Ex Parte Gerlach

Patent Trial and Appeal Board

May 18, 2017

13371987 (P.T.A.B. May. 18, 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.
13/371,987 02/13/2012 Christian Gerhard Friedrich GERLACH 12356 3875
27752 7590 05/22/2017
THF PROFTFR fr TtAMRT F TOMPANY
EXAMINER
Global IP Services
Central Building, C9
GRUN, ROBERT J
One Procter and Gamble Plaza
CINCINNATI, OH 45202
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
05/22/2017 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN GERHARD FRIEDRICH GERLACH
Appeal 2016-001916
Application 13/371,9871
Technology Center 1700
Before JAMES C. HOUSEL, DONNA M. PRAISS, and
KRISTINA M. KALAN, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s
decision finally rejecting claims 1—8 and 10—15 under 35 U.S.C. § 103(a) as
unpatentable. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellant, the Real Party in Interest is The Proctor & Gamble
Company (Appeal Br. 1).
2 Our decision refers to the Specification (Spec.) filed Feb. 13, 2012,
Appellant’s Appeal Brief (Appeal Br.) filed May 26, 2015, the Examiner’s
Answer (Ans.) dated Oct. 23, 2015, and Appellant’s Reply Brief (Reply Br.)
filed Nov. 23,2015.
Appeal 2016-001916
Application 13/371,987
A. STATEMENT OF THE CASE
The invention is directed to a process for making a stretch-blow
molded container having an integrally molded handle. Spec. 1:5—6.
Appellant discloses that the process comprises the steps of providing a
preform; stretch-blow molding the preform to form an intermediate
container having a convex portion extending outwardly from the container;
inverting the convex portion, at a pressure within the container above 1 bar
and the convex portion temperature below the glass transition temperature,
Tg, by moving a plug inwardly to form a concave gripping region; and
thereafter releasing excess pressure within the container. Id. at 2:12—21.
Appellant further discloses that the plug has a substantially convex contact
surface corresponding to the concave gripping region and has a contact
surface area greater than a projected plane area of its periphery, wherein the
contact surface includes an initial contact surface and a secondary contact
surface proximal thereto and oblique to the drive direction. Id. at 2:21—28.
According to Appellant, an oblique secondary contact surface can allow the
final container to be easily separated from the plug when the container is
ejected from the mold. Id. at 6:12—13.
Sole independent claim 1, reproduced below from the Claims
Appendix to the Appeal Brief, is representative of the subject matter on
appeal:
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Application 13/371,987
1. A process for making a container having an integral handle
and a main body (12), comprising the steps of:
a) providing a preform (6);
b) stretch blow molding said preform (6) to form an
intermediate container (8) which comprises a convex portion (9)
extending outwardly from said intermediate container, said
convex portion (9) having a glass transition temperature;
c) at a pressure within said intermediate container (8) above
about 1 bar and with the temperature of said convex portion (9)
being below said glass transition temperature, inverting said
convex portion (9) with an inwardly moving plug (5) having a
drive direction to form a concave gripping region (13) whereby
locations on said convex portion translate in a substantially
straight line path as said convex portion is inverted; and
d) releasing excess pressure within the container;
wherein said plug has a contact surface (20) having a contact
surface area (21), said contact surface comprised of an initial
contact surface (25) and a secondary contact surface (30)
proximal said initial contact surface, said secondary contact
surface oblique to said drive direction;
wherein said contact surface has a contact surface periphery
(35) having a projected plane area (36) in a direction aligned with
said drive direction;
wherein said contact surface area is greater than said
projected plane area (36);
wherein said contact surface is substantially convex relative
to said contact surface periphery;
wherein said contact surface substantially corresponds with
said concave gripping region; and
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Application 13/371,987
wherein said convex portion is inverted about a location of
inversion (11) that advances from a location of said convex
portion in contact with said initial contact surface of said plug
outwardly as a wave towards what ultimately becomes part of
said main body of said container.
Rejections
The Examiner maintains, and Appellant requests our review of, the
following rejections:3
1) Claims 1—13 under the ground of nonstatutory obviousness-type
double patenting as unpatentable over claims 1—15 of copending U.S.
Patent 9,050,750 B2, issued June 9, 2015 (hereinafter “Patent 1”) in
view of Connolly4 and Trade;5
2) Claims 1—13 under the ground of nonstatutory obviousness-type
double patenting as unpatentable over claims 1—15 of copending U.S.
Patent 9,555,573 B2, issued Jan. 31, 2017 (hereinafter “Patent 2”) in
view of Gerlach,6 Connolly and Trade;
3) Claims 1—13 over Connolly in view of Trade; and
4) Claims 1—13 over Gerlach in view of Connolly and Trade.
