Ex Parte Palisin

Patent Trial and Appeal Board

Mar 16, 2016

11475801 (P.T.A.B. Mar. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111475,801 0612712006
23575 7590 03/16/2016
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
FIRST NAMED INVENTOR
Stephen P. Palisin JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SDC.Pl 100 1762
EXAMINER
MATHEW, FENN C
ART UNIT PAPER NUMBER
3781
MAILDATE DELIVERY MODE
03/16/2016 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 STEPHEN P. PALIS IN, JR.
Appeal2014-002140
Application 11/475,801 1
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stephen P. Palisin, Jr. (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-9, 11-29, and 31--47.2
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE.
According to Appellant, the real party in interest is the inventor,
Stephen P. Palisin, Jr. Appeal Br. 3 (filed June 10, 2013).
2 Claims 10 and 30 have been canceled. Id. at 27, 30.
Appeal2014-002140
Application 11/475,801
INVENTION
Appellant's invention relates to "a nestable shipping container for
transporting and storing materials." Spee. 1, 11. 6-7.
Claims 1, 11, 22, 31, 3 6, and 44 are independent. Claim 1 is
illustrative of the claimed invention and reads as follows:
1. A nestable shipping container comprising: a cold worked,
tapered container body comprising integral side and bottom
walls without seams or welds and an open top.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1-3, 5-9, 11-15, 17-21, 36-39,
and 41--43 under 35 U.S.C. § 103(a) as being unpatentable over
Palisin (US 5,160,031, iss. Nov. 3, 1992) and Stirbis (US
4,953,738, iss. Sept. 4, 1990). 3
IL The Examiner rejected claims 4, 16, and 40 under 35 U.S.C.
§ 103(a) as being unpatentable over Palisin, Stirbis, and Phillips
(US 3,670,922, iss. June 20, 1972).
III. The Examiner rejected claims 22-30 under 35 U.S.C. § 103(a)
as being unpatentable over Palisin, Stirbis, and Conti '291 (US
6,273,291, iss. Aug. 14, 2001).
IV. The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as
being unpatentable over Palisin, Stirbis, Conti '291, and
Phillips.
3 We view the examiner's inclusion of this claim in the heading of this
rejection as a typographical error because claim 10 has been cancelled. See
Appeal Br. 2 7.
2
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Application 11/475,801
V. The Examiner rejected claims 31-35 under 35 U.S.C. § 103(a)
as being unpatentable over Palisin, Stirbis, and Thors0 (US
6,834,772 Bl, iss. Dec. 28, 2004).
VI. The Examiner rejected claims 44--46 under 35 U.S.C. § 103(a)
as being unpatentable over Palisin, Stirbis, Conti '291, and
Conti '839 (US 2004/0200839, pub. Oct. 14, 2004).
VII. The Examiner rejected claim 47 under 35 U.S.C. § 103(a) as
being unpatentable over Palisin, Stirbis, and Bianchi (US
5,638,977, iss. June 17, 1997).
ANALYSIS
Rejection I
Each of independent claims 1 and 11 requires, inter alia, a container
body having "integral side and bottom walls without seams or welds."
Appeal Br. 26-27. Similarly, independent claim 36 requires "a seamless and
non-welded container body comprising integral side and bottom walls." Id.
at 31.
The Examiner finds that Palisin discloses most of the limitations of
independent claims 1, 11, and 36, but fails to disclose a container body
having "integral side and bottom walls," that is, "without seams or welds,"
as per claims 1 and 11 or "seamless and non-welded," as per claim 36.
Final Act. 3; see also Palisin, Figs. 1--4. Nonetheless, the Examiner finds
that Stirbis discloses a container having "integral side and bottom walls."
Final Act. 3 (citing Stirbis, Fig. 1 ). The Examiner concludes that it would
have been obvious for a person of ordinary skill in the art "to have modified
3
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Application 11/475,801
Palisin with integral side and bottom walls without seams[, according to
Stirbes,] in order to improve the structural integrity of said shipping
container and increase production efficiency." Id.
Appellant argues that the Examiner employed impermissible hindsight
in combining the teachings of Palisin and Stirbes. See Appeal Br. 9.
According to Appellant, the Examiner's reasoning lacks rational
underpinning because Stirbes specifically discloses that, "the improvement
to the structural integrity of the beverage can is imparted by the improved
bottom wall dome design and groove-rib projections" and not by having
"integral side and bottom walls without seams or weld." Id. at 12.
In response, the Examiner takes the position that the reasoning to
combine the teachings of Palisin and Stirbis "was not gleaned only from the
appellant's disclosure," but rather from Stirbis and "common knowledge in
the prior art." Ans. 7. According to the Examiner, "Stirbis states that
forming the container from unitary sheet material provides 'structural
integrity such as to prevent leakage and deformation .... "' Id. (citing
Stirbis, col. 1, 1. 40). The Examiner further opines that it is common
knowledge in the prior art that "an integral structure without seams provides
a structurally sound, unitary container that withstands failure that would
otherwise occur at the seams if they were present." Id. The Examiner also
relies on Howard v. Detroit Stove Works, 150 U.S. 164 (1893) as support for
the proposition "that making in one piece something that has been formerly
made in two, involves only routine skill in the art." Id. at 9.
We are not persuaded by the Examiner's position for the following
reasons.
4
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Application 11/475,801
