Ex Parte Baker et al

Patent Trial and Appeal Board

May 29, 2018

13950468 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/950,468 07/25/2013
22922 7590 05/31/2018
REINHART BOERNER VAN DEUREN S.C.
ATTN: TRAVIS MCDONNELL, PARALEGAL
IOOONORTHWATER STREET
SUITE 2100
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Gerald Baker
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.
086563-0340 4491
EXAMINER
CASTILLO, KEVIN CHARLES
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
05/31/2018 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):
IP Admin@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD BAKER and THOMAS MURPHY
Appeal 2016-002888
Application 13/950,468 1
Technology Center 3700
Before JOHN C. KERINS, ERIC C. JESCHKE, and ANTHONY KNIGHT,
Administrative Patent Judges.
JESCHKE, 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, as set forth in the Final Office Action dated March 3, 2015 ("Final
Act."), and as further explained in the Advisory Action dated May 19, 2015,
rejecting claims 7-10, 12-15, 21, and 28-33. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm in part.
1 Appellant is the Applicant, Silgan Containers LLC, which, according
to the Appeal Brief, is the real party in interest. Appeal Br. 1.
Appeal 2016-002888
Application 13/950,468
BACKGROUND
The disclosed subject matter "relates to containers having features that
provide stacking properties." Spec. ,r 2. Claims 7 and 28 are independent.
Claim 7 is reproduced below:
7. A metal container adapted to be stacked
adjacent to a second metal container, the container
compnsmg:
a metal sidewall, the metal sidewall having a
first end and a second end and defining a
longitudinal axis;
a first metal end wall;
a first seam coupling the first metal end wall
to the first end of the metal sidewall, the first seam
compnsmg:
an inner segment extending in the
longitudinal direction away from the first
metal end wall;
an outer segment comprising an outer
surface extending in the longitudinal
direction away from the first metal end wall,
wherein the first end of the metal sidewall is
positioned radially between the inner
segment and the outer segment of the first
seam; and
a shoulder segment, the shoulder
segment extending in the radial direction
between the inner segment and the outer
segment of the first seam; and
an alignment rim comprising an outer surface
extending longitudinally away from the first metal
end wall from a position outward in the longitudinal
direction from both the shoulder segment and the
first end of the metal sidewall, wherein the shoulder
segment directly transitions into the alignment rim
2
Appeal 2016-002888
Application 13/950,468
in a direction extending longitudinally away from
the first metal end wall and away from the second
end of the sidewall, and wherein the outer surface
of the alignment rim is contiguous with the shoulder
segment of the first seam.
REJECTIONS
1. Claims 7-10, 12, 14, 15, 21, 28-31, and 33 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Mueller (US 5,669,523, issued Sept.
23, 1997) and Westphal (US 4,363,404, issued Dec. 14, 1982). 2
2. Claims 13 and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mueller, Westphal, and Karas (US 4,264,017, issued Apr.
28, 1981).
DISCUSSION
Rejection 1- Claims 7-10, 12, 14, 15, 21, 28-31, and 33
A. Claims 7, 12, 14, 15, 21, and 33
For the claims in this group, Appellant argues the patentability of
independent claim 7 and does not provide separate arguments for claims 12,
14, 15, 21, and 33, which depend from claim 7. Appeal Br. 6-11. Thus, we
address claim 7, with claims 12, 14, 15, 21, and 33 standing or falling with
claim 7. See 37 C.F.R. § 4I.37(c)(l)(iv) (2014).
2 Although claims 13 and 32 are listed as rejected in the lead
paragraph to Rejection 1 (see Final Act. 3; Ans. 3), the Examiner does not
discuss those claims in the body of the Rejection (see Final Act. 3-10; Ans.
3-9). As such, we do not consider claims 13 and 32 as part of Rejection 1.
The Examiner rejects claims 13 and 32 as part of Rejection 2. See Final Act.
10-11; Ans. 9-10; see also Appeal Br. 4 n.1.
