Ex Parte Russell

Board of Patent Appeals and Interferences

Jun 12, 2012

11556974 (B.P.A.I. Jun. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte MARK N. RUSSELL
____________________

Appeal 2010-004439
Application 11/556,974
Technology Center 3700
____________________

Before: JOHN C. KERINS, PHILLIP J. KAUFFMAN, and
EDWARD A. BROWN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
10 and 12-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

THE INVENTION
Appellant’s claimed invention relates to “a closure including a tamper
band coupled to a cap of the closure.” Spec. 1, para. [0001]. Claims 1, 10
and 17 are the independent claims on appeal, and claim 10, reproduced
below, is illustrative of the claimed subject matter (emphasis added):
10. A tamper evident container closure formed in a multi-part
mold having an outer mold core, an inner mold core and a tab
sleeve, wherein the inner and outer mold cores in combination
with the tab sleeve form a mold cavity, the closure adapted for
use with a container having a threaded neck including an
annular rim extending around the circumference of the neck, the
container closure comprising
a cap formed between the inner and outer mold cores, the
cap including a top wall and an annular side wall having a top
edge appended to the top wall and a bottom edge positioned to
extend downwardly away from the top wall, the annular side
wall including internal threads to engage the threaded neck of
the container,
a tamper band formed between the inner and outer mold
cores, the tamper band including a bottom edge and a spaced
apart top edge appended to the bottom edge of the side wall by
a plurality of frangible elements,
a plurality of retention tabs formed between the tab
sleeve and inner mold core, the retention tabs depend from the
tamper band and are molded in their in-use position and extend
inward toward a vertical axis of the closure and toward the top
wall of the cap at a predetermined angle of inclination, the
retention tabs adapted to engage the annular rim of the
container,
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hinges formed between the tab sleeve and inner mold
core, the hinges flexibly secure the retention tabs to the tamper
band so that the retention tabs can flex downwardly when the
closure is being released from the mold core during ejection of
the closure, the hinges define a means for causing the retention
tabs to pivot back automatically to the molded in-use position
upon release of the closure from the inner mold core without
requiring any intermediary manufacturing step to mechanically
reposition the retention tabs prior to installing the closure onto
the container, and
wherein the tamper band includes a flared outer edge
that is configured to provide means for engaging a stripper so
that the tamper band expands radially outwardly during
ejection from the inner mold core.

REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 10 and 12-21 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. Ans. 3.
2. Claims 10 and 12 -21 under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention. Ans. 3.
3. Claims 1-3, 5-10, 13-18, 20, and 21 under 35 U.S.C. § 102(b) as
anticipated by McNary (US 6,729,488 B2; iss. May 4, 2004).1 Ans. 3.
4. Claims 4, 12, and 19 under 35 U.S.C. § 103(a) as unpatentable over
McNary. Ans. 4.

1 Appellant lists claim 11 as subject to this ground of rejection; however,
claim 11 is cancelled. App. Br. 5, Claims App’x.
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OPINION
Claims 10 and 12 -21; Written Description and Indefiniteness
Independent claim 10 is directed to a tamper evident container closure
that includes a tamper band having “a flared outer edge that is configured to
provide means for engaging a stripper so that the tamper band expands
radially outwardly during ejection from the inner mold core.” Similarly,
independent claim 17 is directed to a tamper evident container closure that
includes a tamper band having “a flared lower edge that causes the tamper
band to expand during ejection from the mold core, imparting a force on the
retention tabs so that the tabs flex downwardly from beneath the inner mold
core.”
The Examiner interpreted that independent claims 10 and 17 are
“drawn only to the closure cap,” and the tamper band does not expand itself,
but rather is expanded radially by the “unclaimed stripper.”2 Ans. 3-5.
Based on this interpretation, the Examiner concluded that the Specification
fails to reasonably convey to a person of ordinary skill in the art that
Appellant possessed a tamper band having a flared portion that in and of
itself causes the tamper band to expand. Ans. 3. The Examiner also
concluded that independent claims 10 and 17 are indefinite because it is
“unclear how a flared portion of the tamper band in and of itself causes the
tamper band to expand.” Id.
Each of these rejections is based upon improper claim construction.
Claims 10 and 17 do not call for a tamper band that expands in and of itself.
Rather, claim 10 calls for a tamper band that includes a flared edge

2 Independent claim 17 differs from independent claim 1 in that it does not
call for the tamper band to engage a stripper.
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configured to provide means for engaging a stripper in order to radially
expand the tamper band during ejection from the inner mold core, and claim
17 calls for a tamper band having a flared lower edge that causes the band to
expand during ejection from the mold core. This rejection is in error
because it is based upon this improper claim construction.
Accordingly, we cannot sustain the rejection of independent claims 10
and 17 and their dependent claims 12-16 and 18-21 for failing to comply
with the written description requirement and for being indefinite.

