Ex Parte Benedetti et alDownload PDFPatent Trial and Appeal BoardOct 18, 201712095475 (P.T.A.B. Oct. 18, 2017) Copy Citation 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. 12/095,475 05/29/2008 Paolo Benedetti 1034170-000041 2160 21839 7590 10/20/2017 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 EXAMINER GRANO, ERNESTO ARTURIO ART UNIT PAPER NUMBER 3788 NOTIFICATION DATE DELIVERY MODE 10/20/2017 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): ADIPDOCl@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAOLO BENEDETTI and PIETRO MARTINI Appeal 2015-008044 Application 12/095,4751 Technology Center 3700 Before: KEN B. BARRETT, EDWARD A. BROWN, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 6, 8—13, and 15—20.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Appeal Brief indicates Tetra Laval Holdings and Finance S.A. is the real party in interest. Appeal Br. 2. 2 An oral hearing was conducted on September 20, 2017. 3 Claims 7 and 14 have been cancelled, and claims 1—5, 21, and 22 have been allowed by the Examiner. Final Act. 1—2, 5. Appeal 2015-008044 Application 12/095,475 CLAIMED SUBJECT MATTER The claims are directed to a “method of producing plastic tops for sealed containers of pourable food products, and to container plastic tops so produced.” Spec. 1,11. 11—15. Claim 6, reproduced below, is illustrative of the claimed subject matter: 6. A plastic top for sealed containers of pourable food products, said top comprising: an annular base portion; a neck portion projecting from said base portion, defining, with the base portion, a pour opening of said container, and closed, on a side opposite to said base portion, by a disk member, said base portion and neck portion being formed from a multilayer plastic sheet material; an external thread, obtained by overmolding a plastic material onto said closed neck portion after the closed neck portion has been formed, on a side of said closed neck portion opposite to a side bounding said pour opening such that said external thread overlies a part of the closed neck portion that has a layer of gas-barrier material; and a cap applied to said closed neck portion; wherein said disk member has a cut along its outer periphery; wherein said disk member is joined to a portion of said cap superimposed on the disk member, so that said disk member defines a layer of gas-barrier material of the cap; and wherein said cap has an internal thread which engages said external thread. The prior art relied upon by the Examiner in rejecting the claims on REFERENCES appeal is: Nelson Luch Fehn US 3,086,249 Apr. 23, 1963 US 5,213,224 May 25, 1993 US 6,479,115 B2 Nov. 12, 2002 2 Appeal 2015-008044 Application 12/095,475 Herrera Gomez4 EP 1 147 990 A2 Oct. 24, 2001 REJECTION Claims 6, 8—13, and 15—20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Herrera Gomez, Fehn, Luch, and Nelson. OPINION Claim 6 The Examiner finds that Herrera Gomez discloses many of the elements recited in independent claim 6, but relies on Fehn, Luch, and Nelson to teach certain features related to a multi-layered container including a gas barrier material, exterior threads, and a process of over molding external threads, respectively. Final Act. 2-4. Appellants assert, “if Herrera-Gomez were formed from a multi-layer plastic sheet material including a layer of gas[-]barrier material, an ordinarily skilled artisan would not expect the layer to withstand being formed into a threaded portion without losing its gas-barrier properties.” Appeal Br. 8 (emphasis added). In light of the teachings of Luch and Nelson, the Examiner proposes to over-mold threads onto the neck of the container, as is required by claim 1. See Final Act. 2—3. In other words, Appellants’ assertion that there would be no expectation that the multi-layer plastic sheet material would withstand being formed into a threaded portion without losing its gas-barrier 4 Appellants and the Examiner refer to EP 1 147 990 A2, for which the listed inventor is “Francisco Herrera Gomez” as “Herrera Gomez,” and we maintain this nomenclature for consistency. 