1:5–7. Some examples of cans
include beverage cans, such as beer and soda cans, and food cans, such as a
soup can. Id. at 7:16–21.
A can bodymaker is used to convert a metal cup into a can body.
Spec. 1:10–14, 8:7–8. Specifically, a ram forces the cup through a redraw
sleeve assembly, such that the cup is elongated and resized to have a smaller
diameter, and the cup is formed into a can body by a die pack and redraw
die. Id. at 1:25–27, 8:26–29, 11:20, 17:6–7, 17:10–14.
The redraw assembly includes a redraw sleeve. Spec. 9:4, 17:5.
Before the can body is formed, the redraw sleeve is placed inside the cup to
clamp the bottom of the cup against the die pack and redraw die. Id. at
1:17–18, 1:23, 9:15–16, 11:17–20, 16:6–7, 17:6. According to the
Specification, providing a shaped contour to the redraw sleeve substantially
prevents wrinkles, tears, or other problems when forming thin metal. Id. at
2:1–14.
The Specification indicates that a “tapered contour” is a type of
shaped contour. Spec. 12:19. The Specification states: “[A]s used herein, a
tapered contour is either an ‘inwardly’ tapered contour, an ‘outwardly’
tapered contour, or a ‘variably’ tapered contour” and “a ‘variably’ tapered
contour . . . includes both inwardly and outwardly tapered portions.” Id. at
12:28–29, 13:4–5. Another type of shaped contour is an “offset contour.”
Id. at 12:24. Similar to the tapered contour, the offset contour may be
inwardly offset, outwardly offset, or variably offset. Id. at 13:14–15.
Appeal 2019-006877
Application 15/399,795

3
The Specification also describes a “tangent and congruent” contour.
Spec. 16:3–13. A redraw sleeve with a tangent and congruent contour has a
“transition surface” that substantially corresponds to the inner surface of the
cup at the time when an end of the sleeve body initially engages the cup. Id.
at 16:9–11. The transition surface is a curved surface that transitions
between the redraw sleeve’s axial surface (which is generally perpendicular
to the redraw sleeve’s body longitudinal axis) and radial surface (which is
generally parallel to the redraw sleeve’s body longitudinal axis). Id. at 7:10–
16, 11:14, 11:21–31; see also Fig. 3 (illustrating cup 2 and a redraw sleeve
with axial surface 100, transition surface 102, and radial surface 104).
Claims 2, 7, 8, 12, 17, and 18 are independent claims. Independent
claims 2, 7, and 8 are each directed to “[a] redraw sleeve for a redraw
assembly in a can bodymaker.” Appeal Br. 23–24 (Claim Appendix).
Independent claims 12, 17, and 18 are each directed to “[a] bodymaker”
comprising a redraw assembly including a redraw sleeve. Id. at 25–27.
Claims 3–5 directly or indirectly depend from independent claim 2, claims 9
and 10 directly or indirectly depend from independent claim 8, claims 13–15
directly or indirectly depend from independent claim 12, and claims 19 and
20 directly or indirectly depend from independent claim 18. Id. at 23–28.
Independent claim 2, reproduced below, is illustrative of a redraw
sleeve having an axial surface that is inwardly tapered.
2. A redraw sleeve for a redraw assembly in a can
bodymaker, said bodymaker including a die pack, said die pack
including a redraw die, said die pack and said redraw die
including a longitudinal axis, said redraw sleeve comprising:
a body including a second end; said body second end
includes an axial surface; and
Appeal 2019-006877
Application 15/399,795

4
wherein said second end axial surface is an inwardly
tapered second end axial surface.
Appeal Br. 23 (emphasis added). Independent claim 7, reproduced below, is
illustrative of a redraw sleeve having a radial surface that is inwardly offset.
7. A redraw sleeve for a redraw assembly in a can
bodymaker, said bodymaker including a die pack, said die pack
including a redraw die, said die pack and said redraw die
including a longitudinal axis, said redraw sleeve comprising:
a body including a second end;
said second end includes a radial surface;
wherein said second end radial surface is an inwardly
offset second end radial surface;
said second end radial surface includes a radial perimeter
portion and an offset portion; and
wherein said second end offset portion is inwardly offset
relative to the second end radial surface radial perimeter portion
by a distance of between about 0.002 inch and 0.003 inch.
Id. at 23–24 (emphases added). Independent claim 8, reproduced below, is
illustrative of a redraw sleeve with a transition surface that has a tangent and
congruent contour.
8. A redraw sleeve for a redraw assembly in a can
bodymaker, said bodymaker including a die pack, said die pack
including a redraw die, said die pack and said redraw die
including a longitudinal axis, said redraw sleeve comprising:
a body including a second end;
said second end includes an axial surface, a transition
portion, and a radial surface; and
wherein said second end transition portion has a tangent
and congruent contour.
Id. at 24 (emphasis added).
Appeal 2019-006877
Application 15/399,795

