Ex Parte Berger et al

Patent Trial and Appeal Board

May 9, 2018

13903510 (P.T.A.B. May. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/903,510 05/28/2013
432 7590 05/11/2018
NILS H. LJUNGMAN & AS SOCIA TES
P. 0. BOX 130
GREENSBURG, PA 15601-0130
FIRST NAMED INVENTOR
Thomas BERGER
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.
NHL-HOL-224-C 4521
EXAMINER
SALONE, BAY AN
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
05/11/2018 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):
nhla@earthlink.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS BERGER, CHRISTIAN BOSCHER,
ROBERT DAVID, GERHARD KUNZ, JURGEN LANDAUER,
and THORSTEN SCHMIDT
Appeal2017-005673
Application 13/903,510
Technology Center 3700
Before MICHAEL L. HOELTER, FRANCES L. IPPOLITO, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 21and22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as KHS GmbH. Appeal Br. 3.
2 Appeal is taken from the Final Office Action dated December 2, 2015, as
supplemented by the Advisory Action dated April 1, 2016.
Appeal2017-005673
Application 13/903,510
STATEMENT OF THE CASE
Claim 21 is the sole independent claim on appeal. Claim 21,
reproduced below, is exemplary of the subject matter on appeal.
21. A non-returnable keg comprising:
a plastic keg body;
a keg neck extending from said keg body;
an opening in said keg neck;
a non-returnable keg fitting covering said opening and
being held onto said keg neck by a holding structure; and
said holding structure comprising a material that is either
welded to a surface of said keg neck or deformed onto an outer
surface of said keg neck by heat.
THE REJECTIONS 3
I. Claim 21 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Delbarre (US 7, 168,596 B2; issued Jan. 30, 2007).
II. Claims 21and22 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Werding (US 4,969,577; issued Nov. 13, 1990).
ANALYSIS
Rejection I
Regarding independent claim 21, the Examiner finds, inter alia, that
Delbarre discloses a non-returnable keg comprising a plastic keg body (i.e.,
keg or container 1 ), a keg neck having an opening and extending from the
plastic keg body ("not labeled"), a non-returnable keg fitting (i.e., plunger
tube 3), and a holding structure (i.e., head 4). Final Act. 2 (citing Delbarre
3 The Examiner withdraws "[a]ll claim rejections pertaining to dependent
claims 23-40," as rejected in the Final Office Action dated December 2,
2015. Ans. 4.
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Application 13/903,510
2:65-3:5, 4:32-39, 45--47, Fig. 1). The Examiner also finds that Delbarre's
holding structure (i.e., head 4) comprises a material that is welded to a
surface of the keg neck. Id. (citing Delbarre 4:32-39, 45--47, Fig. 1); see,
e.g., Delbarre 4:45--47 ("plunger tube 3 with nondetachable head 4 fastened,
for example, by a weld seam 8").
Appellants argue that "Delbarre does not disclose a separate holding
structure as is shown in the present application, such as the connecting
segment 11 shown in Figure l"; instead, "Delbarre discloses a two-part keg
neck that is assembled by welding to form a one-piece structure with the
head 4 and keg body 1 a." Appeal Br. 5 (emphasis added). Appellants
submit, as further evidence of the differences between the claimed invention
and the disclosure of Delbarre, that "[b ]y using a separate holding structure,
rather than forming the keg neck from two separate sections and welding
them together as taught by Delbarre, the keg neck of [ c ]laim 21 will likely
be stronger and less likely to suffer a breakage or failure." Id.
The Examiner responds that "the features upon which applicant relies
(i.e., a separate holding structure ... ) are not recited in the rejected
claim(s)." Ans. 4.
Appellants reply that their argument is not that claim 21 "recites a
physically separate holding structure, but rather a structure that is additional
in function to the other recited components, namely a keg body, a keg neck,
and a keg fitting." Reply Br. 2. Appellants submit that Delbarre's "head 4
is part of the keg fitting," and "it is well known in the field of kegs and
beverage container technology that keg fittings, also known as keg valves,
contain multiple parts, including a cap-like or disk-shaped head." Id. at 2-3.
