Ex Parte Selina et al

Patent Trial and Appeal Board

Oct 27, 2016

12898768 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/898,768 10/06/2010
48980 7590 10/31/2016
YOUNG BASILE
3001 WEST BIG BEA VER ROAD
SUITE624
TROY, MI 48084
FIRST NAMED INVENTOR
John R. SELINA
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.
LTC-144-A 4433
EXAMINER
CARROLL, JEREMY W
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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):
docketing@youngbasile.com
audit@youngbasile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN R. SELINA and RANDALL J. CORBETT
Appeal2014-007757
Application 12/898,768
Technology Center 3700
Before: WILLIAM A. CAPP, LEE L. STEPINA, and
AMANDA F. WIEKER, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
24--30. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants indicate that the present appeal is related to an appeal in US
Application Serial No. 13/048,986 (Appeal No. 2014-006006, Decision
mailed October 4, 2016, Affirming-In-Part).
Appeal2014-007757
Application 12/898,768
CLAIMED SUBJECT MATTER
The claims are directed to a collapsible spout for a container and
method of manufacture thereof. Spec. 1 (Title). Claim 24, reproduced below,
illustrates the claimed subject matter:
24. A closure having a manually operable plastic spout
attached thereto and extendable along an extension axis
compnsmg:
a molded plastic closure having a deck with a top plane
and a cylindrical flange forming an opening therein, the flange
being substantially flush with the top plane of the deck;
an extendable plastic spout installed in said opening and
having stable collapsed and extended conditions and comprising
an integrally continuous plurality of annular wall sections of
substantially equal axial length and thickness, but of
progressively smaller diameter interconnected in series by
annular hinges of thinner, more flexible construction than said
wall sections to produce over-center inversion of every other one
of said wall sections during extension and collapse;
all of said wall sections in the collapsed condition, lay
concentrically within one another with the top annular edges of
the collapsed wall sections in a common plane perpendicular to
the extension axis and no higher than the top plane of the deck in
the spout being molded in the stable collapsed condition;
the innermost section in the collapsed condition having
threads formed thereon;
a cap having a cylindrical neck portion and a larger
diameter planar top portion, said neck portion having threads
mating with the threads of the innermost spout section to close
the spout, the planar top po 1 iion lying substantially flush with
said top plane when the spout is in the collapsed condition; and
an annular pull ring formed integrally with the top portion
of the cap and in circumferentially surrounding relationship
therewith;
said cap top portion and said pull ring together being of
sufficient diameter to substantially fill the cylindrical opening in
said closure deck and create a substantially flush deck structure.
Appeal Br. 17 (Claims App.) (emphasis added).
2
Appeal2014-007757
Application 12/898,768
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sultzer, III et al.
("Sultzer")
Chung et al.
("Chung")
Park
us 5,722,570
US 6,641,007 B2
US 2011/0114679 Al
REJECTION
Mar. 3, 1998
Nov. 4, 2003
May 19, 2011
Claims 24--30 are rejected under 35 U.S.C. 103(a) as unpatentable
over Park, Chung, and Sultzer. 2
OPINION
In an Advisory Action dated February 6, 2014, the Examiner refused
entry of an Amendment filed on January 22, 2014. Adv. Act. 1. 3 Appellants
request entry of the Amendment. Appeal Br. 5. Denial of entry of an
amendment is a petitionable matter and not one properly addressed by the
Board. See 37 C.F.R. § 1.181; 37 C.F.R. § 1.127; see also In re Berger, 279
F.3d 975, 984 (Fed. Cir. 2002), and In re Hengehold, 440 F.2d 1395, 1403
( CCP A 1971) ). Accordingly, we do not reach the issue of whether the
Amendment should be entered.
2 The Final Action (dated December 20, 2013) provides a separate heading
for the rejection of claim 30 as unpatentable over Park, Sultzer, and Chung,
but the references applied are the same as those applied against claims 24--
29. Final Act. 2, 3.
3 The Advisory Action contains a typographical error, listing the date of this
Amendment as January 22, 20.Ll..
3
Appeal2014-007757
Application 12/898,768
Claims 24-29
The Examiner finds that Park discloses most of the features recited in
claim 24, but does not disclose certain features related to the molded plastic
closure deck and annular wall sections, and the Examiner relies on Chung
and Sultzer to remedy these deficiencies. Final Act. 4--5. With regard to
independent claim 24, the Examiner does not make specific findings relating
to structure of the hinges that produces over-center inversion of every other
one of said wall sections during extension and collapse, as recited in claim
24. 4 Id.
Discussing the meaning of the term "over-center" as recited in
claim 24, Appellants state, "[a Jn article, like a Belleville spring, that operates
in an 'over-center' fashion, resiliently resists deformation like a spring until
the strain or movement reaches the halfway point at which it, on its own,
goes forward into the next stable condition, and it behaves in just the same
