Ex parte Rigosi et al.

Board of Patent Appeals and Interferences

Sep 26, 1997

08172517 (B.P.A.I. Sep. 26, 1997)

Application for patent filed December 21, 1993.1
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(2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GIAN L. RIGOSI,
ROBERTO MARZOLA, GIAN P. GUIDETTI,
DINO BACCI, and GEORGES ASPERTI
__________
Appeal No. 96-1501
Application 08/172,5171
__________
HEARD: Sep. 18, 1997
__________
Before STONER, Chief Administrative Patent Judge, and
LYDDANE and CRAWFORD, Administrative Patent Judges.
LYDDANE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's refusal
to allow claims 1 through 6, which are all of the claims pending
in the application.
Appeal No. 96-1501
Application No. 08/172,517
2
The subject matter on appeal is directed to a process for
coating the inner surface of metal containers. Claim 1 is
exemplary of the invention and reads as follows:
1. A process for coating the inner surface of metal
containers having an inside volume ranging from 20 to 250 liters,
comprising:
1) electrostatically depositing on the inside surface
of bottoms, lids and bodies of containers, a polyolefin
composition selected from the group consisting of:
a) a polyethylene selected from the group
consisting of HDPE, LDPE and LLDPE, said polyethylene
having a melt index E ranging from 1 to 70 dl/g; and
b) a polypropylene composition having melt index L
ranging from 15 to 150 g/10 minutes and comprising at
least one of the following components (i) to (iii):
(i) a crystalline homopolymer of
propylene;
(ii)a propylene/ethylene crystalline
random copolymer; and
(iii)a propylene/ethylene/C "-olefin 4-10
crystalline random copolymer; and optionally,
one of the following components (iv) to (vi):
(iv)an elastomeric copolymer selected from
the group consisting of ethylene/propylene
elastomeric copolymer and ethylene/1-butene
elastomeric copolymer;
(v)a polypropylene modified with polar
groups; and
(vi)a mixture of (iv) and (v); wherein
said polyolefin composition is in powder form with
the diameter of the particles not exceeding 600
micrometers and having a particle size
Appeal No. 96-1501
Application No. 08/172,517
We understand the last paragraph of this claim to mean2
"assembling the bottoms, lids and bodies into containers, and
subsequently melting the polyolefin composition."
3
distribution wherein no more than 25% of the
powder has a particle diameter ranging from 300 to
450 micrometers, and no more than 10% have a
particle diameter greater than 450 micrometers;
2) pre-melting the polyolefin composition deposited in
step (1); and
3) assembling the bottoms, lids and bodies of the
containers, and subsequently melting the polyolefin
composition.2
The prior art of record relied upon by the examiner in
rejections of the claims under 35 U.S.C. § 103 are:
Walker 1,921,247 Aug. 8, 1933
Matsumoto et al. 4,198,327 Apr. 15, 1980
(Matsumoto)
Marzola et al. 4,350,797 Sep. 21, 1982
(Marzola)
Appellants0 admitted prior art as described on pages 2
through 4 of the specification.
Claims 1 through 3, 5 and 6 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Appellants' admitted prior art
in view of Walker.
Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Appellants' admitted prior art in view of
Walker and Marzola.
Appeal No. 96-1501
Application No. 08/172,517
4
Claims 1 through 3, 5 and 6 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Matsumoto in view of Walker and
Appellants' admitted prior art.
Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Matsumoto in view of Walker, Appellants'
admitted prior art and Marzola.
Rather than reiterate the examiner's statement of the above
rejections and the conflicting viewpoints advanced by the
examiner and the appellants, we refer to pages 4 through 12 of
the examiner's answer, to the supplemental answer, to pages 6
through 12 of the appellants' brief, to the reply brief, and to
the supplemental reply brief for the full exposition thereof.
OPINION
In arriving at our decision in this appeal, we have given
careful consideration to appellants' specification and claims, to
the applied prior art, and to the respective positions advanced
by the appellants and by the examiner. Upon evaluation of all
the evidence before us, it is our conclusion that the evidence
adduced by the examiner is insufficient to establish a prima
facie case of obviousness with respect to all claims on appeal.
Our reasoning for this determination follows.
