Ex Parte Bezek

Patent Trial and Appeal Board

Sep 13, 2016

11608204 (P.T.A.B. Sep. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/608,204 12/07/2006
110933 7590 09/13/2016
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
FIRST NAMED INVENTOR
Edward Anthony Bezek
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.
CFLA Y.00404 8943
EXAMINER
CASTELLANO, STEPHEN J
ART UNIT PAPER NUMBER
3781
MAILDATE DELIVERY MODE
09/13/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD ANTHONY BEZEK
Appeal2014-007750
Application 11/608,204
Technology Center 3700
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Edward Anthony Bezek ("Appellant") 1 appeals under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 57-69 in this application.
Claims 1-56 are canceled, and claims 70-72 are withdrawn from
consideration. Appeal Br. 2. The Board has jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies Frito-Lay North America, Inc. as the real party
in interest. Appeal Br. 2.
Appeal2014-007750
Application 11/608,204
CLAIMED SUBJECT MATTER
Claims 57, 61, and 65 are independent. Claim 57 illustrates the
subject matter on appeal, and it recites:
57. A thermo-plastic container for hermetically sealing a
single stack of fragile articles, comprising:
a tubular body having a central longitudinal axis, said
body comprised of a sidewall having a flowing geometries
mechanism formed therein, which is positioned between a closed
end and an open end having a hermetically sealable opening;
wherein said flowing geometries mechanism comprises at least
one lateral flexible hinged area defining a planar weakened panel
area; wherein said hermetically sealable opening of said open
end and portions of said sidewall at said closed end have oval
lateral cross-sections of substantially equivalent diameters.
Appeal Br. 25 (Claims App.).
REJECTIONS ON APPEAL
All claims 57-69 stand rejected under 35 U.S.C. § 112, first paragraph,
for lack of written description.
All claims 57-69 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sada (JP 2000-238845 A, pub. Sept. 5, 2000) and Carew
(US 6,044,996, iss. Apr. 4, 2000).
All claims 57-69 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gruenbacher (US 5,921,429, iss. July 13, 1999), Mugita
(JP 2002-104372 A, pub. Apr. 10, 2002), and Carew.
All claims 57-69 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mugita, Gruenbacher, and Carew.
2
Appeal2014-007750
Application 11/608,204
ANALYSIS
A. Written Description Rejection I Drawing Objections
The Examiner rejects independent claim 57 as lacking description in
Appellant's original disclosure for the recited "opening" and "portions of [a]
sidewall at [a] closed end" having "oval lateral cross-sections of
substantially equivalent diameters." Final Act. 3. The written description
rejection of independent claims 61 and 65 concerns similar limitations in
those claims. Id. at 3--4. The Examiner particularly objects to the "oval"
shapes, and to the "substantially equivalent diameters." Id. at 4; Ans. 3---6.
Appellant argues Figures 4a and 6a in the original disclosure illustrate
an opening and a closed end sidewall having oval lateral cross-sections of
substantially equivalent diameters. Appeal Br. 7-9; Reply Br. 1-2.
Appellant contrasts those figures with Figure 5a in the original disclosure,
which in Appellant's view shows a circular cross-section at the opening and
the closed end. Appeal Br. 7-8. Appellant further contends, even if
Figures 4a and 6a are deemed to show circular cross-sections at the opening
and the closed end, then page 23, lines 25-26 of the Specification indicates
such cross-sections could alternatively be oval. Id. at 8.
The Examiner answers2 that "[t]he only true cross sections" in
Appellant's disclosure are Figures 4b, 6b, 6c, and 6d because they are the
2 Although the rejection on appeal is based on a lack of written description,
the Examiner's Answer raises indefiniteness issues concerning the meaning
of "oval," "lateral cross-section," and "substantially equivalent diameters" in
claim 57. Ans. 3-6. However, we determine the respective meanings of
these terms are not indefinite when viewed in light of the Specification. The
Specification indicates the term "generally oval" describes the continuously
curved shape shown in the central portion of Figure 8a, contrasted for
3
Appeal2014-007750
Application 11/608,204
only drawings with cross hatching. Ans. 3. The Examiner points out those
figures show "vertical" cross sections, not the claimed "lateral" cross
sections. Id. In the Examiner's view, Figures 4a and 6a "could just as easily
indicate circular (elliptical) cross sections" as the claimed "oval" cross-
section, due to the perspective nature of the views shown. Id. at 6. Further,
according to the Examiner, Figure 4b "contradicts the claim limitation
wherein the size of the lower, closed end is much smaller than the size of the
upper, open end." Id. at 4; see also id. at 5 (Figs. 4b and 6b show the closed
end "is substantially smaller with a smaller diameter" than the opening).
