Ex Parte Hutchinson et al

Patent Trial and Appeal Board

Jul 19, 2017

13299907 (P.T.A.B. Jul. 19, 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.
13/299,907 11/18/2011 Gerald A. Hutchinson 056943.01202 9132
134769 7590 07/21/2017
Sterne, Kessler, Goldstein & Fox P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005
EXAMINER
HUSON, MONICA ANNE
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
07/21/2017 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):
e-office @ skgf.com
tdurkin @ skgf.com
rmoore @ skgf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD A. HUTCHINSON, ROBERT A. LEE,
and SAID K. FARHA
Appeal 2016-006024
Application 13/299,9071
Technology Center 1700
Before CATHERINE Q. TIMM, JULIA HEANEY, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections under 1—3, 5, 7, 8, and 12—15.
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Concentrate Manufacturing Company of Ireland is stated to be the real party
in interest (App. Br. 3).
Appeal 2016-006024
Application 13/299,907
BACKGROUND
Appellants claim a method for making a container having multiple
layers.
Sole independent claim 1, taken from the Claims Appendix of the
Appeal Brief, is representative and appears below.
1. A method for making an overmolded container having a
polyester inner layer and an expandable, lightly crosslinked
thermoplastic polyolefin outer layer, the method comprising:
providing a preform for a container, the preform
comprising a thermoplastic polyester;
overmolding an expandable lightly crosslinked
thermoplastic overmold material over at least a portion of the
preform to form an overmolded preform, wherein the overmold
material comprises a polyolefin or modified polyolefin and has a
density less than 1.00 g/cm3; and
blow molding the overmolded preform to form the
overmolded container.
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Valyi US 3,869,056 Mar. 4, 1975
Yatsu et al.
(hereinafter “Yatsu”)
US 4,940,616 July 10, 1990
Oda et al.
(hereinafter “Oda”)
US 5,788,926 Aug. 4, 1998
Speer et al.
(hereinafter “Speer”)
US 5,942,297 Aug. 24, 1999
Hutchinson et al.
(hereinafter “Hutchinson”)
US 2004/0071885 Al Apr. 15,2004
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Application 13/299,907
REJECTIONS ON APPEAL
I. Claims 1, 2, 5, 7, 8, and 12—14 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yatsu, Hutchinson, and Oda
(Non-Final Act.2 2—3);
II. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Yatsu, Hutchinson, Oda, and Speer (Non-Final Act. 3 4); and
III. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yatsu, Hutchinson, Oda, and Valyi (Non-Final
Act. 4).
OPINION
Appellants present arguments specifically directed to limitations
recited in independent claim 1. App. Br. 6—12; Reply Br. 2—7. Therefore,
we confine our review to representative claim 1. The Examiner’s rejection
of claim 1 is set forth on pages 2 and 3 of the Non-Final Office Action dated
September 16, 2014.
In considering the propriety of this rejection, we must decide the
following issue:
Have Appellants identified reversible error in the Examiner’s
determination that it would have been obvious to one of ordinary skill in the
art to combine the thermoplastic polyester disclosed in Yatsu with a
crosslinked overmold material as disclosed in Hutchinson, such as a low
density polyolefin as disclosed in Oda?
2 Non-Final Office Action dated September 16, 2014.
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Application 13/299,907
We answer this question in the negative and, therefore, sustain the
Examiner’s decision to reject claim 1.
We begin by observing that independent claim 1 requires several
method steps including “overmolding an expandable lightly crosslinked
thermoplastic overmold material. . . wherein the overmold material
comprises a polyolefin or modified polyolefin and has a density less than
1.00 g/cm3.” Claim 8, which depends from claim 1, recites that “the
overmold material is selected from the group consisting of linear low density
polyethylene, polyethylene, polypropylene, and combinations thereof.”
The Examiner finds that Oda discloses a method of making a bottle
having a polyolefin outer layer. Non-Final Act. 3. Moreover, the Examiner
finds, and Appellants do not dispute, that Oda discloses one of the polyolefin
overmold materials specifically recited in dependent claim 8—linear low
density polyethylene—to be used as an outer layer in the preparation of
multilayer bottles. Id. \ Oda 4:45 46, 8:39-52, Example 4. Therefore, on
this record, there is an undisputed finding that Oda discloses linear low
density polyethylene, which falls within the scope of the claimed
“expandable lightly crosslinked thermoplastic overmold materials]” recited
