Ex parte MACAULEY et al.

Board of Patent Appeals and Interferences

Aug 11, 1997

08204715 (B.P.A.I. Aug. 11, 1997)

Application for patent filed March 2, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RICHARD P. MACAULEY, LEWIS H. SITA
and ELWOOD L. STOKESBURY
_____________
Appeal No. 97-0816
Application 08/204,7151
______________
ON BRIEF
_______________
Before McQUADE, FLEMING, and CRAWFORD, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
Appeal No. 97-0816
Application 08/204,715
2
DECISION ON APPEAL
This appeal is from the final rejection of claims 1, 2 and
8, all of the claims pending in the application.
The invention relates to a “light excluding multilayer
plastic container for use with light sensitive low acid liquid
nutritional products” (specification, page 1). Claim 1 is
illustrative and reads as follows:
1. A plastic container for a light sensitive nutritional
product, comprising a multilayer plastic container, said
container comprising a wall having six layers which comprise from
the exterior of the container to the interior of the container:
(a) a layer of food grade polypropylene; (b) a layer of high
temperature adhesive; (c) a layer comprising an oxygen barrier of
ethyl-vinyl-alcohol; (d) a layer of a high temperature adhesive;
(e) a layer of regrind material; and (f) a layer of food-grade
polypropylene; and wherein said polypropylene and regrind layers
contain at least about 5% by weight and about 1% by weight
respectively but not more than about 8% by weight of titanium
dioxide, said titanium dioxide serving to reduce the extent of
light transmission through said wall by at least about 99.5%.
The references relied upon by the examiner as evidence of
obviousness are:
Kirshenbaum et al. (Kirshenbaum) 4,051,265 Sept. 27, 1977
Baird et al. (Baird) 4,846,359 July 11, 1989
Yum et al. (Yum) 5,104,390 Apr. 14, 1992
Arvidson et al. (Arvidson) 5,123,554 June 23, 1992
Claims 1, 2 and 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Arvidson in view of Baird, Yum and
Kirshenbaum.
Appeal No. 97-0816
Application 08/204,715
3
Arvidson discloses a “multi-layer co-extrusion blow molded
plastic container adapted to be filled with a heat-sensitive
nutrient and then retorted at relatively high temperatures to
sterilize the contents thereof” (Abstract). The multi-layered
wall structure of the container
is characterized by inner and outer layers 34 and 36
both of which are of a food-grade polypropylene having
a minimum thickness of 0.002 inches, a regrind layer 38
adjacent the outer layer 36, a pair of high temperature
adhesive layers 40 and 42, such as 0.0015 inch
polyolephin [sic, polyolefin] disposed adjacent the
regrind layer 38 and the inner layer 34, respectively,
and, between the two high temperature adhesive layers
40 and 42, an oxygen barrier layer 44 of ethyl-vinyl-
alcohol (EVOH) having a thickness of from 0.0015 to
0.002 inches [column 3, lines 8 through 18].
Baird discloses a “multi-layered, handled plastic bottle
that substantially resists the absorption and oxidation of
essential oils, flavoring components, and nutritional components
. . . found in various beverages such as fruit juices and
particularly citrus juices” (Abstract). Baird teaches that the
outer appearance of the bottle can be enhanced by including
opacifying pigments, such as carbon black, titanium dioxide
(TiO ) or a ferrous oxide, in the outer layer of the bottle (see2
column 4, line 65 through column 5, line 3).
Yum discloses a urinary drainage bag formed of two plastic
films heat-sealed to one another about their peripheries. The
Appeal No. 97-0816
Application 08/204,715
4
films may be transparent or translucent for exposing the contents
of the bag, or may be made opaque by the addition of TiO (see2
column 5, lines 1 through 11).
Kirshenbaum discloses “a container for the storage, at or
near ambient conditions, of liquid foods subject to spoilage due
to the action of light waves, oxygen and other gaseous species”
(column 1, lines 9 through 12). The container consists of a blow
moldable thermoplastic body 12 which is opaque to light having a
wavelength in the range of between about 3500 and 5500 Angstroms
and a surrounding overwrap film 14 which prevents the diffusion
of oxygen and other gaseous species through the container. With
regard to the opaque characteristic of the body 12, Kirshenbaum
teaches that
it is preferred to employ a pigment which serves this
purpose . . . Of the additives that may be employed as
a pigment to provide opaqueness, the most preferred is
titanium dioxide. Titanium dioxide not only makes an
otherwise clear thermoplastic opaque, but, in addition,
