Ex Parte Heisner et al

Patent Trial and Appeal Board

Jul 31, 2017

13423151 (P.T.A.B. Jul. 31, 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.
13/423,151 03/16/2012 David B. Heisner 082116.0432 1084
114699 7590
Baker Botts LLP
30 Rockefeller Plaza
New York, NY 10112-4498
EXAMINER
CASTILLO, KEVIN CHARLES
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
DLNYDOCKET@BAKERBOTTS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID B. HEISNER, SHELDON E. YOURIST,
J. ANDREW OSGOOD, and DAVID P. PICCIOLI
Appeal 2016-003517
Application 13/423,151
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David B. Heisner et al. (Appellants)1 appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1—6, 8—14, 17, 18, and 20—22
under 35 U.S.C. § 102(b) as anticipated by Payne (US 5,927,533, iss. July
27, 1999). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Graham Packaging
Company L.P. Appeal Br. 2.
Appeal 2016-003517
Application 13/423,151
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An asymmetric pressurized plastic container, comprising:
a bottom;
a shoulder portion;
a finish portion that is unitary with an upper end of the
shoulder portion; and
a generally cylindrical main body portion having a
sidewall that is shaped to be asymmetrical with respect to a
central longitudinal axis thereof, the sidewall having a first
feature defined therein on a first side of the main body portion
and a second feature defined therein on a second side of the main
body portion separate from the first feature, and wherein the
second feature extends along only a portion of a circumference
of the main body portion and configured to provide at least
partial compensation against lateral deflection of the container
along the central longitudinal axis caused by the first feature.
DISCUSSION
Claims 1—4, 6, and 11
The Examiner finds that Payne discloses an asymmetrical pressurized
container including, in relevant part, a
sidewall having a first feature [29, 30, 31] defined therein on a
first side of the main body portion and a second feature defined
therein on a second side of the main body portion separate from
the first feature [Fig A], and wherein the second feature extends
along only a portion of a circumference [as shown in Fig A, as
finger recess 28 interrupts the groove] of the main body portion.
Final Act. 2 (brackets in original). The Examiner provides an annotated
reproduction of Payne’s Figure 1 (“Fig A —Annotated Fig 1 of Payne,”
hereinafter “Figure A”) to illustrate features corresponding to various
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Application 13/423,151
elements recited in claim 1. Id. at 3.2 The Examiner’s Figure A is
reproduced below:
Figure A denotes particular regions, demarcated by horizontal lines,
of Payne’s bottle as “Finish Portion,” “Shoulder Portion,” “Bumper
Portion,” “Main Body Portion,” and “Bottom,” respectively. Id. Figure A
includes a rectangular box denoting the structure the Examiner considers to
correspond to the claimed “Second Feature/Compensation Groove.” Id.
2 The Examiner’s “Fig B — Annotated Fig 1 of Payne” (hereinafter “Figure
B”) provided on page 6 of the Final Action, is also an annotated
reproduction of Payne’s Figure 1. Figures A and B appear to be identical.
Compare Final Act. 3, with id. at 6.
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Application 13/423,151
Appellants argue that “Payne does not disclose an asymmetric
container having a first feature on a first side of the main body portion and a
second feature or compensation groove on a second side of the main body
portion.” Appeal Br. 8 (italics omitted). In particular, Appellants assert that
“Payne specifies that the circumferential indentation [34] is a ‘continuous
circumferential indentation’ between the upper portion and the lower
portion.” Id. at 9 (citing (Payne, col. 1,1. 67—col. 2,1. 1; col. 2,1. 66—col. 3,
1. 5)). According to Appellants,
the circumferential indentation 34 of Payne is not disposed on a
second side separate from the first feature (e.g., finger recesses
29, 30, and 31), but rather must be disposed on both the first and
second sides 24 and 26 such that circumferential indentation [34]
can merge with the top-most finger recess and with the thumb
depression, respectively.
Id.
Appellants’ argument is not persuasive. As discussed above, the
Examiner does not rely on continuous circumferential indentation 34 alone
as corresponding to the second feature. Rather, the Examiner identifies as
the second feature (or compensation groove) an area of Payne’s bottle 10 to
the right of axis 18 that encompasses a portion of circumferential indentation
34 between body 12 and thumb depression 32. Final Act. 3 (Figure A).
