12908079 (P.T.A.B. Jul. 28, 2017)

Ex Parte Yourist et al

Patent Trial and Appeal BoardJul 28, 2017

12908079 (P.T.A.B. Jul. 28, 2017)

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. 12/908,079 10/20/2010 Sheldon E. Yourist 082116.0400 3214 114699 7590 Baker Botts LLP 30 Rockefeller Plaza New York, NY 10112-4498 EXAMINER MAI, TRI M ART UNIT PAPER NUMBER 3781 NOTIFICATION DATE DELIVERY MODE 08/01/2017 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): DLNYDOCKET@BAKERBOTTS.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHELDON E. YOURIST and RAYMOND A. PRITCHETT JR Appeal 2015-000412 Application 12/908,079 Technology Center 3700 Before BRETT C. MARTIN, JEREMY M. PLENZLER, and JASON W. MELVIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2015-000412 Application 12/908,079 The Appellants filed their REQUEST FOR REHEARING on March 30, 2017 (hereinafter “Rehearing Request” or “Reh’g Req.”) under 37 C.F.R. § 41.52, seeking rehearing of our Decision mailed January 31, 2017 (hereinafter “Decision” or “Dec.”), which affirmed various final rejections of the claims made by the Examiner. We grant the Rehearing Request to the extent that we consider the Requester’s arguments, but DENY the request to modify the Decision. The thrust of the Appellants’ argument is that the affirmance of the Examiner’s rejection over Pedmo and Krishnakumar amounts to a new grounds of rejection to which the Appellants had no chance to respond. Reh’g Req. 4—8. We disagree. The affirmed rejection is firmly based upon the teachings of Pedmo and Krishnakumar, which was made clear in the Decision when we stated that the Appellants essentially admit that the combination of Pedmo and Krishnakumar teaches each and every limitation found in claim 1, but assert that there is no teaching, suggestion, or motivation to combine Pedmo with Krishnakumar to form an hourglass-shaped container with vacuum panels having pillow portions to provide label support. Dec. 4 (citing Reply Br. 9-10 (emphasis added)). Given that Pedmo and Krishnakumar teach all of the claimed limitations, the only issue then becomes whether the Examiner had proper motivation to combine the references. In the Response to Arguments section, the Examiner sought to bolster the basis for combining the references by pointing out that the state of the art, as evidenced by both Dlouhy and Shimon and in contradiction to the Appellants’ arguments, supported the application of “the type of label contemplated by the instant application to an hourglass-shaped bottle” (Ans. 18), which we specifically 2 Appeal 2015-000412 Application 12/908,079 noted in our Decision (Dec. 4). More specifically we agreed with the Examiner’s statement that “[the] state of the art teaches the use of the labels [on/with] hour-glass shape bodies is entirely within the skill of one o[f] ordinary skill in the art as demonstrated by Shimon et al. (20100155359) (not portion 40 is the label area) and Dlouhy ’534.” Ans. 18 (emphasis added). This does not convert our Decision into a new grounds based upon new art added to Pedmo and Krishnakumar because it merely cited evidence as proof of the state of the art at the time of the invention used to support the motivation for combining Pedmo and Krishnakumar, which was relied on in the Answer. Considering the fact that this evidence of the state of the art was clearly set forth in the Answer, it was not cited for the first time in our Decision and the Appellants had ample opportunity to specifically rebut the Examiner’s evidence of the state of the art as shown by Dlouhy and Shimon. While the Appellants assert that they did address Dlouhy, the only discussion of Dlouhy was to say that “Dlouhy does not disclose an hourglass-shaped container having a label, let alone vacuum panels or outwardly extending pillow portions formed therein to provide label support.” Reply Br. 14. None of this, however, is relevant to the rejection at hand and also does not address the issues relating to motivation. Pedmo and Krishnakumar disclose all of those features allegedly absent in Dlouhy, so Dlouhy is not relied upon for those aspects noted by the Appellants. In fact, Dlouhy is not relied upon for any of the claimed features. Dlouhy is merely relied upon as bolstering evidence that it was known in the art to apply a wrap/label to an hourglass-shaped bottle, thus confirming the Examiner’s motivation for combining the references. Even if 3 Appeal 2015-000412 Application 12/908,079 this were considered an adequate rebuttal to Dlouhy, which it is not, the Appellants made no argument at all regarding the Examiner’s use of Shimon as further evidence of the state of the art. In conclusion, we did not rely upon Dlouhy and Shimon as forming the basis of the rejection, but merely agreed with the Examiner’s findings regarding the state of the art, which was then further bolstered by Dlouhy and Shimon as noted in the Examiner’s Answer. Whatever arguments the Appellants provided against Dlouhy, they chose not to rebut these statements in support of the Examiner’s motivation. If the Appellants believed that the use of Dlouhy and Shimon amounted to a new grounds of rejection, the time to object would have been after the Examiner’s Answer, but no such argument or petition was made. The Board cited no new references, nor in any way changed the thrust of the rejection, but merely explained the basis of the Examiner’s rejection and why Appellants failed to overcome that rejection. Everything relied upon by the Board was first laid out in the Examiner’s Answer or earlier in prosecution. Regarding the “technical hurdle,” this was in no way a change in the thrust of the rejection nor was this relied upon in affirming the rejection. We merely noted that the Appellants failed in their burden of overcoming the rejection and one way in which they could potentially have provided persuasive argument would have been to provide evidence that some technical hurdle existed in actually combining the teachings of Pedmo and Krishnakumar, which could have weighed against the Examiner’s findings regarding the state of the art. We merely noted the lack of any such argument that could have overcome the Examiner’s motivation. The Decision would still stand with this discussion omitted therefrom. 4 Appeal 2015-000412 Application 12/908,079 REHEARING DECISION While we have considered the Decision in light of the Request for Rehearing, and have elaborated on certain aspects of the Decision, we decline to modify it in any respect. Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§90.1 and 1.983. DENIED 5