3 Appeal 2015-008044 Application 12/095,475 properties does not address the rejection of claim 1 because the rejection incorporates an over-molding process to provide threads. In relation to the requirement for a “cut” along the outer periphery of the disk member recited in claim 1, Appellants argue “there is no evidence on the record that an ordinarily skilled artisan would expect a container made from a multi-layer material having a gas-barrier layer to function as a gas-barrier if the container is weakened in the manner shown in Herrera- Gomez.” Appeal Br. 9. In response, the Examiner states, “[sjince, Herrera-Gomez discloses a seal 6 as part of its formed wall, it would be obvious to maintain a seal when incorporating a gas-barrier layer.” Ans. 5. In reply, Appellants argue, “Fehn only suggests a barrier layer that is an inner layer 17, and it is not clear how an inner barrier layer could be post applied to a container while keeping its barrier properties, or how the barrier properties of an inner barrier layer would have been expected to keep its barrier properties when weakened at 7 as in Herrera-Gomez.” Reply Br. 2 (emphasis omitted). Appellants’ argument on this point is unavailing because it relies on bodily incorporating, in Herrera Gomez, the multilayered structure of Fehn. This is not what is proposed by the Examiner. Rather, the Examiner combines the general teaching in Fehn of providing a gas-barrier layer and another layer as a wall of a container with the teaching in Herrera Gomez of providing a cut or “weakening.” See Final Act. 2—3; see also KSR Int 7 Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Appellants provide no persuasive technical argument or objective evidence to show that a person of ordinary skill in the art would have had any difficulty in 4 Appeal 2015-008044 Application 12/095,475 combining the teachings of Herrera Gomez and Fehn in such a way as to maintain the gas-barrier properties provided by Fehn’s multi-layered material. Indeed, as the Examiner points out (Ans. 5), Herrera Gomez, before any modification, already intends to form a seal in the same surface in which “weakening” 7 is located. See Herrera Gomez, Abstract (stating, “The bottle is of a single-piece and comprises a main body (2) with a hermetically closing part (6) delimited by a weakening (7) of the material adjacent to the periphery of the mouth.”); see also id. 131. Appellants also contend, “at most, the ordinarily skilled artisan would have sought to post-apply the layer of gas-barrier material rather than initially thermoform the container from a multilayer material having a layer of gas-barrier material.” Appeal Br. 9. Appellants do not provide any persuasive technical argument or objective evidence as to why a person of ordinary skill in the art would have implemented the gas-barrier of Fehn as a post-applied layer. Rather, Appellants merely make this assertion and immediately switch to an argument regarding a different reference. See Appeal Br. 9. Accordingly, Appellants’ contention on this point is unpersuasive. The Examiner reasons that it would have been obvious to provide exterior threads as taught by Luch (i) to provide a smooth interior surface, allowing for easier cleaning and (ii) to provide a reinforced container neck.5 Final Act. 3. Attacking this reasoning, Appellants argue “Luch does not mention cleaning the interior surface of the neck and, moreover, the embodiment of Figs. 12A-12C of Luch includes an exterior thread in any event.” Appeal Br. 9. Appellants also argue “Luch suggests, if anything, 5 We understand this portion of the Examiner’s reasoning to apply to the teachings of Luch and Nelson. 5 Appeal 2015-008044 Application 12/095,475 the necessity of using a different process to form the container if a threaded container with a smooth inner neck is desired” and “Herrera-Gomez’s process of thermoforming from a sheet of thermoplastic material will result in a neck interior having the same shape as the neck’s exterior.” Reply Br. 2. First, Appellants do not contend that the Examiner’s reasoning regarding the ability to clean is incorrect. Rather, Appellants merely contend that there is no discussion in Luch regarding cleaning. See Appeal Br. 9; see also Reply Br. 2. However, it is reasonable to believe that a smooth interior surface of a container neck would be easier to clean than a threaded one. Thus, this prong of the Examiner’s reasoning (the cleaning motivation) is supported by rational underpinning. Second, the disclosure in Figures 12 A— 12C of Luch of exterior threads provided on a neck with a smooth interior surface is evidence that strengthens, not weakens, the Examiner’s position that such threads can provide a smooth interior surface of the neck. Third, regarding Appellants’ assertion that Herrera Gomez provides a neck interior having the same shape as the neck’s exterior, and that Luch may use a different process, the