Ex Parte Schutz

Patent Trial and Appeal Board

Oct 31, 2014

11316226 (P.T.A.B. Oct. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/316,226 12/22/2005 Udo Schutz 74532RCE2 2113
23872 7590 10/31/2014
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
SMALLEY, JAMES N
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
10/31/2014 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 UDO SCHUTZ
____________

Appeal 2012-010680
Application 11/316,226
Technology Center 3700
____________

Before ANNETTE R. REIMERS, LISA M. GUIJT, and
JAMES J. MAYBERRY, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Udo Schutz (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision to reject under 35 U.S.C. § 103(a) claim 1 as
unpatentable over Przytulla (US 6,401,957 B1; iss. June 11, 2002) and Rieke
(US 4,320,861; iss. Mar. 23, 1982). Claims 2 and 3 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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Application 11/316,226

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CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a lidded drum.” Spec. 1, Fig.
2.1
Claim 1, the sole claim, recites:2
1. A lidded drum of synthetic material
comprising a clamping ring of metal for releasably
fastening a drum lid on an upper drum rim,
wherein, in a closed state, a clamping ring having a
U-shaped cross section engages with an upper leg
thereof over a lid rim, and engages with a lower
leg under an annular contact surface of a border of
the drum wall which extends perpendicularly or
obliquely relative to a longitudinal axis of the
drum, wherein the annular contact surface is
arranged under the upper drum rim and forms an
upper limitation of an indentation in an upper
portion of the drum wall, and wherein the lid rim
formed by an inner rim, an outer rim, and a
connecting ring, has a downwardly open U-shaped
cross sectional profile with a sealing bed for
placing or foaming a lid seal therein, wherein, in
the closed state of the drum lid, the lid seal is in
the closed state of the drum lid pressed against the
upper drum rim by the clamping force of the
clamping ring, further comprising an annular bead
formed on the connecting ring of the clamping ring
between the upper and lower legs of the clamping
ring, wherein the bead is directed radially inwardly

1 Appellant’s Specification does not provide line or paragraph numbering
and, accordingly, reference will only be made to the page number.
2 We note that the copy of claim 1 provided in the Appeal Brief includes
added words that were deleted in an Amendment to claim 1, filed March 29,
2011. See Br. 16–17; Amendment to Non-Final Office Action p. 2, filed
March 29, 2011. For purposes of this appeal, we shall refer to the last
amended version of claim 1 filed March 29, 2011.

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and, when the clamping ring is closed, the annular
bead engages in an engagement groove in the
outer rim of the lid or on a lower support ring
integrally formed on the outer rim of the lid for
securing the lid on the upper drum rim, and the
outer rim presses as a result of the clamping force
against the upper drum ring having the lid seal in
between.

ANALYSIS
Independent claim 1 calls for a lidded drum including a clamping ring
and an annular bead “wherein . . . when the clamping ring is closed, the
annular bead engages in an engagement groove in the outer rim of the lid . . .
for securing the lid on the upper drum rim.” See Amendment to Non-Final
Office Action p. 2, filed March 29, 2011. The Examiner finds that Przytulla
discloses the limitations of claim 1 except Przytulla fails to disclose the
annular bead as called for in claim 1. Ans. 4. The Examiner finds that
[Rieke] teaches a means for fixing a closure
cap onto a container opening, comprising an
anchor ring (53) which fixes a flexible spout (54)
onto an annular boss (49). In column 5, lines 58-
62, [Rieke] teaches “. . . anchor ring 53 is arranged
for crimping the outer periphery of the flexible
spout around the upper edge of the raised annular
boss.” Further, referencing figure 5 [of Rieke], it
can be seen adjacent element number 49 that the
crimp comprises a radially inwardly extending
projection in the clamp/anchor ring (53) which
extends into a groove in the outer rim of the lid.
As such a groove is present after application of the
crimp, and the claim is met when the term is
treated as a product-by-process limitation. It has
been held that method limitations in a product
claim do not serve to patentably distinguish the
claimed product from the prior art. See In re
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Application 11/316,226

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Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir.
1985). Thus, even though a product-by-process
claim is limited and defined by a process,
determination of patentability is based on the
product itself. Accordingly, if the product in a
product-by-process claim is the same or obvious
from a product of the prior art, the claim is
unpatentable even though the prior art product was
made by a different process. Thorpe, 777 F.2d at
697, 227 USPQ at 966; In re Marosi, 710 [F.2d]
799, 218 USPQ 289 (Fed. Cir. 1983).

