Ex Parte Monden

Patent Trial and Appeal Board

Aug 29, 2018

14200157 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/200,157 03/07/2014
27081 7590 08/29/2018
OWENS-ILLINOIS, INC.
ONE MICHAEL OWENS WAY
Plaza One - Legal Department
PERRYSBURG, OH 43551-2999
FIRST NAMED INVENTOR
Stefan Monden
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
18798-02 9211
EXAMINER
POON, ROBERT
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
08/29/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFAN MONDEN 1
Appeal2017-010327
Application 14/200, 157
Technology Center 3700
Before DANIELS. SONG, MICHELLE R. OSINSKI, and
WILLIAM A. CAPP, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
Final Office Action (hereinafter "Final Act.") rejecting claims 1, 4, 5, 10,
and 11 in the present application (App. Br. 1). We have jurisdiction under
35 U.S.C. §§ 6(b) and 134(a).
We AFFIRM.
1 The Appellant is the Applicant, Owens-Brockway Glass Container Inc.,
which is the real party in interest (Appeal Brief (hereinafter "App. Br.") 3).
Appeal2017-010327
Application 14/200, 157
The claimed invention is directed to a narrow neck glass container
(Abstract). Representative independent claim 1 reads as follows (App.
Br. 15 (Claims App.) (emphasis added)):
1. A narrow neck glass container having a container neck
finish and a container body with at least one internal
embossment, said container being made by the steps of:
(a) providing a blank mold that includes a mold body and
a neck ring, said neck ring having an internal surface for forming
a container neck finish having an external closure attachment
diameter of not more than 3 6mm, said mold body having an
internal surface with at least one debossment of predetermined
geometry,
(b) placing a gob of molten glass in said blank mold,
( c) moving a plunger through said neck ring into said mold
body to form said molten glass gob against said internal surfaces
of said neck ring and said mold body, and thereby form a glass
parison having said container neck finish and a parison body
with at least one external embossment corresponding to said
internal debossment in said mold body internal surface,
( d) removing said glass parison from said blank mold,
( e) placing said glass parison into a blow mold having an
internal surface,
(f) directing blow gas through said container neck finish
into said parison body to stretch said parison body against said
blow mold internal surface, and thereby push said at least one
external embossment on said parison through said parison body
and forming a container body having at least one internal
embossment corresponding to said external embossment, and
(g) removing the glass container from said blow mold,
wherein said parison body stretches at least 45% during
said step (!), such that said glass container is a pressed and
blown, internally embossed, at least 45% stretched, narrow neck
glass container, having an external closure attachment diameter
of not more than 3 6 mm.
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Application 14/200, 157
REJECTIONS
The Examiner rejects each of claims 1, 4, 5, 10, and 11 as follows:
1. Under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement (Final Act. 2);
2. Under 35 U.S.C. § 112, second paragraph, as being indefinite
(Final Act. 3); and
3. Under 35 U.S.C. § I03(a) as being unpatentable over U.S.
2003/0168372 Al to Headen et al. (pub. Sept. 11, 2003 (hereinafter
"Headen")), in view of U.S. 2005/0211655 Al to Bourreau et al. (pub.
Sept. 29, 2005 (hereinafter "Bourreau")) (Final Act. 3).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv); In re Jung, 637 F.3d 1356,
1365---66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI
2010 (precedential) ).
Rejection 1
The Examiner rejects each of the claims under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement,
finding that the claims "recite a glass container that is at least 45% stretched.
There is no support for the container being at least 45% stretched." (Final
Act. 2).
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Appeal2017-010327
Application 14/200, 157
The Appellant does not argue the rejected claims separately. Thus,
we select claim 1 as representative, and claims 4, 5, 10, and 11 stand or fall
with claim 1. The Appellant disagrees with the rejection, and asserts that
"those of ordinary skill in the art will appreciate from reviewing Appellant's
detailed description and drawings, that a container preform (of the
container, i.e., the container itself) undergoes stretching of 45% or more.
This is depicted in FIGS. 3A and 3B." (App. Br. 8 (emphasis added)).
The Examiner responds that the claims are directed to the finished
product, and that the Specification makes "clear that the preform/parison is
not the same as the finished product, the glass container." (Ans. 4 ( citing
Spec. 2, 11. 15-20)). The Examiner further responds that:
The appellant even admits on page 8 of the brief that the
container preform/parison is the part that undergoes stretching of
45% or more, not the finished glass container itself. This is even
shown in the figures provided by the appellant. Figs 3A-3B
