Ex Parte Nemire

Patent Trial and Appeal Board

Oct 27, 2017

12825950 (P.T.A.B. Oct. 27, 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.
12/825,950 06/29/2010 Jerald D. Nemire 19060 USA 2562
27081 7590 10/27/2017
OWENS-ILLINOIS, INC.
ONE MICHAEL OWENS WAY
Plaza One - Legal Department
PERRYSBURG, OH 43551-2999
EXAMINER
SZEWCZYK, CYNTHIA
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
10/27/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERALD D. NEMIRE1
Appeal 2017-002181
Application 12/825,950
Technology Center 1700
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1, 2, 4, 5, 10, and 12—14.2 We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).
1 Appellant identifies Owens-Illinois Group, Inc. as the real party in interest.
Appeal Brief filed February 26, 2016 (“App. Br.”), 3.
2 Claims 3, 6—9, and 11 have been withdrawn from consideration. Final
Office entered July 29, 2015 (“Final Act.”), 2.
Appeal 2017-002181
Application 12/825,950
STATEMENT OF THE CASE
Appellant claims methods of molding and making glass bottles and
glass wine bottles. App. Br. 3—10. Claim 1 illustrates the subject matter on
appeal and is reproduced below with contested limitations highlighted:
1. A method of molding a glass wine bottle for use
with one but not both of a first type of closure and a second
type of closure different from the first type of closure, wherein
the first type of closure includes a cork-type plug closure and
the second type of closure includes a threaded closure of a type
having a metal shell with internal threads and a skirt crimpable
to a container neck to simulate foil that covers a cork, said
method including the steps of:
(a) at a blank mold stage, forming a glass parison having
a temporary body and completed neck finish including either a
cork-type plug neck finish contoured for receiving the first type
of closure or a threaded neck finish contoured for receiving the
second type of closure,
(b) transferring the glass parison formed in said step (a)
to a blow mold stage, and then
(c) blow molding the temporary body of the parison at
said blow mold stage to form a glass bottle having a neck with
said neck finish, said neck having external (L and K)
dimensions for receipt of the second type of closure and a
cylindrical interior including an internal diameter (D) extending
over a cork spec distance (C) for receipt of the first type of
closure,
wherein different neck ring molds for forming the
different neck finishes are employed at the blank mold stage
depending on the type of neck finish being formed, but the same
body and neck blow mold is used at the blow mold stage, to
produce glass wine bottles having either but not both the cork-
type plug neck finish or the threaded neck finish but otherwise
having the same bottle body and neck to facilitate change-over
of a production line between different types of bottles.
App. Br. 41 (Claims Appendix).
2
Appeal 2017-002181
Application 12/825,950
The Examiner sets forth the following rejections in the Final
Office Action, and maintains the rejections in the Answer entered
September 22, 2016 (“Ans.”):
I. Claims 12—14 under 35 U.S.C. § 112, second paragraph as
being indefinite for failing to particularly point out and distinctly claim the
subject matter that Applicant regards as the invention;
II. Claims 1, 2, 4, 5, 10, and 12—14 under 35 U.S.C. § 103(a) as
unpatentable over Nickey (US 5,893,942; issued April 13, 1999) in view of
Kozora (US 2004/0079117 Al; published April 29, 2004); and
III. Claims 1, 2, 4, 5, 10, and 12—14 under 35 U.S.C. § 103(a) as
unpatentable over Staley (US 4,273,569; issued June 16, 1981) in view of
Scholl (US 4,273,567; issued June 16, 1981) and Kozora.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and the
respective positions of the Examiner and Appellant, we do not sustain the
Examiner’s rejection of claims 12—14 under 35 U.S.C. § 112, second
paragraph for indefmiteness, and rejections of claims 1, 2, 4, 5, 10, and 12—
14 under 35 U.S.C. § 103(a), for the reasons set forth in the Appeal Brief
and below. In addition, we enter a new ground of rejection against claims
12—14 under 35 U.S.C. § 112, fourth paragraph.
As explained in Appellant’s Specification, conventional methods for
molding glass wine bottles involve a two-stage process. Spec. 1,11. 8—9.
The first stage, referred to as the parison or blank stage, involves press or
blow molding a hot glass gob to form a parison having an intermediate or
temporary neck and a temporary body, but having a neck finish in its final
3
Appeal 2017-002181
Application 12/825,950
configuration. Spec. 1,11. 8—16; Figure 1 (depicting neck finish 24, neck 26,
body 20). The second stage, referred to as the blow or mold stage, involves
blow molding the body and neck of the bottle into their final configuration.