3
Appeal 2016-002888
Application 13/950,468
For claim 7, the Examiner relied on Mueller for certain limitations but
stated that "Mueller does not disclose the containers made of metal." Final
Act. 5. The Examiner found, however, that "Westphal discloses a container
made of metal for added rigidity to the container." Id. The Examiner stated,
"[t]herefore, it would have been obvious to one of ordinary skill in the art to
modify the container of Mueller to be made of metal for added rigidity." Id.
The Examiner also cited In re Leshin, 277 F.2d 197 (CCPA 1960), stating:
"In the instant Application, making the container of Mueller of metal is a
known material in the art. Therefore, it would have been obvious to one of
ordinary skill in the art to utilize metal to make the container of Mueller."
Final Act. 5-6.
First, Appellant argues that "Examiner incorrectly concludes that it
would be obvious to make the container of Mueller out of metal." Appeal
Br. 6. 3 Noting that Mueller "expressly teaches a 'non-metallic' container"
(citing Mueller, Title), Appellant argues that "the teachings of Mueller
relevant to a 'non-metallic' container cannot be applied to a metallic
container or metallic seam without additional modification that is not
suggested by Mueller or Westphal." Appeal Br. 6-7. Appellant argues that
"[ t ]here is no teaching in Mueller regarding how the relatively complex
bends of the 'folded sections' could be formed from metal." Id. at 7.
According to Appellant, the rejection of claim 7 "ignores the technical
reality that there are reasons why certain containers are made from metal and
why other containers are made from other materials." Reply Br. 6.
3 In quotations from Appellant's briefing, we omit any underlining of
the names of prior art references.
4
Appeal 2016-002888
Application 13/950,468
Nonobviousness cannot be established by attacking references
individually when the rejection is based on the teachings of a combination of
prior art references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). By arguing that Mueller does not teach forming the disclosed
structures from metal, Appellant does not address the rejection as
articulated, in which the Examiner relies on certain combined teachings of
the prior art. See Final Act. 3---6; see also In re Keller, 642 F.2d 413, 425
( CCP A 1981) ("[T]he test [ for obviousness] is what the combined teachings
of the references would have suggested to those of ordinary skill in the art."
( emphasis added)).
Further, Appellant has not provided sufficient evidence or technical
reasoning-but rather attorney argument-that the relied-upon structures of
Mueller could not be made out of metal. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of
evidence."); see also Appeal Br. 7 (stating that "because cardboard can be
readily folded with less concern of fracturing or cracking, formation of the
folded sections of Mueller from a cardboard material presents very different
technical challenges than formation of similarly shaped structures from
metal").
We tum now to Appellant's argument that "[ w ]hile Westphal
describes its container is made from metal, nothing in Westphal provides
any support for the conclusion that the prior art teaches making the
container of Mueller out of metal." Reply Br. 5---6 ( emphasis added); see
also Appeal Br. 7 ("The Examiner must demonstrate that folding metal to
form the stacking structure of Mueller is taught by the art." (underlining
omitted)). Because the prior art need not explicitly disclose or suggest the
5
Appeal 2016-002888
Application 13/950,468
proposed modification (here, forming the structure of Mueller out of metal
in view of Westphal), the absence of express teachings regarding the
proposed modification does not undermine the rejection. See KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398,418 (2007) (stating that the obviousness
analysis "need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ").
Second, Appellant argues that "neither Mueller nor Westphal provide
explanation of how the seam of Westphal could be modified to include the
folded section of Mueller without disrupting the integrity of the seam."
Appeal Br. 7.
This argument does not apprise us of error because Appellant does not
address the rejection as articulated. The Examiner does not propose
modifying "the seam of Westphal ... to include the folded section of
Mueller." Id. Instead, as discussed above, the Examiner proposes
modifying the container of Mueller to be made of metal, in view of
Westphal. See Final Act. 5-6.
