Ex Parte Tung et al

Patent Trial and Appeal Board

Aug 8, 2017

12014506 (P.T.A.B. Aug. 8, 2017)

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.
12/014,506 01/15/2008 Thomas T. Tung 5915-120105
(PA-1317-US)
1726
44867 7590 08/10/2017
GREER BURNS & CRAIN LTD
REXAM BEVERAGE CAN COMPANY
300 S. WACKER DRIVE
SUITE 2500
CHICAGO, IL 60606
EXAMINER
COLLADO, CYNTHIA FRANCISCA
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
08/10/2017 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):
PTOMAIL@GBCLAW.NET
DOCKET@GBCLAW.NET
VERIFY@GBCLAW.NET
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS T. TUNG and WILLIAM J. WALSH
Appeal 2015-005188
Application 12/014,506
Technology Center 3700
Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
GORDON D. KINDER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas T. Tung and William J. Walsh (Appellants)1 appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1—6, 8—11, 13—
18, and 20, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Rexam Beverage Can
Company. Appeal Br. 2.
Appeal 2015-005188
Application 12/014,506
THE CLAIMED SUBJECT MATTER
Claims 1,11, and 18 are independent. Claim 1 is reproduced below
and is illustrative of the claimed subject matter on appeal.
1. A lug-type resealable beverage container, the lug-type
resealahle beverage container comprising:
a metallic containment vessel having a containment area
for recei ving a liquid, the containment vessel comprising a closed
end separated from an open end by a tubular sidewall joined to a
reduced diameter cylindrical portion by a necked-in region,
wherein the open end is defined by a radially outwardly rolled
flange, and wherein the containment vessel further comprises a
radially inwardly extending detent spaced from the flange
defining the open end and located on the reduced diameter
cylindrical portion;
an annular sleeve joined about the containment vessel,
having an uppermost portion adjacent the flange defining the
open end and having first and second lug members extending
radially outwardly and an inner surface having a radially
inwardly extending bead located between and spaced from the
uppermost portion of the sleeve and a lowermost portion of the
sleeve and fit within the radially inwardly extending detent; and
a metallic cap having first and second mating lugs for
cooperative engagement with the first and second mating lug
members on the sleeve wherein cooperative engagement of the
first and second mating lugs with the first and second lug
members encloses the liquid within the containment vessel.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Firma Alcan DE 6903478U May 22, 1969
Aluminimwerke
(“Firma Alcan”)2
2 All references to the text of Firma Alcan are to the translation entered into
the record as an attachment to the Non-Final Action of April 1, 2010.
2
Appeal 2015-005188
Application 12/014,506
Cook US 2005/0051554 A1 Mar. 10,2005
THE REJECTIONS
I. Claims 11 and 13—16 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Firma Alcan. Non-Final Act. 3—5.
II. Claims 1—6, 8—10, 17, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Firma Alcan and Cook. Id. at 6—12.
OPINION
Rejection I
The Examiner finds that Firma Alcan discloses, inter alia, a radially
inwardly extending detent located on a reduced diameter cylindrical portion
of a containment vessel. Non-Final Act. 3. The Examiner included an
annotated reproduction of Figure 3 of Firma Alcan to illustrate what the
Examiner considers to be the radially inwardly extending detent, as set forth
in the claims. Id. at 4. The Examiner’s annotated version of Firma Alcan’s
Figure 3 is reproduced below.
3
Appeal 2015-005188
Application 12/014,506
Annotated Figure 3
Firma Alcan’s Figure 3 depicts an axial section of a bottle-neck of a
metal bottle. Firma Alcan, 5:6—10. The annotated figure includes, inter
alia, a notation with an arrow extending to a circled portion indicating where
the Examiner determines there to be an “inwardly extending detent.” Non-
Final Act. 4.
Appellants argue that Firma Alcan does not disclose a radially
inwardly extending detent located on a reduced diameter cylindrical portion
of a containment vessel. Appeal Br. 3. Appellants assert that the Office
relied “solely on the cross-sectional view of the container illustrated in FIG.
3 without referring to its written description.” Reply Br. 2. Appellants
argue that the written description “clearly describes radially outwardly
extending ribs (9) on the container neck (2) which fit within recesses on the
ring (4).” Appeal Br. 8 (citing Firma Alcan, 6); see Firma Alcan, 6:13—15
(“In the case of the example shown in Fig. 3, axially running flat ribs 9 are
designed in the metallic bottle-neck 2, above which ribs 9, the ring 4—
4
Appeal 2015-005188
Application 12/014,506
having recesses corresponding to the ribs—is pushed.”). Appellants further
argue that the portion of Figure 3 identified by the Examiner as an “inwardly
extending detent” (Non-Final Act. 4) is actually “a transition from a radially
outwardly projecting rib (9) to the cylindrical portion (2).” Reply Br. 3. To
