Ex Parte BryantDownload PDFPatent Trials and Appeals BoardMay 31, 201913666447 - (D) (P.T.A.B. May. 31, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/666,447 11/01/2012 27081 7590 05/31/2019 OWENS-ILLINOIS, INC. ONE MICHAEL OWENS WAY Plaza One - Legal Department PERRYSBURG, OH 43551-2999 FIRST NAMED INVENTOR Jessica Rose Bryant 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. 19208 us 5388 EXAMINER FRANKLIN, JODI COHEN ART UNIT PAPER NUMBER 1741 MAIL DATE DELIVERY MODE 05/31/2019 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 JESSICA ROSE BRYANT Appeal2018-004309 Application 13/666,447 Technology Center 1700 Before GEORGIANNA W. BRADEN, MONTE T. SQUIRE, and BRIAND. RANGE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL 1 1 In explaining our Decision, we refer to the Specification filed November 1, 2012 ("Spec."); Final Office Action dated February 8, 2017 ("Final Act."); Appeal Brief filed October 10, 2017 ("Appeal Br."); Examiner's Answer dated January 19, 2018 ("Ans."); and Reply Brief filed March 15, 2018 ("Reply Brief'). Appeal2018-004309 Application 13/666,447 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-11, 13-18, 25-32, and 34--37. 3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Claimed Subject Matter Appellant's disclosure relates to a method of manufacturing glass containers, which includes producing a glass melt, forming glass containers from the glass melt, coding the glass containers by applying particles to the glass containers so that the particles bond with the containers to form optically readable patterns, and annealing the glass containers. Spec. 1; Abstract. Claim 1 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A method of manufacturing glass containers which includes the steps of: (a) producing a glass melt; (b) forming glass containers from the glass melt; ( c) coding the glass containers by selectively applying a random pattern of discrete particles to a portion of each of the glass containers while the containers are at a sufficient temperature for the particles to bond with the containers and 2 Appellant is the Applicant, Owens-Brockway Glass Container Inc. Bib. Data Sheet 1. According to the Appeal Brief, the real parties in interest are: Appellant, Owens-Brockway Glass Container Inc.; Owens-Brockway Packaging Inc.; Owens-Illinois Group; and Owens-Illinois, Inc. Appeal Br. 1. 3 Claims 12, 19, and 33 are withdrawn (Appeal Br. 1) and claims 20-24 canceled (id. at 33). 2 Appeal2018-004309 Application 13/666,447 provide each of the containers with a unique optically readable code; and ( d) annealing the glass containers. Appeal Br. 29 (key disputed claim language italicized and bolded). The References The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Scholes us 4,371,387 Feb. 1, 1983 Grant et al. us 6,009,727 Jan.4,2000 ("Grant") Roquette us 6,099,905 Aug. 8,2000 Sakoske et al. US 2004/0237590 Al Dec. 2, 2004 ("Sakoske") Sato et al. US 2007 /0038464 Al Feb. 15,2007 ("Sato") Harrison et al. US 2008/0090034 Al Apr. 17, 2008 ("Harrison") Haushalter US 2010/0046825 Al Feb.25,2010 Kondo JP 2007-55150 A Mar. 8, 2007 The Rejections On appeal, the Examiner maintains (Ans. 3) the following rejections: 4 1. Claims 1, 3-8, 10, 11, 13-17, 25-32, and 34--37 are rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Harrison and 4 The Examiner's§ 112 rejection of claims 1-19 and 25-37 (Final Act. 2) and § 103 rejection of claims 3 and 5 over Roquette, as evidenced by Grant, and further in view of Kondo (id. at 11-12) are withdrawn by the Examiner at page 10 of the Answer. 3 Appeal2018-004309 Application 13/666,447 further in view of Sakoske and as evidenced by Scholes ("Rejection 1 "). 5 Ans. 3; Final Act. 3. 2. Claims 9, 16, and 17 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Harrison and further in view of Sakoske and as evidenced by Scholes and further in view of Haushalter ("Rejection 2"). Ans. 6; Final Act. 7. 3. Claim 32 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Harrison and further in view of Sakoske and as evidenced by Scholes ("Rejection 3"). Ans. 7; Final Act. 8. 4. Claims 1, 2, 4, 6-8, 10, 11, 13, 14, 16-18, and 25-31 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Roquette and further in view of Harrison and as evidenced by Grant ("Rejection 4"). Ans. 7; Final Act. 8. 5. Claim 32 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Roquette and further in view of Harrison and as evidenced by Grant and Sato ("Rejection 5"). Ans. 9; Final Act. 12. 6. Claims 13, 14, 16, and 18 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Kondo 6 ("Rejection 6"). Ans. 10; Final Act. 12. 