Ex Parte Paredes

Patent Trial and Appeal Board

May 31, 2018

13606996 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/606,996 09/07/2012
27081 7590 06/01/2018
OWENS-ILLINOIS, INC.
ONE MICHAEL OWENS WAY
Plaza One - Legal Department
PERRYSBURG, OH 43551-2999
FIRST NAMED INVENTOR
Raul M. Paredes
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.
19199 us 7417
EXAMINER
ANDERSON, DON M
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
06/01/2018 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 RAUL M. PAREDES
Appeal2017-003319
Application 13/606,996
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Raul M. Paredes (Appellant) 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision (entered Aug. 31, 2015, hereinafter "Final Act.")
rejecting claims 1, 5, 10-13, 17, 21, 22, and 24--33. 2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM IN PART.
1 Appellant asserts the real party in interest is Owens-Brockway Glass
Container, Incorporated. Appeal Br. 3 (filed Apr. 20, 2016).
2 Claims 2--4, 6-9, 14--16, 18-20, and 23 have been canceled. Appeal Br. 3.
Appeal2017-003319
Application 13/606,996
INVENTION
Appellant's invention relates "to containers and, more particularly, to
a container with a label." Spec. 1.
Claims 1, 5, 13, 25, and 28 are independent. Claim 1 is illustrative of
the claimed subject matter and reads as follows:
1. A wide mouth food jar that includes:
a base defining a flat primary support surface on which
the food jar is restable, and having a concave push-up,
a body extending from said base, and
a finish extending from said body coaxially with said
base around a base/finish axis and having a plurality of closure
engagement features,
said body having a sidewall having a plurality of facets
including a plurality of secondary support surfaces
circumferentially spaced apart around said axis with
circumferential spaces therebetween and oriented at an obtuse
angle to said primary support surface and at an acute angle to
said axis, a frusto-conical surface of revolution around said axis
between said secondary support surfaces and said finish, and a
radial apex between said secondary support surfaces and said
surface of revolution, wherein said sidewall is frusto-conical
from said radial apex to said finish, and also from said radial
apex to said base with an acute conical top angle, and at least
one of said secondary support surfaces includes a surface-
defining periphery with an edge lying in a plane at an acute
angle to said axis onto which the food jar is restable and a
concave surface portion within said periphery,
wherein the food jar is constructed such that when the
secondary support surfaces of the food jar rest flat against a
surface, a lowermost portion of the finish is lower than an
uppermost portion of the base.
Examples of the shapes and features of the claimed subject matter are
illustrated in Figures 1 and 2 of the Specification, reproduced below:
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Application 13/606,996
The above Figures 1 and 2 represent an embodiment of a container that
illustrates examples of the shapes and configurations that the Specification
describes for the inventive container: Figure 1 shows the container resting on
a primary support surface and Figure 2 shows the container resting on a
secondary support surface. Spec. 2.
REJECTI0NS 3
The following rejections are before us for review:
I. The Examiner rejected claims 1 and 32 under 35 U.S.C.
§ 103(a) as unpatentable over Theine (US 1,659,383, iss. Feb.
14, 1928), Funke (US 4,119,244, iss. Oct. 10, 1978), Clark (US
3 The Examiner's rejection of claims 28-31 under 35 U.S.C. § 112, second
paragraph, has been withdrawn. Adv. Act. 2 (entered Oct. 7, 2015).
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Application 13/606,996
279,915, iss. June 26, 1883), and Lambert (US 2,596,034, iss.
May 6, 1952).
II. The Examiner rejected claims 5 and 11 under 35 U.S.C.
§ I03(a) as unpatentable over Theine and Lambert.
III. The Examiner rejected claim 10 under 35 U.S.C. § I03(a) as
unpatentable over Theine, Funke, Clark, Lambert, and Key (US
7,087,298 B2, iss. Aug. 8, 2006).
IV. The Examiner rejected claim 12 under 35 U.S.C. § I03(a) as
unpatentable over Theine, Lambert, and Herzog (US 5,740,914,
iss. Apr. 21, 1998).
V. The Examiner rejected claims 13, 21, 22, 26, 27, and 33 under
35 U.S.C. § I03(a) as unpatentable over Theine, Funke, and
Clark.
