Ex Parte Emmer

Board of Patent Appeals and Interferences

Jun 23, 2010

10540141 (B.P.A.I. Jun. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GERARD EMMER
__________

Appeal 2010-000511
Application 10/540,141
Technology Center 1700
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Decided: June 23, 2010
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Before CHARLES F. WARREN, CATHERINE Q. TIMM, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
system of manufacturing containers. The Patent Examiner rejected the
claims on the ground of obviousness. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
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Application 10/540,141

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STATEMENT OF THE CASE
According to the Specification, “[a] purpose of the invention is to
make improvements to the methods and systems of manufacturing
containers from plastic material from previously injected preforms that are
thermally conditioned then transformed into containers during an expansion
produced by injecting fluid into the preform.” (Spec. 1:4-6.)
Claims 22, 24 and 28 are on appeal. According to Appellant, claims 1
and 3-21 have been allowed, and claims 23, 25-27 and 29-33 have been
objected to as dependent on a rejected base claim. (App. Br. 4.) Claim 22 is
representative of the appealed subject matter and reads as follows, using
italics to highlight the disputed limitation:
22. A system of manufacturing containers comprising:

a unit for thermally conditioning at least a preform;

an expansion unit with at least an expansion device of the said at least
the preform, which expansion device is associated with a source of
fluid to cause the expansion of the preform by injection of said fluid;

an isolating component that seals the interior of the preform from the
exterior environment;

a connecting component that places the interior of the preform in
communication with said source of fluid to cause the expansion of the
preform wherein the expansion unit is a free expansion unit of at least
certain of said areas of the preform; and

a control unit for controlling at least one injection parameter of the
fluid in order to control the expansion of the preform to produce the
final container,

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wherein the at least one injection parameter of the fluid is controlled
so that a final internal volume of the container falls within
predetermined limits with respect to a reference volume.

The Examiner rejected claims 22, 24 and 28 under 35 U.S.C. § 103(a)
as unpatentable over Dusterhoft.1
Claims 24 and 28 have not been argued separately and therefore stand
or fall with claim 22. 37 C.F.R. § 41.37(c)(1)(vii).

OBVIOUSNESS
The Issue
The Examiner’s position is that Dusterhoft taught an apparatus for a
free expansion. (Ans. 3, citing Dusterhoft Figs. 2 and 7, and ¶ 47.) The
Examiner found that “[w]hile Dusterhoft does not specifically teach that an
injection parameter of the fluid is controlled according to the instant claim
22, Dusterhoft teaches a controllable pressure apparatus (26).” (Id.) The
Examiner further found that “[t]he apparatus taught by Dusterhoft is capable
of performing the instantly claimed function which, it should be noted, is a
method limitation and does not materially affect the apparatus.” (Id.)
Appellant first contends that “Dusterhoft’s controller, which only
provides a defined pressure, is not capable of performing the function of
claim 22.” (App. Br. 10.) “In particular, Dusterhoft fails to disclose any
monitoring equipment associated with the pressure, e.g., flow rate
monitoring, which would permit volumetric control.” (Id.) Appellant also
contends that “Dusterhoft is directed to controlling the deliver[y] of
localized energy to a local deformation zone to control the deformation of

1 US 2002/0062161 A1, by Carsten Dusterhoft, published May 23, 2002.
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Application 10/540,141

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this local portion exclusively.” (Id. at 11.) Thus, according to Appellant,
“no volumetric control is contemplated,” and “it would not be obvious to
modify Dusterhoft to control the pressure such that a final internal volume of
the container falls within predetermined limits because this would destroy
the principle of operation of Dusterhoft.” (Id.)
The issue in this appeal is whether the evidence supports the
Examiner’s finding that Dusterhoft’s controller was capable of controlling
pressure “so that a final internal volume of the container falls within
predetermined limits with respect to a reference volume.”

Finding of Fact
1. Dusterhoft described controllable pressure apparatus (26) as follows:
The interior of the body 9—which in this case is designed as a
hollow body—is connected to a controllable pressure apparatus
26 in the form of a compressed air apparatus 10 by the
clamping apparatus 7. The controllable compressed air
apparatus 10 serves to apply compressed air of defined pressure
to the interior of the body 3 and to the side wall 2 to be
deformed. However, it is also possible to use a pressure
apparatus 26 which works with a hydraulic medium instead.

(Dusterhoft ¶ 47.)

Principles of Law
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995).

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[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

In re Swinehart, 439 F.2d 210, 213 (CCPA 1971).

Analysis
Appellant first contends that “Dusterhoft’s controller, which only
provides a defined pressure, is not capable of performing the function of
claim 22.” (App. Br. 10.) We disagree. Appellant has not provided any
reason to think that “defined pressure” does not provide the condition recited
in the wherein clause: “so that a final internal volume of the container falls
within predetermined limits with respect to a reference volume.”
Appellant argues that more than Dusterhoft shows is needed, e.g.,
flow rate monitoring, to have volumetric control. (Id.) The claims on
appeal do not require the apparatus to have a “volumetric control,” nor do
the claims recite that flow rate monitoring is required. Instead, the apparatus
is claimed to control at least one injection parameter so that the final volume
falls within predetermined limits. The evidence supports the Examiner’s
finding that Dusterhoft’s apparatus performs that function, and is sufficient
to shift the burden to Appellant to show that Dusterhoft’s apparatus cannot
perform the claimed function. See In re Schrieber, 128 F.3d 1473, 1478
(Fed. Cir. 1997).
Appellant also contends that Dusterhoft’s focus is exclusively on a
local deformation zone. (Id. at 11.) We disagree. Dusterhoft’s figures, e.g.,
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Figs. 2 and 7 cited by the Examiner, show that Dusterhoft’s focus was on
expanding containers to certain shapes. We note again that the claimed
apparatus is not defined as including a volumetric control device. We also
cannot agree with Appellant, that “no volumetric control is contemplated”
by Dusterhoft. Dusterhoft controlled the volume at least in order to contain
the pressure, and produced containers with planned volumes. Appellant’s
argument that controlling pressure “would destroy the principle of operation
of Dusterhoft” is unpersuasive because Dusterhoft taught using defined, i.e.,
controlled, pressure.

CONCLUSIONS
The Examiner’s evidence was sufficient to shift the burden to
Appellant to show that Dusterhoft’s controller could not control pressure “so
that a final internal volume of the container falls within predetermined limits
with respect to a reference volume.” Appellant has not met that burden.

SUMMARY
We affirm the rejection of claims 22, 24 and 28 under 35 U.S.C.
§ 103(a) as unpatentable over Dusterhoft.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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Application 10/540,141

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