Ex Parte Semersky et al

Patent Trial and Appeal Board

Feb 28, 2017

12778291 (P.T.A.B. Feb. 28, 2017)

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.
12/778,291 05/12/2010 Frank E. Semersky 1-40933 6135
43935 7590 03/02/2017
FRASER CLEMENS MARTIN & MILLER LLC
28366 KENSINGTON LANE
PERRYSBURG, OH 43551
EXAMINER
YAGER, JAMES C
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
03/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
clemens @ fraser-ip. com
lopez @ fraser-ip. com
howard @ fraser-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK E. SEMERSKY and WILLIAM D. VOYLES
Appeal 2016-001862
Application 12/778,2911
Technology Center 1700
Before DONNA M. PRAISS, BRIAN D. RANGE, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 12, 21, and 24—26. We have jurisdiction. 35
U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is Plastic
Technologies, Inc. Appeal Br. 1.
Appeal 2016-001862
Application 12/778,291
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a plastic container
having a foam layer. Spec. 12. The foam layer provides the container with
thermal insulating properties. Id. 4—5. Claim 12, reproduced below with
emphasis added to certain key recitations, is the only independent claim on
appeal and is illustrative of the claimed subject matter:
12. A blow molded plastic container comprising:
an inner layer of plastic formed from a microcellular foamed
polymer, cells of the microcellular foamed polymer
containing one of carbon dioxide and nitrogen gas therein;
and
an unfoamed outer layer of plastic comprising biaxially
oriented polyethylene terephthalate formed separately
from the inner layer via an overmolding process but
directly contacting said inner layer, said container made
by blow molding a preform formed from said inner layer
of plastic and said outer layer of plastic.
Appeal Br. 16 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
US 3,880,973Yoshikawa et al.
(hereinafter “Yoshikawa”)
Snyder et al.
(hereinafter “Snyder”)
Daubenbiichel et al.
(hereinafter “Daubenbiichel”)
US 4,318,489
US 4,874,649
Apr. 29, 1975
Mar. 9, 1982
Oct. 17, 1989
2 In this decision, we refer to the Final Office Action mailed May 14, 2015
(“Final Act.”), the Appeal Brief filed August 13, 2015 (“Appeal Br.”), the
Examiner’s Answer mailed November 10, 2015 (“Ans.”), and the Reply
Brief filed December 1, 2015 (“Reply Br.”).
2
Appeal 2016-001862
Application 12/778,291
Jones et al.
(hereinafter “Jones”)
Yoshimi et al.
(hereinafter “Yoshimi”)
Blizard et al.
(hereinafter “Blizard”)
US 5,409,983 Apr. 25, 1995
US 5,618,486 Apr. 8, 1997
US 6,169,122 B1 Jan. 2, 2001
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 12 and 24—26 under 35 U.S.C. § 103 as
unpatentable over Daubenbiichel in view of Snyder, Blizard, Yoshimi, and
Yoshikawa. Ans. 3.
Rejection 2. Claim 21 under 35 U.S.C. § 103 as unpatentable over
Daubenbiichel in view of Snyder, Blizard, Yoshimi, and Yoshikawa as
applied to claim 12 in view of Jones. Id. at 6.
The Examiner has withdrawn the rejection of claims 12, 21, and 24—
26 under 35 U.S.C. § 112. Id.
Appellants’ argument on appeal presents the question: did the
Examiner properly conclude that it would have been obvious to employ
“biaxially orientated polyethylene terephthalate” (as recited in claim 12) for
the unfoamed outer layer of plastic taught by Daubenbiichel?
The Examiner finds that Daubenbiichel discloses a hollow body with
an inner foamed plastic layer and an outer unfoamed plastic layer. Ans. 3
(providing citations to Daubenbiichel). The Examiner finds that Snyder,
Blizard, and Yoshimi teach other recitations of claim 12 {Id. at 3—4), and the
Examiner’s combination of those teachings is not in dispute on appeal. The
Examiner finds that Daubenbiichel does not disclose that the outer layer is
ANALYSIS
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Appeal 2016-001862
Application 12/778,291
biaxially orientated. Id. at 5. The Examiner finds, however, that stretch
blow molding is a conventional technique that would result in biaxial
orientation {id. at 8 (citing Spec. 135)), and Yoshikawa discloses that
