Brian Fields et al.

Patent Trials and Appeals Board

Aug 21, 2019

14291298 - (D) (P.T.A.B. Aug. 21, 2019)

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.
14/291,298 05/30/2014 Brian Fields A0572US2/102070.006145 5661
23377 7590 08/21/2019
BakerHostetler
Cira Centre 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
ALLEN, JEFFREY R
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
08/21/2019 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN FIELDS and EZEKIEL JOHNSON
____________

Appeal 2018-000402
Application 14/291,2981
Technology Center 3700
____________

Before EDWARD A. BROWN, JILL D. HILL, and
LEE L. STEPINA, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–33 under 35 U.S.C. § 103 as unpatentable over
Stodd (US 6,516,968 B2, issued Feb. 11, 2003) in view of Reed (US
2005/0006395 A1, published Jan. 13, 2005).2 Appellant’s representative
presented oral argument on July 31, 2019. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION.

1 Crown Packaging Technology, Inc. (“Appellant”) is the Applicant and
identified as the real party in interest. 37 C.F.R. § 1.46; Br. 1.
2 Appellant has withdrawn claims 34–53 from appeal. Br. 20 (Claims App.).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure “relates to a container technology, and more
particularly to a can end for a beverage can and methods for seaming a
beverage can end to a can body.” Spec. ¶ 2. Claim 1 illustrates the claimed
subject matter:
1. A beverage can end comprising:
a center panel;
an arcuate panel wall that extends outwardly from the
center panel;
an upwardly opening annular bead;
a lower transition wall extending from an outer end of the
annular bead, the lower transition wall being inclined at an angle
A2 that is less than 11 degrees;
a curved upper transition wall extending outwardly from
an upper end of the lower transition wall, the lower transition
wall yielding smoothly to the upper transition wall;
a substantially flat intermediate wall;
a substantially flat upper wall that is inclined more than
the intermediate wall and that is inclined at an angle A4 that is at
least 13 degrees;
a juncture formed between the intermediate wall and the
upper wall;
a seaming panel extending from an upper end of the upper
wall, the seaming panel having a radius R4 of between 0.050
inches and 0.060 inches;
a curl extending outwardly from an outer end of the
seaming panel.

Br. 18 (Claims App.).

