vitro v. saverglass - petition for ipr

8/21/2019 Vitro v. Saverglass - Petition for IPR

1/24

Filed on behalf

of

the Petitioner: Vitro Packaging, LLC

By: ABELMAN, FRAYNE SCHWAB

Jeffrey

A

Schwab Reg. No. 24,249)

Robert B. Smith Reg. No. 28,538)

666 Third A venue

New York, New York 10017

Tel.: 212) 949-9022

[email protected]

[email protected]

Paper

Filed March 26, 2015

UNITED STATES PATENT AND TR DEM RK OFFICE

BEFORE THE

PATENT

TRI L

AND

PPE L

BOARD

VITRO P ACI


2/24

T BLE OF CONTENTS

TABLE OF AUTHORITIES .................................................................................... iii

PETITION

I

Notices Under 37 C.P.R.§ 42.8 ......................................................................... 1

II. Payment

o

Fees Under 37 C.P.R.§§ 42.15 a) and 42.103 ............................... 2

III. Requirements Under 7 C F R 42 104

..........................................................

2

A Grounds for Standing ...................................................................................... 2

B. Identification o

Challenge .............................................................................. 2

IV. Background ..................................................................................................... 7

V

Claim Construction ......................................................................................... 9

VI. Applicable Legal Standards ........................................................................... 11

VII. Detailed Explanation

o

Grounds For Unpatentability ...............................

12

VIII. Conclusion .....................................................................................................

21

11


3/24

TABLE OF AUTHORITIES

Cases

In re Borden, 90 F.3d 1570 Fed. Cir. 1996) .............................................. 11, 12,

15

Custom Accessories, Inc.

v

Jeffrey-Allan Indust., Inc.,

807 F.2d 955 Fed. Cir. 1986) ................................................................................. 11

Durling v Spectrum Furniture Co.,

1 1

F.3d 100 Fed.

Cir. 1996) ..................................................................................................... 11, 14, 18

Egyptian Goddess, Inc. v Swisa, Inc., 543 F.3d 665 Fed.

Cir. 2008)

(en bane)

..................................................................................................

9

KSR Int l

Co v

Teleflex, Inc., 550 U.S. 398 2007) ................................................. 9

MRC Innovations v Hunter Mfg., LLP, 747 F.3d 1326

Fed. Cir. 2014) ................................................................................................... 9, 19

Statutes Rules and Other Authorities

35 U.S.C. § 102 e) ..................................................................................................... 7

35U.S.C. § 103 a) ................................................................................... 3, 11 12 21

35 U.S.C. § 314 a) ....................................................................................... 12,

20 21

35 U.S.C. § 316 e) ................................................................................................... 12

37 C.F.R. § 42.8 ......................................................................................................... 1

37 C.F.R. § 42.15 a) .................................................................................................. 2

37 C.F.R.

§

42.103 ..................................................................................................... 2

37 C.F.R. § 42.104 ..................................................................................................... 2

Fed.R.Evid. 901 8) .................................................................................................... 4


4/24

PETITION

The Petitioner, Vitro Packaging, LLC (the Petitioner ), requests an

inter

partes review

of

United States Patent No. D526,197

(the '

197 Patent ), which

issued on August 8 2006. A copy

of

the '197 Patent is attached as Exhibit 1001.

The United States Patent and Trademark Office ( PTO ) records indicate that on

December 15, 2010, the '197 Patent was assigned to Saverglass, Inc., which has an

office at 107 Spring Street, Ramsey, NJ 07446. Such assignment is recorded at

Reel 025527, Frame 409. As noted below, Saverglass has sued the Petitioner for

alleged infringement

of

he ' 197 Patent.

ARGUMENT

I. Notices

Under

37 C.F.R.

§

42.8

Real Party-In-Interest: The Petitioner Vitro Packaging, LLC is the real

party-in-interest. Vitro is a Delaware corporation which has a place

of

business at

324 Service Road, Suite 111, Melville, New York 11747. Vitro is a subsidiary of

Vitro S.A.B. de C.V. ofVitroa, Mexico.