Spec. 1,11. 8—12, 15—17. Appellant’s Specification further explains that
glass wine bottles produced using conventional manufacturing processes
have neck finishes that receive either a cork-type plug closure or a Stelvin-
type threaded closure. Spec. 1,11. 21—22; Figures 1 and 3.
Rejection I
Independent claims 1, 4, and 10 each recite, inter alia, a glass wine
bottle having a neck with external (L and K) dimensions and a cylindrical
interior including an internal diameter (D) extending over a cork spec
distance (C). Claims 12, 13, and 14 depend from independent claims 1, 4,
and 10, respectively, and recite that the L dimension is from a top surface of
the neck finish to a wide portion of the neck, the K dimension is the
diameter across the wide portion of the neck where a skirt closure gets
crimped, the diameter (D) is an internal diameter for receiving a first type of
closure, and the distance (C) extends from the top surface of the neck finish
into the neck finish and neck.
The Examiner finds that claims 12—14 do not “further limit the
claimed invention” in view of the disclosure in Appellant’s Specification
that the dimensions recited in claims 12—14 “are standard designations in the
glass container industry.” Final Act. 3 citing Spec. 3. Further supporting the
Examiner’s finding regarding the conventionality of the recited dimensions,
Appellant also indicates in the Appeal Brief that the L, K, C, and D
dimensions recited in independent claims 1, 4, and 10 are “specific
4
Appeal 2017-002181
Application 12/825,950
dimensions with specific meanings to those of ordinary skill in the art.”
App. Br. 20.
Claims 12—14 set forth or define the locations of the L and K
dimensions in the bottle recited in the independent claims from which claims
12—14 depend. Claims 12—14 further define where in the bottle recited in
the independent claims the internal diameter D and cork spec distance C are
measured. In view of Appellant’s indication that L, K, C, and D dimensions
are standard designations in the glass container industry, claims 12—14
merely explicitly recite what one of ordinary skill in the art would
understand to be implicitly indicated by the L, K, C, and D dimensions
recited in claims 1, 4, and 10. Therefore, claims 12—14 duplicate, rather than
further limit, the subject matter recited in the independent claims from which
they depend.
Dependent claims that fail to further limit the claims from which they
depend should be rejected under 35 U.S.C. § 112, fourth paragraph for being
of improper dependent form, rather than under 35 U.S.C. § 112, second
paragraph for indefmiteness, as the Examiner does in the present case.
M.P.E.P. § 608.0l(n)(III). We therefore procedurally reverse the
Examiner’s rejection of claims 12—14 under 35 U.S.C. § 112, second
paragraph, and enter a new ground of rejection against these claims under 35
U.S.C. § 112, fourth paragraph.
Rejection II
We decide the appeal as to Rejection II based on claim 1 because all
of the independent claims subject to this ground of rejection (1, 2, 4, and 10)
include the limitations of claim 1 contested in this appeal, and because
5
Appeal 2017-002181
Application 12/825,950
claims 5 and 12—14, by virtue of their dependence from the independent
claims, also include the contested limitations.
Claim 1 requires the recited method of molding a glass wine bottle to
employ different neck ring molds that form different neck finishes at the
blank mold stage, and requires the method to use the same body and neck
blow mold at the blow mold stage, to produce bottles having either a cork-
type plug neck finish or a threaded neck finish, and the same body and neck.
The Examiner finds that Nickey discloses a method of molding glass
bottles using neck ring assemblies to form neck finishes in the bottles. Final
Act. 3. The Examiner finds that Nickey discloses that the neck ring
assemblies can be quickly and easily changed during the manufacturing
process to create glass bottles having different neck finishes. Id. The
Examiner relies on Kozora’s disclosure of neck finishes for glass bottles that
are capable of accepting a cork or a threaded closure pattern, which the
Examiner finds evidences that such neck finishes were common in the art at
the time of Appellant’s invention. Final Act. 4.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art that the neck ring assembly disclosed in Nickey
“could have included either a neck capable of accepting a cork or a threaded
closure pattern because Nickey teaches that the neck ring assemblies could
be changed to reflect bottles having different size or type of neck finish and
Kozora teaches that they are common neck finishes in the art.” Final Act. 4.