ANALYSIS
Appellant argues claims 1–33 together. Br. 7–16. Accordingly, we
select claim 1 as the representative claim to decide the appeal of the
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rejection. See 37 C.F.R. § 41.37(c)(1)(iv). Claims 2–33 stand or fall with
claim 1.
For claim 1, the Examiner finds that Stodd discloses a beverage can
end (can shell 10’) comprising a substantially flat upper wall (upper wall
37’) inclined at an angle A4 that is at least 13 degrees and a seaming panel
(inner curved wall 38’ of crown 42’). Final Act. 2–3 (citing Stodd, col. 5, ll.
5–15, Fig. 7). The Examiner finds that Stodd teaches a seaming panel radius
(radius of curvature r7) of about 0.07 inches, but not “a [seaming panel]
radius R7 of between 0.050 inches and 0.060 inches,” as claimed. Id. at 3
(citing Stodd, col. 3, l. 33).
The Examiner relies on Reed as teaching a beverage can end having a
seaming panel (second transitional portion 137) with a radius of curvature
(radius of curvature r7) having a range of from about 0.04 inches to about
0.09 inches, which overlaps the claimed range. Id. at 3 (citing Reed ¶ 31,
Fig. 1). The Examiner finds Reed teaches that the curve of the seaming
panel and the shape of the curved can flange (can body flange 142), which
has a radius of curvature slightly smaller than the seaming panel, allow the
can end to center easily on the can. Id. (citing Reed ¶¶ 33–34); see also
Reed, Fig. 3 (showing can body flange 142). Thus, the Examiner finds,
Reed teaches that the disclosed seaming panel radius range is suitable for
creating a can end and can flange that contribute to consistent and reliable
peripheral seams. Id.
The Examiner reasons that it would have been obvious to one of
ordinary skill in the art to modify Stodds’ seaming panel to have a radius of
curvature between 0.04 and 0.09 inches and the can flange (upper peripheral
end portion 48) to have a radius of curvature slightly smaller than that of the
seaming panel, as taught by Reed, “to allow the can end to center easily on
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the can to contribute to consistent and reliable results of the finished
peripheral seam, as taught by Reed.” Id.
Appellant contends that “Reed does not state or imply that the
seaming panel radius itself provides the advantage of centering the end on a
can body flange.” Br. 9. Particularly, Appellant contends
Reed does not teach or suggest that its (seaming panel) radius R7
contributes to consistent seaming. . . . Rather, Reed states that
the similarity of the radius of the flange of the can and a
corresponding radius on the end (not any specific magnitude of
the seaming panel radius) provides the easy centralizing
function.
Id. at 12. Appellant refers to the Declaration of Ezekiel Johnson Under 37
C.F.R. § 1.132 (hereinafter, “the Johnson Declaration” or “Decl.”) as
explaining this “factual error.” Id. at 13 (quoting Decl. ¶ 6).
The Examiner responds:
The shape of the seaming panel radius and can flange of Reed
provide an ability to center easily relative to each other. Reed
also teaches that the shape of his seaming panel radius should be
within a certain range of radii. Thus, the shape that can be used
to provide the easy centering ability is limited only to the range
of radii taught by Reed. A person having ordinary skill in the art,
in wanting to incorporate the ability to easily center the seaming
panel on a can flange, would know to only use the range of radii
for the seaming panel that Reed discloses.
Ans. 11 (emphasis added).
We are persuaded by Appellant’s contentions. Reed states:
FIG. 3 shows can lid 110 resting on can body 140, and
particularly resting on flange 142 of can body 140. The radius
of the can flange 142 is slightly smaller than the second
transitional portion radius r7. Because the flange radius and
second transitional portion radius are very similar, the lid easily
centralizes on the can for seaming.
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Reed ¶ 33 (emphasis added). This description does not disclose, or suggest,
that the disclosed numerical range for the radius of curvature r7, by itself,
causes the lid to easily centralize on the can for seaming, or that “the shape
that can be used to provide the easy centering ability is limited only to the
range of radii taught by Reed,” as found by the Examiner. See Ans. 11
(emphasis added). We agree with Appellant that Reed discloses that the
close similarity of the radius of the flange of the can and the radius of