Claims 1-3, 5-10, 13-18, 20, and 21 as anticipated by McNary
Claims 1, 2, 5, 7, and 9
Appellant argues claims 1, 2, 5, 7, and 9 as a group, and we select
claim 1 as representative. App. Br. 8-9; see 37 C.F.R.
§ 41.37(c)(1)(vii)(2011).
Appellant argues that McNary does not disclose a retainer means as
called for in claim 1. App. Br. 8-9. In support of this argument, Appellant
argues that the function of permitting the retention tabs to flex downwardly
and automatically pivot back to the in-use position is performed by “stripper
80 engaging flared edge 56 with sufficient force to flex tamper band
sidewall 28 outwardly causing the retention tabs 26 to pivot downwardly and
after closure 10 is removed from mold 72 permits retention tabs 26 to pivot
back to their original state of molding.” App. Br. 8.
This argument is unpersuasive because claim 1 is not limited to a

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tamper band having a flared edge,3 nor does claim 1 call for the tamper band
to engage a stripper during ejection from the mold core4. See In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the
outset because . . . they are not based on limitations appearing in the
claims.”). Accordingly, we sustain the rejection of claims 1, 2, 5, 7, and 9.
Claim 3
Claim 3 depends from claim 1 and recites,
wherein the retainer means includes a hinge and planar side
wall, the side wall of the retention tabs is adjacent the hinge and
oriented substantially perpendicular to the inside surface of the
tamper band to permit the retention tabs to flex downwardly by
reducing the interference between the retention tabs and the
inside surface of the tamper band.
In parity with the claim language, the Specification describes that
[r]etention tabs 26 includes planar side wall or face 102,
the face 102 of retention tabs 26 is adjacent hinge 62 and
oriented substantially perpendicular to the inside surface of the
tamper band 16 to permit retention tabs 26 to flex downwardly
by reducing the interference between retention tabs 26 and the
inside surface of tamper band 26 [16]5.

3 Dependent claim 8 further limits claim 1 by adding that the tamper band
includes a flared lower edge, implying that claim 1 does not include such a
limitation. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910
(Fed. Cir. 2004) (the presence of a dependent claim that adds a particular
limitation gives rise to a presumption that the limitation in question is not
present in the independent claim).
4 Contrast claim 1 to independent claim 10, wherein the tamper band
includes a flared outer edge for engaging the stripper.
5 Paragraph [0036] makes reference to tamper band “26,” which is otherwise
identified as tamper band “16.” See e.g., Spec. para. [0029].
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Spec. para. [0036]; fig. 4.6
Appellant argues that, “McNary’s retention tabs 22 do not include the
planar sidewall for reducing interference” as called for in claim 3. App. Br.
10. Appellant does not further nor cogently explain why this is so. We are
unpersuaded by this conclusory assertion because McNary’s projections 22,
like Appellant’s tabs 26, appear to include a planar side wall. McNary, figs.
4A-D. Accordingly we sustain the rejection of claim 3.
Claim 6
Claim 6 depends from independent claim 1 and adds that the retention
tabs are formed to include an arcuate inner edge. The Specification
describes that edge 68 of retention tab 26 is arcuate shaped and configured to
provide means to conform to the neck 24 of the container 12. Spec. para.
[0029]; figs. 4, 9.
We agree with the Examiner that McNary’s retention tabs (projections
22) have an arcuate inner edge as called for in claim 6. McNary, fig. 3; see
also Ans. 3-4, 6; contra. App. Br. 10. Accordingly, we sustain the rejection
of claim 6.
Claim 8
Claim 8 depends from claim 1, and recites, “wherein the tamper band
includes a flared lower edge that causes the tamper band to expand during
ejection from the mold core, imparting a force on the retention tabs so that
the tabs flex downwardly from beneath the mold core.” The context of
claim 8 is that the lower edge is flared with respect to the remainder of the

