Ex Parte Gerlach et al

Patent Trial and Appeal Board

Jul 27, 2016

12873368 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/873,368 09/01/2010
27752 7590 07/29/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Christian Gerhard Friedrich Gerlach
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CM3422L 5184
EXAMINER
GUPTA, YOGENDRAN
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
07/29/2016 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN GERHARD FRIEDRICH GERLACH and
PATRICK JEAN-FRANCOIS ETESSE
Appeal2014-004040
Application 12/873,368
Technology Center 1700
Before JAMES C. HOUSEL, DONNA M. PRAISS, and
KRISTINA M. KALAN, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision finally rejecting claims 1-10. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision refers to Appellants' Specification (Spec.) filed September 1,
2010, Appellants' Appeal Brief (Appeal Br.) filed October 21, 2013, and the
Examiner's Answer (Ans.) sent November 20, 2013.
2 According to Appellants, the real party in interest is The Proctor & Gamble
Company. Appeal Br. 1.
Appeal2014-004040
Application 12/873,368
STATEMENT OF THE CASE
The invention relates to a process for making a stretch-blow moulded3
container having an integrally moulded handle. Spec. 1 :6---7. Appellants
disclose that the handle is formed after the container is stretch-blow moulded
by applying inwardly moving plugs to form concave gripping regions while
maintaining the pressure inside the container and the temperature of the
material in the gripping region below the material's glass transition
temperature, T g· Id. at 5: 10-13. In one embodiment, the surface area of the
grip before forming the handle is smaller than the surface area of the deep
grip of the formed handle, resulting in additional surface stretching and
molecular orientation during deep drawing. Id. at 6: 18-21. Stretching of a
plastic material in two directions produces biaxial orientation which was
performed in the art at temperatures above T g, in order to reduce flow and
internal stresses created during deep drawing. Id. at 4: 13-16. However;
according to Appellants, "it has surprisingly been found that a biaxial
orientation of the material at lower temperatures improves the draw-ability
as the material can withstand higher stresses during deep drawing before it
fails." Id. at 4: 19-21.
Sole independent claim 1, reproduced from the Claims Appendix to
the Appeal Brief, is representative of the subject matter on appeal:
1. A process for making a container having an integral handle,
comprising the steps of:
a) providing a preform in a mould cavity;
b) stretch-blow moulding the preform to form an
3 The terms, "mould" and "mold" in various tenses, are used interchangeably
throughout this record.
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Application 12/873,368
intermediate container;
c) applying one or more inwardly moving plugs to
plastically deform a portion of the intermediate container
to form one or more concave gripping region(s), whilst
maintaining the pressure within the intermediate container
above 1 bar and whilst the temperature of the material in
the gripping region of the intermediate container is at a
temperature below the glass transition temperature, T g,
wherein the intermediate container has an intermediate
surface area of grip and the gripping region in the finished
container has a gripping region surface area, wherein the
intermediate surface area of grip is smaller than the
gripping region surface area;
d) releasing excess pressure within the container; and
e) ejecting the finished container from the mould cavity.
The Rejections
The Examiner maintains, and Appellants request review of, the
following grounds of rejection:
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Application 12/873,368
A. Claims 1-10 under the ground of nonstatutory obviousness-type
double patenting as unpatentable over claims 1-8 and 10-14 of
copending U.S. Patent No. 9,050,750 B24 in view of Trude5 and
Connolly; 6'7
B. Claims 1-3, 5, and 7-10 under 35 U.S.C. § 103(a) as
unpatentable over Belcher8 in view of Trude, Connolly, De Vel, 9 and
Moore· 10
'
C. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Belcher, Trude, Connolly, De Vel, and Moore, and
further in view of Takada; 11 and
D. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Belcher, Trude, Connolly, De Vel, and Moore, and
further in view of Cho. 12
4 US 9,050,750 B2, issued June 9, 2015.
5 US 2007/0235905 Al, published October 11, 2007 ("Trude").
6 US 2006/0177615 Al, published August 10, 2006 ("Connolly").
7 The Examiner provisionally rejected claims 1-10 under the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
1-8 and 11-15 of copending Application No. 12/406,523 in view of Trude
and Connolly. However, since copending Application No. 12/406,523
issued as U.S. Patent No. 9,050,750 B2 on June 9, 2015, we have amended
the rejection statement to remove its non-provisional status. In addition, we
also have amended the rejection statement to refer to those claims of the
patent that correspond to the claims of the copending patent application
relied on by the Examiner.
8 US 7,153,455 B2, issued December 26, 2006 ("Belcher").
9 WO 2007/128451 Al, published November 15, 2007 ("De Vel"). Both the
Examiner and Appellants refer to this reference as "Devel."