Ans. 4–5. The Examiner concludes that it would have been obvious
to modify the clamping ring and lid of [Przytulla],
forming a radially inwardly extending groove on
the clamping ring [16 of Przytulla] to fit into a
groove in the container lid, as taught by [Rieke],
motivated by the benefit of crimping the lid for a
more positive fit which could better secure the lid
against blowoff from container pressures.
Id. at 5.
Appellant contends that
there is no lid described by [Rieke] being fixed
onto a container opening by means of a clamping
ring, and secondly, there is no groove described by
[Rieke] being formed in the rim of a lid, but rather
there is a groove formed into a rim of the spout
when crimping the anchor ring into the spout. The
spout has no lid function at all.
Notwithstanding the arguments above,
[Appellant] submit[s] that a person of ordinary
skill in the art considering the teachings of
Przytulla would not turn to or look to [Rieke] since
[Rieke] do[es] not deal with fixing or fastening a
drum lid onto a drum rim, where the drum lid and
the drum have a seal arranged in the sealing bed of
the drum lid. Instead, the subject matter of [Rieke]
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Application 11/316,226

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is to “provide an improved tamper-proof cap for a
container closure device” (see column 3, lines 10-
12 of [Rieke]).
Thus, it is respectfully submitted that it
would not be obvious to combine [Przytulla and
Rieke] and, even if combinable the combination
does not teach the invention recited in the claim
presently on file.

Br. 13; see also id. at 8. Appellant further contends that
in Figure 5 [of Rieke] two types of caps for a
flexible spout are illustrated. For example, the first
(outer) cap 20 does not have any sealing function
at all since the outer cap 20 just has a tamper-proof
function and is accordingly named “tamper-proof
cap 20” (see, for example, column 6, line 6). The
tamper-proof cap 20 must first be removed in order
to have access to a second (inner) cap 55 which is
threadably fitted to the flexible spout 54 which is
fixed to the raised annual boss 49 (container
opening) as mentioned above.
The inner cap 55 has a sealing function
which is provided by an interaction or engagement
of integral threads 61 and 62 (see column 6, lines
1-3). Thus, there is no seal arranged in the sealing
bed but rather the sealing function is achieved by
an engagement between the cap 55 and the flexible
spout 54, without any need for a separate seal
being arranged in a sealing bed.
As a result, one must conclude that [Rieke]
neither teach[es] fixing a cap to a container
opening by using an anchor ring nor show[s] any
seal being arranged in a sealing bed.
Id. at 12.
Appellant’s arguments are not persuasive because nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
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Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Further, the
reason to modify the reference may often prompt a person of ordinary skill
in the art to do what the inventor has done, but for a different purpose or to
solve a different problem. It is not necessary that the prior art suggest the
combination to achieve the same advantage or result discovered by an
applicant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006).
Moreover, to the extent that Appellant is arguing the references must be
capable of bodily incorporation in order to combine their teachings, the test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of a primary reference. In re Keller,
642 F.2d 413, 425 (CCPA 1981). “Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” Id. (citations omitted).
Here, the Examiner relies on Przytulla, not Rieke, for disclosure of a
drum lid and a lid seal. See Ans. 4, 6. The Examiner relies on Rieke merely
for the disclosure of “a radially-inwardly formed crimp.” Id. at 6. Further,
the Examiner articulates adequate reasoning based on rational underpinning
as to why one of ordinary skill in the art would have been led to make the
proposed modification, namely “the benefit of crimping the lid [of Przytulla,
as taught by Rieke,] for a more positive fit which could better secure the lid
against blowoff from container pressures.” Id. at 5. Appellant has not
provided any evidence or argument sufficient to show that the proposed
modification would have been beyond the level of ordinary skill in the art.
Neither has Appellant provided any persuasive evidence or argument
sufficient to show that the proposed improvement would have been more
than a predictable use of the prior art elements according to their established
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functions. See id. at 5–6. “The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). “If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” Id. at 417.
Moreover, in response to Appellant’s arguments, the Examiner
reasons that
[Rieke] teaches a crimp in the vertical annular skirt
wall of ring (53), and Figure 5 [of Rieke] clearly
shows a radially-inwardly formed crimp. [The]
Examiner’s position is that the reference teaches a
securement method, as described in col. 5, lines
58-62. The crimp secures the outer periphery of
the flexible spout around the upper edge of the
raised annular boss. Because the ring is formed of
metal, is shown to fit closely onto the spout
periphery, and because the spout is formed of
plastic, there will inherently be a groove formed
after the crimp takes place. The figure clearly
shows a radially inward extending crimp, which
must create a groove into the plastic. Thus, the
final product of the configuration results in an
annular bead formed in a clamping ring, and which
extends into a groove in the component located
radially inwardly. [The] Examiner’s position is
that it would be obvious to apply this effect to the
tensioning ring (16) of Pryztulla, since it similarly
works to secure two overlapping components by
applying radial pressure.