Related Proceeding: The Patent Owner has filed an action alleging

infringement

of

the '197 Patent, unfair competition, and falsely claiming

inventorship under the New York General Business Law. Saverglass Inc. v Vitro

Packaging LLC. Civil Action No. 14-5434 (E.D.N.Y. 2014).


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Lead and Back-up Counsel and Service Information

Lead Counsel Back-up Counsel

Jeffrey A. Schwab Robert B. Smith

Abelman, Frayne Schwab Abelman, Frayne Schwab

666 Third A venue 666 Third A venue

ew York,

Y

10017 New York,

Y

10017

Tel. 212 949-9022 Tel. 212 949-9022

Fax: 212 949-9190 Fax: 212 949-9190

[email protected] [email protected]

Reg. No. 24,490 Reg. No. 28,538

II.

Payment

o

Fees

Under 37 C.F.R. §§ 42.15 a) and 42.103

The Commissioner is authorized to charge the required fees for this Petition

to deposit account No. 01-0035. Should any additional fees become due during this

proceeding, the Commissioner is authorized to charge such fees to the same

deposit account.

III.

Requirements Under 37 C.F.R. § 42.104

Grounds for Standing The Petitioner certifies that, under 37 C.P.R. § 42.104,

the 197 Patent s available for

inter p rtes

review and the Petitioner is not barred

or estopped from requesting an inter p rtes review challenging the patent claim on

the grounds identified in this Petition.

Identification ofChallenge The Petitioner requests review

of

the validity

of

claim 1 of the 197 Patent based on the following prior art not cited during the

original prosecution:

2


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- Exhibit 1002 - Round Ink bottle, page 54, Illinois Glass Company

catalog (1906),

- Exhibit

1003

C H No. 146, page 212, Illinois Glass Company catalog

(pre-1930),

- Exhibit 1003 C H No. 284, page 212, Illinois Glass Company catalog

(pre-1930),

- Exhibit 1004 C H No. 284, page 149, Illinois Glass Company catalog

(1923),

- Exhibit 1005- Trayser et al. U.S. Patent No. D509,433 ( Trayser ).

The Petitioner respectfully asserts that claim 1 is invalid under 35 U.S.C. §

103 on the following bases:

A. Claim 1 is obvious over the Round Ink bottle as modified by the C H No.

146 and C H No. 284 bottles.

B. Claim 1 is obvious over the Round Ink bottle as modified by the C H No.

146 and C H No. 284 bottles and further modified by Trayser.

C. Claim 1 is obvious over the C H No. 146 bottle as modified by the C H

No. 284 bottle.

D. Claim 1 is obvious over the C H No. 146 bottle as modified by the C H

No. 284 bottle and Trayser.

3


7/24

The References in Exhibits 1003-1005 Are Prior rt to the '197 Patent

Exhibits 1002-1004 show pages from three old Illinois Glass Company

catalogs, namely a catalog bearing a 1906 date (Exhibit 1002), a catalog which is

internally stamped with a 1923 date (Exhibit 1004

,

and a catalog which does not

bear a date but which certainly dates prior to

1930 (Exhibit 1003). As discussed

below, in 1929 the Illinois Glass Company merged with the Owens Glass

Company to become Owens-Illinois i.e., the Illinois Glass Company no longer

operated under such name after the 1929 merger), and thus a catalog marked

Illinois Glass Company could not have been issued after 1929. Such catalogs

are ancient documents under Federal Rule o Evidence 901(8).

Under Rule 901 (8), an ancient document may be authenticated by showing that

it is in a condition that creates no suspicion about its authenticity; was in a place

where,

i

authentic, it would likely be; and is at least 20 years old when offered.

The Petitioner respectfully submits that there is no suspicion concerning the fact

that the catalogs in Exhibits 1002-1004 are accurate copies

o

catalogs published

prior to 1930. Further, today it is not unusual to find copies o old books or

catalogs which have been scanned and posted on the Internet. For example,

Project Gutenberg contains a collection o thousands o old, out o copyright books

which have been scanned and posted.


