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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.
`
`11/749,501
`
`05/16/2007
`
`Richard C. Darr
`
`65440-171 (05-237-1)
`
`8357
`
`10/21/2013
`
`7590
`26127
`DYKEMA GOSSETT PLLC
`39577 WOODWARD AVENUE
`SUITE 300
`BLOOMFIELD HILLS, MI 48304-5086
`
`EXAMINER
`
`RUSH, KAREEN KAY
`
`ART UNIT
`
`PAPER NUMBER
`
`3728
`
`MAIL DATE
`
`10/21/2013
`
`DELIVERY MODE
`
`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)
`
`1/8
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`Ex parte RICHARD C. DARR and EDWARD V. MORGAN
`____________
`
`Appeal 2011-011436
`Application 11/749,501
`Technology Center 3700
`____________
`
`
`
`Before MICHAEL W. KIM, MICHAEL C. ASTORINO, and
`HYUN J. JUNG, Administrative Patent Judges.
`
`ASTORINO, Administrative Patent Judge.
`
`
`
`DECISION ON APPEAL
`
`
`
`
`
`2/8
`
`

`

`Appeal 2011-011436
`Application 11/749,501
`
`
`STATEMENT OF THE CASE
`The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
`decision rejecting claims 36-70. We have jurisdiction over the appeal under
`35 U.S.C. § 6(b).
`We REVERSE.
`
`
`Claimed Subject Matter
`Claims 36 and 65 are independent. Claim 36, reproduced below with
`added emphasis, is illustrative of the subject matter on appeal.
`36. A plastic preform for making a blow molded container,
`comprising:
`
`a closed bottom portion;
`
`a lower portion extending upwardly from the bottom
`portion;
`
`a neck portion extending upwardly from the lower
`portion; the neck portion including a support flange having an
`upper and lower surface;
`
`a tamper-evident formation, and a dispensing opening at
`the top of the neck portion, a neck portion extending upwardly
`from the lower portion, the neck portion including a support
`flange having an upper and lower surface;
`
`a tamper-evident formation; and
`
`a dispensing opening at the top of the neck portion, the
`dispensing opening having an inner diameter that is at least 22
`mm;
`wherein the vertical distance from the dispensing
`
`opening to the lower surface of the support flange is 0.580
`inches or less.
`
`Claim 65 is directed to “[a] method for making a container” and,
`
`similar to claim 36 recites, “wherein the vertical distance from the
`dispensing opening to the lower surface of the support flange being 0.580
`inches or less.” App. Br., Clms. App’x.
`
`
`
`
`2
`
`3/8
`
`

`

`Appeal 2011-011436
`Application 11/749,501
`
`
`Rejections1
`Claims 36-40 and 42-70 are rejected under 35 U.S.C. § 103(a) as
`unpatentable over Brewster (US 5,888,598, iss. Mar. 30, 1999).
`Claim 41 is rejected under 35 U.S.C. § 103(a) as unpatentable over
`Brewster and Ryder (US 4,756,438, iss. Jul. 12, 1988).
`
`
`OPINION
`Claims 36 and 65 call for a plastic preform having a distance of 0.580
`inches or less between the dispensing opening at the top of the neck portion
`and the lower surface of the support flange. See App. Br., Clms. App’x.; see
`also Spec. fig. 5, para. [00023] (stating “the vertical distance X from the top
`of the dispensing opening/ neck portion (e.g., point 30) to the lower surface
`22 of the support flange 18 (e.g., point 32) is 0.580 inches or less.”).
`The Examiner finds that Brewster discloses that “[t]he vertical
`distance from the dispensing opening to the lower surface of the support
`flange is 0.580 inches or less (the vertical distance is e = 0.827mm or 0.033
`inches, which is less than 0.580 inches).” Ans. 5. Indeed, Brewster states
`that distance “e” in Figures 1 and 2 is 0.827 mm. Brewster, Tables 3 and 4,
`col. 5, ll. 30-35, 38, 46-50, 55 and col. 6, ll. 18-21.
`The Appellants contend that one of ordinary skill in the art would
`immediately recognize that the unit of length for distance “e” in Brewster’s
`Tables 3 and 4, among others, are incorrect. See App. Br. 5. Specifically,
`
`
`1 Although the Examiner includes In re Aller, 220 F.2d 454 (CCPA 1955),
`as part of both grounds of rejection (Ans. 5, 18), case law is used to support
`a ground of rejection and is not considered as part of the ground of rejection.
`Accordingly, we have removed the Examiner’s citation to Aller in the
`ground of rejection.
`
`
`
`3
`
`4/8
`
`

