Hoffman, Edward A. et al.

Patent Trials and Appeals Board

Dec 2, 2019

14455255 - (D) (P.T.A.B. Dec. 2, 2019)

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.
14/455,255 08/08/2014 Edward A. Hoffman 082116.0663 2034
114699 7590 12/02/2019
Baker Botts LLP
30 Rockefeller Plaza
New York, NY 10112-4498
EXAMINER
GRUN, ROBERT J
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
12/02/2019 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 EDWARD A. HOFFMAN, LARRY M. TAYLOR, and
GANNON T. KUPKO
Appeal 2019-000769
Application 14/455,255
Technology Center 1700
Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
LILAN REN, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to finally reject claims 1–17, which constitute all the
claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Graham Packaging
Company, L.P. Appeal Brief (“Appeal Br.”) filed May 25, 2018, p. 2.
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We AFFIRM IN PART.2
CLAIMED SUBJECT MATTER
The claims are directed to a ceramic die pin for molten plastic
extrusion. Spec. 1, Title. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A die pin for creating a hollow plastic parison from extruded
molten plastic, the die pin comprising:
a base portion;
a metallic core member extending from the base portion;
and
a ceramic head member mounted on the core member,
wherein the die pin is adapted to form an inner diameter of
the hollow plastic parison.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gakovic US 2006/0193937 A1 Aug. 31, 2006
Appellant’s Admitted
Prior Art (“AAPA”)
Spec. ¶¶ 3–6

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection:
1. Claims 1–17 under 35 U.S.C. § 112(b) as indefinite;

