KAWAMURA, Hideaki et al.

Patent Trials and Appeals BoardNov 25, 2020

2019005528 (P.T.A.B. Nov. 25, 2020)

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. 13/282,884 10/27/2011 Hideaki KAWAMURA 20344.0007US01 1697 52835 7590 11/25/2020 HAMRE, SCHUMANN, MUELLER & LARSON, P.C. 45 South Seventh Street Suite 2700 Minneapolis, MN 55402-1683 EXAMINER NEWAY, BLAINE GIRMA ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 11/25/2020 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@hsml.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIDEAKI KAWAMURA and TAKASHI UEMURA Appeal 2019-005528 Application 13/282,884 Technology Center 3700 Before JENNIFER D. BAHR, JEREMY M. PLENZLER, and CARL M. DEFRANCO, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, 7–9, 12–15, and 17–19. An oral hearing was held on November 12, 2020. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION in accordance with 37 C.F.R. § 41.50(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as DAIKYO SEIKO, LTD. Appeal Br. 2. Appeal 2019-005528 Application 13/282,884 2 CLAIMED SUBJECT MATTER The claims are directed to a plastic cap. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A plastic cap that securely maintains a sealed state of a container that has a mouth having an opening defined therein and sealed with a sealing member, the plastic cap comprising: a cap main body formed of first plastic resin; a cover portion formed of second plastic resin; at least one bridge portion; and at least one protuberance having a bore therein, wherein the cover portion is integrated with the cap main body via integral fusion-bonding provided by the at least one bridge portion, the cap main body, the cover portion, and the bridge portion are formed as different components from each other, the cap main body has a base portion, which is configured so as to surround the mouth of the container to which the cap is applied, and a top wall integrally arranged so as to be continuous to the base portion, the cover portion is arranged facing the top wall of the cap main body, the at least one bridge portion is formed of third plastic resin, which is a synthetic thermoplastic resin, filled in at least one fusion-bonding hole and in the bore, which is continuous to the at least one fusion-bonding hole, both the at least one fusion-bonding hole and the at least one protuberance having the bore are present together in only one of the cap main body and the cover portion, wherein the at least one protuberance is formed an upper surface of the top wall of the cap main body or a lower surface of the cover portion, and the lower surface of the cover potion is facing the upper surface of the top wall of the cap main body, Appeal 2019-005528 Application 13/282,884 3 the at least one bridge portion is in a shape corresponding to a combined shape of the at least one fusion-bonding hole and the bore in the at least one protuberance, the integral fusion-bonding between the cap main body and the cover portion is provided at an interface between an end surface of the bridge portion, which is an end surface of the bore of the at least one protuberance, and one of the lower surface of the cover portion and the upper surface of the cap main body, which is facing the protuberance and in which the at least one fusion-bonding hole and the at least one protuberance are not formed, the at least one fusion-bonding hole has a diameter in a range from 0.3 to 3 mm and is arranged extending through the only one of the cap main body and the cover portion such that the cap main body and the cover portion are integrally fusion- bonded by the at least one bridge portion, the cover portion is separable from the cap main body by separating by hand the at least one bridge portion formed in one of the cover portion and the cap main body from other one of the cover portion and the cap main body in which the at least one bridge portion is not formed, and a standard deviation of pull force required to separate the cover portion from the cap main body of the plastic cap is smaller than a standard deviation of pull force required to separate a cover portion from a cap main body of a same plastic cap except that the cover portion and the cap main body are integrated with an adhesive or via fusion-bonding without the at least one bridge portion, where the pull force is measured with 10 each of the plastic caps produced in a same way by pulling the cover portion from the cap main body at a pulling rate of 100 mm/min. Appeal 2019-005528 Application 13/282,884 4 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Kita US 5,288,350 Feb. 22, 1994 Kawamura US 2009/0145876 A1 June 11, 2009 Suigetsu US 8,181,328 B2 May 22, 2012 Takagi JP 61116525 June 4, 1986 REJECTIONS Claims 1, 4, 7–9, 12–15, 17, and 19 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1, 7–9, 12–15, 17, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kawamura, Takagi, and Suigetsu. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Kawamura, Takagi, Suigetsu, and Kita. OPINION New Ground of Rejection Claim 1 is the sole independent claim involved in this appeal. Claim 1 requires that a standard deviation of pull force required to separate the cover portion from the cap main body of the plastic cap is smaller than a standard deviation of pull force required to separate a cover portion from a cap main body of a same plastic cap except that the cover portion and the cap main body are integrated with an adhesive or via fusion-bonding without the at least one bridge portion, where the pull force is measured with 10 each of the Appeal 2019-005528 Application 13/282,884 5 plastic caps produced in a same way by pulling the cover portion from the cap main body at a pulling rate of 100 mm/min.2 It is unclear what structure this “standard deviation” limitation adds to the claim. As Appellant acknowledged at oral hearing, standard deviation is a measure of the variation within a sample. See Tr. 7:24–8:1. It is unclear, based on the claim language, what causes this variation in the bridge cap. The variation could be the result of some unclaimed manufacturing process and/or materials used. Similarly, it is unclear what causes the variation in the non-bridge cap. Again, the variation could be the result of some unclaimed manufacturing process and/or materials used. The non-bridge cap, in relation to which the claimed cap’s standard deviation of pull force is defined, does not even require a fusion bond. Rather, the claim allows for use of some unspecified adhesive in some unspecified manner. The variation in the non-bridge cap employing an adhesive may depend on the type of adhesive, the quantity of adhesive applied and/or the repeatability of the process employing the quantity of adhesive, as well as the accuracy of applying the adhesive at a given location. This is certainly not an exhaustive list of the issues presented by the “standard deviation” limitations, but illustrates the concern with the level of ambiguity created by those limitations. Based on the record before us, we determine that the issues noted above create an unacceptable level of ambiguity in the claims because we 2 For ease of reference, we refer to the plastic cap having a bridge portion as “the bridge cap” and the cap without a bridge portion as “the non-bridge cap.” Appeal 2019-005528 Application 13/282,884 6 are unable to determine what structure the “standard deviation” limitations add to the claims. Rather than speculate, or assign no meaning to that claim language, we determine that the most appropriate course of action is to enter a new ground of rejection under 35 U.S.C. § 112, second paragraph. See In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam) (A claim is properly rejected as indefinite if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim contains words or phrases whose meaning is unclear.); see also Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). Appellant has the opportunity to resolve ambiguities during prosecution. See, e.g., McAward, at *6–7. Accordingly, we reject claims 1, 4, 7–9, 12–15, 17, and 19 under 35 U.S.C. § 112, second paragraph, as being indefinite. Examiner’s Rejections Because we determine the claims to be indefinite, and addressing the “standard deviation” limitations recited in claims would require speculation on our part, we do not reach the merits of the obviousness rejections related to claims 1, 4, 7–9, 12–15, 17, and 19. Instead, we reverse those rejections. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject Appeal 2019-005528 Application 13/282,884 7 matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. As for the Examiner’s indefiniteness rejection, we reverse that rejection as having insufficient explanation. CONCLUSION The Examiner’s rejections are reversed. We enter a new ground of rejection based on indefiniteness. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 4, 7–9, 12–15, 17, 19 112, second paragraph Indefiniteness 1, 4, 7–9, 12–15, 17, 19 1, 7–9, 12–15, 17, 19 103(a) Kawamura, Takagi, Suigetsu 1, 7–9, 12–15, 17, 19 4 103(a) Kawamura, Takagi, Suigetsu, Kita 4 1, 4, 7–9, 12–15, 17, 19 112, second paragraph Indefiniteness 1, 4, 7– 9, 12– 15, 17, 19 Overall Outcome 1, 4, 7–9, 12–15, 17, 19 1, 4, 7– 9, 12– 15, 17, 19 Appeal 2019-005528 Application 13/282,884 8 TIME PERIOD FOR RESPONSE Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)