10322885 (B.P.A.I. Jan. 13, 2010)

Ex Parte Seidita

Board of Patent Appeals and InterferencesJan 13, 2010

10322885 (B.P.A.I. Jan. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte THOMAS M. SEIDITA ____________ Appeal 2009-000560 Application 10/322,885 Technology Center 3700 ____________ Decided: January 13, 2010 ____________ Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and MICHAEL W. O’NEILL, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas M. Seidita (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-10 and 29-43. Appellant canceled claims 11-28. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal 2009-000560 Application 10/322,885 2 The Invention The claimed invention is to a process of beverage packaging. Figure 1, reproduced below, is an illustration of Appellant’s claimed subject matter regarding the closure cap 20. Figure 1 depicts Appellant’s closure cap 20 representatively installable on finished portion 14 of the container 12. Claims1 1 and 30, reproduced below, are illustrative of the subject matter on appeal. 1. A method of packaging a beverage, comprising: (a) providing a container that has a threaded finish portion; 1 Claims 42 and 43 appear to have a typographical error. The claims recite “the closure construed such that it....” Whereas, claim 41 recites “the closure constructed such that it....” As such, it appears claims 42 and 43 should recite the term “constructed” in lieu of “construed.” Further prosecution before the Examiner should correct the apparent error. Appeal 2009-000560 Application 10/322,885 3 (b) providing a closure cap having an upper portion and a generally cylindrical sidewall depending downwardly from said upper portion, said cylindrical sidewall defining a threaded inner surface, and wherein said cylindrical sidewall further has an outer surface that is stylized to resemble a conventional crown closure; (c) at least partially filling the container with a beverage; and (d) installing the closure cap on to the finish portion of the container. 30. A method of packaging a beverage, comprising: (a) providing a container that has a threaded finish portion; (b) providing a twist-on-twist-off closure cap having a continuous upper portion and a continuous generally cylindrical sidewall depending downwardly from said upper portion, said cylindrical sidewall defining a threaded inner surface, and wherein said cylindrical sidewall further has an outer surface that is stylized to resemble a conventional crown closure; (c) at least partially filling the container with a beverage; and (d) installing the twist-on-twist-off closure cap on the finish portion of the container. The Rejection Appellant seeks review of the following rejection by the Examiner: The rejection of claims 1-10 and 29-43 under 35 U.S.C. § 102(b) as anticipated by Price (US 5,984,125, issued Nov. 16, 1999). Appeal 2009-000560 Application 10/322,885 4 Contention Appellant contends that Price fails to anticipate the claimed subject matter because, inter alia, Price fails to describe a generally cylindrical sidewall or a continuous generally cylindrical sidewall. SUMMARY OF DECISION We AFFIRM-IN-PART. OPINION Issue Has Appellant shown the Examiner erred in finding that Price anticipates the claimed subject matter of the claims on appeal because Price fails to describe a generally cylindrical sidewall or, more specifically, a continuous generally cylindrical sidewall? Pertinent Facts 1. Price’s figure 12, reproduced below, represents Price’s described cap 10. Appeal 2009-000560 Application 10/322,885 5 Price’s figure 12 depicts cap 10 having handle 16 attached to a section of the bottom edge of the cylindrical sidewall (not enumerated). 2. Price’s figure 13, reproduced below, additionally represents Price’s described cap 10. Price’s figure 13 depicts Price’s cap 10 in a top plan view of its top. 3. Price’s figure 3, reproduced below, additionally represents Price’s described cap 10. Price’s figure 3 depicts a front sectional view of Price’s cap 10. Principles of Law A single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation. Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992). Thus, a prior art reference without Appeal 2009-000560 Application 10/322,885 6 express reference to a claim limitation may nonetheless anticipate by inherency. See In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). A predecessor to our reviewing court stated that a drawing in a utility patent can be cited against the claims of a utility patent application even though the feature shown in the drawing was unintended or unexplained in the specification of the reference patent. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) citing In re Meng, 492 F.2d 843, 847 (CCPA 1974) (the staggered cheese slices case); In re Seid, 161 F.2d 229, 231 (CCPA 1947); In re Wagner, 63 F.2d 987, 988 (CCPA 1933). It is not necessary that the reference teach what the subject application teaches, but only that the claim read on something disclosed in the reference, i.e., that all of the limitations in the claim be found in or fully met by the reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983). Analysis Claim 1 Appellant contends that Price does not disclose “a generally cylindrical sidewall.” See App. Br. 10-15. Appellant reasons that Price does not disclose a generally cylindrical sidewall because Price’s cap 10 includes a handle 16. See, e.g,. Fact 1. However, the additional structure on Price’s cap 10 does not necessarily mean that the “generally cylindrical sidewall” claimed subject matter fails to be fully met by Price’s sidewall structure. The transitional phrase “comprising” recited in claim 1 is open-ended and does not exclude additional, unrecited elements such as a handle connected Appeal 2009-000560 Application 10/322,885 7 to a bottom section of a cylindrical sidewall. