Ex Parte Brandenburger et al

Patent Trial and Appeal Board

Apr 5, 2017

12663930 (P.T.A.B. Apr. 5, 2017)

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.
12/663,930 12/10/2009 Torsten Brandenburger 70015-099US1 8631
69713 7590 04/07/2017
OCCHIUTI & ROHLICEK LLP
321 Summer St.
Boston, MA 02210
EXAMINER
LAN, YAN
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
04/07/2017 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):
INFO @ORP ATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TORSTEN BRANDENBURGER, GERHARD GREIER, and
ISMAEL RAHIMY
Appeal 2016-005585
Application 12/663,930
Technology Center 1700
Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3—9, 11, and, 20—24.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants’ claimed invention is generally directed to a preform for
producing a container for holding fluids for medical applications. App. Br.
2. Claim 1 illustrates the subject matter on appeal and is reproduced below:
1 Appellants identify the real party in interest as Fresenius Kabi Deutschland
GmbH. Appeal Brief filed September 16, 2015 (“App. Br.”), 1.
2 Claims 10 and 12—17 stand withdrawn from consideration. Final Office
Action entered March 6, 2015 (“Final Act”), 2.
Appeal 2016-005585
Application 12/663,930
1. A preform for producing a container for holding fluids
for medical applications by stretching and blow-moulding of
said preform into a container, the preform comprising:
a neck portion which has an opening,
a wall portion,
a floor portion, and
a first sub-section of an annular hanger and a second sub­
section of said annular hanger being integrally formed on the
underside of said floor portion, the first sub-section
including a first free end, the second sub-section including a
second free end, wherein the first free end and the second
free end are maintained in a spaced apart state by a
mechanical bias.
App. Br. 19 (Claims Appendix).
Appellants request review of the final rejection of claims 1, 3—9, 11,
and 20-24 under 35 U.S.C. § 103(a) as unpatentable over Uehara et al. (EP
0483671 A2, published May 6, 1992) and Schlatter (US 2005/0017004 Al,
published January 27, 2005), which was maintained by the Examiner in the
Answer entered March 10, 2016 (“Ans.”). Claims 1, 3—9, 11, and 20-24
also stand rejected under pre-AlA 35 U.S.C. § 112,12, as indefinite (Ans.
3), but, as further discussed below, Appellants do not contest this ground of
rejection.
DISCUSSION
Upon consideration of the relied-upon evidence in this appeal and
each of Appellants’ contentions, we affirm the Examiner’s rejection of
claims 1, 3—9, 11, and 20-24 under 35 U.S.C. § 103(a) as unpatentable over
Uehara and Schlatter.
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We add the following discussion primarily for emphasis.
Claims 1, 4, 8, 11, 20, and 21
Appellants argue claims 1, 4, 8, 11, 20, and 21 as a group. App. Br.
2—10. Therefore, for the purposes of this appeal, we select claim 1 as
representative, and claims 4, 8, 11, 20, and 21 will stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv) (2015).
The Examiner finds that Uehara discloses a preform used to mold a
container having a hanger such as an intravenous drip bottle. Final Act. 5;
Uehara col. 1,11. 5—8. The Examiner finds that Uehara discloses that the
preform comprises a barrel portion 22a (wall), a connection 24 connected to
the bottom end of the barrel 22a (floor), and a circular ring-like hanger 26
connected to the connection 24. Final Act. 5; Ans. 18; Uehara col. 6,11. 6—7,
14—20; Fig. 1.
The Examiner finds that Uehara does not disclose that the hanger 26
comprises first and second subsections that each include free ends
maintained in a spaced apart state by a mechanical bias, but the Examiner
relies on Schlatter for suggesting this feature. Final Act. 6—7. Specifically,
the Examiner finds that Schlatter discloses a dispensing container
comprising a clasp (hanger) that allows the container to be detachably
connected to a variety of objects. Final Act. 6; Schlatter || 2, 17. The
Examiner finds that Schlatter discloses that the clasp 32 includes first 48 and
second 50 arms having free ends that are maintained in a spaced apart state.
Final Act. 6; Schlatter 125; Fig. 1.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellants’ invention to replace the
circular ring-like hanger in the preform disclosed in Uehara with a clasp as
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taught by Schlatter to allow a container produced with Uehara’s modified
preform to be detachably connected to an object as taught by Schlatter.
Final Act. 8; Ans. 14—15.
