Ex Parte Akutsu et al

Patent Trial and Appeal Board

Nov 2, 2018

14009625 (P.T.A.B. Nov. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/009,625 10/03/2013
7055 7590 11/06/2018
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Y osuke Akutsu
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.
P44654 1139
EXAMINER
ZILBERING, ASSAF
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
11/06/2018 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSUKE AKUTSU, TAKA YUKI ISHIHARA,
HIROKO HOSONO, and KEIKO NARITA
Appeal2018-001263
Application 14/009,625
Technology Center 1700
Before ROMULO H. DELMENDO, JENNIFER R. GUPTA, and
DEBRA L. DENNETT, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Applicants ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from
the Primary Examiner's final decision to reject claims 1, 2, and 8-11. 2 We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Appellants identify the real party in interest as "TOYO SEIKAN
GROUP HOLDINGS, LTD." (Appeal Brief filed May 24, 2017 ("Br.") at
4).
2 Br. 9-15; Final Office Action entered September 26, 2016 ("Final Act.") at
2-17; Examiner's Answer entered September 18, 2017 ("Ans.") at 2-17.
Appeal2018-001263
Application 14/009,625
I. BACKGROUND
The subject matter on appeal relates to a polyolefin packing container,
which may be filled with highly viscous contents such as ketchup
(Specification filed October 3, 2013 (hereinafter "Spec.") ,r 1). According to
the Appellants, ethylenebisfatty acid amide is added as a lubricating
component to a polyolefin resin layer on the container's inner surface to
facilitate its "bleeding" such that the contents may be filled at "normal
temperature" and non-oily contents such as ketchup fall down quickly when
the container is inverted (id. ,r 18).
Representative claim 1, the sole independent claim on appeal, is
reproduced from the Claims Appendix to the Appeal Brief, with the disputed
claim limitations highlighted in italics, as follows:
1. A polyolefin packing container having on the inner
surface thereof an olefin resin layer that contains an
ethylenebisfatty acid amide, wherein said ethylenebisfatty acid
amide is bleeding in said inner surface in an amount of 12.5 to
200 mg/m2;
wherein said ethylenebisfatty acid amide exhibits a
plurality of endothermic peaks in a region of 40 to 130 °Con a
heating-up profile ( differential thermal curve) as measured by a
differential scanning calorimetry;
wherein said ethylenebisfatty acid amide is partly
ethylenebisoleic acid amide, and the rest is a compound
represented by the following formula (1 ),
wherein R 1 and R2 may be the same or different, and are
unsaturated or saturated aliphatic hydrocarbon groups having 14
to 22 carbon atoms, and either R 1 or R 2 in the above formula ( 1)
is a saturated aliphatic hydrocarbon group; and
wherein at least 3% of said ethylenebisfatty acid amide is
said half-saturated bisamide on condition that not less than 55%
2
Appeal2018-001263
Application 14/009,625
of said ethylenebisfatty acid amide is the ethylenebisoleic acid
amide as measured by a liquid chromatography.
(Br. 16; emphasis added).
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains three rejections as follows:
A. Claims 1, 2, and 8-11 under pre-AIA 35 U.S.C. § 112, ,r 1, as
failing to comply with the enablement requirement;
B. Claim 11 under pre-AIA 35 U.S.C. § 112, ,r 2, as being
indefinite, as evidenced by "Homemade Ketchup," Vitamix,
https ://www.vitamix.com/Recipes/Homemade-
Ketchup/ .. ./Cl. .. (July 12, 2012); and
C. Claims 1, 2, and 8-11 under pre-AIA 35 U.S.C. § I02(b) as
anticipated by or, in the alternative, under 35 U.S.C. § I03(a) as
obvious over Akutsu et al. (EP 2 123 571 Al, published
November 25, 2009; "Akutsu").
(Ans. 2-17; Final Act. 2-17.)
III. DISCUSSION
Rejection A (Enablement). The Examiner finds that claim 1 does
not satisfy the enablement requirement of 35 U.S.C. § 112, ,r 1, because the
Specification does not provide guidance as to the ethylenebisfatty acid
amide mixture's makeup, which is known to include impurities (Ans. 5).
Regarding the quantity of experimentation necessary to make and/or use the
invention, the Examiner states:
Because it is known that the migrating (i.e., bleeding)
rates, hydrophobicity and reactivity of fatty acid amide vary
widely between different fatty acid amides and since every fatty
3
Appeal2018-001263
Application 14/009,625
acid amide additive is known to comprise of different
constituents and impurities (see Specification paragraphs [0078]-
[0080]; Table 5; Remarks filed on 9/30/2015), the fact that
Appellants failed to precisely disclose the identity of the fatty
acid amide additive used with the polyolefin resin, and instead
only disclosed the identification and relative contents of the
amides and impurities that bled into the inner surface of the
container, clearly sets a challenge in practicing the current
invention. Thus, a person skilled in the art, upon reading the
specification, would not have sufficient guidance to make the
polyolefin packing container recited in the claims without undue
experimentation.
(Id. at 5---6.)
The Appellants point out that "the Examiner has the initial burden to
establish a reasonable basis to question the enablement provided for the
claimed invention" (Br. 9). According to the Appellants, the Specification's
enabling disclosure bears a reasonable correlation to the entire scope of the
claim (id.). In particular, the Appellants argue that based on the knowledge
in the state of the art and guidance provided in the Specification including
the working examples, one skilled in the relevant art "would be able to make
and use the claimed invention, despite any experimentation that might be
required" (id. at 10).
We agree with the Appellants. Other than a conclusory statement, the
Examiner does not direct us to sufficient evidence that impurities, if present
in the ethylenebisfatty acid amide, would cause the invention to be
impossible to practice. In re Marzocchi, 439 F.2d 220,224 (CCPA 1971)