5 This statement of rejection has been corrected to include claim 5, which appears to have been inadvertently omitted from the listing of rejected claims provided at page 3 of the Answer and page 3 of the Final Office Action. Appellant acknowledges and includes claim 5 among the claims subject to the Examiner's § 103 rejections. Appeal Br. 1 O; see also Ans. 5---6 (setting forth rejection for claim 5). 6 The Examiner refers and cites to the machine translation of the Kondo reference. Ans. 10. 4 Appeal2018-004309 Application 13/666,447 Reiection 1 OPINION The Examiner determines that the combination of Harrison and Sakoske, as evidenced by Scholes, suggests a method for manufacturing glass containers satisfying all of the steps of claim 1 and thus, concludes the combination would have rendered the claim obvious. Ans. 3-5 ( citing Harrison ,r,r 12, 17, 164, 191, 192, 200, 232, 242, 248, 302-313, and 353; Sakoske, Abstract, 4, 5, 26, 31, and 32). Regarding the recitation "selectively applying a random pattern of discrete particles to a portion of each of the glass containers," the Examiner relies on Harrison for disclosing this step of the claim. Ans. 3--4. In particular, the Examiner finds that Harrison teaches applying a colored glass frit to soda lime silica glass bottles to impart decorative pictures, patterns, barcodes, or other information tagging or marking the bottles. Id. at 3 (citing Harrison ,r,r 164, 191,192,242,248,353,368). The Examiner further finds that applying the frit "for the purpose of a decoration or design" (Ans. 3--4) or "for the purpose of a barcode or pattern" (Final Act. 3) would be considered "selectively applying a random pattern," as recited in the claim. The Examiner also finds that paragraph 182 of Harrison teaches that the applied image is a "decoration or design ... which would be a random pattern." Ans. 11. Appellant argues that the Examiner's rejection of claim 1 should be reversed because Harrison does not teach or suggest "selectively applying a random pattern of discrete particles to a portion of each of the glass containers," as recited in the claim. Appeal Br. 1 O; Reply Br. 2. Rather, in contrast to the claimed method, Appellant argues that Harrison teaches a 5 Appeal2018-004309 Application 13/666,447 method of digitally transferring an image to a glass substrate, which does not include the step of applying a "random pattern" of particles to a portion of each of the glass containers, as required by the claim. Appeal Br. 11 ( citing Harrison ,r,r 164, 182, 352-354). In particular, Appellant argues that, although Harrison teaches that the digitally-transferred image 410, for example, "may take the form of variable information (such as a lot number, a serial number, an identification number, a date and the like)" (Harrison ,r 182) and "security markings, including information tagging or information marking or barcodes" (id. ,r 242), the reference does not teach or suggest applying such images in a random pattern, as claimed. Id. at 11-12 (arguing that "[t]here is nothing random about any of these noted examples of the image 410"). Appeal Br. 11-12. Appellant contends that the Examiner's interpretation of the term "random" is unreasonably broad and does not comport with the term's ordinary meaning or the way the term is used in the Specification. Id. at 12. Appellant's argument is persuasive of reversible error in the Examiner's rejection because the Examiner has not established by a preponderance of the evidence that Harrison teaches or suggests "selectively applying a random pattern of discrete particles to a portion of each of the glass containers," as required by the claim. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that the examiner bears the initial burden of establishing a prima facie case of obviousness). None of the portions of Harrison that the Examiner relies upon in the rejection teach or suggest the "selectively applying a random pattern" recitation of the claim. As Appellant correctly points out (Appeal Br. 11-12), although paragraph 182 of Harrison discloses that the image 410 6 Appeal2018-004309 Application 13/666,447 "may take the form of variable information (such as a lot number, a serial number, an identification number, a date and the like), a name, logo, trademark, make, model, manufacturer and the like, and/ or an image, photograph, decoration, drawing, design, pattern and the like," there is no teaching or suggestion of applying any of the examples listed as a random pattern, as