Appellants acknowledge that “Payne specifies that the profile of the
continuous circumferential indentation 34 ‘changes by merger with the top­
most finger recess 28 on the one side 24, and by merger with the thumb
depression 32 on the opposite side 26 of bottle 10.’” Reply Br. 5 (citing
Payne, col. 3,11. 59-61). In other words, the changed profile of Payne’s
circumferential indentation 34, where it merges with thumb depression 32,
corresponds to the “second feature,” and this second feature is disposed on a
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Application 13/423,151
second side (i.e., opposite side 26) of the bottle separate from the first
feature (i.e., finger recesses 29, 30, and 31 on side 24). The Examiner
explains that a “feature is an attribute or aspect of something” (Ans. 11),
which is reasonable considering that the term “feature” is broadly defined as
“[a] prominent part or characteristic” (Merriam-Webster’s Collegiate
Dictionary (11th ed. 2003)) and such a definition is not inconsistent with
Appellants’ use of the term in the Specification and claims.
Moreover, to the extent that Appellants appear to argue that the
second feature must be disposed on only the second side of the bottle, such
an argument is unpersuasive because it is not commensurate with the scope
of claim 1, which does not require that the second feature be disposed on
only the second side. See In re Self 671 F.2d 1344, 1348 (CCPA 1982)
(noting that it is well established that limitations not appearing in the claims
cannot be relied upon for patentability). Instead, claim 1 only recites that the
second feature is “defined therein on a second side of the main body portion
separate from the first feature.” Appeal Br. 18 (Claims App.). We agree
with the Examiner that the identified second feature of Payne is separate
from the identified first feature because the two features do not correspond
to the same part. See Ans. 9.
Appellants also argue that “Payne does not disclose or suggest an
asymmetric container having a second feature or compensation groove
extending along only a portion of a circumference of the main body
portion.” Appeal Br. 9 (italics omitted). In particular, Appellants assert that
“Payne specifically discloses a continuous circumferential indentation
extending entirely about a circumference of the thermoplastic bottle.” Id. at
6. According to Appellants, “[t]he Examiner’s interpretation [of the claim]
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Application 13/423,151
therefore must render superfluous the claim feature that the second feature or
compensation groove extends along ‘only a portion of a circumference of the
main body portion.’” Reply Br. 5 (citing Stumbo v. Eastman Outdoors, Inc.
508 F.3d 1358, 1362 (Fed. Cir. 2007)). This argument is not persuasive of
error.
As discussed above, the Examiner interprets the changed profile of
Payne’s circumferential indentation 34, where it merges with thumb
depression 32, as corresponding to the “second feature.” See Final Act. 2—3
(Figure A). As shown in Figure 1 of Payne, thumb depression 32 extends
along only a portion of the bottle main body circumference. It follows that
the merger of circumferential indentation 34 with thumb depression 32 (i.e.,
the changed profile) likewise extends along only a portion of the bottle main
body circumference. The Examiner also explains that the second feature
extends along only a portion of the circumference because it is interrupted
by finger recess 28 (see Final Act. 2), which Appellants do not persuasively
refute. Further, regarding the Examiner’s interpretation of “a portion of a
circumference of the main body portion” as reading on the section of
Payne’s bottle limited to where circumferential indentation 34 changes
profile as it merges with thumb depression 32 and is interrupted by finger
recess 28, Appellants do not persuade us that such an interpretation
effectively reads out of the claim the constraints mandated by “portion.”3
See Reply Br. 5 (citing Stumbo, 508 F.3d at 1362).
3 We note that an ordinary meaning of “portion” is simply a “limited part of
a whole.” Merriam-Webster’s Collegiate Dictionary (11th ed. 2003). This
ordinary meaning is consistent with the claim language and Appellants’
Specification, which does not impart any special definition to compel a
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Application 13/423,151
For the above reasons, Appellants do not apprise us of error in the
Examiner’s rejection of claim 1. Accordingly, we sustain the rejection of
claim 1, and its dependent claims 2-4, 6, and 11, for which Appellants do
not present any separate arguments for patentability and which, thus, fall
with claim 1, under 35 U.S.C. § 102(b) as anticipated by Payne. See Appeal
Br. 11 (relying on the arguments presented for patentability of claim 1).
Claim 5
In addition to the arguments advanced for independent claim 1,
discussed above, Appellants further contend, “the circumferential
indentation of Payne cannot be ‘substantially diametrically opposed from the
first feature,’ as recited in claim[] 5.” Appeal Br. 12. In particular,
Appellants assert that “the profile of the circumferential indentation 34
changes by merging with the top-most finger recess 28 on side 24, which is
on the same side as features 19, 30, and 31.” Id. at 11—12. This argument is
also unpersuasive.
As discussed above, the Examiner relies on the changed profile of
Payne’s circumferential indentation 34, where it merges with thumb
depression 32, as corresponding to the second feature or compensation
groove, and this feature is disposed on a second side (i.e., opposite side 26)
of the bottle separate from the first feature (i.e., finger recesses 29, 30, and
31 on side 24). Appellants acknowledge that “Payne specifies that the
profile of the continuous circumferential indentation 34 ‘changes by merger
with the top-most finger recess 28 on the one side 24, and by merger with
different, or narrower, construction of “portion,” as recited in the claim. See,
e.g., Spec., para. 35.
