Ex Parte Nomula

Board of Patent Appeals and Interferences

Feb 24, 2011

11231515 (B.P.A.I. Feb. 24, 2011)

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.
11/231,515 09/21/2005 Srinivas Nomula 031599/281985 6093
826 7590 02/24/2011
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
YAGER, JAMES C
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
02/24/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SRINIVAS NOMULA
__________

Appeal 2009-013544
Application 11/231,515
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-013544
Application 11/231,515

2
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1-11. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is said to relate to composite containers having
impervious liners (Spec. 1).
Claims 1, 4 and 7 are illustrative:
1. A composite container, comprising:
a tubular container body comprising paperboard wrapped
about an axis into a tubular shape; and
a non-foil mono-web liner adhered to an inner surface of
the paperboard, the liner being free of any metal foil layer and
having only a single pre-manufactured web, said pre-
manufactured web being a polymer film web having an inner
surface facing an interior of the container body and an outer
surface facing the paperboard, the liner further including a
vapor-deposited coating of barrier material covering the outer
surface of the polymer film web, a protective coating of
polymer material covering the vapor-deposited coating of
barrier material, and an inner heat seal layer covering the inner
surface of the polymer film web and forming an innermost
surface of the liner, the liner having opposite edges that are
overlapped and sealed together via the inner heat seal layer.
4. The composite container of claim 1, wherein the liner
further comprises a coating of a polymer material applied to the
outer surface of the polymer film web prior to application of the
vapor-deposited coating of barrier material for enhancing
effectiveness of the vapor-deposited coating of barrier material.
7. The composite container of claim 1, wherein the
protective coating comprises a polymer selected from the group
consisting of nitrocellulose lacquer, acrylic lacquer, and
vacuum acrylate.
Appeal 2009-013544
Application 11/231,515

3
Appellant appeals the following rejections:
1. Claims 1-11 are rejected under 35 U.S.C. § 112, second paragraph as
failing to particular point out and distinctly claim the subject matter
Appellant regards as the invention.
2. Claims 1, 2, 4, 5, 7, 8, and 11 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gibbons (U.S. Patent 4,983,431 issued Jan. 8,
1991) in view of Wannamaker (U.S. Patent 3,428,239 issued Feb. 18,
1969).
3. Claims 1 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gibbons in view of Krause (U.S. Patent 3,156,401
issued Nov. 10, 1964).
4. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Gibbons in view of Wannamaker and Chou (U.S. Patent
5,019,210 issued May 28, 1991).
5. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gibbons in view of Wannamaker and Shetty
(U.S. 2004/0052987 A1 published Mar. 18, 2004).

With regard to rejection (1), Appellant focuses the arguments on claim 1
only.
With regard to rejection (2), Appellant argues the following groups of
claims: (1) Claims 1, 2, 8, and 11 from which we select claim 1 as
representative; (2) Claims 4 and 5 from which we select claim 4 as
representative; and (3) Claim 7. We address Appellant’s arguments with
regard to the representative claim of each respective group.
With regard to rejection (3), Appellant argues claim 1 only.
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Application 11/231,515

4
With regard to rejections (4) and (5), Appellant does not advance any
further arguments than those presented with regard to rejection (2).
Accordingly, the rejections of claims 6, 9, and 10 stand or fall with our
assessment of claim 1 under rejection (2).

REJECTION (1)
ISSUE
Did the Examiner reversibly err in determining that the recitation of
“the liner being free of any metal foil layer” conflicts with the claim
requirement that the liner include a “vapor-deposited coating of barrier
material” so as to render the claim indefinite? We decide this issue in the
affirmative.

FINDINGS OF FACT AND ANALYSIS
The Examiner finds that a metal foil is a thin sheet of metal, which
would include a vapor deposited metal coating (Ans. 3). Based upon this
finding the Examiner determines that the claims are indefinite because it is
unclear how the web can be free of a metal foil layer and at the same time
have a vapor deposited metal coating (id.).
Appellant contends that one of ordinary skill in the art would
understand what is being claimed based on the Specification (App. Br. 5-6).
Appellant contends that he has described problems with using metal foil
barrier layers in the liners and that the use of vapor deposited barrier layers
is described as being a solution to the described problems (App. Br. 5).
Appellant further contends that metal foil layers are thicker than vapor
deposited materials and thus are distinct from each other (id.).
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5
We determine that the Specification draws a distinction between metal
foils and a vapor-deposited barrier material. Based on the Appellant’s
Specification, one of ordinary skill in the art would understand this
difference and what is being claimed in reciting a liner “free of any metal
foil layer” and the liner having a “vapor-deposited coating of a barrier
material.” That is all that is legally required. Enzo Biochem, Inc. v. Applera
Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (“Indefiniteness requires a
determination whether those skilled in the art would understand what is
claimed.”).
For the above reasons, we reverse the § 112, second paragraph,
rejection.

Rejections (2)-(5)
CLAIM 1
ISSUE
Did the Examiner reversibly err in determining that the structure of
Gibbons’ oxygen impermeable leak free laminate used on paperboard
containers is structurally indistinguishable from the product-by-process
claimed composite container having a liner attached to paperboard
containers? We decide this issue in the negative.

