Ex parte SCHUTZ

Board of Patent Appeals and Interferences

Sep 29, 1998

08348890 (B.P.A.I. Sep. 29, 1998)

Application for patent filed November 25, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte UDO SCHUTZ
_____________
Appeal No. 97-4168
Application 08/348,8901
______________
ON BRIEF
_______________
Before CALVERT, Administrative Patent Judge,
McCANDLISH, Senior Administrative Patent Judge, and
FRANKFORT, Administrative Patent Judge.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal to
allow claims 7 through 9 as amended subsequent to the final
rejection in a paper filed January 14, 1997 (Paper No. 12).
Claims 7 through 9 are all of the claims remaining in the
application, claims 1 through 6 having been canceled.
Appeal No. 97-4168
Application 08/348,890
As noted on page 5 of the examiner’s answer, the rejection of claims 72
through 9 based on Mineo, Smith and Hawkins found on pages 4 and 5 of the
final rejection (Paper No. 11) has been withdrawn by the examiner, and is
therefore not before us.
2
Appellant's invention is a sheet metal container specific-
ally designed for the transport and storage of corrosive liquids.
Independent claim 7 is representative of the subject matter on
appeal and a copy of that claim appears in the Appendix to
appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Mineo 4,316,318 Feb. 23, 1982
Hawkins et al. (Hawkins) 4,896,782 Jan. 30, 1990
Büdenbender (Büdenbender ‘576) 5,052,576 Oct. 01, 1991
Claims 7 and 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Büdenbender ‘576 in view of Hawkins.
Claim 9 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Büdenbender ‘576 in view of Hawkins as applied
to claim 7 above, and further in view of Mineo.2
Appeal No. 97-4168
Application 08/348,890
3
Rather than reiterate the examiner's full statement of the
above-noted rejections and the conflicting viewpoints advanced by
the examiner and appellant regarding those rejections, we make
reference to the examiner's answer (Paper No. 16, mailed June 10,
1997) for the examiner's reasoning in support of the rejections,
and to appellant's brief (Paper No. 15, filed April 18, 1997) for
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.
Turning first to the examiner's rejection of claims 7 and 8
under 35 U.S.C. § 103, we note that Büdenbender ‘576 discloses a
sheet metal container with a cap-type closure wherein the con-
tainer has a neck region (e.g., 22, 23 of Fig. 10) like that set
forth in appellant’s claim 7 on appeal. Figures 14-20 of
Appeal No. 97-4168
Application 08/348,890
4
Büdenbender ‘576 depict the types of caps that may be used with
the neck region/tube stub therein. As can be seen in Figures 14-
20, the caps of Büdenbender ‘576 are made of metal and therefore
differ from appellant’s claimed subject matter which recites a
plastic sealing cap with a disk-shaped metal insert disposed
therein. Hawkins discloses a closure (e.g., Figs. 7-9) designed
to provide a hermetic seal for food or medications containers.
The cap portion (56) of the closure is formed of plastic, while
an insert (54) therein is formed of metal. In the examiner’s
opinion (answer, page 4), it would have been obvious to one of
ordinary skill in the art
to modify the closure of Büdenbender in view of Hawkins
et al. to provide a metal insert in said cap to protect
the contents of the container and an annular projection
extending into the neck and an annular groove disposed
between an outer edge of the insert and said annular
projection with a resiliently deformable gasket in the
annular groove to provide a leakproof seal for the
container.
Even if we assume that the combination as posited by the
examiner is appropriate, a position strongly disputed by
appellant, we note that the container resulting therefrom would
not be that which is set forth in appellant’s claim 7 on appeal.
Appeal No. 97-4168
Application 08/348,890
5
As stated, the examiner’s combination would result in a metal cap
(as seen in Figures 14-20 of Büdenbender ‘576) with a metal
insert of the type seen in Hawkins. Appellant’s independent
claim 7 specifically requires “a plastic sealing cap in screw-
threaded engagement with the screw threads of the ring” (emphasis
added) and that the plastic sealing cap further have a disk-
shaped metal insert “for protecting said sealing cap against
corrosive liquid in said container.” Not only is there no
teaching in the applied references of appellant’s problem and
solution concerning corrosive liquids in the container contacting
a plastic sealing cap (specification, page 3), but we also fail
to see any teaching, suggestion or incentive in the applied
references for making the metal caps of Büdenbender ‘576 of a
plastic material in the first place and then attempting to
provide such plastic caps with a metal insert to preclude damage
by corrosive liquid carried in the container. Unlike the
examiner, it is our view that the recitations in appellant’s
claim 7 regarding 1) the transport and storage of corrosive
liquids and 2) the protection of the plastic cap of the container
by the disk-shaped metal insert against corrosive liquid in the
Appeal No. 97-4168
Application 08/348,890
6
container, are more than merely statements of intended use.
These recitations are necessary to define appellant’s invention
and they bring life and meaning to the claimed subject matter.
Absent the disclosure of the present application, it is our
opinion that one of ordinary skill in the art would not have been
motivated to modify the container and metal cap arrangement of
Büdenbender ‘576 in light of the closure member of Hawkins so as
to arrive at the subject matter set forth in appellant’s claims 7
and 8 on appeal. Thus, the examiner's rejection of appellant's
claims 7 and 8 under 35 U.S.C. § 103 based on Büdenbender ‘576
and Hawkins will not be sustained.
We have also reviewed the patent to Mineo applied by the
examiner in the § 103 rejection of dependent claim 9. However,
we find nothing in this reference which would supply that which
we have noted above to be lacking in the basic combination of
Büdenbender ‘576 and Hawkins. Accordingly, the examiner's
rejection of claim 9 on appeal under 35 U.S.C. § 103 will
likewise not be sustained.
Appeal No. 97-4168
Application 08/348,890
7
As should be apparent from the foregoing, the decision of
the examiner rejecting claims 7 through 9 of the present
application is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
HARRISON E. McCANDLISH ) APPEALS AND
Senior Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
vsh
Appeal No. 97-4168
Application 08/348,890
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