curvature r7, not any specific numerical value of r7, is what provides easy
centralizing. See Br. 12. However, although the Examiner’s rationale for
modifying Stodd is predicated on a finding that is not supported by a
preponderance of the evidence, we agree with the Examiner’s conclusion of
obviousness, but for different reasons explained below.
Appellant points out that the Specification describes that “some
commercial cans had ‘problems with consistency of the seam dimensions
upon double seaming to a beverage can.’” Br. 8 (quoting Spec. ¶ 6).
Appellant states the inventors found that the “claimed combination” solved
this inconsistency problem, namely “The inventors believe that a
relationship between the seaming panel configuration, upper panel wall
configuration, and a sufficient magnitude of reforming of the end’s upper
wall in the seamer alleviates the dimensional inconsistency in the seam.” Id.
(quoting Spec. ¶ 7). According to Appellant, the Examiner erred by giving
“no or insufficient weight to the conventional design principle (now and at
the time of filing) that the seaming panel and upper wall configuration must
be designed together” or “chosen together.” Id. at 9 (emphasis added).
Appellant asserts, “the [rejection] fails the requirement that the prior art
must be considered as a whole, including teaching away, when it picks a
seaming panel configuration from Stodd and an upper wall configuration
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from Reed.” Id. (emphasis added). Appellant also contends that there
would have been no reasonable expectation of success for the combination.
Id. (citing Decl. ¶ 6).
These contentions are not persuasive. Appellant does not apprise us
of error in the Examiner’s findings that Stodd discloses an upper wall
inclined at an angle A4 that is at least 13 degrees and a seaming panel
having a radius R7 of about 0.070 inches, and that Reed discloses a seaming
panel having a radius of curvature r7 of from about 0.04 inches to about 0.09
inches. Appellant does not dispute that Stodd discloses a seaming panel
having a radius that is close to the claimed value of R4, and that Reed
discloses a seaming panel having a radius of curvature that overlaps the
claimed value of R4. Nor does Appellant dispute that the combination of
Stodd and Reed discloses an upper wall inclined at an angle that is at least
13 degrees and a seaming panel having a radius of curvature that overlaps
the claimed range.
In cases “where the difference between the claimed invention and the
prior art is some range or other variable within [a claim],” “the applicant
must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range.” In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). “[W]here the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.” In re
Aller, 220 F.2d 454, 456 (CCPA 1955). “‘[W]hen the difference between
the claimed invention and the prior art is the range or value of a particular
variable,’ then a patent should not issue if ‘the difference in range or value is
minor.’” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1321
(Fed. Cir. 2004) (citing Haynes Int’l v. Jessop Steel Co., 8 F.3d 1573, 1577
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n. 3 (Fed. Cir. 1993)). “[A] prima facie case of obviousness exists when the
claimed range and the prior art range do not overlap but are close enough
such that one skilled in the art would have expected them to have the same
properties.” In re Peterson, 315 F.3d. 1325, 1329 (Fed. Cir. 2003) (citing
Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).3
And, a prima facie case of obviousness typically exists when the range of a
claimed invention overlaps the range disclosed in the prior art. Id. This
overlap of ranges creates a presumption of obviousness. Iron Grip Barbell,
392 F.3d at 1322. This presumption can be rebutted by showing that: (1) the
claimed invention provides a new and unexpected result relative to the prior
art (id. (citing Woodruff, 919 F.2d at 1578); (2) the prior art teaches away
from the claimed invention (id. (citing In re Geisler, 116 F.3d 1465, 1471
(Fed. Cir. 1997)); or (3) a claimed parameter was not recognized as a
“result-effective variable” (In re Antonie, 559 F.2d 618, 620 (CCPA 1977).
However, “[a] recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
Unexpected results
To the extent Appellant is contending that the claimed beverage can
end provides unexpectedly improved properties, or properties not possessed