However, as Appellant points out, Nickey does not disclose
maintaining the same body mold when changing neck ring assemblies
because Nickey is silent as to situations that require a change in body molds.
6
Appeal 2017-002181
Application 12/825,950
App. Br. 17—18. In support of this argument, Appellant relies on a
Declaration of the inventor, Jerald D. Nemire, submitted to the Patent and
Trademark Office on May 12, 2015, which states that those of ordinary skill
in the art would have understood at the time of Appellant’s invention that
when neck rings used to form neck finishes at the blank stage of a process
for manufacturing bottles are changed, the mold used to form the neck and
body portions of the bottles in the blow mold stage must also be changed.
App. Br. 17; Nemire Declaration 113.
Kozora’s disclosures support Appellant’s arguments and the relied-
upon statements in the Nemire Declaration. Specifically, Kozora discloses
that wine bottles require a long neck to accept the full length of a cork, while
bottles with threaded necks require a much shorter neck. Kozora 121. In
view of this disclosure in Kozora that different neck finishes on bottles
require the necks of the bottles to have different dimensions, one of ordinary
skill reasonably would have understood that changing neck ring assemblies
during a process for producing glass bottles so that different neck finishes
can be formed would also require changing the mold used to form the neck
portion of the bottles.
Nonetheless, in response to Appellant’s arguments, the Examiner
finds that “the entire purpose of the invention of Nichols [sic: Nickey] is ‘an
invert arm assembly that is capable of having neck ring assemblies quickly
installed therein.’” Ans. 2 citing Nickey col. 2,11. 7—9. The Examiner
characterizes Appellant’s argument as an admission that Nickey does not
disclose changing body molds when changing neck ring assemblies, and
finds that “one of ordinary skill in the art would interpret the lack of a
7
Appeal 2017-002181
Application 12/825,950
disclosure of changing the body mold to indicate that the body mold is not
changed.” Ans. 2. The Examiner additionally finds that “one of ordinary
skill in the art would recognize that it would not be expedient to change the
body mold since this additional step would increase the cost and time to
produce bottles.” Ans. 4.
However, the Examiner does not identify any disclosure in Nickey, or
provide any other evidence, establishing that Nickey would have suggested
that when changing neck ring assemblies, body molds would also not be
changed, so that bottles having different neck finishes but the same body and
neck would be produced, as required by claim 1. In addition, the Examiner
fails to provide any persuasive reasoning or evidence to support the assertion
that “one of ordinary skill in the art would interpret the lack of a disclosure
of changing the body mold to indicate that the body mold is not changed.”
Ans. 2.
Moreover, although one of ordinary skill in the art may have
recognized that it would not have been expedient to change Nickey’s body
mold when changing neck ring assemblies due to the increased cost and time
involved, the Examiner fails to show that the state of the art at the time of
Appellant’s invention, as exemplified by the applied prior art, would have
supported the modification proposed by the Examiner, i.e., not changing
Nickey’s body mold when changing neck ring assemblies. Rather, the
Examiner merely speculates to that effect, and such unsupported speculation
or conjecture does not provide a sufficient factual basis for establishing
prima facie obviousness. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(“The Patent Office .. . may not. . . resort to speculation, unfounded
8
Appeal 2017-002181
Application 12/825,950
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.”); In re Sporck, 301 F.2d 686, 690 (CCPA 1962).
Accordingly, the Examiner’s evidence and explanation are insufficient
to establish a prima facie case of obviousness of the subject matter recited in
claim 1 within the meaning of 35 U.S.C. § 103(a). We therefore do not
sustain the Examiner’s rejection of claims 1, 2, 4, 5, 10, and 12—14 under 35
U.S.C. § 103(a) as unpatentable over Nickey in view of Kozora.
Rejection III
As with Rejection II, we decide the appeal as to Rejection III based on
claim 1 because all of the independent claims subject to this ground of
rejection (1, 2, 4, and 10) include the limitations contested in this appeal, and
because claims 5 and 12—14, by virtue of their dependence from the
independent claims, also include the contested limitations.
