Ex Parte ARMSTRONG et al

Patent Trial and Appeal Board

Dec 21, 2018

13562546 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/562,546 07/31/2012
21127 7590
POLSINELLI PC
One International Place
Suite 3900
BOSTON, MA 02110
12/26/2018
FIRST NAMED INVENTOR
Ralph ARMSTRONG
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.
G003-7535US1 2891
EXAMINER
GRUBY, RANDALL A
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
thendricks@polsinelli.com
DC-IPDocketing@polsinelli.com
mswannichols@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALPH ARMSTRONG, KEITH J. BARKER, and
TAPANY.PATEL
Appeal2017-004275
Application 13/562,546
Technology Center 3700
Before JOHN C. KERINS, KEN B. BARRETT, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ralph Armstrong et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-12 and 14--20. 1
An oral hearing pursuant to 37 C.F.R. § 41.47 was held on December 17,
2018. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Graham Packaging Company LP is identified as the real party in interest.
Appeal Br. 2.
Appeal2017-004275
Application 13/562,546
THE CLAIMED SUBJECT MATTER
Appellants' invention is directed to "a plastic aerosol container able to
withstand the elevated pressures and temperatures of testing and storage."
Spec. ,r 1. Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A plastic aerosol container comprising:
a thermally crystallized neck finish configured to receive
an aerosol valve and closure assembly, the aerosol valve and
closure assembly including a crimp or thread configured to seal
the valve and closure assembly to the neck finish;
an expanded biaxially strain oriented aerosol container
body, integral with the neck finish, including a thermally
uncrystallized and biaxially strain oriented shoulder and
sidewall;
a junction between the thermally crystallized neck finish
and the shoulder defining a pull point at which biaxial strain
orientation of the container body begins,
wherein the pull point is a line of demarcation between
the thermally crystallized neck finish and the biaxially strain
oriented shoulder; and
wherein the thermally crystallized neck finish and the
junction defining the pull point at which biaxial strain
orientation began provide a structural integrity resisting
deformation such that the plastic aerosol container with an
aerosol valve and closure assembly sealed to the neck finish can
withstand a hot water bath test comprising:
the plastic aerosol container is filled with 60% water and
40% nitrogen pressurized to 130 psig, sealed and submerged in
a hot water bath of 153 deg. F for 30 minutes and shows no
leakage at the closure and no signs of distortion.
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Application 13/562,546
REJECTIONS
1) Claims 1-6 and 18 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Hayashi (US 4,991,728, issued Feb. 12, 1991)
and Salameh (US 2007/0245538 Al, published Oct. 25, 2007).
2) Claims 7-12, 14--17, 19, and 20 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Hayashi, Salameh, and Brewster (US
5,888,598, issued Mar. 30, 1999).
DISCUSSION
The Examiner finds that Hayashi and Salameh disclose most of the
limitations of claim 1. Final Act. 2-3. The Examiner specifically finds that
Hayashi discloses the recited junction between the thermally crystallized
neck finish and the "shoulder defining a pull point ... wherein the pull point
is a line of demarcation." Id. at 3 ( citing Hayashi 4:37--47). The Examiner
also finds that "the container of Hayashi is capable of dispensing aerosol."
Id. at 4. The Examiner acknowledges that neither Hayashi nor Salameh
disclose the limitation that the recited container can withstand a hot water
bath test as required by claim 1. Id. The Examiner, however, determines
that the hot water bath test is "[a] functional recitation" and "[ w ]hen the
structure recited in the prior art is substantially identical to that of the claims,
claimed properties or functions are presumed to be inherent." Id. ( citing
MPEP § 2112.0l(I)).
Appellants contend that Hayashi does not disclose using its container
"as an aerosol container" and that Hayashi's container "would fail the
claimed hot water aerosol bath test." Appeal Br. 17 ( emphasis omitted). To
support this contention, Appellants rely on a Declaration of Thomas N ahill
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Application 13/562,546
("Nahill Deel."). 2 Id. at 18. Appellants argue that a person of ordinary skill
in the art "would not use the Hayashi '728 container as a plastic aerosol
container." Id. (citing Nahill Deel. ,r,r 6-12). In particular, Mr. Nahill
asserts that Hayashi discloses two types of containers, one for holding
alcohol and one for holding a carbonated drink mixed with fruit juice, "that
are not required to withstand the more severe hot water bath test designed
for aerosol containers." Nahill Deel. ,r 9. Appellants further argue that
Nahill
describes why the stepped portion 4 in Hayashi '728 ... is
