Ex Parte Flynn et al

Patent Trial and Appeal Board

Aug 14, 2013

12080974 (P.T.A.B. Aug. 14, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/080,974 04/08/2008 Robin L. Flynn 18981 USA 6867
27081 7590 08/15/2013
OWENS-ILLINOIS, INC.
ONE MICHAEL OWENS WAY, THREE O-I PLAZA
PERRYSBURG, OH 43551-2999
EXAMINER
KEMMERLE III, RUSSELL J
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
08/15/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBIN L. FLYNN
and DAVID L. LEWIS
____________

Appeal 2012-003626
Application 12/080,974
Technology Center 1700
____________

Before HUBERT C. LORIN, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-003626
Application 12/080,974

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On April 26, 2011, the Examiner finally rejected claims 1-13 of
Application 12/080,974 under 35 U.S.C. § 102(b) as anticipated and/or
under 35 U.S.C. § 103(a) as obvious. Appellants1 seek reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35
U.S.C. § 6(b).
For the reasons set forth below, we REVERSE the Examiner’s
rejections. However, we enter a NEW GROUND OF REJECTION with
respect to claims 8, 9, 11, and 12.
BACKGROUND
The ’974 application describes an apparatus for molding the neck
portion of a glass container, including the closure means. Spec. 1. In
particular, the ’974 application describes a neck ring that is used to form a
portion of the molten glass into the final size and geometry of the finished
container’s neck. Id. These inserts can be a pair of semicircular neck ring
sections that together form the neck
ring mold in the apparatus. Id. Figure 1
from the ’974 application is illustrative
and is reproduced at right. Figure 1 is a
perspective view of a neck ring
comprising a pair of semicircular neck
ring sections 12 and 14. Id. at 3. Neck
ring sections 12 and 14 comprise

1 Owens-Illinois, Inc. is identified as the real party in interest (App. Br. 3).
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semicircular neck ring bodies 16 and 18 and inserts 20 and 22. Id. at 4.
Inserts 20 and 22 have internal surfaces that form the closure attachment
feature of the finished container neck. Id. For example, in Figure 1, spiral
recesses that form the threads used to attach a screw cap to the finished
container neck are illustrated.
Claim 1 is representative of the ’974 application’s claims and is
reproduced below:
1. A neck ring for molding a glass container neck finish that
includes at least one closure attachment feature, said neck ring
including:
two semi-annular neck ring halves, each consisting essentially
of a neck ring insert of wear-resistant metal construction, and a
neck ring body of heat-conductive metal construction different
from said wear-resistant metal construction and formed around
said neck ring insert [such] that said neck ring insert is
embedded in said neck ring body,
each of said neck ring halves having a glass-contacting cavity
face that includes a first surface portion formed by said inserts
for molding the at least one closure attachment feature on the
container neck finish and a second surface portion formed by
said bodies for molding portions of the container neck finish
that exclude the at least one closure attachment feature.
(App. Br. 16 (Claims App’x)).2

2 We have inserted the bracketed language so that claim 1 reads in a manner
consistent with our understanding of the claim based upon our review of the
’974 application’s Specification. If prosecution of the ’974 application
continues, we suggest amendment of claim 1.
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Application 12/080,974

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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 5, and 11 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Payne3 (Ans. 4).
2. Claims 11-13 are rejected under 35 U.S.C. § 103(a) as obvious
over Payne (Ans. 5).
3. Claims 2, 6, and 8-10 are rejected under 35 U.S.C. § 103(a) as
obvious over Payne in view of Dakan4 (Ans. 5).
4. Claims 3, 4, and 7 are rejected under 35 U.S.C. § 103(a) as obvious
over Payne in view of Dakan and Sweetland5 (Ans. 6).
DISCUSSION
Rejection 1. The Examiner rejected independent claims 1 and 5 and
dependent claim 11 as anticipated by Payne (Ans. 4).
Appellants present several arguments for reversal of the rejection of
claims 1 and 5 as anticipated by Payne. We need only address the first of
these to resolve the issue before us.
The Examiner found that
Payne discloses a neck ring mold comprising two halves and
including a surface for molding a closure attachment. Payne
discloses the halves include metal inserts which include the
closure attachment detail. (Fig[.] 1, Col[.] 2 lines 44-56,