2 Our Decision additionally refers to the Specification (“Spec.”) filed August
8, 2014, the Examiner’s Final Office Action (“Final Act.”) dated February
23, 2018, the Examiner’s Answer (“Ans.”) dated September 6, 2018, and
Appellant’s Reply Brief (“Reply Br.”) filed November 6, 2018.
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2. Claims 1–3, 6, 8, and 9 under 35 U.S.C. §102(a)(1) as
anticipated by Gakovic;
3. Claims 7 and 10–13 under 35 U.S.C. § 103 as
unpatentable over Gakovic; and
4. Claims 14–17 under 35 U.S.C. § 103 as unpatentable
over AAPA in view of Gakovic.
OPINION
Rejection 1: Indefiniteness
The Examiner rejects claims 1–13 on the basis of the limitation “a die
pin for creating a hollow plastic parison from extruded molten plastic,”
appearing in claim 1. The Examiner determines that it is unclear how the die
creates a parison from extruded molten plastic. Ans. 3. Similarly, the
Examiner rejects claims 1–17 on the basis of the limitation “the die pin is
adapted to form an inner diameter of the hollow plastic parison,” appearing
in claims 1 and 14. The Examiner determines that one of ordinary skill in the
art would not be able to draw a clear boundary between what is and is not
covered by these claims because of this limitation. Id. at 4.
The Examiner further explains that an ordinary artisan would have to
read limitations into the claims from the Specification to understand the
intended use of the die pin as a mandrel. Ans. 9. Instead, the Examiner finds
that the ordinary artisan would understand a die pin to be a fastener for
fastening a die to the extrusion structure. Id. “It is the Examiner’s position
that [Appellant’s] ‘die pin’ is really a mandrel and is being used therefore.”
Id.
Appellant argues that the ordinary artisan would easily understand the
meaning of “a die pin for creating a hollow plastic parison from extruded
molten plastic,” when considered in light of the Specification. Appeal Br.
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10. Appellant argues that the limitation “the die pin is adapted to form an
inner diameter of the hollow plastic parison,” is similarly definite. Id. at 11–
12. Appellant notes that the Specification discloses extruding molten plastic
into an annular space defined between an outlet and “a tooling or die pin”
disposed within the outlet to shape the plastic into a hollow parison. Id. at
10–11, citing Spec. ¶ 3. Appellant further notes that the Specification
describes the die pin being of a shape, size, and configuration for creating
the hollow plastic parison. Id. at 11, citing Spec. ¶¶ 23, 26, 30. In addition,
Appellant notes that the Specification describes that the die pin creates the
inner diameter of the parison. Id., citing Spec. ¶¶ 33, 37, 39.
Moreover, Appellant argues that the ordinary artisan would not
construe a “die pin” to be a fastener for fastening a die to an extrusion
structure. Reply Br. 2. Rather, Appellant contends the ordinary artisan would
readily recognize, when properly interpreted in light of the Specification,
that a “die pin” is a member positioned within a molding apparatus to create
a hollow parison from molten plastic. Id., citing Spec. ¶¶ 3, 8, 9, 26, 30, 37.
The legal standard for definiteness in prosecution is whether a claim
reasonably apprises those of skill in the art of its scope. In re Warmerdam,
33 F.3d 1354, 1361 (Fed. Cir. 1994). “[D]efiniteness of the language
employed must be analyzed—not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
Here, claim 1 recites “a die pin for creating a hollow plastic parison
from extruded molten plastic,” and claims 1 and 14 recite “the die pin is
adapted to form an inner diameter of the hollow plastic parison.” Without
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resort to the Specification, it is clear that the “die pin” of the claims is not a
fastener for fastening a die to the extrusion apparatus. Even more so, when
properly interpreted in light of the Specification, it is clear that the “die pin”
functions as the internal mandrel or core for forming the internal shape of
the parison. To the extent that the Examiner determines that the claims are
indefinite because the die pin is incapable of creating the parison on its own,
we disagree. In the context of the claim, the ordinary artisan would readily
understand that the claimed die pin is used to form the internal shape of the
hollow plastic parison, but does not form the parison completely on its own.
Indeed, Appellant discloses the apparatus in which the die pin operates to
form the hollow plastic parison. Spec. ¶ 37, Fig. 4.
Accordingly, we do not sustain the Examiner’s indefiniteness
rejections of claims 1–17.
Rejection 2: Anticipation by Gakovic
The Examiner rejects claims 1–3, 6, 8, and 9 under 35 U.S.C.
§102(a)(1) as anticipated by Gakovic.
After review of the opposing positions articulated by Appellant and
the Examiner, the applied prior art, and Appellant’s claims and Specification
disclosures, we determine that Appellant’s arguments are insufficient to
identify reversible error in the Examiner’s anticipation rejection. In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the stated
anticipation rejection for substantially the fact findings and the reasons set
forth by the Examiner in the Examiner’s Answer. We offer the following for
emphasis only.
The Examiner finds Gakovic discloses a die pin as recited in claim 1
including a base portion, a metallic core member extending from the base
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portion, and a ceramic head member mounted on the core member. Ans. 4–
5. The Examiner finds that the recitation “wherein the die pin is adapted to
form an inner diameter of the hollow plastic parison” is an intended use
limitation that does not impart patentability to the die pin. Id. at 5. The
Examiner also finds that although Gakovic’s die pin is not used for creating
a hollow plastic parison from extruded molten plastic, this intended use is
recited in the preamble of claim 1 and does not further limit the die pin
structure. Id. at 9–10, citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305 (Fed. Cir. 1999) and Rowe v. Dror, 112 F.3d 473, 478 (Fed.
Cir. 1997).
Appellant contests the Examiner’s characterization of the recitation
“wherein the die pin is adapted to form an inner diameter of the hollow
plastic parison” as merely defining the intended use of the die pin, and
instead urges that this recitation carries patentable weight. Appeal Br. 12,
citing In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014). Appellant contends
that Giannelli held that “where a written description shows that a claimed
apparatus is designed or constructed to be used or to perform in a particular
manner, such features claimed using ‘adapted to’ or ‘configured to’ language
