Ex Parte Grabher

Patent Trial and Appeal Board

Jan 9, 2017

12779273 (P.T.A.B. Jan. 9, 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.
12/779,273 05/13/2010 Werner GRABHER 3224-101 8170
6449 7590 01/11/2017
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14th Street, N.W.
SUITE 800
WASHINGTON, DC 20005
EXAMINER
DEMEREE, CHRISTOPHER R
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
01/11/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WERNER GRABHER
Appeal 2014-008377
Application 12/779,273
Technology Center 3700
Before JOHN C. KERINS, CHARLES N. GREENHUT, and
ANNETTE R. REIMERS, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Werner Grabher (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1—5, 14, 16, 17, and 24. Claims 6—13, 15, and
18—23 are withdrawn from consideration. We have jurisdiction under 35
U.S.C. § 6(b). An oral hearing was conducted on December 14, 2016, with
Brian A. Tollefson, Esq., appearing on behalf of Appellant.
We AFFIRM.
Appeal 2014-008377
Application 12/779,273
THE INVENTION
Appellant’s claimed invention is directed to a can. Claim 1,
reproduced below, is illustrative:
1. Can comprising:
two circular end elements (4, 5) respectively forming a base and
a lid, the first one (4) of said circular end elements having
substantially a same size as the second one (5); and
a can sleeve with a closed contour of polygonal prism surfaces,
said polygonal prism surfaces being separated by fold lines
oriented in a direction substantially along a longitudinal axis of
the sleeve, said fold lines forming edges (1) over their entire
length, the can sleeve (2) having a circular cross-sectional area
at both ends and a polygonal cross-sectional area in its central
region, wherein the polygonal cross-sectional area in the central
region is at least hexagonal and at most decagonal, and wherein
polygonal prism surfaces between the fold lines arch inwards
owing to the circular cross-sectional area imposed at both ends
and the edges formed by the fold lines arch outwards owing to
the circular cross-sectional area imposed at both ends.
THE REJECTION
The Examiner rejects claims 1—5, 14, 16, 17, and 24 under 35
U.S.C. § 103(a) as being unpatentable over Johnson (US 2,293,142,
issued Aug. 18, 1942) in view of Croley (US 3,670,946, issued June
20, 1972).
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Application 12/779,273
ANALYSIS
Appellant presents arguments directed to the rejection of claim 1, and
does not present separate arguments for any of dependent claims 2—5, 14, 16,
17, and 24. Appeal Br. 6—9. We therefore take claim 1 as representative of
the group of claims, and claims 2—5, 14, 16, 17, and 24 stand or fall with
claim 1.
The Examiner finds that Johnson discloses most of the elements in
claim 1, but does not explicitly teach that the can sleeve includes fold lines.
Final Act. 2. The Examiner posits that the drawings in Johnson appear to
show fold or crease lines, which are not labeled. Id. The Examiner further
points to a portion of Johnson referring to the can sleeve being able to
expand and then contract to its preformed shape, taking the position that this
implies that fold lines are present on the Johnson can sleeve. Id. at 2—3,
citing Johnson, page 3, lines 9—14. The Examiner further cites to Croley as
teaching a drum-like container having a sleeve portion that includes vertical
fold lines, and concludes that it would have been obvious to provide scored
fold lines on the Johnson can body “in order to allow formation of the tube
shape,” and that this “would accomplish the 4preformed shapediscussed in
Johnson. Id. at 3. The Examiner further explains that Croley is mainly
relied on as evidence that fold lines used to form circular drums was known,
and that it would have therefore been obvious “to form the creases shown in
Johnson as scored fold lines.” Ans. 5.
Appellant argues that the lines appearing in the Johnson drawings are
not fold lines, but rather are inwardly depressed portions of the container
formed by a mostly square-shaped ring that deforms a cylindrical wall into
the shape shown in Figure 5 of Johnson, and designated by reference
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Application 12/779,273
numerals 17, 17'. Appeal Br. 7. Appellant does not provide a definition of
“fold line” or point to evidence as to what persons of ordinary skill would
regard as a “fold line,” in support of the argument that Johnson does not
form fold lines when the can sleeve is deformed. However, we need not
