Ex Parte Ravel et al

Patent Trial and Appeal Board

Oct 31, 2018

14468814 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/468,814 08/26/2014
23280 7590 11/02/2018
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Patrick Ravel
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.
792.1003 6613
EXAMINER
HERRING, LISA L
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK RAVEL, FABRICE MALLARD, and
PHILIPPE MALOIGNE 1
Appeal2018-000210
Application 14/468,814
Technology Center 1700
Before BRADLEY R. GARRIS, A VEL YN M. ROSS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejection of claims 9--11 under 35 U.S.C. § 103 as unpatentable over
Kobayashi (JP 2006-016263, published January 19, 2006, as translated2) in
1 Appellant is the Applicant POCHET DU COURVAL which is identified as
the real party in interest (App. Br. 2).
2 The Examiner misidentifies the relied upon translation as "NPL dated Jan.
20, 2017" (Ans. 4). In fact, the NPL is dated January 6, 2017 according to
the official Image File Wrapper of the subject application.
Appeal2018-000210
Application 14/468,814
view of Teague (US 3,337,321, issued August 22, 1967). We have
jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellant claims a method for manufacturing a hollow glass article
wherein a coloring powder is injected into either the inside of a blank 9 from
which the glass article is made or the inside of the article itself while the
blank or article is located in a finishing mold 11 (independent claim 9, Fig.
2; see also remaining independent claim 11 ).
Further details regarding the claimed subject matter are set forth in
claims 9 and 11 3, a copy of which taken from the Claims Appendix of the
Appeal Brief is set forth below.
9. A method for manufacturing a hollow glass article including
at least the following steps:
receiving a blank of the hollow glass article in a finishing
mold, the finishing mold defining a cavity for forming the
hollow glass article from the blank;
achieving at least one injection of a gas into the inside of
the blank contained in the cavity via a blowing head, the gas
3 Claim 11 initially recites "[a] method ... including at least the following
steps" and subsequently recites a plurality of "means for" performing certain
functions. In any further prosecution that may occur, the Examiner and
Appellant should address and resolve whether such claim recitation of both
method "steps" and apparatus "means" violates the particularity and
distinctness requirement of 35 U.S.C. § 112(b) as well as the patentable
inventions requirement of 35 U.S.C. § 101 (which sets forth statutory classes
of invention in the alternative only). See, e.g., the Manual of Patent
Examining Procedure (MPEP) § 2173.05(p)II.
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Application 14/468,814
stemming from at least one gas source connected to the blowing
head; and
injecting a coloring powder into the inside of the blank,
the blank being received in the finishing mold, or injecting it
into the inside of the hollow glass article while the hollow glass
article is located in the finishing mold, the coloring powder
stemming from at least one reservoir, the injection of the
coloring powder taking place before, during, after, before and
during, during and after, or before and during and after the gas
injection.
11. A method for manufacturing a hollow glass article
including at least the following steps:
means for receiving a blank of the hollow glass article in
a finishing mold, the finishing mold defining a cavity for
forming the hollow glass article from the blank;
means for achieving at least one injection of a gas into
the inside of the blank contained in the cavity via a blowing
head, the gas stemming from at least one gas source connected
to the blowing head; and
means for injecting a coloring powder into the inside of
the blank, the blank being received in the finishing mold, or
injecting it into the inside of the hollow glass article while the
hollow glass article is located in the finishing mold, the
coloring powder stemming from at least one reservoir, the
injection of the coloring powder taking place before, during,
after, before and during, during and after, or before and during
and after the gas injection.
App. Br. (Claims Appendix 2, 3).
In rejecting the independent claims, the Examiner characterizes the
Kobayashi and Teague disclosures (Final Action 2-3). 4 The Examiner's
reasoning for combining these disclosures follows:
4 The Examiner does not correlate these prior art disclosures with any claim
requirements and therefore fails to follow examination guidelines for
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Appeal2018-000210
Application 14/468,814
[O]ne skilled in the art could envision the combination of
Kobayashi and Teague provides for means for receiving and
receiving [sic] a parison ( corresponding to a blank) of the
hollow glass article into a finishing mold that forms a cavity for
forming a hollow glass article, a step of injecting blow air
(corresponding to at least one injection gas) inside of the
parison or means for achieving injecting blow air (i.e. a tube), a
source of blow air, means for injecting (i.e. tube) injecting [sic]
the coloring powder into the parison or the fully expanded glass
article while in the finishing mold, the coloring powder from a
tank (i.e. at least one reservoir), and injecting of the powder
taking place before, during, after, before and during, during and
after or before and during and after the gas injection, as taught
by the combination of Kobayashi and Teague.
Id. at 3--4 (underlining added).
Appellant argues that the Examiner's rejection does not provide any
reasons why a person of ordinary skill in the art would have combined
Kobayashi and Teague so as to result in a coloring powder being injected
into the inside of a blank or hollow glass article while the blank or article is
received or located in a finishing mold as required by the independent claims
(see, e.g., App. Br. 4). According to Appellant, the Examiner's statements
regarding subject matter one skilled in the art could envision "are merely
conclusory statements that are insufficient to support the rejection" (id. at 5).
Appellant emphasizes that "[i]t is irrelevant whether one of ordinary skill in
the art could have arrived at the invention ... [because such] is insufficient
to show that one of ordinary skill in the art would have done so with a
reasonable expectation of success" (id. at 11 ).
determining obviousness ( e.g., ascertaining the differences between the
claimed invention and the prior art). See, e.g., in MPEP § 2141.
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Appeal2018-000210
Application 14/468,814
In response, the Examiner interprets Kobayashi's "third invention"
disclosed in the last sentence of translation paragraph 20 "as suggesting
particles of the color frit are blown and thermally bonded to the surface of
the parison in the middle (i.e. midst of) of being subjected to a finishing
mold" (Ans. 4). The Examiner explains that Teague is applied "to disclose a
method of injecting powder (i.e. particles) into the interior of a hollow glass
article at an elevated temperature in a finishing mold to bond to the interior,
since Kobayashi failed to specifically disclose details of the third invention"
(id.). The Examiner then reiterates statements made in the Final Action
regarding subject matter "one skilled in the art could envision" (id.).
Appellant replies by correctly pointing out that the Examiner's
interpretation of translation paragraph 20 is wrong as revealed by
Kobayashi's express disclosure of color particles in the "third invention"
being "blown onto and thermally bonded to the surface of parison 16 in the
midst of transferring to the finish mold" (Kobayashi translation ,r 19) (Reply
Br. 4).
Appellant's position is convincing. The only rationale offered by the
Examiner for combining Kobayashi and Teague is the Examiner's
interpretation of Kobayashi's "third invention." Because this interpretation
is erroneous, the Examiner has failed to provide "some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with
approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
Moreover, the Examiner's obviousness reasoning misrepresents the inquiry
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Application 14/468,814
as what "one skilled in the art could envision" (Final Action 3--4) rather than
what one of ordinary skill in the art would have done based on a reasonable
expectation of success.
For these reasons, we do not sustain the Examiner's§ 103 rejection of
claims 9--11 as unpatentable over Kobayashi in view of Teague.
The decision of the Examiner is reversed.
REVERSED
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