VI. The Examiner rejected claim 17 under 35 U.S.C. § I03(a) as
unpatentable over Theine, Funke, Clark, and Key.
VII. The Examiner rejected claim 25 under 35 U.S.C. § I03(a) as
unpatentable over Theine, Carter (US 2,272,262, iss. Feb. 10,
1942), and Official Notice (placing graphics on labels would
have been well known).
VIII. The Examiner rejected claim 24 under 35 U.S.C. § I03(a) as
unpatentable over Theine, Carter, Official Notice, and Herzog.
IX. The Examiner rejected claims 28-31 under 35 U.S.C. § I03(a)
as unpatentable over Gruber (US 7,017,773 B2, iss. Mar. 28,
2006) and Tuominen (US 2010/0155281 Al, pub. June 24,
2010).
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Application 13/606,996
ANALYSIS
Rejection I- Obviousness of Claims 1 and 32
For the wide mouth food jar of claim 1, the Examiner finds the
combination of Theine, Funke, Clark, and Lambert disclose each of the
recited limitations. Final Act. 3--4. Appellant disputes the Examiner's
finding that Theine discloses, "wherein said sidewall is frusto-conical ...
from said radial apex to said base with an acute conical top angle," as claim
1 recites. Appeal Br. 15-16.
The Examiner asserts, "[i]n the Non-Final Rejection dated 02/26/2013
the Examiner attached a hand written work showing that Theine' s disclosure
of alpha being 100 degrees allows for the other angles of the resulting
triangle to be found using simple geometry." Ans. 4. This "hand written
work" is reproduced below.
f-ol. i' (! + 1[f'..;;. /!i''() 0
=:) SI') (l -f, y f, '/(/'.cc, {f/'{)D
~-
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Application 13/606,996
The above "hand written work" is a reproduction of Figures 3 and 4 from
Theine with annotations added by the Examiner, as well as calculations
extrapolating a value for the base angle gamma. 4 See Non-Final Act. 3
(mailed Feb. 26, 2013); see also Theine Figs. 3, 4. According to the
Examiner, "the angle identified as gamma is shown to be 40 degrees and
thus acute. Angle gamma is located in the conical top and can thus be relied
up as an acute conical top angle." Ans. 4.
This finding implicitly interprets "wherein said sidewall is frusto-
conical ... from said radial apex to said base with an acute conical top
angle" to encompass any acute angle "located in the conical top," which is
an unreasonably broad interpretation. The plain and unambiguous claim
language specifically recites the "top angle," which is the angle formed
between the imaginary lines that extend inline with and from the sidewalls to
a common point (i.e., form the top of a cone). Appeal Br. 49 (Claims App.).
This angle is represented by alpha (a) in the Examiner's annotated figure
above. See Theine p. 1, 11. 34--36, Fig. 3. We do not find support for the
Examiner's expansive interpretation that any angle located in the conical top
is a "conical top angle," nor does the Examiner explain how either the
Specification and/ or claims support such a conclusion.
Theine expressly represents the conical top angle (a) of the disclosed
flask "must be at least 90°" to attain the advantages taught therein, which
cannot support a finding of an acute conical top angle. Theine p. 1, 11. 34--
36. As a result, a preponderance of the evidence fails to support the
Examiner's finding that Theine discloses a jar "wherein said sidewall is
4 The Greek symbol for gamma is "y," for theta is "8," and for alpha is "a."
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Application 13/606,996
frusto-conical ... from said radial apex to said base with an acute conical
top angle," as claim 1 recites. Neither Funke, Clark, nor Lambert are relied
upon to cure this deficiency with the Examiner's obviousness determination.
Final Act. 3--4; see also Ans. 4. Therefore, we do not sustain the Examiner's
rejection of claim 1, or claim 32 depending therefrom, which Appellant does
not argue separately. See Appeal Br. 14.
