Ex Parte Chisholm

Patent Trial and Appeal Board

Feb 25, 2013

11294373 (P.T.A.B. Feb. 25, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/294,373 12/06/2005 Brian J. Chisholm 184569-3083 6208
50787 7590 02/25/2013
STRADLEY RONON STEVENS & YOUNG, LLP
30 VALLEY STREAM PARKWAY
GREAT VALLEY CORPORATE CENTER
MALVERN, PA 19355-1481
EXAMINER
ROGERS, MARTIN K
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
02/25/2013 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
____________

Ex parte BRIAN J. CHISHOLM
____________

Appeal 2011-010239
Application 11/294,373
Technology Center 1700
____________

Before RICHARD E. SCHAFER, JEFFREY T. SMITH and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010239
Application 11/294,373

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 13 through 21. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s invention is directed to an apparatus for reforming the
upper portion of a plastic container. Spec. ¶ [0001]. Claim 13 is illustrative
of the subject matter on appeal and is reproduced below:
13. An apparatus for reforming an upper portion of a
blow molded plastic container, comprising:
a previously formed and cooled plastic container having
an upper portion and a lower portion, the upper portion
previously formed by a blow molding process selected from the
group consisting of extrusion blow molding and reheat blow
molding;
a non-contact heat source adapted to soften selectively
the upper portion of the plastic container but not the lower
portion of the plastic container; and
first and second reforming tools spaced apart from the
heat source and defining a cavity between the first and second
reforming tools receiving the plastic container after the upper
portion has been softened, the first and second reforming tools
adapted to compress only the softened upper portion between
the first and second reforming tools, without rotating relative to
the plastic container, to reform the upper portion with high
geometrical and dimensional tolerances required for the
capping and/or sealing of the container.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Greitzer US 3,464,582 Sept. 2, 1969
Ayres US 3,947,204 Mar. 30,1976
Ohlsson US 4,151,024 Apr. 24, 1979
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Torsten US 5,067,888 Nov. 26, 1991
Sirianni US 5,582,957 Dec. 10, 1996
Beck US 6,126,886 Oct. 3, 2000
Moriuchi JP 61-116513 A June 4, 1986

Appellant, App. Br. 3-4, requests review of the following rejections
from the Examiner’s final office action:
I. Claims 13-21 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
II. Claims 13-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moriuchi and Ohlsson.
III. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moriuchi, Ohlsson and Beck.
IV. Claims 13-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beck, Greitzer, and Ayres or Torsten.

OPINION
Rejection under 35 U.S.C. § 112, first paragraph (written description)
The Examiner contends that the Specification “does not convey to one
of ordinary skill in the art at the time of the invention that the preform is
heated in a separate location and then transported so that it is received by the
forming tools.” Ans. 4. The Examiner further contends that paragraphs 20
and 24 and Figures 1 and 2 of the Specification are insufficient to provide
written descriptive support for the disputed claim language because no
mention is made of conveying a heated container to the forming tools. Id.
Appellant argues that “Figures 1-4 depict an exemplary method and
apparatus. In other words, they illustrate a sequence of steps as to how an
apparatus is used in practice.” App. Br. 6-8. We are unpersuaded by
Appellant’s arguments and agree with the Examiner that the Specification
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does not convey to one of ordinary skill in the art the claimed apparatus
structure recited by the disputed claim language. The portion of the
Specification identified by Appellant does not establish the location of the
container prior to being received by the forming tools. Thus, this evidence
does not convey that Appellant was in possession of a preform that is heated
in a separate location and then transported so that it is received by the
forming tools.
Accordingly we affirm the rejection under 35 U.S.C. § 112, first
paragraph.
The Prior Art Rejections
The dispositive issue for this appeal is: Did the Examiner err in
determining that the combination of Moriuchi and Ohlsson would have led
one skilled in the art to an apparatus for reforming an upper portion of a
plastic container as required by the subject matter of independent claim 13?1
After review of the respective positions provided by Appellant and the
Examiner, we answer the question in the negative and AFFIRM for the
reasons presented by the Examiner and add the following.
The Examiner found that Moriuchi discloses an apparatus for
reforming the upper portion of a previously formed and cooled molded
container having first and second reforming tools defining a cavity between
the first and second reforming tools which compress the upper portion of a
container without rotating relative to the plastic container. Ans. 5-7. The
Examiner also found that Moriuchi does not disclose how the preform is

