Ex Parte Rohr et al

Board of Patent Appeals and Interferences

Jul 31, 2008

10652770 (B.P.A.I. Jul. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAINER ROHR, NATHALIE VERRAC,
and MICHEL THIBAUT
____________

Appeal 2008-0188
Application 10/652,770
Technology Center 3700
____________

Decided: July 31, 2008
____________

Before TERRY J. OWENS, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
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A hearing was held on June 12, 2008, in which oral arguments were
heard.

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants claim a manipulable tab used for opening a container that
contains a promotional or decorative image. (Specification 2: 7-8.)
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A can, comprising:
a can body comprising a side wall and a
base and defining an interior region for containing
a product;
an end for said can body having a scored
portion for defining an opening in said end, the end
having an upper surface; and
a manually manipulable tab secured to said
end and having a first portion where the tab is
attached to the end and a free distal second portion
and first and second opposite sides, wherein said
tab further comprises a tab surface extending
across said tab between said first and second sides,
said tab surface in said free distal second portion
having a promotional or decorative image formed
therein,
said promotional or decorative image
formed as a combination of a void formed in the
free distal second portion of the tab surface and
adjacent laser etching of one or more features on
said tab surface adjacent to said void, wherein the
void exposes the upper surface of the end, wherein
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the exposed upper surface of the end contributes to
the promotional image.

THE REJECTIONS
The Examiner has made of record the following patents:
Pavely US 5,359,766 B1 Nov. 1, 1994
Schubert US 5,741,105 Apr. 21, 1998
Webb GB 2,320,008 A Jun. 10, 1998
Turner US 5,967,726 Oct. 19, 1999
Stasiuk US 6,105,806 Aug. 22, 2000
Forrest US 6,161,717 Dec. 19, 2000
Thibaut US 6,951,293 B2 Oct. 4, 2005

The following rejections are before us for review.
1. Claims 1-14 and 17-20 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Stasiuk.

2. Claims 1-20 stand rejected under 35 U.S.C. § 35 U.S.C. § 103(a) as
being obvious over Webb in view of Stasiuk.

ISSUE
The anticipation issue before us is whether Appellants have shown
that the Examiner erred in rejecting claims 1-14 and 17-20 under 35 U.S.C.
§ 102(b) as anticipated by Stasiuk. This anticipation issue turns on whether
Stasiuk expressly or inherently discloses a promotional or decorative image
formed as a combination of a void formed in the free distal second portion of
a tab surface and adjacent laser etching of one or more features on the tab
surface adjacent to the void, wherein the void exposes the upper surface of
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the end, wherein the exposed upper surface of the end contributes to the
promotional image.
The second issue before us is whether Appellants have sustained their
burden of showing that the Examiner erred in rejecting the claims 1-20 on
appeal as being unpatentable under 35 U.S.C. § 103(a) over Webb in view of
Stasiuk.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Stasiuk discloses “[a] decorative tab according to the present
invention may have at least one finger aperture associated therewith ….”
(Stasiuk, col. 2, ll. 46-48.)

2. Although Stasiuk discloses that “[t]here is no need to have an
aperture in the tab” (Stasiuk, col. 5, ll. 40-41) this sentence is part of a larger
paragraph which also states:
However, the symbolic shape could also be
achieved in an embodiment wherein the pull tab is
not a continuously solid plate, has apertures, is not
a planar member and is not a substantially flat
sheet. The tab is preferably shaped to be
recognized as a picture, trademark, icon, character,
or other symbolic item.
(Stasiuk, col. 5, ll. 46-49.)