B. ANALYSIS
3 Patents 1 and 2 issued respectively from copending U.S. Patent Application
Serial Nos. 12/406,523 and 12/873,368 after the date of the Examiner’s
Answer, thereby changing the status of the Examiner’s obviousness-type
double patenting rejections from provisional to non-provisional. We have
corrected the rejection statements to reflect this change of status.
4 Connolly et al., US 2009/0236776 Al, published Sept. 24, 2009
(“Connolly”).
5 Trade et al., US 2007/0235905 Al, published Oct. 11, 2007 (“Trade”).
6 Gerlach et al., US 2011/0057361 Al, published Mar. 10, 2011 (“Gerlach”).
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Application 13/371,987
Neither the copendency status of Patents 1 and 2, nor the prior art
status of the remaining applied prior art has been challenged. In addition,
Appellant does not argue the claims separately. Pursuant to 37 C.F.R. §
41.37(c)(l)(iv) (2014), we select claim 1 to resolve the issues before us on
appeal. Dependent claims 2—13 stand or fall with claim 1.
Rejections 1 and 2: Obviousness-type Double Patenting (ODP)
The Examiner finds the claims of Patents 1 and 2 recite processes of
making a container having an integral handle by, inter alia, deforming
convex bubbles formed in an intermediate container with inwardly moving
plugs. Ans. 3^4. However, the Examiner acknowledges Patent 1 fails to
claim the specific configuration of the plug and setting the temperature of
the convex bubbles below Tg as required by Appellant’s claim 1. Id. at 3.
The Examiner also acknowledges Patent 2 fails to claim the specific
configuration of the plug and the formation of a convex bubble on the
container. Id. at 4. Nonetheless, the Examiner finds Trade, Connolly, and
Gerlach “teach these obvious characteristics”, and refers to rejections below
for further analysis. Id. at 3 and 4.
Appellant argues that Connolly teaches away from modifying the
claims of Patent 1.7 Appeal Br. 2. In addition, Appellant asserts Patent 1
and Connolly teach deforming the convex bubble at a temperature between
Tg and the melt temperature, Tm, so that thermoforming happens before
7 Appellant notes that Connolly is the publication of the application which
issued as Patent 1 and Gerlach is the publication of the application which
issued as Patent 2. Appeal Br. 2 and 4. Appellant does not argue that either
Connolly or Gerlach is not available as prior art.
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Application 13/371,987
significant crystal growth has occurred. Id. Appellant urges that Trude’s
teaching that inversion of a convex region occurs as late as possible in the
blowing process to allow the container to cool as much as possible is
opposite to Connolly. Id. at 3.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Further, references in a combination may be said to teach
away where their combined teachings would produce a “seemingly
inoperative device”. See In re Sponnoble, 405 F.2d 578, 587 (CCPA 1969).
Teaching an alternative or equivalent method, however, does not teach away
from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438
(CCPA 1965).
Here, Connolly and Trude merely teach alternative methods for
inversion of convex formed regions of blow molded containers. Ans. 21.
As the Examiner finds, Trude teaches at least one reason for shaping at
temperatures other than taught in Connolly, i.e., to allow for improved
inversion of the region to be inverted. Id. Trude teaches that allowing the
container to cool as much as possible reduces the probability that the
container will crease or deform during inversion. Trude 139 (“The
inversion may occur just before the container is ejected or released from the
mold to reduce the likelihood that the inversion will form unwanted creases
or deformities in the container 100.”).
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While it is true that Connolly teaches inversion of a region to be
inverted at a temperature between Tg and Tm, rather than below Tg, in order
to reduce crystal growth, Appellant has not shown that Connolly criticizes or
discourages inversion at temperatures below Tg, nor do we find any. Indeed,
Connolly teaches that only as the temperature at inversion rises above the
recrystallization temperature, Tc, does the problem of crystal growth become
apparent. See Connolly 129 (“At temperatures between Tg and Tc there is
little or no further crystal growth ...”). Appellant also does not argue, nor
is there evidence to support, that modifying the claimed method of Patent 1
in view of Connolly and Trude would result in an inoperative method. We
are, therefore, not convinced that the prior art taught away from the
invention herein claimed.
