Ex parte KRISHNAKUMAR et al.

Board of Patent Appeals and Interferences

Mar 27, 1998

08047047 (B.P.A.I. Mar. 27, 1998)

Application for patent filed April 12, 1993. According to1
the appellants, the application is a continuation of Application
No. 07/831,053, filed February 4, 1992, now abandoned, which was
a division of Application No. 07/493,779, filed March 15, 1990,
now U.S. Patent No. 5,104,706.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SUPPAYAN M. KRISHNAKUMAR, WAYNE N. COLLETTE
and THOMAS E. NAHILL
____________
Appeal No. 95-3789
Application No. 08/047,0471
____________
HEARD: March 3, 1998
____________
Before COHEN, PATE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection
of claims 15 through 22, which are all of the claims pending in
this application.
We REVERSE and enter a new rejection pursuant to 37 CFR
Appeal No. 95-3789
Application No. 08/047,047
§ 1.196(b).
Appeal No. 95-3789 Page 3
Application No. 08/047,047
This ground of rejection was set forth as a new ground of2
rejection in the examiner's answer (Paper No. 22, mailed March
22, 1995).
BACKGROUND
The appellants' invention relates to a hot filled container
and a method of making a hot filled container. Claims 15 and 19
are representative of the subject matter on appeal and a copy of
those claims, as they appear in the appendix to the appellants'
brief, is attached to this decision.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Agrawal et al. (Agrawal) 4,497,855 Feb. 5, 1985
Collette 4,755,404 July 5, 1988
Miller et al. (Miller) 4,785,950 Nov. 22, 1988
Cook 1,062,671 Sep. 18, 1979
(Canada)
Claims 15, 16, 18, 19, 20 and 22 stand rejected under
35 U.S.C. § 103 as being unpatentable over Collette in view of
Cook and Agrawal.2
Appeal No. 95-3789 Page 4
Application No. 08/047,047
Id.3
Claims 17 and 21 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Collette in view of Cook, Agrawal and
Miller.3
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellants regarding the § 103 rejections,
we make reference to the examiner's answer and the communication
regarding the reply brief (Paper No. 24, mailed June 12, 1995)
for the examiner's complete reasoning in support of the
rejections, and to the appellants' brief (Paper No. 21, filed
November 30, 1994) and reply brief (Paper No. 23, filed May 22,
1995) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 95-3789 Page 5
Application No. 08/047,047
Before addressing the examiner's rejections based upon prior
art, it is an essential prerequisite that the claimed subject
matter be fully understood. Analysis of whether a claim is
patentable over the prior art under 35 U.S.C. §§ 102 and 103
begins with a determination of the scope of the claim. The
properly interpreted claim must then be compared with the prior
art. Claim interpretation must begin with the language of the
claim itself. See Smithkline Diagnostics, Inc. v. Helena
Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed.
Cir. 1988). Accordingly, we will initially direct our attention
to appellants' independent claims 15 and 19 to derive an
understanding of the scope and content thereof.
Before turning to the proper construction of independent
claims 15 and 19, it is important to review some basic principles
of claim construction. First, and most important, the language
of the claim defines the scope of the protected invention. Yale
Lock Mfg. Co. v. Greenleaf, 117 U.S. 554, 559 (1886) ("The scope
of letters patent must be limited to the invention covered by the
claim, and while the claim may be illustrated it cannot be
enlarged by language used in other parts of the specification.");
Autogiro Co. of Am. v. United States, 384 F.2d 391, 396, 155 USPQ
Appeal No. 95-3789 Page 6
Application No. 08/047,047
697, 701 (Ct. Cl. 1967) ("Courts can neither broaden nor narrow
the claims to give the patentee something different than what he
has set forth [in the claim]."). See also Continental Paper Bag
Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419 (1908); Cimiotti
Unhairing Co. v. American Fur Ref. Co., 198 U.S. 399, 410 (1905).
Accordingly, "resort must be had in the first instance to the
words of the claim" and words "will be given their ordinary and
accustomed meaning, unless it appears that the inventor used them
differently." Envirotech Corp. v. Al George, Inc., 730 F.2d 753,
759, 221 USPQ 473, 477 (Fed. Cir. 1984). Second, it is equally
"fundamental that claims are to be construed in the light of the
specifications and both are to be read with a view to
ascertaining the invention." United States v. Adams, 383 U.S.
