Ex Parte Gamel et al

Board of Patent Appeals and Interferences

Mar 28, 2008

10393087 (B.P.A.I. Mar. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MELISSA J. GAMEL, R. PETER MACAULEY,
ELWOOD L. STOKESBURY, DOUGLAS A. HARP
JOHN G. BARCA, and JAY Z. YUAN
____________

Appeal 2007-4404
Application 10/393,087
Technology Center 1700
____________

Decided: March 28, 2008
____________

Before THOMAS A. WALTZ, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Examiner’s final rejection of
claims 9-16 and 23-25, the only claims that remain pending in this
application. We have jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2007-4404
Application 10/393,087

Appellants’ invention is directed to a multi-layer container for a light
sensitive product including a regrind layer made using waste materials,
which layer is disposed between inner and outer layers. The regrind layer
and at least one of the outer or inner layers include iron oxide and titanium
dioxide additives as colorants/light barriers. The container can be
constructed from plastics. Claim 23 is illustrative and reproduced below:
23. A container for a light-sensitive product, said container
comprising:

an inner layer;

an outer layer;

a regrind layer disposed between said inner layer and said outer layer;

the regrind layer and at least one of the outer layer and the inner layer
containing titanium dioxide and iron oxide; and

the total amount of titanium dioxide used in the container being less
than five percent (5%) by weight.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Ofstein 5,064,724 Nov. 12, 1991
Krishnakumar 5,178,289 Jan. 12, 1993
Fehn 5,693,283 Dec. 2, 1997
Sandstrom 6,627,278 B1 Sept. 30, 2003

Claims 23-25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fehn in view of Sandstrom. Claims 9-12 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Ofstein in view of Fehn
and Sandstrom. Claims 13-16 stand rejected under 35 U.S.C. § 103(a) as
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Application 10/393,087

being unpatentable over Ofstein in view of Fehn, Sandstrom, and
Krishnakumar.
We affirm all of the Examiner’s rejections for substantially the
reasons set forth by the Examiner in the Answer, and as further explained
below.
Starting with the Examiner’s obviousness rejection of claims 23-25,
we note that Appellants argue claims 23 and 25 together as a group (Br. 9-
10). Thus, we select claim 23 as the representative claim on which we
decide this appeal as to the argued together claims 23 and 25 with respect to
this grounds of rejection. Dependent claim 24 will be separately considered
to the extent this dependent claim is separately argued in the Brief.
Appellants have not specifically disputed the Examiner’s determinations
that:
Fehn teaches a container comprising an inner layer, item
46, an outer layer, item 42, and a regrind layer (intermediate
layer, item 41) disposed between the inner layer and the outer
layer (col. 10, lines 5-14). Fehn teach that for colored
container, the outer layer, item 42, contains pigment (col. 10,
lines 14-16). The regrind layer of Fehn, item 41, necessarily
contains the pigment of the outer layer, item 42, because Fehn
teaches that the regrind layer contains the components of all of
the layers of Fehn, which necessarily includes the pigment of
the outer layer (col. 7, lines 16-18 and col. 10, lines 14-16).
(Ans. 9).

Moreover, Appellants acknowledge that Sandstrom “specifies that the
extruded polymeric compositions of the tumbler described therein include
coloring agents for aesthetic appeal, preferably titanium dioxide, carbon
black and other opacifying agents in the range of 0.5-8 weight percent based
on total composition, preferably 1.5 to 6.5 weight percent” (Br. 9).
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Application 10/393,087

The Examiner contends that:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to have used a mixture of
titanium dioxide and iron oxide as the pigment of the container
of Fehn since a mixture of titanium dioxide and iron oxide is a
well known colorant for a polymeric composition for a
container as taught by Sandstrom et al., and to have added the
titanium dioxide in an amount of 1.5 to 6.5 wt. %, a range that
…[overlaps] … the claimed range of less than 5 wt. %, since an
amount range of 1.5 to 6.5 wt. % is a well known amount range
for titanium dioxide as a colorant of a polymeric composition
for a container as taught by Sandstrom et al.

(Ans. 10-11).

