Ex Parte Clougherty

Patent Trial and Appeal Board

Jul 17, 2017

13071721 (P.T.A.B. Jul. 17, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/071,721 03/25/2011 Kenan J. Clougherty 031599/382228 4576
826 7590 07/19/2017
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
DEMEREE, CHRISTOPHER R
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
07/19/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENAN J. CLOUGHERTY
Appeal 2016-001141
Application 13/071,7211
Technology Center 3700
Before WILLIAM V. SAINDON, ERIC C. JESCHKE, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
decision rejecting claims 1 and 3—5.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Sonoco Development,
Inc., the assignee of record. (App. Br. 1).
2 In the Final Action, the Examiner erroneously indicated the rejection of
claims 1—3 and 5; however, both Appellant and the Examiner agree that
claims 1 and 3—5 are the subject claims for this appeal.
Appeal 2016-001141
Application 13/071,721
BACKGROUND
The disclosed subject matter “relates generally to containers for
products, and more particularly relates to paper-based composite containers
for off-gassing products.” Spec. 11. Claim 1 is independent. Claim 1 is
reproduced below, with emphasis added:
1. A substantially paper-based composite container for an
off-gassing product, comprising:
a can body comprising a tubular wall constructed from
paperboard wrapped about an axis, the can body having opposite
ends each defining an opening, the can body further comprising
a substantially gas-impervious liner attached to an inner surface
of the paperboard of the can body; and
a pair of substantially paper-based end closures attached
to the opposite ends of the can body, each end closure defining a
cylindrical sealing panel in contact with a surface of the can
body, a heat seal material being disposed on a surface of the
sealing panel and a heat seal material being disposed on the
surface of the can body contacted by the sealing panel;
the sealing panels of the end closures being attached to the
can body by heat seals;
the heat seal for at least one of the end closures being
formed as a plurality of separate, spaced heat seal regions
between the sealing panel and can body, and there being an
unsealed region between each pair of adjacent spaced heat
seal regions in which there is heat seal material on the sealing
panel and on the surface of the can body contacted by the sealing
panel but in which said heat seal materials are not sealed
together such that each unsealed region constitutes a vent
channel between the sealing panel and the can body so as to
establish fluid communication between an interior of the
composite container and the environment outside the composite
container, the vent channel(s) being operable to vent excess gas
pressure from the interior of the container.
App. Br. 10, Claim Appendix.
2
Appeal 2016-001141
Application 13/071,721
EVIDENCE RELIED UPON BY THE EXAMINER
Ford US 4,557,414 Dec. 10, 1985
Perry US 5,692,638 Dec. 2, 1997
Domingues WO 2008/141267 A1 Nov. 20,2008
REJECTIONS
Claims 1 and 3—5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Domingues, Perry, and Ford.
DISCUSSION
The rejection of claims 1 and 3—5 under 35 U.S.C. § 103(a)
A. Examiner’s Positions
The Examiner rejected claims 1 and 3—5, relying upon Domingues to
teach a low pressure dough packaging can having a tubular paperboard
body. The Examiner pointed out all of the features that Domingues teaches
but stated that the reference lacks a heat seal disposed between the end caps
and the tubular body and a gas impervious liner. Perry was relied upon to
teach a crease for venting in a tubular dough package and Ford was relied
upon for teaching a heat sealable inner layer in a tubular container. Final
Act. 2-4, Ans. 2—3.
In the Examiner’s Answer, five points were made in support of the
rejection. First, the Examiner noted that the language of the claim was
different from the language used in Appellant’s arguments, in that “the
claims recite ‘a plurality of separate, spaced heat seal regions' (Claim 1
lines 12-3), which is different in scope from ‘any discontinuous heat seal’
[as argued by Appellant] (Appeal Brief Page 8 line 9).” Ans. 4. Second, the
Examiner stated that “the claims are drawn to a finished product and not a
3
Appeal 2016-001141
Application 13/071,721
process of making said product; therefore the arguments pertaining to how
the prior art arrives at the finished product differing from the processes of
the instant invention should be given little weight.” Id. In support of this
position, the Examiner cited to In re Thorpe, 111 F.2d 695 (Fed. Cir. 1985).
Third, the Examiner indicated that Domingues was relied upon to teach a
tubular body with sealed ends with means for venting gas within the
container and that Domingues includes a liner. Fourth, the Examiner states
that Perry is relied upon for teaching a liner and Ford is relied upon for
teaching heat seals. Finally, the Examiner stated that “[the] heat seal would
only seal where there is an attachment between the cap(s) and the body,
which would leave an unsealed region where the venting channel gaps
exist.” Ans. 5.
B. Appellant’s Positions
Appellant argued that “the Examiner has not addressed all of the
elements of the claim.” App. Br. 4. In particular, Appellant argued that the
Examiner has not identified where in the references the following limitation
is taught or suggested:
the heat seal for at least one of the end closures being formed as
a plurality of separate, spaced heat seal regions between the