Appellants argue that the Examiner’s rationale for the proposed
modification of Uehara’s preform is flawed because there “is no objective
evidence to support the idea that Uehara’s bottle is difficult to detach from
wherever it has been hung.” App. Br. 4—5. Appellants contend that the
intended use of Uehara’s bottle is to be hung from a rod by passing the
hanger through the end of the rod, and Appellants argue that the bottle is
very easily detached by passing the hanger back over the end of the rod.
App. Br. 5.
However, the Examiner’s rationale for the proposed modification of
Uehara’s preform is not based on the difficulty of detaching a bottle
produced with the preform from where it has been hung as Appellants assert,
but is based on the advantage of allowing a bottle produced with the
modified preform to be detached from an object to which it has been hung.
Final Act. 8; Ans. 14—15. Schlatter discloses that the clasp on the dispensing
container allows the container to be attached and detached from a variety of
articles, including objects having a closed loop such as a lanyard or a key
ring. Schlatter || 2, 17. One of ordinary skill in the art would have
recognized that Uehara’s closed, annular hanger cannot be hung from an
object containing a closed loop, and would also have understood that
replacing the hanger in Uehara’s preform with a clasp as disclosed in
Schlatter would allow a container produced with the modified preform to be
hung and detached from a wider variety of objects, including objects that
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include a closed loop. Appellants’ arguments are therefore unpersuasive of
reversible error.
Appellants further argue that the Examiner’s rationale for the
proposed modification of Uehara’s preform is also flawed because a bottle
produced with Uehara’s preform is intended to function the same way as a
bottle produced with Appellants’ preform in which the free ends are joined
together before the bottle is used. App. Br. 5—6. Appellants contend that the
proposed replacement of the hanger in Uehara’s preform with the clasp
disclosed in Schlatter would not provide “the alleged advantage of greater
detachability” because one skilled in the art would join the free ends of a
bottle produced with such a preform before use. App. Br. 6.
However, claim 1 does not recite that the free ends of the first and
second sub-sections are joined before use, and Appellants’ arguments are
therefore based on subject matter that is not claimed. In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“[Ajppellant’s arguments fail from the outset
because . . . they are not based on limitations appearing in the claims.”).
Moreover, Appellants do not direct us to any disclosure in Schlatter
indicating or suggesting any reason to join the free ends of the arms of the
clasp before use of the dispensing container. App. Br. 5—6. In fact, Schlatter
discloses that “[wjhile the use of two arms 48, 50 in accordance with the
present invention optimizes attachment to various support structures, the two
arms further provide for improved strength.” Schlatter 130. Schlatter thus
discloses successful use of the dispensing container for its intended purpose
without joining the arms of the container. Appellants’ arguments are
therefore unpersuasive of reversible error.
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Appellants further argue that Uehera teaches away from a preform as
recited in claim 1 whose use necessitates two manufacturing steps to
produce a bottle: a first molding step followed by a second step of joining
the ends. App. Br. 6—7. Appellants contend that Uehera discusses the
disadvantages of a prior art method disclosed in JP 62-273822 that requires
an additional step to form a hanger, and Appellants assert that Uehera thus
denigrates the need to have more than one step in making a bottle. App. Br.
7.
However, claim 1 recites a preform and does not recite steps for
manufacturing a bottle from the preform, much less recite a manufacturing
process that involves joining the ends of a bottle produced with the preform.
Appellants’ arguments therefore lack persuasive merit because they are
directed to subject matter that is not recited in claim 1. Self, 671 F.2d at
1348.
Appellants further argue that the modification of Uehera’s preform
proposed by the Examiner involves cutting through the hanger to introduce a
slit into the ring. App. Br. 7—8. Appellants contend that such a modification
would render a bottle produced from such a preform unsuitable for its
intended purpose of hanging from a pole because the modified hanger would
very likely no longer support a filled bottle. App. Br. 9.
However, as discussed above, the Examiner proposes modifying
Uehera’s preform by replacing the circular ring-like hanger in the preform
with a clasp as taught by Schlatter, and the Examiner does not propose
introducing a slit into Uehera’s hanger as Appellants assert. Final Act. 8;
Ans. 14—15. As also discussed above, Schlatter discloses that the clasp on
the dispensing container allows the container to be attached to a variety of
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Application 12/663,930
articles, including a lanyard or a key ring, and discloses that the clasp
provides improved strength. Schlatter || 2, 17, 30. Accordingly, one of
ordinary skill in the art would have understood that a bottle produced from
Uehera’s preform modified as proposed by the Examiner would be suitable
for hanging from various objects, including a pole. Appellants’ arguments
are therefore unpersuasive of reversible error.
