Ex Parte Yourist

Patent Trial and Appeal Board

Oct 6, 2017

13347261 (P.T.A.B. Oct. 6, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/347,261 01/10/2012 Sheldon E. Yourist 082116.0377 1471
114699 7590
Baker Botts LLP
30 Rockefeller Plaza
New York, NY 10112-4498
EXAMINER
CASTRIOTTA, JENNIFER
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
10/11/2017 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):
DLNYDOCKET@BAKERBOTTS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHELDON E. YOURIST
Appeal 2016-0026891
Application 13/347,261
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and
GORDON D. KINDER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 1—38. App. Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the Real Party in Interest is Graham Packaging
Company, L.P. Appeal Br. 2 (May 15, 2015).
Appeal 2016-002689
Application 13/347,261
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to the field of
packaging, and more specifically to the field of retortable plastic
containers.” Spec. 11. Claim 1 is the sole independent claim, is illustrative
of the claims on appeal, and is reproduced below.
1. A retortable plastic container, comprising:
a main body; and
a bottom;
the bottom defining a raised inner portion and at least one
substantially flat bottom support surface defining a reference
plane and having a radially inward portion and a radially
outward portion each co-planar with the reference plane, the
support surface having a curved portion positioned near a
radially outermost edge of the bottom when viewed in cross-
section, and further comprising a groove defined in the
substantially flat bottom support surface between the radially
inward portion and the radially outward portion.
REFERENCES RELIED ON BY THE EXAMINER
Schild US 3,341,059 Sept. 12, 1967
Supik US 4,732,292 Mar. 22, 1988
Lewis US 2011/0017753 A1 Jan. 27, 2011
THE REJECTIONS ON APPEAL
Claims 1^4 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Supik and Schild.
Claims 5—38 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Supik, Schild, and Lewis.
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ANALYSIS
The rejection of claims 1—4
as unpatentable over Supik and Schild
Appellant presents separate arguments for independent claim 1 (App.
Br. 12—17) and dependent claim 4 (App. Br. 17—18). Regarding claims 2
and 3, Appellant recites their respective limitations and contends that the
claim in question is allowable either on basis of its dependency from claim 1
or simply that the art of record does not disclose the recited feature. App.
Br. 18—19; see also Reply Br. 6. No separate argument is presented with
respect to claims 2 and 3. We select claims 1 and 4 for review, with claims
2 and 3 standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1
Claim 1 recites a “bottom” defining a “substantially flat bottom
support surface” with this “support surface” also “having a curved portion
positioned near a radially outermost edge of the bottom when viewed in
cross-section.” The Examiner relies on Supik for such teaching. Final Act.
2 (referencing Supik Fig. 5). Appellant contends, “Supik Does Not Disclose
or Suggest a Curved Portion as Claimed.” App. Br. 12; see also Reply Br. 2.
Appellant contends, “Supik specifies that the metal can has an angled
transition section.” App. Br. 12.
Figure 5 of Supik is a sectional view of the bottom of a container.
Supik 2:18—20. The Examiner finds that this figure shows a curved portion
“when viewed in cross-section (at the intersection of the transition portion
and the outward portion 20).” Final Act. 2. Figure 5 depicts this location as
the intersection of two straight surfaces (i.e., angled, not curved), in cross-
section. The Examiner does not elaborate as to how such a cross-section can
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be said to be “curved.”2 We agree with Appellant that the intersection
referenced by the Examiner and as depicted in Figure 5 is not “curved” as
that term would normally be understood.
However, in the Examiner’s Answer, the Examiner identifies where
Supik states, “[t]he transition between the body and the bottom can be made
by a rounding or curve.” Ans. 3 (referencing Supik 2:25—28). Appellant
addresses this written description stating that Supik’s “transition” is “defined
‘between the body and the bottom’” and that consequently, this “transition”
“cannot be construed to be the curved portion” because the recited “curved
portion” is part of the recited “bottom”/“support surface” and is not
“between the body and the bottom” as described in Supik. Reply Br. 1; see
also id. 3^4.
Appellant’s argument is not persuasive because Appellant is assigning
the term “bottom” two different meanings, one based on how this term is
recited in claim 1 and the other based on how Supik uses this term. See e.g.,
App. Br. 13 (“the ‘outward delimiting edge’ of the metal can of Supik, by
definition, must establish the discrete boundary of the bottom section.”); see
also Reply Br. 3^4. We abide by the definition of “bottom” as set forth in
claim 1. As above, claim 1 recites a “bottom” having a “substantially flat
bottom support surface” but with this “support surface” also “having a
curved portion.” In contrast, Supik identifies “bottom 2” separate from the
(optionally rounded) outer “transition section 3.” Supik 2:23—36. Hence,
Appellant’s contention that Supik does not satisfy the limitation of claim 1
2 Appellant states, “[t]he ‘curved portion’ as recited in independent claim 1
should therefore be understood as ‘a line or outline that gradually deviates
from being straight for some or all of its length. ’ Oxford English Dictionary
(online ed.).” App. Br. 13.
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Application 13/347,261
(because Supik’s rounded transition is described as being “between the body
and the bottom,” and thus is not part of Supik’s “bottom”), is not persuasive.
Claim 1 further recites, “a groove defined in the substantially flat
bottom support surface.” Appellant contends that Supik fails to disclose this
limitation. App. Br. 14; Reply Br. 4—5. The Examiner references Supik’s
“groove (18)” as teaching this limitation. Final Act. 2. Appellant is not
persuasive that Supik fails to teach such a groove.
In the Final Action, the Examiner relies on the secondary reference to
