Ex parte Siemonsen et al.

Board of Patent Appeals and Interferences

Feb 28, 2000

08455859 (B.P.A.I. Feb. 28, 2000)

Application for patent filed May 31, 1995. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FREDERIK A. SIEMONSEN
and DONALD NELSON
____________
Appeal No. 1998-1349
Application No. 08/455,8591
____________
ON BRIEF
____________
Before MCQUADE, NASE and CRAWFORD, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2 and 4. Claims 3 and 5 through 11
have been withdrawn from consideration.

Appeal No. 1998-1349 Page 2
Application No. 08/455,859
The appellants’ invention relates to a can end. An
understanding of the invention can be derived from a reading
of exemplary claim 1, which appears in the appendix to the
appellants’ brief.
The prior art
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Young 1,100,005 Jun. 16, 1914
Kraska 4,093,102 Jun. 6, 1978
The rejections
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Kraska.
Claims 2 and 4 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Young.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 17, mailed August 26, 1997) for the examiner's complete
reasoning in support of the rejections, and to the appellants’
Appeal No. 1998-1349 Page 3
Application No. 08/455,859
brief (Paper No. 16, filed June 30, 1997) and reply brief
(Paper No. 18, filed September 24, 1997) for the appellants’
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants’ specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Both rejections are made under 35 U.S.C. § 102(b). We
initially note that a claim is anticipated only if each and
every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art
reference. Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d
628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484
U.S. 827 (1987). The inquiry as to whether a reference
anticipates a claim must focus on what subject matter is
encompassed by the claim and what subject matter is described
by the reference. As set forth by the court in Kalman v.
Appeal No. 1998-1349 Page 4
Application No. 08/455,859
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984), it is
only necessary for the claims to "'read on' something
disclosed in the reference, i.e., all limitations of the claim
are found in the reference, or 'fully met' by it."
In explaining the rejection of claim 1 under 35 U.S.C.
§ 102(b), as anticipated by Kraska, the examiner states:
In Fig. 2 of Kraska, 22 is the reinforcing
rim, 16 is the countersink base, 28 is the
countersink wall, the area to the right of
lead line 14 is the flange and the area to
the left of lead line 14 is the curl.
[examiner’s answer at page 3]
Appellants argue that in Kraska at least two beads are
mandated for that device to work, which leads away from the
present invention. As to the question of leading away or
"teaching away” our reviewing court in In re Gurley, 27 F.3d
551, 553, 31 USPQ2d 1130, 1331 (Fed. Cir. 1994) stated:
A reference may be said to teach away when a
person of ordinary skill, upon [examining] the
reference, would be discouraged from following
the path set out in the reference, or would be
led in a direction divergent from the path that
was taken by the applicant.
Appeal No. 1998-1349 Page 5
Application No. 08/455,859
In the instant case, we agree with the examiner that the bead
22 is a reinforcing rim and that the bead 16 is a countersink
base as broadly claimed and as such the provision of beads 16
and 22 does not lead a person of ordinary skill in the art
away from the path taken by the appellants.
Appellants also argue that the curl disclosed in Kraska
does not have an inward extending portion and a peripheral
edge. We do not agree. In our view, the curl disclosed in
Kraska does have an inward extending portion to at least some
extent and certainly includes a peripheral edge.
Appellants also argue that Kraska mandates that the walls
20 and 30 have small acute angles and the wall 28 not have an
angle more than four degrees with respect to the vertical
plane and that these teachings teach away from the claimed
countersink base and cover flange. It is our opinion that the
provision of acute angles for walls 20 and 30 and the
disclosure of wall 28 not having a angle more than four
degrees does not lead a person skilled in the art away from
the claimed invention because claim 1 does not recite any
limitations for the angles of the walls but merely recites “a
cover flange” and “a countersink.”
Appeal No. 1998-1349 Page 6
Application No. 08/455,859
Lastly, appellants argue that the present invention
produces a new product which results in cost saving by
reducing the diameter of the can end, and by forming the curl
outwardly and thereby thinning the material only in the curl
and not in the entire can end.
Appellants’ specification discloses that the curl is
formed during the upstroke of a punch when sloping wall 61
traps the outer edge 45 of the can end and forces the metal
from transitional outer wall 17 to stretch outward.
(Specification at page 12). It is this stretching of the
metal which causes a thinning of the metal at the curl and
thereby leads to savings of metal. However, the broad
language of claim 1, i.e., “curl is formed by moving material
outwardly between an outer edge of the cover flange and the
peripheral edge” does not mention stretching of the metal.
And in our view moving metal outwardly would not mandate that
the metal is stretched. Therefore, while the specification
may disclose a curl formed of thinned metal, when the language
of claim 1 is given its broadest reasonable interpretation, it
does not recite a curl of thinned or stretched metal.
Appeal No. 1998-1349 Page 7
Application No. 08/455,859
We turn next to the examiner’s rejection of claims 2 and
4 under 35 U.S.C. § 102(b) as being anticipated by Young. In
the view of the examiner, Young anticipates the claimed
invention of claims 2 and 4 because:
In Fig. 3 of Young, 4 is the central panel,
the planar wall is shown at lead line 3, 8
is the flange and 7 is the cover hook, as
stated in claim 2. With respect to claim
4, the annular portion is shown at lead
line 3 and 7 is the curl. [examiner’s
answer at page 4].
Appellants argue that Young describes the in-turning or
curling of the outer edge of the flange 5 as shown as 7 in
Figure 3 and thus Young leads away from the unique product of
the present invention in which the outer curl is stretched
outwardly during forming to thin the curl.
Claim 2 recites:
the cover hook and the peripheral edge being formed
in a single station by cutting the peripheral edge,
moving the peripheral edge downward and inward and
forming a transitional wall between the flange and
the peripheral edge, and moving the peripheral edge
upward and extending the transitional wall outward
for forming the cover hook.
Appeal No. 1998-1349 Page 8
Application No. 08/455,859
Claim 2 does not recite that the cover hook is formed of
stretched metal. As with the preceding rejection, it is our
view that the broad language of claim 2 does not limit the
cover hook or curl to one formed from stretched metal.
Therefore, we will sustain the examiner’s rejection.
The decision of the examiner is affirmed.
Appeal No. 1998-1349 Page 9
Application No. 08/455,859
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Affirmed
JOHN P. MCQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 1998-1349 Page 10
Application No. 08/455,859
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