Ex Parte Scheifele

Board of Patent Appeals and Interferences

Dec 17, 2009

10486064 (B.P.A.I. Dec. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FREDY SCHEIFELE
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Appeal 2009-009571
Application 10/486,064
Technology Center 3700
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Decided: December 18, 2009
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Before: JENNIFER D. BAHR, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant appeals under 35 U.S.C. § 134 (2002) from the 1
Examiner’s decision finally rejecting claims 7-10 and 12 under 35 U.S.C. 2
§ 103(a) as being unpatentable over Hirt (US 5,656,346, issued Aug. 12, 3
1997) and Hubert (US 4,492,548, issued Jan. 8, 1985). We have jurisdiction 4
under 35 U.S.C § 6(b) (2002). 5
Appeal 2009-009571
Application 10/486,064

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We REVERSE. 1
The claims on appeal relate to the production of tubular packaging 2
containers for containing goods such as pharmaceuticals, cosmetics and 3
personal care preparations. (Spec. 1, ll. 3-10; see also id. 1, l. 22 – 2, l. 5). 4
Claim 7 is the sole independent claim on appeal: 5
7. A method of producing a packaging 6
container comprising a tube body having an 7
interior, a tube head arranged on the tube body, the 8
tube head includes a shoulder part and a neck 9
which define an opening, the shoulder part 10
includes a surface which faces the interior of the 11
tube body, and a preformed internal annular 12
element arranged on the surface of the shoulder 13
part, the method comprises: 14
pre-forming the internal annular element on 15
the surface of the shoulder part, wherein the pre-16
forming is to a pre-forming degree of between 17
20% and 95%. 18
The Appellant contends that neither Hirt nor Hubert discloses the step 19
of pre-forming an internal annular element on the surface of a shoulder part 20
to a pre-forming degree of between 20% and 95%. The Examiner agrees 21
that Hirt does not disclose this step. (Ans. 4). On the other hand, the 22
Examiner finds that “Hubert discloses a similar tube with an internal annular 23
element (A) that is preformed on the shoulder part of the tube head (B) as 24
seen in the progression through Figures 7-10 of Hubert.” (Ans. 6). The 25
Examiner articulates no reasoning independent of this finding which might 26
explain why a method of producing a packaging container including the step 27
of pre-forming an internal annular element on the surface of a shoulder part 28
to a pre-forming degree of between 20% and 95% would have been obvious. 29
Therefore, the determinative issue in this appeal is: 30
Appeal 2009-009571
Application 10/486,064

3
Has the Appellant shown that the Examiner erred in 1
finding that Hubert discloses the step of pre-forming an internal 2
annular element on the surface of a shoulder part to a pre-3
forming degree of between 20% and 95%? 4
5
The Examiner and the Appellant disagree as to the proper 6
interpretation of the term “pre-forming degree” as that term is used in claim 7
7. In the absence of an express definition of a claim term in the 8
specification or a clear disclaimer of scope, the claim term is interpreted as 9
broadly as the ordinary usage of the term by one of ordinary skill in the art 10
would permit. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 11
(Fed. Cir. 2007); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Here, 12
however, the Appellant contends that the Specification does provide a 13
formal definition of the term “pre-forming degree.” (See Br. 8). 14
The Specification discloses fabricating a tube head 11 using a multi-15
component die including a female mold 29 and a male mold or press 16
mandrel 28 to injection mold or press mold the tube head 11. The internal 17
annular element 18 is prefabricated and placed on the mandrel 28 before the 18
neck 16 and the shoulder 15 are molded. During the injection molding or 19
press molding process, the internal annular element 18 is joined to the 20
shoulder 15. (Spec. 11, ll. 3-11). 21
The Specification states that: 22
According to the method in accordance with 23
the invention, the internal annular elements 18 are 24
to be pre-formed in order to avoid joining defects, 25
i.e. folding and/or waving of the internal annular 26
element 18, when it is pressed against or jointed to 27
the internal surface of the shoulder 15. In its 28
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simple form as illustrated by Figure 3a, the internal 1
annular element 18 is a round disk with a central 2
round cut-out 27, which is provided to permit the 3
passage of the part 30 of the mandrel 28 that forms 4
the discharge channel, and a circular fringe part 31 5
that surrounds the cut-out 27 and lies in a plane 6
that is perpendicular to the centre line of the cut-7
out 27, i.e. the angle “a” that the plane and the 8
centre line constitute with respect to each other 9
amounts to 90°, i.e. a right angle, when the annular 10
element 18 is still in its non pre-formed condition. 11
Bearing this in mind, … the term “pre-formed” 12
has the meaning of any deviation of the angular 13
position between said plane and centre line from 14
the original right angle. Hereinbelow the pre-15
forming will be expressed in parts per hundred, i.e. 16
as a pre-forming degree percentage (%). A pre-17
forming degree of zero % means that said plane 18
and centre line form a right angle with respect to 19
each other. 20
(Spec. 11, l. 24 – 12, l. 20 (ellipsis in original; emphasis added)). The 21
Specification goes on to state that a “pre-forming degree of 100% will be 22
constituted when the angle ‘a’ between the plane 31 and the vertical centre 23
line of the cut-out 27 of the annular element 18 corresponds to the angle ‘b’ 24
(angle of the tube shoulder) between the centre line of the discharge-25
channel-forming part 30 and the surface 32 of the mandrel 28, i.e. when the 26
pre-formed circular fringe part 31 lies on the surface 32 of the mandrel 27
(28).” (Id. 13, ll. 2-10). 28
The Appellant’s contention that these passages formally define the 29
term “pre-forming degree” is correct. 30
Hubert describes a method for manufacturing collapsible tubes 20 31
including collapsible cylindrical sidewall portions 22 and plastic headpiece 32
Appeal 2009-009571
Application 10/486,064