Appellants submit that "[i]t is therefore necessary for Delbarre to disclose a
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'holding structure' in addition to the disc-shaped covering head 4 in order to
meet all of the limitations of [c]laim 21." Id. at 3. Appellants also submit
that claim 21 requires the holding structure to "performs a holding function
to hold the keg fitting onto the keg neck" and to be "either welded to the keg
neck or deformed by heat onto the keg neck." Id. at 3--4.
We are not persuaded by Appellants' argument. As set forth supra,
claim 21 requires "a non-returnable keg fitting covering [an opening in the
keg neck] and being held onto said keg neck by a holding structure."
Appellants' Specification identifies the "Fitting element" by reference
numerals 9, 10 and the "Connecting segment" (referred to supra by
Appellants as the claimed holding structure) by reference numeral 11. Spec.
65: 1342-1343. Figure 1 of the Specification is reproduced below.
/
1
FIG. 1
Figure 1 of the Specification depicts "one possible embodiment of the
disposable keg with a disposable fitting," wherein reference numeral 9
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Application 13/903,510
corresponds to a piece at the upper end of a tube, and reference numeral 10
corresponds to the tube, as depicted in Figure 1. Id. at 6: 115-116.
Figure 1 of Delbarre is reproduced below.
FIG-1
Figure 1 of Del barre depicts a schematic section of container 1.
As shown, plunger 3, which is a fitting element similar to Appellants'
tube 10, covers at least the lower opening in the neck of the container (at
reference numeral 10), and at least a portion of the upper opening in the neck
of the container, as claimed. Further, a preponderance of evidence supports
the Examiner's finding that flat head 4 of Delbarre functions to hold plunger
3 onto the keg neck, because Delbarre depicts plunger 3 being held, at least
to some extent, onto the keg neck of the keg by flat head 4 via gasket 5, as
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claimed. Flat head 4 is not the same structure as the keg neck, because flat
head 4 is welded to the keg neck.
Accordingly, we sustain the Examiner's rejection of claim 21 under
35 U.S.C. § 102(b) as anticipated by Delbarre.
Rejection II
Independent claim 21
Regarding independent claim 21, the Examiner finds, inter alia, that
Werding discloses a non-returnable keg comprising a plastic keg body (i.e.,
container 1 ), a keg neck having an opening and extending from the plastic
keg body (i.e., "23"), a non-returnable keg fitting (i.e., valve unit A) , and a
holding structure (i.e., snap closure 21, closing sleeve 22). Final Act. 3
(citing Werding 4:35-39, 49---60, 5:12-25, Figs. 1, 2). The Examiner also
finds that Werding's keg fitting (i.e., valve unit A) is held onto the keg neck
by the holding structure (i.e., snap closure 21, closing sleeve 22), and also
that at least closing sleeve 22 of the holding structure comprises material
that is either welded to a surface of the keg neck or deformed onto an outer
surface of the keg neck by heat, as required by claim 21. Id. (citing W erding
4:49---60, 5: 12-25, Figs. 1, 2).
Appellants argue that Werding's container is not a keg, "as
understood in the beverage industry." Appeal Br. 6. Appellants submit that
"[a] keg, according to the beverage industry, is a container for holding a
beverage, usually beer, under a relatively low pressure in the area of 10-12
PSI," while "[a]erosol cans are much smaller, have different construction,
and operate at substantially higher pressures, usually in the range of 50-90
PSI." Id.; see also Reply Br. 5 ("an aerosol can, such as for spray paint or
cleaning products, is not the same as a keg for beverages").
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The Specification expressly provides a definition for the claim term
"keg," disclosing that "[t]he term 'keg' means a container that is designed to
hold a liquid, in one possible embodiment a beverage, in which the interior
of the container which is occupied by the liquid is bounded by the wall of
the keg body." Spec. 5:88-91 (emphasis added). See Phillips v. AWH
Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) ("the specification is 'the single
best guide to the meaning of a disputed term,' and that the specification 'acts
as a dictionary when it expressly defines terms used in the claims or when it
defines terms by implication"'). Werding's container is "for the storage and
the controlled deliver[y] of products under pressure," including "liquid gas,"
and W erding depicts that the interior of the container, which is occupied by
the product 5 (i.e., liquid gas contained in bag 4), is bounded by a wall of
container 1. Werding 1:8-12, 4:39--40, Fig. 1. Thus, taking into
consideration the Specification's definition, we are not apprised of error in
the Examiner's finding that W erding' s container can be deemed a keg in
accordance with Appellants' Specification.