Third, Appellant argues that "[ t ]he Examiner has not cited to anything
in Mueller, Westphal or elsewhere to support the Examiner's argument that
it would be obvious to form the paper/cardboard container of Mueller out of
metal as taught by Westphal." Appeal Br. 8. Appellant argues that the
Examiner's reasoning statement regarding "added rigidity" is "unsupported"
(id. (citing Final Act. 5)) and that "the Examiner has cited to nothing in
Mueller or Westphal indicating that [the] container of Mueller needs 'added
rigidity"' (id.). See also Reply Br. 6 (arguing that "the Examiner cites to
nothing indicating that the prior art recognizes that container of Mueller
6
Appeal 2016-002888
Application 13/950,468
needs added rigidity, that metal actually is more rigid than the material of
Mueller or that the structure of Mueller is formable from metal").
According to Appellant, "Mueller expressly teaches a 'non-metallic'
container that is rigid enough to be stacked on top of each other." Appeal
Br. 8 ( citing Mueller, Fig. 1 ).
We understand the Examiner to provide two alternative reasoning
statements in support of the obviousness determination of claim 7. First, the
Examiner concludes that "it would have been obvious to one of ordinary
skill in the art to modify the container of Mueller to be made of metal for
added rigidity" in view of Westphal' s disclosure of "a container made of
metal for added rigidity to the container." Final Act. 5 (i-f 8). Second, the
Examiner relies on reasoning based on the decision in In re Leshin. See id.
at 5---6 (i-f 9).
Appellant's third argument addresses the first alternative reasoning
statement. Although Appellant is correct that the Examiner does not
expressly cite the prior art for the first alternative reasoning statement, we
note that an obviousness analysis "need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR, 550 U.S. at 418 (2007); see
id. at 419 ("The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents."). Thus, that the prior art does not explicitly
provide the reasoning set forth by the Examiner or discuss deficiencies
related to such reasoning (e.g., that the material of Mueller is not sufficiently
7
Appeal 2016-002888
Application 13/950,468
rigid) does not undermine the Rejection. Moreover, we see no error in the
Examiner's finding that Westphal "discloses a container made of metal for
added rigidity to the container." Final Act. 5 (i-f 8); see Westphal, col. 2,
1. 68 to col. 3, 1. 4 ("The end closure members 6 and 8 may be formed of a
rigid material, such as metal ( aluminum, tinplate, coated tin-free steel, or the
like), or a suitable conventional synthetic plastic material, such as
polyethylene.").
Fourth, we address arguments regarding the Examiner's second
alternative reasoning statement. Appellant states that "MPEP [ §] 2144.07
(the section of the MPEP relying on In re Leshin) states 'The selection of a
known material based on its suitability for its intended use' may support a
prima facie obviousness determination ( emphasis added)" and Appellant
argues that "to rely on this analysis, the prior art must show that the known
material is suitable for its intended purpose." Reply Br. 6. Appellant asserts
that "[ n ]othing in the prior art ( other than the general observation that some
containers are made from metal) provides any evidence that metal is
'suitable' for forming the cardboard stacking and bottom structure of
Mueller." Id. According to Appellant, "[ w ]ithout this critical piece of the
analysis, the Examiner has failed to properly make a prima facie
obviousness rejection." Id.
Appellant views the guidance from section 2144.07 as requiring that
the prior art reference relied on for the known material (here, Westphal)
expressly discloses the use of that material in the context of the device of the
primary reference (here, Mueller). This understanding, however, runs
contrary to the Supreme Court's instruction that an express teaching,
suggestion, or motivation is but one way to support a conclusion of
8
Appeal 2016-002888
Application 13/950,468
obviousness. See, e.g., KSR, 550 U.S. at 419 ("The obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents.").
Moreover, Appellant's understanding of section 2144.07 conflicts
with the decision cited both in that section and by the Examiner in the
second alternative reasoning statement (see Final Act. 5-6 (i-f 9)). In In re
Leshin, 277 F.2d 197 (CCPA 1960), the court addressed dependent claims
requiring that the "container-dispenser for cosmetics" recited in the parent
claim be made from molded plastic materials. See Leshin, 277 F .2d at 198-
99. Before the court was a secondary reference (Anderson) teaching the use
of molded plastic in a "similar container" to the primary reference (Root).