39, 49, 148 USPQ 479, 482 (1966).
A review of independent claims 15 and 19 reveals that the
phrase "on the order of" is used three times in each claim.
Specifically, each claim recites that the planar stretch ratio is
"on the order of 9 to 12," that the temperature of the hot
product is "on the order of 185-190°F," and that the container is
internally pressurized at a pressure "on the order of 40 to 45
psig."
Appeal No. 95-3789 Page 7
Application No. 08/047,047
See White v. Dunbar, 119 U.S. 47, 51-52 (1886) and4
Townsend Engineering Co. v. HiTec Co. Ltd., 829 F.2d 1086, 1089-
91, 4 USPQ2d 1136, 1139-40 (Fed. Cir. 1987).
The phrase "on the order of" is a term of degree. When a
word of degree is used, it is necessary to determine whether the
specification provides some standard for measuring that degree.
See Seattle Box Company, Inc. v. Industrial Crating & Packing,
Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1984).
Admittedly, the fact that some claim language, such as the
term of degree mentioned supra, may not be precise, does not
automatically render the claim indefinite under the second
paragraph of § 112. Seattle Box, supra. Nevertheless, the need
to cover what might constitute insignificant variations of an
invention does not amount to a license to resort to the unbridled
use of such terms without appropriate constraints to guard
against the potential use of such terms as the proverbial nose of
wax.4
In Seattle Box, the court set forth the following
requirements for terms of degree:
When a word of degree is used the district court must
determine whether the patent's specification provides
some standard for measuring that degree. The trial
Appeal No. 95-3789 Page 8
Application No. 08/047,047
See In re Vamco Machine & Tool, Inc., 752 F.2d 1564, 2245
USPQ 617 (Fed. Cir. 1985).
court must decide, that is, whether one of ordinary
skill in the art would understand what is claimed when
the claim is read in light of the specification.
In Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758
F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985), the court
added:
If the claims, read in light of the specifications
[sic], reasonably apprise those skilled in the art both
of the utilization and scope of the invention, and if
the language is as precise as the subject matter
permits, the courts can demand no more.
Indeed, the fundamental purpose of a patent claim is to
define the scope of protection and hence what the claim5
precludes others from doing. All things considered, because a
patentee has the right to exclude others from making, using and
selling the invention covered by a United States letters patent,
the public must be apprised of what the patent covers, so that
those who approach the area circumscribed by the claims of a
patent may more readily and accurately determine the boundaries
of protection in evaluating the possibility of infringement and
Appeal No. 95-3789 Page 9
Application No. 08/047,047
Our review of the record reveals that the appellants (see6
Paper No. 7, filed August 31, 1992) canceled original claim 4
which claimed "a pressure of 40-45 psig" and added new claim 6
which claimed "a pressure on the order of 40 to 45 psig." In our
view, this clearly indicates that pressures outside of 40-45 psig
are now encompassed by the phrase "a pressure on the order of 40
to 45 psig."
dominance. See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204,
208 (CCPA 1970).
In the present case, we have reviewed the appellants'
disclosure to help us determine the meaning of the phrase "on the
order of" as used in claims 15 and 19. That review has revealed
that the appellants' specification utilizes the phrase "on the
order of" on pages 2-4 and 7-9. However, these portions of the6
disclosure do not provide explicit guidelines defining the phrase
"on the order of." Furthermore, there are no guidelines that
would be implicit to one skilled in the art defining the phrase
"on the order of" that would enable one skilled in the art to
ascertain what is meant by the phrase "on the order of." For
example, one cannot ascertain if a pressure of 35 psig is "on the
order of 40 to 45 psig." Absent such guidelines, we are of the
opinion that a skilled person would not be able to determine the
metes and bounds of the claimed invention with the precision
Appeal No. 95-3789 Page 10
Application No. 08/047,047
required by the second paragraph of 35 U.S.C. § 112. See In re
Hammack, supra.