Examiner relies on Luch, not Herrera Gomez, to teach exterior threads. Further, the Examiner relies on Nelson, not Herrera Gomez or Luch, to teach the process of over-molding external threads. See Final Act. 2—3. Thus, Appellants’ arguments on this point do not address the Examiner’s rejection. As for the Examiner’s reliance on Nelson to teach a threading over molding process, Appellants contend that this reference requires entry of neck core 11 into the neck of the container during the over-molding process, and, therefore, it would be impossible to over-mold threads onto a closed 6 Appeal 2015-008044 Application 12/095,475 neck (as disclosed by Herrera Gomez) using Nelson’s process. Appeal Br. 9. Additionally, Appellants state, “at most, Nelson discloses injection molding a threaded portion onto an open neck which is not formed from a multilayer material. In other words, Nelson clearly does not suggest molding threads onto a closed neck portion made from a multilayer plastic material.” Id. The Examiner replies that the rejection is based on a combination of references, and it is not required that the specific structures themselves be physically combinable. Ans. 6—7 (citing In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) and {In re Nievelt, 482, F.2d 965 (CCPA)). As for whether Nelson’s process of over-molding could be used to provide external threads on a container with a closed top, the Examiner states, “a closed neck container can be used in a similar process to what Nelson teaches, but, the neck core would be inserted through the bottom opening of Herrera-Gomez and not the neck opening since there is no top opening until the container is in use.” Ans. 7 (emphasis added). Appellants reply that “while lines 7-10 on page 7 of the Answer states that the neck core could be inserted through a bottom opening of Herrera- Gomez, there is no explanation as to how a closed neck on a top opening could be formed thereby.” Reply Br. 3 (emphasis omitted). The Examiner has the better position on this point. Even assuming, arguendo, that Nelson’s process requires structure (such as neck core 11) to be placed inside the neck during over-molding, Appellants provide no persuasive technical argument or objective evidence as to why inserting such structure through the bottom of the neck would pose any particular difficulty to a person of ordinary skill in the art. Indeed, Herrera Gomez teaches that the bottom of its bottle 1 is added after the bottle has been filled with the 7 Appeal 2015-008044 Application 12/095,475 product it is intended to contain, i.e., after formation of the top of the bottle and its associated threads. See Herrera Gomez || 27—28. Appellants contend that the Examiner’s finding that over-molding external threads would increase the rigidity of the neck of the container in Herrera Gomez (see Ans. 6) “is an oversimplification” because “Nelson explains that, by forming the neck and the body separately, the neck and the body can be made of dissimilar materials, such as a lighter material for the body and a stronger material for the neck” and “the process disclosed in Nelson could not be used to form a separate closed neck of dissimilar material on a body.” Reply Br. 2—3 (citing Nelson, col. 1). We are not apprised of Examiner error. First, Appellants do not explain why over-molding external threads on a neck made of material dissimilar to the over-molding material would present any particular difficulty for a person of ordinary skill in the art. Second, Appellants provide no persuasive argument or evidence that the benefits discussed in the Examiner’s rationale (reinforcement and increased rigidity) require the use of dissimilar materials for the neck and threads. Indeed, Nelson implies the opposite, stating, “[f]or the purpose of this disclosure, the terms ‘dissimilar thermoplastic compositions’ or ‘dissimilar thermoplastic material’ will means [sic] thermoplastics composed of dissimilar chemical compositions, of similar chemical compositions but of different colors, or of dissimilar chemical compositions and different colors.” Nelson 1:12—18 (emphasis added). Thus, the dissimilarity in materials may merely be in their color, not in any characteristic pertinent to rigidity or reinforcement. Third, the fact that Nelson’s process may be used on a neck and over molded threading of dissimilar materials, when the dissimilarity is in chemical composition, supports the Examiner’s finding that Nelson’s 8 Appeal 2015-008044 Application 