11234499 (B.P.A.I. Jun. 6, 2011)

Ex Parte Hubball

Board of Patent Appeals and InterferencesJun 6, 2011

11234499 (B.P.A.I. Jun. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte MARTIN M. HUBBALL ____________________ Appeal 2009-009854 Application 11/234,499 Technology Center 3700 ____________________ Before LINDA E. HORNER, STEFAN STAICOVICI, and FRED A. SILVERBERG, Administrative Patent Judges. SILVERBERG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-009854 Application 11/234,499 2 STATEMENT OF THE CASE Martin M. Hubball (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 2, 3, 5, 6 and 8-12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s claimed invention is directed to the making of a shell for a can lid for use on metal beverage containers (Spec. 1:11-14). Claim 2, reproduced below, is representative of the subject matter on appeal. 2. A process for making a can lid from a lid material with an apparatus having a die center, a die core ring, and a forming ring, the process comprising: forming a first panel by relative motion between the lid material and the die center; forming at least a portion of a connecting member by relative motion between the forming ring and the lid material; engaging the first panel with a panel forming punch, the panel forming punch having a diameter less than the diameter of the first panel; forming a fold in the first panel through relative motion between the die center and the forming ring by shaping while at least a portion of the connecting member is secured between the forming ring and the die core ring; and forming a central panel having a diameter that is about the same as the diameter of the panel forming punch. Appeal 2009-009854 Application 11/234,499 3 THE REJECTION The following rejection by the Examiner is before us for review: Claims 2, 3, 5, 6 and 8-12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Appellant’s Admitted Prior Art (Spec. 6-12; figs. 1, 3, 5, 7, 9 and 11; hereinafter “AAPA”) in view of Bulso (US 4,716,755, issued Jan. 5, 1988). ISSUES The issues before us are: (1) whether the Examiner erred in concluding that the combined teachings of AAPA and Bulso would have led a person having ordinary skill in the art to the step of forming a fold by shaping, as called for in independent claims 2 and 8 (App. Br. 6); and (2) whether the Examiner’s conclusion of obviousness is based on impermissible hindsight (App. Br. 12). ANALYSIS ISSUE 1 Appellant argues claims 2, 3, 5 and 6 as a group (App. Br. 6, 12). As such, we select independent claim 2 as representative of the group, and claims 3, 5 and 6 will stand or fall with independent claim 2. Appellant argues claims 8-12 as a group (App. Br. 6, 12). As such, we select independent claim 8 as representative of the group, and claims 9-12 will stand or fall with independent claim 8. 37 C.F.R. § 41.37(c)(1)(vii). Independent claims 2 and 8 call for, inter alia, the step of forming a fold by shaping. Appeal 2009-009854 Application 11/234,499 4 Appellant contends that the combined teachings of AAPA and Bulso describe the step of forming a fold by bending, not shaping as called for in independent claims 2 and 8 (App. Br. 8). Appellant contends that he is entitled to be his own lexicographer and that he has explicitly defined a shaping operation in Figure 12 and in the Specification “at page 12, lines 1-19, to be the formation of a member that does not require insertion of a die or other formation ring” (id.) We find that the Examiner’s findings and conclusion of obviousness are reasonable and sound, and adopt them as our own (Ans. 3-4). In particular, we agree with the Examiner that Appellant’s Specification at page 12, lines 1-19 and Figure 12 does not describe that the word “shaping” has a meaning that is different from its common usage (Ans. 5-6). Accordingly, we agree with the Examiner that bending of a fold as described by Bulso falls within the common meaning of shaping1, and describes the claimed step of shaping. ISSUE 2 Appellant contends that that the Examiner’s conclusion of obviousness is based on impermissible hindsight (App. Br. 12). As we found supra, the Examiner’s conclusion of obviousness is reasonable and sound, and we adopt it as our own. In particular, we find that the Examiner’s conclusion of obviousness, that is, the Examiner’s modification of the teachings of AAPA by the teaching of Bulso (Ans. 4) is not based on impermissible hindsight as it is founded upon the technique of 1 The ordinary and customary meaning of the word “shaping” includes “FORM, CREATE; esp : to give a particular form or shape to.” MERRIAM- WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1999). Appeal 2009-009854 Application 11/234,499 5 making a single element arrangement a two element arrangement, which is well within the realm of a person having ordinary skill in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”) We affirm the rejection of independent claims 2 and 8, and dependent claims 3, 5, 6 and 9-12. CONCLUSIONS The Examiner has not erred in concluding that the combined teachings of AAPA and Bulso would have led a person having ordinary skill in the art to the step of forming a fold by shaping, as called for in independent claims 2 and 8. The Examiner’s conclusion of obviousness is not based on impermissible hindsight DECISION The decision of the Examiner to reject claims 2, 3, 5, 6 and 8-12 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)(1)(iv). AFFIRMED Appeal 2009-009854 Application 11/234,499 6 mls