Ex Parte Ozanne et al

Patent Trial and Appeal Board

Jan 29, 2016

13120581 (P.T.A.B. Jan. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/120,581 04/19/2011
29157 7590
K&L Gates LLP-Chicago
P.O. Box 1135
CHICAGO, IL 60690
02/02/2016
FIRST NAMED INVENTOR
Matthieu Ozanne
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.
3712036-1256 1271
EXAMINER
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
02/02/2016 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIEU OZANNE and GILLES GERBER
Appeal2014-003073
Application 13/120,581
Technology Center 1700
Before BEYERL YA. FRANKLIN, MICHAEL P. COLAIANNI, and
JULIA HEANEY, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 the rejection of claims 1-
11. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
Appellants' invention is directed to a process of making aluminum
containers such as aluminum capsules (Spec. 1: 4-5; Claims 1, 5). The
aluminum containers formed by the process have a curled edge 2 formed by
1 Appellants identify the real party in interest as Nestec S.A. App. Br. 2.
Appeal2014-003073
Application 13/120,581
rolling the edges of the cut aluminum so that the color of the inner layer
aluminum is visible on the exterior of the capsule (Fig. 2, Spec. 1 :24--26).
Claim 1 is illustrative:
1. Process for producing an aluminium container comprising the steps of:
cutting an aluminium foil to produce a piece of aluminium
corresponding to the dimensions of the container;
deep drawing the piece of aluminium to form a container body and
rolling the edges of the container body on the exterior face of the deep
drawn container in order to form a curled edge; and
each of the faces of the starting aluminium foil presents a color
treatment of different color than the other face, and the curled edge has a
different color relative to the natural color of the aluminum foil and the color
of the exterior face.
Appellants appeal the following rejections:
1. Claims 1 and 4--11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fond (CA 2046558, published Jan. 28, 1992) in
view ofKollep (EP 1849715 Al; published Oct 31; 2007); Conner
(US 2,076,549, issued Apr. 13, 1937), Bindschedler (US 3,203,570,
issued Aug. 31, 1965), Desai (US 4,847,459, issued July 11, 1989),
Schifferle (US 2005/0150390 Al, issued July 14, 2005), Roske (US
4,326,350, issued Apr. 27, 1982), and Graetz (DE 3150492 Al,
published June 30, 1983).
2. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Fond in view of Kollep, Conner, Bindschedler, Desai, Schifferle,
Roske, Graetz, and Taneja et al. (US 2003/0168376, issued Sept. 11,
2003).
2
Appeal2014-003073
Application 13/120,581
3. Claims l and 4--11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kollep in view of Conner, Bindschedler, Desai,
Schifferle, Roske, and Graetz.
4. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kollep in view of Conner, Bindschedler, Desai, Schifferle,
Roske, Graetz and Taneja.
With regard to rejections (1) to (4), Appellants' arguments focus on
claims 1, 2, and 5 (App. Br. 6-14). Because Appellants rely on the same
arguments with respect to each of the claims, we select claim 1 as
representative. Claims 2-11 will stand or fall with our analysis regarding
the rejection of claim 1.
FINDINGS OF FACT AND ANALYSES
Regarding rejections (1) and (3), the Examiner's findings and
conclusions are located on pages 3-8 and 11-12 of the Answer. The
Examiner concludes based upon the combined teachings of Fond, Kollep,
Conner, Bindschedler, Desai, Schifferle, Roske and Graetz that it would
have been obvious to form Fond's and Kollep's deep drawn aluminum
containers using aluminum stock that is differently colored on each side as
taught by Roske, Graetz or Schifferle (Ans. 7, 11). The Examiner concludes
that using the two-colored aluminum foil in Fond's or Kollep's process of
making aluminum containers would have resulted in the foil color forming
the inner portion of the container being exposed on the rolled-rim portion of
the container as taught by Bindschedler. (Ans. 7, 12). The Examiner further
concludes that using the exposed color to indicate the contents of the
3
Appeal2014-003073
Application 13/120,581
container would have been obvious in view of Conner's teaching that
applying a colored rib around the circumference of a container may be used
to indicate the characteristics of the contents of the container. Id.
Appellants argue that the combined teachings of the applied prior art
do not teach or suggest rolling the edges of the container body on the
exterior face of the deep drawn container in order to form a curled edge, that
each of the faces of the starting aluminum foil presents a color treatment of
different color than the other face, and that the curled edge has a different
color relative to the natural color of the aluminum foil and the color of the
exterior face as required by independent claim 1 (App. Br. 7, 13).
Appellants argue that Conner requires an air space 3 between two members
1 and 5, which is not required by the presently claimed invention which uses