12/095,475 process may be used in combination with the other references cited in the rejection because this teaching in Nelson enlarges the number of uses of Nelson’s process, it does not restrict them. We have considered all of Appellants’ arguments and the evidence of record, but determine the Examiner has the better position regarding the rejection of claim 6, and therefore, we affirm the rejection of claim 6 as unpatentable over Herrera Gomez, Fehn, Luch, and Nelson. Claim 13 As to independent claim 13, Appellants make similar arguments to those made for the patentability of claim 6 (see Appeal Br. 10—12), and we likewise affirm the rejection of claim 13 as unpatentable over Herrera Gomez, Fehn, Fuch, and Nelson. Claims 8, 10, 15, 17, 18, and 20 Appellants make no separate arguments for dependent claims 8, 10, 15, 17, 18, and 20. See Appeal Br. 7—14. Accordingly, we affirm the rejection of these claims as unpatentable over Herrera Gomez, Fehn, Fuch, and Nelson. Claims 9 and 16 Claim 9 depends from claim 6 and recites, “wherein said disk member is joined to said cap by a weld.” Appeal Br. 16 (Claims App.). Claim 16 depends from claim 13 and recites a similar limitation. Id. at 18. The Examiner determines that it would have been obvious to use welding to attach the cap to the disk member because welding and adhesive attachment are known equivalents. Final Act. 4.6 6 In the Non-Final Office Action (Non-Final Act) dated March 7, 2014, the Office Action directly prior to the Final Action from which the present appeal is taken, the Examiner notes that official notice as to this point was 9 Appeal 2015-008044 Application 12/095,475 Appellants contend that welding (thermowelding) “would not be an obvious substitute for adhesive attachment in every circumstance.” Final Act. 12—13. Appellants contend that Herrera Gomez discloses “a non-trivial gap between the surfaces that are connected together, with a sufficient amount of adhesive being used to fill the gap.” Appeal Br. 13 (citing Herrera Gomez, Figs. 3, 4). Appellants contend that such a gap would make a thermowelded connection unfeasible in cap 8 of Herrera Gomez. Appeal Br. 13. Appellants also contend that Herrera Gomez does not disclose that the materials used in cap 8 and body 1 in Herrera Gomez are similar materials, “so an ordinarily skilled artisan would not find it feasible to thermoweld the cap 8 and the closing part 6 together absent also modifying the cap 8 to also be made of the same thermoplastic material.” Id. In response, the Examiner reiterates that Appellants did not traverse the taking of official notice that welding and adhesive attachment are known substitutes, and, in any event, finds the structure in Herrera Gomez is positioned in such a way as to permit thermowelding. Ans. 8 (citing Herrera Gomez, Figs. 3, 4). Figures 3 and 4 of Herrera Gomez appear to depict direct contact between cap 8 and closing part 6. Accordingly, we agree with the Examiner on the above-noted points. Additionally, Appellants’ argument depends on a bodily incorporation of the structure in Herrera Gomez, and there is no requirement that the teachings of the cited references be able to be bodily incorporated. See In re Nievelt, 482 F.2d at 968 (“Combining the teachings of references does not involve an ability to combine their specific taken previously, and Appellants made no traversal in response. Non-Final Act. 6; see also Final Act. 6 (Reiterating that Appellants did not traverse the taking of official notice). 10 Appeal 2015-008044 Application 12/095,475 structures.”). Rather, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int 7 Co. v. Teleflex Inc., 550 U.S. at 417. As to whether cap 8 and sealing portion 6 in Herrera Gomez are the same material, the Examiner finds that the cross-hatching in Figure 3 for these components is identical (aside from reverse orientation), and paragraph 1 of Herrera Gomez discloses that the container is a thermoplastic material, and thus, cap 8 and sealing portion 6 comprise materials capable of being welded. The Examiner also determines that selection of “a known material on the basis of its suitability for the intended use [is] a matter of obvious design choice.” Ans. 9 (citing In reLeshin, 227 F.2d 197 (CCPA 1960). Appellants reply that the cross-hatchings for cap 8 and sealing portion 6 have different spacing. Reply Br. 3. Appellants also contend that the Examiner’s discussion of design choice “is outside the scope of the actual rejection, because the actual rejection