`

`Appeal 2011-011436
`Application 11/749,501
`
`that the unit of length must be in inches rather than millimeters, and as such,
`the unit of length listed in Tables 3 and 4 of Brewster is clearly a
`typographical error. See id. The Appellants rely on Brewster’s disclosure
`and a Declaration of Richard C. Darr, filed March 1, 20102 as evidence to
`explain why the unit of length listed in Brewster’s disclosure as millimeters
`for distance “e” is a clear typographical error. See App. Br. 5-8, Reply Br.
`1-2. Most notably, the Appellants assert that Brewster’s disclosure provides
`contradictory lengths for the length of the preform. App. Br. 7.
`The Appellants’ contention is persuasive. Brewster refers to the
`length of the preform between 40-110 mm. See, e.g., Brewster, col. 2, ll. 55-
`63 and col. 7, ll. 31-50; see also App. Br. 7, Reply Br. 1-2. However, the
`length of the preform, i.e., distance “a,” in Figures 1 and 2 is 3.125 mm and
`2.864 mm, respectively. Brewster, col. 5, ll. 29-35, 46-52, 64-66 and col. 6,
`ll. 37-38. Assuming the identification of millimeters in Tables 3 and 4 is a
`typographical error and should be inches instead, it is notable that 3.125
`inches converts to approximately 79 mm and 2.864 in converts to
`approximately 72 mm. Since 79 mm and 72 mm is between the range of 40
`– 110 mm and 3.125 mm and 2.864 mm is well outside of the
`aforementioned range, the Appellants’ contention that one of ordinary skill
`in the art would immediately recognize 0.827 as inches rather than
`millimeters as the unit of length for distance “e” is persuasive. Further, this
`contention is supported by the Appellants’ remaining arguments at pages 5-7
`of the Appeal Brief and pages 1-2 of the Reply Brief explaining why one of
`
`
`2 The Appellants present the Declaration of Richard C. Darr in the Evidence
`Appendix of the Appeal Brief, at pages 19-21.
`
`
`
`4
`
`5/8
`
`

`

`Appeal 2011-011436
`Application 11/749,501
`
`ordinary skill in the art would immediately recognize the units of length for
`distance “e” as inches and not millimeters.
`In response, the Examiner correctly notes that there is a presumption
`that a patent is valid (Ans. 3, 19), and within that presumption is a
`presumption of operability. See 35 U.S.C. § 282, MPEP § 716.07; see also
`Metropolitan Eng. Co. v. Coe, 78 F.2d 199 (D.C. Cir. 1935). However, the
`presumption of operability is rebuttable by a preponderance of the evidence.
`See In re Sasse, 629 F.2d 675, 681 (CCPA 1980); see also In re Jacobs, 318
`F.2d 743 (CCPA 1963). In this case, the Appellants are correct that “as
`recognized by the Court in Yale, one of ordinary skill in the art would
`recognize the obvious error and simply substitute the correct value.” App.
`Br. 7; see MPEP § 716.07, In re Yale, 434 F.2d 666, 668-669 (CCPA 1970).
`As discussed above, Brewster’s identification of millimeters as the length of
`distance “e” in Tables 3 and 4 is a clear typographical error, and as such, a
`person of ordinary skill in the art would mentally disregard or substitute
`millimeters in Brewster’s Tables 3 and 4 for inches. See id. But see Ans. 4
`(Examiner explains that even if the unit of length in Tables 1-5 is in error,
`one of ordinary skill in the art would recognize the error and convert to the
`appropriate units.). Accordingly, Brewster has not placed the length of the
`vertical distance from the dispensing opening to the lower surface of the
`support flange to be 0.580 inches or less in the possession of the public.
`For the foregoing reasons, we find that the Appellants have rebutted
`the presumption of operability by a preponderance of the evidence. See
`Sasse, 629 F.2d at 681. Further, the Examiner has not substantively refuted
`the Appellants’ rebuttal. Thus, the Examiner’s finding that Brewster
`
`
`
`5
`
`6/8
`
`

`

`Appeal 2011-011436
`Application 11/749,501
`
`discloses “the vertical distance is e = 0.827mm or 0.033 inches, which is less
`than 0.580 inches” (Ans. 5) is inadequately supported.
`Further, the Examiner cites to Gardner v. TEC Systems, Inc., 725 F.2d
`1338 (Fed. Cir. 1984), cert. denied, 469 U.S. 830 (1984), to conclude,
`“actual dimensions are given little patentable weight.” Ans. 4 (emphasis
`added). The Examiner does not offer any further analysis of facts of
`Gardner to the claims on appeal. Specifically, the Examiner does not
`explain how the facts of Gardner are similar to the present case. See also
`MPEP § 2144.04. Additionally, Gardner is a case directed to “relative
`dimensions”, i.e., changes in size or proportion, which is conceptually
`distinct from “actual dimensions,” since changes in dimensions may not be
`proportional changes. See MPEP § 2144.04(IV)(A) (stating “[i]n Gardner
`. . . , the Federal Circuit held that, where the only difference between the
`prior art and the claims was a recitation of relative dimensions of the
`claimed device and a device having the claimed relative dimensions would
`not perform differently than the prior art device, the claimed device was not
`patentably distinct from the prior art device.”). Accordingly, the Examiner’s
`proffered holding of Gardner is inaccurate.
`For the foregoing reasons, the Examiner has not established a prima
`facie case of obviousness. Thus, the rejection of independent claims 36 and
`65, and their dependent claims 37-40, 42-64, and 66-70, as unpatentable
`over Brewster is not sustained.
`The remaining rejection based on Brewster in combination with Ryder
`relies on the same erroneous finding discussed above with regard to the
`rejection of claim 36. See Ans. 18. As such, we cannot sustain the rejection
`
`
`
`6
`
`7/8
`
`

`

`Appeal 2011-011436
`Application 11/749,501
`
`under 35 U.S.C. § 103(a) of claim 41 as unpatentable over Brewster and
`Ryder.
`
`
`DECISION
`We REVERSE the rejections of claims 36-70.
`
`
`REVERSED
`
`
`
`
`Klh
`
`
`
`7
`
`8/8
`
`

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