Appellants maintain, however, that the Examiner has not established
an adequate basis for the proposed combination of Sandstrom and Fehn, that
Fehn does not describe a maximum quantity of five weight percent for
titanium dioxide present in the container, and that Sandstrom describes a
single layer container and does not disclose using a mixture of pigments (Br.
9). In this regard, Appellants essentially assert that, even upon their
combination, the applied references would not have suggested the use of a
mixture of pigments, or a weight percent thereof within the claimed range, to
one of ordinary skill in the art (Br. 10).
We are not persuaded of reversible error in the Examiner’s rejection
of representative claim 23 by these arguments. At the outset, we note that
Sandstrom discloses the use of pigments, including, inter alia, titanium
dioxide and iron oxides for coloring a plastic container, wherein the
pigments or other opacifying agents are employed in preferred amounts (1.5
to 6.5 weight percent) that overlap with the representative claim 23
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Appeal 2007-4404
Application 10/393,087

requirements for titanium dioxide and iron oxide pigments with titanium
dioxide amounts less than five weight percent (col. 45, ll. 12-28).1
Moreover, Fehn teaches the inclusion of coloring pigment in the container
thereof (col. 10, ll. 14-16). Thus, the applied references would have
reasonably suggested the use of more than one coloring and/or opacifying
pigment, including the recited combination of known iron oxide and
titanium dioxide pigments, in at least one outer layer of the multi-layer
container of Fehn.
As for the representative claim 23 requirement for the interior regrind
layer to include some of the pigments used in the at least one outer layer, we
agree with the Examiner that Fehn reasonably suggests such in that the
regrind layer of Fehn is taught as being made from reground scrap portions
of all of the container layers (col. 7, ll. 15-18). Moreover, with regard to
Appellants’ assertions suggesting that one of ordinary skill in the art would
not consider the teachings of Sandstrom respecting a single layer container
as being applicable to or combinable with the multi-layer container
construction of Fehn, we note that Fehn indicates that the level of skill in the
art is such that it would have been recognized that producing multi-layer
containers can proceed in a similar fashion to single–layer container
construction while making appropriate modifications, within the skill of the