claimed. Likewise, although paragraph 242 of Harrison mentions that the "ceramic image may be a decorative coating such as a picture or pattern," it does not teach or suggest applying the image as a random pattern in the manner claimed. Rather, as Appellant points out (Appeal Br. 11 ), paragraph 242 of Harrison discloses applying "functional coatings," such as, for example, "security markings, including information tagging or information marking and barcodes." Moreover, we concur with Appellant (Appeal Br. 12; Reply Br. 2) that the Examiner's interpretation of the phrase "random pattern" to encompass "variable information (such as a lot number, a serial number, an identification number, a date and the like)" (Harrison ,r 182) and "security markings" (id. ,r 242) is unreasonably broad and inconsistent with the language of the claim and disclosure provided in the Specification. See In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); see also Spec. 10 ("One or more of the different colors, different sizes, different shapes, different configurations, and/ or randomness inherent in the particle application process establish unique and random particle patterns on the containers."). Contrary to what the Examiner's findings seem to imply, the fact that Harrison describes applying an image on a glass substrate as a 7 Appeal2018-004309 Application 13/666,447 "variable" pattern (Harrison ,r 182), does not necessarily teach or suggest "applying a random pattern" in the manner claimed. The Examiner also does not identify evidence or provide reasoning sufficient to support a finding that one of ordinary skill would have had reason to modify Harrison's method of digitally transferring an image to a glass substrate to include the step of applying the image as a random pattern, as would be required to arrive at the claimed invention. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring "reasoning with some rational underpinning to support the legal conclusion of obviousness") (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)). In particular, at pages 3-5 and 11 of the Answer, the Examiner does not adequately explain why the disclosures at paragraph 182 of Harrison would have led one of ordinary skill to modify Harrison's method to include the step of "selectively applying a random pattern of discrete particles to a portion of each of the glass containers." See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) ("[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.") ( emphasis in original). The Examiner's assertions that "Harrison specifically teaches decoration or design ... which would be a random pattern" and "it would be extremely unlikely that each discrete particle fall in the same location on more than one bottle" (Ans. 11) are conclusory and speculative, and, without more, insufficient to sustain the Examiner's rejection. Kahn, 441 F.3d at 988 (holding "rejections on obviousness grounds cannot be sustained by mere conclusory statements"). 8 Appeal2018-004309 Application 13/666,447 We, therefore, cannot sustain the Examiner's rejection of claim 1 and determination that it would have been obvious to combine the teachings of Harrison and Sakoske, as evidenced by Scholes, to arrive at the claimed subject matter. Because claims 3-8, 10, 11, and 34--37 each depends from claim 1, we also cannot sustain the Examiner's rejection of these claims. Because claims 13-17 and 25-32 recite the same "selectively applying a random pattern of discrete particles" step as claim 1, we also cannot sustain the Examiner's rejection of those claims. Accordingly, we reverse the Examiner's rejection of claims 1, 3-8, 10, 11, 13-17, 25-32, and 34--37 under pre-AIA 35 U.S.C. § 103(a) as obvious over the combination of Harrison and Sakoske, as evidenced by Scholes. Re;ections 2 and 3 The foregoing deficiencies in the Examiner's analysis and conclusion regarding Rejection 1 and the Harrison reference are not remedied by the Examiner's findings regarding the additional references and combination of references cited in support of the second and third grounds of rejection (Rejections 2 and 3, stated above). Accordingly, for principally the same reasons discussed above in reversing the Examiner's Rejection 1, we reverse the Examiner's Rejections 2 and 3. Re;ection 4 The Examiner determines that the combination of Roquette and Harrison, as evidenced by Grant, suggests a method for manufacturing glass containers satisfying all of the steps of claim 1 and thus, concludes the 9 Appeal2018-004309 Application 13/666,447 combination would