The Examiner finds that Staley discloses a method of making
glassware using a neck ring apparatus able to produce a variety of neck
finishes. Final Act. 5. The Examiner finds that Staley discloses that the
neck ring apparatus described in the reference “is to be used in the apparatus
of Scholl, which teaches using [] the same mold through the process but
using a plurality of neck molds.” Id. citing Scholl col. 2,11. 14—17. The
Examiner again relies on Kozora’s disclosure of neck finishes for glass
bottles that are capable of accepting a cork or a threaded closure pattern,
which the Examiner finds evidences that such neck finishes were common in
the art at the time of Appellant’s invention. Final Act. 6.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art that the neck ring assembly disclosed in Staley
9
Appeal 2017-002181
Application 12/825,950
“could have included either a neck capable of accepting a cork or a threaded
closure pattern because Staley teaches that the neck ring assemblies could be
changed to produce any desired neck finish [] and Kozora teaches that they
are common neck finishes in the art.” Final Act. 6.
However, as Appellant points out, Staley does not disclose
maintaining the same body mold when changing neck rings because Staley
is silent as to situations that require a change in body molds. App. Br. 30.
Appellant further argues that Scholl does not remedy the deficiencies of
Staley because Scholl also does not disclose maintaining the same body
mold when changing neck rings, and Appellant again relies on the
Declaration Jerald D. Nemire in support of these arguments. App. Br. 31—
32. As discussed above in connection with Rejection II, the disclosures in
paragraph 21 of Kozora support Appellant’s arguments and the relied-upon
statements in the Nemire Declaration.
In response to Appellant’s arguments, the Examiner reiterates that
Staley indicates that the neck ring apparatus disclosed in the reference is to
be used in the apparatus disclosed in Scholl. Ans. 4. The Examiner finds
that Scholl “explicitly teaches using a single mold through the process but
using a plurality of neck molds,” and the Examiner further finds that Scholl
discloses using “a single mold set.” Ans. 4 citing Scholl col. 2,11. 14—17;
col. 8,11. 14—16. The Examiner also characterizes Appellant’s argument as
an admission that “Scholl does not disclose changing the body molds,” and
the Examiner finds that “one of ordinary skill in the art would interpret the
lack of a disclosure of changing the body mold to indicate that the body
mold is not changed.” Ans. 4.
10
Appeal 2017-002181
Application 12/825,950
However, Scholl discloses “forming [] a plurality of virtually identical
[glass] parisons or blanks by a single mold and plunger set, within a plurality
of neck ring retainers.” Scholl col. 1,11. 6—10. Therefore, the “single mold”
disclosed in Scholl cited by the Examiner refers to a mold used to form
parisons or blanks at a blank mold stage, and does not refer to a mold used at
a blow mold stage to form neck and body portions of a bottle. As discussed
above, claim 1 requires the recited method of molding a glass wine bottle to
employ different neck ring molds that form different neck finishes at the
blank mold stage, and requires the method to use the same body and neck
blow mold at the blow mold stage to produce bottles having either a cork-
type plug finish or a threaded finish and the same body and neck.
The Examiner does not identify any disclosure in Staley or Scholl, or
provide any other evidence, establishing that the combined disclosures of
these references would have suggested using the neck ring apparatus
disclosed in Staley in Scholl’s apparatus to form different neck finishes at a
blank mold stage while using the same body and neck blow mold at a blow
mold stage, so as to produce bottles having either a cork-type plug finish or a
threaded finish and the same body and neck, as required by claim 1. In
addition, the Examiner fails to provide any persuasive reasoning or evidence
to support the assertion that “one of ordinary skill in the art would interpret
the lack of a disclosure of changing the body mold [in Scholl] to indicate
that the body mold is not changed.” Ans. 2. Rather, the Examiner merely
speculates to that effect, and such unsupported speculation or conjecture
does not provide a sufficient factual basis for establishing prima facie
obviousness. Warner, 379 F.2d at 1017.
11
Appeal 2017-002181
Application 12/825,950
Accordingly, the Examiner’s evidence and explanation are insufficient
to establish a prima facie case of obviousness of the subject matter recited in
claim 1 within the meaning of 35 U.S.C. § 103(a). We therefore do not
sustain the Examiner’s rejection of claims 1, 2, 4, 5, 10, and 12—14 under 35
U.S.C. § 103(a) as unpatentable over Staley in view of Scholl and Kozora.
DECISION
We reverse the Examiner’s rejection of claims 12—14 under 35 U.S.C.
§ 112, second paragraph and rejections of claims 1, 2, 4, 5, 10, and 12—14
under 35 U.S.C. § 103(a). We also enter a new ground of rejection against
claims 12—14 under 35 U.S.C. § 112, fourth paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[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,
12
Appeal 2017-002181
Application 12/825,950
in the opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the 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).
REVERSED; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R, $ 41.50(b)
13