Ex Parte Yourist et al

Patent Trial and Appeal Board

Sep 18, 2017

13303671 (P.T.A.B. Sep. 18, 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.
13/303,671 11/23/2011 Sheldon Yourist 082116.0106 9039
114699 7590
Baker Botts LLP
30 Rockefeller Plaza
New York, NY 10112-4498
09/20/2017 EXAMINER
ANDERSON, DON M
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
09/20/2017 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 YOURIST, DAVID W. CARGILE, and
EDWARD V. PERONE
Appeal 2016-006515
Application 13/303,671
Technology Center 3700
Before: JILL D. HILL, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sheldon Yourist et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s final decision rejecting claims 17—19, 22—26, 33 and 34.1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 1—16, 20, 21, and 27—32 are canceled, and claims 35—46 are
withdrawn from consideration. Appeal Br. (Claims App.).
Appeal 2016-006515
Application 13/303,671
BACKGROUND
Appellants’ invention relates to an intermediate product for producing
a container and a closure. Sole independent claim 33, reproduced below,
represents the claimed invention, with certain limitations italicized.
33. An intermediate product for making a container
comprising:
a blow-molded single-piece hollow body comprising a
container portion and a closure portion,
wherein the container portion includes a mouth, a bottom,
and a container central axis extending through a center of the
mouth and the bottom, and the closure portion includes a
perimeter defining a cavity having an open end, a closed end, and
a closure central axis extending through a center of the open end
and the closed end, the perimeter of the closure portion
configured for mating engagement about the mouth of the
container portion, and further wherein the closure central axis is
aligned parallel with the container central axis.
Appeal Br. 22 (Claims App.).
REJECTIONS
I. Claims 17, 18, 22—26, 33, and 34 stand rejected under 35
U.S.C. § 102(b) as anticipated by Showalter (US 3,632,717, iss. Jan. 4,
1972). Final Act. 2.
II. Claim 19 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Showalter and Kani (US 5,762,859, iss. June 9, 1998). Id.
at 4.
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ANALYSIS
Rejection I—Anticipation by Showalter
Claim 33—Mating Engagement
The Examiner finds, inter alia, that Showalter discloses an
intermediate product for making a container including a “closure portion
[cover 20] configured for mating engagement about the mouth of the
container portion.” Final Act. 2 (citing Showalter, col. 3,11. 17—25; Fig. 4).
Appellants argue that Showalter’s “cover merely rests on top of the
rib 7” of the container, and that Showalter requires “a separate closure
device [] to secure the cover 20 to the rib 7.” Appeal Br. 12 (citing
Showalter, col. 3,11. 32—37; Figs. 4 and 5). According to Appellants, the
term “mating engagement” means “snug fit,” “adhering fit” or “snap fit,”
consistent with the Federal Circuit’s construction of this term. Id. at 13
(citing Devon Indus., Inc. v. American Med. Mfg., Inc., 19 F.3d 39 at *2
(Fed. Cir. 1994)) (non-precedential) (construing “mating configuration”).
The Examiner responds that Showalter’s cover is “provided with a
slightly dependent curved peripheral cage which will mate with the upper
area of rib 7.” Ans. 3 (citing Showalter, col. 3,11. 15—25) (certain emphases
removed). The Examiner notes that Showalter also discloses that “the
downwardly curved edge of the cover in engagement with said mouth.” Id.
(citing Showalter, col. 4,11. 32—38) (certain emphases removed). The
Examiner states that “[o]ne of ordinary skill in the art would recognize”
Showalter’s arrangement as “a snug fit.” Ans. 4. According to the
Examiner, “Showalter does not state that the cinch is required, only that it
may be used.” Id.
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Appellants reply that “configured for mating engagement” means that
the configuration will “hold the closure portion 14 on the container portion
12.” Reply Br. 4 (citing Spec. 126). According to Appellants, “placing (or
pushing) a cover onto a rib,” as the Examiner proposes at best describes
“mating,” but “ignores any engagement therebetween.” Id. at 7. Appellants
assert, moreover, that the Examiner mischaracterizes Showalter’s “cover
cinch 25,” because Showalter’s disclosure of “may be used” does not make
the cover optional, and, rather, applies to “which type of closure device can
be used.” Id. at 8.
