Ex Parte Escobar

Patent Trial and Appeal Board

Feb 21, 2018

12649678 (P.T.A.B. Feb. 21, 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.
12/649,678 12/30/2009 Miguel F. Escobar TNA-0003US2 5974
23413 7590 02/23/2018
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street VAUGHAN, JASON L
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
02/23/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIGUEL F. ESCOBAR
Appeal 2017-004806
Application 12/649,6781
Technology Center 3700
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant2 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision3 rejection of claims 11—14.4 We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
1 Divisional application US Application No. 13/537,274 is the subject of
Appeal 2017-004440.
2 Appellant identifies the real party in interest as Tapones Escobar, S.A.
Appeal Br. 2.
3 Appeal is taken from the Final Office Action dated July 2, 2015.
4 Claims 1—10 have been withdrawn from consideration. Appeal Br. 2.
Appeal 2017-004806
Application 12/649,678
We AFFIRM and enter a NEW GROUND OF REJECTION of claims
11—14 under 35U.S.C. § 112, second paragraph, pursuant to our authority
under 37 C.F.R. § 41.50(b).
THE CLAIMED SUBJECT MATTER
Claim 11 is the sole independent claim on appeal. Claim 11,
reproduced below, is illustrative of the subject matter on appeal.
1. A method of making a composite synthetic cork
stopper, comprising:
molding an interlocking portion within a synthetic cork
stopper material such that the interlocking portion is positioned
in an interior space within said synthetic cork stopper material,
the interlocking portion configured to retain said synthetic cork
stopper material on a portion of a handle,
wherein said interlocking portion is configured to
prevent movement of the handle portion5 away from said
synthetic cork stopper portion6;
further wherein the interlocking portion is provided
within the interior space such that when the synthetic cork
stopper portion is placed on the handle portion, the
interlocking portion is not visible; and
installation of said molded stopper material7 and
interlocking portion over said portion of said handle.
5 We understand that the antecedent basis for the claim term “handle
portion” is the recited “portion of a handle.”
6 The claim term “synthetic cork stopper portion” lacks antecedent basis, as
compared to the recited “synthetic cork stopper material.”
7 The claim term “molded stopper material” lacks antecedent basis, as
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THE REJECTIONS
I. Claims 11 and 14 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Hwang (US 6,915,920 B2; issued July 12, 2005).
II. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hwang and Grannen (US 4,732,726; issued Mar. 22,
1988).
OPINION
Rejection I
Regarding independent claim 11, the Examiner finds that Hwang
discloses “co-molding a cork [(i.e., Hwang’s jacket 3 corresponding to the
claimed synthetic cork stopper material)] and an expansion body [(i.e.,
Hwang’s body 1 corresponding to the claimed interlocking portion)],
wherein the expansion body is molded within the interior of the cork.” Final
Act. 2 (citing Hwang 4:24—27). The Examiner determines that Hwang’s
body 1 includes projections (i.e., screwing ribs 13) that prevent movement of
body 1 relative to the cork (i.e., jacket 3). Id. (citing Hwang 4:31—35). The
Examiner also determines that Hwang’s plug 2 (i.e., handle) is secured to the
cork (i.e., jacket 3) via body 1. Id. (citing Hwang 4:48—55, 5:9-24). The
Examiner further determines that protrusion 14 of body 1 (i.e., the
interlocking portion) is “locked within” neck 23 of plug 2 (i.e., the handle)
to prevent movement neck 23 (i.e., the handle portion or portion of the
compared to the recited “synthetic cork stopper material.”
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handle) away from jacket 3 (i.e., the synthetic cork stopper portion), as
claimed. Id. at 3 (citing Hwang 5:9-24, Fig. 4). The Examiner also
determines that Hwang’s plug 2 (i.e., handle) is placed on jacket 3 (i.e.,
synthetic cork stopper portion), such that body 1 (i.e., the interlocking
portion) would not be visible to a person viewing Hwang’s bottle with jacket
3 placed on a portion of plug 2 (i.e., the handle portion). Id.
