Ex Parte Washizaki et al

Patent Trial and Appeal Board

Apr 13, 2018

13701659 (P.T.A.B. Apr. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131701,659 12/03/2012 Toshirou Washizaki
38834 7590 04/17/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
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.
P22711USOO 2035
EXAMINER
STCLAIR, ANDREW D
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
04/17/2018 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIROU W ASHIZAKI and TOMOHO KIKUCHI
Appeal2017-003445
Application 13/701,659
Technology Center 3700
Before MICHAEL L. HOELTER, NATHAN A. ENGELS, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Toshirou Washizaki and Tomoho Kikuchi ("Appellants") 1 seek
review under 35 U.S.C. § 134(a) of the Examiner's decision, as set forth in
the Final Office Action dated January 22, 2016 ("Final Act."), and as further
explained in the Advisory Action dated May 3, 2016, rejecting claims 3, 4,
7, and 8. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm in part.
1 Appellants identify TOYO SEIKAN KAISHA, LTD. as the real
party in interest. Appeal Br. 2.
Appeal2017-003445
Application 13/701,659
BACKGROUND
The disclosed subject matter "relates to a method and a device for gas
replacement of a container by blowing an inert gas to a head space of a
container filled with contents such as a beverage can so that a gas remaining
inside the head space is replaced by the inert gas." Spec. i-f 1. Claims 3 and
7 are independent. Claims 3 and 7 are reproduced below, reformatted from
the versions provided, and with bracketed letters added to identify each
clause:
3. A method of replacing a gas of a container
comprising blowing a replacement gas laterally
from a replacement nozzle toward a gap between a
can lid and a can body opening directly before
covering an opening of a can body filled with
contents by the can lid so that a gas remaining inside
a head space of the can body is replaced by the
replacement gas,
[A J wherein the space between replacement
gas passageway outermost walls of the replacement
nozzle are divided by a plurality of wind direction
adjustment plates so as to form a plurality of
blowout ports,
[BJ wherein fingers are provided on the body
of the replacement nozzle,
[CJ wherein a replacement gas jet flows
symmetrically blowing about a center line in the
container radial direction from the blowout ports,
the replacement gas jet flows blowing along the
replacement gas passageway outermost walls form
an angle of 100° to 130° there between, and
[DJ wherein the replacement gas flow blows
from the replacement nozzle to a range having
[iJ 1/3 or more of a height of a can neck
portion at the lower side from a can opening
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Application 13/701,659
end or a depth of 3 mm or more in the can
body direction from the can opening end; and
[ii] a height of a can lid height or more
at the upper side or a height of 3 mm or more
at the upper side from the opening end, and
[E] wherein the can neck portion is a neck-
downed area of the can body.
7. A device for gas replacement of a container
comprising a replacement nozzle from which a
replacement gas is blown toward a gap between a
can lid and a can body opening directly before
covering an opening of a can body filled with
contents by the can lid so that a gas remaining inside
a head space of the can body is replaced by the
replacement gas,
[A] wherein the space between replacement
gas passageway outermost walls of the replacement
nozzle are divided by a wind direction adjustment
plate so as to form a plurality of blowout ports
which are arranged on a circular-arc and jet the
replacement gas toward a container opening so as to
be symmetrical about a center line in the container
radial direction,
[BJ wherein fingers are provided on the body
of the replacement nozzle,
[CJ wherein the blowout ports have a height
of an opening which is higher than
[i] a sum of a can lid height and 1/3 or
more of a height of a can neck portion at the
lower side from a can opening end, or
[ii] a sum of a depth of 3 mm or more
in the can body direction from the can
opening end and the can lid height or more at
the upper side, or
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Appeal2017-003445
Application 13/701,659
Boyd
Marano
Miyazaki
Takenouchi
[iii] a sum of a depth of 3 mm or more
in the can body direction from the can
opening end and a height of 3 mm or more
from the can opening end at the upper side, or
[iv] a sum of a height of 3mm or more
from the can opening end at the upper side
and 1/3 or more of a height of a can neck
portion at the lower side from the can opening
end,
[DJ wherein an opening angle between the
replacement gas passageway outermost walls is
100° to 130°, and
[E] wherein the can neck portion is a neck-
downed area of the can body.