reach the issue in view of the Examiner’s additional reliance on Croley as
teaching can sleeves that include fold lines and the proposed modification of
Johnson based on that teaching.
Appellant argues that the inclusion of the fold lines in Croley on the
can sleeve of Johnson would result in a can sleeve having many more sides
than the claimed “at most decagonal” cross-section. Appeal Br. 8. This
argument is based on Appellant viewing the rejection as a bodily
incorporation of the entirety of the teachings of Croley, and is not
commensurate with the manner in which the Examiner applies the teachings
of Croley. We note, in this regard, that the test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference. In re Keller, 642 F.2d 413, 425
(CCPA 1981). The Examiner’s position is that it would have been obvious
to modify the Johnson can to provide scored fold lines where the creases are
created when the middle portion of the can is deformed from its cylindrical
shape. Ans. 5.
Appellant additionally argues that “[t]he approximately circular cross
section of the drum in Croley would render the can of Johnson
unsatisfactory for its intended purpose,” on the basis that Croley produces a
nearly circular form, whereas Johnson specifically forms a part of the can
with an angular cross-section. Appeal Br. 9. Appellant urges that providing
the scored fold lines disclosed in Croley on the Johnson can sleeve would
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Application 12/779,273
hinder the formation of the Johnson container. Reply Br. 3. Again,
Appellant’s arguments are in the nature of bodily incorporating the teachings
of Croley into the Johnson container, a position not taken by the Examiner.
As such, the arguments do not apprise us of error in the Examiner’s position.
Sandwiched between additional arguments directed to why it would
not have been obvious to bodily incorporate the teachings of Croley into
Johnson, Appellant asserts that “[t]he Examiner provides no teaching from
the references or other reasoning to support the position that the scored fold
lines of Croley would help achieve the creases in Johnson.” Reply Br. 3.
The Examiner does, however, point to at least one passage in Croley as
evidencing that scored fold lines facilitate folding or creasing at a specific
location. Final Act. 3, citing Croley, col. 1,11. 29—35 (“The blank is scored
to provide a plurality of panels which fold relatively at vertical score
lines.”). Furthermore, as discussed previously, the Examiner’s position is
not that the specific fold lines in Croley are to be employed in Johnson, but
rather that it would have been obvious to provide scored fold lines where the
creases exist in the Johnson design, to facilitate obtaining that desired shape.
Final Act. 3; Ans. 5—6.
Appellant makes the argument that the Examiner’s proposed
modification requires the use of impermissible hindsight reconstruction.
Appeal Br. 9; Reply Br. 3^4. The stated basis for this argument is that it
would not have been obvious to bodily incorporate the fold lines of Croley
onto the Johnson container. Id. As noted previously, this is not the manner
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Application 12/779,273
in which the teachings of Croley are applied to Johnson. As such, the
arguments do not apprise us of Examiner error.
Appellant additionally argues that “[e]ven if the method in Johnson
were to produce some sort of fold lines, Johnson fails to disclose that the
fold lines form edges over their entire length,” as set forth in claim 1.
Appeal Br. 7. This argument can be seen as being germane to the
Examiner’s modification to Johnson to provide scored fold lines where the
creases are created, as shown in, for example, Figure 4 of Johnson. A
person of ordinary skill in the art would, in our view, regard the transition
lines delineating the cylindrical (non-deformed) portions of the Johnson
container from the depressed (deformed) wall portions as edges. Thus, the
fold lines introduced in the modification to Johnson would form edges along
the entire length of the fold lines, and we are not persuaded that this claim
limitation distinguishes over the combination of Johnson and Croley.
Accordingly, we sustain the rejection of claim 1 as being unpatentable
over Johnson and Croley. Claims 2—5, 14, 16, 17, and 24 fall with claim 1.
DECISION
The rejection of claims 1—5, 14, 16, 17, and 24 under 35 U.S.C.
§ 103(a) is affirmed.
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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