James T. Tanner

Patent Trials and Appeals Board

Dec 31, 2019

13067571 - (D) (P.T.A.B. Dec. 31, 2019)

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.
13/067,571 06/09/2011 James T. Tanner ETHO 025 8008
7590 12/31/2019
ISAAC A ANGRES
6 War Admiral Ct.
Gaithersburg, MD 20878
EXAMINER
YOON, TAE H
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
12/31/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES T. TANNER1
____________

Appeal 2018-006788
Application 13/067,571
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CHRISTOPHER C. KENNEDY,
and MERRELL C. CASHION, JR., Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This case is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 22–24, 31, and 41. An oral hearing was held on
December 17, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to polyester articles and
containers that comprise gas barrier enhancing additives. E.g., Spec. 2:9–17;

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies Ethox Chemicals, LLC, as the real
party in interest. See Appeal Br. 2.
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Claims 22, 31. Claim 22 is reproduced below from page 38 (Claims
Appendix) of the Appeal Brief2,3:
22. In a container comprising a polyester composition, the
improvement comprising inclusion of a gas barrier enhancing
diester additive having the chemical formula:

wherein Ar is aryl, Ar’ is phenyl, R is an alkylene radical
having 2–20 carbon atoms; and n=1-20, and wherein the gas
barrier diester additive comprises 3-5 weight % of the total
composition.
REJECTIONS ON APPEAL4
The claims stand rejected as follows:
1. Claims 22–24, 31, and 41 under 35 U.S.C. § 102(e) as anticipated
by Kriegel ’546 (US 2010/0143546 A1, published June 10, 2010);
2. Claims 22–24, 31, and 41 under 35 U.S.C. § 102(e) as anticipated
by Kriegel ’511 (US 8,685,511 B2, issued Apr. 1, 2014);
3. Claims 22–24, 31, and 41 under 35 U.S.C. § 102(e) as anticipated
by Kriegel ’116 (US 9,051,116 B2, issued June 9, 2015);