8/24

A complete copy

o

the 1906 Illinois Glass catalog can be found at

http://www.sha.org/ bottle/igco 1906.htm. The 1923 Illinois Glass Company

catalog is available at http://www. sha.org/bottle/igco1920.htm. The pre-1930

Illinois Glass Company catalog is available at

http:/ www.sha.org/bottle/igco 1926.htm. There is nothing suspicious concerning

the catalogs or their content.

The dates

o

the 1923 and pre-1930 catalogs can be verified by both the

company name and the company trademark which appear thereon. Both catalogs

bear the name Illinois Glass Company and the trademark

o

an I inside o a

diamond shape. Both catalogs refer to the products as Diamond I. At

http://www.glassbottlemarks.com/diamond-i-or-i-inside-a-diamond-mark-seen-on

antique-bottles/, the author discusses such trademark and notes that the Illinois

Glass Company used the diamond I trademark from approximately 1915 until

1929. ee Exhibit 1007. Usage o the Diamond I trademark from about 1915-

1929 is confirmed in The Dating Game, B. Lockhart et al., Bottles and Extras

magazine Winter 2005. ee Exhibit 1008.

The Illinois Glass Company merged with the Owens Bottle Machine Company

in 1929.

ee

Time Magazine article dated May 15, 1933, vol. 21, no. 20, p. 41,

attaches as Exhibit 1009. The trademark thereafter used by the Owens-Illinois

Glass Company was an I and an

0

inside

o

a diamond.

ee

Owens-Illinois

5


9/24

Glass Company, Society for Historical Archeology, the University of Montana

(Exhibit

101

0), available at http:/ www.sha.org/index.php/view/page/ owens

Illinois article .

Given the fact that historic literature dates the use of the I inside a diamond

trademark to pre-1930, given the fact that the Illinois Glass Company no longer

existed after 1930, and given that the new company, Owens-Illinois, changed the

trademark from the I diamond to an I and

0

diamond, it is evident that

catalogs bearing the name Illinois Glass Company with the I inside a diamond

trademark must have been first published prior to 1930.

There is no indication that the catalogs or the approximate dates of publication

are inaccurate. Schlesselman

8

Due to the age of the catalogs, the Petitioner was

not able to obtain originals to submit with this Petition. However, there is no

indication that the copies available at the foregoing sites are suspicious, and thus

under the ancient document provisions of the Federal Rules of Evidence the

catalogs should be admissible and satisfy the best evidence requirement.

The Petitioner notes that a search of the term Illinois Glass Company on the

PTO s website ofpost-1976 issued patents reveals that the PTO has on numerous

occasions cited Illinois Glass Company catalogs as prior art in other patents.

For all the foregoing reasons, the Petitioner respectfully asserts that the three

Illinois Glass Company catalogs are admissible prior art to the '197 Patent.


10/24

The application which issued as United States Patent No. D509,433 to

Trayser

t al

( Trayser ) was filed with the

PTO

on July

1

2003, and issued on

September 13, 2005. The application which became the

'197

Patent was filed

on

August 25, 2004, and claims priority based on a European registered design

application (EM 000137997) filed on February 25, 2004. Thus, even if the ' 197

Patent is entitled to

an

effective filing date

of

the European registered design

(February 25. 2004), under the pre-AlA 35 U.S.C. § 102(e), Trayser constitutes

prior art to the ' 197 Patent.

Section VII explains

how

the foregoing three references render the claim

obvious.

IV. ackground

The application which issued as the

'197

Patent, entitled Bottle, was filed

on

August 25, 2004, and assigned Serial No. 29/211,960. The application contains

a single embodiment with perspective, front, rear, side, top and bottom views. On

September 15, 2005, the

PTO

issued a non-final rejection

of

the claim as being

obvious over a combination

of

four references (which are not the same as the

references attached as Exhibits 1002 - 1005 hereto).

In an

Amendment filed

on

December 5, 2005, the applicant revised the original claim ( The ornamental

design for a bottle, as shown and described ) to delete the words

and

described.


11/24

The applicant also argued that it would not have been obvious to combine the four

references as asserted by the Examiner:

In the bottle art, every design feature can be found somewhere

in the prior art. Therefore, every bottle design can be rejected on

some combination o references.

But this fact does not legitimize such combination. Instead,

for a combination o references to be legitimate, there must be some

suggestion or teaching in the prior art, that the combination should

be made.