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.) While the figures do not label Price’s cylindrical sidewall with a reference numeral for explanation, and while Price may not have intended such a feature, a generally cylindrical sidewall is clearly shown in the figures. See Facts 1-3 (noting the cap is circular in its top view (see Fact 2), and in sectional view the cap’s sidewalls are generally parallel (see Fact 3)). As such, a cap that is circular in top view and in sectional view has sidewalls that are generally parallel, would have a cylindrical shape and, accordingly, has a generally cylindrical sidewall. Therefore, the claimed subject matter of “a generally cylindrical sidewall” is fully met by Price and as such is anticipated by Price. Accordingly, we will sustain the Examiner’s rejection of claim 1 as anticipated by Price. Claims 2-6 and 9 Although Appellant provides a separate subhead pertaining to the rejection of claims 2-6 and 9, Appellant does not advance any substantive arguments pertaining specifically to these claims. Appellant instead relies upon the arguments presented pertaining to claim 1. App. Br. 15-17. We found those arguments unpersuasive as to error in the Examiner’s anticipation rejection of claim 1 and likewise find them unpersuasive as to error in the Examiner’s anticipation rejection of these claims. Accordingly we will sustain the Examiner’s rejection of claims 2-6 and 9. Appeal 2009-000560 Application 10/322,885 8 Claims 7 and 8 In addition to relying on the arguments presented for claim 1, Appellant appears to advance a contention that claims 7 and 8 further require an independent expressed “need for a cylindrical sidewall.” App. Br. 16 and 17. This additional contention is unconvincing to show that the Examiner erred in rejecting claims 7 and 8 as anticipated by Price because Price clearly shows a cylindrical sidewall in the figures. See Facts 1-3 and our reasoning supra. Claim 10 We will not sustain the Examiner’s rejection of claim 10 as anticipated by Price because, as the Appellant contends, see App. Br. 18, claim 10 requires the cap to be frangibly attached to a tamper evident band, see, e.g., Fact 1, reference label 42, and Price does not describe a tamper evident band. Instead, Price describes that the broken lines of weakness 30 indicate the cap has been tampered with. Price, col. 6, ll. 11-13 and see, e.g., Fact 1. Claim 29 Claim 29 requires a twist-on-twist-off closure cap having internal threads sized and shaped so that the cap is screwable onto and off of the finished portion of the container in conventional fashion. Price describes cap 10 as being twisted-on when installed onto the finished portion of the container. See Price, col. 3, ll. 44-49. While the twisted-on capability of Price’s cap 10 is conventional to a person having ordinary skill in the art, the process for removing the cap from the container is unconventional. Price’s cap removal requires first lifting the handle 16 to break the seal and then untwisting the cap off the container. Price, col. 5, l. 63 to col. 6, l. 10. Price Appeal 2009-000560 Application 10/322,885 9 fails to describe that once the cap is removed from the container, the cap is twisted back onto the finished portion of the container in a conventional fashion as would be understood by a person having ordinary skill in the art. Instead, Price describes when the cap is re-applied to the container, the broken lines of weakness 30 will provide “a clear and unequivocal indication that the container has been opened or tampered with.” Price, col. 6, ll. 12- 13. As such, Price’s cap is not capable of being screwable onto and off of the finished portion of the container in a conventional fashion as would be understood by a person having ordinary skill in the art. In view of the foregoing, we will not sustain the Examiner’s rejection of claim 29 as anticipated by Price. Continuous Upper Portion and Generally Cylindrical Sidewall Claims 30-43 require a twist-on-twist-off cap that has a continuous upper portion and a continuous generally cylindrical sidewall. Appellant contends Price’s cap does not anticipate the claimed feature of the cap having a continuous upper portion. Price describes the upper portion 12 having a hinge 28. See, e.g., Fact 2. Price does not describe the hinge 28 being disassociated with the upper portion at any point during the opening or closing of the cap 10. Accordingly, we find the claimed feature of the cap having a continuous upper portion to be satisfied by Price’s upper portion 12 with hinge 28. Appellant contends that because Price’s cap has lines of weakness 30, see, e.g., Fact 2, this prohibits Price’s cap from anticipating this limitation. However, these claims contain no temporal aspect. In other words, the claim limitation is satisfied by a piece of structure within the prior art that at one time was continuous and then non-continuous. Price’s lines of weakness 30 Appeal 2009-000560 Application 10/322,885 10 render the generally cylindrical sidewall non-continuous at the time of breaking the seal. However, prior to the end user lifting handle 16 that causes the breakage in the lines of weakness 30, Price’s sidewall is continuous. Therefore, the claim limitation of a twist-on-twist-off cap that has a continuous generally cylindrical sidewall is fully met by Price. As such, Appellant’s argument for patentability with respect to this claimed feature is unconvincing. Claim 30-33 As Appellant’s contention that Price fails to disclose a continuous upper portion and a continuous generally cylindrical sidewall is unconvincing, we will sustain the Examiner’s rejection of claims 30-33. Claim 34 Appellant further contends that Price fails to anticipate the claimed feature that the lower end of the cylindrical sidewall defines