Paper _ _ __

Filed March 26, 2015

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 Avenue
New York, New York 10017
Tel.: (212) 949-9022
jaschwab@lawabel.com
rbsmith@lawabel.com
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD

VITRO PACI<AGING, LLC,

Petitioner,
v.
SAVERGLASS, INC.,
Patent Owner.

Case No. IPR2015- - - - Patent No. D526,197

PETITION FOR INTER PARTES REVIEW OF UNITED

STATES PATENT NO. D526,197 UNDER 35 U.S.C. 311-319

TABLE OF CONTENTS

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

PETITION
I.

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

II. Payment of Fees Under 37 C.P.R. 42.15(a) and 42.103 ............................... 2

III. Requirements Under 37 C.F.R. 42.104 . .......................................................... 2
A. Grounds for Standing ....................................................................................... 2
B. Identification of Challenge .............................................................................. 2
IV. Background...................................................................................................... 7
V. Claim Construction.......................................................................................... 9
VI. Applicable Legal Standards ........................................................................... 11
VII. Detailed Explanation of Grounds For Unpatentability ................................ 12
VIII. Conclusion ...................................................................................................... 21

11

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., 101 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

iii

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 the ' 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).

Lead and Back-up Counsel and Service Information

Lead Counsel
Jeffrey A. Schwab
Abelman, Frayne & Schwab
666 Third A venue
New York, NY 10017
Tel. 212 949-9022
Fax: 212 949-9190
jaschwab@lawabel.com
Reg. No. 24,490

II.

Back-up Counsel
Robert B. Smith
Abelman, Frayne & Schwab
666 Third A venue
New York, NY 10017
Tel. 212 949-9022
Fax: 212 949-9190
rbsmith@lawabel.com
Reg. No. 28,538

Payment of 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 is available for inter partes review and the Petitioner is not barred
or estopped from requesting an inter partes review challenging the patent claim on
the grounds identified in this Petition.
Identification of Challenge 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:

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.

The References in Exhibits 1003-1005 Are Prior Art 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 of 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, if 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 of catalogs published
prior to 1930. Further, today it is not unusual to find copies of old books or
catalogs which have been scanned and posted on the Internet. For example,
Project Gutenberg contains a collection of thousands of old, out of copyright books
which have been scanned and posted.

A complete copy of 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 of 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 of an "I" inside of 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-onantique-bottles/, the author discusses such trademark and notes that the Illinois
Glass Company used the diamond I trademark from approximately 1915 until
1929. See Exhibit 1007. Usage of the Diamond I trademark from about 19151929 is confirmed in "The Dating Game," B. Lockhart et al., Bottles and Extras
magazine Winter 2005. See Exhibit 1008.
The Illinois Glass Company merged with the Owens Bottle Machine Company
in 1929. See 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 of a diamond. See "Owens-Illinois
5

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

(Exhibit 101 0), available at http://www.sha.org/index.php/view/page/ owensIllinois 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.

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

Trayser et 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.

Background
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."

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 of references.
But this fact does not legitimize such combination. Instead,
for a combination of 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 of 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 of designing a new bottle.
But even if 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
of rejecting the claim in the present application. In other words:
every bottle design has a multitude of design features. Therefore, the
chances that any given one feature from each of the four bottle
designs (each of those four designs embodying a multitude of design
features) would be selected and assembled, are one in an almost
infinite number.
See December 5, 2005 Amendment, pages 5-6 (emphasis in original).

Thereafter, the application was allowed.

It is worthy of 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 of 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 of the specification of the patent in which it appears." 3 7 C.F .R.