Appellants withdraw their argument that snap closure 21 is welded
onto an annular ring, not the keg neck itself. Appeal Br. 7; Reply Br. 5-6
(agreeing with the Examiner that "annular rings are part of the keg neck"
and withdrawing their argument accordingly). Appellants also withdraw
their argument that claim 21 requires the weld of the holding structure to
hold the keg fitting onto the keg neck. Appeal Br. 7-8; Reply Br. 6
(agreeing with the Examiner that claim 21 "does not recite 'the fitting being
held in place by a weld."').
Regarding Appellants' argument that claim 21 alternatively requires a
material "deformed onto an outer surface of said keg neck by heat," as set
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forth supra, Appellants do not dispute the Examiner's finding that Werding
at least discloses a material "welded to a surface of said keg neck," as
claimed, and therefore, we do not need to address whether the alternative
finding was in error. Appeal Br. 8-12; Cf Appeal Br. 15 (Claims App.)
(claim 1: "said holding structure comprising a material that is either welded
to a surface of said keg neck or deformed onto an outer surface of said keg
neck by heat.") (Emphasis added).
For the first time in the Reply Brief, Appellants argue that Werding
fails to anticipate claim 21, because "[t]he closing sleeve 22 is welded onto
the neck 19, but does not hold the fitting components in place because the
snap closure 21 performs this function." Reply Br. 9. Appellants also argue
that Werding's snap closure 21 and closing sleeve 22 are "two distinct
structures," whereas claim 21 "recites one structure that both holds the keg
fitting and is welded onto the keg neck." Id. at 9-10. Appellants submit that
although these are new arguments, Appellants' "erroneous interpretation of
the prior art" is good cause, such that the Board should consider them. Id. at
7.4
Any argument raised in the reply brief which was not raised in the
appeal brief, or is not responsive to an argument raised in the examiner's
answer, including any designated new ground of rejection, will not be
considered by the Board for purposes of the present appeal, unless good
4 Notably, Werding unambiguously discloses that closing sleeve 22 is
welded to neck 19 at level 23. See W erding 5: 18-19 ("whereupon the
closing sleeve 22 is welded onto the neck 19 of the can at the level 23"); cf
id. at 4:57---60 ("closing sleeve 22 prevents the snap closure 21 from opening
and, because it is welded at 23 to the container 1, ensures that the latter is
hermetically sealed.").
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cause is shown. 37 C.F.R. § 41.41(b)(2) (2014); see also Ex parte
Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative) (explaining
that arguments and evidence not presented timely in the principal brief, will
not be considered when filed in a Reply Brief, absent a showing of good
cause explaining why the argument could not have been presented in the
principal brief); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) ("[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not").
We do not consider Appellants' erroneous interpretation of the prior
art to be good cause as to why these new arguments could not have been
presented in Appellants' Appeal Brief. Notwithstanding, we find them
unpersuasive. The recitation of "a holding structure" does not exclude two
components from together comprising the claimed holding stn1cture. In
other words, there is no limitation recited in claim 21 that requires the
holding structure to be a single piece, and therefore, Appellants are arguing
limitations that are not recited in the claim. See, e.g., In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (holding that limitations not appearing in the
claims cannot be relied upon for patentability). Further, Werding discloses
that closing sleeve 22 functions to hold, at least indirectly, valve A onto neck
19, because \Verding discloses that "closing sleeve 22 prevents the snap
closure 21 from opening." Werding 4:57-58; see also id. at 5:20-21
("[welding closing sleeve 22 to neck 19] prevents the snap closure 21 from
releasing").