Appellants’ arguments are not persuasive because Appellants provide
no intrinsic or extrinsic definition of the term “engagement” that excludes,
or that can be used to differentiate the claimed closure and container
configuration from “the cover in engagement with said mouth,” as disclosed
by Showalter. Showalter, col. 4,11. 34—35; see also Ans. 3. Moreover,
notwithstanding the Federal Circuit’s construction of “mating configuration”
(see Devon Indus., Inc. v. American Med. Mfg., Inc., 19 F.3d 39 at *2),
Appellants do not persuasively argue why a cover that “will mate with the
upper area of rib 7 circumscribing the mouth of the container,” as disclosed
by Showalter (Showalter, col. 3,11. 20-23) is not a “snug fit” as the
Examiner proposes. See Ans. 4. Nor do Appellants persuasively argue why
a cover that “will mate with” and is “in engagement with” a mouth of a
container is not “configured for mating engagement” therewith.
Furthermore, although Showalter discloses an additional closure device, the
additional closure device is used during “shipment” when the containers will
be subject to “displacement” forces. Showalter, col. 3,11. 32—35. Absent
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provision of a definition and explained differentiation, we are not persuaded
by Appellants’ arguments on this point.
Product-By-Process
Appellants argue that Showaiter’s container and cover are made by
centrifugal casting and that “Showalter does not disclose or suggest... a
container including‘a blow-molded hollow body.’” Appeal Br. 13.
According to Appellants, “Showalter is specifically directed to shipping
containers manufactured by centrifugal casting, and does not disclose any
alternative processes.” Id. (citing Showalter, col. 1,11. 15—16 and 11. 66—67
and col. 2,11. 41—63).
The Examiner responds that “Appellants] seem to be arguing the
process by which the intermediate product was produced rather than the
structural features or properties of the product.” Ans. 4. The Examiner
states that Showalter forms a single-piece hollow body and that Appellants
have not provided evidence that Showalter’s “process would result in a
materially different end product from the claimed invention.” Id.
Appellants reply that because “the Examiner explicitly disregards the
term ‘blow-molded’ ... the Examiner has not shown ‘each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.’” Reply Br. 10 (citing Verdegaal
Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987); see
also M.P.E.P. §2131)).
Appellants’ arguments are not persuasive because Showalter discloses
that the containers could be made by various procedures including “molding
or casting.” Showalter, col. 2,11. 49—54 (emphasis added); see also Ans. 4.
Furthermore, once the Examiner provides an explanation tending to show
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that the claimed product appears to be the same or similar to that of the prior
art (see Ans. 4), although produced by a different process, the burden shifts
to Appellants to come forward with evidence establishing a non-obvious
difference between the claimed product and the prior art product. See In re
Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983). Here, Showalter discloses
“molding” and Appellants have not provided evidence that a “molded”
container does not meet the “structure implied by the process step[]” of
blow-molding or is incapable of providing the same structure as blow­
molding. See, e.g., In re Garnero, 412 F.2d 276, 279 (CCPA 1969).
We have considered all of Appellants’ arguments set forth on pages
6—15 of the Appeal Brief and pages 2—10 of the Reply Brief, and are not
persuaded that the Examiner erred. For at least the reasons set forth above,
we sustain the rejection of claim 33 under 35 U.S.C. § 102(b) as anticipated
by Showalter.
Claims 17, 18, 22—26, and 24
Claims 17, 18, 22—26, and 34 depend directly or indirectly from claim
33. Appellants state that “these dependent claims are further allowable for
reciting additional features not disclosed by the prior art of record.” Appeal
Br. 15; Reply Br. 10. This naked assertion does not apprise us of any error
in the Examiner’s findings or reasoning. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and naked assertion that the
corresponding elements were not found in the prior art.”); 37 C.F.R.
§ 41.37(c)(l)(iv) (“The arguments shall explain why the examiner erred as
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to each ground of rejection contested by appellant.”). Accordingly, we
sustain the rejection of claims 17, 18, 22—26, and 34 under 35 U.S.C.
§ 102(b) as anticipated by Showaiter.
Rejection II— Obviousness of Claim 19
Motivation to Combine and Predictable Results
The Examiner finds that Kani discloses that “the container portion (1)
includes at least one indentation (i.e. space below cap fitting portion (3)) and
the closure portion includes at least one corresponding protrusion (i.e.
projection) (6) adapted to engage the at least one indentation.” Final Act. 4
(citing Kani, col. 3,11. 33—40; Fig. 2). The Examiner reasons that it would
have been obvious “to have provided the invention of Showalter with an
indentation and protrusion, as taught by Kani, so that the closure portion
would be less likely to be accidentally removed when mated with the
container portion.” Id.