Appellant argues that “Hwang fails to show a mated intermediate
portion and handle portion (i.e. in a non-sliding arrangement).” Appeal Br.
4. In support, Appellant submits that “[i]n all cases, Hwang requires that the
handle portion [(i.e., plug 2)] slide in and out of the stopper (i.e., jacket 3)]
to provide varying amounts of locking force thereon.” Id. at 4—5 (emphasis
added) (citing Hwang 4:58—62, 5:11—17, Figs. 3, 4). Specifically, Appellant
submits that “Hwang describes a coaxially sliding arrangement, with the
handle portion 20 and 1 sliding towards and away from the cork portion 3
during operation” and that “leg 21 slides within [] the flexible walls 12 of
body 1 after being inserted into the opening 15 of the body 1 (which is a
plastic member).” Id. at 5—6 (emphasis added) (citing Hwang 3:46—53,
4:56-66).
The Examiner responds that Appellant is arguing limitations that do
not appear in the claims, in that claim 11 does not require “the interlocking
portion and handle portion [to] be inseparable.” Ans. 5.
Appellant replies that the Examiner errs by determining that “any
restriction relative to the cork is enough to satisfy the limitation, even if the
prior art does, in at least one way, pull away from the cork.” Reply Br. 2.
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Appellant also argues that “[t]he only way that Hwang can work is to use
such coaxial sliding, meaning the handle has to move away from the
synthetic cork stopper portion.” Id. at 3; see also id. at 3—6 (citing Hwang
1:66-2:3, 2:23-26, 43^16, 3:46-53, 4:56-66, 5:17-19).
We are not persuaded by Appellant’s argument; rather, a
preponderance of the evidence supports the Examiner’s finding that
Hwang’s body 1 (i.e., the interlocking portion) is configured to prevent
movement of a portion (i.e., protrusion 14) of plug 2 (i.e., the handle
portion) away from jacket 3 (i.e., the synthetic cork stopper), as discussed
infra. To the extent Appellant argues that the claims require the interlocking
portion to be configured to prevent any axial or sliding movement (i.e.,
sliding movement of a handle toward a synthetic cork stopper portion),
Appellant is arguing limitations that are not recited in the claims.
Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self 671 F.2d 1344, 1348 (CCPA 1982).
Regarding the first expansion position of leg 21 of plug 1 (with
reference to Hwang’s Figure 2), Hwang discloses that “the body 1 and the
jacket 3 are assembled without the plug 2 and easily inserted into the bottle
neck 4 because of [(sic.)] without any expansion of the bottle stopper.”
Hwang 4:50-53, Fig. 2. Hwang also discloses “[a] second step of closing
bottle process,” wherein “leg 21 is inserted into the opening 15 of the body 1
and pressed to engage the first neck 22 with protrusion 14 to form a locking
means.'1'’ Id. at 4:57—61 (emphasis added), Fig. 3. Hwang discloses that
“when the first neck 22 engaged with the protrusion 14, the leg 21 can only
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allow pressing to advance in the body 7” and that “[t]he locking means
provides a maximum expansion to lock around the bottle neck 4, which
cannot be released from the bottle neck.” Id. at 4:66—5:5 (emphasis added).
In other words, Hwang discloses that body 1 (i.e., the interlocking portion) is
configured to allow movement of plug 2 (i.e., the handle portion) toward
jacket 3 (i.e., the synthetic cork stopper portion), but to prevent movement of
plug 2 away from jacket 3 once leg 21 of plug 2 is inserted into opening 15
of body 1, wherein neck 22 of leg 21 and protrusion 14 of body 1 form a
locking means. Hwang explains that, in this locking position, “the top of the
body 1 is coplanar with the end of the annular wall 25 so that it has an
appearance and a function of indicating whether the bottle neck has
previously opened or the stopper has been used.” Id. at 5:5—8.