2 The Examiner’s refusal to enter claim amendments after the Final Action is
a petitionable matter, not an appealable one. See In re Berger, 279 F.3d 975,
984 (Fed. Cir. 2002); see also 37 C.F.R. § 1.127. We therefore consider the
claims without the proposed amendments. See Appeal Br. 4–6.
3 We refer to the revised Appeal Brief filed January 12, 2018.
4 In the Final Action, Rejections 1–3 were based on § 102(e) or,
alternatively, § 103(a). In the Answer, the Examiner withdraws the
alternative § 103(a) basis for the rejections and maintains the rejections
based on § 102(e) alone. Ans. 2–3.
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4. Claims 31 and 41 under 35 U.S.C. § 103(a) as unpatentable over
Espenschied (US 4,705,844, issued Nov. 10, 1987);
5. Claims 22–24, 31, and 41 under 35 U.S.C. § 103(a) as
unpatentable over Espenschied and Shi (US 8,545,952 B2, issued Oct. 1,
2013).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in Rejections 4 and 5.
Accordingly, we affirm those rejections for reasons set forth below, in the
Final Action dated September 14, 2016, and in the Examiner’s Answer.
However, for reasons set forth below, we reverse as to Rejections 1–3.
Rejections 1–3
The Examiner finds that each of Kriegel ’546, Kriegel ’511, and
Kriegel ’116 (collectively, “the Kriegel references”) individually anticipates
the claimed subject matter under 35 U.S.C. § 102(e). See Ans. 3. The
Examiner does not find that any Kriegel reference constitutes prior art under
§ 102(b).
The Appellant does not dispute the Examiner’s determination that
each Kriegel reference discloses the claimed subject matter; the Appellant
contends, however, that the Kriegel references are not available as prior art
because the Appellant invented the subject matter in the Kriegel references
upon which the Examiner relies. See, e.g., Appeal Br. 11 (arguing that the
Kriegel references “cannot be applied as prior art references because the
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content from those publications relied upon by the Examiner reflects
Appellant’s own work”).
The Appellant provides persuasive evidence in support of that
contention, including evidence that a federal district court previously
attributed the relevant subject matter from the Kriegel references to the
Appellant as a result of litigation arising from joint work that the Appellant
conducted with the assignee of the Kriegel references. See, e.g., Appeal Br.
2–3 (citing various exhibits from related district court litigation), 12–13, 17–
32 (comparing disclosures that the district court found attributable to the
Appellant to the disclosures of the prior art relied upon by the Examiner);
Reply Br. 3–16 (similar). For example, the Examiner relies on the Kriegel
references as disclosing a compound known as PEM. See Ans. 3. PEM falls
within the scope of the gas barrier enhancing diester additive of the claims.
In the related litigation, the district court unequivocally determined that
“Dr. Tanner [the Appellant] conceived of PEM as a gas barrier additive for
use in PET containers, as well as ways to make PEM . . . . Dr. Tanner’s
conception is corroborated.” Ex. B at 30. The district court’s judgment was
affirmed by the Federal Circuit. See Ex. D. The Examiner does not
meaningfully dispute the Appellant’s assertions in that regard, and, on this
record, we discern no apparent reason to reject them.
The Examiner nevertheless maintains the rejections under § 102(e)
because “the inventive entity (i.e. various co-inventors) of [the Kriegel
references] and the instant application is different from each other and thus
[the Kriegel references] would be still qualified as 35 U.S.C. 102(e) [prior
art] contrary to the appellant’s assertion.” E.g., Ans. 6–7.
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We disagree. “[T]he fact that an application has named a different
inventive entity than a patent does not necessarily make that patent prior
art.” Applied Materials, Inc. v. Gemini Research Corp., 835 F.2d 279, 281
(Fed. Cir. 1987). An “applicant’s own work, even though publicly disclosed
prior to his application, may not be used against him as a reference, absent
the existence of a time bar to his application.” In re DeBaun, 687 F.2d 459,
462 (CCPA 1982). “The proper subject of inquiry [is] what the evidence
show[s] as to who invented the subject matter disclosed by the reference
which [is] relied on to support the rejection.” Id. (internal parentheses
omitted) (quoting In re Land, 368 F.2d 866, 879–80 (CCPA 1966)).
Here, there is no meaningful dispute that the relied-upon material in
the Kriegel references is the Appellant’s own work. Accordingly, that work
“may not be used against [the Appellant] as a reference, absent the existence
of a time bar to his application.” See DeBaun, 687 F.2d at 462. As noted
above, the Examiner does not assert that a time bar applies.
On this record, the Examiner has not adequately established that the
Kriegel references are available as prior art against the Appellant under
§ 102(e). Consequently, we reverse Rejections 1–3.
Rejection 4
The Examiner finds, inter alia, that Espenschied discloses
shaped/molded articles of polyester “having an additive such as di-(2-
phenoxyethyl) terephthalate,” which the Examiner finds is the “gas barrier
enhancing diester additive” recited by claims 31 and 41. Ans. 4. The
Examiner finds that claims 31 and 41 recite only a “shaped” article without
specifying any particular shape, and that those claims encompass any shaped
article, including, e.g., “clutch discs taught in line 34 of col. 9 of
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Espenschied.” Id. The Examiner determines that the subject matter of
claims 31 and 41 would have been obvious in view of Espenschied’s
disclosure because “choosing the di-(2-phenoxyethyl) terephthalate [as
Espenschied’s additive] from the disclosed lists would be considered
obvious absent showing otherwise.” Id.
In the Appeal Brief, the Appellant argues that Espenschied is
nonanalogous art. Appeal Br. 34–35.
We disagree. Espenschied is analogous art for at least the reason that
it is from the same field of endeavor (molded polyester products) as the
claimed invention. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004);
see also Espenschied at 3:1–2 (“The invention furthermore relates to a
molding material based on a polyester.”); Spec. 2:10–12 (“The invention is
also directed to a polymer composition and method for reducing the
permeability of gases through molded polymeric containers.”).
The Appellant argues for the first time in the Reply Brief that the
Appellant’s field of endeavor is “reducing permeability of gases.” Reply
Br. 18. Even were that argument timely, which it is not,5 it would be
unpersuasive because, although the Specification indicates that reducing
permeability of gases is a problem with which the inventors were concerned,
the Specification indicates that the field of endeavor is broader than that
specific problem and encompasses polymer compositions, e.g., molded

