Ex Parte Yourist et al

Patent Trials and Appeals Board

Feb 11, 2019

14798253 - (D) (P.T.A.B. Feb. 11, 2019)

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,
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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).
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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).
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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
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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-
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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.
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Application 14/798,253
10
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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.
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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
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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
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