FINDINGS OF FACT AND ANALYSIS
The Examiner finds that Gibbons discloses all the features of claim 1
except for the opposite edges of the liner are overlapped and sealed together
feature (Ans. 4). The Examiner relies upon either Wannamaker or Krause to
teach the overlapping feature (Ans. 4-5 and 8-9). The Examiner treats the
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6
“wrapped about an axis into a tubular shape” and “vapor-deposited” features
as product-by-process limitations and determines the composite container of
Gibbons in view of either Wannamaker or Krause is structurally
indistinguishable from the claimed composite container (Ans. 5, 9).
Appellant contends that the claimed liner is structurally
distinguishable because it is made using a “‘mono-web’ liner” to which a
barrier layer is “vapor-deposited” (App. Br. 7-8). Appellant contends that
“mono-web” must be construed as a structural limitation which is defined on
page 1 of the Specification as “only a single web of material that is pre-
manufactured and supplied in the form of a roll of the material” (App. Br. 7).
Appellant argues that a laminate formed by laminating pre-manufactured
webs is structurally different than a laminate formed by extrusion coating or
vapor depositing coatings onto a single preexisting web (id.). Appellant
contends that a vapor-deposited coating is thinner than a layer formed by
extrusion coating or using a pre-manufactured layer (App. Br. 8).
Appellants argue that neither Gibbons nor Wannamaker teaches a vapor-
deposited barrier material (id.).
Appellant’s arguments are not persuasive because they fail to
establish a patentable distinction between the final laminate taught by
Gibbons in view of Wannamaker or Krause and the claimed laminate used to
make the composite container. Though Appellant contends that a vapor
deposited layer is thinner than an extrusion coating or a pre-manufactured
web, we agree with the Examiner that a particular thickness of the layer is
not claimed.
Appellant’s arguments that the mono-web feature must be given
weight as a structural feature and that the art does not teach vapor-deposition
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misses the fact that the Examiner has given the mono-web feature weight
and that the Examiner treats vapor-deposition as a product-by-process
limitation. However, it is not possible to determine any patentable
distinction between the claimed mono-web feature and the layers 34, 36, 38
or 40 of Gibbons’ Figure 2 or layer 56 of Gibbons’ Figure 3. Similarly, we,
like the Examiner, discern no patentable distinction between the claimed
vapor-deposited barrier layer and Gibbons’ barrier layer 32 in Figure 2 or
layer 52 in Figure 3 in the final laminate. With a product-by-process claim
the final structure implied by the process steps is what is used to determine
patentability of the claim. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)
(“[E]ven though product-by-process claims are limited by and defined by the
process, determination of patentability is based on the product itself.”).
Accordingly, after Gibbons’ co-extruded layers are cooled, the structure of
Gibbons’ laminate would appear to be the same regardless of how the layer
originated (i.e., a coextruded layer, a pre-manufactured layer, or a vapor-
deposited layer) absent proof from Appellant to the contrary. Thorpe, 777
F.2d at 698.
Though Appellant alleges a structural difference, no evidence has
been submitted to substantiate Appellant’s mere attorney argument.
Appellant has not satisfied the burden to show a patentable difference in the
structures of the claimed laminate and the final prior art laminate.
Appellant relies on the same unpersuasive argument advanced with
regard to the rejection of Gibbons in view of Wannamaker with regard the
rejection over Gibbons in view of Krause. Appellant further argues that
Krause teaches a laminate having a foil layer (App. Br. 11). However, the
Examiner relies on Gibbons as teaching the non-foil containing laminate and
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Krause as merely teaching that it was known to overlap laminates to seal
them (Ans. 8-9). Accordingly, that Krause teaches using a foil in the
laminate does not undermine the Examiner’s combination.
For these reasons, we affirm the Examiner’s following § 103
rejections: claims 1, 2, 8 and 11 over Gibbons in view of Wannamaker;
claims 1 and 3 over Gibbons in view of Krause; claim 6 over Gibbons in
view of Wannamaker and Chou; and claims 9 and 10 over Gibbons in view
of Wannamaker and Shetty.

CLAIM 4
Appellant argues Gibbons does not teach that barrier layer 52 is
vapor-deposited (App. Br. 10). Appellant further argues that Gibbons does
not teach that the abuse-resistant layer 54 is applied to the caulk layer 56
prior to application of a vapor-deposited barrier coating layer for enhancing
the effectiveness of the vapor-deposited coating (App. Br. 10).
These arguments are not persuasive for the reasons we discussed with
claim 1. Specifically, the vapor-deposited feature and the order in which the
layers are applied are product-by-process features. It is not possible to
determine any patentable distinction between Gibbons’ barrier layer 52 in
the final product and a vapor-deposited barrier layer absent evidence from
Appellant to the contrary. Similarly, the final product structure shows a
layer of abuse-resistant polymer 54 (or 50) to which is applied barrier layer
52, which appears to have the same structure as required by claim 4
regardless of the order of steps used to make it, absent evidence to the
contrary. No such evidence has been provided and mere attorney argument
is insufficient.
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We affirm the Examiner’s § 103 rejection of claims 4 and 5 over
Gibbons in view of Wannamaker.

CLAIM 7
Appellant argues that Gibbons fails to teach that the protective coating
material is a nitrocellulose lacquer, acrylic lacquer, or vacuum lacquer as
required by claim 7 (App. Br. 10).
The Examiner finds that Gibbons’ disclosure of CXA® which
includes acrylate and methacrylate comonomers constitutes an acrylic
lacquer (Ans. 17).
Appellant does not respond or contest this finding in the Reply Brief.
Appellant has not established any error with the Examiner’s finding. We
affirm the Examiner’s § 103 rejection of claim 7 over Gibbons in view of
Wannamaker.

DECISION
The Examiner’s decision 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).

AFFIRMED

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ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000