Ex Parte Selina et al

Patent Trial and Appeal Board

Sep 30, 2016

13048986 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/048,986 03/16/2011
48980 7590 10/04/2016
YOUNG BASILE
3001 WEST BIG BEA VER ROAD
SUITE 624
TROY, MI 48084
FIRST NAMED INVENTOR
John R. SELINA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
LTC-144-B 9819
EXAMINER
CARROLL, JEREMY W
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
10/04/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@youngbasile.com
audit@youngbasile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN R. SELINA and RANDALL J. CORBETT
Appeal2014-006006
Application 13/048,986
Technology Center 3700
Before WILLIAM A. CAPP, LEE L. STEPINA, and
AMANDA F. WIEKER, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 22-27. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-006006
Application 13/048,986
CLAIMED SUBJECT MATTER
The claims are directed to a collapsible spout for a container and
method of manufacture thereof. Spec. i-f 2. Claim 22, reproduced below, is
illustrative of the claimed subject matter:
22. A closure having a manually operable plastic spout
attached thereto and extendable along an extension axis
compnsmg:
a molded plastic closure having a deck with an inwardly flanged
cylindrical opening formed therein;
an extendable plastic spout molded into stable collapsed
conditions and comprising an integrally continuous
plurality of unreinforced, annular wall sections of
substantially equal thickness, rigidity and axial length, but
of progressively smaller diameter interconnected by
hinges of thinner, more flexible construction than said wall
sections; said wall sections in the collapsed condition,
laying concentrically within one another within said
flanged opening wherein, when said spout is fully
collapsed, the top edges of the collapsed sections lie
substantially in a common plane perpendicular to the
extension axis;
an innermost section integral with said plurality of annular wall
sections but being more rigid than said plurality of wall
sections, said innermost section having external threads
formed thereon; said sections being extendible in sequence
by over-center action, but having a memory quality to
return to the collapsed condition;
a cap having a cylindrical neck portion and a larger diameter
planar top portion, said neck portion having threads
mating with the external threads of the innermost spout
section to close the spout, the planar top portion lying
substantially immediately above said common plane when
the spout is in the collapsed condition; and
an annular pull ring formed integrally with the top portion of the
cap and in circumferentially surrounding relationship
therewith; said pull ring being radially separated from said
cap planar top portion by two circular slots but integrally
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Application 13/048,986
joined with top portion by two radially extending tab
portions such that the pull ring may be lifted out of the
plane of the top portion and used as a grip to pull said spout
to an extended pull condition;
said cap top portion and said pull ring together being of sufficient
diameter to substantially fill the cylindrical flanged
opening in said closure deck and create a substantially
flush deck structure; and
said spout being permanently attached to said closure by insert
molding.
Amendment (filed June 26, 2013) (herein "Entered Amendment"). 1
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sultzer
Davis
Chung
Park
us 5, 722,570
US 6,435,384B1
US 6,641,007 B2
US 2011/0114679 Al
REJECTIONS
Mar. 3, 1998
Aug. 20, 2002
Nov. 4, 2003
May 19, 2011
(I) Claim 222 and 27 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
1 The Claims Appendix included with the Appeal Brief incorrectly lists the
claims on appeal. Specifically, the Claims Appendix lists the claims as if an
Amendment filed on September 19, 2013 (Amendment After Final) has been
entered by the Examiner. See Advisory Action (dated October 10, 2013) 1
(refusing entry of the Amendment After Final).
2 The Final Action (dated August 9, 2013) lists claims 1and27 in the
heading for this rejection. Final Act. 2. However, claim 1 is cancelled, and
claim 22 is the first independent claim. Entered Amendment 2. In the
Answer, the Examiner indicates that this rejection applies to claim 22.
Ans. 8.
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Application 13/048,986
(II) Claims 22-26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Park, Chung, Davis, and Sultzer.
(III) Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Davis and Sultzer.
OPINION
Rejection (I)
The Examiner finds that the terms "unreinforced annular wall" and "a
memory quality to return to the collapsed condition" in claim 22 and "a
memorized collapsed configuration" in claim 27 are not supported by
Appellants' original disclosure. Final Act. 2.
For Rejection (I), Appellants make arguments only for claim 27,
directing our attention to paragraphs 9, 22, 26, and 30 of the Specification.
Appeal Br. 8-9.
A written "description must 'clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed."' Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane) (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991)).
Paragraph 26 of the Specification states, "the fact that the spout body
24 is molded in the collapsed condition provides a 'memory' function which
assists in returning the spout from the extended position to the collapsed
condition within the opening in the closure deck 18." Thus, the
Specification sets forth the above-noted limitation in claim 27, albeit with
slightly different wording.
In response, the Examiner finds that paragraph 26 "indicates that the
method used to make the spout can provide a memory function, but this does
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Application 13/048,986
not indicate any material or structural differences in the spout or how the
method would accomplish this." Ans. 8. We disagree because the method
of molding the spout causes a structural difference, namely, a bias toward
the collapsed state. As for how molding a spout in a collapsed configuration
provides the memory function, the Examiner does not explain sufficiently
how this pertains to the rejection at hand, which is based on a lack of written
description rather than a lack of enablement. We agree with Appellants that
the Specification conveys with reasonable clarity to those skilled in the art
that, as of the filing date, Appellants were in possession of the invention
recited in claim 27. Vas-Cath, 935 F.2d at 1563. Accordingly, we reverse
the Examiner's rejection of claim 27 as failing to comply with the written
description requirement.
As noted above, Appellants do not make separate arguments for
claim 22. Consequently, we sustain the Examiner's rejection of claim 22 as
failing to comply with the written description requirement.
Rejection (II)