5 See In re Borden, Appeal No. 2008-004312, at 4 (BPAI Jan. 7, 2010)
(informative) (“The reply brief is not an opportunity to make arguments that
could have been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”)
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polyester products. See Spec. 2:10–11. Particularly in view of our
reviewing court’s interpretation of Supreme Court precedent as “direct[ing]
us to construe the scope of analogous art broadly,” Wyers v. Master Lock
Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (internal citation omitted), we are
not persuaded that the field of endeavor should be defined in the narrow way
proposed by the Appellant.
The Appellant also argues in the Appeal Brief that “[t]here is no
evidence of record as to why one of ordinary skill in the art . . . would have
selected Espenschied, let alone modified it as required to arrive at
Appellant’s claims.” Appeal Br. 35.
That argument is unpersuasive. The Examiner finds that the only
modification necessary to Espenschied is the selection of the specific
additive used in Espenschied’s molded polyester product. Ans. 4. One
additive expressly disclosed by Espenschied is
di-(2-phenoxyethyl) terephthalate. Espenschied at 8:56–58. The Appellant
does not dispute that di-(2-phenoxyethyl) terephthalate falls within the scope
of the additive of claims 31 and 41. A person of ordinary skill in the art
would have selected that additive for use in Espenschied’s polyester product
because Espenschied expressly discloses it as a desirable additive. That
Espenschied discloses other additives does not negate its disclosure of di-(2-
phenoxyethyl) terephthalate. See Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a
multitude of effective combinations does not render any particular
formulation less obvious.”).
Additionally, that Espenschied discloses that the purpose of the
additive is crystallization acceleration, rather than reduction of gas
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permeability, is not, of itself, indicative of reversible error in the rejection.
Cf. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“[T]he motivation in
the prior art to combine the references does not have to be identical to that of
the applicant to establish obviousness.”); see also Appeal Br. 36 (arguing
that Espenschied does not “disclose or suggest PEM as a gas barrier
additive”). The Appellant does not challenge the Examiner’s rejection on
the basis of the amount of additive (i.e., 3–5 weight %) recited by claims 31
and 41. See Appeal Br. 33–36; see also Ans. 5 (finding that the recited
range is prima facie obvious in view of the prior art).
The Appellant also argues: “[H]ad it been so obvious to arrive at
Appellant’s invention from Espenschied, which published in 1987, one
would have done so in well under 23 years.” Appeal Br. 35. That argument
is not persuasive because “[t]he mere age of the references is not persuasive
of the unobviousness of the combination of their teachings, absent evidence
that, notwithstanding knowledge of the references, the art tried and failed to
solve the problem.” See In re Wright, 569 F.2d 1124, 1127 (CCPA 1977).
The Appellant also argues that “Espenschied fails to say anything
about a container or gas barrier additives . . . and is instead directed to gear
wheels, bevel wheels, racks, clutch disks, guide elements, and components
for electronic equipment and the like.” Appeal Br. 35–36 (internal citation
omitted) (quoting various fact findings from the district court proceeding).
That argument is unpersuasive because claims 31 and 41, subject to
Rejection 4, are not limited to containers, and the Appellant has not
persuasively argued that, e.g., the clutch disk of Espenschied does not
constitute a “shaped thermoplastic . . . article” as recited by claims 31 and
41. Nor has the Appellant persuasively asserted error in the Examiner’s
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determination that “the PET composition having PEM taught by
Espenschied et al would have the gas barrier property inherently.” Final
Act. 5. Thus, the fact that Espenschied does not specifically mention
containers or the gas barrier properties of PEM is not persuasive of
reversible error in the rejection. Cf. In re Best, 562 F.2d 1252, 1255–56
(CCPA 1977) (“Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.”); Ex parte Obiaya, 227 USPQ 58, 60
(BPAI 1985) (“The fact that appellant has recognized another advantage
which would flow naturally from following the suggestion of the prior art
cannot be the basis for patentability when the differences would otherwise
be obvious.”).
In the Reply Brief, the Appellant raises a number of additional
arguments for the first time. The Appellant argues that “the Examiner’s
inherency argument is not supported,” that unexpected results support a