Id. at 199. On those facts, the court held that "[ m Jere selection of known
plastics to make a container-dispenser of a type made of plastics prior to the
invention, the selection of the plastics being on the basis of suitability for the
intended use, would be entirely obvious." Id.
In other words, In re Leshin does not require a reference to teach the
use of the claimed material in the exact same device as in the primary
reference-but rather in a similar device. For the reasons discussed above
regarding Appellant's first argument, Appellant has not shown error in the
finding that Mueller and Westphal disclose "containers of similar type."
Ans. 10 (stating that "making the container of Mueller of a metal material
would have been obvious to one of ordinary skill in the art, because
containers of similar types, such as Mueller and Westphal, were made of
metal at the time of the invention").
9
Appeal 2016-002888
Application 13/950,468
Fifth, Appellant provides argument addressing the requirement that
"the first end of the metal sidewall is positioned radially between the inner
segment and the outer segment of the first seam" (Appeal Br. 13 (Claims
App.), but Appellant does not provide this argument until the Reply Brief.
See Reply Br. 1-2. For procedural reasons, we will not address this
argument. See 37 C.F.R. § 4I.41(b)(2). The argument at issue addresses the
rejection as originally provided in the Final Office Action, rather than
positions raised in the Answer. Although Appellant discusses an annotated
version of Figure 2 of Mueller that was provided in the Answer (Reply Br. 2
(reproducing annotated figure from Ans. 4)), the same annotated version of
Figure 2 was provided in the Final Office Action. Compare Ans. 4, with
Final Act. 5. Appellant has not shown good cause for failing to provide this
argument in the Appeal Brief. See 37 C.F.R. § 41.41(b)(2).
For these reasons, we sustain the rejection of independent claim 7.
Claims 12, 14, 15, 21, and 33 fall with claim 7.
B. Claims 8-10
Claim 8 recites: "The metal container of claim 7, wherein the first
metal end wall, the inner segment of the first seam, the outer segment of the
first seam, the shoulder segment of the first seam and the alignment rim are
formed from a single continuous piece of metal." Appeal Br. 13 ( Claims
App.). To address claim 8, the Examiner provides the annotated version of
Figure 2 of Mueller reproduced below:
10
Appeal 2016-002888
Application 13/950,468
Final Act. 5. Figure 2 of Mueller (without the Examiner's annotations)
depicts an enlarged sectional view of the interface between two stacked
cylindrical containers. See Mueller, col. 4, 11. 38--41. To Figure 2, the
Examiner added annotations identifying a "Seam," an "Outer Segment," a
"Shoulder Segment," an "Inner Segment," and an "Endwall." Final Act. 5.
Appellant argues that "Mueller and Westphal do not disclose, teach or
suggest 'wherein the first metal end wall ... and the alignment rim are
formed from a single continuous piece of metal,' as recited in claim 8."
Appeal Br. 9. According to Appellant, "Mueller teaches folded section 26
(identified as an alignment rim by the Examiner) is formed contiguous with
the non-metallic wall 13" but "[t]he Examiner has identified nothing in
Westphal that teaches modifying Mueller so that folded section 26 would be
contiguous with 'bottom 3. "' Id.
The Examiner responds with the following modified version of
annotated Figure 2 of Mueller:
11
Appeal 2016-002888
Application 13/950,468
Fig.2
18
Ans. 11. For this version of annotated Figure 2 of Mueller, the Examiner
added annotations identifying an "Outer Segment," a "Shoulder Segment,"
and an "Inner Segment." Id. The Examiner also added a "hashed line" that,
according to the Examiner, shows "continuity." Id.
