Ex Parte Jakob

Patent Trial and Appeal Board

Jan 26, 2017

12994387 (P.T.A.B. Jan. 26, 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.
12/994,387 11/23/2010 Timo Jakob 40047-019US1 2773
69713 7590 01/30/2017
OCCHIUTI & ROHLICEK LLP
321 Summer St.
Boston, MA 02210
EXAMINER
JALLOW, EYAMINDAE CHOSSAN
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
01/30/2017 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 TIMO JAKOB
Appeal 2014-009257
Application 12/994,3 871
Technology Center 3700
Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
SEAN P. O’HANLON, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Timo Jakob (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 2—4, 7, 8, 11, 12, and 17—21.2
Appellant’s representative presented oral argument on January 19, 2017.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellant, KHS GmBH is the real party in interest.
Appeal Br. 1 (filed Mar. 31, 2014).
2 Claims 1, 5, 6, 9, 10, and 13—16 are canceled. See Appellant’s
Amendment 4—6 (filed June 25, 2013).
Appeal 2014-009257
Application 12/994,387
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellant’s invention relates to “a closing machine for closing
containers with closures.” Spec. 1,11. 14—15 (filed Mar. 28, 2014).
Claim 7, the sole independent claim, is representative of the claimed
invention and reads as follows:
7. An apparatus for closing containers with closures, said
apparatus comprising a closing machine, said closing machine
comprising a rotor that can be rotated about a vertical machine
axis, a container carrier formed on the circumference of said
rotor for engaging a container, a sterile chamber formed on said
rotor, and into which extend container mouths of containers that
are to be closed, each container hanging from and being
retained by a corresponding container carrier, said
sterile chamber being delimited from surroundings thereof by
walls or wall sections, a plurality of closing stations formed on
a circumference of said rotor, each of said closing stations
comprising a bellows that extends by a variable amount into
said sterile chamber, said bellows defining an interior volume
that remains outside said sterile chamber, a closing tool
disposed in said interior volume of said bellows, said closing
tool being constructed to apply a closure to a container by
welding or sealing, said closing tool having functional
elements, which are arranged outside said sterile chamber, and
a part that cooperates with a structure selected from the group
consisting of said container and a closure, said closing
tool comprising a conductive structure selected from the group
consisting of a passive component and a shaped part, wherein
only said bellows extends into said sterile chamber during
operation of said closing tool, and a device arranged outside
said sterile chamber for producing energy for welding or
sealing.
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Appeal 2014-009257
Application 12/994,387
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 2—4, 7, 8, 11, 18, and 21 under 35
U.S.C. § 103(a) as being unpatentable over Tomba (EP 1 468
959 A2, pub. Oct. 20, 2004), Nervo (EP 1 262 445 Al, pub.
Dec. 4, 2002), and Stark (US 5,653,091, iss. Aug. 5, 1997).
II. The Examiner rejected claims 12 and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Tomba, Nervo, Stark, and
Leatherman (US 3,706,176, iss. Dec. 19, 1972).
III. The Examiner rejected claim 19 under 35 U.S.C. § 103(a) as
being unpatentable over Tomba, Nervo, Stark, and Anderson
(US 3,690,088, iss. Sept. 12, 1972).
IV. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over Tomba, Nervo, Stark, and Clemons
(US 2004/0261262 Al, pub. Dec. 30, 2004).
ANALYSIS
Rejection I
The Examiner finds that the combined teachings of Tomba and Nervo
disclose most of the limitations of independent claim 7, but fail to disclose
“a bellows having an interior volume through which a closing tool will enter
the sterile chamber.” Final Act. 2—3 (citing Tomba, para. 14, Fig. 1)
(transmitted Aug. 30, 2013). Nonetheless, the Examiner finds that Stark
discloses a flexible bellows 14 that is arranged in a gas tight manner about
filler pipe 5. Id. at 3. The Examiner concludes that:
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Appeal 2014-009257
