Ex Parte Yourist et alDownload PDFPatent Trials and Appeals BoardFeb 11, 201914798253 - (D) (P.T.A.B. Feb. 11, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/798,253 07/13/2015 Sheldon E. Y ourist 114699 7590 02/13/2019 Baker Botts LLP 30 Rockefeller Plaza New York, NY 10112-4498 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. 082116.0739 3918 EXAMINER GRANO, ERNESTO ARTURIO ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 02/13/2019 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): DLNYDOCKET@BAKERBOTTS.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHELDON E. YOURIST, RAYMOND A. PRITCHETT JR., and ERIC B. UNGRADY Appeal 2018-004624 Application 14/798,253 1 Technology Center 3700 Before LINDA E. HORNER, JEREMY M. PLENZLER, and BRENT M. DOUGAL, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) from the Examiner's rejections of claims 1-29, which are all of the pending claims. Final Office Action (March 31, 2017, "Final Act."). We have jurisdiction under 35 U.S.C. § 6(b). 1 Graham Packaging Company, L.P. ("Appellant") is the applicant under 37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Brief (October 2, 2017, "Appeal Br.") 2. Appeal 2018-004624 Application 14/798,253 The Examiner rejected the claims as unpatentable over various combinations of the prior art. Appellant contests the Examiner's stated reasons for combining the prior art in the manner claimed. As explained below, we agree with Appellant that the Examiner has failed to articulate adequate reasoning to explain why one having ordinary skill in the art would have been led to combine the teachings of the prior art in the manner claimed. Thus, we REVERSE. CLAIMED SUBJECT MATTER The claims on appeal relate to "plastic containers, for example a lightweight polymer container for packaging and storing liquids." Specification (July 13, 2015, "Spec.") ,r 1. The Specification explains that due to the flexibility of these lightweight containers, they can "distort or deflect when gripped," so that liquid is forced out of the containers before being poured. Id. ,r 3. The claimed invention purports to provide a lightweight polymer container with improved body strength to resist distortion or deflection when gripped. Id. ,r 4. Claims 1 and 2 8 are the independent claims on appeal. Claim 1 is illustrative of the subject matter on appeal and is reproduced below, with the disputed claim limitation italicized for emphasis. 1. A container comprising: a top portion comprising a finish portion; a body portion disposed below the top portion; and a bottom portion disposed below the body portion opposite the top portion; the body portion comprising: a front wall, a rear wall opposite the front wall, 2 Appeal 2018-004624 Application 14/798,253 first and second side walls extending between the front wall and the rear wall to define a generally rectangular shape in plan view, the first side wall disposed opposite the second side wall, opposing grip areas formed in the first and second side walls, the opposing grip areas including a first grip area formed in the first side wall and a second grip area formed in the second side wall, a first circumferential rib disposed above the opposing grip areas and extending horizontally about an entire outer circumferential perimeter of the body portion, a second circumferential rib disposed below the opposing grip areas and extending horizontally about the entire outer circumferential perimeter of the body portion, at least one horizontal body rib disposed between the first and second circumferential ribs and spaced from the opposing grip areas, and a first vertical strut formed in the first side wall and spaced from the first grip area and a second vertical strut formed in the second side wall and spaced from the second grip area, each of the first and second vertical struts disposed between and spaced from the first and second circuniferential ribs and having a length coextensive with a height of the first and the second grip areas respectively, the first and second vertical struts configured to resist radially-inward distortion of the first and second side walls from gripping the opposing grip areas. Appeal Br. 19-20 (Claims Appendix). 3 Appeal 2018-004624 Application 14/798,253 REJECTIONS The Final Office Action includes the following rejections: 1. Claims 1-3 and 5-29 are rejected under 35 U.S.C. § 103 as unpatentable over Simpson, Jr. et al. (US 7,097,061 B2, issued August 29, 2006) ("Simpson") and Krishnakumar et al. (US 5,472,105, issued December 5, 1995) ("Krishnakumar"). 2. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over Simpson, Krishnakumar, and Matsuo et al. (US 2014/0374427 Al, published December 25, 2014) ("Matsuo"). 2 ISSUE The Examiner found that Simpson discloses the container substantially as recited in independent claims 1 and 28, except that it does not disclose the first and second vertical struts configured to resist radially inward distortion of the first and second side walls from gripping the opposing grip areas. Final Act. 4-5, 9-10. The Examiner found that Krishnakumar teaches first and second vertical struts (vertical ribs 4IA, 4 IB) as recited in the claims. Id. The Examiner determined that it would have been obvious to add Krishnakumar's struts 4IA, 4IB to Simpson's container "to provide resistance to the longitudinal bending of the side wall." Id. at 5, 10 (citing Krishnakumar, col. 4, 11. 43--44). The Examiner explicitly stated that the rejection is not based on the use of Krishnakumar's additional vertical struts 40A, 40B in the modified container of Simpson. Id. at 15-16 (noting that Simpson does not include an area to accommodate additional vertical struts 40A, 40B). 2 The Examiner withdrew the rejection of claim 23 under 35 U.S.C. § 112(b) as indefinite. Advisory Action (July 17, 2017). 4 Appeal 2018-004624 Application 14/798,253 Appellant contends that the Examiner "erred in selectively using only one vertical rib from each pair of vertical ribs [ 40, 41] disclosed in Krishnakumar, while Krishnakumar explicitly requires the pair of vertical ribs." Appeal Br. 13. Appellant contends that the Examiner "mischaracterized the properties of the isolated vertical rib by selectively choosing which properties would and would not be exhibited by an isolated vertical rib." Id. at 13-14. The Examiner responds that a person of ordinary skill in the art would take advantage of the resistance to longitudinal bending that a single strut would provide in Simpson's container, which "includes an area for only one vertical strut on each of the first and second sidewalls and not an area to accommodate the additional vertical struts 40A/40B." Examiner's Answer (January 25, 2018, "Ans.") 5-6. Appellant replies that "the limited space of Simpson can hardly be considered proper motivation to disregard the specific disclosure of a pair of ribs or hinges, and to select only one such rib to allegedly provide a structural characteristic that is in direct conflict with the disclosure of Krishnakumar." Reply Brief (March 23, 2018, "Reply Br.") 2. The issue presented on appeal is whether the Examiner articulated adequate reasoning to explain why one having ordinary skill in the art, reading Krishnakumar as a whole, would have been led to use only one of Krishnakumar's pair of vertical ribs in Simpson's container. ANALYSIS Simpson relates to a hot-fill molded plastic container. Simpson, col. 1, 11. 7-8. Simpson describes that in hot-fill packages, a container is filled with hot liquid product and capped while the liquid is still hot, so that 5 Appeal 2018-004624 Application 14/798,253 as the liquid cools, the reduction in liquid volume creates a vacuum within the package. Id. at col. 1, 11. 14-19. Simpson describes that this vacuum tends to cause the container wall to distort inwardly, and that attempts to use ribs or channels to strengthen container walls and to use vacuum panels on the walls to control areas of distortion have not been effective in larger containers. Id. at col. 1, 11. 19-27. Simpson teaches a rectangular container "specifically adapted for hot-fill applications with minimum wall distortion." Id. at col. 2, 11. 10-12. An embodiment of this container is shown below in Figure 1 of Simpson. Figure 1 is a side elevational view of container 10. Id. at col. 2, 1. 22. Simpson's container 12 includes generally rectangular body 16 having front wall 18, back wall 20, and laterally opposed sidewalls 22. Id. at col. 2, 11. 49-51. Recessed handle areas 24 are adjacent to and intersect back wall 20, and a pair of axially spaced vacuum panels 28, 30 are provided on each sidewall 22 between handle area 24 and front wall 18. Id. at col. 2, 11. 51- 6 Appeal 2018-004624 Application 14/798,253 58. Simpson provides laterally extending strengthening channels 32, 34 on back wall 20 and front wall 28, respectively, and channels 48, 50 that extend entirely around container body 16. Id. at col. 2, 11. 62-66, col. 3, 11. 9-12. Krishnakumar, likewise, is directed to hot-fillable plastic containers that experience negative internal pressure. Krishnakumar, col. 1, 11. 13-21. Krishnakumar teaches that such containers include recessed vacuum panels in the middle panel section of the container to reduce the magnitude of the vacuum generated in the container to prevent any large uncontrolled shape distortion. Id. at col. 1, 11. 