EVIDENCE RELIED ON BY THE EXAMINER
US 2,693,305 Nov. 2, 1954
US 5,201,165 Apr. 13, 1993
Japanese Publication No. 2003-
312609 (and machine
translation)2
Japanese Publication No. 2004-
059016 (and machine
translation) 3
Nov. 6, 2003
Feb.26,2004
2 On December 3, 2012, the Examiner added to the file history the
original Japanese language publication for Miyazaki and the abstract (in
English). On February 20, 2015, the Examiner added a machine translation
of the entire written description of Miyazaki. Any citations to specific
paragraphs refer to the machine translation.
3 On December 3, 2012, the Examiner added to the file history the
original Japanese language publication for Takenouchi and the abstract (in
English). On July 8, 2015, the Examiner added a machine translation of the
entire written description of Takenouchi.
4
Appeal2017-003445
Application 13/701,659
REJECTIONS
1. Claims 7 and 8 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention.
2. Claims 3, 4, 7, and 8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Miyazaki.
3. Claims 3, 4, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Miyazaki in view of Marano, Takenouchi, and Boyd.
DISCUSSION
Rejection 1 - The rejection of claims 7 and 8
under 35USC§112, second paragraph
The Examiner rejected claim 7 as well as claim 8 (which depends
from claim 7) under 35 U.S.C. § 112, second paragraph, stating that "[l]ines
13-19 of claim 7 are not clear." Final Act. 5. The Examiner stated, "[i]n
line 1 7, it is unclear what 'the upper side' is referring to; the upper side of
the nozzle or the upper side of the can?" Id. The Examiner also stated that
"[i]t is unclear what is meant by 'a sum of a depth of 3mm or more in the
can body direction from the can opening and .... "' Id.; see also Appeal Br.
16 (Claims App.) (claim 7, clause C (as designated above)).
Appellants provide argument addressing this Rejection, but not until
the Reply Brief. See Reply Br. 5-7; see also Ans. 8 ("The Appeal Brief
does not acknowledge or traverse the indefiniteness rejection."). For
procedural reasons, we will not address this argument. See 37 C.F.R.
§ 41.41 (b )(2) (2015). The argument in the Reply Brief addresses the
rejection as originally provided in the Final Office Action, rather than
positions raised in the Answer. Although Appellants reference a discussion
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Application 13/701,659
from the Answer as providing the Examiner's reasoning (Reply Br. 2 (citing
Ans. 2, 11. 8-14)), the same basis for the Rejection was provided in the Final
Office Action. Compare Ans. 2 ("Lines 13-19 of claim 7 are not clear."),
with Final Act. 5 ("Lines 13-19 of claim 7 are not clear.").
Appellants have not shown good cause for failing to provide this
argument in the Appeal Brief, and Appellants' failure to address this
Rejection in the Appeal Brief constitutes a waiver of Appellant's argument.
See 3 7 C.F .R. § 41.41 (b )(2). Thus, we sustain the rejection of claims 7 and
8 under 35 U.S.C. § 112, second paragraph.
Rejection 2-The rejection of claims 3, 4,
7, and 8 under 35 US.C. § 102(b)
Both independent claims 3 and 7 recite "wherein fingers are provided
on the body of the replacement nozzle." See Appeal Br. 15 (Claims App.)
(claim 3, clause B), 16 (claim 7, clause B). For this Rejection, the Examiner
identified element 1 in Miyazaki as the "replacement nozzle" (Final Act. 6,
8) and provided the following annotated version of Figure 2 of Miyazaki to
identify the recited "fingers":
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Application 13/701,659
Final Act. 7; Ans. 4. Figure 2 of Miyazaki shows, among other features, gas
turret 1, can body 2, and gas supply channel 5. See Miyazaki i-fi-f 14, 15.
Appellants argue that "Miyazaki fails to disclose, expressly or
inherently, that fingers are provided on the body of the replacement nozzle,
as recited in claims 3 and 7" and argue that "[ t ]he present invention employs
a configuration in which, as illustrated in Figure 2 [of Appellants'
Specification], the fingers 4 are provided on the replacement nozzle body 11
.... " Appeal Br. 8. According to Appellants, "Figure 2 of Miyazaki merely
illustrates a horizontal cross-section of the nozzle body, but does not depict
the fingers, let alone that the fingers are positioned on an upper surface of
the nozzle body." Reply Br. 4. We agree with Appellants.
