Paul Kelley et al.

Patent Trials and Appeals Board

Jul 23, 2019

14744856 - (D) (P.T.A.B. Jul. 23, 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.
14/744,856 06/19/2015 Paul Kelley 082116.0709 5213
114699 7590 07/23/2019
Baker Botts LLP
30 Rockefeller Plaza
New York, NY 10112-4498
EXAMINER
CASTRIOTTA, JENNIFER
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
07/23/2019 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 PAUL KELLEY,
KENT GOSS,
PHILIP SHEETS,
TED LYON, and
CHARLES A. RYL-KUCHAR1
__________

Appeal 2019-000247
Application 14/744,856
Technology Center 3700
__________

Before MICHAEL L. HOELTER, JAMES P. CALVE, and
LISA M. GUIJT, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a Decision on Appeal, under 35 U.S.C. § 134(a), from the
Examiner’s Final Rejection of claims 30–38 and 40–44, which constitute all
the claims pending in this Application. Final Act. 1 (Office Action
Summary). Additionally, the Examiner states, “[c]laims 32, 38, 40, and 41
are objected to as being dependent upon a rejected base claim, but would be
allowable if rewritten in independent form including all of the limitations of

1 “The real party in interest is Graham Packaging Company L.P.” App. Br.
2. We refer to the appealing party as “Appellant.”
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the base claim and any intervening claims.” Final Act. 8; see also Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons explained below, we REVERSE the Examiner’s
rejections of these claims under 35 U.S.C. §§ 102(b) and 103(a).
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to a container handling
system and a process for filling, capping and cooling hot-filled containers
with a projection.” Spec. 1:3–4. Apparatus claim 30 is the sole independent
claim, is illustrative of the claims on appeal, and is reproduced below.
30. A hot-fillable plastic container comprising:
a threaded neck portion configured to receive a threaded
cap to sealingly enclose a product hot-filled into the plastic
container;
a body portion including a dome portion adjacent the
threaded neck portion, a first label stop portion adjacent the
dome portion, a second label stop portion, a sidewall between
the first and second label stop portions to accommodate
placement of a label, a supplemental vacuum panel formed in
the sidewall and configured to remove a first portion of an
induced vacuum created within the plastic container in response
to cooling after the plastic container is hot-filled and capped;
and
a base portion including a standing surface for
conveyance of the plastic container on a flat surface and having
a moveable element arranged at a bottom end thereof, the
moveable element of the base portion being configured to move
from a first initial pre-filling position to a second position in
response to a selectively-applied pushing force to remove a
second portion of the vacuum, the second position being more
toward an interior of the plastic container than the first initial
pre-filling position,
wherein the first portion of the vacuum and the second
portion of the vacuum constitute substantially the entire
vacuum.
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REFERENCE RELIED ON BY THE EXAMINER
Krishnakumar et al. US 5,971,184 Oct. 26, 1999
THE REJECTIONS ON APPEAL
Claims 30, 31, 33, 35–37, 42, and 44 are rejected under pre-AIA 35
U.S.C. § 102(b) as anticipated by Krishnakumar.
Claims 34 and 43 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Krishnakumar.
ANALYSIS
The rejection of 30, 31, 33, 35–37, 42, and 44
as anticipated by Krishnakumar
Sole independent claim 30 (and hence dependent claims 31, 33, 35–
37, 42, and 44) includes the limitation of a container having a movable
element in its base that is “configured to move . . . in response to a
selectively-applied pushing force.” The Examiner relies on Krishnakumar
for disclosing the teachings of claim 30, but acknowledges that
“Krishnakumar does not teach the moveable element of the base portion
being configured and operative to move . . . in response to a selectively-
applied pushing force.”2 Final Act. 4. Instead, the Examiner deems claim
30 to be a “product-by-process” claim because, as per MPEP § 2113, “[i]f
the product in the product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.” Final Act. 2; see also id. at 4, 5.