Stated another way: a person o ordinary skill in this art,

namely, a bottle designer, would not assemble the four references in

the first place, side-by-side, in the course

o

designing a new bottle.

But even

i

such a designer should, by a very remote chance,

assemble the four references side by side, and decide to pick and

choose various features from among the four references and combine

them, the chances are only one in an almost infinite number, that the

various design features disclosed in those four references would be

selected in the particular combination that was selected for purposes

o rejecting the claim in the present application. In other words:

every bottle design has a multitude o design features. Therefore, the

chances that any given one feature from each o the four bottle

designs each

o

those four designs embodying a multitude

o

design

features) would be selected and assembled, are one in an almost

infinite number.

ee December 5 2005 Amendment, pages 5-6 emphasis in original).

8


12/24

Thereafter, the application was allowed.

It is worthy o note that the suggestion or teaching argument was made

prior to

KSR Int'l

Co

v

Teleflex Inc.,

550 U.S. 398 (2007). The current legal

standard for obviousness is significantly more expansive. Moreover, it

is

settled

that, where prior art designs are sufficiently related to one another, that fact alone

provides the motivation to apply features o one design to the other. MRC

Innovations v. Hunter Mfg., LLP,

747 F.3d 1326, 1334 (2014). Thus, the mere

similarity in appearance between two prior art references provides the suggestion

to combine. d.

V Claim Construction

In an

inter partes

review, a claim should be given the broadest construction

in light o the specification o the patent in which it appears. 3 7 C.F.R. §

42.1 OO b). Because it

is

a design patent, the scope o claim 1 is defined by the

drawings with any written description which may appear in the specification.

Egyptian Goddess, Inc.

v

Swisa, Inc., 543

F.3d 665, 680 (Fed. Cir. 2008)

(en

bane).

The design claimed in the '197 Patent is a bottle which has the following

design features: a generally cylindrical main container portion with (i) a height-to

width ratio o approximately 1.6; (ii) a very slight taper in width from the top to the

bottom (approximately 10 percent); and (iii) a relatively square upper shoulder.

9


13/24

The bottle design o claim 1 further includes a cylindrical neck extending upwardly

from the center

o

the top surface

o

the main container portion. The upper end

o

the neck includes an annular transfer ring. Finally, the bottle contains a bottom

which is concave facing downwardly and concave facing upwardly (hereafter

referred to as double concave ).

ee

~

18

o the Declaration

o

Kurt Schlesselman

attached hereto as Exhibit 1006 (hereinafter the Schlesselman Dec. ). The transfer

ring

is

typically used when manufacturing mass-produced glass bottles to extract

them from the mold. Schlesselman e c ~

14

The claimed design includes a top view and a bottom view. However,

because the main container portion and neck are both cylindrical, the design shown

in the top view and bottom view are dictated by the shape o the front view unless

additional design features are added. Here the '197 Patent does not show any

design features in the top and bottom views beyond that dictated by the design o

the front and side views.

The Petitioner notes that Figure 6

o

the '197 Patent, which

is

a top view,

has four coaxial circles. The outermost circle obviously represents the shoulder o

the main body portion. The circles with the second and third larger radii appear to

correspond to the inner and outer diameter o the transfer ring.

ee

Figure 1 o the

' 197 Patent.

t

is not clear what design feature the circle with the smallest diameter

is intended to represent.

10


14/24

VI. pplicable Legal Standards

In the case of a design patent, the ultimate inquiry under Section 1 3 is

whether the claimed design would have been obvious to a designer

of

ordinary

skill who designs articles

of

the type involved. Durling

v

Spectrum Furniture

Co., 1 1 F.3d 100, 1 3 (Fed. Cir. 1996). The inquiry focuses on the visual

impression of the claimed design as a whole and not on selected individual

features. In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996).

In the present case, a designer of ordinary skill would have been a person

with a college degree and at least 2-3 years in the industry performing bottle

design. e e ~ 12 of the Schlesselman Dec. Further, a person of ordinary skill would

be presumed to be aware

of

all relevant prior art in the applicable field, i.e., bottle

design.

See Custom Accessories, Inc.

v

Jeffrey-Allan Indust., Inc.,

807 F.2d 955,

963 (Fed. Cir. 1986).

For purposes

of

applying Section 1 3 to a design patent claim, a two-step

process is employed. Initially, one must find a single reference, a

something in

existence, the design characteristics

of

which are basically the same as the claimed

design. '

Durling,

1 1

F.3d at 103. Then, other references may be used to

modify [the primary reference] to create a design that has the same overall visual

appearance as the claimed design. d. A secondary reference may be combined

with the primary reference when the designs are so related that the appearance of

11


15/24

certain ornamental features in one would suggest the application of those features

to the other. Borden 90 F.3d at 1575. This being a Section 103 analysis, the

application

of

the so related standard is to be addressed under the

KSR

standard.

In

an

IPR proceeding, the petitioner shall have the burden of proving a

proposition ofunpatentability

by

a preponderance of the evidence. 35 U.S.C. §

316(e). Thus, a challenged patent claim does not have a presumption of validity.

The Office may institute an

inter partes

review where the petition filed

under section 311 and any response filed under section 313 shows that there is a

reasonable likelihood that the petitioner would prevail with respect to at least 1 of

the claims challenged in the petition. 35 U.S.C. § 314(a).

VII. Detailed Explanation

of

Grounds For Unpatentability

A. Claim 1

f

The 197 Patent Is Obvious Over The Round Ink

Bottle Design As Modified By the C H No. 146 and C H No. 284

Bottles

The Round Ink bottle design is shown on page 54 of the 1906 Illinois Glass

Company catalog.

See

Exhibit 1002.

The 197 Patent design contains a number of attributes which determine the

overall design. Such attributes include, in the order

of

prominence:

a. the relative height and width of the main body of the bottle;

b. the shape of the upper round shoulder of the main body;

c. the ratio of the body height to neck height; and

2


16/24

d

the shape o the transition from the neck to the top o the main body.

e e ~

14 o the Schlesselman Dec.

There are two other less noticeable features. The bottle's main body tapers

in width from the shoulder to the base, and at the top o the neck o the bottle there

is a transfer ring o

a given height. The taper

is

not generally noticeable unless

measured. The transfer ring is the enlarged width portion at the top

o

the neck. It

is used to remove the bottle from the mold during manufacture.

Id

The Round

nk

bottle, as shown on page 54

o

the 1906 Illinois Glass Company

catalog, has basically the same design as the design illustrated in the '197 Patent,

except that the main body portion is not tapered and the transfer ring portion o the

neck is slightly longer. e e ~

15

o the Schlesselman Dec. However, the overall

design is basically the same as the claim 1 design. d Although there is only

one view, the bottle is round, and therefore the side views and rear view would

be identical.

Id

The relative proportions

o

the Round Ink bottle design and the Claim 1 design

can be compared as follows:

13


17/24

Design Feature

Claim 1 Design

Round Ink Design

Main body height versus width ratio

1.6

1.75

Main body taper - top to bottom 10 percent none

Main body upper shoulders square

square

Ratio - body height to neck height

2.5 2.3

Ratio - body width to neck width

3

2.8

d. t ~ 16

As shown in the table above, and as is evident from comparing the two designs, the

Round Ink Bottle design

is

basically the same as the claim 1 design. Darling,

101 F.3d at 103

. .

Accordingly, the Round nk Bottle constitutes a single reference,

'a

something in existence, the design characteristics ofwhich are basically the same

as the claimed design, '

Durling,

101 F.3d at 103, and satisfies the first step of the

two-step invalidity analysis

The Round Ink bottle design is not exactly the same as the claim 1 design.

The main design difference is that the Claim 1 design has a somewhat squarer

shoulder and transition from the top to the neck. Also, the Claim 1 design

decreases very slightly in width from top to bottom, although such

is

not a

prominent design feature. There is also a small, but not significant to the overall

design, difference in the length

of

the transfer ring. Schlesselman

17

Finally, the

claim 1 design includes a bottom with a double concave surface (both the upper

14


18/24

and lower surfaces

of

the bottom of the bottle are concave , which the Round Ink

Bottle does not show. d.

