Ex Parte Baker et alDownload PDFPatent Trial and Appeal BoardMay 29, 201813950468 (P.T.A.B. May. 29, 2018) Copy Citation 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 Copy with citationCopy as parenthetical citation