Ex Parte Sassouni

Board of Patent Appeals and Interferences

Jun 29, 2009

11729067 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte K. JACQUES SASSOUNI
____________

Appeal 2009-006225
Application 11/729,067
Technology Center 3700
____________

Decided1: June 30, 2009
____________

Before LINDA E. HORNER, STEVEN D.A. MCCARTHY, and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-006225
Application 11/729,067

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from a Final Rejection
of claim 4. Claims 1-3 have been previously canceled (App. Br. 1). We
have jurisdiction over this appeal under 35 U.S.C. § 6(b) (2002).
The claimed invention is directed to a method for manufacturing
flexible tube containers such as toothpaste tube containers. The method
includes providing a capping element for serially applying removable
closures (such as caps) to the dispensing opening of tube bodies at the
location where other processing steps are performed so that the container is
manufactured and capped at the same location.
Independent claim 4, the only pending claim, reads as follows (App.
Br., Claims App’x.; emphasis added):
4. The method of manufacturing a flexible tube container
from extruded synthetic resinous material comprising the steps
of:
a) providing an extended length of tubing forming the
body of said container, said body having a principal axis;
b) supporting said body on a mandrel at a given location;
c) compression molding a shoulder integrally upon the
end of said body, said shoulder including a dispensing opening
at said given location;
d) providing a capping element adjacent said given
location having means for serially providing removable
closures to a location axially-aligned with said principal axis of
said body, said capping element including means for applying
an axially-aligned force and a torquing force to successive
closures whereby to apply said closures to engage said closures
to close said dispensing opening; said container being
completely manufactured and capped at said given location.

The evidence relied upon by the Examiner in rejecting claim 4 is:
Schmid US 4,123,312 Oct. 31, 1978
2
Appeal 2009-006225
Application 11/729,067

Dirksing US 5,690,764 Nov. 25, 1997
Admitted Prior Art (hereinafter “APA”) (Spec. pp. 1-3 and p. 5, ll. 1-
7) (Ans. 3).

The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over APA and Schmid.
The Examiner rejected claim 4 under 35 U.S.C. § 102(b) as
anticipated by Dirksing.2
We AFFIRM.

ISSUES
The following issues have been raised in the present appeal:
1. Whether the Appellant has shown that the Examiner erred in
finding that Schmid discloses “a capping element adjacent said given
location” and “said container being completely manufactured and capped at
said given location” as recited in claim 4?
2. Whether the Appellant has shown that the Examiner erred in
finding that Dirksing describes “compression molding a shoulder…” as
recited in claim 4?
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. In describing the prior art concerning the manufacture of
flexible tube containers, the Appellant’s Specification states:

2 The indefiniteness rejection of claim 4 under 35 U.S.C. § 112, ¶ 2 has
been withdrawn by the Examiner (Ans. 2).
3
Appeal 2009-006225
Application 11/729,067

In the present state of the art, the manufacturing
process is highly automated. It commences with a
continuous extrusion of a hollow tube of required
diameter. A second step is the cutting of the tube into
required predetermined length to form a cylindrical body.
One end of the tube is left open for the ultimate filling
and sealing of the dispensable contents. The other end is
provided with a transversely-extending shoulder forming
the dispensing end, the shoulder forming a dispensing
opening selectively covered by a removable closure,
typically, a threaded cap. The shoulder is preferably
formed by compression molding and integrated with the
dispensing end of the tube while the tube is supported on
a mandrel. A subsequent step involves the capping of the
tube, so that the container is in condition for subsequent
filling, usually at another location. In the present state of
the art, the forming and integration of the shoulder is
performed at one machine, and the application of the cap
or closure is performed at another machine.
(Spec. p. 1, ll. 9-21).
2. In describing the admitted prior art method for manufacturing
flexible tube containers depicted in Figure 1, the Appellant’s
Specification states:
Referring to Figure 1 in the drawing, the known method,
generally referred to by reference character 10 includes a
plurality of manufacturing stations, including a header element
11 having a plurality of mandrels, one of which is indicated by
reference character 12, each supporting a tube 13 having a
previously formed and integrated shoulder 14 with an orificed
member 15, as well as an integrated cap element 16.
(Spec. p. 5, ll. 3-8; fig. 1).
3. Based on the admissions set forth in the Appellant’s
Specification (FF 1 and 2), the Examiner finds that recited process
steps a)-c) are “old and well known practice in the art” (Ans. 3). The
Appellant does not contest these factual findings. Thus, we adopt
4
Appeal 2009-006225
Application 11/729,067