does not assert that it would have been obvious to make the container and cap out of the same material.” Id. The Examiner has the better position on this point. First, when the Examiner determined that “[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to utilize welding to attach the cap and disk member” (Final Act. 4), it was implicit in this determination that such a process would have been possible. In other words, it was not necessary for the Examiner to find, explicitly, that cap 8 and sealing portion 6 in Herrera Gomez were the same material before making a determination that joining the two via welding would have been obvious. Second, the Examiner’s finding that cap 8 and sealing portion 6 are similar 11 Appeal 2015-008044 Application 12/095,475 materials (Ans. 8—9) is supported by a preponderance of the evidence inasmuch as Figure 3 of Herrera Gomez depicts cap 8 and sealing portion 6 with similar cross-hatching, even if the spacing between diagonal lines is different in these two components. We have considered all of Appellants’ arguments regarding claims 9 and 16, but are not apprised of Examiner error. We affirm the Examiner’s rejection of claims 9 and 16 as unpatentable over Herrera Gomez, Fehn, Luch, and Nelson. Claim 11 Claim 11 recites, “[a] top as claimed in Claim 10, wherein said weld is positioned inwardly of said annular cut.” Appeal Br. 17 (Claims App.). Appellants contend that the Examiner does not explicitly address this claim, and therefore, has not set forth a prima facie case of obviousness. Appeal Br. 14. Appellants make no other arguments for the patentability of claim 11. See id. In response, the Examiner states, “[cjlaims 11 and 12 are mutually identical therefore, the rejection of 12 is also applied to claim 11.” Ans. 9. We agree with the Examiner on this point. Claim 12 recites, in part, “wherein said cut is positioned outwardly of said weld.” Appeal Br. 17 (Claims App.). Thus, claim 11 requires that the weld be positioned inwardly of the cut, whereas claim 12 requires the cut to be positioned outwardly of the weld. Claim 12 depends directly from claim 9, and claim 11 depends from claim 9 indirectly via claim 10, which requires the cut to be “an annular cut,” a requirement that seems to be independent of whether the cut 12 Appeal 2015-008044 Application 12/095,475 is inward or outward of the weld. Accordingly, the Examiner’s findings and reasoning regarding the rejection of claim 12 apply to claim 11 as well. Claim 12 Appellants contend “the discussion of Claim 12 on page 4 of the Official Action refers to a ‘weld . . . outwardly of the annular cut’. But this is, if anything, the opposite of the claimed relationship between the weld and the cut.” Appeal Br. 14. The Examiner replies by acknowledging that the rejection misstated the requirements of claim 12, but maintains that the subject matter of claim 12 would have been obvious in light of Herrera Gomez’s disclosure of adhesive positioned inwardly of the cut. Ans. 9. The Examiner determines “[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to the weld inwardly of the annular cut to ensure the removed disk-shaped member of Herrera Gomez.” Ans. 9. As shown in Figures 3 and 4 of Herrera Gomez, adhesive 11 is positioned inwardly of cut 7. Thus, the Examiner’s finding on this point is supported by a preponderance of the evidence. Further, the Examiner’s rejection of claim 9 replaces the adhesive with a weld. See Final Act. 4. Based on the positioning of the adhesive in Herrera Gomez inward of cut 7, replacing the adhesive with welding satisfies the requirements of claim 12. Thus, the Examiner’s rejection of claim 12 is supported by rational underpinnings and is affirmed. Claim 19 With respect to claim 19, Appellants repeat the argument, discussed above, that a person of ordinary skill in the art would not expect a container made from a multi-layer material having a gas-barrier layer to function as a 13 Appeal 2015-008044 Application 12/095,475 gas-barrier if the container is weakened in the manner shown in Herrera- Gomez. See Appeal Br. 9, 14. For the same reasons discussed above, this argument does not apprise us of error in the Examiner’s rejection. Accordingly, we affirm the rejection of claim 19 as unpatentable over Herrera Gomez, Fehn, Luch, and Nelson. DECISION The Examiner’s rejection of claims 6, 8—13, and 15—20 is affirmed. 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)(l)(iv). AFFIRMED 14 Copy with citationCopy as parenthetical citation