3. Stasiuk discloses:

A preferred apparatus for use in a tab
decorating area is an optical device, preferably a
laser, capable of generating a substantially
permanent tab decoration on a tab or tab making
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materials. For example, in making decorative or
decorative-symbolic tabs for an aluminum
container, anodized aluminum or aluminum coated
with an organic coating may be used. Preferably,
aluminum having an organic coating on at least
one side is used. A plurality of coatings may also
be used if a tab having multiple colors is desired.
The anodized or coated aluminum is then treated
with a laser that burns or etches a predetermined
tab decoration into the tab or tab material such that
aluminum shows through the coating or anodized
layer. The laser may also be set such that a texture
is provided. If multiple coatings are used, the laser
may be set such that a portion of the top layer of
coating is etched to a desired depth (preferably a
depth exposing the second layer or bare aluminum)
and the second layer is also etched to a desire
depth exposing a successive layer or bare
aluminum, etc . . . . Accordingly, one of ordinary
skill in the art will appreciate that numerous
modifications to the coatings and laser settings
may be done to effect speed of production, clarity
of the tab decorations, depth of the etch, and
desired pattern colors. Presently preferred lasers
are high powered lasers or lasers with precision
marking capability, such as a 200 watt NDYAG
(Neoderium Yttrium Aluminum Garnet) laser or a
CO.sub.2 laser. The CO2 laser may be 600
watts.
(Stasiuk, col. 8, l. 58 - col. 9, l. 17.)

4. Stasiuk discloses in Figure 3A a tab 40 disposed immediately above
the upper surface 21 of the container top 20 such that any void formed
adjacent the end marked by lead line 43 (FF 1) would reveal the underlying
surface disposed below it. (Stasiuk, Figure 3A.)
5. The Examiner found that a “…plurality of colors are disclosed in
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col. 2 line 52 through col. 3 line 2 of Stasiuk. The three dimensional feature
is the overall shape of the tab which may be designed to correspond with the
logo (page 3 lines 12-13).” (Final Rej. 3.)
PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
A disclosure that anticipates under 35 U.S.C. § 102 also renders the
claim unpatentable under 35 USC § 103, for anticipation is the epitome of
obviousness. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); and In
re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).
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ANALYSIS
The rejections are affirmed as to claims 1-20.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Brief and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments which Appellants could have made but chose not to
make in the Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Appellants’ arguments against each of the rejections of independent
claims 1, 8, and 17 are based on perceived deficiencies of Stasiuk.
Inasmuch as Appellants raise the same issues with respect to each of these
claims, we discuss these claims together, addressing each of Appellants’
arguments in turn.
The rejections are affirmed as to claims 1, 8, and 17. Appellants do
not provide a substantive argument as to the separate patentability of claims
2-7, 9-14 and 18-20 that depend from claims 1, 8, and 17 respectively.
Claims 2-7, 9-14 and 18-20 thus fall with claims 1, 8, and 17. See,
37 C.F.R. § 41.37(c)(1)(vii) (2007).

Anticipation rejection of claim 1-20 based on Stasiuk
Appellants argue:
[t]he key difference is that Stasiuk does not
anticipate claim 1 or dependent claims therefrom
because it does not describe a promotional end in
which three structural elements combine to form
the promotional image:
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(1) a void formed in a free distal portion of a tab
secured to the can end;
(2) adjacent laser etching of one or more features
on the tab surface adjacent to the void (e.g.,
etching of a colored tab to reveal a base color of
the tab stock), and
(3) the upper surface of the end that is revealed via
the void formed in the free distal portion of the
end.