10 US 5,202,078, issued April 13, 1993 ("Moore").
11 US 2008/0274318 Al, published November 6, 2008 ("Takada").
12 US 200710145646 Al, published June 28, 2007 ("Cho").
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Application 12/873,368
ANALYSIS
Rejection A: Obviousness-type Double Patenting
The Examiner finds the copending patent claims disclose a similar
process for forming an integral handle on a stretch-blow molded article, but
fail to teach forming the concave gripping regions at a temperature under T g·
Ans. 3. However, the Examiner finds Trude teaches "when inverting the
moveable region of an intermediate container it is beneficial to cool the
intermediate container to provide for improved inversion of the region to be
inverted for handle formation," i.e., without causing unwanted folds or
defects. Id. at 3--4. The Examiner further finds Connolly teaches, when
blow molding polyethylene terephthalate (PET), the blow mold is typically
held at 5-25°C or ambient temperature, which will cause the PET to drop
below Tg almost immediately on contact with the mold. Id. at 4. The
Examiner concludes one of ordinary skill in the art would expect the blown
preform of the copending patent claims to cooi beiow T g when it contacts the
mold as taught by Connolly, which is desired for inversion of the handle to
avoid folds or defects as taught by Trude. Id.
Appellants contend that the rejection fails to establish a prima facie
case of obviousness because Trude fails to teach forming one or more
concave gripping regions by inwardly moving plugs to plastically deform a
portion of the intermediate container, where the intermediate surface area of
grip is smaller than the gripping region surface area. Appeal Br. 2.
Moreover, Appellants argue that the rejection fails to provide motivation to
one skilled in the art to perform this step at a temperature below T g· Id. at 2-
3. Appellants urge that one would not seek to combine the copending patent
claims with Connelly as the copending claims specifically require
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Application 12/873,368
maintaining a temperature between T g and the melt temperature, Tm,
whereas Connelly teaches the preform has a temperature below T g when it
contacts the mold. Id. Appellants also urge that one would not seek to
combine the copending patent claims with Trude's teaching of allowing the
container to cool as much as possible to allow inversion of an already
formed gripping region. Id. In this regard, Appellants assert that the
copending patent claims, which require a temperature above T g, teach away
from a temperature below T g· Id. at 3.
Appellants' arguments are persuasive of reversible error in the
Examiner's rejection. The Examiner has the initial burden of establishing a
prima facie case of obviousness. See In re Piasecki, 7 45 F .2d 1468, 14 72
(Fed. Cir. 1984); In re Rinehart, 531F.2d1048, 1051(CCPA1976).
Meeting that burden requires establishing that the applied prior art would
have provided one of ordinary skill in the art with an apparent reason to
modify the prior art to arrive at the claimed invention. See KS'R Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner correctly notes that
the copending patent claims provide an intermediate surface area of grip that
is smaller than the gripping region surface area, as well as plastically
deforming the intermediate container by inwardly moving plugs (Ans. 20-
21 ). However, the Examiner fails to address Appellants' related argument
that the copending claims require a temperature above T g to perform this
plastic deformation to form the gripping regions. As Appellants argue,
Trude's inversion does not form gripping regions through plastic
deformation to provide a surface area of the gripping regions that is greater
than the intermediate surface area of grip. Appeal Br. 2. This difference is
significant as Connolly teaches that, when the mold is held below T g, only
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Application 12/873,368
limited stretching occurs once the blown material contacts the mold. As
Appellants disclose, the plastic deformation of the intermediate container by
the inwardly moving plugs to form a greater surface area of the gripping
regions below T g biaxially orients the material to improve drawability of the
material. See Spec. 4: 11-33. Thus, Trude and Connolly suggest
deformation of the material at a temperature below T g, but fail to teach or
suggest such deformation including the stretching that occurs during plastic
deformation of material at a temperature below T g to form concave gripping
regions having a greater surface area than the intermediate surface area of
gnp.
The Examiner has not carried the burden of establishing, by a
preponderance of the evidence, the factual basis for the conclusion that the
claimed invention would have been obvious. Under these circumstances, we
cannot conclude that the Examiner has met the minimum threshold of
estabiishing obviousness based on Appeiiants' copending patent claims in
view of Trude and Connolly. See In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992); see also, In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)
("[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness."), quoted with approval in KSR, 550 U.S. at 418.
Rejection B: Obviousness under 35 USC§ 103(a)
The Examiner finds Belcher teaches a process for forming a container
with an integral handle, wherein a PET preform is stretch blow molded to
form an intermediate container, followed by applying inwardly moving
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Application 12/873,368
plugs to plastically deform a portion of the intermediate container to form
concave gripping regions while maintaining pressure in the container above
1 bar and temperature "around the glass transition temperature (Tg)."
Ans. 5---6. Although the Examiner finds Belcher is silent as to the
temperature of the inversion, the Examiner finds Belcher teaches injecting a
blow gas of 750 psi and between 40-120°F into the intermediate container.
Id. at 6. Therefore, the Examiner "submits that this most likely will cool the
container and gripping/convex area below the TG [sic, Tg] of PET which is
around 81C (as stated by appellant)." Id. (emphasis omitted). Nonetheless,
the Examiner concedes that "Belcher does not expressly teach wherein the
temperature of the gripping region is below the glass transition temperature
of the container (causing a plastic deformation by mechanical force rather
than heat)." Id. at 7.