Appellants further argue that the preform recited in claim 1 allows a
bottle with a hanger to be made more easily because the two-subsections
facilitate easier manufacturing of a bottle from the preform. App. Br. 3.
Appellants contend that this “surprising improvement in manufacturability”
is not at all suggested by the combined disclosures of Uehera and Schlatter.
App. Br. 6.
However, on this record, Appellants do not meet their burden of
showing that the claimed preform imparts results that would have been
unexpected by one of ordinary skill in the art at the time of their invention.
In reKlosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing
unexpected results rests on he who asserts them”). Appellants do not direct
us to any statement in their Specification attesting to the unexpected nature
of the asserted improvement in manufacturability, or to any other persuasive
evidence or averment evincing that this improvement would have been
unexpected by one of ordinary skill in the art at the time of their invention.
App. Br. 2—18. Absent such evidence or averment, Appellants cannot meet
their burden. See, e.g., In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)
(“Geisler made no such assertion [that results were unexpected] in his
application. Nor did Geisler submit any such statement through other
evidentiary submissions, such as an affidavit or declaration under Rule 132 .
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. . Instead, the only reference to unexpected results was a statement by
Geisler’s counsel. . . that Geisler’s results were ‘surprising.’”).
We accordingly sustain the Examiner’s rejection of claims 1, 4, 8, 11,
20, and 21 under 35 U.S.C. § 103(a).
Claims 3 and 5
Claim 3 depends from claim 1 and recites, inter alia, that the first and
second sub-sections are in the form of flat strips of a rectangular cross-
section.
Claim 5 depends from claim 4, which recites that first and
second free ends of the first and second sub-sections are integrally formed
on the underside of the floor portion of the preform forming a common base
piece that is integrally formed on the underside of the floor portion. Claim 5
recites, inter alia, that the base piece is in the form of a flat body.
With respect to claim 3, Appellants argue that one of ordinary skill in
the art would have construed the term “flat” to mean lacking a slope, and
Appellants contend that Schlatter’s first 48 and second 50 arms do not meet
this definition of the term “flat.” App. Br. 10—11. With respect to claim 5,
Appellants argue that Uehara’s connection 24 is cylindrical and is not a flat
body or base piece as recited in claim 5. App. Br. 11—12.
However, even if Appellants are correct in their assertion that
Schlatter’s first and second arms are not “flat” according to how this term
would be interpreted by one of ordinary skill in the art in view of
Appellants’ Specification, and are correct in their assertion that Uehara’s
connection 24 is cylindrical rather than flat, a claimed difference in shape
from the prior art does not make a product nonobvious in circumstances
where the claimed shape is not of functional significance and accomplishes
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the same purpose as the prior art. In re Dailey, 357 F.2d 669, 672—3 (CCPA
1966) (holding that the configuration of a claimed disposable plastic nursing
container was a matter of choice that a person of ordinary skill in the art
would have found obvious absent persuasive evidence that the particular
configuration of the claimed container was significant).
On this record, Appellants do not demonstrate that the recited flat
shape for the first and second sub-sections and for the base piece of the
claimed preform is of any functional significance or serves a unique or
critical purpose. App. Br. 2—18. Nor do Appellants demonstrate that a flat
shape for the first and second sub-sections and for the base piece provides
any unexpected result or advantage. App. Br. 2—18. Accordingly, changing
the shape of Schlatter’s first 48 and second 50 arms and connection 24 to a
flat shape would have been a design choice that was well within the level of
one of ordinary skill in the art at the time of Appellants’ invention. In re
Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no
stated problem and presents no unexpected result and “would be an obvious
matter of design choice within the skill of the art” (citations omitted)).
Appellants further argue that the Examiner’s statement3 that a change
of shape is a mere design choice is “a conclusion not a reason” and falls
squarely within KSR’s prohibition of “mere conclusory statements.” App.
Br. 12-13.
However, “[i]f a person of ordinary skill in the art can implement a
predictable variation [of a known work], § 103 likely bars its patentability.”
3 The Examiner stated that “it should be noted that change of shape is
generally considered as a matter of design choice, absent persuasive
evidence that the particular configuration was significant. MPEP 2144.04.”
Advisory Action issued May 13, 2015, 2.