5
REFERENCES
The prior art relied upon by the Examiner is set forth in the table
below.
Name2 Reference Date
Saunders US 5,343,729 Issued Sept. 6, 1994
Snyder US 5,946,964 Issued Sept. 7, 1999
Haulsee US 2015/0068268 A1 Published Mar. 12, 2015

REJECTIONS
The Examiner’s rejections in the Final Office Action on appeal are set
forth in the table below.
Claims Rejected 35 U.S.C. §3 Reference(s)
2, 3, 8 102(a)(1) Snyder
4, 5, 7 103 Snyder
9, 10 103 Snyder, Saunders
12–15, 17, 18 103 Snyder, Haulsee
19, 20 103 Snyder, Haulsee, Saunders

EXAMINER’S FINDINGS AND CONCLUSIONS
1. The Examiner finds that Snyder discloses the limitation of
independent claims 2 and 12 reciting that the “second [end] axial surface is
an inwardly tapered second end axial surface.” Final Act. 4–5, 9 (finding

2 For clarity and ease of reference, we only list the first named inventor.
3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
application at issue contains claims having an effective filing date after
March 16, 2013, which is the effective date of the applicable AIA
amendments, we refer to the post-AIA version of 35 U.S.C. §§ 102 and 103.
Appeal 2019-006877
Application 15/399,795

6
that, in Figure 5 of Snyder, “there are numerous portions of (18) that taper
inwardly from (42) to (40)”).
2. The Examiner finds that Snyder also discloses the limitation of
independent claims 8 and 18 reciting that the “second end transition portion
has a tangent and congruent contour.” Final Act. 5, 10 (citing Snyder Fig. 5,
item R3).
3. For independent claims 7 and 17, the Examiner finds that
Snyder discloses a second end radial surface having an inwardly offset
portion. Final Act. 6, 11 (“Snyder discloses said second end radial surface
(16) includes a radial perimeter portion (Figure 5, portion of 16 above 34)
and an offset portion (16 inwardly offsets at 34, Figures 2, 4, 5).”). The
Examiner finds that Snyder does not disclose explicitly an inwardly offset
distance of between about 0.002–0.003 inches. Id. The Examiner, however,
concludes that, when taking into account the teachings of Snyder, it would
have been obvious to a person of ordinary skill in the art to obtain the
claimed distance of between about 0.002–0.003 inches. Id. at 6–7, 11 (citing
In re Aller, 220 F.2d 454 (CCPA 1955)).

APPELLANT’S CONTENTIONS
1. Appellant asserts that Snyder does not disclose that the “second
[end] axial surface is an inwardly tapered second end axial surface,” as
recited in each of independent claims 2 and 12. Appeal Br. 10–16, 21.
Appellant argues that the Examiner interprets this limitation in an overly
broad manner because the claim recites that the “second [end] axial surface
is an inwardly tapered second end axial surface”—not that a “portion” or
some other section or fragment is inwardly tapered. Id. at 10–12. Appellant
Appeal 2019-006877
Application 15/399,795

