Valles, Vanessa et al.

Patent Trials and Appeals Board

Sep 17, 2019

12812874 - (D) (P.T.A.B. Sep. 17, 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.
12/812,874 10/19/2010 Vanessa Valles BIIP0104PUSA 1736
22045 7590 09/17/2019
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
GRANO, ERNESTO ARTURIO
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
09/17/2019 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VANESSA VALLES, DANIEL PEIRSMAN, and
SARAH VAHOVE1
____________________

Appeal 2019-001807
Application 12/812,874
Technology Center 3700
____________________

Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Vanessa Valles et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 16–24.2 We have jurisdiction
under 35 U.S.C. § 6(b).

We REVERSE.

1 Appellants identify the real party in interest as Anheuser Busch INBEV
S.A. Appeal Br. 1.
2 Claims 25 and 26 are withdrawn from consideration. Final Act. 1; see
also Appeal Br. 3.
Appeal 2019-001807
Application 12/812,874

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BACKGROUND
Appellants’ invention relates to a closure having a pierceable part that
is used for sealing a container. Claim 16, reproduced below, illustrates the
claimed invention, with certain limitations italicized:
16. A container containing a carbonated beverage to be
dispensed using a home appliance, said container comprising an
opening and being provided with a closure for sealing said
opening, said closure having a base comprising a pierceable part,
the pierceable part being pierceable by insertion therethrough of
a dispensing tube, said pierceable part being defined by a
sidewall extending transversally with respect to the base and a
bottom, at least one of said sidewall and bottom comprising
several lines of weakened material strength dividing the at least
one of said sidewall and bottom in several wedge formed parts,
wherein a side of said piercable part facing outside the container
when the closure is correctly applied thereon is provided with an
overmold having an elastic material that at least partially covers
the side to form a seal with respect to the dispensing tube inserted
in the container through the pierceable part for preventing
leakage from inside the container to outside the container during
dispensing of liquid through said dispensing tube.

REJECTIONS
I. Claims 16–22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Stenger (US 4,784,299, iss. Nov. 15, 1998), Anderson
(US 7,435,389 B2, iss. Oct. 14, 2008), and Parsons (US 5,370,252, iss. Dec.
6, 1994). Final Act. 3.
II. Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Stenger, Anderson, Parsons, and Reichel (US 2,085,392,
iss. June 29, 1937). Final Act. 5.

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ANALYSIS
Rejection I – Stenger, Anderson, and Parsons
The Examiner finds that the combined teachings of Stenger and
Anderson disclose most of the limitations of the container of claim 16, but
do not disclose that a pierceable part of the container is provided with an
overmold having an elastic material that forms a seal with respect to the
dispensing tube inserted in the container through the pierceable part. Final
Act. 4. The Examiner relies on Parsons to teach an overmold, and concludes
that it would have been obvious to modify Anderson to apply “an additional
layer of elastic material at least partially over the pierceable part to ensure
re-sealing of the closure after initial piercing to prevent leakage.” Id. at 5.
Appellants argue that the references do not teach the claimed
overmold because “overmolding has a very clear meaning to a person of
ordinary skill in the art - molding one material onto another material during
a molding process.” Appeal Br. 4. According to Appellants, the upper
portion 3 and lower portion 4 of Parsons are not overmolded because they
are connected by a ring or seal 8, which “allows for ‘separating’ and
‘remov[al]’ of the upper portion 3 from the lower portion 4 with operator
intervention.” Id. (alteration in original) (emphasis omitted) (citing Parsons,
3:30–32 and 48–50). Appellants contend that separability in Parsons “is
exemplified by the clear gap between the upper portion 3 and the lower
portion 4 in Figure 1,” and by air cushion 6 between upper and lower
portions. Id. at 4–5. Appellants assert that Parsons’ disclosure of separable
elements with a gap therebetween, “is in clear contrast to an ‘overmold’ in
which one material is molded onto another material, which would inhibit or
constrain any ability for an operator to separate or remove the two
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materials.” Id. at 5. Appellants provide Exhibit A (Tony Rogers, Everything
You Need To Know About Overmolding Prototypes, Creative Mechanisms
Blog (2015) (“Rogers”), in support of their definition of “overmold.” Id. at
4.
The Examiner responds that an overmold is “an elastic material or
part applied on a side of another part which can function to protect
weakening lines, aid against permeation prior or during piercing, and to
provide a sealing function.” Ans. 4. According to the Examiner, even if an
overmolding process is implied, it would be a product-by-process limitation
that is limited to the resultant product, which is the same product taught by
Parsons. Ans. 5–6 (citing In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)
(“A product-by-process limitation adds no patentable distinction to the
claim, and is unpatentable if the claimed product is the same as a product of
the prior art.”).
Appellants reply that “[t]he plain and ordinary meaning of ‘overmold’
cannot be interpreted merely to mean ‘a material or part applied on the side
of another part,’” because “[s]uch a claim construction is unreasonably
broad. The term ‘overmold’ clearly has a more narrow meaning.” Reply Br.
2.
Appellants have the better position. Where the manufacturing process
steps would be expected to impart distinctive structural characteristics to the
final product, the structure implied by the process steps should be considered
when assessing the patentability of product-by-process claims over the prior
art. In re Garnero, 412 F.2d 276, 279 (CCPA 1979) (holding “interbonded . .
. by interfusion” to limit structure of the claimed composite and noting that
terms such as “welded,” “intermixed,” “ground in place,” “press fitted,” and
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Application 12/812,874

