Ex Parte Riffer

Board of Patent Appeals and Interferences

Sep 10, 2009

10680840 (B.P.A.I. Sep. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID B. RIFFER
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Appeal 2009-009397
Application 10/680,840
Technology Center 1700
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Decided: September 10, 2009
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Before CHARLES F. WARREN, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-55. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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The invention relates to plastic container closures for beverage, food,
juice, pharmaceutical and other containers and, more particularly, to a
method for making closures with sealing liners having resistance to the
transmission of gases, water vapor, and/or flavorants (flavor scalping) (Spec.
1, ll. 6-9).
All 55 claims stand rejected by the Examiner under 35 U.S.C. §
103(a). The rejections as presented by the Examiner are as follows:
A. Claims 1-9, 13, 14, 16, and 20-23 are rejected as unpatentable over
Mori (US 4,312,824, issued Jan. 26, 1982) in view of Mehra (US 5,700,412,
issued Dec. 23, 1997) as evidenced by Hundt (US 3,147,874, issued Sep. 8,
1964).
B. Claims 10-12, and 15 are rejected over Mori in view of Mehra, as
evidenced by Hundt, and further in view of White (US 5,211,974, issued
May 18, 1993).
C. Claims 17-19 over Mori in view of Mehra, as evidenced by Hundt,
and further evidenced by Schrenk (US 5,380,479, issued Jan. 10, 1995).
D. Claims 24, 25, and 28-31 over Mori in view of Mehra and Schrenk, as
evidenced by Hundt;
E. Claims 26 and 27 over Mori in view of Mehra and Schrenk, and
further in view of White;
F. Claims 32, 33, 35, 36, 39-41, 43, 45, 46, and 50-55 over Mori in view
of Mehra, as evidenced by Hundt;
G. Claims 34, 37, and 38 over Mori in view of Mehra, as evidenced by
Hundt, and further in view of Schrenk;
H. Claims 42 and 44 over Mori in view of Mehra, as evidenced by
Hundt, and further in view of White;
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I. Claims 47-49 over Mori in view of Mehra, as evidenced by Hundt,
and as also evidenced by Schrenk.
Appellant appeals each rejection, but confine the arguments to
independent claims 1, 24, and 32 (Br. 5).
II. DISPOSITIVE ISSUES
A. Has Appellant established that the Examiner reversibly erred in
finding that Mehra teaches or suggests forming the alternating layers
required by claims 1 and 32?
B. Has Appellant established that the Examiner reversibly erred in
concluding that the combination of Mori with Mehra and Schrenk suggests
the method of claim 24 as evidenced by Hundt?
We answer both questions in the affirmative.
III. FINDINGS OF FACT
Claims 1 and 32 require that the mold charge and liner both have
layers of matrix polymer alternating with layers of barrier polymer.
Appellant’s Specification describes and depicts the mold charge and
liner as having alternating layers of the two different materials that are
“parallel essentially discrete alternating layers,” or “multiple flat, spiral or
coaxial layers” within the pellet 20 with “layer reorientation” during
compression molding (Figs. 4A and 4B, 5B-5G, and 8; Spec. 7, ll. 14-15;
Spec. 8, ll. 8-9 and 15-18; Spec. 14, ll. 10-18).
Mori is directed to a process of in-situ compression molding of a cap
liner within the cap shell (Mori, col. 2, ll. 38-45). Appellant acknowledges
that this type of in-situ compression forming of cap liners from a charge or
polymer material was known in the art (Br. 6).
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As acknowledged by the Examiner, Mori does not describe the charge
of material as including layers of matrix polymer alternating with layers of
barrier polymer (Ans. 5; Mori, col. 6, ll. 11-32).
Hundt is directed to a disc for use as a seal for closures which
provides a good gas barrier along with other properties (resiliency,
mechanical strength, deformable surface, non-flavor imparting, and high
temperature resistance) (Hundt, col. 1, ll. 14-23). The disc includes a paper
lamina with a coating or film of polyvinylidene chloride polymer gas barrier
resin over which is placed a layer of soft polyolefin to protect the
polyvinylidene chloride layer (Hundt, col. 1, ll. 9-10 and 24-26, and 43-48
and col. 3, ll. 1-3).
Mehra is directed to a process for forming shaped articles generally,
and does not specifically discuss forming cap liners (Mehra, col. 14-15; col.
2, ll. 27-35). The process yields an article with uniform, reproducible, and
improved barrier properties (Mehra, col. 2, ll. 32-34).
Mehra mixes polyolefin particles with pellets of a barrier resin and a
compatibilizer to form a heterogeneous blend (Mehra, col. 1, ll. 14-17; col.
2, ll. 36-38). As found by the Examiner, Mehra teaches forming a melted
heterogeneous blend that is stretched such that “one polymer forms a
continuous matrix phase and another is in a form of discontinuous
substantially two-dimensional parallel and overlapping layers embedded in
the continuous phase.” (Ans. 15, citing Mehra, col. 6, ll. 26-33.) Mehra
describes this “heterogeneous” blend as containing “regions, domains,
particles or platelets, these words being used interchangeably, of barrier
material, such as polyamide[,] in a matrix of polyolefin.” (Mehra, col. 2,
ll. 42-47.)
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Claim 24 requires, “(a) extruding plastic mold charge material that