are afforded patentable weight and such claims are patentable over prior art
apparatus not having the design or construction of the claimed machine.” Id.,
citing Giannelli, 739 F.3d at 1378–80. Appellant asserts that claim 1 recites
a structural feature adapted in a particular manner, i.e., “the die pin is
adapted to form an inner diameter of the hollow plastic parison.” Id. at 13.
Appellant contends that, to achieve this configuration, the die pin is
disclosed as having a ceramic head member with a rounded or conical shape
and a continuous, smooth exterior surface for the flow of plastic, as well as a
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particular construction to compensate for differential thermal expansion
between the ceramic head member and the metallic core. Id.
Appellant further contends that Gakovic’s die pin is directed for use in
powder compaction and does not disclose that it is compatible for use in
plastic extrusion. Appeal Br. 14. Appellant asserts that Gakovic’s die pin is
necessarily configured and sized to inhibit, rather than promote, the flow of
particulate material about its circumference. Id. In addition, Appellant urges
that it would be counter-intuitive to use Gakovic’s die pin in high
temperature environments required for plastic extrusion because Gakovic
discloses as having components assemble and secured together by thermal
deformation. Id.; see also Reply Br. 2–3.
Appellant’s arguments are not persuasive of reversible error in the
Examiner’s finding that Gakovic anticipates claim 1. Appellant does not
contest the Examiner’s finding that Gakovic teaches a die pin having the
structural limitations recited in claim 1. Instead, Appellant argues that the
Examiner improperly characterized the recitations “for creating a hollow
plastic parison from extruded molten plastic” and “wherein the die pin is
adapted to form an inner diameter of the hollow plastic parison,” in claim 1
as merely intended use which do not impart patentability to the claimed die
pin. We disagree.
The recitation “for creating a hollow plastic parison from extruded
molten plastic” is in the preamble of claim 1. Like most preambles, this
recitation is simply a statement of intended use, not a separate claim
limitation. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough
Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (“[A] preamble simply stating
the intended use or purpose of the invention will usually not limit the scope
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of the claim, unless the preamble provides antecedents for ensuing claim
terms and limits the claim accordingly.”). Satisfaction of the recited
structural limitations necessarily results in a structure capable of satisfying
the intended use recitation. Thus, this intended use recitation is not a
separate limitation that must be disclosed in Gakovic in order to uphold the
Examiner’s anticipation finding. Outdry Techs. Corp. v Geox S.P.A., 859
F.3d 1364 (Fed. Cir. 2017).
We further note that a new use for an old apparatus does not render
the old apparatus patentable. In re Sinex, 309 F.2d 488, 492 (CCPA 1962)
(statement of intended use in an apparatus claim failed to distinguish over
the prior art apparatus); In re Hack, 245 F.2d 246, 248 (CCPA 1957) (“the
grant of a patent on a composition or a machine cannot be predicated on a
new use of that machine or composition”). Appellant may recite features of
an apparatus either structurally or functionally. See In re Swinehart, 439
F.2d 210, 212 (CCPA 1971) (‘[T]here is nothing intrinsically wrong with
[defining something by what it does rather than what it is] in drafting patent
claims.’). However, defining an element functionally carries with it a risk;
the art does not need to explicitly teach this functional capability so long as
it is teaches structure that could provide the capability. In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997) (“It is well settled that the recitation of a
new intended use for an old product does not make a claim to that old
product patentable.”). Where functional characteristics are described or
suggested in the prior art, the burden shifts to the applicant to demonstrate
that the prior art does not possess the claimed functionality. In re Hallman,
655 F.2d 212, 215 (CCPA 1981); In re Ludtke, 441 F.2d 660, 663–64
(CCPA 1971).
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Here, Appellant argues that Gakovic’s die pin is not configured to
promote the flow of material about its circumference and would not be used
in high temperature environments required for plastic extrusion. Appellant
does not direct our attention to any evidence in the record establishing that
Gakovic’s die pin is not capable of use to form an inner diameter of a hollow
plastic parison. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”). As we
noted above, Appellant does not contest that Gakovic’s pin has each of the
structural limitations recited in claim 1. Appellant does not identify any
structural feature within claim 1 that promotes flow of material about its
circumference. Indeed, we note features directed to the surface and shape of
the die pin are set forth in dependent claims only. See claims 10–12.
Moreover, in contrast to the anticipation rejection here, we note that
the rejection in Giannelli was one of obviousness under 35 U.S.C. § 103.
Giannelli, 739 F.3d at 1378. Further, the phrase “adapted to” is frequently
used to mean “designed to” or “configured to,” but it can also be used in a
broader sense to mean “capable of” or “suitable for.” Giannelli, 739 F.3d at
1379. In Giannelli, the court explained that the written description made
clear that “adapted to” had the narrower meaning such that the claimed
machine was designed or constructed to be used as a rowing machine in
which the position of the handles relative to lever arms and the resistance
mechanism rendered them “adapted” to be moved by a user’s pulling force.
Id. The court held that there was no question that the chest press of the prior
art did not have handles so adapted to be pulled in a rowing motion. Id. at
1380. Unlike Giannelli, Appellant fails to direct our attention to any design
or construction for the die pin of claim 1 that is specific solely to use in
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forming the inner diameter of a hollow plastic parison, and not for pressing
particulate material, nor do we find any.
Appellant does not substantively argue the limitations of dependent
claims 2, 3, 6, 8, and 9, but merely argues that these claims recite additional
features not disclosed in the prior art. Appeal Br. 17. However, this
“separate” argument amounts to no more than a recitation of the additional
limitations of the dependent claim and a generic denial that the applied