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“etched” are capable of construction as structural limitations). Here,
Appellants’ Specification discloses that “the pierceable part 4 can be entirely
or partially over-moulded with an elastic material.” Spec. 6:1–2; see also
Fig. 1A. The term “overmold” requires more than just placing one portion,
namely, layer 12 of Parsons over another portion, namely, pierceable part 5
of Parsons. Specifically, Appellants provide evidence that one part being
molded over another part requires that the two parts form a chemical bond as
part of the molding process. See Rogers 2–3. This is consistent with
Appellants’ assertion that “an ‘overmold’ in which one material is molded
onto another material, . . . would inhibit or constrain any ability for an
operator to separate or remove the two materials.” Appeal Br. 5.
Parsons discloses a “cap … comprising an upper portion and lower
portion, the upper portion being detachable from the lower portion and
allowing access to the interior of the container in such a detached position.”
Parsons 2:36–41. In the embodiment of Figures 1, 2, and 4B, Parsons
discloses that “upper portion 3 is provided with a ring or seal 8 around the
elongate member which mates with a corresponding depression in the lower
portion 4 to provide additional sealing to the cap in its closed position.” Id.
at 3:26–30. “[A]n air space or cushion 6 is also provided between the barrier
5 [of lower portion 5] and the upper portion 3 when the cap is in a closed or
fitted position.” Id. at 3:58–60.
We agree with Appellants that additional layer 12 of upper portion 3
of Parsons is not an overmold because Parsons’ connection does not include
a chemical bond or otherwise infer such bond by inhibiting or constraining
any ability for an operator to separate or remove the two materials. Absent
evidence that Parsons includes a chemical bond or otherwise inhibits or
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constrains any ability for an operator to separate or remove upper portion 3
from lower portion 4, the Examiner has not established that Parsons imparts
the distinctive structural characteristic of a chemical bond that is obtained by
overmolding. Accordingly, the Examiner has not established that Parsons
discloses an overmold as claimed in claim 16.
We do not sustain the Examiner’s rejection under 35 U.S.C. § 103 of
claims 16–22 as unpatentable over Stenger, Anderson, and Parsons.

Rejection II – Stenger, Anderson, Parsons, and Reichel
Rejection II additionally pertains to claims that depend from
independent claim 16. The Examiner does not rely on Reichel in any
manner that would cure the deficiencies of Stenger, Anderson, and Parsons,
and we, therefore, do not sustain Rejection II for the reasons set forth above
regarding Rejection I.

DECISION
We REVERSE the Examiner’s rejection of claims 16–22 as
unpatentable over Stenger, Anderson, and Parsons.
We REVERSE the Examiner’s rejection of claims 23 and 24 as
unpatentable over Stenger, Anderson, Parsons, and Reichel.

REVERSED