10556374 et al.

Patent Trials and Appeals Board

Jan 27, 2022

2022000434 (P.T.A.B. Jan. 27, 2022)

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. 96/000,342 09/16/2020 10556374 H-8021-0-US 2487 24132 7590 01/27/2022 HUSKY INJECTION MOLDING SYSTEMS LTD. 500 QUEEN STREET SOUTH BOLTON, ONTARIO L7E 5S5 CANADA EXAMINER DAWSON, GLENN K ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 01/27/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HUSKY INJECTION MOLDING SYSTEMS LTD. Patent Owner and Appellant Appeal 2022-000434 Reexamination Control 96/000,342 Patent US 10,556,374 B2 Technology Center 3900 Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(b) and 306, Husky Injection Molding Systems Ltd. (Appellant)1 appeals from the final rejection of claims 1-8.2 We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellant identifies the real party in interest as Husky Injection Molding Systems Ltd. Appeal Br. 1. 2 This proceeding arose in connection with a supplemental examination of US Patent 10,556,374 B2 (“Beck”), which, as the Examiner notes, includes issues under 35 U.S.C. § 112. See Final Act. 2-6. Appeal 2022-000434 Reexamination Control 96/000,342 Patent US 10,556,374 B2 2 We AFFIRM. CLAIMED SUBJECT MATTER Claim 1, reproduced below3, is illustrative of the claimed subject matter: 1. A method for converting a design of an original preform that is blow moldable to form a container into a design of a converted preform having less molding material that is blow moldable within a same blow mold of a blow molding machine as the original preform [to form the same container], the original preform having a hollow tubular body that includes a neck finish at an open end thereof, an original base at a closed end thereof and a body arranged between the neck finish and the original base, wherein the neck finish is configured to retain, in use, a closure thereon, and the body and the original base are blow moldable to form corresponding parts of the container, the method comprising: retaining the neck finish and the body of the original preform on the converted preform; and replacing the original base of the original preform with a converted base having an outer base surface that joins with an outer body surface of the body at a base split line (S1) of the original base and that fits off set within an original outer body surface of the original base, whereby the outer base surface of the converted base is entirely convex, and the converted preform has a reduced total length, disregarding any gate vestige that may be formed thereon, relative to a total length of the original preform. 3 Claim 1 includes amendments. Appellant did not provide the claim in amended format. We have included underlining to denote the added material and brackets to indicate the deleted material because it is important to understand what has been amended to evaluate the rejections. Appeal 2022-000434 Reexamination Control 96/000,342 Patent US 10,556,374 B2 3 REJECTIONS Claims 1-8 are rejected under 35 U.S.C. § 305 as enlarging the scope of the claims of the patent being reexamined. Claims 1-8 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description. Claims 1-8 are rejected under 35 U.S.C. 112(b), as being indefinite. OPINION Indefiniteness Claim 1 recites “[a] method for converting a design of an original preform . . . into a design of a converted preform.” The Examiner rejects the claim as indefinite because “it is unclear what the claimed ‘design’ connotes. Is this merely a construct of someone’s thoughts, a modification of actual design plans for constructing a preform, or a method of actually constructing a converted preform?” Final Act. 12. Appellant responds that “a person [of ordinary skill in the art] would understand that the disclosed design was for a preform within a mold as depicted in the figures,” which “clearly refers to an actual preform, not ‘a construct of someone’s thoughts.’” Appeal Br. 12. Appellant contends that The examiner erred by adopting an unreasonably broad interpretation of design untethered from the teachings of the specification. In isolation, the denotation of the noun “design” may include “plans or drawings,” but also includes “6: the arrangement of elements or details in a product or work of art.” See www.merriam-webster.com/dictionary/design (last visited Aug. 4, 2021) (emphasis added). Appeal 2022-000434 Reexamination Control 96/000,342 Patent US 10,556,374 B2 4 Id. Appellant contends that its definition of “design” “is also dictated by claim 1[’s] two method steps.” Id. Appellant explains that “[t]hese method steps do not refer to modifying ‘just plans or drawings;’ they refer to modifying a product (i.e., a preform).” Id. at 13. Appellant’s contentions are not persuasive. We agree with the Examiner that the claim can be read as nothing more than a mental exercise of designing a product.4 The