We agree with Appellant that the relied-upon combination of prior art
does not satisfy the additional limitation of claim 8. Although the hashed
line provided by the Examiner shows that the identified "inner segment,"
"outer segment," "shoulder segment," and "alignment rim" are "formed
from a single continuous piece of metal" as recited, the identified "first
metal end wall"----element 12 in Mueller as modified by Westphal (see Final
Act. 4 }-is not "formed from" the same piece of metal. As shown by
comparing the two annotated figures above, the hashed line provided by the
Examiner (see Ans. 11) does not continue onto the identified "first metal end
wall" (see Final Act. 5).
12
Appeal 2016-002888
Application 13/950,468
For this reason, we do not sustain the rejection of claim 8, or the
rejection of claims 9 and 10, which depend from claim 8.
C. Claims 28-31
Independent claim 2 8 recites, among other limitations, "a continuous,
single piece of metal extends from the first metal end wall into a first
alignment rim segment." Appeal Br. 14 (Claims App.). The Examiner
identified element 12 in Mueller, as modified by Westphal, as the recited
"first metal end wall." See Final Act. 8-9. The Examiner identified element
27 in Mueller as the "first alignment rim segment." Id. at 8. As to the
limitation at issue, the Examiner stated that element 13 in Mueller ( which
includes element 27) "extends as a single piece." See id.; see also Mueller,
col. 6, 1. 29 (discussing "the section 27 of the wall 13"). The Examiner also
fig.2
~·:s-o~
t\i~w
r:,.:;,, ,.~.::'?.~• :~~ :,d!-~
,L, ... ,,,,,,.,,,i"''~·''' ~i::~~: $:::yp·,t~:~~-
Final Act. 9. For this version of annotated Figure 2 of Mueller, the
Examiner added annotations identifying a "Seam," a "Shoulder Segment," a
"Second Alignment Rim Segment," a "First Alignment Rim Segment," a
"First Edge," and an "Endwall." Id.
13
Appeal 2016-002888
Application 13/950,468
Appellant highlights various limitations in claim 28 (including the
limitation set forth above) and states that claim 28 "recites that the end wall
and alignment rim are formed from the same piece of metal material."
Appeal Br. 10. For essentially the same reasons as argued regarding claim
8, Appellant asserts that Mueller "does not teach that the end wall and
alignment rim are formed of the same piece of metal material". Id. at 11;
compare id. at 10-11 (claim 28), with id. at 9 (claim 8).
The Examiner's response regarding claim 8 ( summarized above) also
addresses claim 28. See Ans. 11.
We agree with Appellant that the relied-upon combination of prior art
does not satisfy the limitation at issue in claim 28. As shown in the
annotated version of Figure 2 above ( and for essentially the same reasons
discussed above in the context of claim 8), the identified "first alignment rim
segment"----element 27 of Mueller-is not part of the same "continuous,
single piece of metal" extending from the identified "first metal end wall"-
element 12 in Mueller, as modified by Westphal. See Final Act. 8-9.
For these reasons, we do not sustain the rejection of claim 28, or the
rejection of claims 29-31, which depend from claim 28.
Rejection 2- Claims 13 and 32
A. Claim 13
Claim 13 depends from claim 7. See Appeal Br. 14 (Claims App.).
Appellant does not provide additional arguments for claim 13, aside from
those presented for claim 7. See Appeal Br. 13. For the reasons discussed
above, we are not apprised of error in the rejection of claim 7. See supra
Rejection 1. As such, we sustain the rejection of claim 13.
14
Appeal 2016-002888
Application 13/950,468
B. Claim 32
Claim 32 depends from claim 28. Appeal Br. 15 (Claims App.). The
Examiner's added reliance on Karas does not remedy the deficiencies in the
rejection based on Mueller and Westphal, discussed above, regarding claim
28 (see supra Rejection 1 § C). Thus, for the same reasons discussed above,
we do not sustain the rejection of claim 32.
DECISION
We affirm the decision to reject claims 7, 12-15, 21, and 33 under
35 U.S.C. § 103(a), and we reverse the decision to reject claims 8-10 and
28-32 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
15