Ex Parte Safian

Board of Patent Appeals and Interferences

Dec 27, 2004

09835726 (B.P.A.I. Dec. 27, 2004)

The opinion in support of the decision being entered
today was not written for publication and
is not binding precedent of the Board.
Paper No. 20

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN W. SAFIAN
_____________
Appeal No. 2005-0084
Application No. 09/835,726
______________
ON BRIEF
_______________
Before KIMLIN, WARREN and OWENS, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-10
Claim 1 is illustrative:
1. A multilayer container that comprises:
inner and outer layers that are coextruded and
blow molded simultaneously with each other,
said outer layer being a relatively rigid plastic
layer having a body portion, a finish having an axial
end surrounding a dispensing opening, and a base having
an atmospheric vent opening formed by removal of
material from said base after blow molding,
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Application No. 09/835,726
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said inner layer being a relatively thin flexible
plastic layer that extends around an inner surface of
said outer layer and is unadhered to said outer layer,
said inner flexible layer being of uniform
thickness throughout, having a portion that overlies
said vent opening, and having a portion engaging the
inner surface of said finish and a radially extending
flange portion overlying said axial end of said finish.
The examiner relies upon the following references as
evidence of obviousness:
Avery 4,982,872 Jan. 08, 1991
Ellion et al. (Ellion) 5,497,911 Mar. 12, 1996
Kobayashi et al. (Kobayashi) 5,513,761 May 07, 1996
Thomas EP 0 182 094 May 02, 1986
Takakusagi et al. (JP ‘069) JP 6-345,069 Dec. 20, 1994
Okada et al. (JP ‘561) JP 8-183,561 Jul. 16, 1996
Appellant’s claimed invention is directed to a multilayer
container that is formed by coextruding and blow molding inner
and outer layers of plastic material. The outer layer has a base
portion comprising an atmospheric vent opening. The vent opening
is formed by the removal of material from the base after the blow
molding operation. Appellant submits that “[t]he appealed claims
of the present application are directed specifically to the
atmospheric vent opening 42" (page 3 of principal brief, third
paragraph).
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Application No. 09/835,726
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The appealed claims stand rejected under 35 U.S.C. § 103(a)
as follows:
(a) Claims 1-3 and 8 over Thomas in view of Ellion,
(b) Claims 4, 5 and 10 over Thomas in view of Avery and
Kobayashi,
(c) Claims 6 and 9 over Thomas in view of Chambers,
(d) Claim 7 over Thomas in view of Ellion and either
JP ‘069 or JP ‘561.
Appellant submits at page 5 of the principal brief that
“claims 2-6 and 9-10 are considered to stand or fall with
associated independent claims 1 and 8" (second paragraph).
We have thoroughly reviewed each of appellant’s arguments
for patentability. However, we are in complete agreement with
the examiner that the claimed subject matter would have been
obvious to one of ordinary skill in the art within the meaning of
§ 103 in view of the applied prior art. Accordingly, we will
sustain the examiner’s rejections for essentially those reasons
set forth in the answer, and we add the following primarily for
emphasis.
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Application No. 09/835,726
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Appellant does not dispute the examiner’s factual
determination that Thomas, like appellant, discloses a multilayer
container having outer and inner plastic layers that is formed by
extrusion blow molding operations. Also like appellant’s claimed
container, the container of Thomas has an atmospheric vent 57 in
the base portion of its outer layer.
Although appellant recognizes that the article of the
present invention is claimed in product-by-process format, and
the patentability of the product is determined by the structure
of the article and not by its particular process of preparation,
it is appellant’s contention that the vent opening of the present
invention, performed by the removal of the material after blow
molding, is different than the vent opening of Thomas. Appellant
urges that the vent opening of Thomas is different than the
claimed opening because the Thomas
vent is formed either by thermal shrinkage after the
mold has been opened and the container is allowed to
cool (FIGS. 5 and 7, and page 8, first two paragraphs
of the translation), or the mold is constructed in such
a way that the action of opening the mold itself forms
the atmospheric vent by tearing the container base wall
along the mold parting line (Thomas FIGS. 6 and 8-9,
paragraph bridging pages 8 and 9 of the translation)”
(page 7 of principal brief, last 6 sentences). Appellant
maintains that
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[t]he photomicrographs of record in this application,
and enclosed with this Appeal Brief for the convenience
of the Board, clearly show that the vent opening formed
by removing material from the base wall of the
container is structurally different from a vent opening
that would be formed according to Thomas by merely
tearing the base of the outer shell along the parting
line.
(page 8 of principal brief, second paragraph).
With emphasis on the fact that it is appellant’s burden to
convincingly demonstrate that the claimed multilayer container
with its vent opening, as a whole, is patentably distinct and
nonobvious over the multilayer container of Thomas, as a whole,
it is our judgement that appellant has fallen considerably short
in shouldering this burden. The photomicrographs submitted by
appellant are not in declaration or affidavit form, and,
therefore, are considered to be no more than argument and of
little probative value. See In re Greenfield, 571 F.2d 1185,
1188, 197 USPQ 227, 229 (CCPA 1978); In re Mehta, 347 F.2d 859,
866, 146 USPQ 284, 289 (CCPA 1965). Furthermore, the
photomicrographs fail to present a comparison with multilayer
containers within the scope of the appealed claims and multilayer
containers fairly taught by Thomas. As stated by appellant,
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“[b]oth of these photomicrographics were taken of containers
manufactured in accordance with the invention as claimed in the
present invention” (page 6 of principal brief, first paragraph).
Manifestly, in the absence of any comparative photographs of
Thomas’ vent openings, it cannot be reasonably concluded that the
claimed vent opening is in any way different than the vent
opening of Thomas. Moreover, even assuming for the sake of
argument, that it can be demonstrated that there is a structural
difference between the vent openings of the containers of
appellant and Thomas, appellant has not carried the burden of
demonstrating that such difference would have been a nonobvious
one.
We note that appellant has not argued the merits of the
various combinations of references with Thomas set forth by the
examiner.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is affirmed.
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Application No. 09/835,726
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
ECK/vsh
Appeal No. 2005-0084
Application No. 09/835,726
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HOWARD G. BRUSS, ESQ.
OWENS-ILLINOIS
ONE SEAGATE, 25-LDP
TOLEDO, OH 43666