7
explains that the Examiner improperly relies on Figure 5 of Snyder because
the axial surface only includes “numerous portions . . . that taper inwardly.”
Id. at 12–13, 15 (boldface omitted; italics added) (quoting Final Act. 5).
Appellant indicates that the Specification defines a tapered contour as
either “inwardly,” “outwardly,” or “variably” tapered. Appeal Br. 12–13, 15
(citing Spec. 12:28–13:6). Specifically, “an ‘inwardly’ tapered contour . . .
is tapered toward the redraw sleeve body first end,” whereas “a ‘variably’
tapered contour . . . includes both inwardly and outwardly tapered portions.”
Id. at 9, 11–12, 15 (quoting Spec. 12:29–31, 13:4–5). In accordance with the
Specification, Appellant asserts that Snyder discloses an axial surface that is
variably tapered, not inwardly tapered. Id. at 12, 15. Appellant argues that
the Examiner’s interpretation of Snyder to disclose an inwardly-tapered axial
surface is contrary to the explicit definitions set forth in the Specification.
Id. at 10, 13, 15–16.
2. As for independent claims 8 and 18, Appellant argues that
Snyder does not disclose that the redraw sleeve includes a transition portion
having “a tangent and congruent contour.” Appeal Br. 16–19, 21. Appellant
explains that the Specification defines a “tangent and congruent” contour as
“a transition surface contour that substantially corresponds to the inner
surface of a cup at the time when the sleeve body second end initially
engages the cup.” Id. at 16 (quoting Spec. 16:9–11). Also, the Specification
states that “‘corresponding’ surfaces . . . have generally the same size, shape,
and contours” and “‘substantially’ means ‘for the most part.’” Id. at 16–17
(quoting Spec. 5:21–22, 8:3).
Appellant points to Snyder’s disclosure that “[t]he diameter of the end
wall 22 of the cup is slightly larger than the diameter of the end 18 of the
Appeal 2019-006877
Application 15/399,795

8
redraw sleeve.” Appeal Br. 17 (alteration in original) (quoting Snyder 4:20–
22). According to Appellant, if the diameter of the end wall of the cup is
slightly larger than the diameter of the end of the redraw sleeve, then the two
surfaces cannot substantially correspond to each other when considering
how the term substantially is defined in the Specification. Id. at 17–18.
Appellant also argues that the Examiner improperly relies on Figure 5 of
Snyder because this figure does not show how a cup interacts with the
redraw sleeve and, therefore, does not show all the claimed structural
features and how they are put together in the manner required by
independent claims 8 and 18. Id. at 18–19.
3. Regarding independent claims 7 and 17, Appellant disagrees
with the Examiner’s finding that, when taking into account the teachings of
Snyder, it would have been obvious to a person of ordinary skill in the art to
obtain the claimed offset distance of between about 0.002–0.003 inches. See
Appeal Br. 19, 21. Appellant argues that the recited shaped contour is not
merely an optimum range because the Specification identifies stated
problems and the configuration of the shaped contour required by
independent claims 7 and 17 solves those problems. Id. at 19–20 (citing In
re Dailey, 357 F.2d 669 (CCPA 1966) and Ex parte Moore, Appeal No. 96-
2852, 1996 WL 1796237 (BPAI Sept. 16, 1997)).

ISSUES
1. Has the Examiner presented sufficient evidence to support a
finding that Snyder discloses an axial surface that is inwardly tapered, as
required by each of independent claims 2 and 12?
Appeal 2019-006877
Application 15/399,795

9
2. Has the Examiner presented sufficient evidence to support a
finding that Snyder discloses a redraw sleeve that has a transition portion
with a tangent and congruent contour, as required by each of independent
claims 8 and 18?
3. Has the Examiner presented sufficient evidence to support a
finding that, when taking into account the teachings of Snyder, it would have
been obvious to a person of ordinary skill in the art to obtain a radial surface
that is inwardly offset by a distance of between about 0.002–0.003 inches, as
required by each of independent claims 7 and 17?

ANALYSIS
Issue 1: Inwardly-Tapered Axial Surface
Claim 2
Based on the record before us, we discern error in the Examiner’s
anticipation rejection of independent claim 2, which requires a redraw sleeve
to include an axial surface that is inwardly tapered.
There is no dispute between the Examiner and Appellant that Snyder
discloses a redraw sleeve having a variably-tapered axial surface. Compare
Appeal Br. 12 (“Snyder discloses a redraw sleeve body with a variably
tapered second end axial surface.”), with Ans. 14 (“The examiner recognizes
that Snyder has both inwardly and outwardly tapered surfaces and [is]
therefore a variably tapered surface.”). Rather, the Examiner and Appellant
disagree as to whether the claimed axial surface can include portions that are
both inwardly-tapered and variably-tapered.
According to the Examiner, the Specification does not exclude or
limit the surface to a single type. Ans. 14 (citing Spec. 12:28–13:6). The
Appeal 2019-006877
Application 15/399,795