1 We further note that Appellants acknowledge the commercial availability
of resin pellets including a mixture of titanium dioxide and iron oxide, which
can be melted for use as a colorant (Spec. 7). The starting point for
Appellants' invention, for purposes of 35 U.S.C. § 103, is what Appellants
admit to be prior art. In re Facius, 408 F.2d 1396, 1406 (CCPA 1969); In re
Davis, 305 F.2d 501, 503 (CCPA 1962).
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art, in taking account of the manufacture of the multiple layers (col. 11, ll.
42-50).
After all, in considering the question of obviousness, the Supreme
Court, in KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007), stated
that “Section 103 forbids issuance of a patent when ‘the differences between
the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.’” Also, see In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969)
(“Having established that this knowledge was in the art, the examiner could
then properly rely, as put forth by the solicitor, on a conclusion of
obviousness ‘from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion in a particular
reference.’”); In re Hoeschele, 406 F.2d 1403, 1406-07 (CCPA 1969) (“[I]t
is proper to take into account not only specific teachings of the references
but also the inferences which one skilled in the art would reasonably be
expected to draw therefrom. . . .”). In this regard, the Supreme Court further
explained in KSR, 127 S. Ct. at 1740, that “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.” In this
regard, in an obviousness assessment, skill is presumed on the part of the
artisan, rather than the lack thereof. In re Sovish, 769 F.2d 738, 743 (Fed.
Cir. 1985).
On this record, we affirm the Examiner’s obviousness holding as to
commonly rejected and argued claims 23 and 25.
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Concerning separately argued dependent claim 24, Appellants
maintain that the noted source of the coloring pigments specified in claim 24
renders claim 24 separately patentable in that dependent claim 24 presents a
method limitation that calls for common meltable resin pellets and extrusion
blow molding to form the container. We disagree for several reasons. First,
dependent claim 24 does not require extrusion blow molding, as argued.
Second, the specification of a known source for obtaining the colorants used
in forming the claimed container, does not serve to articulate how the
container made with such a known particular source of colorant pellets
would patentably distinguish the claimed container from a container
including titanium dioxide and iron oxide pigments, as suggested to one of
ordinary skill in the art from the combined teachings of the applied
references, for reasons stated in the Answer and above.
It follows that for reasons stated in the Answer and above, we affirm
the Examiner’s obviousness rejection of claim 24.
Turning to the obviousness rejection of claims 9-12, we note that
Appellants argue these claims as a group with the exception of dependent
claim 11, which latter claim is also argued separately. We select claim 9 as
the representative claim for the commonly rejected and argued claims; and
we shall consider claim 11 separately to the extent separately argued.
Representative claim 9 is rejected as being obvious over the combined
teachings of Ofstein, Fehn, and Sandstrom. At the outset, we note that
Appellants do not contest the Examiner’s finding that Ofstein discloses or
suggests the claimed container structure including the multi-layer
arrangement of representative claim 9 but for the addition of iron oxide and
titanium oxide to the outer layer and the regrind layer (Ans. 4; Br. 6-8).
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Rather, Appellants basically contend that the Examiner’s proposed
combination of Fehn and Sandstrom with Ofstein would not have led one of
ordinary skill in the art to the claimed subject matter because there is no
basis to combine the single layer container teachings of Sandstrom
respecting the addition of color pigments with the multi-layer container
structure of Ofstein. Also, Appellants assert that Fehn, while directed to a
multi-layer container using color pigments for an outer layer, does not
suggest the claimed amount of titanium dioxide and mixture of pigments.
However, for substantially the same reasons we set forth above in
discussing the Examiner’s separate rejection of claims 23-25 over Fehn and
Sandstrom, we are not persuaded by the arguments presented in the Brief.
We refer to the Examiner’s Answer and to our discussion of Fehn and
Sandstrom above for our determinations and reasoning as to why this line of
argument is unpersuasive and why we have determined that the use of a
mixture of known color pigments, such as titanium dioxide and iron oxide,
with the titanium dioxide amounts overlapping those disclosed by
Sandstrom in the outer and regrind layers of a multi-layer container, such as
disclosed by Ofstein, would have been well within the ordinary skill of the
art. In this regard, one of ordinary skill in the art would have been
reasonably led to fashion a container with opaque and/or colored surfaces
using pigments in amounts as claimed based on the combined teachings of
the references. After all, Appellants have not shown that such an addition of
known colorant pigments to the outer and regrind layers of Ofstein is
attended by unexpected results, or otherwise established that one of ordinary
skill would not have expected to achieve the predictable coloring and
opacifying effects of the added pigments.
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Application 10/393,087

Concerning the separate argument with respect to dependent claim 11,
we agree with the Examiner’s obviousness assessment because Appellants
have not established that forming the container via extrusion blow molding
and using known melt pellets of iron oxide and titanium oxide as the source
of the pigments used would have led to a patentably distinct container from
that suggested by the combined teachings of the applied references.
On this record, we affirm the Examiner’s obviousness rejection of
claims 9-12.
Appellants base their arguments against the Examiner’s separate
obviousness rejection of claims 13-16 over the combined teachings of
Ofstein, Fehn, and Sandstrom, together with Krishnakumar, on the claim 13
requirement for having a container with a titanium dioxide content of less
than five weight percent. We select claim 13 as the representative claim for
deciding this appeal as to this commonly rejected and argued grouping of
claims.
For the reasons discussed above and in the Answer, the argued
titanium dioxide amount limitation is not persuasive of the unobviousness of
the claimed container over the applied prior art. We note that Appellants do
not contest the Examiner’s additional employment of Krishnakumar to
establish the obviousness of the shape and finish features of the bottle
required by claim 13.
Thus, we shall also affirm the Examiner’s obviousness rejection of
claim 13, on this record.

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Application 10/393,087

CONCLUSION
The decision of the Examiner to reject claims 23-25 under 35 U.S.C.
§ 103(a) as being unpatentable over Fehn in view of Sandstrom; to reject
claims 9-12 under 35 U.S.C. § 103(a) as being unpatentable over Ofstein in
view of Fehn and Sandstrom; and to reject claims 13-16 under 35 U.S.C.
§ 103(a) as being unpatentable over Ofstein in view of Fehn, Sandstrom, and
Krishnakumar 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)(1)(iv).

AFFIRMED

tf/ls

PAUL D. YASGER
ABBOTT LABORATORIES
100 ABBOTT PARK ROAD
DEPT. 377/AP6A
ABBOTT PARK, IL 60064-6008
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