Appeal No. 96-1501
Application No. 08/172,517
5
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). A prima facie case of
obviousness is established by presenting evidence indicating that
the prior art teachings would appear to be sufficient for one of
ordinary skill in the relevant art having those teachings before
him to make the proposed combination or other modification. See
In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA
1972). Furthermore, the conclusion that the claimed subject
matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge
generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings
of the prior art to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988),
In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed. Cir.
1984); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986) and ACS Hosp. Sys., Inc. v.
Appeal No. 96-1501
Application No. 08/172,517
6
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984).
Additionally, rejections based on § 103 must rest on a
factual basis with these facts being interpreted without
hindsight reconstruction of the invention from the prior art.
The examiner has the initial duty of supplying the factual basis
for the rejection. The examiner may not, because of doubt that
the invention is patentable, resort to speculation, unfounded
assumption or hindsight reconstruction to supply deficiencies
in the factual basis. See In re Warner, 379 F.2d 1011, 1017,
154 USPQ 173, 178 (CCPA 1967). Our reviewing court has
repeatedly cautioned against employing hindsight by using the
appellants' disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings in the prior art. See,
e.g., Grain Processing Corp. v. American Maize-Prods. Co.,
840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
With this as background, we first consider the examiner's
rejection of claims 1 through 3, 5 and 6 under 35 U.S.C. § 103 as
being unpatentable over Appellants' admitted prior art in view of
Walker. We agree with the examiner's position that Appellants'
admitted prior art discloses that it is well known to coat the
inside of metal containers to be used for food products (page 2
Appeal No. 96-1501
Application No. 08/172,517
7
of appellants' specification) and that the admitted prior art
also evidences that it is well known to utilize an electrostatic
deposition technique for coating a powder of a polyolefin
composition onto a surface to be coated (page 4 of appellants'
specification). We also agree in substance with the examiner's
position that the patent to Walker discloses a method of
producing a container wherein components of the container are
coated by tinning, jointed to one another, and then subjected to
heat, thus causing the components coated by tinning to be sweated
together.
However, Walker is directed to a metal can 1 formed by
welding breast 2 and body 3 to a ring 7 (Figure 1 and page 2,
lines 1-3), tinning the connected parts inside and out (page 2,
lines 12-13), and forming a base 13, 15 which is also tinned over
the entire exposed surfaces and then cooled (page 2, lines 20-
34). The base and the body are then assembled, all the parts are
then subjected to heating to cause the tinned surfaces to melt
and to flow, thus causing the parts to be sweated together (page
2, lines 34-40).
It is clear that the process for coating the inner surface
of metal containers of appealed claim 1 requires, inter alia,
electrostatically depositing on the inside surface of bottoms,
Appeal No. 96-1501
Application No. 08/172,517
8
lids and bodies of containers, a polyolefin composition,
premelting the polyolefin composition, assembling the bottoms,
lids and bodies into containers and subsequently melting the
polyolefin composition. It is our opinion that nothing in the
Appellants0 admitted prior art or in Walker teaches or suggests
utilizing electrodeposited polyolefin to coat the individual
elements of a container, much less premelting the polyolefin
composition, assembling the elements into a container, and
melting the polyolefin composition, all as required by the
process of appealed claim 1. Moreover, even assuming arguendo
that appellants' admissions would have suggested coating the
inside of a container with polyolefin by electrodeposition, like
the appellants, we fail to see how the process of forming the
metal can of Walker would have taught one of ordinary skill in
the art to utilize these admissions to premelt the polyolefin
composition, then assemble the elements, and then melt the