Since the appellant's disclosure fails to set forth an
adequate definition as to what is meant by the phrase "on the
order of" as used in claims 15 and 19, the appellant has failed
to particularly point out and distinctly claim the invention as
required by the second paragraph of 35 U.S.C. § 112.
Secondly, independent claims 15 and 19 are misdescriptive of
the claimed subject matter. The appellants' specification
provides the following description of the process of the
invention. The invention is practiced by hot filling a
container, immediately thereafter adding liquid nitrogen,
followed by immediately closing the container "wherein the liquid
nitrogen becomes nitrogen gas and internally pressurizes the
container." Specification page 1. Thus, the disclosure is to
applying the closure and then internally pressurizing the
container. Both independent claims indicate that the container
is pressurized before closure. In claim 15, the preamble states
that the container is “filled with hot liquid product and
thereafter internally pressurized and then sealed with a
Appeal No. 95-3789 Page 11
Application No. 08/047,047
closure." Claim 19 positively recites the step of "internally
pressurizing . . ." and thereafter recites the step of "applying
a closure. . . ." As can readily be seen the steps claimed do
not comport with the order of steps in the process given in the
appellants' disclosure. Thus, claims 15 and 19 are
misdescriptive of the process as disclosed and are therefore
indefinite.
Thirdly, both of the independent claims on appeal call for a
"hot filled container of the type. . . ." We have often held
that language such as this is indefinite for the reason that no
definitive statement in the specification explains what type of
container "of the type" is intended to cover. Cf. Ex parte
Kristensen, 10 USPQ2d 1701 (Bd. Pat. App. & Int. 1989)("for high
pressure cleaning units or similar apparatus"). See also Ex
parte Steigerwald, 131 USPQ 74 (Bd. App. 1981)("such as"), Ex
parte Hasche, 86 USPQ 481 (Bd. App. 1949)("which may be," and
"such as, for example"), Ex parte Hall, 83 USPQ 38 (Bd. App.
1948)("material such as rock wool or asbestos,"), Ex parte Lean,
72 USPQ 453 (Bd. Pat. App. 1947)("and like pests" in preamble),
Ex parte Caldwell, 1906 C.D. 58 (Comm'r. 1905), and Ex parte
Appeal No. 95-3789 Page 12
Application No. 08/047,047
Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Int. 1992)("or similar
structure").
Finally, with respect to claim 15, another issue is raised.
In our view, the subject matter encompassed by claim 15 is not
clearly set forth. First, it is unclear to us if claim 15 is
reciting an "intermediate product of a sealed container filled
with a hot liquid product (185-190°F) and internally pressurized
(40 to 45 psig)" or a "final product of a sealed container on a
shelf somewhere at ambient temperature and unknown internal
pressure." Our difficulty stems from the appellants use of the
phrase "In a hot filled container" (claim 15, line 1) and their
use of product-by process limitations (claim 15, last paragraph).
In one sense, these limitations can be construed as limiting the
claimed container to the "intermediate product" as set forth
above. In another sense, these limitations can be construed as
merely describing how the container is assembled. Since the
subject matter of claim 15 is susceptible to at least two
meanings, it is therefore indefinite. Second, the disclosure
does not state, and the claims do not set out, the internal
pressure of the filled container after the container has cooled
to ambient temperature when the claim is construed to recite the
Appeal No. 95-3789 Page 13
Application No. 08/047,047
"final product" as set forth above. Since the claim is stated in
product-by-process format, patentability of the subject matter is
considered with respect to other hot-filled container products at
ambient temperature and pressure. Yet one does not know the
pressure of the product of the claim as it exists in final form
to establish patentability or determine the metes and bounds of
infringement.
NEW GROUND OF REJECTION
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Independent claims 15 and 19 and claims 16 through 18 and 20
through 22 dependent thereon are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the invention, for
the reasons explained above.
35 U.S.C. § 103 Rejections
Considering now the rejections of claims 15 through 22 under
35 U.S.C. § 103, we have carefully considered the subject matter
defined by these claims. However, for reasons stated supra in
Appeal No. 95-3789 Page 14
Application No. 08/047,047
our new rejection under the second paragraph of Section 112
entered under the provisions of 37 CFR 1.196(b), no reasonably
definite meaning can be ascribed to certain language appearing in
the claims. As the court in In re Wilson, 424 F.2d 1382, 165
USPQ 494 (CCPA 1970) stated:
All words in a claim must be considered in judging the
patentability of that claim against the prior art. If no
reasonably definite meaning can be ascribed to certain terms
in the claim, the subject matter does not become obvious --
the claim becomes indefinite.