conclusion of nonobviousness, and that others previously “tried and failed to
solve the same problem notwithstanding [their] presumed knowledge of
[Espenschied].” Reply Br. 19–22. Those arguments are untimely because
they were not presented in the Appeal Brief, and the Appellant has not
attempted to show good cause for presenting them for the first time in the
Reply Brief. See 37 C.F.R. § 41.41(b)(2). The Examiner did not have an
opportunity to respond to those arguments in the Examiner’s Answer. We
decline to consider them for the first time on appeal.
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We are not persuaded of reversible error in the Examiner’s rejection
of claims 31 and 41 as set forth in Rejection 4. See In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections.”).
Rejection 5
Of particular relevance to the issues raised by the Appellant in this
appeal concerning Rejection 5, some of the claims subject to Rejection 5
recite a “container.” E.g., claims 22–24. The Examiner relies on
Espenschied as set forth above and finds that Shi teaches “a container
obtained from PET compositions.” Ans. 5. The Examiner determines:
Thus, it would have been obvious to one skilled in the art at
time of invention to obtain a container from the PET
composition of Espenschied et al with the teaching of Shi et al
or to utilize the PET composition of Espenschied et al in Shi et
al in obtaining a container since Espenschied et al teach that
PET compositions are well known for moldings, films and
fibers and since a container obtained from PET compositions is
well known as taught by Shi et al and since the PET
compositions of Espenschied et al having an enhanced
crystallinity would have a gas barrier property inherently absent
showing otherwise.
Ans. 5–6. The Examiner also finds that the proposed combination is simply
the use of a known element (Espenschied’s PET composition) according to
an established function (Shi’s molded container) with predictable results. Id.
at 6.
The Appellant argues that “[t]here is no evidence of record as to why
one of ordinary skill . . . would have taken Espenschied, which has nothing
to do with containers or gas barrier additives, and combine it with Shi, which
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is titled ‘Polyester Container With Enhanced Gas Barrier and Method.’”
Appeal Br. 38.
That argument is not persuasive. Shi discloses polyester containers.
E.g., Shi at Abstract. Espenschied discloses polyester materials generally
and discloses a variety of articles that can be molded from Espenschied’s
polyester materials. E.g., Espenschied at 9:30–35. Although Espenschied
does not specifically disclose containers, the Appellant identifies no portion
of Espenschied that excludes containers or teaches away from using the
disclosed materials for other molded articles, such as the molded containers
disclosed in Shi.
In view of Shi’s disclosure that containers are an article known to be
made from polyester, it would have been obvious to make containers using
Espenschied’s polyester compositions because it is the use of a known
material (Espenschied’s) to make an article known to be made from that or a
similar material (polyester containers). The use of known elements
according to established functions typically does not result in nonobvious
subject matter. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416–21
(2007) (“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”);
see also id. at 416 (“[W]hen a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result.”). To the extent express motivation is necessary, Espenschied
discloses that its materials “permit the production of heat distortion resistant
moldings having high dimensional stability,” which would appear to be a
desirable characteristic for Shi’s containers at least during shipping where
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temperature and humidity changes may be expected as the containers change
environments. See Espenschied at 9:30–32.
As above, we decline to consider the Appellant’s unexpected results
argument because it was not presented in the Appeal Brief, and the
Appellant fails to show good cause for presenting it for the first time in the
Reply Brief. See 37 C.F.R. § 41.41(b)(2).
On this record, the Appellant’s arguments do not persuade us of
reversible error in Rejection 5. See Jung, 637 F.3d at 1365.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ Basis Affirmed Reversed
22–24, 31, 41 102(e) Kriegel ’546 22–24, 31, 41
22–24, 31, 41 102(e) Kriegel ’511 22–24, 31, 41
22–24, 31, 41 102(e) Kriegel ’116 22–24, 31, 41
31, 41 103(a) Espenschied 31, 41
22–24, 31, 41 103(a) Espenschied, Shi 22–24, 31, 41
Overall
Outcome 22–24, 31, 41
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED