Ex Parte Armstrong et al

Patent Trial and Appeal Board

Mar 7, 2018

13251830 (P.T.A.B. Mar. 7, 2018)

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.
13/251,830 10/03/2011 RALPH ARMSTRONG 082116.0451 1001
114699 7590
Baker Botts LLP
30 Rockefeller Plaza
New York, NY 10112-4498
03/09/2018 EXAMINER
JACYNA, J CASIMER
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
03/09/2018 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):
DLNYDOCKET@BAKERBOTTS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALPH ARMSTRONG, THOMAS E. NAHILL,
KEITH J. BARKER, and BRIAN A. LYNCH
Appeal 2017-003704
Application 13/251,830
Technology Center 3700
Before JENNIFER D. BAHR, SEAN P. O’HANLON, and
ANTHONY KNIGHT, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ralph Armstrong et al. (Appellants)1 appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—6, 8—10, 12—14, 16, 17, 26,
and 29-36. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appeal Brief identifies Graham Packaging Company L.P. as the real
party in interest. Appeal Br. 2.
Appeal 2017-003704
Application 13/251,830
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A plastic aerosol container assembly, comprising:
a plastic container having a main body portion defining
an interior space and a finish portion defining an opening, the
finish portion having an inner surface that has an
undercut defined therein, wherein the undercut has a
substantially horizontal orientation and the undercut transitions
to a vertical section of the inner surface of the finish portion;
and
an aerosol valve assembly mounted to the plastic
container, the aerosol valve assembly having a portion that
engages the inner surface of the finish portion at least to the
vertical section of the inner surface so as to be retained by the
undercut.
REJECTIONS
I. Claims 1, 2, 5, 6, and 8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Gaudron (US 2010/0288796 Al, pub. Nov. 18,
2010).
II. Claims 1—3, 5, 6, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gaudron and David (US 2012/0103330 Al, pub.
May 3, 2012).
III. Claims 1—6, 8—10, 12—14, 16, 17, 26, and 29-36 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Gaudron and Hirata
(US 4,818,575, iss. Apr. 4, 1989).
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Application 13/251,830
DISCUSSION
Rejection I—Anticipation by Gaudron
The Examiner finds that Gaudron discloses a plastic aerosol container
assembly satisfying all the limitations of claim 1, including, in pertinent part,
a plastic container (canister 12) having a main body portion and a finish
portion (at the top of canister 12 in Figure 2) having an inner surface that has
an undercut defined therein (the curved portion immediately adjacent the
open top). Ans. 2; Final Act. 2. In particular, the Examiner finds that
Gaudron’s canister 12 is cross-hatched with the cross-hatchings for plastic,
as set forth in Manual of Patent Examining Procedure (MPEP) § 608.02 IX,
thereby indicating that canister 12 is made of plastic. Ans. 2; Final Act. 2.
Appellants contest both the Examiner’s finding that Gaudron discloses
canister 12 is made of plastic and the finding that the curved portion of
canister 12 immediately adjacent the open top is an “undercut” as claimed.
Appeal Br. 9—12.
Turning first to the finding that canister 12 is plastic, Appellants point
out that valve stem adapter 38, which Gaudron expressly specifies is formed
from a plastic material (Gaudron 113), is cross-hatched with forward-slash
cross hatching, consistent with that shown in MPEP § 608.02 IX for plastic.
Appeal Br. 10; Reply Br. 3. By contrast, Appellants continue, Gaudron’s
canister has backward-slash cross hatching, which is different from the
forward-slash cross-hatching shown in the chart in MPEP § 608.02 IX for
plastic, as well as different from the cross-hatching of plastic valve stem
adapter 38. Appeal Br. 10; Reply Br. 3^4. Citing In re Mihalich, 980 F.2d
744, 25 USPQ2d 1478 (Fed. Cir. 1992), Appellants contend that “the
direction in which cross-hatching lines extend without any indication or
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Application 13/251,830
suggestion otherwise is significant.” Appeal Br. 11. Further, Appellants
urge that, while 37 C.F.R. § 1.84(h)(3) provides for cross-hatching of
juxtaposed different elements to be angled in a different way, Gaudron’s
outer canister 12 does not juxtapose plastic stem adapter 38, “and, thus, there
is no need to reverse the cross-hatchings to indicate that the outer canister 12
is plastic.” Id. According to Appellants, “if Gaudron intended the outer
canister 12 to be interpreted as the same material as plastic stem adapter 38,
Gaudron should have disclosed as such and the cross-hatching of outer
canister 12 should have been the same as the cross-hatching of plastic stem
adapter 38, and not reversed.” Id.
For essentially the reasons set forth by the Examiner on page 13 of the
Answer, Appellants fail to apprise us of error in the Examiner’s finding that
Gaudron discloses canister 12 is plastic. Appellants’ reliance on In re
Mihalich is misplaced. Gaudron does not present the types of
inconsistencies between drawings, such as Figures 3 and 4 of the Kappos
patent, and between the drawing and the specification of the Kappos patent
highlighted by the court in In re Mihalich. See In re Mihalich, 25 USPQ2d
at 1479. The difference between forward and rearward slanting lines in
cross-hatching is not analogous to the difference between horizontal cross­
hatchings and vertical cross-hatchings. Both the cross-hatching shown in the
chart in MPEP § 608.02 IX and for plastic valve stem adapter 38 and the
cross-hatching of canister 12 denote plastic material, despite the difference
in the direction of angling. Appellants do not point to, nor are we aware of,
any authority requiring that non-juxtaposed elements of like materials be
cross-hatched in the same direction. In sum, the Examiner’s finding that
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Application 13/251,830
Gaudron discloses canister 12 is made of plastic is supported by a
preponderance of the evidence.
With respect to the undercut limitation, Appellants assert “that an
undercut is ‘a space formed by the removal or absence of material from the
lower part of something Appeal Br. 11. Appellants contend that
“Gaudron is entirely silent regarding the formation of the container, and
therefore it is not ‘clear’ how the container of Gaudron is formed” and that
Gaudron’s Figure 2 “merely shows an outwardly bowed section to define a
concave section along an upper mouth of the container, which is in direct
contrast with the undercut as disclosed and claimed.” Id. at 12.
In response, the Examiner points out that Appellants’ Specification
does not disclose removing material to form the undercut; instead, “[t]he
material is formed or shaped with the absence of material defining the
undercut.” Ans. 13 (citing Spec, 12, 28—30). According to the Examiner,
“[t]he absence of material forms a bow in the inner surface as shown at 22 in
the application figures 4-6” and “[likewise, the undercut in Gaudron is
formed by an absence of material.” Id. The Examiner explains that “[a]
bow is formed by the absence of material at the location of the inward
curve,” thus meeting “the definition of an undercut that is provided by and
contended by Appellants].” Id. at 13—14. The Examiner adds that “[a]t the
point of the bow or inward curve there is an absence of material because it
has been moved or curved or bowed to a different location thus forming the
bow or undercut in the finish portion as claimed.” Id. at 14.
We have considered Appellants’ arguments on pages 11—12 of the
Appeal Brief and pages 4—5 of the Reply Brief, but, for the reasons set forth
by the Examiner, they do not apprise us of error in the Examiner’s finding
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that the bowed inner surface of Gaudron’s container (canister 12) defines an
undercut as recited in claim 1.
For the above reasons, Appellants fail to apprise us of error in the
rejection of claim 1 as anticipated by Gaudron. With respect to dependent
claims 2, 5, 6, and 8, Appellants merely recite elements of these claims and
baldly assert that “the art of record does not disclose or suggest a plastic
aerosol container having each additional feature as claimed.” Appeal Br. 16.
These vague statements do not constitute separate arguments for
patentability of the dependent claims pursuant to 37 C.F.R. § 41.37(c)(l)(iv).
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the
Board had reasonably interpreted 37 C.F.R. § 41.37(c)(l)(vii) (the
predecessor to § 41.37(c)(l)(iv)) as requiring “more substantive arguments
in an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art”).
Appellants have waived any argument for separate patentability of these
dependent claims. See id. Accordingly, we sustain the rejection of claims 1,
2,5,6, and 8 as anticipated by Gaudron.
Rejection II—Obviousness based on Gaudron and David
In rejecting claims 1—3, 5, 6, and 8 as unpatentable over Gaudron and
David, the Examiner finds that David teaches “that it is well known in the art
to manufacture aerosol containers from a variety of materials include
polyethylene terephthalate” (hereinafter “PET”). Ans. 4 (citing David
1168). The Examiner determines it would have been obvious to make
Gaudron’s aerosol container and finish portion from PET as taught by David
because David evidences PET and other materials are art-recognized
equivalents for use in manufacturing aerosol containers, thus making PET
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Application 13/251,830
obvious to try in Gaudron’s container with a high probability of success. Id.;
Final Act. 3.