3 In Titanium Metals, claim 3 recited an alloy composition having 0.3% Mo,
0.8% Ni, and balance titanium, and the prior art disclosed “two alloys having
compositions very close to that of claim 3,” namely 0.25% Mo and 0.75% Ni
and 0.31% Mo and 0.94% Ni, respectively. Id. (emphasis added). The court
determined that “[t]he proportions are so close that prima facie one skilled in
the art would have expected them to have the same properties. Appellee
produced no evidence to rebut the prima facie case. The specific alloy of
claim 3 must therefore be considered to have been obvious from known
alloys.” Id. (emphasis added).
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by the prior art, it is then incumbent upon Appellant to present objective
evidence (i.e., comparative test results) to show that the results are
unexpected as compared to the closest prior art. In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.”) (citation omitted); In re
Wood, 582 F.2d 638, 642 (CCPA 1978) (objective evidence is needed to
establish unexpected results).
Here, Appellant’s Specification does not describe any comparative
test results showing that the claimed invention provides any new or
unexpected result as compared to the prior art.
As for the Johnson Declaration, we are mindful that rebuttal evidence
must be considered in the determination of obviousness/non-obviousness
under 35 U.S.C. § 103. See, e.g., In re Eli Lilly & Co., 902 F.2d 943, 945
(Fed. Cir. 1990). Appellant does not appear to argue that the Examiner has
failed to even consider the content of the Johnson Declaration, but contends
that the Examiner does not give the declaration adequate weight or
“insufficiently credits this evidence.” Br. 14–15.
The Johnson Declaration states:
A person of ordinary skill would have understood that even a
minor modification to a part involved in forming the seam,
including the seaming panel radius and the upper wall
configuration, can affect the way metal flows into or out of the
seam during seaming and can affect seam dimension and
tightness in ways that are impossible to predict. Thus, changes
to these end components that may seem simple on paper are
understood by people with experience in seaming and can end
design to have complex and often detrimental effects during the
seaming process.
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See Decl. ¶ 5. However, the Johnson Declaration provides no objective
evidence to show that changing the value of the seaming panel radius R4 to
any value either above or below the claimed range causes “detrimental
effects during the seaming process.” Accordingly, the Johnson Declaration
provides no objective evidence to show that modifying Stodd to change the
seaming panel radius of curvature from about 0.070 inches to a lower value
between 0.050 inches and 0.060 inches, as taught by Reed, would cause any
detrimental effect. In fact, Appellant provides no objective evidence to
show that Stodd’s seaming panel radius of curvature of about 0.070 inches
(i.e., without modification) has different properties than the claimed value of
R4. Thus, Appellant has not shown with objective evidence that the claimed
invention provides a new and unexpected result relative to the prior art.
Teaching away
Appellant contends that “the prior art as a whole teaches away from
combining a seaming panel designed for one end and an upper wall
configuration (that is, from Stodd) designed for another end (that is, Reed).”
Br. 15 (emphasis added). We understand that this purported “teaching
away” is the “well-known, conventional principle that the upper wall
configuration and seaming panel wall configuration must be chosen together
rather than combined from two different references.” Id. at 14.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Urbanski, 809 F.3d 1237,
1244 (Fed. Cir. 2016) (citation omitted). “A prior art reference evidences
teaching away if it ‘criticize[s], discredit[s], or otherwise discourage[s] the
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solution claimed.’” In re Brandt, 886 F.3d 1171 (Fed. Cir. 2018) (quoting In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Here, Appellant’s teaching away position is based on a “conventional
design principle,” which neither Stodd nor Reed appears to describe. In fact,
Appellant does not appear to contend that either Stodd or Reed teaches away
from the “conventional principle.” Consequently, Appellant does not direct
us to any disclosure in Stodd or Reed that would have discouraged one of
ordinary skill in the art from producing a beverage can end comprising a
substantially flat upper wall and a seaming panel having the respective
claimed values of A4 and R4, that would have led one of ordinary skill in
the art in a direction divergent from the path taken by Appellant, or that
criticizes or discredits these claim limitations. For example, Appellant does
not direct us to any disclosure in Stodd that teaches or suggests that inner
wall 38 should not have a radius R7 of less than 0.070 inch, and,
particularly, a value meeting the claimed range, in combination with a value
of angle A4 of at least 13 degrees. Stodd teaches that a value of R7 of 0.070
inch is preferred, but does not appear to disclose that R7 is limited to this
value in combination with a value of A4 of at least 13 degrees. Thus,
Appellant does not establish that either Stodd or Reed teaches away from the
claimed invention.
The Johnson Declaration states that “a person of ordinary skill in the
art would have known that Stodd’s seaming panel radius should not have
been changed according to Reed’s disclosure without adopting Reed’s upper
wall configuration.” See Decl. ¶ 5. However, Stodd’s upper wall
configuration (i.e., angle A4 having a preferred range of 5 degrees to 30
degrees) encompasses Reed’s upper wall configuration, and Stodd teaches
that angle A4 can have the claimed value of A4. We are not persuaded that
