Ex Parte Darr et al

Patent Trial and Appeal Board

Oct 21, 2013

11749501 (P.T.A.B. Oct. 21, 2013)

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.
11/749,501 05/16/2007 Richard C. Darr 65440-171 (05-237-1) 8357
26127 7590 10/21/2013
DYKEMA GOSSETT PLLC
39577 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304-5086
EXAMINER
RUSH, KAREEN KAY
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
10/21/2013 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 RICHARD C. DARR and EDWARD V. MORGAN
____________

Appeal 2011-011436
Application 11/749,501
Technology Center 3700
____________

Before MICHAEL W. KIM, MICHAEL C. ASTORINO, and
HYUN J. JUNG, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011436
Application 11/749,501

2
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 36-70. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
Claimed Subject Matter
Claims 36 and 65 are independent. Claim 36, reproduced below with
added emphasis, is illustrative of the subject matter on appeal.
36. A plastic preform for making a blow molded container,
comprising:
a closed bottom portion;
a lower portion extending upwardly from the bottom
portion;
a neck portion extending upwardly from the lower
portion; the neck portion including a support flange having an
upper and lower surface;
a tamper-evident formation, and a dispensing opening at
the top of the neck portion, a neck portion extending upwardly
from the lower portion, the neck portion including a support
flange having an upper and lower surface;
a tamper-evident formation; and
a dispensing opening at the top of the neck portion, the
dispensing opening having an inner diameter that is at least 22
mm;
wherein the vertical distance from the dispensing
opening to the lower surface of the support flange is 0.580
inches or less.

Claim 65 is directed to “[a] method for making a container” and,
similar to claim 36 recites, “wherein the vertical distance from the
dispensing opening to the lower surface of the support flange being 0.580
inches or less.” App. Br., Clms. App’x.

Appeal 2011-011436
Application 11/749,501

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Rejections1
Claims 36-40 and 42-70 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Brewster (US 5,888,598, iss. Mar. 30, 1999).
Claim 41 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Brewster and Ryder (US 4,756,438, iss. Jul. 12, 1988).

OPINION
Claims 36 and 65 call for a plastic preform having a distance of 0.580
inches or less between the dispensing opening at the top of the neck portion
and the lower surface of the support flange. See App. Br., Clms. App’x.; see
also Spec. fig. 5, para. [00023] (stating “the vertical distance X from the top
of the dispensing opening/ neck portion (e.g., point 30) to the lower surface
22 of the support flange 18 (e.g., point 32) is 0.580 inches or less.”).
The Examiner finds that Brewster discloses that “[t]he vertical
distance from the dispensing opening to the lower surface of the support
flange is 0.580 inches or less (the vertical distance is e = 0.827mm or 0.033
inches, which is less than 0.580 inches).” Ans. 5. Indeed, Brewster states
that distance “e” in Figures 1 and 2 is 0.827 mm. Brewster, Tables 3 and 4,
col. 5, ll. 30-35, 38, 46-50, 55 and col. 6, ll. 18-21.
The Appellants contend that one of ordinary skill in the art would
immediately recognize that the unit of length for distance “e” in Brewster’s
Tables 3 and 4, among others, are incorrect. See App. Br. 5. Specifically,

1 Although the Examiner includes In re Aller, 220 F.2d 454 (CCPA 1955),
as part of both grounds of rejection (Ans. 5, 18), case law is used to support
a ground of rejection and is not considered as part of the ground of rejection.
Accordingly, we have removed the Examiner’s citation to Aller in the
ground of rejection.
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that the unit of length must be in inches rather than millimeters, and as such,
the unit of length listed in Tables 3 and 4 of Brewster is clearly a
typographical error. See id. The Appellants rely on Brewster’s disclosure
and a Declaration of Richard C. Darr, filed March 1, 20102 as evidence to
explain why the unit of length listed in Brewster’s disclosure as millimeters
for distance “e” is a clear typographical error. See App. Br. 5-8, Reply Br.
1-2. Most notably, the Appellants assert that Brewster’s disclosure provides
contradictory lengths for the length of the preform. App. Br. 7.
The Appellants’ contention is persuasive. Brewster refers to the
length of the preform between 40-110 mm. See, e.g., Brewster, col. 2, ll. 55-
63 and col. 7, ll. 31-50; see also App. Br. 7, Reply Br. 1-2. However, the
length of the preform, i.e., distance “a,” in Figures 1 and 2 is 3.125 mm and
2.864 mm, respectively. Brewster, col. 5, ll. 29-35, 46-52, 64-66 and col. 6,
ll. 37-38. Assuming the identification of millimeters in Tables 3 and 4 is a
typographical error and should be inches instead, it is notable that 3.125
inches converts to approximately 79 mm and 2.864 in converts to
approximately 72 mm. Since 79 mm and 72 mm is between the range of 40
– 110 mm and 3.125 mm and 2.864 mm is well outside of the
aforementioned range, the Appellants’ contention that one of ordinary skill
in the art would immediately recognize 0.827 as inches rather than
millimeters as the unit of length for distance “e” is persuasive. Further, this
contention is supported by the Appellants’ remaining arguments at pages 5-7
of the Appeal Brief and pages 1-2 of the Reply Brief explaining why one of