We determine the Examiner errs in concluding Figures 4a and 6a of
Appellant's original disclosure fail to show "oval" lateral cross-sections of
the opening and the closed end sidewall. We reproduce those figures here,
adding lines "A" and "B" to the openings for reference:
example with the "generally circular" shape shown in the outer portion of
Figure 8a. Spec. 16:25-17 :2, 17: 14--16. In this regard, it is apparent from
comparing Figure 8a with Figures 7a-7c, which show the same container 70,
that Figure 8a is indeed a cross-sectional view of container 70, despite the
lack of cross hatching in the figure. Id. at 9:7-11, 16:25-17:2. Further, a
"lateral cross-section" is a cross-section taken perpendicularly to the central
longitudinal axis of the tubular body. Id. at 14: 14--19 (Figs. 6-7), 16:25-
17:2 (Figs. 8a-8c), 21:8-16 (Fig. 10). Finally, the meaning of oval lateral
cross-sections at the opening and the closed end having "substantially
equivalent diameters" is apparent from Figures 6a and 6b (for example).
4
Appeal2014-007750
Application 11/608,204
·~
!
!
j
\<:'51"'
~ --.~:::::::;/
~~-:::.::;.-::,:,:;~~~,::.:;... ::;:.:~
These figures show perspective views of two different containers.
Spec. 8:13-14, 8:20-21. We appreciate these views are perspective in
nature, not lateral cross-sections. Nonetheless, a person of ordinary skill in
the art would understand from Figures 4a and 6a that the illustrated
containers are oval in shape at both the opening and at the closed end. In
particular, the curvature shown at the openings is elongated more along
direction A in relation to direction B to be circular. The elongated
dimension A in Figure 6a likewise is consistent with the "planar"
configuration of panel area 68 that extends along that dimension.
Spec. 14: 14--26. It is further apparent from Figures 4a and 6a, in
conjunction with the respective companion Figures 4b and 6b, that the
lateral cross-sectional shapes at the opening and at the closed end are
substantially identical, and therefore have the claimed substantially
equivalent diameters. For these reasons, the drawings of the original
5
Appeal2014-007750
Application 11/608,204
disclosure provide sufficient written description support for the claimed
subject matter at issue.
Moreover, as originally presented on the day Appellant's application
was filed (December 7, 2006), claim 57 recited:
57. A thermo-plastic container for hermetically sealing a
single stack of fragile articles, comprising:
a tubular body having a central longitudinal axis, said
body comprised of a sidewall having a flowing geometries
mechanism formed therein, which is positioned between a closed
end and an open end having a hermetically sealable opening; said
hermetically sealable opening of said open end and portions of
said sidewall at said closed end having oval lateral cross-
sections of substantially equivalent diameters ....
Preliminary Amendment (filed Dec. 7, 2006), 3 (emphasis added). In our
view, while not discussed by the Examiner or by Appellant, the original
claim 57 provides further written description support for the subject matter
at issue in claim 57 presented on appeal. See In re Koller, 613 F.2d 819,
823-24 (CCP A 1980) (original claims constitute their own description)
(citing Jn re Gardner, 475 F.2d 1389 (CCPA 1973)); 37 C.F.R. § 1.115(a)(l)
(2015) ("A preliminary amendment that is present on the filing date of an
application is part of the original disclosure of the application.").
For the foregoing reasons, we do not sustain the Examiner's rejection
of claims 57----69 as lacking written description. Appellant additionally seeks
our review of the Examiner's objection to the application's drawings as
failing to show (i) "the oval lateral cross-sections of substantially equivalent
diameters at said sealable opening of said open end and portions of the
sidewall at the closed end as stated in claims 57----69," and (ii) "the
configuration of claim 62 wherein an oval lateral cross section of the middle
section as shown in Fig. 7 is combined with another embodiment wherein
6
Appeal2014-007750
Application 11/608,204
the hinged areas define planar weakened panel areas (the panel areas of
Fig. 7 are curved)." Final Act. 2; Appeal Br. 19-23. To the extent
objection (i) turns on the same issues as the rejection of claims 57-69 for
lack of written description, our decision with respect to that rejection is
dispositive as to the corresponding objection which we do not sustain. The
written description rejection does not concern objection (ii), which is
therefore not subject to review by the Board. See 37 C.F.R. § 1.113(a); Ex
Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010) (precedential).