Ans. 6. Appellant has not apprised us of error in the Examiner’s findings
and conclusions.

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Appellant contends that
[Rieke] teach[es] use of a crimp connection for
securing the flexible spout 54 with the raised
annular boss 49 by means of the anchor ring 53.
Thus, the anchor ring 53 is deformed in a ductile
manner, which means that the deformation of the
anchor ring, or crimping ring 53, is irreversible.
The presently-claimed invention, on the other
hand, recites a clamping ring that exerts a
clamping force that provides the clamping
connection. This clamping connection is achieved
by elastically-deforming the clamping ring. Thus,
the deformation of the clamping ring is reversible,
and not irreversible, as is the crimping ring of
[Rieke].
. . . . The combination of [Przytulla and
Rieke] does not teach a construction in which the
clamping ring can releasably fasten the drum lid,
wherein the clamping ring has a bead that engages
in a groove in the lid of the drum, as in the present
invention.
Br. 8–9.
Appellant’s arguments are not persuasive because Appellant is
arguing the references individually rather than the combination of the
references. In response to Appellant’s argument, the Examiner states that
“one of ordinary skill would not be dissuaded by [Appellant’s argument]
because [Pryztulla] shows in Figure 1 the clamping ring (16) having a latch,
which is known to allow the ring to be removed.” Ans. 7; Pryztulla, Fig. 1.
Appellant has not apprised us of error in the Examiner’s finding and
conclusion. Moreover, we agree with the Examiner that the combined
teachings of Pryztulla and Rieke would yield a clamping ring releasably
fastened to a drum lid, wherein the clamping ring has a bead that engages in
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a groove in the lid of the drum. See id. at 6–7. Appellant has not provided
any persuasive evidence or arguments to the contrary.
Appellant contends that
[Przytulla teaches] to keep the outer rim free
[from] any contact with the connecting ring of the
clamping ring. As one skilled in the art would
understand from the description of Przytulla, for
example column 6, lines 19-24, the technical
reason for avoiding this contact is to keep the
gasket 22 free from any forces caused by
neighboring components changing their relative
positions and thereby keeping the seal intact.
. . . .
Furthermore, a skilled artisan looking for a
solution in order to solve the object of the present
invention, which is to “further develop the lidded
drum with respect to the tightness of the drum lid
when the drum drops from middle or large
heights” (see summary of the invention of the
originally filed application), would never have
taken into account the teachings of [Rieke]. As
one learns from Fig. 5 of [Rieke], the teaching is
obviously not directed to a lidded drum but instead
is directed to containers that have an anchor ring
53, which is considered by the Examiner to be
equivalent to the clamping ring. The anchor ring
[of Rieke] is positioned in a way that one cannot
imagine that the anchor ring would be subject to
any impact when the container is dropped to the
ground as is the case in the presently claimed
invention where the clamping ring interacts with a
border of the drum wall forming the upper limit of
an indentation in an upper portion of the drum
wall. For example, Fig. 5 of [Rieke] shows that
the anchor ring would be shielded from any impact
by the cap 20 and the container body 50.
Br. 10–11.
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Appellant’s arguments are not persuasive because Appellant’s
arguments are not commensurate in scope with claim 1. At the outset, we
note that claim 1 does not call for the lidded drum to be “[dropped] from
middle or large heights” or require that the clamping ring “be subject to any
impact when the [drum] is dropped to the ground.” See Br. 10–11; see also
Amendment to Non-Final Office Action p. 2, filed March 29, 2011. Claim 1
merely calls for a lidded drum including “a clamping ring of metal for
releasably fastening a drum lid on an upper drum rim.” See Amendment to
Non-Final Office Action p. 2, filed March 29, 2011. Limitations not
appearing in the claims cannot be relied upon for patentability. In re Self,
671 F.2d 1344, 1348 (CCPA 1982). We agree with the Examiner that the
portion of Pryztulla cited by Appellant (i.e., col. 6, ll. 19–24), “relates to
Figure 13b [of Pryztulla], which is taught to be from a ‘drop test.’ In other
words, the forcing is from the container [drum] being dropped, and not in a
normal, resting condition.” Ans. 6; see also Br. 10; Pryztulla, col. 3, ll. 1–6,
Figs. 13a, 13b. Additionally, we agree with the Examiner that
“[Appellant’s] argument that the device of Rieke would be shielded from
impact in a drop . . . is not relevant to the argument of whether one of
ordinary skill would find it obvious to apply a type of crimp taught by Rieke
to the closure of Pryztulla.” Id. at 7.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claim 1 as unpatentable over Pryztulla and Rieke is sustained.

DECISION
We AFFIRM the decision of the Examiner to reject claim 1 as
unpatentable over Pryztulla and Rieke.
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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)(1)(iv).

AFFIRMED

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