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one of ordinary skill in the art would have been discouraged from having an
upper wall inclined at an angle that is at least 13 degrees, as taught by Stodd,
and a seaming panel having a radius of between 0.050 inches and 0.060
inches, as taught by Reed, because neither Stodd nor Reed, individually,
explicitly discloses the claimed values of both A4 and R4.
Result-effective variables
According to Appellant, “Mr. Johnson’s declaration provides a factual
explanation of the state of the art at the time of the invention, which supports
that the seaming panel and upper wall configuration work together and must
be designed together.” Br. 15 (emphasis added); see also id. at 9 (“the
conventional design principle (now and at the time of filing”)). Based on
these statements, we understand Appellant’s position is that the
“conventional design principle” was known in the art at the time of the
invention. Accepting this position as true, however, this recognition in the
art that the properties of a seam formed between a beverage can end and a
beverage can body are affected by the seaming panel radius and the upper
wall angle is sufficient to find these variables result-effective. Applied
Materials, 692 F.3d at 1297. Appellant does not provide any objective
evidence to show that obtaining the claimed values of both angle A4 and
radius R4 “was beyond the capabilities of one of ordinary skill in the art or
produced any unexpectedly beneficial properties,” which supports a finding
that the optimization of these values was obvious. Id. As noted, Stodd
discloses that angle A4 is preferably in the range of 5 degrees to 30 degrees.
This range is sufficiently broad to allow A4 to be varied in Stodd’s can shell
and still encompass the claimed value of angle A4 of at least 13 degrees.
Also, Appellant does not establish with objective evidence that the
Examiner’s specific proposed modification of Stodd’s inner wall radius to
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between 0.050 inches and 0.060 inches, as claimed, would result in any
“detrimental effects during the seaming process” of forming a seam between
a beverage can end and a beverage can body.
Furthermore, Reed teaches an angle a1 of from about 4 degrees to
about 12 degrees and a second transitional portion 137 radius of curvature r7
of from about 0.04 inches to about 0.09 inches. Id. at 8. See Reed ¶¶ 30–31,
Fig. 1. Reed discloses that “[s]econd transitional portion 137 has a radius of
curvature r7 . . . still more preferably from about 0.05 to about 0.065
inches.” Id. ¶ 31 (emphasis added). This more preferred range of r7
encompasses the recited value for radius R4. Accordingly, Reed teaches an
angle (angle a1) having a value similar to the claimed angle A4, and a radius
(r7) having a value that encompasses the claimed range of angle A4. This
teaching of Reed also supports a finding that the optimization of Stodd’s
radius R7 was obvious.
Reasonable expectation of success
As noted, Appellant contends there would have been no reasonable
expectation of success for the Examiner’s combination. Br. 9; see also Decl.
¶ 6 (“[A person of ordinary skill in can end technology] would not
reasonably expect that the combination would work to create an acceptable
seam.”) “Obviousness does not require absolute predictability, but a
reasonable expectation of success is necessary.” In re Clinton, 527 F.2d
1226, 1228 (CCPA 1976). “[O]bviousness cannot be avoided simply by a
showing of some degree of unpredictability in the art so long as there was a
reasonable probability of success.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1364 (Fed. Cir. 2007). Appellant appears to contend that the result of
the Examiner’s combination is completely unpredictable. Appellant appears
to attribute this to “the complexity of the beverage can seaming technology.”
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Br. 10. Appellant explains, “Appellant has taken no position on whether the
proposed combination would be inoperable.” Id. (emphasis added). It
seems to be Appellant’s position that even if the Examiner’s combination
would produce an operable beverage can end, Appellant does not concede
that this result means there would be a reasonable expectation of success for
the combination. However, Appellant does not explain clearly how
“success” would be determined. That is, what result from the combination
would one of ordinary skill in the art require to be able to determine that the
combination is a success? Consequently, Appellant has provided no
persuasive evidence to show that the Examiner’s combination would not
have a reasonable expectation of success in doing what Appellant has
claimed.
For the foregoing reasons, we sustain the rejection of claim 1 as
unpatentable over Stodd and Reed. Claims 2–33 fall with claim 1. Because
our findings and reasoning differ somewhat from the Examiner’s, we
designate our affirmance a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).

DECISION
We affirm the Examiner’s decision to reject claims 1–33 and
designate our affirmance as a new ground of rejection.
FINALITY OF DECISION
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
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When the Board enters such a non-final decision,
[Appellant], within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded
to the examiner. The new ground of rejection is binding
upon the Examiner unless an amendment or new Evidence
not previously of Record is made which, in the opinion of
the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, [Appellant] may again appeal to the Board pursuant
to this subpart.

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
new ground of rejection and also state all other grounds
upon which rehearing is sought.

Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
37 C.F.R. § 41.50(b)