(the applicants are not required to substantiate their presumptively correct
disclosure to avoid an enablement rejection unless the PTO satisfies its
initial burden).
4
Appeal2018-001263
Application 14/009,625
The mere fact that the Specification states "[ s ]uch impurities cannot
be easily removed by such operation as distillation" (Spec. ,r 38) does not
mean that persons skilled in the relevant art could not have removed them
using distillation itself or other known separation techniques-assuming that
these impurities would cause the olefin resin layer to be unsuitable.
Moreover, the Examiner does not provide evidence that the person skilled in
the relevant art would have been unable to determine-through nothing
more than routine screening-which commercially-available
ethylenebisfatty acid amides would work. As the Examiner acknowledges
(Final Act. 3), even "a considerable amount of experimentation is
permissible, if it is merely routine, or if the specification in question
provides a reasonable amount of guidance with respect to the direction in
which the experimentation should proceed .... " In re Wands, 858 F.2d
731, 737 (Fed. Cir. 1988).
For these reasons, we do not uphold the Examiner's rejection on this
ground.
Rejection B (Indefiniteness). Claim 11, which ultimately depends
from claim 1 through intervening claims 8-10, recites: "The polyolefin
packing container according to claim 10, wherein said non-oily content is a
ketchup" (Br. 17; emphasis added).
The Examiner's basis for rejecting claim 11 as being indefinite is the
belief that "ketchup is known to comprise oil ... [and, therefore,] it is
unclear what a ketchup that is non-oily means" (Ans. 6; bracketed words
inserted for context). In support, the Examiner relies on "Homemade
Ketchup" (id.).
5
Appeal2018-001263
Application 14/009,625
The Appellants concede that some ketchup formulations contain oil,
but not all do and not all contain oil as to be "oily" (Br. 11-12). The
Appellants point out that the claim is limited to containers that contain "non-
oily ketchup" (id. at 12).
We agree with the Appellants. "Homemade Ketchup" (p. 1) merely
discloses a recipe for ketchup that identifies 2 tablespoons of extra virgin
olive oil as an ingredient. The Examiner does not direct us to any disclosure
in this reference or any other evidence that all ketchup are necessarily oily.
Therefore, we cannot sustain this rejection.
Rejection C (Anticipation/Obviousness). We start with claim
construction. The disputed limitation recited in claim 11 reads: "wherein at
least 3 % of said ethylenebisfatty acid amide is said half-saturated bisamide
on condition that not less than 55% of said ethylenebisfatty acid amide is the
ethylenebisoleic acid amide as measured by a liquid chromatography"
(Br. 16; emphasis added). It appears that the Appellants are interpreting this
limitation as requiring both "at least 3% of said ethylenebisfatty acid amide"
and "not less than 55% of ... ethylenebisoleic acid amide' (id. at 14). The
Examiner does not disagree with this interpretation or off er a contrary
interpretation (Ans. 8-13, 16-17).
The phrase "on condition that" suggests that the entire limitation is
conditional-i.e., it applies as a limitation only when the amount of
ethylenebisoleic acid amide is "not less than 55%." Thus, this conditional
limitation raises a question as to whether a half-saturated bisamide is even
required or may be present in an amount less than 3% when the amount of
ethylenebisoleic acid amide is less than 55%. Although we interpret this
limitation in the same manner as the Appellants and the Examiner for
6
Appeal2018-001263
Application 14/009,625
purposes of deciding this appeal, the indefiniteness of this conditional
limitation should be explored by both the Examiner and the Appellants on
return of this application to the Examiner's jurisdiction.
Turning to the merits, the Examiner finds that Akutsu describes a
packing container for ketchup comprising "the same polyolefin resin and
unsaturated aliphatic amide (i.e., ethylenebisoleic amide)" recited in claim 1
(Ans. 9). According to the Examiner, "the unsaturated aliphatic amide
molecule (i.e., ethylenebisoleic amide) is known to coexist with the 'half-
saturated bis amides' recited in the claims, as the 'half-saturated bis amides'
are impurities inherently present in commercial ethylene bis fatty acid amide
additive products" (id. at 11; citing Spec. ,r,r 3 8--40; Reply filed
September 30, 2015 at 2). Based on these findings, the Examiner posits that
the aliphatic amides profile recited in claim 1 would be inherent in Akutsu
(id.).
The Appellants contend that Akutsu "describes only the
ethylenebisoleic acid amide as a concrete example of the lubricating
component, but does not describe the half-saturated bisamide" (Br. 14). The
Appellants urge that "[a]s a consequence, the polyolefin resin layer in
Akutsu ... must be blended with organic peroxide" (id.).
We cannot sustain the anticipation rejection because neither the
Appellants' remarks in the Reply filed September 30, 2015 nor the cited
Specification descriptions support the Examiner's finding that the half-
saturated bisamide is present in Akutsu in an amount of at least 3%. The
mere fact that Akutsu describes an unsaturated oleic amide (Akutsu ,r 9) and
that impurities may be present do not support a finding that Akutsu
inherently or necessarily discloses a composition containing at least 3 % of a
7
Appeal2018-001263
Application 14/009,625
half-saturated bisamide. In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999) (inherency cannot be established by mere possibilities or
probabilities).
Because the Examiner's obviousness rationale does not account for
this disputed claim limitation in a meaningful way, we also cannot sustain
the rejection based on obviousness.
IV. SUMMARY
Rejections A through Care not sustained. Therefore, the Examiner's
final decision to reject claims 1, 2, and 8-11 is reversed.
REVERSED
8