Ex Parte Bartsch

Board of Patent Appeals and Interferences

Feb 7, 2011

10625582 (B.P.A.I. Feb. 7, 2011)

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.
10/625,582 07/23/2003 Reiner Bartsch 2701 7748
7590 02/07/2011
STRIKER, STRIKER & STENBY
103 East Neck Road
Huntington, NY 11743
EXAMINER
DEHGHAN, QUEENIE S
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
02/07/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte REINER BARTSCH
____________

Appeal 2009-014756
Application 10/625,582
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 32-46. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-014756
Application 10/625,582

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STATEMENT OF THE CASE
Claims 32 and 36 are representative of the subject matter on appeal
and are set forth below:
32. A method of making a small glass container, said method
comprising the steps of:

a) clamping a hollow glass tube with an open upper end and an inner
surface in a vertical orientation, said hollow glass tube having an alkali
release during thermal processing of the hollow glass tube;

b) thermally cutting said hollow glass tube clamped in said vertical
orientation in step a) to length, thereby forming a tube piece for discard and
a bottom of said hollow glass tube clamped in said vertical orientation in
step a);

c) thermally opening said bottom of said hollow glass tube formed in
step b) by heating said bottom; and

d) partially closing said open upper end of said hollow glass tube with
a stopper provided with a through-going opening, wherein said through-
going opening is dimensioned so that an overpressure is produced by
constricting a gas flow path through said open upper end during said thermal
processing, but so that said open upper end is kept sufficiently open so that
an excessive overpressure that would otherwise damage the glass tube is not
produced, said thermal processing including said thermally cutting to length
and said thermally opening said bottom;

whereby contamination of said inner surface by said alkali release
during said thermal processing is at least reduced.

36. A method of making a small glass container, said method
comprising the steps of:

a) clamping a hollow glass tube with an open upper end and an inner
surface in a vertical orientation, said hollow glass tube having an alkali
release during thermal processing of the hollow glass tube;
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b) thermally cutting said hollow glass tube clamped in said vertical
orientation in step a) to length, thereby forming a tube piece for discard and
a bottom of said hollow glass tube clamped in said vertical orientation in
step a);

c) thermally opening said bottom of said hollow glass tube formed in
step b) by heating said bottom; and

d) blowing gas into the hollow glass tube through said open upper end
of said hollow glass tube and through the hollow glass tube so that an
overpressure is produced during said thermal processing of said hollow glass
tube, said thermal processing including said thermally opening said bottom
and said thermally cutting to length;

so that contamination of said inner surface of said hollow glass tube
by said alkali release during thermal processing is at least reduced.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
BENNETT 3,985,535 Oct. 12, 1976
SCHUL 4,010,022 Mar. 1, 1977
RITT 4,516,998 May 14, 1985
OTT US 2004/0176237 A1 Sep. 9, 2004

THE REJECTION(S)
1. Claims 32-39 and 41-46 are rejected under 35 U.S.C. §112, second
paragraph, as being indefinite.
2. Claims 32-35 and 40-41 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Ritt in view of Bennett.
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Application 10/625,582

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3. Claims 36-39 and 42 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Ritt in view of Bennett and Schul.
4. Claims 43 and 44 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Ritt in view of Ott.
5. Claims 45 and 46 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Ritt in view of Ott and Schul.
ANALYSIS
(with Findings of Fact and Principles of Law)