(Appeal Br. 9.) However, we cannot accept Appellants’ contention that
Stasiuk fails to disclose items 1, 2, and 3 supra because contrary to the
above assertions Stasiuk does disclose: 1. that the tab can be formed as a
decorative tab having at least one finger aperture associated therewith
(FF 1); 2. that an apparatus for use in a tab decorating area is an optical
device, preferably a laser, capable of generating a substantially permanent
tab decoration on a tab or tab making materials (FF 2); 3 Stasiuk discloses in
Figure 3A a tab 40 disposed immediately above the upper surface 21 of the
container top 20 such that any void formed adjacent the end marked by lead
line 43 (FF 1) would reveal the underlying surface disposed below it (FF 3).
Thus, each of the three points enumerated above by Appellants as not being
disclosed by Stasiuk are in fact part of the Stasiuk disclosure.
Appellants further argue that “None of the embodiments [in Stasiuk]
meet the requirements of Claim 1. Figures 1 and 2 show a decorative tab
formed as a pineapple. In this embodiment, Stasiuk mentions that there is no
need to have an aperture in the tab. Col. 5 lines 40-41.” (Appeal Br. 9.)
However, continued reading of the paragraph in which this passage is found
does show that Stasiuk states “…the symbolic shape could also be achieved
in an embodiment wherein the pull tab is not a continuously solid plate, has
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apertures, is not a planar member and is not a substantially flat sheet. The
tab is preferably shaped to be recognized as a picture, trademark, icon,
character, or other symbolic item.” (FF 2.) Thus, although Stasiuk states
that there is no need to have an apertured tab, it nevertheless still discloses
the option of the pull tab having an aperture in it, and we choose to read this
option as disclosing a decorative tab with a void as required by the claims.
Appellants next argue that “[t]he Examiner cites to four passages in
Stasiuk for teaching voids, but applicants submit that they do not teach a
void as contributing to a promotional image.” (Appeal Br. 10.) We are
unconvinced by this argument because Appellants are attempting to define
patentability by distinguishing a promotional or decorative image from one
which is not, which is a matter of marketing and perception based on the
mind of the consumer. We find that the image of a pineapple shown in
Figures 1 and 2 of Stasiuk may have a void formed in it (FF 1). Thus, the
only issue remaining is whether the image of a pineapple with a void in it is
a promotional image. Since any image may serve as a promotional image
when appropriate marketing is used to support the promotion, or be seen by
a viewer as decorative in the eye of the beholder, we find that pineapple tab
in Stasiuk with a void in it is at least a decorative image and could serve as a
promotional image if so marketed. We therefore sustain the rejection of
claims 1-4 and 17-20 under 35 U.S.C. § 102(b) based on Stasiuk.
Rejection under 35 U.S.C. § 103(a) of Webb in view of Stasiuk
Appellants’ arguments directed to the shortcomings of Webb are not
well taken because as found supra, Stasiuk disclose each and every
limitation of independent claims 1, 8, and 17. Thus, Appellants are
attacking the references individually when the rejection is based on a
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combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Young, 403 F.2d 754, 757-58 (CCPA 1968). Accordingly, we
find that claims 1-14 and 17-20 are also obvious over Stasiuk for the reasons
set forth supra. A disclosure that anticipates under 35 U.S.C. § 102 also
renders the claim unpatentable under 35 U.S.C. § 103, for anticipation is the
epitome of obviousness. See Pearson, 494 F.2d at 1402; and Fracalossi,
681 F.2d at 794.
With that said, in balance are claims 15 and 16 which were only
rejected under 35 U.S.C. § 103(a) and which recite “a three-dimensional
decorative feature in combination with said void and said etched feature.”
The Examiner maintains that in Stasiuk “[t]he three dimensional feature is
the overall shape of the tab which may be designed to correspond with the
logo” (FF 5). It is not apparent, and Appellants have not challenged this
finding why the tab could not be considered the three dimension feature in
Stasiuk. Accordingly, Appellants have failed to show that the Examiner
erred in rejecting the claims 15 and 16.

CONCLUSIONS OF LAW
We conclude:
1. We affirm the rejection of claims 1-14 and 17-20 under 35 U.S.C.
§ 102 (b) as being anticipated by Stasiuk.
2. We affirm the rejection of claims 1-20 under 35 U.S.C.
§ 103(a) as being obvious over Webb in view of Stasiuk.

DECISION
The decision of the Examiner to reject claims 1-20 is AFFIRMED.
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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)(1)(iv) (2007).

AFFIRMED

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