10
Examiner also contends that “[t]he claim is constructed with an open-ended
transitional phrase[,] i.e. ‘comprising;’ therefore, additional elements not
claimed are allowed to be present in the reference.” Id. In our view,
however, both the language of independent claim 2 and the Specification
support Appellant’s position that the inwardly-tapered axial surface recited
in independent claim 2 does, in fact, exclude a variably-tapered surface.
First, the plain language that the “second [end] axial surface is an
inwardly tapered second end axial surface” is not open-ended. For example,
this limitation does not state that the axial surface comprises or includes an
inwardly-tapered axial surface or that portions of an axial surface taper
inwardly.
Second, we agree with Appellant that the Specification establishes
that a variably-tapered surface is not an inwardly-tapered surface. Although
the Specification does not state explicitly that an inwardly-tapered surface
cannot also be a variably-tapered surface, the Specification nevertheless
establishes with reasonable clarity, deliberateness, and precision that three
categories of tapers are mutually exclusive. Spec. 12:28–13:6. If a taper is
present, there are only three possibilities for contouring the taper—inward,
outward, or a combination of inward and outward. Because the
Specification lists only three possibilities and distinguishes them using
separate and distinct terminology (i.e., inward, outward, and variable), it is
reasonably clear that each type of tapered contour is mutually exclusive of
the other types of tapered contours. Accordingly, Snyder’s variably-tapered
surface is not an inwardly-tapered surface, as claimed.
Furthermore, when the Specification allows for a combination of
different tapered contours, it makes this explicit. See Spec. 13:24–31 (“The
Appeal 2019-006877
Application 15/399,795

11
redraw sleeve body second end 80 has, in one exemplary embodiment, a
tapered contour including an inwardly tapered contour, an outwardly tapered
contour, a variably tapered contour, or a combination of such contours. . . .
In an alternative embodiment, the redraw sleeve body second end 80 has a
combination of a tapered contour, including an inwardly tapered contour, an
outwardly tapered contour, a variably tapered contour, or a combination of
such contours.” (emphases added)). Independent claim 2, on the other hand,
does not contain language permitting a combination of tapered contours.
As for the Examiner’s position that the transitional phrase comprising
is open-ended, this “standard transition term [is] used to make clear that the
claim does not preclude the presence of components or steps that are in
addition to, though not inconsistent with, those recited in the limitations that
follow.” Amgen Inc. v. Amneal Pharm. LLC, 945 F.3d 1368, 1379 (Fed. Cir.
2020) (emphasis added). Here, the Examiner’s interpretation that
independent claim 2 allows for an axial surface to include portions that are
both inwardly tapered and variably tapered is inconsistent with the limitation
requiring that the “second [end] axial surface is an inwardly tapered second
end axial surface” when the term “inwardly tapered” is considered in the
context of the Specification. Therefore, the Examiner has erred in
determining that Snyder renders the subject matter of independent claim 2
unpatentable.
Claims 3–5
By virtue of their dependency, claims 3–5 include the same
limitations as independent claim 2. Appeal Br. 23. In rejecting each of
these claims, the Examiner relies on the same finding with respect to
independent claim 2 that Snyder discloses an inwardly-tapered axial surface.
Appeal 2019-006877
Application 15/399,795

12
See Final Act. 4–6. Therefore, for the same reasons set forth above in our
discussion of independent claim 2, the Examiner has erred in determining
that Snyder renders the subject matter of dependent claims 3–5 unpatentable.
Claims 12–15
Like independent claim 2, independent claim 12 recites a limitation
describing a redraw sleeve as having a “second end axial surface [that] is an
inwardly tapered second end axial surface.” Appeal Br. 25. By virtue of
their dependency, claims 13–15 include the same limitation. Id. at 26. As
applied by the Examiner, Haulsee does not remedy the deficiency in Snyder
identified above. See Final Act. 9–11. Therefore, for the same reasons
discussed above with respect to independent claim 2, the Examiner has erred
in determining that the combined teachings of Snyder and Haulsee render
the subject matter of independent claim 12 and dependent claims 13–15
unpatentable.
Issue 2: Tangent and Congruent Transition Portion
Claim 8
Based on the record before us, we discern no error in the Examiner’s
anticipation rejection of independent claim 8, which requires a redraw sleeve
to include a transition portion that has a tangent and congruent contour.
There is no dispute that the Specification defines a “tangent and
congruent” contour as “a transition surface contour that substantially
corresponds to the inner surface of a cup at the time when the sleeve body
second end initially engages the cup.” See Appeal Br. 16 (quoting Spec.
16:9–11); Ans. 14–15. Appellant, however, argues that Snyder does not
disclose a redraw sleeve that has “a transition surface contour that
substantially corresponds to the inner surface of a cup.” Appeal Br. 16–17.
Appeal 2019-006877
Application 15/399,795