consists essentially of: (1) continuous layers of matrix polymer material
alternating with continuous layers of barrier polymer material to resist
transmission of gases, water vapor or flavorants, totaling at least nine
alternating layers of matrix and barrier polymer materials, and (2)
compatibilizer material,” along with steps of in-situ compression molding
the mold charge.
With respect to the rejection of claim 24, the Examiner applies
Schrenk for its teaching of extruding a mold charge of continuous layers of
barrier resin to resist gas transmission, totaling at least nine alternating
layers and incorporating compatibilizer (Ans. 8-9).
The Examiner cites to a portion of Schrenk disclosing the forming of
polyethylene terephthalate (PET) containers having ethylene vinyl alcohol
(EVOH) barrier layers (Schrenk, col. 15, l. 38 to col. 16, l. 11 and Ans. 8-9,
citing Schrenk, col. 15, l. 65 to col. 16, l. 11).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to incorporate the methods of Schrenk and Mehra
into that of Mori in view of Hundt’s teaching that it was known and
desirable to provide multilayer crown closures that are impervious to gas
leakage, and because doing so would improve the barrier properties of the
multilayer.
Appellant points out that Schrenk teaches transfer molding cans
having layers of high density polyethylene (HDPE) and EVOH (Br. 10).
Appellant argues that Schrenk does not suggest compression molding
barrier liners from multilayer charge pellets (Br. 10).
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The Examiner responds that “Hundt provides motivation to make the
combination of Shrenk [sic] with Mori, namely that it is desirable to provide
barrier properties (as found in the continuous barrier layers of Schrenk) into
a bottle closure (as in the method of Mori).” (Ans. 19.)
IV. PRINCIPLES OF LAW
“[A]s an initial matter, the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant's specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). “[T]he claims themselves provide substantial guidance as to the
meaning of particular claim terms.” Phillips v. AWH Corp., 415 F.3d 1303,
1314 (Fed. Cir. 2005).
In order to establish a prima facie case of obviousness, the Examiner
must show that each and every limitation of the claim is described or
suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
V. ANALYSIS
As a first matter, we disagree with the Examiner’s statement that “it
has already been held that use of a different starting material in an old
process is not patentable. See In re Durden, Jr. et al., 226 USPQ 359.”
(Ans. 14-15.) There is no per se rule to this effect. Rather, each case must
be decided upon its own facts. In re Ochiai, 71 F.3d 1565, 1571-72 (Fed.
Cir. 1995). and In re Brouwer, 77 F.3d 422, 425-26 (Fed. Cir. 1996). As
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stated in Ochiai, “[m]ere citation of Durden, Albertson, or any other case as
a basis for rejecting process claims that differ from the prior art by their use
of different starting materials is improper, as it sidesteps the fact-intensive
inquiry mandated by section 103.” Ochiai, 71 F.3d at 1570.
Claims 1 and 32 require that the mold charge and liner both have
layers of matrix polymer alternating with layers of barrier polymer.
We cannot agree with the Examiner that the platelets of barrier
polymer taught by Mehra are the required alternating layers of the claims.
The platelets do not contain matrix polymer, only barrier polymer. Mehra,
in fact, teaches that the barrier resin platelets are dispersed in a continuous
matrix of polyolefin. The platelets are discrete islands of barrier resin within
a sea of polyolefin matrix polymer. This structure is different than
alternating layers, i.e., a layer of one material stacked over a layer of another
material, as shown and depicted by Appellant in the Specification. The
portions of the Specification relied upon by the Examiner do not expand the
meaning of the words used in the claims so as to encompass the islands in
sea morphology of Mehra.
Appellant has established that the Examiner reversibly erred in
finding that Mehra teaches or suggests forming the alternating layers
required by claims 1 and 32.
While Schrenk describes alternating layers, the Examiner has not
identified a reason, based on the knowledge of those of ordinary skill within
art, that would have lead one of ordinary skill in the art to form barrier liners
using the technique of Schrenk. A liner requires different properties such as
sealing properties (see Mori and Hundt) than the carbonated can and
beverage bottles suggested by Schrenk, and the Examiner has not established
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that one of ordinary skill in the art would have understood that the those
properties would have been obtained when in-situ compression molding the
layers of Schrenk to form in-situ molded closure liners.
Appellant has established that the Examiner reversibly erred in
concluding that the combination of Mori with Mehra and Schrenk suggests
the method of claim 24 as evidenced by Hundt.
VI. CONCLUSION
White does not cure the defects of the above discussed rejections.
Therefore, we do not sustain any of the rejections of the Examiner.
VII. DECISION
The decision of the Examiner is reversed.

REVERSED

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