Appellants argue that there is no motivation “to combine Showalter
with Kani to arrive at the claimed subject matter” because Showalter uses
centrifugal casting to form a cover that rests on top of the rib of the container
and is secured in place by a separate closure device, whereas Kani is
directed to a blow molding method where “the cap body is formed
perpendicular to the receptacle body—which directly contradicts the claimed
configuration as recited in claim 33.” Appeal Br. 17—18. According to
Appellants, “combining the two would not yield predictable results.” Id. at
18.
The Examiner responds that the Final Action provided a motivation,
namely, “so that the closure portion would be less likely to be accidentally
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removed when mated with the container portion.” Ans. 5. The Examiner
states that the modification is not a bodily incorporation of Kani, and, rather,
is a modification of “the mold [of] Showalter.” Ans. 5—6. According to the
Examiner, Appellants are “argu[ing] against the references individually,”
because “Showalter was used to teach the closure in the claimed orientation;
Kani was only relied upon for the elements mentioned] above.” Ans. 6.
Appellants reply that the Examiner’s reasoning “would not motivate
or provide apparent reason to combine Showalter with Kani as Showalter
has already explicitly provided a solution to prevent the accidental removal
of the cover, namely, the closure device (e.g., clinch 25).” Reply Br. 12.
According to Appellants, the Examiner has not established that the results of
the modification “would have been predictable.” Id.
We are not persuaded by Appellants’ arguments that it would be non-
obvious to combine the teachings of Showalter and Kani because Showalter
already prevents accidental removal. The fact that a reference already
performs a function or provides a solution does not mean that one skilled in
the art would not try to improve its performance of that function or look to
alternate solutions. Further, we are not persuaded that the combined
teachings would yield unpredictable results. Showalter discloses container 2
having outwardly extending rib 7, and cap 11 having outwardly extending
rib 8 that mates with rib 7. Showalter, col. 3,11. 18—23; Figs. 1 and 4; see
also Final Act. 2. Kani discloses a container (receptacle 1) having
outwardly extending rib 3, and cap 4 with inwardly extending rib 6 that
engages rib 3. Kani, col. 3,11. 29-41; Fig. 2. We reproduce below Figure 1
of Showalter and Figure 2 of Kani to compare the rib structure.
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Figure 1 of Showaiter is a sectional view of a hollow container.
FIG. 2
Figure 2 of Kani shows a sectional view of a portion of a receptacle.
Showalter also discloses that the container could be formed by
“various procedures” including “molding or casting.” Showalter, col. 2,11.
49—54. Kani also discloses a “molding operation” for forming container 1.
Kani, col. 4,11. 14—20. Given the teachings of Showalter and Kani, one
skilled in the art would understand that molding produces various shaped
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articles and that the shape of the mold determines the position of the rib
(outwardly or inwardly extending), and the results of altering the position of
the rib would have been predictable.
Reasonable Expectation of Success
Appellants also argue that the Examiner’s proposed modification is
made without determining whether there is a “reasonable expectation of
success.” Reply Br. 12—13. Appellants assert that Kani has a rib or
projection configuration in a “cap body [ ] formed perpendicular to the
receptacle body—which directly contradicts the claimed configuration.” Id.
at 13. According to Appellants, because the cap of Showaiter is in a
different orientation, the Examiner has not established whether the material
of “Showalter could sufficiently conform to the surface of such a protrusion
and cavity sections.” Id.
We are not persuaded by Appellants’ arguments because obviousness
does not require that all of the features of the secondary reference be bodily
incorporated into the primary reference. In re Keller, 642 F.2d 413, 425
(CCPA 1981). In this case, the Examiner relies on Showalter, not Kani, to
disclose the orientation of the cap relative to the body, and proposes to
modify the mold of Showalter to incorporate projections that engage with
each other. Ans. 6. Surety that the modification will be successful is not
required; all that is required is a reasonable expectation of success. See In re
O’Farrell, 853 F.2d 894, 903—904 (Fed. Cir. 1988). Here, given that both
Showalter and Kani are introducing a plastic material into the chamber of a
mold and causing the material to conform to the shape of the closed mold to
form a hollow body, the Examiner has a sound basis for determining that the
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mold of Showalter could have been modified to form indentations and
protrusions as taught by Kani. Appellants do not provide a persuasive
reason why modifying the mold of Showalter, as the Examiner proposes,
would be beyond the abilities of one of ordinary skill. Thus, one of ordinary
skill in the art would reasonably expect the modification to be successful.
For these reasons, we sustain the rejection of claim 19 over Showalter
and Kani.
SUMMARY
We affirm the rejection of claims 17, 18, 22—26, 33, and 34 under 35
U.S.C. § 102(b) as anticipated by Showalter.
We affirm the rejection of claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Showalter and Kani.
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.
§ 41.50(f).
AFFIRMED
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