Appellants' Specification supports Appellants' proposed construction
of "provided on" as positioned on an upper surface of. See Reply Br. 4. For
example, in describing Figure 2 (below), the Specification provides that
"fingers 4 and 4 are provided on the nozzle body 11." Spec. i120.
Fig. 2
4
/
. '
' I . /
___ ....-· ·'1• /
.-·""'°
,, ! ! \
30 15-1 13 l6 1 5-2 \
10
4
Spec., Fig. 2. Figure 2 provides "a main front view when seen from a
circular-arc concave portion." Id. i-f 15.
The "fingers" identified by the Examiner are not positioned on an
upper surface of the identified "replacement nozzle"--element 1 in the
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Appeal2017-003445
Application 13/701,659
annotated version of Figure 2 of Miyazaki above; instead, the identified
"fingers" are part of the identified "replacement nozzle." The Examiner
states that the identified "fingers" "fall within the broadest reasonable
interpretation of the claim language" at issue, but the Examiner does not
explain how. Ans. 11.
For these reasons, we do not sustain the rejection under 35 U.S.C.
§ 102(b) of claims 3 and 7, and we also do not sustain the rejection of claim
4 (which depends from claim 3) and claim 8 (which depends from claim 7).
As an additional basis for the decision as to Rejection 2, we also agree
with Appellants that the Examiner erred in relying on Figure 3 of Miyazaki
to address the dimensional requirements recited in clause D of claim 3 and
clause C of claim 7. See Appeal Br. 6; see also Final Act. 6-8 (relying on an
annotated version of Figure 3 of Miyazaki regarding the clauses at issue).
As noted by Appellants, "Miyazaki does not disclose that figure 3 ... is
drawn to scale." Appeal Br. 6; see also In re Wright, 569 F.2d 1124, 1127
( CCP A 1977) ("This ignores the fact that [the prior art reference] does not
disclose that [its] drawings are to scale. Absent any written description in
the specification of quantitative values, arguments based on measurement of
a drawing are of little value.").
The Examiner highlights the statement in In re Mraz, 455 F.2d 1069,
1072 (CCPA 1972), that "things patent drawings show clearly are [not] to be
disregarded," and the Examiner argues that "the subject matter at issue is
clearly shown in the drawings of Miyazaki." Ans. 8. According to the
Examiner, this Rejection "does not rely on a ruler or caliper gauge to take
precise measurements of drawings of the Miyazaki reference, but instead is
only relying on figure 3 of Miyazaki for what it clearly shows and teaches."
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Application 13/701,659
Id. (also stating that "[a]t most, the anticipation rejection relies on figure 3 of
Miyazaki for a teaching of generalized proportions which are clearly
visible"). We do not agree with the Examiner's position.
The aspects of the clauses at issue addressed in the Rejection require
specific relationships between the height of the gas outlet, the "can lid
height" and the "height of a can neck portion." See Appeal Br. 15 (Claims
App.) (claim 3, clause D), 16 (claim 7, clause C). Whether the relevant
dimensions in Figure 3 of Miyazaki-such as, for example, the height of can
lid 10 and the height of the identified "can neck portion" (see Final Act. 7)------
satisfy the language of the clauses at issue is not clear by mere visual
inspection (i.e., without measuring the dimensions). 4 As such, we determine
that the Examiner's reliance on Figure 3 of Miyazaki was improper. For this
additional reason, we do not sustain the rejection of claims 3, 4, 7, and 8
under 35 U.S.C. § 102(b).
Rejection 3 -The rejection of claims 3, 4, 7,
and 8 under 35 US.C. § 103(a)
For Rejection 3, the Examiner relies on the same features in the
annotated version of Figure 2 of Miyazaki (reproduced above) for the
"fingers" in clause B of claim 3 and clause B of claim 7. See Final Act. 9-
10. Appellants rely on the same arguments provided above. See Appeal Br.
13. For the same reasons discussed above (see supra Rejection 2), we do
not sustain the rejection of claims 3, 4, 7, and 8 under 35 U.S.C. § 103(a).