Schild as teaching the use of plastics in manufacturing containers (Supik is
directed to metal containers). Final Act. 2. Appellant contends, “Supik
Cannot Be Modified by Schild” because, first, “[t]he cited art of record
provides no motivation” for doing so and, second, “such a modification
[would not] have any reasonable expectation of success or yield predictable
results.” App. Br. 14—15; see also Reply Br. 5.
Appellant’s first rationale is not persuasive because we are instructed
that the motivation for the combination need not come from “[t]he cited art
of record” as argued. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007). On this point, the Examiner stated that it would have been obvious
“to modify Supik with plastic” because it is within the ability of one skilled
in the art “to select a known material on the basis of its suitability for the
intended use as a matter of obvious design choice.” Final Act. 3. Although
the Examiner also provides an additional reason for the combination of
Supik and Schild (which Appellant disputes (Ans. 4, Reply Br. 1—2, 5)),
Appellant does not address the Examiner’s earlier stated reason (i.e.,
“suitability for the intended use”/”design choice”) or otherwise explain how
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Application 13/347,261
such earlier expression regarding the combination of Supik and Schild might
be in error.
Appellant’s second rationale expressed above (including that the
“combination would be unsatisfactory for the intended purpose”) is premised
on the modification being “directly contrary to one or more advantages
and/or performance requirements specified by Supik.” App. Br. 15—16. As
stated by Appellant, Supik is directed to stretching the bottom of the metal
can to provide “better adhesion of the lacquer layers on the inner surface of
the bottom area.” App. Br. 15 (referencing Supik 1:53—58). Indeed, this is a
problem identified by Supik, which Supik solves by stretching “because of
the greater roughness caused by the stretching operation.” Supik 1:56—58.
Appellant does not explain how Supik’s desire for a rougher surface for
adhesive purposes cannot also be satisfied by skillfully selecting a plastic
material based on its roughness characteristics.
Appellant also addresses the secondary reference to Schild stating,
“Schild suggests that ‘ [tjhermoplastics lack the combined properties of
resiliency, stiffness and hardness found in metals causing the former to flow
and become permanently deformed when subjected to sufficient stress and,
if the stress is severe enough to fracture or be cut.” App. Br. 16 (quoting
Schild 1:39-43). However, not stated by Appellant is Schild’s follow-up
discussion that it is an object of the invention to provide a thermoplastic
container “having a construction particularly adapting it to readily receive
and retain in tight engagement a metal end closure.” Schild 1:44-48. Thus,
Schild is not disparaging the use of thermoplastic material for containers, but
instead, is disparaging the prior “construction” of those earlier containers.
See also Schild 2:16—18 (“As a preferred or exemplary embodiment of the
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instant invention, FIG. 2 shows a container generally designated 10
composed essentially of a thermoplastic synthetic resin.”).
Appellant additionally addresses the teachings of Lewis contending
that Lewis does not cure the above defect of Supik and Schild. App. Br. 16—
17; Reply Br. 5—6. However, the Examiner did not rely on Lewis for
rejecting claim 1 (see Ans. 4) and as such, Appellant’s arguments regarding
Lewis in this context are not persuasive.
Accordingly, and based on the record presented, Appellant’s
contentions regarding claim 1 are not persuasive of Examiner error. We
sustain the Examiner’s rejection of claims 1—3 as being obvious over Supik
and Schild.
Claim 4
Claim 4 depends from claim 1 and further states, “wherein the
retortable plastic container is an extruded blow molded structure.” The
Examiner finds this “extruded blow molded” language to be indicative of a
“product by process claim” and as such, “is not germane to the issue of
patentability of the device itself.” Final Act. 3; see also Ans. 4. Appellant
contends that “extruded blow molded” is an adjective “describing the
structure of the container” whereas, according to Appellant, the Examiner
incorrectly addressed this language “as a verb.” App. Br. 17—18; see also
Reply Br. 2.
The claim phrase “extruded blow molded” modifies the term
“structure.” The “extruded blow molded” language only makes sense if the
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structure is constructed via the process of extrusion blow molding.3 Hence,
we are not persuaded the Examiner erred in concluding that claim 4
describes a product-by-process limitation.4 We sustain the Examiner’s
rejection of claim 4 as being obvious over Supik and Schild.
The rejection of claims 5—38
as unpatentable over Supik, Schild, and Lewis
Appellant contends these claims are allowable either on basis of their
(sometimes direct, sometimes indirect) dependency from claim 1 or simply
because the art of record does not disclose the recited feature. App. Br. 18—
23; Reply Br. 6. In other words, no separate argument is presented with
respect to any of these claims establishing why the cited art fails to teach the
limitation in question or explaining why the Examiner’s reliance on Supik,
Schild, and Lewis is in error. See also Ans. 4—5. Accordingly, we sustain
their rejection.
DECISION
The Examiner’s prior art rejections of claims 1—38 are affirmed.
3 It is noted that Schild states, “[t]he container 10 can be formed with the
body 12 and bottom 14 integral by means well known in the art such as blow
molding or thermoforming.” Schild 2:37—39.
4 Appellant’s arguments regarding how other terms, such as “welded,” have
not been deemed a product-by-process limitation are not persuasive because
any such determination depends on how the term in question is actually
employed. App. Br. 18. For example, in an analogous situation, Appellant
does not explain how “a welded structure” fails to recite a structure formed
via a welding process.
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Application 13/347,261
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)(iv).
AFFIRMED
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