Ex parte Sergeant

Board of Patent Appeals and Interferences

Jan 20, 1999

08507339 (B.P.A.I. Jan. 20, 1999)

Application for patent filed October 2, 1995. According1
to appellant, the application is a National stage application
under 35 U.S.C. § 371 of PCT GB94/00335, filed February 18,
1994.
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(2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID R. SERGEANT

_____________
Appeal No. 98-2414
Application 08/507,3391
______________
ON BRIEF
_______________
Before COHEN, FRANKFORT and NASE, Administrative Patent
Judges.
Appeal No. 98-2414
Application 08/507,339
2
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's
final rejection of claims 12 through 16 and 25 through 27.
Claims 17 through 24, the only other claims remaining in the
application, have been objected to, but are indicated to be
allowable subject to the requirement that they be rewritten in
independent form to include all the limitations of the
claim(s) from which they depend. Claims 1 through 11 have
been canceled.
Appellant’s invention is directed to a sheet
material end closure for a container, such as a beverage
container, and to a method for forming said container end
closure. Independent claims 12 and 26 are representative of
the subject matter on appeal and a copy of those claims may be
found in the Appendix to appellant’s brief.
Appeal No. 98-2414
Application 08/507,339
3
The prior art references of record relied upon by
the examiner in rejecting the appealed claims are:
Faulkner 609,907 Oct. 8, 1948
(British specification)
Saunders WO 91/09784 July 11, 1991
(PCT)
Claims 12 through 16 and 25 through 27 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Saunders in view of Faulkner.
Rather than reiterate the examiner's full statement
of the above-noted rejection and the conflicting viewpoints
advanced by the examiner and appellant regarding the
rejection, we make reference to the examiner's answer (Paper
No. 18, mailed January 9, 1998) for the examiner's reasoning
in support of the rejection, and to appellant's brief (Paper
No. 17, filed December 15, 1997) and reply brief (Paper No.
19, filed February 28, 1998) for appellant's arguments
thereagainst.
Appeal No. 98-2414
Application 08/507,339
4
OPINION
In arriving at our decision in this appeal, we have
carefully considered appellant’s specification and claims, the
applied prior art references, and the respective positions
advanced by appellant and the examiner. Upon evaluation of
all the evidence before us, it is our conclusion that the
rejection of claims 12 through 16 and 25 through 27 under 35
U.S.C. § 103 before us on appeal cannot be sustained. Our
reasoning for this determination follows.
In the present case, the examiner has taken the
position (answer, page 3) that
Faulkner teaches a punching and drawing
process which is used to form metallic
hollow objects from sheet material which is
the basic process used to form metal
containers and end walls in the container
industry. Faulkner specifically states
that in the punching and drawing process,
that material which is deformed from the
flat material (i.e. the material of the
closure other than the center panel)
becomes thinner. It is therefore obvious
to one having ordinary skill in the art
that the end closure of Saunders which is
formed by a process based upon the Faulkner
process would inherently posses [sic] a
center panel which was thicker than the
Appeal No. 98-2414
Application 08/507,339
5
portions of the closure outside of the
center panel.
Contrary to the examiner's view, there is no
evidence in this record that the end closure of the metal
container seen in Saunders “is formed by a process based upon
the Faulkner process.” While Saunders refers to a “shell
forming stage” (page 4) there are no details of exactly what
constitutes such a shell forming stage and certainly no
indication that the shell forming stage of Saunders is in any
way “based upon the Faulkner process,” as the examiner urges.
Moreover, as appellant has argued and demonstrated in the
brief and reply brief, even if the end closure of Saunders may
have been formed by a punching and
drawing process, the evidence before us in this case is
woefully inadequate to support the examiner’s position that
the end closure of Saunders formed by such a process would
“inherently posses [sic] a center panel which was thicker than
the portions of the closure outside of the center panel.”
Like appellant, we particularly note that the Taube et al.
Appeal No. 98-2414
Application 08/507,339
6
patent attached to the appeal brief and Exhibit B attached to
the reply brief weigh heavily against the examiner’s asserted
position on inherency. We also note the lack of any response
from the examiner addressing the evidence submitted by
appellant.
It is our view that the examiner's position with
regard to the formation of the end closure of Saunders is
based on conjecture, speculation and hindsight reasoning. One
of ordinary skill in the art viewing the Saunders disclosure
and that of Faulkner (relating to kitchen and cooking
utensils) would not have been led to the inevitable conclusion
that the end closure of the container in Saunders would have
the configuration claimed by appellant in independent claims
12 and 26 on appeal. See In re Oelrich, 666 F.2d 578, 212
USPQ 303 (CCPA 1981). This conclusion is bolstered by the
fact that Figures 9, 10 and 14 of Saunders each show the end
closure therein as having a generally
Appeal No. 98-2414
Application 08/507,339
7
uniform thickness in the central region and the outer annular
rim or edge portion thereof (e.g., near 21). Since this
important feature of appellant’s claimed subject matter is not
explicitly present in the Saunders reference, and is not
inherent therein, even when the teachings of Saunders are
considered in light of Faulkner, we cannot sustain the
examiner's rejection of claims 12 through 16 and 25 through 27
under 35 U.S.C. § 103.
In summary, the decision of the examiner rejecting
claims 12 through 16 and 25 through 27 under 35 U.S.C. § 103
has been reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Appeal No. 98-2414
Application 08/507,339
8
Administrative Patent Judge )
INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
psb
Appeal No. 98-2414
Application 08/507,339
9
Edwin D. Schindler
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P.O. Box 966
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