Examiner is correct that [i]f Patentee’s statement is correct and the claim is a method of modifying an actual preform, then the steps of retaining the neck finish and body of the original preform and replacing the original base with a converted base would appear to actually require starting with an original preform, physically removing the original base from the neck finish and body of the original preform, and physically replacing it with the converted base. Ans. 14. As the Examiner correctly notes, however, “there is no disclosure of actually removing an original base, and then replacing it (attaching it in some way to the original neck finish and body?).” Id. We agree that the method can be read as “only requir[ing] changing the specifications and dimensions of the base to provide a ‘converted preform[’] if and when it were actually injection molded, then the base hasn’t really been ‘replaced’, [its] specs have merely been altered.” Ans. 14. Moreover, the claim does not recite any particular frame of reference for the design modification, other than that the modifications are relative to an “original preform” of some unspecified geometry. And how would one skilled in the art even know what was in a designer’s mind when making the 4 The Examiner did not, however, make a rejection under 35 U.S.C. § 101. Appeal 2022-000434 Reexamination Control 96/000,342 Patent US 10,556,374 B2 5 “converted preform?” That is, how would one know whether a method resulting in a preform having the features of the recited “converted preform” meets the claim if it requires modifying some “original preform” design in the designer’s mind? The indefiniteness issue also arises with respect to whether the “converted preform ha[s] less molding material that is blow moldable within a same blow mold of a blow molding machine as the original preform.” Again, we know nothing about the “original preform.” Nor do we know anything about the blow molding machine, other than it is the same “blow molding machine as [used for] the original preform.” Appellant’s Specification does not help clarify the matter on the blow mold machine features, as it simply references “ensur[ing] downstream compatibility of the converted preform 300 and a base that is provided in a blow mold (not shown) of a blow molding machine (not shown).” Beck, 4:65-67. A claim is properly rejected as indefinite if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam); see also Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). Based on our review of the record, we are left to wonder as to the metes and bounds of the claim language noted above. Accordingly, we agree with the Examiner that claim 1, and claims 2-8 ultimately depending Appeal 2022-000434 Reexamination Control 96/000,342 Patent US 10,556,374 B2 6 therefrom, are sufficiently unclear to warrant a rejection under 35 U.S.C. § 112(b) as being indefinite. Enlarging Scope and Written Description As noted above, issued claim 1 recited that the design of the converted preform is blow moldable “to form the same container” as the original preform. The claim was amended to instead recite that the design of the converted preform is blow moldable “within a same blow mold of a blow molding machine as the original preform.” The difference is the recitation of forming “the same container” versus being formed in “a same blow mold.” The Examiner rejects the amended claim as enlarging the scope because [t]he newly amended claim contains within its scope a method of converting a design of an original preform into a design of a converted preform having less molding material that is blow moldable within the same blow mold of a blow molding machine as the original preform, where the converted preform forms a different container than the one formed by the original preform. This would not have infringed original patent claim 1. Final Act. 10. The Examiner also rejects the claims as lacking written description support in view of the amendment discussed above. We do not reach the enlargement of scope or written description issues because, as explained above in connection with the indefiniteness rejection, numerous features recited in the claim are unclear such that we cannot ascertain whether or not claim scope has been enlarged or whether written description support exists. Appeal 2022-000434 Reexamination Control 96/000,342 Patent US 10,556,374 B2 7 CONCLUSION The Examiner’s indefiniteness rejection is affirmed. We do not reach the other rejections. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-85 305 Enlarging Scope 1-86 112(a) Written Description 1-8 112(b) Indefiniteness 1-8 Overall Outcome 1-8 REQUESTS FOR EXTENSIONS OF TIME Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED For Appellant: Husky Injection Molding Systems LTD. 500 Queen Street South Bolton, ON L7E 5S5 5 We do not reach this rejection. 6 We do not reach this rejection.