Ex Parte Mastio et al

Patent Trial and Appeal BoardApr 24, 2015

12171048 (P.T.A.B. Apr. 24, 2015)

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. 12/171,048 07/10/2008 Michael J. Mastio 046943.00065 2212 66811 7590 04/27/2015 BANNER & WITCOFF, LTD. and ATTORNEYS FOR CLIENT NO. 006943 10 SOUTH WACKER DR. SUITE 3000 CHICAGO, IL 60606 EXAMINER TRUONG, THANH K ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 04/27/2015 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 MICHAEL J MASTIO, REI-YOUNG AMOS WU, MICHAEL F. MCGOWAN, SUBODH K. RANIWALA, GREGORY SCHIMMEL, and RICHARD O. POWELL ____________ Appeal 2013-003577 Application 12/171,048 Technology Center 3700 ____________ Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and CYNTHIA L. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s final* rejection of claims 1, 3, 4, and 6–26. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 “The real party in interest is Stokely-Van Camp, Inc.” (Appeal Br. 2.) Appeal 2013-003577 Application 12/171,048 STATEMENT OF THE CASE The Appellants’ invention is directed to “[a] method and apparatus for sterilizing caps during a capping operation.” (Spec. ¶ 11.) Illustrative Claim 1. An apparatus comprising: a capper wheel having a capper chuck adapted to receive a cap to be placed on a container; a first capper wheel e-beam emitter operably associated with the capper wheel, the first capper wheel e-beam emitter emitting a first e-beam field; wherein the capper wheel moves the capper chuck into the first e-beam field at a start position adapted to be prior to receiving the cap and wherein the first e-beam field is configured to aid in sterilizing the capper chuck; and a second e-beam emitter operably associated with the capper wheel, the second e-beam emitter emitting a second e- beam field wherein the capper wheel moves the capper chuck into the second e-beam field at a cap loaded position, wherein the second e-beam emitter is configured to aid in sterilizing a cap as the cap is rotated in the second e-beam field. Rejection The Examiner rejects claims 1, 3, 4, and 6–26 under 35 U.S.C. § 103(a) as unpatentable over Bernhard (US 2006/0037286 A1, pub. Feb. 23, 2006) and Dumargue (US 2005/0158218 A1, pub. July 21, 2005). ANALYSIS Independent claims 1, 14, 17, 18, and 26 set forth, generally, apparatuses or methods wherein a chuck and/or a cap are sterilized via one or more e-beam emitters. (Appeal Br., Claims App.) Independent claim 20 2 Appeal 2013-003577 Application 12/171,048 sets forth a method wherein a chuck and a cap are sterilized. (Id.) The Examiner finds that Bernhard discloses a capping wheel 106 having a plurality of chucks for applying caps to bottles; and that Dumargue discloses sterilizing “bottles /grippers /wheels” with e-beam emitters. (See Answer 3– 4.) According to the Examiner, it would have been obvious to one of ordinary skill in the art to use Dumargue’s e-beam emitters to sterilize Bernhard’s capping wheel 106. (Id. at 4.) Independent claims 1, 17, 18, and 26 each further recite limitations related to sterilizing a chuck prior to it receiving a cap. (Appeal Br., Claims App.)2 Independent claims 1, 14, 17, 20, and 26 each further recite limitations relating to rotation of a cap while in an e-beam field and/or while being sterilized. (Appeal Br., Claims App.)3 The Examiner explains that it would have been obvious “to move the electron beam emitters to aim at any point(s) that would provide the most effective coverage for the desired sterilization.” (Answer 6.) According to the Examiner, “rearranging parts of an invention” and “mere duplication” of essential working parts “involves only routine skill in the art.” (Id.) 2 Claim 1 recites that the chuck moves into a first e-beam field “at a start position prior to receiving the cap,” claims 17 and 26 each recites that an e- beam field “is directed at the capper chuck at a start position,” and claim 18 recites that an e-beam emitter is “directed at a capper chuck” (and that another beam emitter is directed to an inside area of a cap that is placed on a filled container). (Appeal Br., Claims App.) 3 Claim 1 recites that an e-beam emitter “is configured to aid in sterilizing a cap as the cap is rotated” in its emitted e-beam field, claim 14 recites that a chuck, “adapted to receive a cap,” “rotates about a central axis” while the chuck is in an e-beam field, claims 17 and 26 each recite that a chuck “is adapted to rotate [a] cap loaded therein” in an e-beam field, and claim 20 recites the step of “rotating [a] cap” with a chuck “while simultaneously sterilizing the inside surface of the cap.” (Appeal Br., Claims App.) 3 Appeal 2013-003577 Application 12/171,048 The Appellants argue that the Examiner fails to establish a prima face case of obviousness. (Appeal Br. 4.) The Appellants assert that the prior art does not teach or suggest sterilizing a chuck prior to it receiving a cap, as set forth in independent claims 1, 17, 18, and 26. (Id. at 5–6.) The Appellants also assert that the prior art does not teach or suggest rotating a cap while it is being sterilized, as set forth in independent claims 1, 14, 17, 20, and 26. (Id.) We are persuaded by the Appellants’ position. Even if we assume, arguendo, that it would have been obvious to aim Dumargue’s e-beam emitters to “any point(s)” in Bernhard’s capping wheel 106 that would provide “the most effective coverage,” the Examiner fails to establish a prima facie case of obviousness. The Examiner fails because, on the record before us, there is no adequate explanation of why one of ordinary skill in the art would appreciate that pre-cap-receipt sterilization of a chuck (i.e., as recited in independent claims 1, 17, 18, and 26) would play a role in “the most effective coverage” proffered by the Examiner. Likewise, on the record before us, there is no adequate explanation of why one of ordinary skill in the art would realize that concurrent-with-rotation sterilization of a cap (i.e., as recited in independent claims 1, 14, 17, 20, and 26) would contribute to “the most effective coverage.” As such, the Examiner does not show, sufficiently, that it would have been obvious to one of ordinary skill in the art to aim Dumargue’s e-beam emitters in the claimed manner. Thus, we do not sustain the Examiner’s rejection of claims 1, 3, 4, and 6–26. 4 Appeal 2013-003577 Application 12/171,048 DECISION We REVERSE the Examiner’s rejection of claims 1, 3, 4, and 6–26. REVERSED JRG 5