1 We will limit our discussion to independent claim 13. Appellant has not
argued the dependent claims separately. Accordingly, claims not argued
separately will stand or fall together with independent claim 13.
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heated prior to the reforming steps. Id. at 5. The Examiner found that
Ohlsson teaches it was well known in the art to heat just the necessary
portion of the previously formed and cooled container with a non-contact
heater when reforming only a portion of a container. Id. at 6. The Examiner
found that it would have been obvious to one of ordinary skill in the art at
the time of the invention to incorporate a non-contact heater, as taught by
Ohlsson, in the apparatus of Moriuchi because it is a well-known process for
heating a portion of a container prior to reforming the heated portion. Id.
Appellant’s principal argument is that the proposed combination of
Moriuchi and Ohlsson does not teach or suggest an apparatus comprising a
previously formed and cooled plastic container as required by the subject
matter of independent claim 13. App. Br. 6-8. That is, neither Moriuchi nor
Ohlsson discloses a previously formed and cooled plastic container having
an upper portion and a lower portion, the upper portion previously formed
by a blow molding process selected from the group consisting of extrusion
blow molding and reheat blow molding. Id. at 8-9. In support of this
argument, Appellant provides the Declarations by Garrett Pennington and
John Tobias and technical manual excerpts2 to establish that the containers
of Moriuchi and Ohlsson are formed as part of a continuous process and are
not previously formed as required by the claimed invention. Id.

2 The Declarations by Garrett Pennington and John Tobias filed on April 6,
2010, were entered and considered by the Examiner in the non-final Office
Action of April 23, 2010. The subsequent Declaration by Garrett
Pennington and the technical manual excerpts filed July 23, 2010, were
entered and considered by the Examiner in the Final Office Action of
September 29, 2010.
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Appellant’s arguments and evidence for patentability are not
persuasive. The Examiner correctly argues that Appellant’s arguments and
evidence are directed to elements being worked upon by the apparatus. Ans.
6-7, 15-17. Appellant has not adequately explained how the container
structure distinguishes the elements of the claimed apparatus from the
elements of the apparatus of Moriuchi or why the structure of the container
distinguishes the structure of the claimed apparatus from the apparatuses of
the prior art. See, e.g., In re Otto, 312 F.2d 937, 939-40 (CCPA 1963); In re
Rishoi, 197 F.2d 342, 344-45 (CCPA 1952) (“[T]here is no patentable
combination between a device and the material upon which it works.”).
Moreover, a person of ordinary skill in the art would have been
capable of adapting Ohlsson’s non-contact heater for use in the device of
Moiruchi to heat the upper portion of a container given that Moiruchi
requires the container to be in plastic state to form the flanges. Moiruchi 5,
Fig. 3-5. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is
presumed on the part of one of ordinary skill in the art); In re Bozek, 416
F.2d 1385, 1390 (CCPA 1969). Appellant has not adequately explained why
one skilled in the art could not use the non-contact heater of Ohlsson in the
device of Moiruchi.
Therefore, we find no error in the Examiner’s obviousness
determination. Accordingly, we sustain the rejection of claims 13-20 under
35 U.S.C. § 103(a) as unpatentable over Moriuchi and Ohlsson for the
reasons given above and by the Examiner.
The Examiner additionally rejected dependent claim 21 under
35 U.S.C. § 103(a) as unpatentable over Moriuchi, Ohlsson and Beck. Ans.
8-9. In addressing the limitations of claim 21, the Examiner found that Beck
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teaches that it is well known to create a flange on either a vertically
extending upper portion of a container or to pre-equip the container with a
flange portion prior to the reforming step. Id. at 8.
We have considered Appellant’s arguments (App. Br. 12-13) for this
rejection and are unpersuaded by them because they do not address the
reasons for which the Examiner relied on Beck. Accordingly, we also affirm
the rejection of claim 21 for the reasons given above and by the Examiner.
The Examiner also presented a parallel rejection of claims 13-21 as
unpatentable under 35 U.S.C. § 103(a) over Beck, Greitzer, and Ayres or
Torsten. Ans. 9. We refer to the Examiner’s Answer for a statement of the
Examiner’s rejection. Id. at 9-12.
Appellant’s principal argument for this rejection is the same as
discussed above, i.e. that the prior art does not include a previously formed
and cooled container. App. Br. 14-15. We are again unpersuaded by this
argument and direct Appellant’s attention to our prior discussion on this
issue. We limit any additional discussion to specific arguments not
addressed above.
Appellant argues that modifying Beck in view of the above noted
secondary references would also render Beck’s apparatus unsatisfactory for
its intended purpose because it would convert Beck’s curling apparatus to a
compression apparatus. Id. at 15-17.
We are also unpersuaded by this argument and agree with the
Examiner’s reasoning (Ans. 18-19). Appellant has not disputed the
Examiner’s findings that the Beck’s non-preferred embodiment of a
container with a flange but without a curled lip could be reformed by means
other than curling given the disclosure of Greitzer. Ans. 9-10, 19.
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Accordingly, we sustain this rejection as well for the reasons given
above and presented by the Examiner.
ORDER
The rejection of claims 13-21 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement is reversed.
The rejection of claims 13-20 under 35 U.S.C. § 103(a) as
unpatentable over Moriuchi and Ohlsson is affirmed.
The rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable
over Moriuchi, Ohlsson and Beck is affirmed.
The rejection of claims 13-21 under 35 U.S.C. § 103(a) as
unpatentable over Beck, Greitzer, and Ayres or Torsten is affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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