these findings of the Examiner as the findings of the Board for the
purposes of this appeal.
4. In describing a process for producing and forming collapsible
containers, Schmid describes a heading machine 30 that includes a
vertically arranged turntable 31 with rotary spindles 32 (i.e.,
mandrels) arranged vertically on the turntable. (Col. 5, l. 64 – col. 6,
l. 3; fig. 13).
5. Schmid further describes plurality of processing stations of the
heading machine 30 including a station in which a shoulder 34 of a
cap head 33 is welded to a tubular body 23, and a station in which “a
closure cap 36 is screwed in position …” (col. 6, ll. 3-4, ll. 46-48, and
ll. 52-57; fig. 13).
6. The turntable 31 in the heading machine 30 of Schmid rotates
in the direction of the arrow shown in Figure 13 to position the tubular
body 23 at the processing stations with each tubular body 23
remaining engaged with its respective spindle 32 (i.e., mandrel) of the
turntable 31 until the finished tubular body is finally detached from its
respective spindle by blowing in air. (Col. 6, ll. 5-9 and 46-57; fig
13). Thus, as the turntable of Schmid rotates, the tubular body
supported by the same mandrel advances from one processing station
to another. (Fig. 13).
7. Dirksing describes a method for manufacturing collapsible tube
packages in which an outer shoulder surface 22 of the tube head 14 is
attached to the tubular body 16 (col. 4, l. 64 – col. 5, l. 30).
8. Dirksing describes that the outer shoulder surface 22 is attached
to the tubular body 16 by ultrasonic welding (col. 4, l. 64 – col. 5, l.
5
Appeal 2009-006225
Application 11/729,067

30), and does not describe compression molding the shoulder to the
tubular body.

PRINCIPLES OF LAW
By filing an application containing figures labeled prior art, and
statements explanatory thereof, an Applicant concedes what is to be
considered as prior art in determining the patentability of the claimed
invention. In re Nomiya, 509 F.2d 566, 571 (CCPA 1975).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and reaffirmed principles based on its precedent that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” Id. at 415-16. The
Court also noted that “[t]o facilitate review, this analysis should be made
explicit.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by
6
Appeal 2009-006225
Application 11/729,067

mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. In addition, one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F.2d 413, 426
(CCPA 1981).
Anticipation under 35 U.S.C. § 102 is a question of fact. Brown v.
3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). A claim is anticipated only if
each and every element as set forth in the claim is found, either expressly or
inherently described in a single prior art reference. Verdegaal Bros., Inc. v.
Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
With respect to claim construction, we determine the scope of the
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“Absent claim language carrying a narrow meaning, the PTO should only
limit the claim based on the specification or prosecution history when those
sources expressly disclaim the broader definition.” In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004).

7
Appeal 2009-006225
Application 11/729,067

ANALYSIS
Obviousness rejection over APA and Schmid
The Examiner rejects the sole pending claim, independent claim 4, as
obvious over the combination of APA and Schmid. The Examiner’s
rejection is based on the finding that APA describes all of the claimed
limitations except for the recited step of “providing a capping element
adjacent said given location…” for which Schmid is relied upon (Ans. 3-4).
In particular, the Examiner construes “given location” as recited in claim 4
as being satisfied by “the location of the mandrel wheel (31) where each of
the mandrel[s] (32) is located.” Hence, the Examiner finds that Schmid
teaches the step of “providing a capping element adjacent said given
location…” in figure 13 at steps VIII and XI (Ans. 4). The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
“to have modified the [APA] by incorporating the method step of applying
the cap or closure to the tubular body adjacent to the given location as taught
by Schmid et al. to provide a method for a continuous production of tubular
container[s] provided with closure cap[s] in a simple and effective manner
(column 2, lines 50-57).” Id.
Initially, the Appellant argues that Schmid does not disclose any of
the recited process steps (App. Br. 3-4). Regarding process steps a)-c), we
note that the Examiner has not relied upon Schmid to satisfy these
limitations. Instead, the Examiner relies on the APA for teaching the known
prior art method for manufacturing flexible tube containers which
corresponds to the recited process steps a)-c). (Ans. 3-4). In this regard, the
Appellant does not allege, nor do we find, any error with respect to the
Examiner’s finding that the APA teaches the recited process steps a)-c) (FF
8
Appeal 2009-006225
Application 11/729,067