Appellants contend that a person having ordinary skill in the art would
not have been motivated to combine the plastic, outside-mounted aerosol
containers of David with the inside-mounted aerosol container of Gaudron
because this would render Gaudron’s container inoperable for its intended
purpose and one would expect to have to change the way the valve assembly
is mounted to Gaudron’s container. Appeal Br. 14. Appellants also
emphasize that Appellants’ Specification notes the inherent mechanical
advantages of inside seals over outside seals, but further discloses that those
in the field have considered inside seals to be impractical for plastic aerosol
containers because of difficulty in mounting a valve assembly to the inner
surface of the finish portion of a blow molded plastic container. Id.; see
Spec. 1 6 (noting that valve assemblies typically have been attached to the
outer surface of the finish portion of plastic aerosol containers, but it is
considered preferable to mount valve assemblies to an inside surface of the
upper portion of metal aerosol containers).
Appellants’ arguments are not persuasive. Although it may have been
common for valve assemblies to be mounted on the outside of blow molded
plastic aerosol containers, according to Appellants’ Specification (| 6),
Gaudron discloses a valve assembly mounted to the inner surface of a plastic
aerosol container, thereby evidencing that it was known to do so. Further,
Appellants’ Specification states that the difficulty in mounting a valve
assembly to the inner surface of the finish portion of a blow molded plastic
container stems from the fact that “[t]he inner surface of the finish portion in
such a container tends to be smooth, with no features that would enable a
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valve assembly to gain the necessary purchase in order to prevent
dislodgement.” Spec. 1 6. However, Gaudron provides a feature (i.e., the
bowed upper portion of canister 12) enabling the valve assembly to gain the
necessary purchase to prevent dislodgement, thereby circumventing the
mounting difficulty with interior mounting alluded to in Appellants’
Specification. Gaudron, Fig. 2.
Appellants additionally reiterate the arguments presented against the
anticipation rejection of claim 1, which, for the reasons discussed above, do
not apprise us of error. Appeal Br. 15. Thus, these arguments, likewise, do
not apprise us of error in the rejection of claim 1 as unpatentable over
Gaudron and David. With respect to dependent claims 2, 3, 5, 6, and 8,
Appellants merely recite elements of these claims and baldly assert that “the
art of record does not disclose or suggest a plastic aerosol container having
each additional feature as claimed.” Appeal Br. 16. As noted above, such
vague statements do not constitute separate arguments for patentability of
the dependent claims pursuant to 37 C.F.R. § 41.37(c)(l)(iv). See In re
Lovin, 652 F.3d at 1357.
Accordingly, we sustain the rejection of claims 1—3, 5, 6, and 8 as
unpatentable over Gaudron and David.
Rejection III—Obviousness based on Gaudron and Hirata
In rejecting claims 1—6, 8—10, 12—14, 16, 17, 26, and 29-36, the
Examiner finds that Hirata teaches a container for containing aerosol
comprising PET having a crystallized finish for improving resistance to
falling shock. Ans. 7 (citing Hirata 4:56—62; 11:27—34; 1:29; 9:42—10:2);
Final Act. 4. The Examiner determines it would have been obvious to
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provide Gaudron’s container with a crystallized finish of PET as taught by
Hirata, “to improve resistance to falling shock.” Ans. 7; Final Act. 4—5.
With respect to independent claims 1, 9, 14, and 30, Appellants’
arguments contesting this rejection are substantially the same as those
presented against the combination of Gaudron and Davis. Appeal Br. 14—
16. For the reasons discussed above, these arguments do not apprise us of
error.
With respect to dependent claims 2—6, 8, 10, 12, 13, 16, 17, 26, 29,
and 31—36, Appellants merely recite elements of these claims and baldly
assert that “the art of record does not disclose or suggest a plastic aerosol
container having each additional feature as claimed.” Appeal Br. 16—18. As
noted above, such vague statements do not constitute separate arguments for
patentability of the dependent claims pursuant to 37 C.F.R. § 41.37(c)(l)(iv).
See In re Lovin, 652 F.3d at 1357.
Accordingly, we sustain the rejection of claims 1—6, 8—10, 12—14, 16,
17, 26, and 29—36 as unpatentable over Gaudron and Hirata.
DECISION
The Examiner’s decision rejecting claims 1—6, 8—10, 12—14, 16, 17,
26, and 29-36 is 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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