B. Obviousness based on Sada and Carew
In rejecting claim 57 as obvious over Sada and Carew, the Examiner
finds Sada's oval-shaped container 10 substantially exhibits each and every
claim limitation, except there is no disclosure that container 10 is made of
plastic, and container 10 does not have a flowing geometries mechanism
comprising a lateral flexible hinged area and a planar weakened panel area. 3
Final Act. 4--5. The Examiner finds Carew discloses a thermoplastic
container exhibiting flowing geometries mechanisms comprising lateral
flexible hinged areas and weakened panel areas. Id. at 5 (citing Carew,
Figs. 1, 2 and 5). The Examiner determines it would have been obvious to
modify the middle portion of Sada's sidewall to have one or more of
Carew' s flowing geometries mechanisms to absorb vacuum forces and
forces induced by changes in environmental conditions, thereby preventing
deformation in the upper and lower end regions of the container and
3 Sada is a Japanese patent document, and is therefore written in the
Japanese language. The record before us contains the original document,
including Figures 1--4, and a translation of the Abstract into the English
language. Our citations to Sada's Abstract refer to the English translation.
The record does not contain any further translations of Sada.
7
Appeal2014-007750
Application 11/608,204
maintaining the container's aesthetically pleasing appearance. Id. Further
according to the Examiner, it would have been obvious "to modify" Sada's
container "to be made from plastic" because "plastic material flexes to a
degree necessary to absorb vacuum forces." Id.
Appellant argues "Sada and Carew are directed to non-analogous art."
Appeal Br. 11. In support, Appellant contends "Sada discloses a
mechanically strong container for storing fragile articles," while "Carew
discloses a readily deformable container for use with hot-filled liquids." Id.
at 11-12. In Appellant's view, "[r]igid containers for storing solid, fragile
articles encounter significantly different problems than flexible containers
for storing hot-filled liquids." Id. at 12. Therefore, Appellant concludes,
one would not have looked to Carew for solutions to problems that may have
been encountered with Sada's container. Id.
We agree with the Examiner that both Sada and Carew are analogous
art to the present application. Ans. 9. A prior art reference is analogous to
an application if ( 1) it is from the same field of endeavor as the application,
regardless of the problem addressed, or (2) if the reference is not within the
field of the inventor's endeavor, it is nonetheless reasonably pertinent to the
particular problem with which the inventor is involved. In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004). Appellant's application is directed to
"containers for storing fragile food products" that are "capable of adapting to
changing environmental conditions while maintaining [their] visual aesthetic
appearance." Spec. 2:6-11. Sada is within the application's field of
endeavor of containers for storing fragile food products. Sada, Abstract.
Even if Carew is deemed to be in a different field of endeavor because it
stores liquids and not solids, Carew is still reasonably pertinent to the
8
Appeal2014-007750
Application 11/608,204
problem with which Appellant was involved, namely, adapting a container
to changing environmental conditions while maintaining its aesthetic
appearance. See Carew, 1: 15-33, 2:31-38; Spec. 2: 12-22.
Appellant also argues Sada and Carew teach away from one another,
or alternatively, the Examiner's proposed modification would render the
Sada container inoperable for its intended use. Appeal Br. 10-11. Appellant
relies on Sada's description of its container 10 as having "excellent ...
mechanical strength." Sada, Abstract; Appeal Br. 11. In Appellant's view,
Sada thereby teaches away from using flexible panels to preserve the
integrity of container 10, because Sada discloses its container sidewalls
"are ... already resistant to vacuum forces and changes in environmental
conditions." Appeal Br. 11; see also Reply Br. 8 (asserting that due to
Sada's mechanically strong walls, there would be no need for vacuum
panels). Appellant contends, alternatively, Carew's "flexing panels would
compromise the mechanical integrity of Sada's container, thereby rendering
the container unable to preserve its contents," making the Examiner's
proposed modification improper. Appeal Br. 11.
