Ex Parte Escobar et al

Patent Trial and Appeal Board

Apr 19, 2016

12758219 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121758,219 04/12/2010 Miguel F. Escobar
23413 7590 04/21/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TNA0004US2 4511
EXAMINER
VOLZ, ELIZABETH J
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIGUEL F. ESCOBAR and ANTONIO MACHUCA
Appeal2014-001989 1
Application 12/758,2192
Technology Center 3700
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1, 2, 4--10, 12, and 13. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
Aug. 2, 2013), the Examiner's Answer ("Ans.," mailed Sept. 27, 2013), the
Reply Brief ("Reply Br.," filed Nov. 27, 2013), the Final Office Action
("Final Act.," mailed Oct. 2, 2012), and the Specification ("Spec.," filed
Apr. 12, 2010).
2 According to the Appellants, the real party in interest is Tapones Escobar,
S.A. Appeal Br. 2.
Appeal2014-001989
Application 12/7 5 8,219
STATEMENT OF THE CASE
The Appellants' invention "relates to container closures using natural
looking synthetic cork" and to an improved synthetic cork. Spec. i-fi-12, 20.
Claims 1, 5, and 13 are the independent claims on appeal. Claim 1,
which we reproduce below, is illustrative of the subject matter on appeal:
1. A synthetic cork, comprising a shank portion, having a
tip portion and a base portion, the base portion including a radial
contour, the radial contour providing increased radial surface
area relative to a smooth radial base portion, wherein a lower part
of the shank portion adjacent the radial contour has an increased
diameter configured to provide a seal with a portion of a stopper
cap.
Appeal Br. 8 (Claims App.).
REJECTIONS
Claims 1, 2, 4--7, 9, 10, and 12 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hirota (US 5,803,285, iss. Sept. 8,
1998) and Baban (US 2007/0202327 Al, pub. Aug. 30, 2007). Final Act. 2;
Ans. 2.
Claims 8 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hirota, Baban, and Penn (US 2,094,021, iss. Sept. 28,
1937). Final Act. 4; Ans. 5.
ANALYSIS
We have reviewed the Examiner's rejections in light of the
Appellants' contentions in the Appeal and Reply Briefs. We are not
persuaded by the Appellants' contentions for the below reasons.
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Application 12/7 5 8,219
Claims 1-3
The Appellants contend the Examiner's rejection of claim 1 is in error
because the combination of Hirota and Baban does not disclose "a cork
having a base portion with radial contouring, and also not a shank portion
adjacent the radial contour/base portion having an increased diameter to
provide a seal with the cap," as required by the claim. Appeal Br. 5; see also
Reply Br. 2.
The Examiner, as identified in annotated Figure 9 of Hirota
(reproduced below), finds that Hirota discloses a cork comprising a shank
portion having a tip portion and a base portion, the base portion including a
radial contour, wherein a lower part of the shank portion adjacent to the
radial contour has an increased diameter configured to provide a seal with a
portion of a stopper cap. Final Act. 2.
,_, ' .. ~ ,. -~ . ..., ... ···-·
Figure 9 (annotated) showing the radial contour, base, shank, and tip.
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Application 12/7 5 8,219
The Examiner further finds "[w]hen the steps 35 (figure 8N8b) make
contact with the cork, the cork then forms radial contours (figure 9) which
follow the shape of the cap." Ans. 6.
Hirota discloses a cork cap with a cork press-fitted in the cap. See
Hirota, Abstract. In Figure 9, Hirota depicts a cap with a cork 24, a radially
inwardly extending step 35, and vertical ribs 25. Hirota further discloses
"each vertical rib 25 has a radially inwardly extending step 35 midway of it
length." Hirota, col. 4, 11. 20-22. As can be seen from Figure 9, the "lower
part" of the "shank portion," i.e., the part furthest from the tip 28, is adjacent
to the radial contour and extends out such that the lower part has an
increased diameter (compared to the radially inward part) that is configured
to provide a seal. See Ans. 9; see also Hirota, col. 2, 1. 65 - col. 3, 1. 2.
Thus, the Appellants' argument that Hirota discloses "a vertical rib
biting into a standard cork" and not a cork with a radial contour and shank
portion as claimed (Appeal Br. 5; Reply Br. 2) is not persuasive because
Hirota specifically discloses a cork having a radial contour. Further, the
Appellants do not provide adequate evidence or reasoning why the
Examiner-identified shank portion of Hirota is in error. Thus, the
Appellants' contention is unpersuasive as the Appellants have not provided
adequate evidence or technical reasoning why Hirota does not disclose a
shank portion adjacent to the radial contour. Similarly, the Appellants do
not provide adequate evidence or reasoning why the Examiner's finding that
Hirota discloses the lower part of the shank portion having a larger diameter
configured to provide a seal is in error.
Thus, we are not persuaded of error on the part of the Examiner, and
the rejection of claim 1 is sustained. The Appellants provide no separate
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Application 12/7 5 8,219
arguments against the rejection of dependent claims 2 and 3, and thus the
