Ex Parte Benedetti et al

Patent Trial and Appeal Board

Oct 18, 2017

12095475 (P.T.A.B. Oct. 18, 2017)

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
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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.
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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
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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.
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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
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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
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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
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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
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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).
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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
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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
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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
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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
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