The Examiner answers there is no teaching away because "Sada
doesn't indicate that walls are so mechanically strong that a vacuum panel is
prevented" and "[t]here is no specific indication [in Sada] that precludes a
vacuum panel." Ans. 8. Further according to the Examiner, the
combination of Sada and Carew would not render Sada's container 10
inoperable for its intended purpose because "vacuum panels do not
compromise mechanical integrity of which Carew is evidence." Id. at 9.
Appellant's argument that Sada teaches away from using Carew's
flexing sidewall panels is not persuasive. First, it is not clear exactly what
9
Appeal2014-007750
Application 11/608,204
Sada means by describing its container sidewalls as mechanically strong.
Appellant's understanding that it means Sada's sidewalls are so strong so as
to be "resistant to vacuum forces and changes in environmental conditions"
(Appeal Br. 11) is based on speculation, not the disclosure of Sada. Given
this lack of clarity in the Sada disclosure, we perceive no inconsistency in
modifying Sada's mechanically strong sidewalls to incorporate flexing
panels to absorb vacuum forces and forces induced by changes in
environmental conditions, thereby preventing undesirable container
deformations and maintaining the container's aesthetically pleasing
appearance. See Final Act. 5. Moreover, regardless of the meaning of
"mechanical strength" in Sada, the disclosure of Sada in the record before us
does not "criticize, discredit, or otherwise discourage" the use of flexible
panels, and therefore does not teach away. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Finally, Appellant's contention that the flexing
panels of Carew "would compromise the mechanical integrity of Sada's
container, thereby rendering the container unable to preserve its contents"
(Appeal Br. 11) is similarly based on speculation rather than evidence, and is
therefore unpersuasive.
Appellant moreover argues the Examiner's reasoning for modifying
Sada to be made of plastic "is unfounded and therefore conclusory." Appeal
Br. 12. According to Appellant, "Sada's container is already mechanically
strong," and "[a]lthough the container cannot flex to absorb vacuum forces,
a rigid container that could withstand vacuum forces would have no need to
implement flexible sidewalls." Id. Appellant's Reply Brief additionally
discusses Mugita's disclosure of a paper container. Reply Br. 9.
10
Appeal2014-007750
Application 11/608,204
We agree with the Examiner that it would have been obvious to make
Sada's container out of plastic. The disclosure of Sada in the record
presently before us fails to indicate any suitable material for making
container 10. Sada, Abstract. So, while the Examiner refers to plastic as a
modification of Sada's container 10 (Final Act. 5), it is more accurately a
choice from among known suitable materials for making Sada's
mechanically strong container 10. The Examiner has set forth an adequate
rationale supported by the disclosure of Sada and Carew for why a person of
ordinary skill in the art would choose plastic, namely, "plastic material
flexes to a degree necessary to absorb vacuum forces." Final Act. 5; Ans. 9.
Appellant's discussion ofMugita's paper container in the Reply Brief is
irrelevant to the combination of Sada and Carew.
For the foregoing reasons, we sustain the rejection of claim 57 as
unpatentable over Sada and Carew. Appellant does not present any
additional arguments for the patentability of claims 58---69 over Sada and
Carew. Appeal Br. 9-12. We, therefore, likewise sustain the rejection as to
those claims.
C. Obviousness based on Gruenbacher, Mugita, and Carew
The Examiner presents two different analyses in support of rejecting
claims 57---69 as obvious over Gruenbacher, Mugita, and Carew.4 Our
affirmance of the decision of the Examiner to reject claims 57---69 on one
ground of rejection-namely, obviousness based on Sada and Carew-
4 Mugita is a Japanese patent document. The Examiner determines Mugita
is prior art to Appellant's application because "Mugita was filed October 4,
2000 before the October 29, 2001 filing date of [Appellant's] parent
application 10/032654." Final Act. 6. Appellant does not challenge this
determination on appeal.
11
Appeal2014-007750
Application 11/608,204
constitutes a general atlirmance of the decision of the Examiner on those
claims. See 37 C.F.R. § 41.50(a)(l). Therefore, we do not address the
Examiner's obviousness rejections based on Gruenbacher, Mugita, and
Carew.
DECISION
The Examiner's decision to reject claims 57----69 as lacking written
description under 35 U.S.C. § 112, first paragraph, is reversed.
The Examiner's decision to reject claims 57----69 as unpatentable under
35 U.S.C. § 103(a) 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
12