Regarding the second expansion position of leg 21 of plug 1 (with
reference to Hwang’s Figure 4), Hwang discloses “a step for releasing and
resealing bottle neck,” wherein “after the plug 2 is pressed downward to
form a resealing means, the second neck 23 is then engaged with the
protrusion 14.” Hwang 5:9-14 (emphasis added). Hwang discloses that
“[t]he releasing means provides a slight expansion which diameter is
relatively smaller than the diameter of the locking means for allowing to
initially release the bottle neck 4” and that “the bottle stopper can be initially
released by upward pulling force and used to reseal the bottle neck 4,”
however, Hwang clearly discloses that “second neck 23 is firmly engaged
with the protrusion 14 and cannot release from it, when the top of the body
1 will arrive at the bottom of the annular wall 25 and be received within it.”
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Id. 5:14—22 (emphasis added). In other words, when releasing and resealing,
Hwang teaches that the entire bottle stopper is removed from neck 4 of the
bottle, with second neck 23 secured to protrusion 14, such that Hwang’s
jacket 3 with protrusion 14 (i.e., the interlocking portion) is configured to
prevent movement of plug 2 (i.e., the handle portion) away from jacket 3
(i.e., the synthetic cork stopper portion), as claimed.
Moreover, to interpret Hwang according to Appellant’s argument (i.e.,
such that leg 21 of Hwang’s body 1 is configured to slide axially away from
Hwang’s jacket 3) would result in annular wall 25 being spaced from the top
of body 1, defeating the purpose of Hwang’s invention. See Hwang 5:21—24
(“. . . when the top of the body 1 will arrive at the bottom of the annular wall
25 and be received within it[,] [i]t therefore, indicates with an appearance
that the stopper has been used and the bottle neck 4 has previously
opened.”).
Appellant also argues that the claim limitation molding an
interlocking portion within a synthetic cork stopper material such that the
interlocking portion is positioned in an interior space within said synthetic
cork stopper material’” is not “described in Hwang, which instead is
configured without the interlocking portion being molded within the
synthetic cork.” Appeal Br. 6; Reply Br. 5—6.
Hwang discloses that “body 1 is made of plastic material” (Hwang
3:50) and “jacket 3 may be made of cork, foamed plastic material,
compressible material or the like” {id. at 4:24—25). Hwang also discloses
that “jacket 3 is a cup-shaped part with a cavity in which adapted to receive
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the combination of the body 1 and the plug 2 co-axially aligned to it.” Id. at
4:28—31. Hwang further discloses that “[i]t is desirable that the body 1 and
jacket 3 can be formed as a singular member in molding process.” Id. 4:42—
43. Thus, a preponderance of the evidence supports the Examiner’s finding
that Hwang discloses molding an interlocking portion (i.e., body 1) within a
jacket 3 of synthetic cork stopper material, such that body 1 is positioned in
an interior space within jacket 3, as claimed. See also, e.g., Hwang, Fig. 2.
Accordingly, Appellant’s arguments do not apprise us of error in the
Examiner’s findings, and we sustain the Examiner’s rejection of independent
claim 11 under 35 U.S.C. § 102(b) as anticipated by Hwang. Appellant
chose not to present separate arguments for the patentability of claim 14,
which depends from 11, and therefore, we also sustain the Examiner’s
rejection of claim 14 under 35 U.S.C. § 102(b) as anticipated by Hwang.
Appeal Br. 4—6.
Rejection II
Claim 12, which depends from independent claim 11, recites,
“wherein said interlocking piece8 is pre-loaded onto a mold protrusion
approximating a handle portion before said synthetic cork stopper material is
injected into the mold.” Appeal Br. 3^4 (Claims App.’x). Claim 13, which
also depends from independent claim 11, recites, “wherein said mold
includes a projection approximating a handle portion, and wherein said
8 The claim term “interlocking piece” lacks antecedent basis, as compared
to the recited “interlocking portion.”
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handle portion is configured to provide an aperture through said molded
synthetic cork material and interlocking portion.” Id. at 4 (Claims App’x).
Regarding claims 12 and 13, the Examiner relies on Hwang for
disclosing the structure of the composite synthetic cork stopper, including
plug 2 (i.e., handle) and also for disclosing co-molding Hwang’s body 1
(i.e., interlocking portion) to jacket 3 (i.e., synthetic cork stopper material).