4 Moreover, based on our review, whether the relevant dimensions in
Figure 3 of Miyazaki satisfy the clauses at issue is not entirely clear even
after measuring the relevant dimensions.
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Application 13/701,659
We tum now to an additional basis for the decision as to Rejection 3.
As to the dimensional requirements recited in clause D of claim 3 and clause
C of claim 7, for Rejection 3, the Examiner found that "it is well-known in
the art that the position, dimensions, and shape of the nozzle outlet [of] such
devices are result effective variables for optimizing the amount of oxygen in
the head space of the container." Final Act. 9. The Examiner then cited
various aspects of Marano, Takenouchi, and Boyd in support of this finding.
See id. at 9--10. According to the Examiner,
[i]t would have been obvious to one skilled in the art at the
time the invention was made to change the shape, dimensions,
and/or position of the nozzle of Miyazaki and thereby change the
range of gas flow therefrom, for the purpose of optimizing the
function of removing oxygen from the container via a
replacement gas, in view of the disclosures of Marano,
Takenouchi, and Boyd. Doing so amounts to the optimization of
a recognized result effective variable, absent a showing of
unexpected results.
Final Act. 10 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
Appellants argue that the
cited art fails to recognize that the novel positional relationship
between the range for the blow out ports and the can neck
portion, as recited in claim 3 . . . , and the novel positional
relationship between the height of the opening of the blow out
ports and the can neck portion, as recited in claim 7 of the present
application, are result effective variables ....
Appeal Br. 10-11. Thus, according to Appellants, it was "improper for the
Examiner to use the routine optimization rationale to render obvious the
novel positional relationships, as recited in claims 3 and 7 of the present
application." Id. at 11.
The Examiner responds that Marano, Takenouchi, and Boyd
"demonstrate that the prior art recognizes the shape, size, and position of a
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Application 13/701,659
nozzle opening as result-effective variables for changing the range of gas
flowing from the nozzle and thereby optimizing the removal of oxygen from
a container via a replacement gas." Ans. 12.
We agree with Appellants that the cited aspects of the prior art do not
recognize, for example, the size of the nozzle opening as a result-effective
variable-i.e., "a variable which achieves a recognized result" (Manual of
Patenting Examining Procedure§ 2144.05(II)(B) (9th ed., Rev. 08.2017,
Jan. 2018)). See In re Antonie, 559 F.2d 618, 620 (CCPA 1977) ("The PTO
and the minority appear to argue that it would always be obvious for one of
ordinary skill in the art to try varying every parameter of a system in order to
optimize the effectiveness of the system even if there is no evidence in the
record that the prior art recognized that particular parameter affected the
result" (emphasis added)); see also In re Applied Materials, Inc., 692 F.3d
1289, 1295 (Fed. Cir. 2012) (discussing how the general rule from In re
Aller, 220 F.2d 454, 456 (CCPA 1955), "is limited to cases in which the
optimized variable is a 'result-effective variable[]' In re Antonie, 559 F .2d
618, 620 (CCPA 1977)").
The cited portions of Marano and Takenouchi do not appear to
address the size of such a nozzle opening at all. One of the cited portions of
Boyd discusses certain dimensions and other aspects of a similar exemplary
system, but Boyd does not teach that the size of discharge orifice portion 29
is a variable that achieves a recognized result. See Boyd, col. 4, 11. 4--36
(discussing Figures 9 and 10), cited at Final Act. 10. For this additional
reason, we do not sustain the rejection of claims 3, 4, 7, and 8 under
35 U.S.C. § 103(a).
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Application 13/701,659
DECISION
We affirm the decision to reject claims 7 and 8 under 35 U.S.C. § 112,
second paragraph, we reverse the decision to reject claims 3, 4, 7, and 8
under 35 U.S.C. § 102(b), and we reverse the decision to reject claims 3, 4,
7, and 8 under 35 U.S.C. § 103(a). 5
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
5 See 37 C.F.R. § 41.50(a)(l) ("The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim, except as to any ground specifically
reversed.").
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