sealing panel and can body, and there being an unsealed region
between each pair of adjacent spaced heat seal regions in which
there is heat seal material on the sealing panel and on the surface
of the can body contacted by the sealing panel but in which said
heat seal materials are not sealed together such that each unsealed
region constitutes a vent channel between the sealing panel and
the can body so as to establish fluid communication between an
interior of the composite container and the environment outside
the composite container, the vent channel(s) being operable to
vent excess gas pressure from the interior of the container.
Id. (emphasis removed).
4
Appeal 2016-001141
Application 13/071,721
Appellant argued that the “Domingues, Perry, and Ford references,
alone or in combination, do not teach or suggest a paper-based composite
container for an off-gassing product having a pair of substantially paper-
based end closures.” Id. Appellant went on to discuss the process by which
the heat seal is made, offering this description: “[s]ealing chuck 30 and
support ring 22 are heated sufficiently to cause softening or melting of the
heat-sealable materials on the can body 50 and end closure 60.” Id. at 5.
Appellant stated that “because there are circumferential gaps between
adjacent segments 32 of the expanded sealing chuck, the heated segments 32
produce spaced heat seal regions . . . [and the] result... is a series of [vents
or] channels 70.” Id. at 6.
Appellant also argued that the references do not teach a
“discontinuous heat seal attaching an end closure to the can body so as to
form a vent channel extending through the heat seal.” Id. at 8. Finally,
Appellant argued that Perry teaches cutting, impressing, or creasing the end
cap to make the vent channels, and as such, the means for venting are
different from Appellant’s vents. Id.
C. Discussion
The Examiner is correct that process limitations in a product claim are
given no patentable weight in a product claim. In re Thorpe, 111 F.2d 695,
697 (Fed. Cir. 1985) (“The patentability of a product does not depend on its
method of production. If the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim is unpatentable
even though the prior product was made by a different process.”) (citations
omitted). Appellant is not arguing, however, that the claim is a product-by­
process claim. Appellant pointed to the last clause in claim 1 and argued
5
Appeal 2016-001141
Application 13/071,721
that the Examiner has not demonstrated that the prior art teaches or suggests
the claimed vent channel, which Appellant characterizes as providing a
“discontinuous heat seal.” App. Br. 8. Appellant explained the invention by
means of the process of forming the end closures in the Appeal Brief at
pages 5 and 6 but ties this argument to the structural language of claim 1 to
finish the analysis: “because there are circumferential gaps between adjacent
segments 32 of the expanded sealing chuck, the heated segments 32 produce
spaced heat seal regions. . . . The result... is a series of channels.” Id. at
6; see also Reply Br. 3—8.
Specifically, Appellant’s claim requires that there are created heat seal
regions and unsealed regions between the sealed regions. Further, the
unsealed regions have heat seal material that is not sealed, “such that each
unsealed region constitutes a vent channel between the sealing panel and the
can body” to create the vents. As relied upon by the Examiner, Figure 27 of
Domingues teaches the use of a series of tabs that fold over the cap to form
vents between the tabs but does not have the unsealed regions as claimed.
The Examiner appears to be supplementing the vents that exist between the
tabs of Domingues with a vented cap as taught by Perry. Final Act. 2:17—
3:6 (“Domingues teaches ... at least one vent channel (see Figures 4-8)
extending through an end seal. . . [and] Perry teaches a tubular container
with a creased end to enhance composite can venting.”). In claim 1, the
vent channel is made of two separate, spaced heat seal regions between the
sealing panel and the body. Thus, in the Domingues and Perry combination,
the alleged vent occurs through both the spaced heat seal regions between
tabs and a crease in the end, rather than made of spaced heat seal regions
between the sealing panel and the body, as required by claim 1. Further,
6
Appeal 2016-001141
Application 13/071,721
Perry teaches a vent that is cut, impressed, or creased in the end cap to make
the vent channels. App. Br. 8:21—23. Perry’s vents do not include unsealed
heat seal material. Furthermore, there would be no reason to place heat seal
material within the vents of Perry. Final Act 3:15—17 (“Examiner notes that
the heat seal material would not fill the detents taught by Perry that allow for
venting since the detents do not contact the tubular body.”). Finally, Ford
does not disclose vents at all and instead is relied on to disclose a membrane
seal. Ans. 3 (citing Ford’s “inner heat-sealable layer”). The rejection before
us does not identify where in Domingues, Perry, and Ford, alone or in
combination, all of the structural limitations of the claim are taught or
described.
For the reasons set forth above, we do not sustain the rejection of
claim 1.
For claims 3—5, which depend from claim 1, the Examiner relies on
the same deficient findings and conclusions with regard to Domingues, Perry
and Ford discussed above. Thus, for the same reasons discussed above, we
also do not sustain the rejection of claims 3—5.
DECISION
The Examiner’s decision to reject claims 1 and 3—5 under 35 U.S.C.
§ 103 is reversed.
REVERSED
7