it has the additional advantage of pigmenting the
thermoplastic white. In view of the fact that milk
represents the most important liquid food application
for the container 10 of this invention, a white
container is deemed aesthetically the most attractive.
While it has been found that a pigment
concentration of at least 0.5 percent by weight, based
on the total weight of the frame, that is, the total
weight of the thermoplastic and the pigment, is
necessary it is preferred that a somewhat greater
concentration of pigment be employed. In the case
where titanium dioxide is employed as a pigment it is
Appeal No. 97-0816
Application 08/204,715
5
preferred that the concentration of the titanium
dioxide be in the range of between about 1 and 4
percent by weight of the total weight of the frame
[column 5, line 53 through column 6, line 5].
The examiner explains the rejection on appeal as follows:
Arvidson discloses applicants[’] claimed bottle
structure. There is not disclosed the incorporation of
TiO2 [sic] for the purpose of reducing light
transmission through the wall. The secondary
references all address this problem by the
incorporation of TiO2. Baird col. 5, line[s] 1-5,
(opacifying pigments), Yum et al, col. 5, line 10 and
Kirshenbaum et al, col. 5, lines 55-60. It is the
position of the Examiner that it would have been
obvious to one having ordinary skill in the art to
incorporate TiO2 into any layer of Arvidson et al for
to reduce light transmission. Applicants[’] claimed
amount of TiO2 would have been obvious to one having
ordinary skill in the art without undue experimentation
as the claimed amounts are reasonable quantities that
would have expected results [answer, Paper No. 12,
pages 3 and 4].
The appellants, on the other hand, contend that the
examiner’s conclusion of obviousness is unsound because “none of
the foregoing references suggests the addition of titanium
dioxide to more than one layer of a container body. In addition,
none of the references suggests a titanium dioxide level of at
least 5% by weight in at least two layers of a multi-layered
body” (brief, Paper No. 10, page 7).
The test for obviousness is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art. In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
Appeal No. 97-0816
Application 08/204,715
6
(CCPA 1981).
As acknowledged by the examiner, the container disclosed by
Arvidson does not meet the limitations in claim 1 requiring that
“said polypropylene and regrind layers contain at least about 5%
by weight and about 1% by weight respectively but no more than
about 8% by weight of titanium dioxide, said titanium dioxide
serving to reduce the extent of light transmission through said
wall by at least about 99.5%.” In this regard, Arvidson does not
disclose the presence of titanium dioxide in any of the container
wall layers. The examiner’s reliance on Baird, Yum and
Kirshenbaum to cure this deficiency in Arvidson is not well
taken.
Arguably, the combined teachings of the applied references
would have suggested the addition of titanium dioxide to one of
the layers of Arvidson’s container wall to attain a degree of
opacity for the sake of: (1) enhancing the appearance of the
container as in Baird; (2) shielding the contents of the
container from view as in Yum; and/or (3) preventing spoilage of
the contents from light waves as in Kirshenbaum. There is
nothing in the combined teachings of these references, however,
which would have suggested the addition of titanium dioxide to
Arvidson’s container wall so as to meet the rather specific
Appeal No. 97-0816
Application 08/204,715
7
multiple layer, percentage and light transmission limitations set
forth in claim 1. Rejections based on 35 U.S.C. § 103 must rest
on a factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 177-78 (CCPA 1967). In making such a rejection, the
examiner has the initial duty of supplying the requisite factual
basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in the factual
basis. Id. In the present case, it is apparent that the examiner
has resorted to hindsight reconstruction to supply the above
noted deficiencies in the Arvidson container vis-á-vis the
container recited in claim 1.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of claim 1, or of claims 2 and 8 which depend
therefrom, as being unpatentable over Arvidson in view of Baird,
Yum and Kirshenbaum.
Appeal No. 97-0816
Application 08/204,715
8
The decision of the examiner is reversed.
REVERSED
)
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-0816
Application 08/204,715
9
Steven F. Weinstock
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