Rejection II - Obviousness of Claims 5 and 11
The obviousness determination of claim 5 relies on a combination of
Thiene and Lambert. Final Act. 5---6. The Examiner's finds
[ t ]he teachings of Thiene . . . disclose all of the claimed
limitations except that the finish has a plurality of closure
engagement features equal in number to said plurality of flat
secondary support surfaces and wherein the closure engagement
features are oriented in a predetermined circumferential
relationship with a plurality of the secondary support surface
such that a circumferential center of each closure engagement
feature is circumferentially aligned with a circumferential center
of a corresponding secondary support surface or a closure with a
skirt having a plurality of internal lugs equal in number to said
plurality of engagement features.
Id. at 5. Lambert teaches "a combustion jar used in laboratory experiments"
( col. 1, 11. 2-3), which the Examiner finds has "a plurality of closure
engagement features (21) and a closure ( 16) with a skirt having a plurality of
internal lugs (20) equal in number to said plurality of closure engagement
features" that enables the closure to form a tight seal with the jar. Id. at 5
( citing Lambert col. 2, 11. 35-55, Figs. 1---6). To create a tight seal that
protects the contents, the Examiner reasons it would have been obvious to
modify the container Thiene discloses with "a plurality of closure
engagement features and closure, as taught by Lambert." Id. at 6.
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Appellant argues, although Lambert discloses a plurality of closure
engagements features, there is still no evidence a skilled artisan knew to
orient the closure engagement features in a predetermined circumferential
relationship with a plurality of the secondary support surface such that a
circumferential center of each closure engagement feature is
circumferentially aligned with a circumferential center of a corresponding
secondary support surface, as claim 5 recites. Appeal Br. 25. Appellant
asserts the Examiner's obviousness determination is further deficient
because it offers no reason explaining why, absent hindsight, a skilled
artisan would have been led to this claimed orientation. Id. at 25-26.
In response, the Examiner criticizes Appellant's argument as
attempting to show nonobviousness by attacking the references individually
rather than addressing what the references show in combination. Ans. 7.
Because Lambert shows closure engagement features (21) on both the left
and right halves of the jar opening, which "substantially circumnavigate" the
opening, the Examiner adds, for the first time in the Answer, "[ w ]hen
combined with Thiene, the closure engagement on the left half would align
with the secondary support surface on the left side of the jar and closure
engagement features on the right half would align with the secondary
support surfaces on the right side of the jar." Id. ( citing Lambert Fig. 1 ).
Appellant replies by noting the Examiner wrongly suggests the
closure engagement features in Lambert "substantially circumnavigate" the
left and right halves of the opening because Figure 6 shows three sets of
engagements at 11 :30, 3 :30, and 7:30 clockwise. Reply Br. 6. Appellant
asserts, "such locations would not appear to result in a circumferential center
of each thread being circumferentially aligned with a circumferential center
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of Thiene' s flattening." Id. Moreover, Appellant reaffirms the Examiner's
rationale is premised on hindsight because there is no evidence of a reason
why a skilled artisan would have modified the orientation of the
circumferential center of the Lambert closure engagement features to align
with the circumferential center of the secondary support surfaces Theine
discloses. Id.
Appellant's arguments are persuasive. We first note the Examiner
failed to make any factual finding in the Final Action that either Theine or
Lambert disclose orienting the circumferential center of closure engagement
features with the circumferential center of secondary support surfaces, nor is
there an adequate explanation for why such an orientation would result from
the combination of these references. See Final Act. 5. Moreover, such an
orientation is not so readily apparent from the evidence cited, as the
Examiner implies. As such, the Examiner's criticism that Appellant's
arguments focus on the references individually lacks merit. Appellant
focused properly on the rejection, as it was articulated by the Examiner.
Nevertheless, in the Answer, the Examiner attempts to correct this
deficiency by concluding the claimed orientation necessarily exists when
Theine is modified to have the closure engagement features of Lambert
because these features "substantially circumnavigate" both the left and right
halves of the opening. Ans. 7 ( citing Fig. 1 ). Lambert, however, teaches
three sets of engagements generally oriented at 11:30, 3 :30, and 7:30
clockwise and, therefore, the factual predicate supporting the Examiner's
conclusion lack sufficient evidentiary support. Lambert col. 2, 11. 36-41,
Fig. 6.
