Ex Parte Niec

Patent Trial and Appeal Board

Nov 27, 2017

12516910 (P.T.A.B. Nov. 27, 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.
12/516,910 12/29/2009 Philippe Gerard Stanislas Niec 0702-091226 2040
28289 7590 11/29/2017
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
POOS, MADISON LYNN
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
11/29/2017 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
following e-mail address(es):
patents @ webblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPPE GERARD STANISLAS NIEC
Appeal 2016-002683
Application 12/516,91c1
Technology Center 3700
Before CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and
ERIC C. JESCHKE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 19, 20, 23, 29, 30, 32, 33, 36—38, 40-42 and 44. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellant, the Real Party in Interest is Impress Group B.V.
Appeal 2016-002683
Application 12/516,910
CLAIMED SUBJECT MATTER
The claims are directed to a pressurized can, such as an aerosol can.
Abstract. Claim 19, reproduced below, is the sole independent claim before
us:
Claim 19: A pressurized metal can having a bottom
comprising a panel connected with a panel radius (R4) to a
countersink having a panel wall angle (A2), a foot wall angle
(Al), and a countersink radius (R3), which countersink is
connected to a foot having a foot radius (R2) and the foot is
connected to a can body wall, which panel has a substantially
non-concave form, wherein the foot wall angle (Al) is in the
range of about 0 to 45°;
a panel wall angle (A2) is in the range of about 0-45°;
the foot radius (R2) is in the range of about 0.5 to 1.5 mm;
the countersink radius (R3) is in the range of about 0.5 to
1.5 mm;
the panel radius (R4) is in the range of about 1 to 1.5 mm;
a unit depth (HI) is in the range of about 5-15 mm;
a panel depth (H2) is in the range of about 2-10 mm; and
a center panel radius (R5) is larger than about 20 mm,
wherein the can has a diameter in the range of about 20-80 mm,
a bottom thickness in the range of 0.2-0.7 mm, and a pressure
resistance up to about 15 bar.
REJECTIONS
Claims 19, 20, 232, 29, 33, 36, 37, 41, 42, and 44 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Kohn (GB 1 572 031; July
23, 1980), in view of Cheng (US 6,220,073 Bl; Apr. 24, 2001), Cvacho (US
4,151,927; May 1, 1979), and Chupak (US 2004/0035871 Al; Feb. 26,
2004).
2 Misstated as 22 in the rejection statement.
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Appeal 2016-002683
Application 12/516,910
Claims 30 and 38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kohn, Cheng, Cvacho, Chupak, and Kamineni (US
2004/0000533 Al; Jan. 1, 2004).
Claims 32 and 40 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kong, Cheng, Cvacho, Chupak, and Bulso (US
2006/0071005 Al; Apr. 6, 2006).
OPINION
Appellant disputes the Examiner’s reliance on Kohn’s “X” and “Y”
dimensions as satisfying the limitations referring to “panel depth (H2)” and
“unit depth (HI),” respectively. App. Br. 16; Reply Br. 3. We are mindful
that meeting a claim limitation does not necessarily require identity of
nomenclature. In re Neugebauer, 330 F. 2d 353, 358 n.4 (CCPA 1964) (“In
the construction of words, not the mere words, but the thing and the
meaning, are to be inquired after.”). Further, where the Specification does
not provide an express definition or otherwise serve to limit the meaning of
particular words or phrases used in the claim, those words or phrases in the
claim may be construed to encompass more than the subject matter they
describe with reference to the particular embodiments disclosed in the
Specification. In re Am. Acad. ofSci. Tech Ctr., 367 F. 3d 1359, 1364 (Fed.
Cir. 2004), quoting In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002) (“[T]he
PTO must apply the broadest reasonable meaning to the claim language,
taking into account any definitions presented in the specification.”).
Nevertheless, in order to provide any meaningful appellate review regarding
the Examiner’s claim interpretation, we must be able to ascertain the basis
for it. See Gechterv. Davidson 116 F.3d 1454, 1460 (Fed. Cir. 1997)
(“Claim construction must also be explicit, at least as to any construction
disputed by parties to the interference (or an applicant or patentee in an ex
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Appeal 2016-002683
Application 12/516,910
parte proceeding).”). Here, it is unclear why the Examiner deems it
reasonable to rely on Kohn’s “X” and “Y” dimensions as satisfying the
limitations referring to “panel depth (H2)” and “unit depth (HI),”
respectively. It is not clear whether these claim terms are defined in, or have
a particular meaning otherwise implied by, the Specification, or if they are
terms of art carrying specific meanings. The Examiner provides no further
explanation regarding this issue. Ans. 7—8.
[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall
be entitled to a patent unless,’ concerning novelty and
unobviousness, clearly places a burden of proof on the Patent
Office which requires it to produce the factual basis for its
rejection of an application under sections 102 and 103.
In re Warner, 379 F.2d 1011, 1016 (CCPA 1967) (citation omitted). The
Patent Trial and Appeal Board is primarily a tribunal of review. See Ex
Parte Frye, 94 USPQ2d 1072, 1075-1077 (BPAI 2010) (precedential). It is
neither our place, nor Appellants’ burden, to speculate as to the basis for
rejecting claims. In re Stepan, 660 F. 3d 1341, 1345 (Fed. Cir. 2011)
(referring to the PTO’s obligation to provide timely notice to the applicant of
all matters of fact and law asserted) As this shortcoming undermines each of
the Examiner’s rejections, we do not sustain the Examiner’s rejections on
the grounds set forth by the Examiner.
DECISION
The Examiner’s rejections are reversed.
REVERSED
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