Application 12/994,387
It would have been obvious to a person having ordinary
skill in the art, at the time of the invention, to provide the closing
tools taught by Tomba with the flexible bellows taught by Stark
in order to provide the closing tools a way to enter the sterile
chamber without bringing contaminants into the sterile
environment.
Id.
Appellant argues, inter alia, that the Examiner’s rejection “appears to
have been arrived at by reading Applicant’s own disclosure.” Appeal Br. 7.
According to Appellant, “in Stark, there is no concept of a tool entering a
sterile chamber through the bellows”; rather, the tool “is completely inside
the sterile chamber and never actually leaves it.” Id.
The reasoning provided by the Examiner—“to provide the closing
tools a way to enter the sterile chamber without bringing contaminants into
the sterile environment”—does not support the conclusion of obviousness
because the Examiner has not shown the relevance of that reasoning in the
context of Tomba’s closing machine. Stark discloses the use of bellows 14
to direct sterile air along stationary filler pipe 5 to sterilize the inside of
package 1, and the outside of lamp 7 and lamp housing 6. Stark, col. 5,1.
55—col. 6,1. 8, Fig. 1. Tomba discloses a sterile room Cl, “wherein the
upper surface . . . consists of [a] plate supporting . . . closing heads (D), and
where the lower surface . . . consists of the plate supporting the bottle neck.”
Tomba, col. 8,11. 29—33, Fig. 1. Hence, closing head D and neck of bottle H
of Tomba’s closing machine are already contained within the sterile
environment of room Cl, and, thus, Tomba’s closing machine does not
require the addition of a bellows seal, as taught by Stark, to direct sterile air
to their respective locations. We note that Tomba’s closing machine already
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Appeal 2014-009257
Application 12/994,387
includes pipes E, F for directing sterile air into sterile chamber Cl. See id. at
Fig. 1. Furthermore, as the Examiner has not provided any findings that
Tomba’s closing head D moves in and out of sterile room Cl, the Examiner
has not persuasively shown a problem with sealing closing head D or a need
to avoid “bringing contaminants into the sterile environment” of room Cl.
We thus agree with Appellant that the reason proffered by the
Examiner, i.e., “to provide the closing tools a way to enter the sterile
chamber without bringing contaminants into the sterile environment,”
appears to come from Appellant’s Specification, which states that “[t]he aim
of the invention is to provide a closing machine that. . . reduces the risk of
contamination.” Spec. 2,11. 16—21; see also id. at 4,11. 19—21 (describing
“bellows-like gasket 13” that seals “[t]he area through which the induction
seal[er] 12.1 passes through the wall section 6.”). See Appeal Br. 7.
Without a persuasive articulated rationale based on rational underpinnings
for modifying the closing machine of Tomba, using the bellows of Stark, as
proposed, the Examiner’s rejection appears to be the result of hindsight
analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
The Examiner’s use of Nervo’s disclosure does not remedy the
deficiency of the Examiner’s combination of the teachings of Tomba and
Stark. See Final Act. 3. Accordingly, for the foregoing reasons, we do not
sustain the rejection under 35 U.S.C. § 103(a) of claims 2-4, 7, 8, 11, 18,
and 21 as unpatentable over Tomba, Nervo, and Stark.
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Application 12/994,387
Rejections II—IV
The Examiner’s use of the disclosures of each of Leatherman,
Anderson, and Clemons does not remedy the deficiency of the Examiner’s
combination of the teachings of Tomba, Nervo, and Stark. See Final Act. 5—
6.
Therefore, for the reasons discussed supra, we also do not sustain the
rejections under 35 U.S.C. § 103(a) of claims 12 and 17 as unpatentable over
Tomba, Nervo, Stark, and Leatherman; of claim 19 as unpatentable over
Tomba, Nervo, Stark, and Anderson; and of claim 20 unpatentable over
Tomba, Nervo, Stark, and Clemons.
SUMMARY
The Examiner’s decision to reject claims 2-4, 7, 8, 11, 12, and 17—21
is reversed.
REVERSED
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