2 Perhaps bolstered by this admission, Appellant contends, “claim 30 cannot
be anticipated by Krishnakumar at least for the reasons acknowledged in the
Final Office Action, i.e., that Krishnakumar does not disclose or suggest this
structural feature.” Reply Br. 3.
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So as not to just pre-suppose claim 30 is a product-by-process claim
simply because the end products are allegedly the same (see above), the
Examiner justifies this product-by-process characterization stating that
because “claim 30 is drawn to a hot-fillable plastic container . . . the
limitations drawn to the moveable element being pushed . . . is considered
product-by-process language.” Ans. 3.
Appellant disagrees stating, “[t]he Federal Circuit has ruled that ‘a
first handle portion adapted to be moved ... by a pulling force’ is a structural
element entitled to patentable weight. In re Giannelli, 739 F.3d 1375 (Fed.
Cir. 2014).” App. Br. 10; see also Reply Br. 6. Appellant simply asks “why
the claims of this application should be treated differently.”3 App. Br. 10.
Appellant contends that the recited base portion that is moved in response to
a pushing force “is not product-by-process language” but instead, claim 30
“recites structural features in accordance with the interpretation of In re
Giannelli.”4 App. Br. 11. In other words, according to Appellant, the claim
language stating that the base portion is “configured to move” by the

3 “As with In re Giannelli, claim 30 likewise recites a structural feature
configured to be moved in a particular manner.” App. Br. 11.
4 Appellant further references In re Nordt Dev. Co., LLC, 881 F.3d 1371,
1375–76 (Fed. Cir. 2018) which held that “words of limitation that can
connote with equal force a structural characteristic of the product or a
process of manufacture are commonly and by default interpreted in their
structural sense, unless the patentee has demonstrated otherwise.” Reply Br.
4–5 (emphasis added). Here, Appellant states, “[i]ndeed, the plain and
ordinary meaning of the claim language recites the structure or configuration
of the moveable element, rather than the process of making the claimed
container.” Reply Br. 2.
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application of a pushing force is structural language and as such, should be
provided patentable weight. See Reply Br. 4.
Appellant explains (and as acknowledged by the Examiner) that
Krishnakumar discloses a dome in the base “that deflect[s] inwardly in
response to negative (vacuum) pressure within the container, i.e., the pulling
force of the vacuum pressure.” App. Br. 12; see also Krishnakumar 3:44–
45. Hence, because Krishnakumar does not teach the “pushing” limitation
of claim 30, Appellant contends that claim 30 “cannot be anticipated by
Krishnakumar.” App. Br. 12.
Appellant also argues that for claim 30 to be considered a product-by-
process claim, this claim “would need to be directed to a hot-filled, cooled,
and capped container.” Reply Br. 4. This is in contrast to Appellant’s claim
language which is directed to “a hot-fillable container.” Reply Br. 4. We
also note that claim 30 lacks any recitation to the container being cooled
and/or capped in order for the base dome to move as is required for the
process/device of Krishnakumar (although we further note that claim 30
incorporates the term “comprising” meaning that other elements may be
added and still form a construct within the scope of the claim).
All-in-all, we believe Appellant has the better argument. This is
because Appellant recites a base element that is configured to move upon the
application of a specific force, which, as per our reviewing court, is to be
interpreted in it structural sense “by default.” See Nordt, 881 F.3d at 1375.
Consequently, because Krishnakumar discloses a base element that is not
configured in this manner, the teachings of Krishnakumar do not rise to the
level of sustaining the Examiner’s anticipation rejection of claim 30.
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Accordingly, we do not sustain the Examiner’s rejection of claims 30,
31, 33, 35–37, 42, and 44 as being anticipated by Krishnakumar.
The rejection of claims 34 and 43
as unpatentable over Krishnakumar
The Examiner relies on Krishnakumar as above but acknowledges that
Krishnakumar lacks the disclosure of the additional limitations recited in
dependent claims 34 and 43. See Final Act. 7, 8. Because we are not
persuaded Krishnakumar anticipates parent claim 30, and because the
Examiner does not employ Krishnakumar in a manner that would have
rendered claim 30 obvious (as well as provide an explanation of such), we
likewise do not sustain the Examiner’s rejection of claims 34 and 43.
DECISION
The Examiner’s rejection of claims 30, 31, 33, 35–37, 42, and 44 as
anticipated by Krishnakumar is reversed.
The Examiner’s rejection of claims 34 and 43 as unpatentable over
Krishnakumar is reversed.
REVERSED