1-3). Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Indeed, the Appellant’s argument does not take into account what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Hence,
the Appellant’s argument which attacks the disclosure of Schmid separately
is not persuasive.
The Appellant also argues that Schmid fails to satisfy the recited step
of “providing a capping element adjacent said given location…” (i.e.,
process step d)) (App. Br. 4). In particular, the Appellant argues that “[e]ach
time turntable 31 is moved[,] a different location is provided.” Id. Thus, the
Appellant contends that Schmid’s turntable “does not provide a given
location as the term is used by Applicant, rather a plurality of locations,” and
asserts that “the Examiner’s problem is one of semantics.” Id.
However, we find no error in the Examiner’s rejection. The semantic
problem alleged by the Appellant resides in the broad and vague language of
the claim, not in the Examiner’s construction thereof. As noted, during
prosecution, claims are given their broadest reasonable construction in light
of the Specification as it would be interpreted by one of ordinary skill in the
art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364. Meaning of
claims are only limited based on the specification or prosecution history
when express disclaimer of the broader definition is provided. See In re
Bigio, 381 F.3d at 1325. The Appellant has not directed us to any specific
definition or a disclaimer within the Specification that would preclude broad
construction of the claim at issue.
9
Appeal 2009-006225
Application 11/729,067

In this regard, the limitation “a given location” is initially set forth in
step b) of claim 4 which simply recites “supporting said body on a mandrel
at a given location.” Schmid provides a station for screwing in a closure cap
36 (i.e., a capping element) which is adjacent to the turntable 31 on which
the spindles 32 (i.e., mandrels) are located (FF 4-6). Thus, the Examiner’s
proposed combination of APA and Schmid results in providing “a capping
element adjacent said given location” and “said container being completely
manufactured and capped at said given location” as recited in claim 4. As
required, the Examiner has also articulated a reason why one of ordinary
skill in the art would combine the teachings of APA and Schmid in the
manner suggested (Ans. 4) which is rational and sufficient to conclude that
the claimed invention is obvious. KSR, 550 U.S. at 418.
Therefore, in view of the above, the Appellant has not shown that the
Examiner erred in concluding that the subject matter of claim 4 is obvious
over APA and Schmid.

Anticipation rejection over Dirksing
The Examiner also rejects claim 4 as being anticipated by Dirksing.
The Examiner’s rejection is based, in part, on the contention that Dirksing
describes “compression molding a shoulder…” (Ans. 5 and 8). However,
we agree with the Appellant that the Examiner mischaracterized Dirksing
(App. Br. 5-6) because Dirksing discloses a process which ultrasonically
welds the outer shoulder surface 22 of the tube head 14 to the tubular body
(FF 8; emphasis added). Thus, the Examiner’s reliance on Dirksing for
teaching “compression molding a shoulder…” is misplaced and the
10
Appeal 2009-006225
Application 11/729,067

Examiner’s rejection of claim 4 as being anticipated by Dirksing is not
sustained.

CONCLUSIONS
1. The Appellant has not shown that Schmid fails to disclose “a
capping element adjacent said given location” and “said container being
completely manufactured and capped at said given location” as recited in
independent claim 4.
2. The Appellant has shown that the Examiner erred in finding
that Dirksing describes “compression molding a shoulder…” as recited in
independent claim 4.

DECISION
1. The Examiner’s rejection of claim 4 under 35 U.S.C. § 103(a)
as unpatentable over APA and Schmid is AFFIRMED.
2. The Examiner’s rejection of claim 4 under 35 U.S.C. § 102(b)
as anticipated by Dirksing is REVERSED.
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) (2007).

AFFIRMED

sss

Charles E. Temko
22 Marion Road
Westport, CT 06880
11