have rendered the claim obvious. Ans. 7-9 ( citing Roquette, 2:10-22, 3:63---67; Harrison ,r,r 191,192,200,232,242,248, 302- 313, and 353). As with Rejection 1, the Examiner relies on Harrison for disclosing the "selectively applying a random pattern of discrete particles to a portion of each of the glass containers" recitation of the claim. Id. at 8 ( citing Harrison ,r 182). In response to this rejection, Appellant relies on principally the same argument previously presented in response to the Examiner's Rejection 1. Appeal Br. 19. In particular, Appellant argues that the Examiner's rejection should be reversed because "the combination of Roquette and Harrison fails to teach or suggest selectively applying a random pattern of discrete particles to a portion of each of the glass containers." Id. at 18. We find Appellant's argument persuasive of the Examiner's rejection for principally the same reasons discussed above in reversing the Examiner's Rejection 1. Accordingly, we reverse the Examiner's rejection of claims 1, 2, 4, 6- 8, 10, 11, 13, 14, 16-18, and 25-31 under pre-AIA 35 U.S.C. § 103(a) as obvious over the combination of Roquette and Harrison, as evidenced by Grant. Reiection 5 The foregoing deficiencies in the Examiner's analysis and conclusion regarding Rejection 4 and the Harrison reference are not remedied by the Examiner's findings regarding the additional references and combination of references cited in support of the fifth ground of rejection (Rejection 5, stated above). 10 Appeal2018-004309 Application 13/666,447 Accordingly, for principally the same reasons discussed above in reversing the Examiner's Rejection 4, we reverse the Examiner's Rejection 5. Reiection 6 Claim 13 is directed to and recites: A method of marking a container for tracking or other purposes, which includes selectively applying a random pattern of discrete particles to a surface of a portion of the container such that the particles penetrate the surface and become embedded in the container to form a readable random code in the container. Appeal Br. 31 (Claims Appendix) (key disputed claim language italicized and bolded). The Examiner determines that Kondo teaches a method of marking a container that satisfies all of the steps of claim 13 and thus, concludes the reference would have rendered the claim obvious. Ans. 10 ( citing Kondo ,r 16). Appellant argues that the Examiner's rejection should be reversed because Kondo does not teach or suggest "applying a random pattern of discrete particles to a surface of a portion of the container," as claimed. Appeal Br. 27. Rather, in contrast to the claimed method, Appellant argues that Kondo is directed to a process by which ink is applied to a glass bottle 1 by screen printing and teaches that the ink may be applied to form a label in the form of desirable characters or a pattern. Id. at 27 ( citing Kondo ,r,r 9-11, 15, 16). In particular, Appellant argues that, because Kondo teaches and suggests "the printing of a consciously designed and predetermined pattern," the reference does not teach or suggest applying a "random pattern" of particles, as required by the claim. Id. at 27. 11 Appeal2018-004309 Application 13/666,447 We agree with Appellant's argument in this regard. On the record before us, we are not persuaded the Examiner has established by a preponderance of the evidence that Harrison teaches or suggests the "selectively applying a random pattern of discrete particles" recitation of the claim. The Examiner's assertion that "Kondo teaches applying a desirable character or pattern thus the readable colored pattern is a random pattern" (Ans. 10) is conclusory and, without more, insufficient to sustain the Examiner's rejection. Kahn, 441 F.3d at 988. Moreover, as Appellant correctly points out (Reply Br. 7), the Examiner does not make any additional findings regarding Kondo' s teachings or provide any further reasoning to support a§ 103 rejection based on Kondo in the "Response to Argument" section at pages 11-13 of the Answer. We, therefore, cannot sustain the Examiner's rejection of claim 13 as obvious over Kondo. Because claims 14, 16, and 18 each depends from claim 13, we also cannot sustain the Examiner's rejection of these claims. Accordingly, we reverse the Examiner's rejection of claims 13, 14, 16, and 18 under pre-AIA 35 U.S.C. § 103(a) as obvious over Kondo. DECISION The Examiner's rejections of claims 1-11, 13-18, 25-32, and 34--37 are reversed. It is ordered that the Examiner's decision is reversed. REVERSED 12 Copy with citationCopy as parenthetical citation