Ex Parte MondenDownload PDFPatent Trial and Appeal BoardAug 29, 201814200157 (P.T.A.B. Aug. 29, 2018) Copy Citation 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. 2 Appeal2017-010327 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). 3 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). 4 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." 5 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 6 Appeal2017-010327 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 7 Copy with citationCopy as parenthetical citation