polyolefin composition again to arrive at the process recited in
appealed claim 1. In our view, any relevance which the process
of Walker may have with respect to appellants' claimed process
only becomes apparent, if at all, from a reading of appellants'
disclosure, and not from anything in the applied prior art.
As stated in W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
Appeal No. 96-1501
Application No. 08/172,517
9
721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984),
[t]o imbue one of ordinary skill in the art
with knowledge of the invention in suit, when
no prior art reference or references of
record convey or suggest that knowledge, is
to fall victim to the insidious effect of a
hindsight syndrome wherein that which only
the inventor taught is used against its
teacher.
It is our conclusion that the only reason to combine the
teachings of the applied prior art in the manner proposed by the
examiner results from a review of appellants' disclosure and the
application of impermissible hindsight. Thus, we cannot sustain
the examiner's rejections of appealed claims 1 through 3, 5 and 6
under 35 U.S.C. § 103 as being unpatentable over Appellants'
admitted prior art in view of Walker. We have also considered
the additional teachings of the patent to Marzola applied in the
rejection of appealed claim 4 under § 103, but we find nothing
therein to cure the deficiencies noted above. Consequently, we
also cannot sustain the examiner's rejection of appealed claim 4
under 35 U.S.C. § 103 as being unpatentable over Appellants'
admitted prior art in view of Walker and Marzola.
We next consider the examiner's rejection of claims 1
through 3, 5 and 6 under 35 U.S.C. § 103 as being unpatentable
over Matsumoto in view of Walker and Appellants' admitted prior
Appeal No. 96-1501
Application No. 08/172,517
10
art. From our review of the patent to Matsumoto, we find that
Matsumoto discloses that polyolefin coatings may be applied to
containers "useful as packaging materials for foods, liquids, and
medicines" (column 4, lines 21-22) as has the examiner, but also
that it discloses that a method of applying a polyolefin coating
can include "adhering the polyolefin composition to the polar
material by electrostaticity and then melting the polyolefin
composition to laminate it on the polar material" (column 3,
lines 58-61), and that a primer may be used prior to such coating
(column 4, lines 5-7).
However, as with our discussion above with respect to the
rejection of claims 1 through 3, 5 and 6 under § 103 as being
unpatentable over Appellants' admitted prior art in view of
Walker, we fail to see how the process of forming the metal can
of Walker would have taught one of ordinary skill in the art to
utilize these teachings to coat the inside surface of elements of
containers, then premelt the polyolefin composition, then
assemble the elements, and then melt the polyolefin composition
again to arrive at the process recited in appealed claim 1. We
again conclude that the only reason to combine the teachings of
the applied prior art in the manner proposed by the examiner in
this rejection of claims 1 through 3, 5 and 6 under 35 U.S.C.
Appeal No. 96-1501
Application No. 08/172,517
11
§ 103 results from a review of appellants' disclosure and the
application of impermissible hindsight. Thus, we also cannot
sustain the examiner's rejection of appealed claims 1 through 3,
5 and 6 under 35 U.S.C. § 103 as being unpatentable over
Matsumoto in view of Walker and Appellants' admitted prior art.
We have also considered the additional teachings of the patent to
Marzola applied in the further rejection of appealed claim 4
under § 103, but we again find nothing therein to cure the
deficiencies noted above. Consequently, we also cannot sustain
the examiner's rejection of appealed claim 4 under 35 U.S.C.
§ 103 as being unpatentable over Matsumoto in view of Walker,
Appellants0 admitted prior art and Marzola.
Appeal No. 96-1501
Application No. 08/172,517
12
Accordingly, the decision of the examiner rejecting claims 1
through 6 under 35 U.S.C. § 103 is reversed.
REVERSED
Bruce H. Stoner Jr., Chief )
Administrative Patent Judge )
)
)
)
William E. Lyddane ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Murriel E. Crawford )
Administrative Patent Judge )

Appeal No. 96-1501
Application No. 08/172,517
13
James C. Lydon
Adduci, Mastriani
& Schaumberg, L.L.P.
1140 Connecticut Ave., N.W., #250
Washington, D.C. 20036