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KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).4 As discussed
above, it is well-settled that such predictable variations include changes in
shape, and a particular shape is therefore an obvious matter of design choice
absent evidence that the shape has a functional significance or serve a
unique or critical purpose. On this record, Appellants provide no such
evidence for the flat shape of the first and second sub-sections and base
piece, and Appellants’ arguments are therefore unpersuasive of reversible
error.
Accordingly, we sustain the Examiner’s rejection of claims 3 and 5
under 35 U.S.C. § 103(a).
Claim 6
Claim 6 depends from claim 1 and recites that the first and second
free ends of the first and second sub-sections are in the form of ends that are
to be welded and whose end-faces are arranged opposite one another.
Appellants argue that the Examiner does not provide evidence to
support the finding that the free ends of Schlatter’s arms 48, 50 are capable
of being welded. App. Br. 13—15. Appellants contend that that there is no
disclosure in Schlatter indicating that the arms 48, 50 can be welded, and
contend that this feature is not inherent in Schlatter’s disclosures because
one of ordinary skill in the art would have understood that there are many
materials that cannot be welded, and the ends of the arms 48, 50 could be
made of such materials. App. Br. 14—15.
However, as discussed above, the Examiner relies on Schlatter’s
disclosure of a clasp that allows a container to be detachably connected to a
variety of objects and proposes substituting the ring-like hanger of Uehara’s
4KSR, 550 U.S. at 418 (2007).
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preform with a clasp as taught by Schlatter. Final Act. 6—8; Ans. 14—15.
Thus, the modification proposed by the Examiner would result in an
alteration in the shape of the preform disclosed in Uehara, and would not
involve modifying Uehara’s preform to produce it from materials disclosed
in Schlatter. Uehara discloses that suitable materials for producing the
preform include polypropylene and polyethylene terephthalate (PET)
(Uehara col. 8,11. 9—15), which are the same materials disclosed in
Appellants’ Specification as suitable for forming the preform recited in
claim 6. Spec. 7,11. 1^4. Therefore, contrary to Appellants’ arguments,
because the ends of the arms of Uehara’s preform modified as suggested by
Schlatter are made of a material that Appellants’ Specification indicates can
be used to produce the preform recited in claim 6, the ends of the arms of
Uehara’s preform modified as suggested by Schlatter are capable of being
welded.
Appellants further argue that the end faces of Schlatter’s arms 48, 50
are not arranged opposite one another as recited in claim 6. App. Br. 15—16.
Appellants contend that one of ordinary skill in the art would have
interpreted end faces that are “opposite” each other to exclude Schlatter’s
arms 48, 50 in view of Figures 1, 3, and 4 of their application and the
description at page 7, lines 14—15 of their Specification of end faces 4F and
4G shown in Figure 1 that are “situated opposite and close to one another.”
Id.
However, we find no definition or limiting description in Appellants’
Specification of end faces that are arranged “opposite” one another. The
drawings and the portion of the Specification that Appellants cite describe
various illustrative, non-limiting embodiments of Appellants’ invention, and
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do not limit end faces that are arranged “opposite” one another to any
particular configuration. Therefore, we interpret end faces that are arranged
opposite one another according to the plain and ordinary meaning of the
term “opposite”, which is “set over against something that is at the other end
or side of an intervening line or space.”5 Based on this plain and ordinary
meaning of “opposite,” we discern no error in the Examiner’s finding that
the end faces of Schlatter’s arms 48, 50 illustrated in Schlatter’s Figure 1 are
arranged “opposite” one another. Final Act. 7. We accordingly sustain the
Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a).
Claim 7
Claim 7 depends from claim 1 and recites, inter alia, that the first and
second ends of the first and second sub-sections each have a projecting
piece.
Appellants argue that the Examiner does not identify a projecting
piece in Schlatter’s dispensing container, and contend that the Examiner
instead “suggests that the arms 48, 52 [sic: 50] have an angled profile.”
App. Br. 16—17 (emphasis in original). Appellants argue that “there is no
logical connection between having an angular profile and projecting.” App.
Br. 17.
However, the Examiner explicitly finds that Schlatter’s arms 48, 50
include a straight section and an angled or arched portion, and the Examiner
finds that the angled or arched portions of the arms project from the straight
portions and thus constitute projecting pieces. Final Act. 11; Ans. 20. We
find no definition or limiting description of a “projecting” piece in
5 Merriam-Webster’s Collegiate Dictionary, 10th Edition, 2000.
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Appellants’ Specification, and the plain and ordinary meaning of a
“projecting” piece is a piece that protrudes or extends beyond or above a
surface.6 Because the Examiner’s finding that the arched portion of
Schlatter’s arms 48, 50 are projecting pieces is consistent with this plain
meaning, Appellants’ arguments are unpersuasive of reversible error. We
accordingly sustain the Examiner’s rejection of claim 7 under 35 U.S.C.