3 U.S. Patent No. 2,987,854, issued June 13, 1961.
4 U.S. Patent No. 6,840,062 B1, issued Jan. 11, 2005.
5 U.S. Patent No. 5,769,920, issued June 23, 1998.
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Col[.] 3 lines 49-52, Col[.] 5 lines 14-16). This looks to include
the insert being embedded into the neck ring which is formed
around the insert (shown in Fig. 1 where the insert 26 is
embedded into a notch removed from the neck ring 12).
(Ans. 4).
A portion of Payne’s Figure 1 is reproduced below. Figure 1 is a
sectional elevational view of a neck mold assembly in position over blow
mold 19 of a press and blow glass forming machine. Payne col. 2, ll. 24-26.
The neck mold assembly comprises partible neck ring 12 and insert 26. Id. at
col. 2, ll. 45-47; col. 3, ll. 49-51. The Examiner found that partible neck ring
12 corresponds to the neck ring body of claims 1 and 5, while insert 26
corresponds to the claimed insert (Ans. 4).
Appellants argue that Payne does not anticipate claim 1 because
Payne does not describe a neck ring section comprising a neck ring body that
is “formed around said neck ring insert [such] that said neck ring insert is
embedded in said neck ring body” (App. Br. 8-9). Similarly, Appellants
argue that Payne dos not anticipate claim 5 because it does not describe a
process for forming a neck ring that includes the step of “forming [the] neck
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ring bodies around [the] neck ring insert preforms to thereby embed [the]
inserts in [the] bodies” (id.).
The Examiner responds that “the insert of Payne appears to be fitted
into the neck ring body in exactly the same way as the current invention, so
it is unclear how the current invention would be considered embedded in the
neck ring while Payne would not be” (Ans. 7).
We begin, as we must, with the words of the claims. Amazon.com,
Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001)
(“Only when a claim is properly understood can a determination be made . . .
whether the prior art anticipates and/or renders obvious the claimed
invention.”). During examination, claim terms are given their broadest
reasonable construction consistent with the Specification. In general, words
used in a claim are accorded their ordinary and customary meaning.
Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 992
(Fed. Cir. 2007). While we cannot read limitations from the Specification
into the claims, see Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (en banc) (“[A]lthough the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining
the claims to those embodiments.”), the claims must be interpreted in light
of the Specification, see In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
(holding that ignoring the specification in claim construction is
unreasonable).
In this case, we focus upon two words that appear in various forms in
each of the disputed limitations: “form” and “embed.” In the context of
claims 1 and 5, a person of ordinary skill in the art would have understood
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that the ordinary meaning of the word “form” is “to become formed or
shaped.” WEBSTER’S NINTH NEW COLLEGIATE DICTIONARY, 485 (1985); see
also “Form,” OXFORD ENGLISH DICTIONARY, http://www.oed.com/view/
Entry/73422?isAdvanced=false&result=2&rskey=QJhUI3& (accessed
August 9, 2013) (“To give form or shape to; to put into or reduce to shape;
to fashion, mould”). Furthermore, in the context of claims 1 and 5, a person
of ordinary skill in the art would have understood that the ordinary meaning
of the word “embed” is “to enclose closely in or as if in a matrix.”
WEBSTER’S, 405; see also “Embed,” OXFORD ENGLISH DICTIONARY,
http://www.oed.com/view/Entry/60835?redirected
From=embed#eid (accessed August 9, 2013) (To fix firmly in a surrounding
mass of some solid material.”).
The ’974 application’s Specification is consistent with these
meanings. The Specification describes casting or molding the neck ring
bodies either around premade insert, Spec. 4, or molding the insert and neck
ring body simultaneously from metal powders placed in a die and then
sintering the compacted powders to create the neck ring sections, id. at 4-5.
In either case, the neck ring body is shaped against a portion of the insert
such that there is intimate contact between the two components that firmly
fixes the insert in the surrounding mass of the neck ring body.
In view of our construction of the claim terms identified above, we
find that the Examiner erred in finding that Payne describes the claim