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Application 13/606,996
Still further, even if evidence existed for the Examiner's finding that
Lambert's closure engagement features "substantially circumnavigate" both
the left and right halves of the opening, we do not find this fact alone
supports by a preponderance of the evidence the conclusion that the claimed
orientation would necessarily results from the combination of Theine and
Lambert. The Examiner fails to explain why the circumferential centers of
the engagement features and the secondary support surfaces would
necessarily align, nor is it readily apparent from these references themselves
that such an alignment is a necessary result of combining them. The
Examiner merely concludes this would be the result, which is insufficient.
Therefore, for the foregoing reasons, we do not sustain the Examiner's
rejection of claim 5, as well as claim 11 depending therefrom.
Rejections III-IV - Obviousness of Claims 10 and 12
Claim 10 depends from claim 1 and claim 12 depends from claim 5.
Appeal Br. 51 (Claims App.). The Examiner's rejection of claims 10 and 12
does not cure the deficiencies discussed above with their respective parent
claim (supra Rejections I and II). Therefore, we do not sustain the rejection
of claims 10 and 12.
Rejection V- Obviousness of Claims 13, 21, 22, 26, 27, and 33
Similar to claim 1, claim 13 recites, "wherein said sidewall is frusto-
conical from said radial apex to said base with an acute conical top angle."
Appeal Br. 52 (Claims App.). The Examiner finds Theine discloses this
limitation. Final Act. 7; Ans. 4. For the same reasons discussed above (see
supra Rejection I), however, Theine does not disclose, "wherein said
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sidewall is frusto-conical from said radial apex to said base with an acute
conical top angle." The Examiner's obviousness determination does not rely
on either Funke or Clark to cure this deficiency. Id. 7-8; see also Ans. 4.
Therefore, we do not sustain the Examiner's rejection of claim 13, or claims
21, 22, 26, 27, and 33 depending therefrom, which Appellant does not argue
separately. See Appeal Br. 27.
Rejection VI- Obviousness of Claim 17
Claim 17 depends from claim 13. Appeal Br. 53 (Claims App.). The
Examiner's rejection of claim 17 does not cure the deficiencies discussed
above with its parent claim (see supra Rejections I and V). Therefore, we
do not sustain the rejection of claim 17.
Rejection VII- Obviousness of Claim 25
The Examiner determines claim 25 would have been obvious in view
of Theine, Carter, and Official Notice (placing graphics on labels would
have been well known). Final Act. 10-11. Appellant questions whether the
Examiner's obviousness determination of claim 25 is appropriate because
the prior art allegedly fails to disclose,
a plurality of closure engagement features oriented in a
predetermined circumferential relationship with a plurality of the
secondary support surface so that so that the package can be
oriented on any one of its secondary support surfaces, wherein
an overall level orientation of the graphics on the base of the
closure are within plus or minus fifteen degrees of rotation with
respect to a horizontal surface on which the package is carried,
as claim 25 recites. Appeal Br. 37--43 (emphasis added). The Examiner
does not identify anything specific within the prior art disclosing this
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limitation, but concludes it "conveys little or no structural limitations"
because the term "graphics" broadly covers decorative patterns or simple
colors that have no particular orientation; thus, any orientation could be
considered level. Final Act. 11, 15. 5 Appellant argues this interpretation "is
unreasonably broad in light of Appellant's specification and drawings, [and]
it is unreasonably broad and incomplete in light of the claim language
itself." Appeal Br. 39 (citing Spec. 9, Figs. 11, 18, claim 25; Paredes Deel. ,r
24); see also id. at 41--42.
Appellant contends the term "graphics" describes "a type [ of graphic]
that do{esl have an overall level orientation on a base of a closure, e.g.,
readable graphics." Id. at 42. Because "the Examiner's asserted
hypothetical graphics do not have any particular orientation," Appellant
argues, "the Examiner ascribes an unreasonably broad definition." Reply
Br. 7. We disagree for the following reasons that the Examiner provides in
the Answer, which we adopt:
Appellant argues that the claim language (overall level
orientation of graphics on a base of a closure within plus or
minus fifteen degrees of rotation with respect to a horizontal
surface on which a package is carried) should be interpreted in
light of the first full paragraph of page 9 of the specification. The
Appellant further states that mere decorative patters cannot meet
the claimed subjected matter and should therefore be excluded
5 The Examiner states, "Even if text or a picture were used, there is no
inherent reason to consider one orientation level while another orientation
not level." Final Act. 11. This goes too far and the Examiner offers no
intrinsic record support showing such an interpretation is reasonable, nor do
we find support in this record. Nevertheless, because this error does not
undermine the reasonableness of interpreting "graphics" to include
decorative patterns or simple colors that have no particular orientation, the
error is harmless.