Similar to the rejection above, the Examiner finds Trude teaches
"when inverting the moveabie region of an intermediate container it is
beneficial to cool the intermediate container to provide for improved
inversion of the region to be inverted for handle formation (this leads to
mechanical plastic deformation over heat deformation)." Id.. The Examiner
concludes it would have been obvious to perform the inversion in Belcher
below Tg to ensure proper inversion. Id. The Examiner also states that
"[g]enerally, differences in concentration or temperature will not support the
patentability of subject matter encompassed by the prior art unless there is
evidence indicating such concentration or temperature is critical," citing to
In re Aller, 220 F.2d 454, 456 (CCPA 1955). Id. In addition, the Examiner
finds Trude provides a reasonable basis to select a low temperature for
performing the deformation step. Id. at 7-8.
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Application 12/873,368
The Examiner further finds Connolly teaches, when blow molding
PET, the blow mold is typically held at 5-25°C or ambient temperature,
which will cause the PET to drop below T g almost immediately on contact
with the mold. Id. at 8. The Examiner concludes one of ordinary skill in the
art would expect Belcher' s blown preform to cool below T g when it contacts
the mold as taught by Connolly. Id. The Examiner finds that Belcher
teaches the preform is at 88-129°C, which is already near Tg, and is blown
using a blow temperature of 4-49°C. Id. As such, the Examiner finds the
overall effect of Belcher's blow mold process is that the blow molded
container will be under Tg prior to plug deformation. Id. at 9.
Appellants contend that this rejection fails to establish a prima facie
case of obviousness because Trude fails to teach forming one or more
concave gripping regions by inwardly moving plugs to plastically deform a
portion of the intermediate container to form the concave gripping regions.
Appeai Br. 4. Moreover, Appeiiants argue that the rejection faiis to provide
motivation to one skilled in the art to combine Belcher and Trude because,
unlike Trude, which discloses inversion of an already formed gripping
region, Belcher is not forming the concave gripping regions by inversion.
Id. Appellants note that Trude's selection of a temperature below Tg is to
minimize crease formation, which would only be a problem in Belcher if the
concave gripping portions were merely inverted. Id. Appellants further note
that Belcher specifically teaches heating the plug surfaces, in the case of
PET, to 380°F. Id. at 4--5. Therefore, Appellants argue that one would not
seek to combine Belcher' s process with Trude's teaching of allowing the
container to cool as much as possible to allow inversion of an already
formed gripping region. Id. at 5. In this regard, Appellants assert that
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Application 12/873,368
Belcher, which teaches forming the gripping regions at a temperature above
Tg, teaches away from the Examiner's proposed combination. Id.
We have considered the respective positions of the Examiner and
Appellants, and conclude, based on the totality of the record before us, that
the Examiner has not established that the invention as recited in Appellants'
claim 1 would have been obvious to one of ordinary skill in the art.
Notwithstanding the Examiner's findings, there is insufficient support in
Belcher for the Examiner's position that Belcher' s container and
gripping/convex area are most likely cooled below T g· As Appellants note,
Belcher teaches that the inwardly moving plugs may be heated above T g·
Belcher, 9: 16-21. Indeed, Belcher teaches that the concave gripping regions
are contacted together and heat bonded, thereby indicating a temperature
above Tg. Belcher, 7:56-59. Moreover, Trude's process does not form the
gripping regions by plastic deformation, i.e., stretching and biaxial
orientation to produce a surface area of the gripping regions that is greater
than the convex grip surface area. Instead, Trude merely inverts the already
formed gripping region without such stretching, where use of temperatures
above T g may result in undesired creasing and wrinkling. Therefore, we are
persuaded that one skilled in the art would not look to Trude for modifying
Belcher's process conditions involving forming the gripping regions by
plastic deformation where stretching and biaxial orientation occur.
We note the Examiner does not rely on De V el and Moore to remedy
the deficiencies in the combination of Belcher and Trude discussed above.
Accordingly, the Examiner has not carried the burden of establishing, by a
preponderance of the evidence, the factual basis for the conclusion that the
claimed invention would have been obvious. Under these circumstances, we
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Application 12/873,368
cannot conclude that the Examiner has met the minimum threshold of
establishing obviousness based on Belcher in view of Trude, Connolly, De
Vel, and Moore. See In re Oetiker, 977 F.2d at 1445; In re Kahn, 441 F.3d
at 988.
Rejections C and D
Claims 4 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Belcher, Trude, Connolly, De Vel, and Moore,
further in view of Takada and Cho, respectively. The Examiner does not
rely on either Takada or Cho to remedy the deficiencies in the combination
of Belcher, Trude, Connolly, De Vel, and Moore discussed above.
Accordingly, we cannot sustain these rejections for the same reasons given
above.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal Brief, the decision of the Examiner rejecting claims 1-10
under the judicially-created doctrine of obviousness-type double patenting as
unpatentable over claims 1-14 of Appellants' copending U.S. Patent No.
9,050,750 B2 in view of Trude and Connolly, as well as under 35 U.S.C.
§ 103(a) as unpatentable over Belcher in view of Trude, Connolly, De Vel,
and Moore, alone or further in view of Takada or Cho, is reversed.
REVERSED
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