way when urged in the opposite direction." Appeal Br. 10. Appellants
contend that "no [cited] reference teaches a spout with over-center action
between concentric sections as a result of being 'molded in the collapsed
state."' Appeal Br. 12. Appellants also state that during prosecution,
Appellants provided a Declaration by John R. Selina ("Declaration"), a
named inventor, discussing bi-stability, stating "[m]y invention uses the
principle of bistability in every hinge, thereby producing 'incremental'
stability as the spout is extended and collapsed. Between these increments
4 With respect to dependent claim 25, the Examiner finds that "Sultzer
teaches []hinges [that] have cross-sectional dimensions which are less (FIG
3A, element 34) than the cross-sectional dimensions of said sections (FIG
3A, element 36) thereby to produce over-center inversion." Final Act. 5.
4
Appeal2014-007757
Application 12/898,768
of extension, represented by the inversion of just one section, the spout is
unstable." Appeal Br. 14; Deel. i-f 6.
In response, the Examiner discusses the term "over-center," finding
"[t]here is no special definition present in the specification for the term over-
center therefore the examiner used the plain meaning as to mean, 'above and
in alignment.' As shown in Figure 5 of Park where the spout when fully
extended the top is in alignment with the bottom." Ans. 7.
In reply, Appellants reiterate their discussion of the meaning of the
term "over-center," stating that this term refers to the quality of bi-stability.
Reply Br. 3--4.
We disagree with the Examiner's finding that Park teaches a spout
with the "over-center" function recited in claim 24 because Appellants'
contention that "over-center" requires bistability is persuasive. In this
regard, the Specification states, "[t]he material of the body 24 tends to be
thinner at the pleats and one will note an 'over-center' release as each pleat
is unfolded." Spec. i-f 19. Thus, the term "over-center" requires more than
mere unfolding. Id. The Specification also states, "the spout is extended by
grasping the pull-ring 38 with the cap 36 attached to the collar 30 and
pulling upwardly until the pleats begin to unfold into any of various stable
configurations." Id. i-f 16 (emphasis added). Further, Appellants' original
claim 18 (now cancelled) recites the over-center function as follows, "the
spout is molded in the collapsed condition such that extension thereof causes
an over-center action of said pleats which, when exceeded, leaves the
pleated sections of the spout in a stable extended condition." Spec. 7.
Although the Examiner is correct that the Specification provides no express
definition of the term "over-center," we do not agree that the broadest
reasonable construction of this term is "above and in alignment" as
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Appeal2014-007757
Application 12/898,768
determined by the Examiner. See Ans. 7. It is well settled that "[ e ]ven
when guidance is not provided in explicit definitional format, the
specification may define claim terms by implication such that the meaning
may be found in or ascertained by a reading of the patent documents."
Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed.
Cir. 2004). In light of the Specification and original claim 18, we interpret
"annular hinges of thinner, more flexible construction than said wall sections
to produce over-center inversion of every other one of said wall sections
during extension and collapse" to require annular hinges of thinner, more
flexible construction than said adjacent wall sections to provide a stable
position for the wall sections on every side of a relatively unstable center
position. Thus, the Examiner's finding that Park discloses this feature is
based upon an unreasonably broad interpretation of claim 24, and we do not
sustain the rejection of claim 24 or claims 25-29 depending therefrom as
unpatentable over Park, Chung, and Sultzer. 5
Claim 30
Claim 30 recites, in part "wall sections being integrally interconnected
by annular molded hinges between said wall sections wherein said hinges
5 In the Answer, the Examiner addressed Appellants' arguments related to
the "over-center" function by finding that Park discloses this feature, without
reliance on Sultzer (Ans. 7). To the extent the Examiner may rely on
findings relating to Sultzer, but made for the rejection of dependent claim
25, to remedy the deficiency discussed above regarding the rejection of
claim 24, we are not satisfied that the Examiner's proposed rationale for the
rejection of claim 25, "to provide a pouring spout that is extendable and that
is easy to use" (Final Act. 5), is supported by rational underpinnings.
Specifically, this rationale appears to be achieved already by Park, without
reliance upon Sultzer. As such, the Examiner does not provide articulated
reasoning with rational underpinning to support the conclusion of
obviousness.
6
Appeal2014-007757
Application 12/898,768
are thinner than said wall sections to allow over-center of every other of said
wall sections during extension of said spout." Appeal Br. 18 (Claims App.).
As this feature is similar to the feature discussed above regarding the
rejection of claim 24, we reverse the Examiner's rejection of claim 30 for
the same reasons.
DECISION
The Examiner's rejection of claims 24--30 is reversed.
REVERSED
7