clearly show the preform/parison (26) being stretched and it is
important to note that the preform is not the glass container itself.
The glass container is the finished product whereas the preform
is the intermediate product used to form the finished product.
(Ans. 4).
We agree with the Examiner. The Specification distinguishes the
parison from the container in disclosing that:
Blow gas is directed through the neck finish into the parison body
to stretch the parison body against the blow mold internal surface
and thereby push the at least one external embossment through
the wall of the parison body and form a container body having at
least one internal embossment corresponding to the external
embossment on the parison.
(Spec. 2, 11. 14--18) ( emphases added).
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Appeal2017-010327
Application 14/200, 157
The Specification further discloses that "[t]he glass of the parison
body normally is stretched more than 45% during this blowing operation,
and typically is stretched in the range of 45% to 70%." (Spec. 5, 11. 11-13).
The Specification makes a clear distinction between the parison that is used
to form the container, with the container itself. In contrast, the Specification
does not disclose stretching the container more than 45%.
According to the Appellant, "those of ordinary skill in the art will
recognize that the claimed at least 45% stretched container is carried out
wherein the claimed container- in its preform state/condition - is stretched
at least 45%." (Reply Br. 2). However, this assertion is not supported by
objective evidence. The Appellant's argument blurs the clear distinction
between the terms "container" with "parison" established by the
Specification and recited within the claim. 2
Therefore, in view of the above, we affirm this rejection.
Rejection 2
The Examiner rejects each of the claims under 35 U.S.C. § 112,
second paragraph, as being indefinite (Final Act. 3). The Examiner
determines that "due to the lack of [written] description, it is not clear what
the term '45% stretched' defines regarding the container." (Final Act. 3).
Specifically, the Examiner determines that the claims are indefinite in view
of the lack of written description, questioning "[ w ]hat does the appellant
mean by the container being stretched? Was the final product container
2 Application of the Appellant's improper reasoning further also blurs the
distinction between "gob of molten glass," "parison," and "container."
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Appeal2017-010327
Application 14/200, 157
initially smaller in size and then stretched? The scope of the claims is
unclear." (Ans. 5).
The Appellant again does not separately argue the rejected claims, and
as such we again select claim 1 as representative. The Appellant disagrees
with this rejection, and relying on the alleged adequate disclosure addressed
in Rejection 1, argues that "the original application disclosure conveys with
reasonable clarity and sufficient definiteness to those of ordinary skill in the
art" the claimed invention (App. Br. 8).
We again agree with the Examiner for the reasons stated. At
minimum, claim 1 is indefinite as presently worded because it is unclear
whether only the parison is stretched, or if the container is also stretched. Ex
Parte Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008) (precedential) ("if
a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite ... the
applicant has an opportunity and a duty to amend the claims during
prosecution to more clearly and precisely define the metes and bounds of the
claimed invention and to more clearly and precisely put the public on notice
of the scope of the patent").
Accordingly, we affirm this rejection.
Rejection 3
The Examiner rejects each of the claims under 35 U.S.C. § 103(a) as
being unpatentable over Headen in view of Bourreau (Final Act. 3).
However, since the claims fail to satisfy the requirements of the second
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Application 14/200, 157
paragraph of 35 U.S.C. § 112, we are constrained to reverse, proforma, the
prior art rejection because it is based on speculative assumptions as to the
scope of the claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962)
(holding that the Board erred in affirming a rejection of indefinite claims
because the rejection was based on speculative assumptions as to the
meaning of the claims); In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
It should be understood that our decision as to this rejection is based
solely on the indefiniteness of the claimed subject matter and does not
reflect the adequacy of the prior art evidence applied in support of the art
rejection. Once definite claims are presented, the Examiner is free to apply
the same, different, or additional prior art as the Examiner so chooses.
Thus, we reverse this rejection.
CONCLUSIONS
Rejections 1 and 2 are AFFIRMED. Rejection 3 is REVERSED pro
forma.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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