a bi-colored aluminum foil to form the container with no airspace between
the differently colored faces of the aluminum foil (App. Br. 7-8).
Appellants contend that once Conner's container is filled and closed by a
threaded cap 5, the different colors would not be visible (App. Br. 8, 12).
Appellants argue that Desai is directed to a microwave safe container that is
not aluminum, and does not present different colors when the container is
filled and closed by a lid (App. Br. 8). Appellants contend that Roske,
Schifferle and Graetz fail to teach rolling a bi-colored aluminum container
body (App. Br. 8).
Appellants' arguments attack the references individually instead of
addressing what the combined teachings would have suggested to the
ordinarily skilled artisan. In re Keller, 642 F.2d 413, 425 (CCPA 1981). In
the present case, the Examiner finds that Kollep and Fond teach the general
deep draw aluminum container forming method including the rolling of the
4
Appeal2014-003073
Application 13/120,581
aluminum material edges to form a rim (Ans. 3, 11). The Examiner finds
that Bindschedler teaches a process of forming an aluminum top that
includes rolling the sides of the top to expose a differently colored side of
the aluminum material (Ans. 4, 12). The Examiner finds that Conner
teaches that it is known to provide a circumferential colored rib on the
outside of a container and to associate the color of the rib with the
characteristics of the contents in the container (Ans. 4, 11-12). The
Examiner finds that Roske, Schifferle, and Graetz teach that it is known to
provide aluminum foil with different colors on either side of the foil (Ans. 6,
12). Based upon all of these teachings, we agree with the Examiner's
conclusion that it would have been obvious to use the bi-colored aluminum
material in Kollep's or Fond's process to form the aluminum deep-drawn
containers (Ans. 7, 11-12). In so doing, the color of the aluminum foil
surface forming the inside of the container would be exposed upon rolling
the edges of the aluminum as taught by Bindschedler. Conner would have
suggested associating the color of the rim with the characteristics of the
container's contents (Ans. 6-7, 11).
Appellants' argument regarding Conner appears to require bodily
incorporation of Conner's jar structure into Fond's or Kollep's process. The
Examiner, however, relies on Conner merely for the teaching that it was
known to provide a container with a circumferential colored band that
indicates the characteristics of the container's contents (Ans. 4, 11).
Appellants argue that Bindschedler' s disclosure that "it is also
sometimes desirable that no portion of the inner surface should be visible as,
for example, when the color of the inner surface of the cap is not the same as
that of its outer surface" constitutes a teaching away from the claimed
5
Appeal2014-003073
Application 13/120,581
invention which requires that the color of the inner surface of the container
be exposed along the rim (App. Br. 8, 12; Reply Br. 3; Bindschedler, col. 2,
11. 61---65).
Contrary to Appellants' argument regarding Bindschedler, we find
that the nature of Bindschedler' s disclosure does not constitute a teaching
away. Rather, Bindschedler discloses at column 2, lines 61 to 65 that it may
be desirable when the color of the inner surface is different from the outer
surface to not have the color of the inner surface be visible. A desire or
preference of a particular user does not discourage or otherwise lead the
ordinarily skilled artisan in a direction divergent from the path used by
Appellants. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Rather, the
ordinarily skilled artisan would have used the differently colored band to
indicate a characteristic of the container's content as taught by Conner.
Appellants argue that the combination of the prior art relied upon by
the Examiner is based upon impermissible hindsight (App. Br. 9, 13).
Appellants contend that there is no evidence that the skilled artisan would
have been motivated to achieve the alleged benefit taught by Conner by
rolling the edges of the container body on the exterior face of the deep
drawn container in order to form a curled edge (App. Br. 10, 14).
Appellants' arguments are not persuasive. We find that the
Examiner's rejection is not based upon impermissible hindsight, but rather
what the combined teachings of the references as a whole would have
suggested to the ordinarily skilled artisan as explained supra. Conner
teaches placing a circumferentially extending colored rib to indicate a
characteristic of the contents of the container (Conner, 1:5-11; 3:49-57).
Appellants' argument regarding Conner's air space 3 between members 1
6
Appeal2014-003073
Application 13/120,581
and 2 does not address the Examiner's relied upon teaching regarding the
exteriorly facing rib 8.
On this record, we affirm the Examiner's § 103 rejections.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
ORDER
AFFIRMED
lp
7