interjected between the thermally crystallized neck finish, and
the radially expanded shoulder. The lack of biaxial orientation
of the Hayashi '728 stepped portion, and the reduced material
thickness caused by the recessed groove, would likely distort
( expand) with the high pressures and elevated temperatures
used in the testing of aerosol containers as specified in the
Applicant's claims. In addition having only axial orientation in
that area under the thermally crystallized neck finish may lead
to cracking in the direction of the axial pull.
Id. ,I 10.
The Examiner maintains the rejection based on inherency. Ans. 16-
17. The Examiner determines that the Declaration of Thomas Nahill "is not
found persuasive" because it is not "supported by actual proof." Id. at 16
(citing MPEP § 716.0l(c)). For the following reasons, we do not sustain the
rejection.
Hayashi discloses a blow molded container with a thermally
crystallized neck finish 1 and a biaxially oriented blow molded shoulder
portion 2. Hayashi, 3:8-15; Fig. 2. Hayashi's container also comprises
2 Declaration of Thomas Nahill dated Feb. 15, 2016.
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Application 13/562,546
"stepped portion 4 [] formed on the inner peripheral surface of the boundary
between the neck portion 1 having a large thickness, and the shoulder
portion 2 thereby abruptly reducing the thickness of the wall at the boundary
between the neck portion 1 and the shoulder portion 2." Id. at 3:20-25; Fig.
1.
The fact that a certain result or characteristic may occur or be present
in the prior art is not sufficient to establish the inherency of that result or
characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Rather,
the Examiner must establish that the "matter is necessarily present in the
thing described in the reference." In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999). The general rule is that "the PTO can require an applicant to
prove the prior art products do not necessarily or inherently possess the
characteristics of his [or her] claimed product. Whether the rejection is
based on 'inherency' under 35 U.S.C. § 102, on 'primafacie obviousness'
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the
same." In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appellants' Specification discloses that the claimed plastic aerosol
"containers must conform to a hot water bath test for leak detection under 49
CPR§ 173.306(a)(3)(v)." Spec. ,r 42. Appellants submit evidence that the
containers disclosed in Hayashi are not suitable for use as an aerosol
container and would fail the hot water bath test recited in claim 1. Mr.
Nahill provides a reasoned explanation, based on stepped portion 4 of
Hayashi's container, why Hayashi's containers would fail the recited hot
water bath test in contrast to the structure recited in claim 1. N ahill Deel.
,r,r 11-12. The Examiner has not adequately explained or provided evidence
why Mr. Nahill's analysis that Hayashi's containers are not suitable for use
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Appeal2017-004275
Application 13/562,546
as an aerosol container and would fail the recited hot water bath test is not
correct. See Ans. 16. Consequently, we do not sustain the rejection of claim
1 because the Examiner has not established that Hayashi's disclosed
containers would necessarily successfully withstand the recited hot water
bath test. Claims 2---6 and 18 depend from claim 1. Appeal Br. 22-23, 25
(Claims App'x). We do not sustain the rejection of claims 2-6 and 18 for
the same reasons.
Rejection 2
Independent claim 7 recites the same hot water bath test as claim 1.
Appeal Br. 23-24 (Claims App'x). The Examiner rejects claim 7 based on
the combination of Hayashi and Salameh with additional disclosure from
Brewster. Final Act. 5-8. The Examiner does not rely on Brewster to cure
the deficiencies in the rejection of claim 1. Id. Therefore, we do not sustain
the rejection of claim 7 for the same reasons discussed above in connection
with the rejection of claim 1. Claims 8-12, 19, and 20 depend from claim 7.
Appeal Br. 24--26 (Claims App'x). We do not sustain the rejection of claims
8-12, 19, and 20 for the same reasons.
Independent claim 14 recites the same hot water bath test as claims 1
and 7. Appeal Br. 24--25 (Claims App'x). The Examiner rejects claim 14
based on the combination of Hayashi and Salameh with additional disclosure
from Brewster. Final Act. 9-11. The Examiner does not rely on Brewster to
cure the deficiencies in the rejection of claim 1. Id. Therefore, we do not
sustain the rejection of claim 14 for the same reasons discussed above in
connection with the rejection of claim 1. Claims 15-1 7 depend from claim
14. Appeal Br. 25 (Claims App'x). We do not sustain the rejection of
claims 15-17 for the same reasons.
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Application 13/562,546
DECISION
The Examiner's decision rejecting claims 1-12 and 14--20 is reversed.
REVERSED
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