6 Figure 4 identifies face 102 as the face away from the inside surface of
tamper band 16. It appears that is actually the opposing face of the tab 26
that reduces interference with the inside surface of tamper band 16 as called
for in claim 3.
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tamper band. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (“the claims themselves provide substantial guidance as to the
meaning of particular claim terms,” and “the context of the surrounding
words of the claim also must be considered in determining the ordinary and
customary meaning of those terms”) (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) and ACTV, Inc. v.
Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)).
The Specification does not provide a lexicographical definition of
“flared.” A common definition of “flared” is “a gradual widening or
spreading outwards.”7 Consistent with this ordinary meaning, the
Specification describes and depicts that tamper band 16 is flared outwardly
(widens) at lower edge 56. Spec. para. [0044]; fig. 6.
McNary’s tamper band (ring 14) does not widen at its lower edge.
McNary, figs. 1, 2, 4A. Therefore, we agree with Appellant that McNary
does not disclose a tamper band that includes a flared lower edge as called
for in claim 8. See App Br 10-11 (incorporating explanation at App. Br. 16);
contra. Ans. 4 (identifying the portion adjacent strain relief recess 25 as
corresponding to the claim flared lower edge). Accordingly, we cannot
sustain the rejection of claim 8.
Claims 10, 13-18, 20, and 21
Independent claim 10 is similar to claim 8 in that it calls for the

7 Flare: a gradual widening or spreading outwards; also, that part which
spreads. Also attrib. In pl., flared trousers (orig. U.S.), def. 4b., Oxford
English Dictionary (1989) available at http://www.OED.com.
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tamper band to include a flared outer8 edge. The Examiner found that the
angled portion adjacent strain relief access 25 corresponds to the flared outer
edge of claim 10. Ans. 4. This portion of McNary’s tamper band (ring 14)
does not widen with respect to the remainder of the band. As such, we
cannot sustain the rejection of claim 10 and its dependent claims 13-16.
Independent claim 17, like claim 8, calls for the tamper band to
include a flared lower edge. Thus, for the reasons explained with regard to
claim 8, supra, we cannot sustain the rejection of independent claim 17 and
its dependent claims 18, 20, and 21.

Claims 4, 12, and 19 as unpatentable over McNary
Claim 4
Claim 4 depends from claim 1, and recites that,
the mold core includes a smooth outer surface and a lower edge
positioned adjacent the retention tabs and the lower edge has a
corner radius from about 0.005 inches to about 0.008 inches to
allow the retention tabs to pivot around the lower edge without
shearing of the retention tabs from the tamper band during
ejection of the tabs from the mold core.
The Examiner concluded that it would have been obvious to utilize a
mold core having a corner radius within the claimed range because such
dimension is a result effective variable, and discovering the optimum or
workable range involves only routine skill in the art. Ans. 4 (citing In re
Aller, 220 F.2d 454 (CCPA 1955)), 7-8. Appellant argues that the rejection,

8 Claim 10 calls for a flared “outer” edge rather than a flared “lower edge”
(claims 8 and 17). “Outer” in this context appears to refer to the outer
circumference of the tamper band.
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and the prior art, do not demonstrate that the corner radius is a result
effective variable. App. Br. 15-16.
Aller established two conditions for a conclusion of obviousness: one,
the general conditions of the claim must be disclosed in the prior art and
two, discovery of the optimum or workable range must be a matter of
routine experimentation for a person of ordinary skill in the art. Aller, 220
F.2d at 456. The Examiner’s rejection does not demonstrate that either
condition is met here. First, the Examiner fails to establish that it was
known in the prior art that there was a link between the corner radius of the
mold core and pivoting of the retention tabs (projections 22) during ejection
from the mold core. Before the determination of the optimum or workable
ranges of a variable might be characterized as routine experimentation, a
particular parameter must first be recognized as a result-effective variable.
See In re Antonie, 559 F.2d 618 (CCPA 1977) (the prior art did not
recognize that treatment capacity is a function of the tank volume to
contractor ratio, and therefore optimization of this parameter was not
recognized in the art to be a result-effective variable). Second, the Examiner
concludes, rather than explains why, such discovery would have been a
matter of routine experimentation for a person of ordinary skill in the art.
Accordingly, we cannot sustain the rejection of claim 4.
Claims 12 and 19
Claim 12 depends from claim 10, and claim 19 depends from claim
17. The rejection of claims 12 and 19 relies upon the same erroneous
finding regarding the flared edge of the tamper band as that of independent
claims 10 and 17, discussed, supra. See Ans. 4. Accordingly, we cannot
sustain the rejection of claims 12 and 19.
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DECISION
We reverse the Examiner’s decision to reject claims 10 and 12-21
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We reverse the Examiner’s decision to reject claims 10 and 12-21
under 35 U.S.C. § 112, second paragraph, as indefinite for failing to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention.
We affirm the Examiner’s decision to reject claims 1-3, 5-7, and 9
under 35 U.S.C. § 102(b) as anticipated by McNary.
We reverse the Examiner’s decision to reject claims 8, 10, 13-18, 20,
and 21 under 35 U.S.C. § 102(b) as anticipated by McNary.
We reverse the Examiner’s decision to reject claims 4, 12, and 19
under 35 U.S.C. § 103(a) as unpatentable over McNary.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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