Ex Parte BYSICK et al

Patent Trial and Appeal Board

Nov 28, 2018

13476436 (P.T.A.B. Nov. 28, 2018)

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.
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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).
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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
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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
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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
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