The C H No. 146 and C H No. 284 bottles are shown opposite one another

on page 212 of the pre-1930 Illinois Glass Company catalog attached as Exhibit

1003. The C H No. 284 bottle also appears in the 1923 Illinois Glass Company

catalog attached as Exhibit 1004. The C H 146 bottle has a cylindrical round main

body portion with a slight taper from top to bottom and a cylindrical neck which

projects upwardly from the center of the top surface. The upper shoulder of the

main body portion, similar to the Claim 1 design, is relatively square,

so

that the

top of the main body portion

is

relatively flat. Because the bottle

is

round, the

front, side, and back views are all the same. See 5

of

the Schlesselman Dec.

Because the Round

nk

bottle, C H 146 bottle, and C H 284 bottle all have

generally the same overall shape, it would have been obvious to use attributes

present in the C H 146 and C H 284 bottles in the Round Ink bottle.

Borden, 90

F.3d at 1575.

The C H No. 146 glass bottle has square shoulders which are virtually

indistinguishable from the Claim 1 design. It also has almost the same amount

of

top-to-bottom taper in width. The C H 284 glass bottle has the same shape transfer

ring as Claim 1 design. f there is any difference between the Claim 1 design and

the Round

nk

bottle modified to have the taper and squarer shoulders

of

C H 146

15


19/24

and the transfer ring o the C H No. 284 bottle, it has to be the double concave

shape o the bottom wall o the bottle.

ee 18 o

the Schlesselman Dec. The

combination

is

merely one

o

simple adaptation and does·not rise to the level

o

patentability.

The double concave shape

o

the glass bottom in the '197 design is not a

significant feature, but it is the only feature which even arguable distinguishes the

'197 design from the combined prior art. The Petitioner respectfully submits that

the double concave shape

is

insufficient to render the overall shape o the bottle

patentable over the prior art.

The applicant respectfully submits that it has demonstrated that there is a

reasonable likelihood that the petitioner would prevail with respect to at least 1

o

the claims challenged in the petition, and that the present Petition should be

granted. 35 U.S.C. § 314(a).

B Claim 1 Is Obvious Over The Round Ink Bottle Design As

Modified By The C H No 146 And C H No 284 Bottles And

Trayser

The Petitioner respectfully reasserts the analysis in Section VII (A) and

reasserts that the resulting design would be the same as the bottle design o Claim

1

The Patentee may argue that the ' 197 Patent design differs from the

combination o the Round Ink bottle

as

modified by the C H No. 146 and C H No.

16


20/24

284 bottles because the shoulder and the transition region between the

neck

and top

do

not bend

as sharply as in Claim

1

Although the difference between the shoulders

of

the C H No. 146 bottle and

the 197 Patent are nearly indistinguishable from one another, the Petitioner

contends

that

Trayser discloses a shoulder and transition region which are the same

as the claim 1 design. The bottle disclosed in Trayser is close in shape to the

Round Ink bottle, and thus it would have been a simple matter of design choice ·and

obvious to use the shoulder and transition region disclosed in the Trayser

reference.




granted. 35 U.S.C. § 314(a).

For this alternative reason, the Petition should be granted.

C Claim 1 is obvious over C H No 146 as modified by

HNo

284

As noted above, the C H No. 146 bottle is shown on page 212

of

a pre-1930

Illinois Glass Company catalog attached as Exhibit 1003. The design has a

cylindrical round main body portion with a slight taper from top to bottom and a

cylindrical neck which projects upwardly from the center

of

the top surface. The

upper shoulder of the main body portion, similar to the claim 1 design, is relatively

17


21/24

square, so that the top

of

the main body portion is relatively flat. Because the

bottle is round, the front, side, and back views are all the same.

See ~ 23 of

the

Schlesselman Dec. The relative proportions

of

the C H No. 146 and the Claim 1

design can be compared as follows:

Design Feature Claim 1 Design C H No.146

Main body height versus width ratio

1 6

1 54

Main body taper - top to bottom

10

percent 9 percent

Main body upper shoulders

square square

Ratio - body height to neck height

2 5 2 5

Ratio - body width to neck width

2 4

See ~ 23 of

the Schlesselman Dec.

