Ex Parte Darr et alDownload PDFPatent Trial and Appeal BoardOct 21, 201311749501 (P.T.A.B. Oct. 21, 2013) Copy Citation 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 3 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. Appeal 2011-011436 Application 11/749,501 4 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. Appeal 2011-011436 Application 11/749,501 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 Appeal 2011-011436 Application 11/749,501 6 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 Appeal 2011-011436 Application 11/749,501 7 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 Klh Copy with citationCopy as parenthetical citation