biaxial stretch blow molding improves impact strength and clarity {id. at 6).3
The Examiner thus concludes “[i]t would have been obvious [to] one of
ordinary skill in the art at the time the invention was made to stretch blow
mold the article of modified Daubenbuchel as taught by Yoshikawa in order
to improve the impact strength and clarity of the article.” Id. at 6; see also
Yoshikawa 1:15—30 (stating that the biaxial process “improves the qualities
of the resins such as falling substance impact strength, clarity, etc. . . .”).
Appellants argue that the Examiner has not established a reasonable
expectation of success in creating the Daubenbuchel hollow body having a
foamed layer using the process of Yoshikawa. Appeal Br. 7—12. Appellants
explain the difference between extrusion blow molding and stretch blow
molding. Id. at 7—8. Appellants also explain that Daubenbuchel states the
advantages of extrusion blow molding. Id. at 9-10. Appellants further
explain that a tube preform taught by Daubenbuchel cannot be stretch blow
molded and argue that the Examiner has not explained how such a tube
could be formed by stretch blow molding. Id. at 11—12; see also Reply Br.
2-3.
The Examiner responds by stating “Appellant’s argument is
unpersuasive because Appellant has not provided any objective evidence
that the preform of Daubenbuchel cannot be stretch blow molded or that
3 The Examiner later finds, however, “that it is unclear whether stretch blow
molding would improve the clarity of a hollow body having a foamed
layer. . . .” Id. at 9.
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Appeal 2016-001862
Application 12/778,291
there would be no reasonable expectation of success in doing so.” Ans. 8.
The Examiner errs to the extent this statement would place an initial burden
regarding expectation of success on Appellants; reasonable expectation of
success is a necessary part of a prima facie case of obviousness. In re
Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991).
The Examiner also clarifies that the proposed modification is not a
hybrid extrusion / stretch blowing process. Ans. 7—8. Rather, the Examiner
proposes that conventional stretch blow molding could be used to make the
“conventional container” disclosed by Daubenbiichel. Id. at 7. This
clarification, however, does not address the core issue of whether or not a
person of skill would have reasonably expected the stretch blow molding
process of Yoshikawa to be able to create the modified Daubenbiichel
product (modified in that the product would be stretch blow molded in order
to meet claim 12’s “biaxially oriented polyethylene terephthalate”
recitation).
While we agree with the Examiner that the record establishes stretch
blow molding was a conventional technique (Ans. 8), this does not end the
obviousness inquiry. The Specification states, “[t]he overmolded container
20 may be formed by conventional blow molding techniques, such as reheat
stretch blow molding.” Spec. 135. The record does not establish, however,
that the entire Daubenbiichel product could be formed from the stretch blow
molding process of Yoshikawa or any other purely conventional stretch
blow molding technique. Stated another way, the record does not establish
that stretch blow molding would have been expected to be interchangeable
or substitutable for extrusion blow molding in order to produce the modified
Daubenbiichel product.
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Application 12/778,291
Thus, the present record does not establish that a person of skill in the
art would have understood the process of Yoshikawa could be predictably
employed to produce the article of Daubenbiichel with a reasonable
expectation of success. We therefore do not sustain the Examiner’s rejection
of claim 12. We also do not sustain the rejection of claims 21 and 24—26
because those claims depend from claim 12 and the further rejections of
claims 21 and 24—26 do not cure the deficiencies discussed above with
respect to claim 12.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
12, 21, and 2A-26.
REVERSED
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