a plane. Again, the contention is premised on Price describing a handle 16 attached to a section of the lower end of its cap and thus shows more than what is claimed. However, the transitional phrase “comprising” recited in claim 34 is open-ended and does not exclude additional, unrecited elements such as a handle connected to a bottom section of a cylindrical sidewall. See Genentech, Inc. 112 F.3d at 501. It is not necessary that the reference teach what is being claimed, only that the claimed feature read on something in the reference in order for that feature to be fully met by the reference. See Kalman, 713 F.2d at 772. In this case, viewing Figures 12 and 3, Facts 1 and 3, respectively, the lower end of the sidewall of Price’s cap does define a plane that is parallel to the upper portion 12 of the cap 10 and generally perpendicular to the generally cylindrical sidewall. Accordingly, this Appeal 2009-000560 Application 10/322,885 11 claimed feature is met by Price and we will sustain the Examiner’s rejection of claim 34. Claim 35 Appellant’s contention that Price fails to describe a helically wound course of internal threads for the cap 10 is convincing. The Examiner did not explain what structure in Price would satisfy this claimed feature. As such, we are constrained to reverse the Examiner’s rejection of claim 35. Claim 36 Appellant’s contention that the claim requires a closure cap having no hinge and Price’s closure cap 10 has a hinge, hinge 28, is convincing in showing that the Examiner erred in rejecting claim 36. The Examiner has not explained how Price could anticipate a closure cap without a hinge. As such, we are constrained to reverse the Examiner’s rejection of claim 36. Claims 37-38 Appellant’s contention that the claims require a closure cap having no line of weakness and Price’s closure cap 10 has lines of weakness 30 is convincing to showing that the Examiner erred in rejecting claims 37 and 38. The Examiner has not explained how Price could anticipate a closure cap without a line of weakness. As such, we are constrained to reverse the Examiner’s rejection of claims 37 and 38. Claim 39 Appellant’s contention that the claim requires a closure cap having no handle and Price’s closure cap 10 has a handle 16 is convincing to show that the Examiner erred in rejecting claim 39. The Examiner has not explained how Price could anticipate a closure cap without a handle. As such, we are constrained to reverse the Examiner’s rejection of claim 39. Appeal 2009-000560 Application 10/322,885 12 Claim 40 Appellant’s contention that the claim requires a closure cap having no flaps on the inner surface of the sidewall that engage a stopping face in the circumferential direction on the container, and that Price’s closure cap has such structures, is convincing to show that the Examiner erred in rejecting claim 40. The Examiner has not explained how Price could anticipate a closure cap that has no flaps on the inner surface of the sidewall that engage a stopping face in the circumferential direction on the container. As such, we are constrained to reverse the Examiner’s rejection of claim 40. Claim 41 Appellant’s contention that Price fails to describe a closure cap constructed such that it may be opened from the fully closed position by screwing has merit. The Examiner has not explained how Price’s cap 10 could anticipate this claimed feature. As such, we are constrained to reverse the Examiner’s rejection of claim 41. Claim 42 Appellant’s contention that Price fails to describe a closure cap constructed such that the cap may be opened from the fully closed position without destroying the outer surface has merit. The Examiner has not explained how Price’s cap 10, that requires a user to lift the handle 16 in order to open the cap and as a result cause breakage along the lines of weakness 30, is able to satisfy a cap that is opened from the fully closed position without destroying the outer surface. As such, we are constrained to reverse the Examiner’s rejection of claim 42. Claim 43 Appeal 2009-000560 Application 10/322,885 13 While the Appellant is correct that Price describes that the cap 10 requires using the handle 16 and hinge portion 26 that pivot around hinge 28 in order to break the lines of weakness, the Appellant is not correct in that Price’s cap 10 is not opened by screwing the closure off the container as Appellant contends, on page 42 of the Appeal Brief. Price discloses once the flaps 32 that are within the hinge portion 26 are disengaged, this allows the cap to be completely unscrewed. Price, col. 6, ll. 7-9. Price further discloses once the handle 16 is lifted, the pressure inside the container is released. Price, col. 6, ll. 3-4. Therefore, the liner (seal) 54 is connected to the cap 10. As such, turning the cap open would break the seal away from the finished portion of the container. Thus, the claimed feature of the seal being opened by screwing the closure cap off the container is met by Price’s description of releasing the closure cap 10 and liner 54 from the rim (finished portion) 42 of the container. Accordingly, we will sustain the Examiner’s rejection of claim 43 as anticipated by Price. CONCLUSIONS Appellant has not shown the Examiner erred in finding that Price anticipates the claimed subject matter of claims 1-9, 30-34, and 43. Appellant has shown the Examiner erred in finding that Price anticipates the claimed subject matter of claims 10, 29, and 35-42. DECISION The Examiner’s decision to reject claims 1-9, 30-34, and 43 is affirmed. Appeal 2009-000560 Application 10/322,885 14 The Examiner’s decision to reject claims 10, 29, and 35-42 is reversed. 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-IN-PART mls KNOBLE, YOSHIDA & DUNLEAVY EIGHT PENN CENTER SUITE 1350, 1628 JOHN F KENNEDY BLVD PHILADELPHIA, PA 19103