13
Specifically, Appellant relies on Snyder’s disclosure that “[t]he diameter of
the end wall 22 of the cup is slightly larger than the diameter of the end 18
of the redraw sleeve.” Id. at 17 (quoting Snyder 4:20–22). We, however,
agree with the Examiner that Snyder’s disclosure that the diameter of the
end wall of the cup is “slightly larger” than the sleeve is sufficient to meet
the claim requirement that the transition surface contour substantially
corresponds to the inner surface of the cup. See Ans. 15. On this record, we
view the distinction between the terminology of Snyder and the
Specification (i.e., the distinction between “slightly larger” and
“substantially corresponds”) to be a distinction without a material difference.
Appellant further relies on the definitions of the terms correspond and
substantially, which are used in the definition of a tangent and congruent
contour. Appeal Br. 16–17; Reply Br. 6–7. Specifically, the Specification
defines correspond to mean that “[w]ith regard to surfaces, shapes, and
lines, two, or more, ‘corresponding’ surfaces, shapes, or lines have generally
the same size, shape, and contours.” Appeal Br. 16 (quoting Spec. 5:20–22).
Meanwhile, the Specification defines substantially as “for the most part.”
Id. at 17 (quoting Spec. 8:3–4). Importantly, however, neither of these
explicit definitions require the cup to have the exact same shape as the
redraw sleeve. Appellant points out that the definition of the term
correspond uses the words “same size [and] shape” (Reply Br. 6–7)
(emphasis omitted), but this argument overlooks that the explicit definition
only requires “generally the same size, shape, and contours,” not the exact
same size, shape, and contours. Id. at 7 (emphasis added).
Appellant also argues that the Examiner improperly relies on Figure 5
of Snyder because this figure does not show a cup that interacts with the
Appeal 2019-006877
Application 15/399,795

14
redraw sleeve and, therefore, the figure does not show “all the claimed
structural features and how they are put together.” Appeal Br. 18–19
(quoting Manual of Patent Examining Procedure § 2125 (9th ed. rev.
08.2017 Jan. 2018)). A cup, however, is not a claimed structural feature.
Appellant admits this point. See id. at 17 (“Appellants agree that a ‘cup’ is
not positively recited.”). Moreover, although Figure 5 of Snyder does not
illustrate a cup, Snyder’s teaching that “[t]he diameter of the end wall 22 of
the cup is slightly larger than the diameter of the end 18 of the redraw
sleeve” (Snyder 4:19–20), shows that the end of the redraw sleeve
substantially corresponds to the size and shape of the cup. Accordingly, we
sustain the Examiner’s obviousness rejection of independent claim 8.
Claims 9 and 10
Claims 9 and 10 depend from independent claim 8. Appeal Br. 24–
25. Appellant does not present separate arguments regarding dependent
claims 9 and 10. See id. at 21. Accordingly, we sustain the Examiner’s
obviousness rejection of dependent claims 9 and 10.
Claims 18, 19, and 20
Like independent claim 8, independent claim 18 recites a limitation
describing a redraw sleeve as having a “second end transition portion [that]
has a tangent and congruent contour.” Appeal Br. 27. Appellant relies on
the same arguments presented with respect to independent claim 8 in arguing
that Snyder does not disclose this limitation of independent claim 18. Id. at
21. Claims 19 and 20 depend from independent claim 18 (id. at 28), but
Appellant does not present separate arguments regarding these dependent
claims (see id. at 21). Accordingly, we sustain the Examiner’s obviousness
rejections of independent claim 18 and dependent claims 19 and 20.
Appeal 2019-006877
Application 15/399,795

