Ex Parte BYSICK et alDownload PDFPatent Trial and Appeal BoardNov 28, 201813476436 (P.T.A.B. Nov. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/476,436 05/21/2012 SCOTT E. BYSICK 114699 7590 11/30/2018 Baker Botts LLP 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. 082116.0474 1040 EXAMINER 30 Rockefeller Plaza MATHEW, FENN c New York, NY 10112-4498 ART UNIT PAPER NUMBER 3733 NOTIFICATION DATE DELIVERY MODE 11/30/2018 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): DLNYDOCKET@BAKERBOTTS.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT E. BYSICK and PAUL V. KELLEY Appeal 2018-004189 Application 13/476,436 Technology Center 3700 Before CHARLES N. GREENHUT, WILLIAM A. CAPP, and PAUL J. KORNICZKY, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the final rejection of claims 1, 23, 31, and 41 under the written description provision of 35 U.S.C. § 112, first paragraph, and of claims 1, 6-35, and 37--41 as unpatentable under 35 U.S.C. § 103(a) over Bretz (US D448,670 S, iss. Oct. 2, 2001). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2018-004189 Application 13/476,436 THE INVENTION Appellants' invention relates to blow molded plastic containers. Spec. ,r 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A plastic container, comprising: a finish portion defining an opening; a main body portion comprising a cylindrical sidewall having a first maximum diameter in plan view; a dome portion between the finish portion and the main body portion, the dome portion having, as viewed in longitudinal section: an upper end disposed proximate to the finish portion, a lower most end disposed adjacent to the main body portion, a first convex curved portion defining a first constant radius of curvature, a second convex curved portion defining a second constant radius of curvature that is greater than the first radius of curvature, and a convex curved non-cylindrical transition portion having a transition curvature connecting the first curved portion and the second curved portion, wherein the first convex curved portion extends from the upper end of the dome portion to the transition portion and the second convex curved portion extends from the transition portion to the lowermost end of the dome portion, the dome portion further having a second maximum diameter in plan view that is greater than the first maximum diameter; and a bottom portion having a standing ring and a cylindrical sidewall extending between the main body portion and the standing ring, the cylindrical sidewall having a third maximum diameter. 2 Appeal 2018-004189 Application 13/476,436 OPINION Section 112 Written Description The Examiner takes the position that Appellants' claims are directed to constant radii, while the Specification allegedly only states that the curvatures are average radii of curvature or, in other words, all points along the dome portion are averaged. Final Action 2. Appellants' Specification states that: The dome portion 24 preferably has a convex outer surface 26 that is shaped so as to define a first convex portion 28 that has a first average radius of curvature R 1. In the preferred embodiment, the first average radius of curvature R1 is substantially constant. The convex outer surface 26 further includes a second convex portion 30 having a second average radius of curvature R2, which in the preferred embodiment is also substantially constant. A transition region 32 connects the first and second convex portions 28, 30. Spec. ,r 17 ( emphasis added). The written description requirement of 35 U.S.C. § 112 requires that the disclosure of the application relied upon reasonably convey that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) ( en bane). The claimed invention does not have to be described in ipsis verbis in the specification to satisfy the written description requirement. See Union Oil Co. of Cal. v. Atl. Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000). The written description requirement is met when the disclosure "allow[ s] one skilled in the art to visualize or recognize the identity of the subject matter purportedly described." Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002). 3 Appeal 2018-004189 Application 13/476,436 We think Appellants' disclosure of radii of curvature being "substantially constant" is sufficient to demonstrate possession of the claimed subject matter as of the filing date. Id. Accordingly, we do not sustain the Examiner's Section 112, written description, rejection of claims 1, 23, 31, and 41. Unpatentability of Claims 1, 6-35, and 37-41 over Bretz Claim 1 The Examiner finds that Bretz discloses the invention except for the exact shape of the container. Final Action 3---6. In particular, the Examiner finds that Bretz satisfies the claim limitations directed to first and second radii of curvature with a transition curvature disposed therebetween. Id. 3--4. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to achieve the claimed invention using only the teachings of Bretz. Id. Appellants argue that Bretz fails to disclose first and second radii of curvature of the domed portion with a transition portion as claimed. Appeal Br. 14. Appellants argue that Bretz's dome portion has a single radius of curvature. Id. Appellants support their argument with an annotated figure from Bretz. Id. In response, the Examiner maintains that Bretz discloses the radii of curvature limitations as well as the transition curvature. Ans. 21-24. The Examiner supplies annotated figures from Bretz to illustrate the point. Id. at 22-23. The Examiner states that, using the broadest reasonable interpretation, a person of ordinary skill in the art would recognize that a radius of curvature is measured at a point. Id. at 24. Furthermore, the 4 Appeal 2018-004189 Application 13/476,436 Examiner maintains that it "is an error to interpret the radius of curvature to be along a length of a curve instead of at a point." Id. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Trans logic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, even under the broadest reasonable interpretation, the Board's construction "cannot be divorced from the specification and the record evidence." In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011). A construction that is "unreasonably broad" and which does not "reasonably reflect the plain language and disclosure" will not pass muster. Microsoft Corp. v. Proxyconn, Inc. v 789 F.3d 1292, 1298 (Fed. Cir. 2015). The Examiner's findings are based on an erroneous construction of "radius of curvature," that violates elementary principles of geometry. The fallacy of the Examiner's position is perhaps best illustrated by the Examiner's own annotated figure. See Ans. 23 (annotated Bretz Fig. 2). As illustrated in the annotated figure, the arc circumscribed by radius R2 does not follow the shape of any portion of the domed surface of Bretz's bottle. Id. A person of ordinary skill would understand that the upper portion of Appellants' bottle approximates the shape of a "dome." Claims App. claim 1. A dome is well understood to be rounded or curved in shape. A radius is a radial line from a focus to a point on a curve. Although it may be 5 Appeal 2018-004189 Application 13/476,436 true that a non-circular, curved shape can exhibit changes in radial length (e.g., a French curve), we do not agree with the Examiner's position that the length of a radius can be determined from any two points without taking into consideration the shape of the associated curve, as such is necessary to determine the focus of the arc or curve, which anchors the starting point for measuring the length of the radius out to the associated curve. The Examiner's position starts with an arbitrarily selected point, rather than the focus of an arc, for measuring a radius. This constitutes reversible error. The Examiner's findings of fact are not supported by a preponderance of the evidence. Consequently, we do not sustain the Examiner's unpatentability rejection of claim 1. Claims 6-35, and 37-41 Claims 23, 31, and 41 are independent claims which, like claim 1, all have limitations directed to first and second radii of curvature. Claims App. The remaining claims all depend from independent claims 1, 23, 3 1, and 41. Id. The Examiner's unpatentability rejections of all of these claims suffer from the same infirmity that was identified above with respect to claim 1. Thus, for essentially the same reason expressed above in connection with claim 1, we do not sustain the rejection of claims 6-35, and 37--41. DECISION The decision of the Examiner to reject claims 1, 6-35, and 37--41 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation