Ex Parte Labadie et al

Patent Trial and Appeal Board

Oct 26, 2017

12777743 (P.T.A.B. Oct. 26, 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.
12/777,743 05/11/2010 Joseph P. Labadie 082116.0338 4993
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
10/30/2017 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 JOSEPH P. LABADIE, LANCE J. NOVOTNY,
and RICHARD R. JOHNSTON
Appeal 2016-002645
Application 12/777,743
Technology Center 3700
Before: CHARLES N. GREENHUT, LYNNE H. BROWNE, and
BRENT M. DOUGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3—11, 13, 14, 16—20 and 22—24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
Appeal 2016-002645
Application 12/777,743
CLAIMED SUBJECT MATTER
The claims are directed to a threaded finish for non-removable
closures. Claim 1, reproduced below with emphasis added, is illustrative of
the claimed subject matter:
1 A finish portion for a plastic container, the finish portion
defining a vertical axis and comprising:
a threaded portion having at least one helical thread and a
flat thread positioned beneath the helical thread, the helical
thread being merged into the flat thread, wherein the threaded
portion includes a maximum thread diameter;
a transfer bead extending radially outwardly from a lower
end of the finish portion, the transfer bead positioned beneath the
threaded portion and the transfer bead extending entirely about
the finish portion; and
a gripping indentation defined between the threaded
portion and the transfer bead, wherein the transfer bead
comprises a vertical outer cylindrical surface and an upper
surface disposed between the vertical outer cylindrical surface
and the gripping indentation to define a uniform cross-sectional
profile of the transfer bead about an entire circumference of the
finish portion, with no separate ledge having a vertical outer
surface defined between the gripping indentation and the transfer
bead.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rohr
Taylor
Zoppas
US 5,494,174 Feb. 27, 1996
US 2004/0140284 A1 July 22, 2004
US 2010/0314348 A1 Dec. 16, 2010
REJECTIONS
Claims 1, 3—11, 13, 14, 16—20, 23, and 24 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Taylor and Rohr.
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Appeal 2016-002645
Application 12/777,743
Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Taylor, Rohr, and Zoppas (WO 2009/053921 A9; Apr. 30, 2009, (US
2010/0314348 Al)).
OPINION
In order to satisfy the limitation emphasized above, a version of which
appears in each of the independent claims before us, claims 1, 9 and 16, the
Examiner relies on a cross section taken parallel to a circumference of
Taylor’s flange 214 (i.e., horizontal and normal to the page as viewed in
Figure 2 of Taylor; see Final Act. 4 (annotating Taylor Fig. 2)). In the
Examiner’s view:
Appellants’ claim language states, “a cross-sectional profile”,
thus any cross section can be used. Appellant does not limit the
cross section to a “side” profile, which is argued. By including
“cross-sectional” before “profile”, Appellants’ claim language
allows for the cross section to be taken and interpreted in any
manner and in any direction.
Ans. 10. However, the Examiner’s interpretation incorrectly ignores
language of the claim. All words in a claim must be considered in judging
the obviousness of the claimed subject matter. See In re Wilson, 424 F.2d
1382, 1385. As Appellants correctly and concisely argue:
Even if the term “cross-sectional profile” could be interpreted as
set [forth] by the Examiner (i.e., “in any manner and in any
direction”). . . the Examiner ignores that each independent claim
now on appeal further expressly states and recites that the cross-
sectional profile is defined by the vertical outer cylindrical
surface and the upper surface of the transfer bead.
Reply Br. 5.
As the upper surface of Taylor’s flange 214, interpreted by the
Examiner as the recited “transfer bead” (Final Act. 3) does not appear to
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Appeal 2016-002645
Application 12/777,743
contribute in any way to defining the cross section identified by the
Examiner, the cross section identified by the Examiner (Final Act. 4
(annotating Taylor Figure 2)) does not satisfy the claim language. No other
prior-art evidence is relied on by the Examiner to cure this deficiency.
Accordingly, the Examiner has failed to demonstrate the unpatentability of
the subject matter claimed. In re Warner 379 F.2d 1011, 1016 (CCPA 1967)
(“[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be entitled
to a patent unless,’ concerning novelty and unobviousness, clearly places a
burden of proof on the Patent Office which requires it to produce the factual
basis for its rejection of an application under sections 102 and 103.”).
DECISION
The Examiner’s rejections are reversed.
REVERSED
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