elements set forth in claims 1 and 5. While Payne does show that insert 26
fits into a groove or recess in neck ring body 12, see Fig. 1, Payne does not
describe the method, if any, by which insert 26 is attached or connected to
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neck ring body 12. Therefore, Payne does not describe insert 26 as being
embedded in neck ring body 12. Furthermore, Payne does not describe
manufacture of either insert 26 or neck ring body 12. Thus, Payne does not
describe neck ring body 12 as having been formed around insert 26.
Even though Payne is silent on these points, the Examiner did not
argue that the missing limitations were inherent in the assembly described in
Payne. Rather, the Examiner apparently interpreted the claim language at
issue as merely requiring the neck ring body to be shaped to accommodate
the insert. As discussed above, this construction is unreasonably broad when
claims 1 and 5 are interpreted in view of the ’974 application’s
Specification.
We therefore reverse the Examiner’s rejection of claims 1, 5, and 11
as anticipated by Payne.
Rejections 2, 3, and 4. The Examiner’s remaining rejections are for
obviousness over Payne, either by itself or in combination with additional
references. Each of these rejections relies upon the Examiner’s finding that
Payne describes a neck ring section comprising a neck ring body that is
“formed around said neck ring insert [such] that said neck ring insert is
embedded in said neck ring body” (Claim 1) and a process for forming a
neck ring that includes the step of “forming [the] neck ring bodies around
[the] neck ring insert preforms to thereby embed [the] inserts in [the]
bodies.” (Claim 5). As discussed above, the Examiner’s findings were based
on an incorrect claim interpretation. The Examiner did not, therefore,
address whether Payne, either alone or in combination with the other
references, suggests either of these elements. We decline to make any
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findings in this regard in the first instance. Therefore, we also reverse the
rejections of claims 11-13 as obvious over Payne; of claims 2, 6, and 8-10 as
obvious over the combination of Payne and Dakan; and of claims 3, 4, and 7
obvious over the combination of Payne, Dakan, and Sweetland.
NEW GROUND OF REJECTION
Claims 8 and 11 of the ’974 application are reproduced below:
8. The method set forth in claim 5 wherein said second
surface portion is greater than said first surface portion.
11. The neck ring set forth in claim 1 wherein said second
surface portion is greater than said first surface portion.
(App. Br. 18 (Claims App’x)).
During prosecution, a claim is examined for compliance with 35
U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(b)) by determining whether the
claim meets threshold requirements of clarity and precision. In re Skvorecz,
580 F.3d 1262, 1268 (Fed. Cir. 2009) (citing M.P.E.P. § 2173.02). That
provision requires that “[t]he specification shall conclude with one or more
claims particularly pointing out and distinctly claiming the subject matter
which the inventor or a joint inventor regards as the invention.” 35 U.S.C.
§ 112(b).
We conclude that clams 8 and 11 do not fulfill this requirement. These
claims require that the second surface portion of the claimed invention is
superior to the first surface portion in some respect, but do not specify the
property or properties that form the basis for the comparison. Based upon
our review of the ’974 application’s Specification, there are at least two
properties that could form the basis of the claimed comparison: wear
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resistance and heat extraction, see Spec. 5. Because neither the claim
language nor the Specification provides a basis for determining which of
these properties is the subject of claims 8 and 11, we reject these claims as
indefinite. Furthermore, claim 9 depends from claim 8, and claim 12
depends from claim 11. Thus, claims 9 and 12 include the indefinite claim
limitations present in their parent claims and also are rejected as non-
compliant with 35 U.S.C. § 112(b).
CONCLUSION
For the reasons set forth above, we have reversed each of the
Examiner’s rejections of the ’974 application’s claims. We have, however,
entered a new ground of rejection with respect to claims 8, 9, 11, and 12.

This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED, NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b)

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