Final Act. 3. The Examiner determines, however, that Hwang “fails to
provide details in regard to the mold or molding method,” and relies on
Grannen for teaching “a molding method that includes molding a plastic
component onto an insert (37) while the insert is included within a mold.”
Id. (citing Grannen 4:48—5:25). The Examiner also determines that Hwang
teaches that a projection “acts to form an aperture in the injected material.”
Id. (citing Hwang, Fig. 4). The Examiner reasons that it would have been
obvious “to substitute [Grannen’s] more specific co-molding method ... for
[Hwang’s] the generic co-molding method ... to provide a molding method
that provided a projection forming an aperture, because it is prima facie
obvious to substitute one known prior element for another to achieve
predictable results.” Id. at 4 (citation omitted). The Examiner further
reasons that “[w]hile Grannen ... is not a method used to specifically form a
bottling cork, Grannen ... is a teaching of co-molding operations that are
known in the prior art.” Ans. 7.
Appellant argues that “Grannen only generically indicates battery
terminal posts (lead members) and lids may be molded together, and indeed,
doesn’t relate in any way to corks, stoppers, or the like.” Appeal Br. 7.
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Appellant also argues that, in Grannen, “[t]here is no such protrusion
approximating a stopper handle portion (e.g., no interlocking aspect for such
a handle portion), as is required by claims 12 and 13,” but “[rjather, Grannen
simply stands for the idea that a portion of a mold surface can support a lead
insert for injection molding.” Id.', see also Reply Br. 6 (“While [Grannen’s
mold protrusion 63] does provide a basic aperture, it does not provide a
handle in the context of [Appellant’s] claim limitations.”). Appellant
concludes that “Grannen does not remedy the deficiencies of Hwang.” Id. at
8.
First, as discussed supra, with respect to independent claim 11, we
do not agree that Appellant’s arguments have shown deficiencies in the
Examiner’s findings with respect to Hwang. Second, Appellant’s arguments
regarding Grannen attack Grannen for failing to disclose structures for
which the Examiner relies on Hwang. Thus, Appellant’s arguments do not
apprise us of error in the Examiner’s findings or reasoning with respect to
claims 12 and 13. Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Accordingly, we sustain the Examiner’s rejection of claims 12 and 13
under 35 U.S.C. § 103(a) as unpatentable over Hwang and Grannen.
NEW GROUND OF REJECTION
We reject claim 11 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
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Claims, when read in light of the specification, must “reasonably
apprise those skilled in the art both of the utilization and scope of the
invention” using language “as precise as the subject matter permits.” In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). “A claim is indefinite if its
legal scope is not clear enough that a person of ordinary' skill in the art could
determine whether a particular [embodiment] infringes or not.” Geneva
Pharms., Inc., 349 F.3d 1373, 1384 (finding indefinite a claim interpretation
where determining whether a given chemical composition would infringe
depended on the particular bacteria to which the composition was applied,
and the bacteria was not specified in the claim.).
As set forth supra, claim 11 recites, in relevant part, “further wherein
the interlocking portion is provided within the interior space such that when
the synthetic cork stopper portion is placed on the handle portion, the
interlocking portion is not visible.” However, claim 11 uses the transitional
phrase “comprising,” which allows the claims to encompass a device with
additional structures that are not recited in the claim. Thus, it is unclear
whether an interlocking portion would or would not be visible in the
presence of additional (unclaimed) structures (i.e., an opaque or transparent
bottle in Hwang). For example, claim 1 reads on Hwang’s cork stopper
when placed on an opaque bottle, but does not read on Hwang’s cork
stopper when placed on a translucent bottle. Moreover, it is unclear from
which vantage point visibility is to be judged.
Because claims 12—14 depend from claim 11, and therefore,
incorporate the limitations of claim 11, we also reject claims 12—14 under
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35 U.S.C. § 112, second paragraph, as being indefinite.
DECISION
We affirm the Examiner’s rejections of claims 11—14.
We enter a new ground of rejection of claims 11—14 under 35 U.S.C.
§112, second paragraph, as being indefinite.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
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claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R, $ 41.50(b)
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