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Application 13/423,151
the thumb depression 32 on the opposite side 26 of bottle 10.’” Reply Br. 5
(citing Payne, col. 3,11. 59—61) (second emphasis added). Given that Payne
discloses finger recesses 29, 30, and 31 (i.e., first feature) on side 24, and the
merger of circumferential indentation 34 with thumb depression 32 (i.e.,
compensation groove) on opposite side 26, Appellants do not apprise us of
error in the Examiner’s finding that Payne discloses the limitation “wherein
the compensation groove is positioned so as to be substantially diametrically
opposed from the first feature,” as called for in claim 5 (Appeal Br. 18
(Claims App.)). Accordingly, we sustain the rejection of claim 5 as
anticipated by Payne.
Claim 8
Dependent claim 8 recites that “the portion of the circumference of
the main body portion subtends an angle that is less than 180°.” Appeal Br.
19 (Claims App.). Appellants argue that Payne fails to disclose this feature.
See Appeal Br. 12—13. We agree.
In rejecting claim 8, the Examiner finds that, “as shown in Fig A, the
angle made by the compensation groove is less than 180°.” Final Act. 4.
Figure A shows that the area identified by the Examiner as corresponding to
the second feature or compensation groove extends along a portion of the
main body circumference up to axis 18, where it meets finger recess 28. In
this regard, Payne discloses that “[t]he shape of the cylindrical body 12 may
be related to a central vertical axis 18, and to two orthogonal planes 20 and
22 (FIG. 4) that intersect on the axis 18.” Payne, col. 3,11. 9-12; see also
id., Fig. 4 (depicting orthogonal planes 20 and 22 intersecting at axis 18). In
other words, comparing Figures 1 and 4 of Payne, it is apparent that portions
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Application 13/423,151
of the circumference of main body 12 lining up with axis 18 in Figure 1 (and
the Examiner’s Figure A) lie 180° from one another around the
circumference of main body 12.
Given that the second feature or compensation groove identified by
the Examiner in Figure A extends along a portion of the circumference up to
the line marked by axis 18 before it is interrupted by finger recess 28, the
second feature or compensation groove appears to extend to about 180° of
the circumference. However, the Examiner does not point to, nor do we
find, any explicit disclosure in Payne regarding the particular angle which
this portion subtends around the circumference. In other words, it is not
apparent from Payne’s figures or written disclosure that the identified
second feature or compensation groove extends along less than 180° of the
circumference. Moreover, “it is well established that patent drawings do not
define the precise proportions of the elements and may not be relied on to
show particular sizes if the specification is completely silent on the issue.”
Hockerson-Halbertstadt, Inc. v. Avia Group Inti, Inc., 222 F.3d 951, 956
(Fed. Cir. 2000) (citation omitted).
For the above reasons, the Examiner’s finding that Payne discloses
that “the portion of the circumference of the main body portion subtends an
angle that is less than 180°” is not supported by a preponderance of the
evidence. Accordingly, we do not sustain the rejection of claim 8 as
anticipated by Payne.
Claim 9
Dependent claim 9 recites that “the first feature comprises a plurality
of finger recesses having a first maximum depth and wherein the
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Application 13/423,151
compensation groove has a second maximum depth, and wherein the second
maximum depth is greater than the first maximum depth.” Appeal Br. 19
(Claims App.).
In rejecting claim 9, the Examiner points to Figure A and explains that
“the depth[s] of the finger recesses are greater than the depth of the
compensation groove.” Final Act. 4. Appellants argue, and we agree, that
“Payne provides no disclosure regarding the depth of the finger recesses or
circumferential indentation, and does not disclose or suggest that the
drawings are indeed to scale.” Appeal Br. 14. “[I]t is well established that
patent drawings do not define the precise proportions of the elements and
may not be relied on to show particular sizes if the specification is
completely silent on the issue.” Hockerson-Halbertstadt, Inc., 222 F.3d at
956 (Where a patent was devoid of any indication that the drawings were to
scale, the drawings could not be relied upon to construe whether the term
“central longitudinal groove” required that the width of the groove be less
than the combined width of the fins). Here, Payne is completely silent on
the proportions of finger recesses 28, 29, 30, and 31 relative to
circumferential indentation 34 and thumb depression 32. Thus, the
Examiner’s finding that Payne discloses that the finger recesses have a
maximum depth that is deeper than the maximum depth of the compensation
groove is not supported by a preponderance of the evidence. Moreover,
even accepting the Examiner’s finding, as Appellants point out (Appeal Br.
13), the relationship set forth in the Examiner’s finding (i.e., that the finger
recess depths are greater than the compensation groove depth) is opposite
the relationship recited in claim 9,
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Accordingly, for at least the above reasons, we do not sustain the
rejection of claim 9 as anticipated by Payne.
Claims 10, 12—14, 17, 18, and 20—22
Independent claim 12 recites, in relevant part, “a generally cylindrical
bumper portion positioned at a lower end of the shoulder portion and
defining a first longitudinal axis” and a “main body portion having a
generally cylindrical sidewall that defines a second longitudinal axis that is
offset from the first longitudinal axis.” Appeal Br. 20 (Claims App.). Claim
10, which depends from independent claim 1, similarly recites “a
substantially cylindrical bumper portion that is positioned between the main
body portion and the shoulder portion, and wherein the bumper portion has a
central longitudinal axis that is offset from the central longitudinal axis of
the main body portion.” Id. at 19; see also id. at 18 (claim 1 reciting “a
generally cylindrical main body portion”). Appellants argue that Payne fails
to disclose such a feature. See Appeal Br. 10-11; Reply Br. 6—7. We agree
with Appellants.
In rejecting claims 10 and 12, the Examiner finds that Payne discloses
a first longitudinal axis and a second longitudinal axis. See Final Act. 4, 5
(citing the Examiner’s Figures A and B). The Examiner explains that
“Appellants] do[] not claim the longitudinal axis is a central longitudinal
axis, but rather only a longitudinal axis, thus any axis within the main body
portion can be defined as the second longitudinal axis of the main body
portion.” Ans. 11—12.
Appellants persuasively assert that the Examiner’s position is based
upon an overly-broad interpretation of the claim language. See Reply Br. 2
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Application 13/423,151
(asserting that “the Examiner incorrectly characterizes Payne as disclosing a
second longitudinal axis offset from a first longitudinal axis based on
misinterpretations of claim language”). More specifically, “the first and
second longitudinal axes of claim 12 are defined by the generally cylindrical
bumper portion and the generally cylindrical main body portion,
respectively.” Id. at 7 (emphasis added). In other words, claim 12 requires
that a generally cylindrical bumper portion defines the first longitudinal axis,
and a generally cylindrical main body portion defines the second
longitudinal axis. See Appeal Br. 20 (Claims App.). Claim 10 similarly
recites that the substantially cylindrical bumper portion has (i.e., defines) a
central longitudinal axis that is offset from the central longitudinal axis of
(i.e., defined by) the generally cylindrical main body portion. See id. at 18—
19. In this regard, the first and second longitudinal axes are defined by
generally cylindrical portions of the bottle (i.e., bumper and main body),
wherein the axes are offset and, thus, the generally cylindrical portions are
also offset.
Payne discloses that “[t]he shape of the cylindrical body 12 may be
related to a central vertical axis 18, and to two orthogonal planes 20 and 22
(FIG. 4) that intersect on the axis 18.” Payne, col. 3,11. 9-12. Payne also
discloses, with reference to Figures 1—3, that “the upper portion 14 of the
bottle 10 is shaped as a surface of revolution about the axis 18 and is,
therefore, symmetric about the axis 18,” but, “[t]he lower portion 16 ... is
asymmetric about the axis 18.” Id., 11. 18—22. In other words, Payne’s
cylindrical body 12 defines central axis 18, and upper portion 14 is
symmetric about axis 18. However, we agree with Appellants that Payne’s
“lower portion being asymmetric about the axis 18 does not imply or suggest
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that the lower portion defines a different longitudinal axis offset from the
first longitudinal axis.” Appeal Br. 10 (citing Payne, col. 3,11. 9-11, Fig. 1).
The Examiner does not point to, nor do we find, any disclosure in Payne of a
second longitudinal axis that is defined by a second generally cylindrical
portion and is offset from the first longitudinal axis. Rather, as shown in
Figure A, the Examiner’s identified “second longitudinal axis” appears
merely to be an arbitrary line offset from axis 18, and we see no indication
that this line corresponds to an axis that is defined by the generally
cylindrical main body portion. Thus, the Examiner’s finding that Payne
discloses a second longitudinal axis defined by a generally cylindrical main
body portion and offset from the first longitudinal axis is not supported by a
preponderance of the evidence.
Accordingly, for the above reasons, we do not sustain the rejection of
claims 10 and 12, or of claims 13, 14, 17, 18, and 20—22 depending from
claim 12, as anticipated by Payne.
DECISION
The Examiner’s decision rejecting claims 1—6, and 11 is affirmed.
The Examiner’s decision rejecting claims 8—10, 12—14, 17, 18, and
20—22 is reversed.
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-IN-PART
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