15
Issue 3: Inwardly-Offset Radial Surface
Claim 7
Based on the record before us, we discern no error in the Examiner’s
obviousness rejection of independent claim 7, which requires a redraw
sleeve to include a radial surface that is inwardly offset by a distance of
between about 0.002–0.003 inches.
We are not persuaded by Appellant’s argument that the claimed
contours are not merely optimum ranges because they solve the problems
identified in the Specification. Appeal Br. 19–20. The case that Appellant
relies on, In re Dailey, rejected the “appellants’ position that the prior art
recognizes neither the problem nor result desired and cannot be said to
suggest a solution to the problem.” 357 F.2d at 672. Similarly here, Snyder
recognizes the same problem as Appellant. Compare Snyder 1:11–13 (“The
redraw sleeve has several novel features that help prevent wrinkles from
forming in the bottom profile of the can . . . .”), with Spec. 2:1–2 (“Thin
metal, however, tends to wrinkle and/or tear when acted upon by a redraw
sleeve.”). Snyder also proposes the same solution, in part, by providing an
inwardly offset radial surface. See Final Act. 6 (citing Snyder Figs. 2, 4, 5).
The only difference between the limitations of independent claim 7
and Snyder is that independent claim 7 recites that the offset is “a distance of
between about 0.002 inch and 0.003 inch.” Accordingly, the relevant issue
is whether this claimed distance would have been obvious to a person of
ordinary skill in the art in light of the teachings of Snyder.
Under In re Aller, “where the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” 220 F.2d at 456. The
Appeal 2019-006877
Application 15/399,795

16
Examiner applies this standard in the Final Office Action on appeal (Final
Act. 6–7), and Appellant does not contest specifically the Examiner’s
finding that, as an initial matter, Snyder discloses the general conditions of
independent claim 7 (see Appeal Br. 19–20).
Appellant, therefore, has the burden of demonstrating, for example,
that the claimed distance range is critical. See, e.g., Aller, 220 F.2d at 456.
We, however, agree with the Examiner that Appellant has not provided
sufficient evidence to show that the claimed distance range of between about
0.002 and 0.003 inches is critical. See Ans. 16. Appellant merely relies on a
sentence in the Specification stating: “The configurations of the shaped
contour as described above solves a number of the problems identified
above.” Appeal Br. 19–20 (emphases omitted) (quoting Spec. 17:3–4);
Reply Br. 7–8 (emphasis omitted) (quoting Spec. 17:3–4). Appellant
suggests that the claimed distance range of between about 0.002 and 0.003
inches is included within “[t]he configurations of the shaped contour as
described above.” Appeal Br. 20 (emphasis omitted); Reply Br. 7–8. This
phrase, however, is a broad, general statement that covers all of the
configurations set forth in the Specification. This statement, by itself,
imparts no specific significance to the claimed distance range, and is not
enough to conclude that it is the radial surface inward offset distance of
about 0.002–0.003 inches, in particular, that solves the problems identified
in the Specification. Furthermore, Appellant does not allege that the claimed
distance range provides unexpected results or a substantial improvement
over the teachings of Snyder. Accordingly, we sustain the Examiner’s
obviousness rejection of independent claim 7.
Appeal 2019-006877
Application 15/399,795

17
Claim 17
Like independent claim 7, independent claim 17 recites a limitation
describing a redraw sleeve as having a “second end radial surface [that] is an
inwardly offset second end radial surface . . . by a distance of between about
0.002 inch and 0.003 inch.” Appeal Br. 27. Appellant relies on the same
arguments presented with respect to independent claim 7 in arguing that
Snyder does not disclose this limitation of independent claim 17. Id. at 21.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 17.
CONCLUSION
For the foregoing reasons, the Examiner has erred in rejecting claims
2–5 and 12–15 as unpatentable. We, therefore, reverse the Examiner’s
decision to reject claims 2–5 and 12–15. We, however, are not persuaded
that the Examiner erred in rejecting claims 7–10 and 17–20. Accordingly,
we affirm the Examiner’s decision to reject claims 7–10 and 17–20.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
2, 3, 8 102 Snyder 8 2, 3
4, 5, 7 103 Snyder 7 4, 5
9, 10 103 Snyder, Saunders 9, 10
12–15, 17,
18
103 Snyder, Haulsee 17, 18 12–15
19, 20 103 Snyder, Haulsee,
Saunders
19, 20
Appeal 2019-006877
Application 15/399,795

18
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
Overall
Outcome
7–10,
17–20
2–5, 12–15
TIME PERIOD FOR RESPONSE
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).
AFFIRMED IN PART