2 The Appellants present the Declaration of Richard C. Darr in the Evidence
Appendix of the Appeal Brief, at pages 19-21.
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5
ordinary skill in the art would immediately recognize the units of length for
distance “e” as inches and not millimeters.
In response, the Examiner correctly notes that there is a presumption
that a patent is valid (Ans. 3, 19), and within that presumption is a
presumption of operability. See 35 U.S.C. § 282, MPEP § 716.07; see also
Metropolitan Eng. Co. v. Coe, 78 F.2d 199 (D.C. Cir. 1935). However, the
presumption of operability is rebuttable by a preponderance of the evidence.
See In re Sasse, 629 F.2d 675, 681 (CCPA 1980); see also In re Jacobs, 318
F.2d 743 (CCPA 1963). In this case, the Appellants are correct that “as
recognized by the Court in Yale, one of ordinary skill in the art would
recognize the obvious error and simply substitute the correct value.” App.
Br. 7; see MPEP § 716.07, In re Yale, 434 F.2d 666, 668-669 (CCPA 1970).
As discussed above, Brewster’s identification of millimeters as the length of
distance “e” in Tables 3 and 4 is a clear typographical error, and as such, a
person of ordinary skill in the art would mentally disregard or substitute
millimeters in Brewster’s Tables 3 and 4 for inches. See id. But see Ans. 4
(Examiner explains that even if the unit of length in Tables 1-5 is in error,
one of ordinary skill in the art would recognize the error and convert to the
appropriate units.). Accordingly, Brewster has not placed the length of the
vertical distance from the dispensing opening to the lower surface of the
support flange to be 0.580 inches or less in the possession of the public.
For the foregoing reasons, we find that the Appellants have rebutted
the presumption of operability by a preponderance of the evidence. See
Sasse, 629 F.2d at 681. Further, the Examiner has not substantively refuted
the Appellants’ rebuttal. Thus, the Examiner’s finding that Brewster
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discloses “the vertical distance is e = 0.827mm or 0.033 inches, which is less
than 0.580 inches” (Ans. 5) is inadequately supported.
Further, the Examiner cites to Gardner v. TEC Systems, Inc., 725 F.2d
1338 (Fed. Cir. 1984), cert. denied, 469 U.S. 830 (1984), to conclude,
“actual dimensions are given little patentable weight.” Ans. 4 (emphasis
added). The Examiner does not offer any further analysis of facts of
Gardner to the claims on appeal. Specifically, the Examiner does not
explain how the facts of Gardner are similar to the present case. See also
MPEP § 2144.04. Additionally, Gardner is a case directed to “relative
dimensions”, i.e., changes in size or proportion, which is conceptually
distinct from “actual dimensions,” since changes in dimensions may not be
proportional changes. See MPEP § 2144.04(IV)(A) (stating “[i]n Gardner
. . . , the Federal Circuit held that, where the only difference between the
prior art and the claims was a recitation of relative dimensions of the
claimed device and a device having the claimed relative dimensions would
not perform differently than the prior art device, the claimed device was not
patentably distinct from the prior art device.”). Accordingly, the Examiner’s
proffered holding of Gardner is inaccurate.
For the foregoing reasons, the Examiner has not established a prima
facie case of obviousness. Thus, the rejection of independent claims 36 and
65, and their dependent claims 37-40, 42-64, and 66-70, as unpatentable
over Brewster is not sustained.
The remaining rejection based on Brewster in combination with Ryder
relies on the same erroneous finding discussed above with regard to the
rejection of claim 36. See Ans. 18. As such, we cannot sustain the rejection
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under 35 U.S.C. § 103(a) of claim 41 as unpatentable over Brewster and
Ryder.

DECISION
We REVERSE the rejections of claims 36-70.

REVERSED

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