rejection of claims 2 and 3 is also sustained for the same reasons we sustain
the rejection of claim 1.
Claim 4
We find unpersuasive the Appellants' contention that Hirota does not
disclose the limitation of claim 4 of the base portion including a flat bottom.
Appeal Br. 6; Reply Br. 2. The Appellants' arguments that "since Hirota
simply presses the cork into the cap, both ends would be beveled (especially
considering the compression of the (synthetic) cork as it is pressed into the
cap)" (Appeal Br. 6), and that "the fact that the standard cork is press fitted
(particularly a synthetic cork) means that the end will bulge and not be flat"
(Reply Br. 2) are opinions without any factual or evidentiary bases.
Furthermore, the claim does not require that the base portion is always flat;
the cork having a flat bottom before being pressed into the cork would meet
the limitation.
Thus, we are unpersuaded of error on the part of the Examiner, and
we sustain the rejection of claim 4.
Claims 5-7 and 10--12
We find unpersuasive the Appellants' contention that Hirota does not
disclose the limitation of claim 5 that "the radial contour is configured with
said hole with space for the application of adhesive between side portions of
said hole and said radial contour" because "Hirota is incapable of application
of adhesive" since the cork being pressed into the cap leaves no space
between the cork and cap due to the "friction fit." Appeal Br. 6; see also
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Appeal2014-001989
Application 12/7 5 8,219
Reply Br. 2. We agree with the Examiner that Hirota includes enough space
in between the radial contour and hole (even a minimal amount) for the
purpose of application of adhesive. See Ans. 6. Thus, Hirota (and Baban)
teaches the structure of the cork as claimed. Further, the Appellants provide
no evidence or reasoning why the "friction fit" of Hirota would prevent any
space whatsoever for application of an adhesive.
Thus, we are unpersuaded of error on the part of the Examiner, and
we sustain the Examiner's rejection of claim 5. The Appellants provide no
separate arguments against the rejection of dependent claims 6, 10, and 11,
and thus the rejection of claims 6, 10, and 11 is also sustained for the same
reason we sustain the rejection of claim 5. The Appellants argue the
rejection of claim 7, dependent from claim 5, is in error for the same reasons
as the rejection of claim 1 is in error. Appeal Br. 6. Thus, for same reasons
we sustain the rejections of claim 1 and claim 5, we also sustain the rejection
of claim 7. The Appellants argue the rejection of claim 12, dependent from
claim 5, is in error for the same reason as the rejection of claim 4 is in error.
Appeal Br. 6-7. Thus, for same reason we sustain the rejection of claim 4,
we also sustain the rejection of claim 12.
Claim 9
We find unpersuasive the Appellants' contention that Hirota does not
disclose the limitation of claim 9, dependent from claim 5, of the cap portion
including smooth walls within the cap portion hole because "Hirota does not
have smooth walls precisely because it uses projections on those walls to
bite into the cork" (Appeal Br. 6) and because "Hirota's walls have vertical
and horizontal fins" (Reply Br. 2). We note that the claim limitation does
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Application 12/7 5 8,219
not require the entire wall to be smooth, but that the cap "includes smooth
walls within said cap portion hole." Appeal Br. 9 (Claims App.). The
Examiner finds that Hirota' s portions of the wall in between the steps are
smooth, and thus meets the limitation. See Ans. 6; see also Hirota, Fig. 8A.
The Appellants provide no evidence or reasoning why the Examiner's
finding of portions ofHirota's wall being smooth is in error.
Therefore, we are not persuaded of error on the part of the Examiner,
and we sustain the rejection of claim 9.
Claims 8 and 13
The Appellants' argument that the rejection of claim 8 is in error for
the same reasons the rejection of claim 5, from which claim 8 depends, is
unpersuasive for the same reasons we do not find the rejection of claim 5 to
be in error. The Appellants' argument the rejection of claim 8 is in error
because Hirota "fails to teach an expanded region on the shank adjacent the
base/radial contour that is configured to seal against the cap" as presented
against the rejection of claim 1 (Appeal Br. 7), is not persuasive for the same
reasons discussed above with respect to claim 1. The Appellants' argument
that the rejections of claims 8 and 13 are in error because Penn does not cure
the deficiency of "how Hirota would not accept glue due to the nature of the
press fit" as discussed with respect to claim 4 (Appeal Br. 7; see also Reply
Br. 2-3), is also not persuasive for the same reasons discussed above with
respect to claim 4.
Thus, we are not persuaded of error on the part of the Examiner, and
we sustain the rejections of claims 8 and 13.
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DECISION
The Examiner's rejections of claims 1-13 under 35 U.S.C. § 103(a)
are AFFIRMED.
No time period of 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)(l )(iv).
AFFIRMED
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