Appellant next argues that the Examiner fails to find the features of
claim 11, “wherein said convex portion is inverted about a location of
inversion (11) that advances from a location of said convex portion in
contact with said initial contact surface of said plug outwardly as a wave
towards what ultimately becomes part of said main body of said container,”
and, “whereby locations on said convex portion translate in a substantially
straight line path as said convex portion is inverted,” in the teachings of the
prior art. Appeal Br. 3; Reply Br. 1—2. In this regard, Appellant takes issue
with the Examiner’s reference to “[s]ee rejection below for further analysis”
as failing to comply with required specificity in making rejections. Reply
Br. 2 (citing MPEP 707.07(d) and 37 C.F.R. § 1.104(c)(2)). In addition,
Appellant argues that the Examiner fails to provide a rationale for
concluding that these features are inherent in the prior art, in particular, that
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Application 13/371,987
Connolly’s convex portion “is necessarily inverted about a location of
inversion that advances from a location of said convex portion in contact
with said initial contact surface of said plug outwardly as a wave towards
what ultimately becomes part of said main body of said container.” Reply
Br. 3.
These arguments are not persuasive of reversible error in these
rejections. As Appellant notes, Connolly and Gerlach are the publications of
the applications from which Patents 1 and 2 issued, respectively. As such,
the Examiner’s rejections including findings, reasoning, and conclusions
under nonstatutory obviousness-type double patenting are substantively the
same as the rejections under 35 U.S.C. § 103(a). Therefore, while the
Examiner refers to the related § 103 rejection—Connolly in view of Trude
for the ODP over Patent 1 and Gerlach in view of Connolly and Trude for
the ODP over Patent 2—for further analysis, it is clear that the findings,
reasoning, and conclusions are the same.
These circumstances support a determination that the Examiner’s
nonstatutory obviousness-type double patenting rejections satisfy the notice
requirement of 35 U.S.C. § 132 and thereby satisfy the procedural burden of
establishing a prima facie case of unpatentability (i.e., nonstatutory
obviousness-type double patenting). See In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011). The notice requirement of § 132 “is violated when a
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.” Id. (quoting Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)). Here, Appellant presents
substantive arguments on the merits of the Examiner’s nonstatutory
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Application 13/371,987
obviousness-type double patenting rejections. The record before us supports
a determination that Appellant has not been prevented from recognizing and
seeking to counter the grounds for rejection.
Turning to Appellant’s argument that the rejections fail to address two
limitations of claim 1, namely, that locations on the convex portion translate
linearly as it is inverted and the location of inversion advances as a wave, we
note the Examiner expressly finds that Connolly teaches the former
limitation (Ans. 6) and acknowledges that the combination of Connolly and
Trude does not expressly teach the latter limitation (Ans. 11). Nonetheless,
the Examiner finds that this latter limitation “is a byproduct of the use of the
claimed plug in combination with a convex bubble on an intermediate
container which is under the glass transition temperature.” Id. The
Examiner finds that Connolly, when modified to invert at Tg as Trude
suggests, would perform the inversion in the same manner and conditions in
which Appellant performs the inversion. Id. As such, the Examiner finds
that Connolly, when modified to invert at Tg as Trude suggests, would
inherently provide “a location of inversion that advances from a location of
said convex portion in contact with said initial contact surface of said plug
outwardly as a wave towards what ultimately becomes part of said main
body of said container.” Id. As the Examiner notes {id. at 12), this
limitation recites a result of the inversion step, and Appellant has not shown
that the inversion step itself is different from that of Connolly as modified by
Trude. Indeed, the same is true for the former limitation, i.e., locations on
the convex portion translate linearly as the convex portion is inverted.
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Accordingly, Appellant has not identified reversible error in the
Examiner’s ODP rejections. Jung, 637 F.3d at 1365 (“it has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections.”). As such, we affirm the Examiner’s nonstatutory
obviousness-type double patenting rejections.
Rejections 3 and 4: Obviousness under §103
Appellant’s arguments with regard to each of the obviousness
rejections are not substantively different. Therefore, we address each of
Appellant’s arguments against these rejections together below.
The Examiner finds that Connolly recites a process of making a
container having an integral handle by, inter alia, deforming convex bubbles
formed in an intermediate container with inwardly moving plugs. Ans. 5—7.
However, the Examiner acknowledges Connolly fails to teach the specific
configuration of the plug and setting the temperature of the convex bubbles
below Tg as required by Appellant’s claim 1. Id. at 8. Nonetheless, the
Examiner finds Trude teaches forming a container with an integral handle by
inverting a convex bubble formed on an intermediate container at a
temperature below Tg for improved inversion due to mechanical plastic
deformation rather than heat deformation. Id. at 9. Therefore, the Examiner
concludes that it would have been obvious to have performed Connolly’s
inversion step at a temperature below Tg for improved inversion, i.e., to
ensure that inversion occurs without causing unwanted folds or defects. Id.
Alternatively, the Examiner finds Gerlach teaches the process of claim
1, except for the formation of a convex bubble on the container. Ans. 14—
18. The Examiner finds Connolly teaches a convex bubble can be formed in
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Application 13/371,987
the intermediate container, which convex bubble is then subject to inversion
to allow for formation of a thicker grip. Id. at 14. The Examiner concludes
it would have been obvious to have formed convex bubbles on Gerlach’s
intermediate container and inverting the convex bubbles in order to form
thicker grips as taught in Connolly. Id. at 14—15.