§ 103(a).
Claims 9 and 22—247
Claim 9 depends from claim 1 and recites that the first and second
free ends of the first and second sub-sections take the form of end-pieces
that are to be connected together by positive interengagement. Claim 22
depends from claim 1 and recites that the first and second sub-sections are
configured to be connected together upon application of an external force to
overcome the mechanical bias.
Appellants argue that no evidence exists to support the Examiner’s
finding that Schlatter’s arms 48, 50 are capable of being connected together
by positive interengagement and by application of an external force. App.
Br. 17-18.
However, it is well-settled that language in an apparatus claim
directed to its intended use that does not structurally limit the claimed
apparatus components or patentably differentiate the claimed apparatus from
6 Oxford English Dictionary.com,
https://en.oxforddictionaries.com/defmition/protrude (last visited March 28,
2017).
7 Appellants argue claims 22—24 as a group. App. Br. 2—10. Therefore, for
the purposes of this appeal, we select claim 22 as representative of this
groups of claims, and claims 23 and 24 will stand or fall with claim 22. 37
C.F.R. § 41.37(c)(l)(iv) (2015).
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an otherwise identical prior art apparatus, will not support patentability. See,
e.g., In re Schreiber, 128 F.3d at 1477—79 (“Schreiber’s contention that his
structure will be used to dispense popcorn does not have patentable weight if
the structure is already known” and “the Board [correctly] found that the
Harz dispenser [for dispensing lubricating oil] would be capable of
dispensing popcorn in the manner set forth in claim 1 of Schreiber’s
application.”). As discussed above, the modification of Uehara’s preform
proposed by the Examiner would result in an alteration in the shape of the
preform in view of Schlatter’s disclosures, and would not involve modifying
Uehara’s preform to produce it from materials disclosed in Schlatter. Final
Act. 8; Ans. 14—15. Because Uehara discloses that suitable materials for
producing the preform are the same materials disclosed in Appellants’
Specification as suitable for forming the preform recited in claims 9 and 22,
the Examiner has a reasonable basis for finding that Schlatter’s arms 48, 50
are capable of being connected together by positive interengagement and by
application of an external force. Compare Uehara col. 8,11. 9—15, with Spec.
7,11. 1^1.
Appellants’ arguments do not demonstrate that Uehara’s preform
modified as suggested by Schlatter is incapable of performing the intended
uses recited in claims 9 and 22. App. Br. 17—18. Therefore, Appellants do
not identify reversible error in the Examiner’s finding that these intended
uses do not patentably distinguish the claimed preform from the preform
suggested by the combined disclosures of Uehara and Schlatter. We
accordingly sustain the Examiner’s rejection of claims 9 and 22—24 under 35
U.S.C. § 103(a).
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Reply Brief
Appellants argue in the Reply Brief that the Examiner introduces new
factual findings in the Answer for claim 3, and thus assert in essence that the
Examiner raises a new ground of rejection in the Answer. Rep. Br. 5. We
do not address this argument because such issues are reviewable by petition
under 37 C.F.R. § 1.181, and are therefore not within the jurisdiction of the
Board. Ex parte Frye, 94 USPQ2d 1072, 1078 (BPAI 2010) (precedential).
Rejection of Claims 1, 3—9, 11, and 20—24 under 35 U.S.C. § 112, Second
Paragraph
We summarily sustain this rejection without comment because
Appellants do not contest it. App. Br. 2—18; 37 C.F.R. § 41.37(c)(l)(iv)
(requiring that “arguments shall explain why the examiner erred as to each
ground of rejection . . . [and that] any arguments or authorities not included
in the appeal brief will be refused consideration by the Board”); see also
Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that
summary affirmance without consideration of the substantive merits is
appropriate where an appellant fails to contest a ground of rejection).
Objection to Claims 6, 7, 9, 20, 21, 23, and 24
We do not address the Examiner’s objections to these claims because
they are not within the jurisdiction of the Board. 37 C.F.R. § 1.181
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DECISION
We affirm the Examiner’s rejection of claims 1, 3—9, 11, and, 20—24
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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