The Examiner finds that Park discloses most of the features recited in
claim 22. Final Act. 3--4. In particular, the Examiner finds that Park teaches
"a closure and manually operable plastic spout comprising an extendable
plastic spout molded into stable collapsed conditions." Id. at 3 (emphasis
added). However, the Final Action does not direct our attention to any
specific portion of Park for this feature. See Final Act. 3--4; see also Ans. 4--
5. The Examiner finds that Park
is silent on the molded plastic closure having a deck with a
cylindrically flanged opening, an annular pull ring formed
integrally with the top portion of the cap and separated from said
cap planar top portion by two circular slots, said spout being
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Application 13/048,986
attached to said closure by insert molding, annular wall sections
of equal thickness and hinges thinner than said wall sections.
Id. at 4. The Examiner relies on Chung and Davis to remedy these
deficiencies. Id. at 4--5.
Discussing Park, Appellants state, "[ t ]here is absolutely no teaching or
hint of a teaching . . . to mold the entire device in the collapsed condition so
that it has a 'memory' that prefers the collapsed concentric condition."
Appeal Br. 10.
In the Answer, the Examiner does not directly respond to the
argument above in relation to claim 22, but states, with respect to the
rejection of claim 27, "[i]n figure 3, Davis shows how a closure is molded
onto a collapsed spout. The collapsed spout is an essential part of the
process being used as an insert so that the closure may be formed around it
and as is shown it is in the collapsed condition." Ans. 11 (emphasis added).
In reply, Appellants state, "Davis shows how to mold a closure around
and onto a collapsed spout. This is not at all the same as showing how to
mold a spout in the collapsed condition." Reply Br. 5.
We agree with Appellants that the Examiner has not demonstrated that
Park discloses a spout molded into stable collapsed conditions. To the
extent the Examiner relies on Davis for this feature, this issue turns on how
the term "an extendable plastic spout molded into stable collapsed
conditions" is to be construed in claim 22. Specifically, the issue is whether
this limitation in claim 22 requires the spout to be molded (created) in a
collapsed state, or, whether merely applying a molding process to a pre-
exiting spout while the spout is in a collapsed state is sufficient to meet the
limitation.
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Application 13/048,986
When claim terminology is construed during examination, claims are
to be given their broadest reasonable interpretation consistent with the
specification, reading claim language in light of the specification as it would
be interpreted by one of ordinary skill in the art. In re Am. A cad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although not itself
dispositive, we read the plain language of claim 22 as conveying the
meaning that the "molded into stable collapsed conditions" applies to the
process of molding the spout itself rather than to a process of attaching the
spout to another item. For example, in addition to the feature discussed
above relating to "collapsed conditions," claim 22 recites, "said spout being
permanently attached to said closure by insert molding." Entered
Amendment 3. Thus, claim 22 separately recites a limitation corresponding
to the teaching in Davis the Examiner finds meets the requirement that the
spout be "molded into stable collapsed conditions." See Ans. 11 (discussing
Figure 3 of Davis and the process of using a spout as an insert around which
a closure is molded).
Further, as discussed above with respect to Rejection (I), the
Specification states that the molding process for the spout provides a
memory characteristic to the spout. See Spec. i-f 26. In other words, the
result of the molding process discussed in paragraph 26 provides a
characteristic to the spout itself. The Specification also states "[t]he spout
assembly 20 comprises a molded plastic, concentrically-pleated spout body
24 which is molded with the pleated portions thereof concentric and in the
collapsed condition shown in Fig. 2." Spec. i-f 22. Thus, the Specification
describes the assembly 20 and then specifically refers to spout body 24, as a
component of assembly 20, as being molded in the collapsed condition. The
reference in the Specification to separately molding the spout in a collapsed
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Application 13/048,986
condition implies that the molding does not relate to attachment of the spout
to something else, but instead relates to how the spout is created.
Considering the plain language of claim 22 and the discussion of
molding in Appellants' Specification, we interpret claim 22 to require the
spout itself to have been molded in a collapsed state. Accordingly, we do
not agree with the Examiner's finding that Davis discloses a spout molded in
a collapsed state,3 and we do not sustain the Examiner's rejection of claim
22 and claims 23-26 depending therefrom as unpatentable over Park,
Chung, Davis, and Sultzer.
Rejection (111)
Independent claim 27 recites a step of "molding a plastic spout in a
stable, memorized collapsed configuration." Entered Amendment 3.
The Examiner finds that Davis discloses all of the features recited in
claim 27 except "concentric annular ring sections of substantially equal
thickness, stiffness and thinner integral hinges; said spout further having
external threads," and the Examiner relies on Sultzer to teach these features.
Final Act. 6-7.
For the same reasons discussed above with respect to similar language
at issue in Rejection (II), we interpret "molding a plastic spout in a stable,
memorized collapsed configuration" in claim 27 to require molding the
spout itself in a memorized collapsed configuration, and we find that Davis
3 Aside from disclosing the process of molding a preform of flexible spout
20, in its collapsed state, to another item (Davis, col. 4, 11. 9-12, col. 5, 11.
15-18; Fig. 3), Davis discloses pre-molding cover body 12 and then molding
spout 20 in place (Davis, col. 7, 11. 19-30). However, in describing this
process, Davis does not specify whether spout 20 is collapsed or not.
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Application 13/048,986
does not disclose this feature. Accordingly, we do not sustain the
Examiner's rejection of claim 27 as unpatentable over Davis and Sultzer.
DECISION
The Examiner's decision to reject claim 22 under 35 U.S.C. § 112,
first paragraph, is affirmed.
The Examiner's decision to reject claim 27 under 35 U.S.C. § 112,
first paragraph, is reversed.
The Examiner's decision to reject claims 22-27 as unpatentable over
prior art under 35 U.S.C. § 103 is reversed.
AFFIRMED-IN-PART
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