Appellant argues that Connolly teaches away from modifying the
temperature of the inversion step as taught by Trade. Appeal Br. 4—5. For
the same reasons given in the Answer and above, this argument is not
persuasive of reversible error.
Appellant next argues that the references fail to disclose at least four
elements of claim 1:1) inverting the convex portion with the temperature of
the convex portion below Tg; 2) locations on the convex portion translate
linearly as it is inverted; 3) the location of inversion advances as a wave; and
4) the contact surface area is greater than the project plane area. Appeal Br.
5—8. However, the Examiner made specific findings regarding the first and
the fourth elements. For example, the Examiner acknowledges that
Connolly fails to teach the temperature of the convex portion is below Tg,
but finds Trude teaches that when inverting the moveable region, it is
beneficial to cool the container to improve inversion. Ans. 8—9. In addition,
the Examiner finds Connolly, Figure 5, teaches a formed grip with multiple
convex regions with first and second contact surfaces oblique to the drive
direction around a periphery having a projected plane area. Id. at 7—8. The
Examiner finds the contact surface area is greater than the projected plane
area. Id. at 8.
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As to the second element (locations on the convex portion translate
linearly as it is inverted), Appellant contends that the Examiner’s findings
are unclear as to whether Connolly does not expressly teach this element or
whether Connolly “seems” to teach this element. Appeal Br. 5. Appellant
asserts that Connolly does not disclose this element. Id. Moreover,
Appellant argues that, if the Examiner is relying on Trude for this limitation,
such reliance is in error because Trude teaches that portions of the movable
region move about hinges, not by translation. Id. at 6.
However, the Examiner finds that the only difference between
Connolly’s process and claim 1 is that claim 1 requires that the inversion is
done at a temperature below Tg. Ans. 23. The Examiner also finds that
inversion of Connolly’s convex portion with the inwardly moving plug to
form the concave gripping region occurs such that locations on the convex
portion translate in a substantially straight line path as inversion occurs. Id.
at 6. As to the Examiner’s finding that “Connolly seems to teach[] wherein
said locations on said convex portion translate in a substantially straight line
path as said convex portion is inverted” {id. at 10), we find that this
statement is akin to a finding that, given the similarities between Connolly’s
inversion and Appellant’s claimed inversion, the ordinary artisan reasonably
would expect the same inversion behavior in both. Indeed, this second
element is not an operative step per se, but is instead a characteristic or result
of both the design of the convex portion and the movement of the plug.
Where, as here, the Examiner establishes a reasonable belief that a
characteristic or result recited in the claims would have necessarily occurred
in a prior art method, the burden of proof shifts to Appellant to show that the
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prior art does not possess this characteristic or result. In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). Appellant has not directed us to any
evidence or persuasive technical reasoning to refute the Examiner’s
reasonable determination that Connolly’s method would have inverted the
convex portion such that locations on the convex portion translate linearly as
it is inverted.
Similarly, though Appellant argues that the Examiner fails to establish
that the third element (the location of inversion advances as a wave) is
taught, or is inherent, in the applied prior art, this third element is also
directed to a characteristic or result of the performance of the method of
inverting due to the design of the convex portion and the inward movement
of the plug. The Examiner finds Connolly’s final container design with
concave gripping region, Figure 5, is substantially the same as Appellant’s,
Figure 8. See Ans. 8 and 23. In addition, the Examiner finds that this
element is a result of the inversion of the convex bubble in the intermediate
container by the inwardly moving plug. Id. at 11. As Connolly teaches the
plug is shaped like the grip, the Examiner determines that the ordinary
artisan reasonably would expect the same behavior, i.e., inversion advances
as a wave, to occur in Connolly. Again, as with the second element,
Appellant has not directed us to any evidence or persuasive technical
reasoning to refute the Examiner’s reasonable determination that Connolly’s
method would have inverted the convex portion about a location of inversion
that advances as a wave towards what ultimately becomes part of said main
body of said container.
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Accordingly, Appellant has not identified reversible error in the
Examiner’s obviousness rejections. Jung, 637 F.3d at 1365 (“it has long
been the Board’s practice to require an applicant to identify the alleged error
in the examiner’s rejections.”) As such, we affirm the Examiner’s
obviousness rejections.
C. DECISION
The decision of the Examiner rejecting claims 1—13 under the ground
of nonstatutory obviousness-type double patenting and under 35 U.S.C.
§ 103(a) is affirmed.
AFFIRMED
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