As shown in the table above, and as is evident from comparing the two

designs, the C H 146 bottle design

is

basically the same as the claim 1 design.

Durling 101

F.3d at 103.

e e ~

24

of

the Schlesselman Dec. Accordingly, the C H

No. 146 bottle constitutes

a

single reference,

'a

something in existence, the design

characteristics

of

which are basically the same as the claimed design, ' Darling

101

F.3d at 103, and satisfies the first step

of

the two-step invalidity analysis.

The only differences between the C H No. 146 bottle and the Claim 1 design

are that, in the C H No. 146 design, the neck

is

a little wider and the transfer ring is

slightly thinner. Also, the C H No. 146 bottle does not contain a double concave

bottom.

18


22/24

The C H No. 284

s

another perfume bottle. It appears opposite to the C H

No. 146 perfume bottle on the same page 212 o the pre-1930 Illinois Glass

Company catalog. As is evident, the C H No. 284 bottle has a main body portion

similar to the main body portion

o

the C H No. 146 bottle (except that the body is

not tapered, and the shoulders are somewhat rounded). The neck o the C H No.

284 bottle, however, differs from the neck o the C H No. 146 bottle insofar as the

width o the neck is less and the transfer ring is thicker. See ~ 26 o the

Schlesselman Dec.

Because both the C H No. 146 and the C H No. 284 bottles are perfume

bottles, and particularly, because they appear on the same page, opposite one

another, o the Illinois Glass Company pre-1930 catalog, it would have been

obvious for a person skilled in the art to substitute the neck shown in the C H No.

284 bottle (including the thicker transfer ring) for the neck shown in the C H No.

146 bottle. As they are merely a variation o

the same design, the mere similarity

o the designs suggests that it would have been obvious to apply the design

features o one to the other. MRC Innovations, 747 F.3d at 1334. e e ~ 27 o the

Schlesselman Dec. The result

o

such combination would be a bottle design which

is the same as the design shown in Claim 1 o the 197 Patent, except for the

double concave bottom. d. The Petitioner submits that the double concave bottom

19


23/24

is insufficient to render patentable the Claim 1 design, insofar as the overall design

of

Claim 1 is the same as the prior art.

For such reasons, Claim 1 should be rejected as obvious.




granted. 35 U.S.C. § 314(a).

D. Claim 1 Is Obvious Over C H No. 146 As Modified

By

The

C H No. 284 Bottle nd Trayser

The Petitioner respectfully incorporates the analysis in Section VII (C) and

reasserts that the resulting design would be the same as the bottle design ofClaim

1 The Patentee may argue that the ' 197 Patent design differs from the

combination

of

the C H No. 146 as modified by the C H No. 284 bottle because the

shoulder and the transition region between the neck and top do not bend as sharply

as in Claim

1

In such event, the Petitioner contends that Trayser discloses a shoulder and

transition region which are the same as the Claim 1 design, and that it would have

been obvious to use the shoulder and transition region disclosed in the Trayser

reference.

As noted above, Trayser has basically the same design as the C H 146 bottle,

and thus it would have been obvious to combine features. If the Trayser shoulder

20


24/24

and transition region were to be used in the C H 146 bottle as modified, with the

exception

o

the double concave bottom the designs the resulting design would

essentially be the same.


reasonable likelihood that the petitioner would prevail with respect to at least 1

o


granted.

35

U.S.C. § 314(a).

VIII. CONCLUSION

For the reasons discussed above, the Petitioner respectfully submits that it

has demonstrated a reasonable likelihood that Claim 1 o the '197 Patent should be

rejected as obvious under

35

U.S.C. §103. For such reason, the Petitioner requests

that its Petition for inter p rtes review should be granted.

Dated: March 26, 2015

Respectfully submitted,

ABELMAN FRAYNE SCH

Jeffrey

A

Schwab (Reg. No. 24,249)

[email protected]

Robert B. Smith (Reg. No. 28,538)

[email protected]

666 Third A venue

New York, New York 10017

Tel.: (212) 949-9022

vitro v. saverglass - petition for ipr

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