42.1 OO(b ). Because it is a design patent, the scope of 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-towidth ratio of 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

The bottle design of claim 1 further includes a cylindrical neck extending upwardly
from the center of the top surface of the main container portion. The upper end of
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"). See ~ 18 of the Declaration of 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 Dec.~ 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 of 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 of
the front and side views.
The Petitioner notes that Figure 6 of the '197 Patent, which is a top view,
has four coaxial circles. The outermost circle obviously represents the shoulder of
the main body portion. The circles with the second and third larger radii appear to
correspond to the inner and outer diameter of the transfer ring. See Figure 1 of the
' 197 Patent. It is not clear what design feature the circle with the smallest diameter
is intended to represent.
10

VI.

Applicable Legal Standards

In the case of a design patent, "the ultimate inquiry under Section 103 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., 101 F.3d 100, 103 (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.

See~

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 103 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, 101 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

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 Of 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

12

d. the shape of the transition from the neck to the top of the main body.
See~

14 of 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 of the neck of the bottle there
is a "transfer ring" of a given height. The taper is not generally noticeable unless
measured. The transfer ring is the enlarged width portion at the top of the neck. It
is used to remove the bottle from the mold during manufacture. Id.
The Round Ink bottle, as shown on page 54 of 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 of the
neck is slightly longer.

See~

15 of 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 of the Round Ink bottle design and the Claim 1 design
can be compared as follows:

13

Claim 1 Design
1.6
10 percent
square
2.5
3

Design Feature
Main body height versus width ratio
Main body taper - top to bottom
Main body upper shoulders
Ratio - body height to neck height
Ratio - body width to neck width

!d.

at~

Round Ink Design

1.75
none
square
2.3
2.8

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 Ink Bottle constitutes "a single reference, 'a
something in existence, the design characteristics of which 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

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 ~ 15 of the Schlesselman Dec.
Because the Round Ink 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. If there is any difference between the Claim 1 design and
the Round Ink bottle modified to have the taper and squarer shoulders of C H 146
15

and the transfer ring of the C H No. 284 bottle, it has to be the double concave
shape of the bottom wall of the bottle. See

18 of the Schlesselman Dec. The

combination is merely one of simple adaptation and does not rise to the level of
patentability.
The double concave shape of 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 of 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 of
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 of Claim
1. The Patentee may argue that the ' 197 Patent design differs from the
combination of the Round Ink bottle as modified by the C H No. 146 and C H No.
16

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

C 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

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
Main body height versus width ratio
Main body taper - top to bottom
Main body upper shoulders
Ratio - body height to neck height
Ratio - body width to neck width

Claim 1 Design

C H No.146

1.6

1.54

10 percent
square

9 percent
square

2.5

2.5
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.

See~

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

The C H No. 284 is another perfume bottle. It appears opposite to the C H

No. 146 perfume bottle on the same page 212 of 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 of the C H No. 146 bottle (except that the body is
not tapered, and the shoulders are somewhat rounded). The neck of the C H No.
284 bottle, however, differs from the neck of the C H No. 146 bottle insofar as the
width of the neck is less and the transfer ring is thicker. See ~ 26 of 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, of 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 of the same design, the mere similarity
of the designs suggests that it would have been obvious to apply the design
features of one to the other. MRC Innovations, 747 F.3d at 1334.

See~

27 of the

Schlesselman Dec. The result of such combination would be a bottle design which
is the same as the design shown in Claim 1 of the '197 Patent, except for the
double concave bottom. !d. The Petitioner submits that the double concave bottom

19

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.
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 of
the claims challenged in the petition," and that the present Petition should be
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 And 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 of Claim
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

and transition region were to be used in the C H 146 bottle as modified, with the
exception of the double concave bottom the designs the resulting design would
essentially be the same.
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 of
the claims challenged in the petition," and that the present Petition should be
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 of 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 partes review should be granted.
Dated: March 26, 2015
Respectfully submitted,

ABELMAN, FRAYNE & SCH

'K~ AJeffrey A. Schwab (Reg. No. 24,249)

jaschwab@lawabel.com
Robert B. Smith (Reg. No. 28,538)
rbsmith@lawabel.com
666 Third Avenue
New York, New York 10017
Tel.: (212) 949-9022
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