in claim 1, and which is used for the same purpose as that claimed.
Appellants argue (App. Br. 8—10; Reply Br. 6—7) that the ordinary
skilled artisan would not have combined a polyester layer with a polyolefin
layer because “[t]he Office Action lacks any discussion of the well-known
compatibility issues between [polyesters and polyolefins] that may result in
poor adhesion.” App. Br. 8. We do not find this argument persuasive of
reversible error, however, because Appellants fail to direct us to any
evidence of record regarding such alleged incompatibilities. “Attorney’s
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Appeal 2016-006024
Application 13/299,907
argument in a brief cannot take the place of evidence.” In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
Appellants contend further that the Examiner failed to articulate a
sufficient reason why the skilled artisan would have combined Oda’s
polyolefin, which “would not be expected to impart gas barrier properties,”
with the materials of Yatsu and Hutchinson which “seek to impart gas
barrier properties.” Id. Appellants urge that Oda’s objective of “imparting
surface gloss” is unrelated to both Yatsu and Hutchinson because these
references “say nothing about wanting gloss.” Id. at 8—9.
This argument is likewise unpersuasive of reversible error. While we
agree with Appellants (Reply Br. 6—7) that Oda does not suggest that the
polyolefin material itself has gas barrier properties, Appellants do not
address, and thus do not reveal error in, the Examiner’s determination (Ans.
4) that “Yatsu and Hutchinson would also appreciate [a high gloss] property
in their field of endeavor.” Moreover, we observe that, contrary to
Appellants’ assertion in the primary Brief (App. Br. 9), Hutchinson indeed
discloses that high gloss is a desirable characteristic of molded plastic
products. Hutchinson, || 168—169. Therefore, we are not persuaded that the
Examiner’s proffered reason for combining the references (“to create a
bottle having the desired chemical and physical characteristics,” Non-Final
Act. 3) “amounts to nothing more than a ‘mere conclusory statement’” as
urged by Appellants (App. Br. 9).
We also discern no persuasive merit in Appellants’ contention that
Hutchinson’s disclosure would not lead the skilled artisan to lightly
crosslink a thermoplastic outer layer because “Hutchinson describes using
‘high crosslinking materials ... to ensure maximum adhesion to the PET.”
App. Br. 10. First, we observe that Appellants point us to no definition or
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Application 13/299,907
other disclosure that distinguishes between “lightly” and “high” crosslinked
materials. Moreover, even if Appellants successfully made such a
distinction, Hutchinson’s disclosure does not directly correlate the degree of
crosslinking to the degree of adhesion that one of ordinary skill would have
expected to achieve. Rather, Hutchinson states:
The coating materials may be cross-linked to enhance
thermal stability of coatings for hot fill applications. Inner layers
may comprise low-cross linking materials while outer layers may
comprise high crosslinking materials or other suitable
combinations. For example, the inner coating on the PET surface
may utilize non or low cross-linked material, such as the BLOX®
599-29, and the outer coat may utilize material, such as EXP
12468-4B, capable of cross linking to ensure maximum adhesion
to the PET. Suitable additives capable of cross linking may be
added to the coating layer. Suitable cross linkers can be chosen
depending upon the chemistry and functionality of the resin to
which they are added.
Hutchinson, 1121 (emphasis added).
Accordingly, even if Appellants had demonstrated that “high”
crosslinking materials are distinct from the claimed “lightly crosslinked”
outer layer, the portion of Hutchinson upon which Appellants rely to support
their argument does not teach using only “high” crosslinking materials to
achieve “maximum adhesion to the PET.” App. Br. 7. Instead, Hutchinson
states that the outer layer material may comprise high crosslinking materials
or suitable combinations with other materials, and that such materials are
capable of some unspecified degree of crosslinking to ensure maximum
adhesion to the PET surface.
Thus, for the reasons given by the Examiner and emphasized above,
Appellants fail to show that the Examiner reversibly erred in rejecting the
claims on appeal.
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Application 13/299,907
SUMMARY
The decision of the Examiner 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).
AFFIRMED
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