1. The Rejection of Claims 32-39 and 41-46 under 35 U.S.C. §112,
second paragraph, as being indefinite

The Examiner’s position is that claims 32, 36, 41, 42, 43, and 45 are
rejected under 35 U.S.C. 112, second paragraph, as being incomplete for
omitting essential steps. The Examiner asserts that the omitted steps are the
linking step between forming a bottom and opening the bottom. Ans. 3.
We disagree with the Examiner’s position. It is self-evident that the
phrase “thermally opening said bottom” infers that the bottom is closed or
that the bottom is further opened. Therefore, the claim does not need to
recite a step of, e.g., “closing said bottom.” As exemplary of this position,
the background section of Ritt indicates that upon thermal separation of the
glass tube, two closed ends are formed. Ritt, col. 1. ll. 25-30. Also, the
background section of Appellant’s Specification similarly indicates that
when glass tubing is cut to length, bottoms are formed. Spec.2:18-20.
Hence, it is understood that bottoms are formed, and therefore, we do not
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agree that the claims are indefinite for omitting recitation of such a step.
“The test for definiteness is whether one skilled in the art would understand
the bounds of the claim when read in light of the specification. If the claims
read in light of the specification reasonably apprise those skilled in the art of
the scope of the invention, §112 demands no more.” Miles Lab., Inc. v.
Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (citation omitted).
In view of the above, we reverse the rejection.
2. The Rejection of Claims 32-35 and 40-41under 35 U.S.C. §103(a) as
being unpatentable over Ritt in view of Bennett
We consider claim 32 only based upon Appellant’s arguments. See
37 C.F.R. § 41.37(c)(1)(vii).
Claim 32
ISSUE
Did the Examiner err in determining that the applied art suggests the
claimed invention, in particular, the aspect of “partially closing . . . with a
stopper”? We answer this question in the affirmative.
It is not disputed by the Examiner that the applied art does not teach
use of a stopper for partially closing the open upper end of the hollow glass
tube. The Examiner asserts that the step of using a stopper is equivalent to
the step of using a “through-going opening” as disclosed in Ritt, and that
therefore such a substitution would have been obvious. Ans. 5, 13.
Appellant argues that these two method steps are not equivalent. Br. 28-30.
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We note that the Examiner bears the initial burden of factually
supporting his conclusion. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir.
1984). In the instant case, the Examiner does not provide evidence
supporting that these two method steps are equivalent. See Answer
generally.
In view of the above, we, therefore, reverse the rejection.
3. The Rejection of Claims 36-39 and 42 under 35 U.S.C. §103(a) as
being unpatentable over Ritt in view of Bennett and Schul
We consider claim 36 only based upon Appellant’s arguments. See
37 C.F.R. § 41.37(c)(1)(vii).

Claim 36
ISSUE
Did the Examiner err in determining that the applied art suggests the
claimed invention, and in particular, the aspect of “blowing gas into the
hollow glass tube through said open upper end of said hollow glass tube”?
We answer the question in the affirmative.
The Examiner recognizes that Ritt does not teach this aspect of the
claimed invention and relies upon Schul for teaching this aspect. Ans. 7.
However, the claim requires that the gas is blown into the “open upper end”
of the glass tubing. The Examiner, in setting forth his position as set forth
on page 7 of the Answer, does not address how Schul teaches that the gas is
blown into the open upper end of the glass tubing. In fact, it appears that the
gas is blown into the lower end of the glass tubing (forming gas is delivered
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through line 11 shown in the figure; Schul, col. 2, ll. 64-68). It is thus
apparent that the only teaching or suggestion for modifying Ritt’s process so
as to achieve the claimed invention is derived from Appellant’s own
Specification rather than the applied prior art. Therefore, we conclude that
the Examiner’s rejection is improperly based upon improper hindsight
reasoning. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (The fact
finder must be aware “of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning”; citing Graham v.
John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to
read into the prior art the teachings of the invention in issue”)). See also,
W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1551, 1553 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984).
In view of the above, we reverse the rejection.
4. The Rejection of Claims 43 and 44 under 35 U.S.C. §103(a) as being
unpatentable over Ritt in view of Ott
Claim 43 is similar to claim 32 by requiring a stopper for partially
closing an open upper end of the glass tube. Hence, for the reasons stated
supra, Ritt fails to suggest this aspect of the claim and Ott does not remedy
this deficiency of Ritt.
We, therefore, reverse the rejection.

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5. The Rejection of Claims 45 and 46 under 35 U.S.C. §103(a) as being
unpatentable over Ritt in view of Ott and Schul
Claim 45 is similar to claim 36 by reciting “blowing gas into said
glass tube through said open upper end” of the glass tube. Hence, for the
reasons stated supra, the combination of Ritt in view of Shul fails to suggest
this aspect of the claim, and Ott does not remedy this deficiency of the
combination of Ritt in view of Schul.
We, therefore, reverse the rejection.
CONCLUSIONS OF LAW AND DECISION
Each rejection is reversed.
REVERSED

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