First, we agree with Appellant that in Stirbis, the increase in structural
integrity is a result of the dome-shaped bottom wall 14 and groove-rib
portions 40 and not by eliminating the welds/seams between the cylindrical
sidewall portion 12 and the bottom wall portion 14 of the container, as the
Examiner suggests. See Appeal Br. 12; see also Stirbes, Fig. 1. We could
not find any portion and the Examiner has not pointed to any portion of
Stirbis to support the allegation that the structural integrity of Stirbis' s can is
improved by eliminating welds/seams between the cylindrical sidewall
portion 12 and the bottom wall portion 14 of the container. Moreover, the
portion of Stirbis cited by the Examiner relates to "limitations on size and
gauge of the sheet material," that is, the blank used to make the container,
and not regarding the effects of welds/seams on the structural integrity of the
container. See Stirbis, col. 1, 11. 40-41 and 49--50.
Second, the Examiner provides no evidence or reasoning that might
be construed as support for the finding that, "an integral structure without
seams . . . withstands failure that would otherwise occur at the seams if they
were present." See Appeal Br. 12. A person of ordinary skill in the art
would readily recognize that the strength of a weld depends on a myriad of
factors, such as, welding process type, base and filler materials, welding
parameters, and weld design. Hence, the Examiner's conclusory finding that
failure occurs at the welds/seams of a structure requires speculation on the
Examiner's part, and speculation cannot form the basis for concluding
obviousness. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).4
4 "The legal conclusion of obviousness must be supported by facts.
Where the legal conclusion is not supported by facts it cannot stand."
5
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Application 11/475,801
Lastly, with respect to the Examiner's reliance on Howard, 5 the
Examiner is taking the position that in view of Howard it would have been
obvious to a person of ordinary skill in the art to modify the container of
Palisin with integral side and bottom walls without welds/seams. We note
that the jurisprudence when used in this manner amounts to a per se rule of
unpatentability. The use of per se rules, while undoubtedly less laborious
than searching comparison of the claimed invention - including all its
limitations - with the teachings of the prior art, flouts section 103 and the
fundamental case law applying it. As such, we find the Examiner's reliance
on a per se rule to be inappropriate because the Examiner has not provided
evidence or reasoning that would have suggested to a person of ordinary
skill in the art the desirability to modify the container of Palisin with integral
side and bottom walls without welds/seams. Our precedents do not establish
any rules of obviousness, just as those precedents themselves expressly
declined to create such rules. See In re Ochiai, 71 F.3d 1565, 1572 (Fed.
Cir. 1995).
In conclusion, the Examiner's rejection is insufficient to explain what
would have prompted a person having ordinary skill in the art to apply the
integral construction, i.e., without welds/seams, taught by Stirbis, to the
container of Palisin. The Examiner has not provided any findings that either
Palisin or Stirbis recognized a problem with the conventional welded
structure used in Palisin. Absent hindsight, we fail to see why a person
5 The Court held that "it involves no invention to cast in one piece an
article which has formerly been cast in two pieces, and put together."
Howard, 150 U.S. at 170.
6
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Application 11/475,801
having ordinary skill in the art would have modified the container of Palisin,
according to Stirbis, in the manner claimed.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 1-3, 5-9, 11-15, 17-21, 36-39, and 41--43 under 35 U.S.C.
§ 103(a) as being unpatentable over Palisin and Stirbis.
Rejections II-VII
Claims 4, 16, and 40 depend indirectly from independent claims 1, 11,
and 36, respectively, and thus include all the limitations of independent
claims 1, 11, and 36 and any other intervening claims. See Appeal Br. 26,
28, and 32. Furthermore, similar to independent claims 1 and 11, each of
independent claims 22, 31, and 44 requires, inter alia, a container body
having "integral side and bottom walls without seams or welds." Appeal Br.
29, 30, and 32. The Examiner's use of the disclosures of Phillips, Conti
'291, Thors0, Conti '839, and Bianchi in various combinations does not
remedy the deficiencies of Palisin and Stirbis discussed supra. See Final
Act. 4---6. 6
Accordingly, for the foregoing reasons, we also do not sustain
Rejections II-VII. 7
6 The Examiner employed Phillips to disclose a discontinuity gap in a
stacking ring (see Final Act. 4), Conti '291 to disclose spaced-apart feet (see
id.), Thors0 to disclose a lid with an extending skirt and flange (see id. at 5),
Conti '839 to disclose a threaded lid (see id. at 5---6), and Bianchi to disclose
a bolted connection (see id. at 6).
7 Because we have determined that the Examiner's reasoning to
combine the teachings of Palisin and Stirbes is based on impermissible
hindsight, we do not need to reach the evidence submitted by Appellant in
7
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SUMMARY
The Examiner's decision to reject claims 1-9, 11-29, and 31--47 is
reversed.
REVERSED
the Declaration of Stephen P. Palisin, filed under 37 C.F.R. § 1.132, on Feb.
7, 2012.
8