the extent that the portion of Figure 3 identified by the Examiner as an
“inwardly extending detent” might be considered a detent extending
inwardly from, and located on, rib 9, Appellants maintain that rib 9 “cannot
be a reduced diameter cylindrical portion [of a containment vessel] under
any interpretation owing to the fact that [it is] not cylindrical.” Id. We agree
with Appellants that the Examiner has not shown by a preponderance of the
evidence that Firma Alcan discloses a radially inwardly extending detent
located on the reduced diameter cylindrical portion of a containment vessel,
as required by the claims.
Accordingly, we find that the Examiner erred in finding that Firma
Alcan discloses a radially inwardly extending detent located on the reduced
diameter cylindrical portion of a containment vessel. We do not sustain the
rejection of claim 11, or claims 13—16 which depend therefrom, under 35
U.S.C. § 102(b) as anticipated by Firma Alcan.
Rejection II
Claims 1—6, 8—10, 17
Claims 1—6, 8—10, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Firma Alcan and Cook. The rejection of these claims
relies on the Examiner’s erroneous finding that Firma Alcan discloses a
radially inwardly extending detent located on the reduced diameter
cylindrical portion of a containment vessel. Non-Final Act. 6, 8. The
Examiner does not explain how Cook might cure this underlying deficiency.
5
Appeal 2015-005188
Application 12/014,506
Accordingly, we do not sustain the rejection of claims 1—6, 8—10, and 17
under 35 U.S.C. § 103(a) as unpatentable over Firma Alcan and Cook.
Claims 18 and 20
Rather than requiring that the radially inwardly extending detent be
located specifically on the reduced diameter cylindrical portion of the
containment vessel, independent claim 18 recites only that the “metallic
containment vessel hav[e] ... a radially inwardly extending detent adjacent
the open end [of the containment vessel].” Appeal Br. 20 (Claims App.).
Appellants focus their arguments on the annular sleeve joined to the
open end of the containment vessel, rather than on the radially inwardly
extending detent. Appeal Br. 15. Claim 18 requires an “annular sleeve . . .
comprising a radially inwardly projecting bead at least partially within the
radially inwardly extending detent wherein . . . vertical and rotational
movement of the . . . annular sleeve on the reduced diameter cylindrical
portion is eliminated.” Id. at 20 (Claims App.). Appellants argue that, in
contrast, the structure designated by the Office as the claimed “bead” is
“located on the container neck rather than the ring.” Id. at 15. We are not
persuaded by this argument in that the Examiner relies on reference element
12 of Firma Alcan for the claimed “bead” (Non-Final Act. 4), and reference
element 12 refers to longitudinal grooves on an inner surface of ring 4.
Firma Alcan, 6:19—7:1.3
Appellants also argue that
neither the vertically oriented grooves (12) nor the ribs (9) of
Firma Alcan can eliminate the undesirable vertical movement by
the sleeve as required by [cjlaim 18. Rather, it is the curl at the
3 There may also be corresponding grooves on the outer surface of the
metallic bottle-neck. Firma Alcan, 7:1—3.
6
Appeal 2015-005188
Application 12/014,506
top of the container that resists upward vertical movement, and
it is the shoulder (3) below the container neck that resists
downward vertical movement in Firma Alcan.
Appeal Br. 15. We are not persuaded by this argument in that a requirement
that it be specifically the disposal of the radially inwardly projecting bead
within the radially inwardly extending detent that eliminates vertical
movement is not recited in the claims. Unclaimed features cannot impart
patentability to claims. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998). Arguments must be commensurate in scope with the actual claim
language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Appellants’
attempt to distinguish the claimed subject matter from the prior art based on
a feature that is not in the claims is not persuasive. Here, Appellants have
conceded that Firma Alcan contains at least some structure (i.e., curl and
shoulder) that is capable of eliminating vertical movement of the annular
sleeve on the reduced diameter cylindrical portion (see Appeal Br. 15), and
that is all that the claim requires under its broadest reasonable interpretation.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that Firma Alcan and Cook renders obvious the subject matter of
independent claim 18. Accordingly, we sustain the rejection of claim 18
under 35 U.S.C. § 103(a) as unpatentable over Firma Alcan and Cook. We
also sustain the rejection of claim 20 which depends therefrom and for
which Appellants rely on the same arguments and reasoning we found
unpersuasive in connection with claim 18. See Appeal Br. 15.
DECISION
The Examiner’s rejection of claims 1—6, 8—11, and 13—17 is reversed.
The Examiner’s rejection of claims 18 and 20 is affirmed.
7
Appeal 2015-005188
Application 12/014,506
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
8