In comparing the claimed subject matter with the applied
prior art, it is apparent to us that considerable speculations
and assumptions are necessary in order to determine what in fact
is being claimed. Since a rejection based on prior art cannot be
based on speculations and assumptions, see In re Steele, 305 F.2d
859, 862, 134 USPQ 292, 295 (CCPA 1962), we are constrained to
reverse, pro forma, the examiner's rejections of claims 15
through 22 under 35 U.S.C. § 103. We hasten to add that this is
a procedural reversal rather than one based upon the merits of
the section 103 rejections.
CONCLUSION
Appeal No. 95-3789 Page 15
Application No. 08/047,047
To summarize, the decision of the examiner to reject claims
15 through 22 under 35 U.S.C. § 103 is reversed and a new
rejection of claims 15 through 22 under 35 U.S.C. § 112, second
paragraph, has been added pursuant to provisions of 37 CFR
§ 1.196(b).
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final rule
notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203 Off. Gaz.
Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides
that, "A new ground of rejection shall not be considered final
for purposes of judicial review."

37 CFR § 1.196(b) also provides that the appellants, 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 proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 95-3789 Page 16
Application No. 08/047,047
Appeal No. 95-3789 Page 17
Application No. 08/047,047
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 95-3789 Page 18
Application No. 08/047,047
THERESE A. HENDRICKS
WOLF, GREENFIELD & SACKS
FEDERAL RESERVE PLAZA
600 ATLANTIC AVENUE
BOSTON, MA 02210
Appeal No. 95-3789
Application No. 08/047,047
Page 1
APPENDIX
15. In a hot filled container of the type which is filled
with a hot liquid product and thereafter internally pressurized
and then sealed with a closure, the improvement comprising;
an expanded biaxially-oriented polyester preform
container, the container including a neck finish, a body
portion and a base portion;
the body portion having a moderately high degree of
biaxial orientation with orientation induced crystallinity
based on a planar stretch ratio on the order of 9 to 12,
said orientation providing both thermal stability and a high
resistance to internal pressurization of the container;
the base portion being substantially thicker than the
body portion to provide both thermal stability and a high
resistance to internal pressurization of the container; and
the container having been filled with a hot product at
a temperature on the order of 185-190°F, internally
pressurized at a pressure on the order of 40 to 45 psig and
then sealed by application of a closure to the neck finish,
without the container undergoing any substantial vacuum
collapse or creep deformation.
19. In a method of making a hot filled container of the
type which is filled with a hot liquid product and thereafter
internally pressurized and then sealed with a closure, the
improvement comprising;
stretch blow molding a biaxially oriented polyester
container from a preform, the container including a neck
Appeal No. 95-3789
Application No. 08/047,047
Page 2
finish, a body portion and a base portion, the body portion
being stretched at a planar stretch ratio on the order of 9
to 12 to produce a moderately high degree of biaxial
orientation with orientation induced crystallinity, said
orientation providing both thermal stability and a high
resistance to internal pressurization of the container, the
base portion being substantially thicker than the body
portion to provide both thermal stability and a high
resistance to internal pressurization of the container;
filling the container with a hot product at a temperature on
the order of 185-190°F;
internally pressurizing the filled container at a
pressure on the order of 40 to 45 psig; and
applying a closure to the neck finish, wherein the
hot-filled pressurized container does not undergo any
substantial vacuum collapse or creep deformation.
APPEAL NO. 95-3789 - JUDGE NASE
APPLICATION NO. 08/047,047
APJ NASE
APJ PATE
APJ COHEN
DECISION: REVERSED;
37 CFR § 1.196(b)
Prepared By: Delores A. Lowe
DRAFT TYPED: 09 Mar 98
1st Rev. 25 Mar 98
FINAL TYPED:
Heard: 03 Mar 98
3 MAN CONF