Ex Parte Wurster et al

Patent Trial and Appeal Board

Mar 25, 2019

13016380 (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/016,380 01/28/2011
50787 7590 03/26/2019
STRADLEY RONON STEVENS & YOUNG, LLP
30 VALLEY STREAM PARKWAY
GREAT VALLEY CORPORA TE CENTER
MALVERN, PA 19355-1481
Michael P. Wurster
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.
184569-3188 4449
EXAMINER
MATHEW, FENN C
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
03/26/2019 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
Exparte MICHAEL P. WURSTER, SCOTT E. BYSICK,
ROBERT WAL TERMYER, and PAUL KELLEY 1
Appeal2017-005224
Application 13/016,380
Technology Center 3700
Before JOHN C. KERINS, BRANDON J. WARNER, and
LISA M. GUIJT, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael P. Wurster et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject claims 1, 3, 5, and 7-13.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief identifies Graham Packaging Company, L.P. as the real
party-in-interest. Appeal Br. 1.
Appeal2017-005224
Application 13/016,380
THE INVENTION
Appellants' invention relates to a closure for a hot-fill container.
Independent claim 1 is illustrative of the claimed invention and reads as
follows:
1. A closure for a hot-fill container comprising:
a. a cap member having a top surface, a bottom surface, and a
wall portion having an outer surface and an inner surface wherein
the inner surface comprises threads to mate with a threaded neck
finish of a hot-fill container;
b. a flexible diaphragm member comprising: at least one flexible
portion in a first position and a sealing lip portion to seal a liquid
in the container thus preventing the liquid from traveling to the
threaded neck finish of the container; and
c. a disc member interposed between the cap member and the
diaphragm member, wherein the disc member comprises: a
hydrophobic filter membrane and at least one vent providing a
path for air to travel from an area near the threads to the
hydrophobic filter member,
wherein the flexible portion of the flexible diaphragm member
flexes to compensate for a change in pressure within the
container by transitioning downwards in response to a decrease
in pressure and by transitioning upwards in response to an
. .
mcrease m pressure.
THE REJECTION
The Examiner has rejected claims 1, 3, 5, and 7-13 under 35 U.S.C.
§ I02(b) as being anticipated by Kubo (WO 2008/065879 Al, published
June 5, 2008). Because that International published application is
principally in Japanese, reference herein is to the corresponding U.S.
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Appeal2017-005224
Application 13/016,380
reference, Publication Number US 2010/0084397 Al, published April 8,
2010.
ANALYSIS
The Examiner finds that Kubo teaches all limitations appearing in
claim 1, citing to element 4, referred to in Kubo as an "internal stopper"
(Kubo, para. 30), as corresponding to the claimed flexible diaphragm
member. Final Act. 2. Appellants argue that stopper 4 would not be
understood to be a diaphragm, because it has a hole in it for receiving
another element. Appeal Br. 5. Appellants additionally maintain that Kubo
fails to evidence that stopper 4 "flexes to compensate for a change in
pressure within the container by transitioning downwards in response to a
decrease in pressure and/or by transitioning upwards in response to an
increase in pressure," a further limitation imposed on the flexible diaphragm
member in claim 1. Id. at 5---6.
Appellants have the better position in both respects. The Examiner
offers that, "as defined by the American Heritage Dictionary, a diaphragm is
a membranous part that divides or separates." Final Act. 6. The Examiner
takes the position that stopper 4 divides and separates two parts of the
container therein. Id. However, stopper 4 only does so in conjunction with
another element, i.e., tube 35 of intermediate element 3 fitted into fit hole 44
of stopper 4 and "intimately contacting an inner circumferential surface of
annular valve 42 of internal stopper 4," with the elements together
constituting a check valve. Kubo, para 56. Thus, even by the definition
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Appeal2017-005224
Application 13/016,380
relied on by the Examiner, stopper 4 alone would not be regarded as a
diaphragm.
Additionally, although stopper 4 in Kubo is disclosed as being made
of a "material rich in elasticity" (Kubo, para. 50), the only portion of the
stopper that is disclosed as moving in any manner in response to a change in
pressure is annular valve 42, which "opens outward to form a gap between
annular valve 42 and tube 35" to allow air to pass through to the interior of
main unit 1 of the container. Kubo, para. 58. The radial outward movement
and subsequent return to a sealing position is not a flexing in the form of
transitioning downward or upward as required by claim 1.
The Examiner does not rely on annular valve 42 as being the flexible
portion of stopper 4 that flexes due to changes in pressure, in any event.
Instead, the Examiner provides an annotated version of Figure 2 of Kubo,
labeled as "Fig A" in the Final Action, illustrating that the thick, annular
portion of stopper 4 disposed radially outwardly of the hole and annular
valve, is the portion corresponding to the claimed flexible portion of the
diaphragm. Final Act. 4.
As presaged by the discussion in the paragraph immediately above,
Kubo is silent as to whether the Examiner-designated "flexible portion" of
stopper 4 moves at all, let alone downwards and upwards in response to
pressure changes. The Examiner ultimately cites to paragraphs 34, 50, and
58 of Kubo as evidencing movement of the flexible portion in response to
pressure changes. Ans. 7. Paragraph 34 discusses the deformation and
recovery of main unit 1 of the container, and does not involve stopper 4 in
any way. Paragraph 50 discusses only suitable materials from which to
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Appeal2017-005224
Application 13/016,380
construct stopper 4, those materials being "rich in elasticity," but includes no
discussion of flexing or movement of any portion of the stopper when used.
Paragraph 58, as discussed previously, identifies that the annular valve
opens outwardly as a result of a pressure differential across the check valve,
and again discusses the deformation and recovery of main unit 1, but says
nothing about stopper 4.
As such, the Examiner has not established that Kubo discloses a
flexible diaphragm member as claimed, nor that, even if stopper 4 were
properly considered to be a diaphragm, the stopper has a flexible portion that
flexes to compensate for a change in pressure by transitioning upwardly or
downwardly.
The rejection of claim 1, and of claims 3, 5, and 7-13 depending
therefrom, as being anticipated by Kubo, is not sustained.
DECISION
The rejection of claims 1, 3, 5, and 7-13 is reversed.
REVERSED
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