references teach or suggest the additional limitations. We and our reviewing
court have long held that such “argument” does not merit separate
consideration. See, e.g., In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”). Accordingly, we sustain the Examiner’s
anticipation rejection of claims 1–3, 6, 8, and 9 based on Gakovic.
Rejection 3: Obviousness over Gakovic
The Examiner rejects claims 7 and 10–13 under 35 U.S.C. § 103 as
unpatentable over Gakovic.
The Examiner concludes that although Gakovic fails to disclose that
the free end of the die pin has a generally frustoconical shape with a rounded
tip as recited in claim 7, the ordinary artisan would have found such to be a
matter of obvious design choice “dependent on multiple factors which are
well within the skill of the routineer in the art.” Ans. 6.
In addition, the Examiner determines that although Gakovic fails to
expressly disclose that the ceramic head member of the die pin has an outer
surface finish of between about 4 RMS and about 275 RMS as recited in
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claim 10, it nonetheless has such a surface finish given the similarities in the
materials of Appellant’s and Gakovic’s die pins. Ans. 6–7.
The Examiner further concludes that although Gakovic fails to
disclose that the ceramic head member of the die pin has a tapered shape or a
cylindrical base portion and a frustoconical end portion as recited in claims
11 and 12, the ordinary artisan would have found consideration such as size
and shape to be matters of obvious design choice. Ans. 7. However, the
Examiner finds that Gakovic’s ceramic head member has a hollow tip as
recited in claim 13. Id.
Appellant argues that the Examiner fails to provide a rationale as to
what would motivate the ordinary artisan to modify Gakovic’s die pin to
include a frustoconical or tapered shape. Appeal Br. 18. Appellant does not
substantively argue the limitations of dependent claims 7 and 10–13, nor
does Appellant address the Examiner’s rationale based on obvious design
choice. As indicated above, this “separate” argument amounts to no more
than a recitation of the additional limitations of the dependent claim and a
generic denial that the applied references teach or suggest the additional
limitations, which does not merit separate consideration. Lovin supra.
Accordingly, we sustain the Examiner’s obviousness rejection of claims 7
and 10–13 based on Gakovic.
Rejection 4: Obviousness over AAPA in view of Gakovic
The Examiner finds that Appellant admits that the apparatus for
extrusion of molten plastic is not new and that the invention is directed to an
improvement in the die pin used therein. Ans. 7. The Examiner concludes
that because Gakovic discloses a die pin having a composite of a metal base
and a ceramic tip, “the instant apparatus is unpatentable.” Id. at 7–8.
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Appellant disputes the Examiner’s characterization of the disclosure
of Specification paragraphs 3–6 as “Admitted Prior Art.” Appellant argues,
among other things, that this obviousness rejection is improper because
Gakovic is non-analogous prior art. Appeal Br. 15. In this regard, Appellant
asserts that Gakovic is directed to equipment for powder compaction and
teaches a center pin specifically configured to apply compressive force to
form tablets or battery shapes from powdered material. Id. Appellant urges
that this disclosure is in direct contrast to Appellant’s apparatus for extrusion
of molten plastic employing a die pin to form a hollow plastic parison. Id. at
15–16.
In response, the Examiner states that there is no evidence provided by
Appellant proving that Gakovic’s pin is not capable of being used to form an
inner diameter of a hollow plastic parison. Ans. 11. This response is
insufficient to address Appellant’s argument that the obviousness rejection is
improper because Gakovic is non-analogous prior art.
A reference is analogous art if it is either in the field of applicant’s
endeavor, or is reasonably pertinent to the particular problem with which the
inventor was concerned. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006).
The same field of endeavor test “for analogous art requires the PTO to
determine the appropriate field of endeavor by reference to explanations of
the invention’s subject matter in the patent application, including the
embodiments, function, and structure of the claimed invention.” In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004) (reference describing a toothbrush
found to be in the same field of endeavor as a claim to a hairbrush based on
findings regarding function and structural similarity). “A reference is
reasonably pertinent if, even though it may be in a different field from that
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of the inventor’s endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Not only does the Examiner fail to address Appellant’s non-analogous
prior art argument by finding either that Gakovic is from the same field of
endeavor as Appellant or is reasonably pertinent to the particular problem
with which Appellant was concerned, Gakovic is clearly from a different
field of endeavor and is directed to a different problem from Appellant.
Gakovic is directed to the field of powder compaction, whereas Appellant’s
claims are directed to the field of plastic extrusion. Further, Appellant
provides a ceramic head member on a die pin for forming hollow plastic
parisons to address the problem of the accumulation of degraded molten
plastic, whereas Gakovic provides a ceramic head member on a center press
pin to address the problem of a high level of wear on the compaction
surfaces. Compare Spec. ¶¶ 4–6 with Gakovic ¶¶ 10–12.
Therefore, we are persuaded that the Examiner reversibly erred in
maintaining the obviousness rejection of claims 14–17 over the combination
of AAPA and Gakovic. For this reason, we do not sustain this rejection.
CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Examiner’s Answer, the decision of the Examiner rejecting claims 1–3
6, 8, and 9 under 35 U.S.C. § 102(a)(1) as anticipated by Gakovic and claims
7 and 10–13 under 35 U.S.C. § 103 as unpatentable over Gakovic is
affirmed.
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However, the decision of the Examiner rejection claims 1–17 under
35 U.S.C. § 112(b) as indefinite and claims 14–17 under 35 U.S.C. § 103 as
unpatentable over AAPA in view of Gakovic is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–17 112(b) 1–17
1–3, 6, 8, 9 102(a)(1) Gakovic 1–3, 6, 8, 9
7, 10–13 103 Gakovic 7, 10–13
14–17 103 AAPA,
Gakovic
14–17
Overall
Outcome
1–3, 6–13 14–17

TIME PERIOD FOR RESPONSE
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).
AFFIRMED IN PART