Accordingly, we sustain the Examiner's rejection of claim 21 under
35 U.S.C. § 102(b) as anticipated by Werding.
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Dependent claim 22
Claim 22, which depends from claim 21, further requires "wherein
said holding structure comprises a wall segment, which wall segment
comprises a tube of heat-deformable material that is conformed to said outer
surface of said keg neck by heat." Appeal Br. 15 (Claims App.). Although
the claim term "heat-deformable material" connotes a structural limitation
(i.e., a material deformable by heat), we construe the claim limitation
"conformed ... by heat" as a process-by-product limitation. See, e.g., In re
Nordt Development Co., LLC, 881F.3d1371 (Fed. Cir. 2018) (holding that
claim recitation "injection molded" connoted structural limitation); In re
Garnero, 412 F.2d 276, 279 (CCPA 1969) (holding that "interbonded one to
another by interfusion" connotes structure). In other words, we construe
claim 22 to require the tube of the wall segment of the holding structure to
be made of heat-deformable material and to conform to an outer surface of
the keg neck, but we do not interpret claim 22, which is an apparatus claim,
as requiring the application of heat to achieve such conformance.
The Examiner finds that Werding discloses that the holding structure
(i.e., snap closure 21, closing sleeve 22) comprises a wall segment (i.e.,
closing sleeve 22) of heat deformable material that is conformed to the outer
surface of the keg (i.e., container 1) by heat, as required by claim 22,
because closing sleeve 22 "is formed of PET similarly to the keg body as the
two are joined by ultrasonic welding." Final Act. 3 (citing W erding 4 :49-
60, 5:12-25, Figs. 1, 2).
Appellants argue that "[ w ]hile the snap closure 21 is welded to the
annular ring, it certainly is not changed in shape to match the shape of the
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keg neck." Appeal Br. 13. However, Appellants' argument does not
address the Examiner's finding, as set forth supra, that closing sleeve 22-
not snap closure 21, meets the limitations of dependent claim 22.
Appellants also submit that, with respect to claim 22, "[t]he Examiner
appears to believe that welding is the same as deformation." Reply Br. 10.
We do not agree that Appellants' assumption is necessarily accurate
according to the rejection articulated by the Examiner. As set forth supra,
with respect to claim 21, the Examiner relies on W erding for disclosing a
holding structure (i.e., snap closure 21, closing sleeve 22) comprising a
material welded to a surface of the keg neck, in that W erding discloses
closing sleeve 22 is welded to the neck of container 1 at level 23. Regarding
claim 22, the Examiner determines that the claim limitation requiring a wall
segment of the holding structure to comprise a tube of heat-deformable
material reads on Werding's closing sleeve 22, which is made from
polyethylene terephthalate (PET) (see Werding 4:36-37, 5:21-22), a finding
that Appellants do not dispute. Put another way, the limitations of claim 22
do not require a finding that the holding structure must be deformed onto an
outer surface of the keg neck as recited in claim 21, rather than alternatively
welded to a surface of the keg neck. With respect to deformation, claim 22
merely requires a heat-deformable material.
Claim 22 further requires the tube of heat-deformable material to be
conformed to an outer surface of the keg neck, as a structural limitation of
the claim. Appellants argue that "the term 'conformed' means to match
something to the shape of another object, as shown in Figures 8-8B" and that
"closing sleeve 22 of W erding is never ... conformed, that is, ... never ...
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changed to match the shape of the neck 19." Reply Br. 11 (emphasis
added).
As discussed supra, claim 22 is an apparatus, not a method, claim.
Thus, to anticipate claim 22, W erding must disclose a holding structure
comprising heat-deformable material that is conformed to the outer surface
of the neck of container 1, but W erding does not have to disclose that such
conformance is achieved by heating or that such material is changed in
shape. Figure 1 of Werding depicts at least one wall segment made of heat-
deformable PET, which is conformed to (or matched to the shape of) an
outer surface of the neck of container 1, in that the vertical wall segment of
closure sleeve 22 below level 23 matches the shape of the rib of the neck.
Moreover, Appellants' argument does not apprise us of error in the
Examiner's finding that closure sleeve 22 conforms to an outer surface of
the neck of container 1 at level 23.
Accordingly, we sustain the Examiner's rejection of claim 22 under
35 U.S.C. § 102(b) as anticipated by Werding.
DECISION
The Examiner's decision rejecting claim 21under35 U.S.C. § 102(b)
as anticipated by Delbarre is AFFIRMED.
The Examiner's decision rejecting claims 21 and 22 under 35 U.S.C.
§ 102(b) as anticipated by Werding is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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