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portions 24. (Hubert, col. 4, ll. 45-50). Hubert describes the headpiece 1
portion 24 as a unitary structure consisting of an outer plastic portion 24b 2
compatible with bonding to a plastic ply of the sidewall portion 22 and an 3
inner plastic portion 24a providing protection for the product container in 4
the tube 20. (Hubert, col. 5, ll. 31-35). Hubert teaches that the structure of 5
the headpiece portion 24 alleviates the necessity to insert a barrier member 6
into the headpiece portion. (Hubert, col. 5, ll. 35-37). 7
Hubert’s method includes coextruding the plastic materials for the 8
inner and outer plastic portions through a nozzle 27. (Hubert, col. 5, 38-41). 9
A wiper 32 wipes the nozzle 27 of the extruder. (Hubert, col. 5, ll. 57-60). 10
The wiper 32 drops a pair of plastic annuli 28a, 28b onto a lower mold piece 11
34. (Hubert, col. 5, ll. 63-67). Hubert describes bringing the lower mold 12
piece 34 into engagement with an upper mold piece 34 to define a cavity in 13
which the headpiece portion 24 is formed by transfer molding. (Hubert, col. 14
6, ll. 35-39). The lower mold piece 34 positions the tube sidewall portion 22 15
so that the plastic annulus 28b, corresponding to the outer plastic portion 24b 16
of the headpiece portion 24, bonds to the sidewall portion 22 as the 17
headpiece portion 24 is molded. (Hubert, col. 6, ll. 14-21). 18
The Examiner reasons that: 19
Hubert does not disclose the degree of preforming 20
as measured by the methodology of the instant 21
application; however, the angular position of the 22
internal annular element with respect to the 23
centerline varies from 90 degrees, initially, as 24
defined by the methodology of the application, to 25
some angle representing the final configuration of 26
the internal annular element. The amount of 27
preforming must, therefore go from 0% to 100% as 28
the process is completed. The amount of 29
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preforming in each step, as measured by the 1
methodology of the instant application, would be 2
dependent on the point of measurement on the 3
internal annular element, however, the preforming 4
of the internal annular element of Hubert would 5
place some portion in the ranges specified in the 6
instant application. 7
(Ans. 6). 8
In Hubert’s process, the two plastic annuli 28a, 28b drop onto a lower 9
mold piece or mandrel 34. The lower mold piece 34 engages with an upper 10
mold piece 36 to define a cavity in which the headpiece portion 24 is formed 11
by transfer molding. The plastic annulus 28a is formed into the inner plastic 12
portion 24a in one step. The inner plastic portion 24a formed by that step 13
has a shape conforming to the shape of the lower mold piece or mandrel 34. 14
In other words, the inner plastic portion 24a is formed in one step with a 15
100% pre-forming degree. Hubert’s inner plastic portion 24a is never pre-16
formed to a pre-forming degree of less than 100%, much less to a pre-17
forming degree between 20% and 95% or between 40% and 60%. 18
The Appellant has shown that the Examiner erred in finding that 19
Hubert discloses the step of pre-forming an internal annular element on the 20
surface of a shoulder part to a pre-forming degree of between 20% and 95%. 21
Since neither Hirt nor Hubert discloses this step of claim 7, the Appellant 22
has shown that the Examiner erred in rejecting independent claim 7 and its 23
dependent claims 8-10 and 12 under § 103(a) as being unpatentable over 24
Hirt and Hubert. 25
Appeal 2009-009571
Application 10/486,064

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DECISION 1
We REVERSE the decision of the Examiner to reject claims 7-10 and 2
12. 3
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REVERSED 5
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mls 20
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BACHMAN & LAPOINTE, P.C. 22
900 CHAPEL STREET 23
SUITE 1201 24
NEW HAVEN, CT 06510 25