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from consideration. Although the claims are interpreted in light
of the specification, limitations from the specification are not
read into the claims. See In re Van Geuns, 988 F.2d 1181, 26
USPQ2d 1057 (Fed. Cir. 1993). The Appellant appears to be
trying to import a special definition of "graphics" into the claims
but there is no support found within the original disclosure to
support a special definition. Absent a special definition, the
Examiner must use the broadest reasonable interpretation when
applying prior art. The graphic could easily be a circle or some
other shape which would always have an overall level orientation
within plus or minus fifteen degrees of rotation with respect to a
horizontal surface on which a package on which a package is
carried.
Ans. 8.
Notably Mr. Paredes does not provide any evidence the term
"graphics" has a specialized meaning in the field of art that excludes
decorative patterns or simple colors that have no particular orientation, such
as a red, two-ring bullseye or explain why the intrinsic record evidences it is
used in such a limited way. See Paredes Deel. ,r 24. In addition, Figures 11,
18, and page 9 of the Specification use the term "graphic" consistent with its
ordinary meaning while describing an exemplary embodiment, which
includes text, but does not express any clear intentions to limit the meaning.
See Spec. 9, Figs. 11, 18. Lastly, although claim 25 recites a closure
engagement feature and secondary support surface configuration that creates
"an overall level orientation of graphics on a base of a closure within plus or
minus fifteen degrees of rotation with respect to a horizontal surface on
which a package is carried," this language limits only the relationship
between the closure engagement features and secondary support surfaces. It
does not define the scope of what is, or is not, a graphic.
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While we appreciate Appellant's argument that the prior art fails to
disclose a jar configuration that coordinates a closure engagement feature
with a secondary support surface to facilitate positioning an image with only
one overall level orientation to be generally parallel to the horizontal surface
on which the jar is set, the term "graphic" does not incorporate this
distinction. As a result, the argument is unpersuasive because it is not
commensurate with the scope of the claims. Therefore, we sustain the
Examiner's rejection of claim 25.
Rejection VIII- Obviousness of Claim 24
Claim 24 depends from claim 25. Appeal Br. 53 (Claims App.).
Appellant does not argue separately for the patentability of claim 25.
Moreover, Appellant has not apprised us of an error with the Examiner's
determination claim 24 would have been obvious in view of Theine, Carter,
Official Notice, and Herzog. Therefore, we sustain the rejection of claim 24.
Rejection IX - Obviousness of Claims 28-31
The Examiner determines claims 28-31 would have been obvious in
view of Gruber and Tuominen. Final Act. 12-14. Appellant contests the
Examiner's finding that Figures 1 and 2 of Gruber disclose, "a radial apex
between the secondary support surfaces and the shoulder, wherein the
sidewall is frusto-conical from the radial apex to the finish," which claim 28
recites. Appeal Br. 44--45. Having considered Figure 1 and 2 of Gruber, we
agree they do not evidence a structure with the recited limitation. Although
we appreciate that Gruber shows a sidewall that "flares out from the bottom
to the top," (see Ans. 10), nonetheless, Gruber's Figures 1 and 2 fail to show
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a sidewall that is "frusto-conical from a radial apex to the finish" and the
Examiner's contrary finding lacks support by a preponderance of the
evidence. In other words, because the Gruber container sidewall "flares out"
from the radial apex to the finish, as the Examiner finds, it cannot also be
found to have a "frusto-conical" shape, which requires the sidewall to
converge inward (i.e., the sidewall angles toward a common point forming a
cone (albeit a cone with the top portion removed)). Therefore, we do not
sustain the rejection of claim 28, or claims 29--31 depending therefrom.
DECISION
We affirm the rejections of claims 24 and 25.
We reverse the rejections of claims 1, 5, 10-13, 17, 21, 22, and 26-33.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED IN PART
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