27-31. Krishnakumar describes a need in this art for a hot-fillable plastic container having a panel section with deformable vacuum panels, which panel section resists ovalization and other forms of deformation during hot-filling, cooling, drop impact, and handling. Id. at col. 2, 11. 23-27. Krishnakumar describes the use of"[ a] pair of vertical ribs adjacent each side of the vacuum panel [that] act as hinge points to provide increased flexibility of the vacuum panel." Id. at col. 2, 11. 38--41. Figure 2 of Krishnakumar, reproduced below, illustrates one pair of vertical ribs 40A, 41A adjacent each side of vacuum panel 32A. 7 Appeal 2018-004624 Application 14/798,253 10 'y< !".// / ,/ I t l _____ :....._ ........... IT Fig.2 Figure 2 is a side elevational view of container 10 showing one vacuum panel and an adjacent pair of vertical ribs which act as hinge points to maximize vacuum panel movement. Id. at col. 3, 11. 11-14. A second pair of vertical ribs 40B, 41B are adjacent each side of vacuum panel 32B on the opposite side of container 10, not visible in Figure 2. See id. at Fig. 3. Krishnakumar describes that each vacuum panel 32A, 32B includes a centered lowermost bottom wall 3 6 and a surrounding intermediate recess 34. Id. at col. 4, 11. 22-29. "The concave recess 34 moves readily via hinge points provided by the vertical ribs 40 and 41." Id. at col. 4, 11. 29-31. 8 Appeal 2018-004624 Application 14/798,253 As shown in Krishnakmnar's Figure 5, intermediate recess 34A and bottom recess 36A move radially outward during filling to the positions labeled 34A' and 36A' and thereafter move radially inwardly during cooling to the positions labeled 34A" and 36A". Id. at col. 4, 1. 57-col. 5, 1. 20. Vertical ribs 40A, 41 A "act as hinge points to maximize movement of [each] vacuum panel." Id. at col. 5, 11. 13-14. Krishnakumar further describes that "vertical ribs 40, 41 also provide resistance to longitudinal bending of the panel section [30]." Id. at col. 4, 11. 43--44. Considering the prior art as a whole, we agree with Appellant that the Examiner has not provided adequate reasoning to explain why one having ordinary skill in the art would use only one rib of Krishnakumar' s pair of ribs in Simpson's container. Both Simpson and Krishnakumar relate to hot-fill containers that use vacuum panels to achieve controlled distortion of the container during cooling of the hot liquid after capping. Krishnakumar focuses on improving this controlled distortion by providing a pair of vertical ribs on either side of each vacuum panel to act as hinge points to maximize movement of the vacuum panel. Krishnakumar also discloses that these vertical ribs resist longitudinal bending. Nevertheless, the entire disclosure of Krishnakumar is based on the benefits obtained through the use of a pair of vertical ribs positioned on either side of each vacuum panel. The Examiner has not adequately explained what would have led one having ordinary skill in the art to dispense with the benefits provided by the pair of Krishnakumar' s ribs and selectively use only a single vertical rib in Simpson's container. For example, the Examiner offers no explanation as to why use of a single vertical rib would provide the benefits, such as resistance to longitudinal bending, discussed relative to the pair of ribs. The 9 Appeal 2018-004624 Application 14/798,253 Examiner's proposed combination appears to impermissibly pick and choose from Krishnakumar only so much of it as will support the Examiner's position, to the exclusion of other parts necessary to the full appreciation of what Krishnakumar fairly suggests to one of ordinary skill in the art. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (holding that "[s]uch piecemeal reconstruction of the prior art patents in light of appellant's disclosure is contrary to the requirements of35 U.S.C. § 103") (cited with approval in Bausch & Lomb, Inc. v. Barnes-Hind/ Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir. 1986)). For these reasons, we do not sustain the rejection of claims 1-3 and 5- 29 under 35 U.S.C. § 103 as unpatentable over Simpson and Krishnakumar. The Examiner bases the rejection of dependent claim 4 on the same deficient modification of Simpson with the teaching of Krishnakumar as proposed in the rejection of claim 1, from which claim 4 depends. Final Act. 12. Thus, we also do not sustain the rejection of claim 4 under 35 U.S.C. § 103 as unpatentable over Simpson, Krishnakumar, and Matsuo. DECISION The decision of the Examiner rejecting claims 1-29 is reversed. REVERSED 10 Copy with citationCopy as parenthetical citation