Ex Parte Sun et al

Board of Patent Appeals and Interferences

Jul 19, 2012

11999913 (B.P.A.I. Jul. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/999,913 12/05/2007 Luyi Sun COS-1126 2830
25264 7590 07/19/2012
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
ROGERS, MARTIN K
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
07/19/2012 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 LUYI SUN,
DANG LE, and DAVID SMITH
____________

Appeal 2011-001559
Application 11/999,913
Technology Center 1700
____________

Before CHARLES F. WARREN, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2011-001559
Application 11/999,913

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DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
twice rejecting claims 7, 8, and 10-14.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
The Examiner maintains (Ans.3 3-11), and Appellants request review of (Br.
2-3), the following grounds of rejection:
1. claims 7, 8, 10, 13, and 144 under 35 U.S.C. § 103(a) as unpatentable
over Fukai (US 5,232,715, issued Aug. 3, 1993) in view of Collette (US
2004/0256763 A1, published Dec. 23, 2004) or AAPA (Appellants’ admitted prior
art, Spec. [0002-0003]) and optionally Unterlander (US 2004/0247734 A1,
published Dec. 9, 2004);
2. claim 11 under 35 U.S.C. § 103(a) as unpatentable over Fukai in view
of Collette or AAPA, optionally Unterlander5, and optionally Takakusaki (US
4,915,992, issued Apr. 10, 1990);

1 Office Action mailed Nov. 23, 2009.
2 Appeal Brief filed Apr. 5, 2010 (“Br.”).
3 Examiner’s Answer mailed Jun. 10, 2010.
4 The Examiner lists claim 11 as subject to these grounds of rejection. (Ans. 3, 7.)
However, claim 11 is not addressed in the body of the rejections. (See Ans. 3-5; 7-
9.) In view of this lack of discussion of claim 11, and the separate rejection of
claim 11, infra, we view the inclusion of claim 11 in these grounds of rejection as
inadvertent, and harmless error.
5 The Examiner does not indicate Unterlander is optionally relied on in the
statements of the rejections of claims 11 and 12, infra. We view this omission as
inadvertent, and harmless error, as the Examiner explicitly states claims 11 and 12
are rejected based on the references “as applied to claim 7 above.” (Ans. 6-7, 10.)
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Application 11/999,913

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3. claim 12 under 35 U.S.C. § 103(a) as unpatentable over Fukai in view
of Collette or AAPA, optionally Unterlander, and Mero (US 5,660,905, issued
Aug. 26, 1997).
Appellants’ arguments in support of patentability as to all appealed claims
are based on limitations found in claim 7 (see Br. 3-5), the sole independent claim
on appeal, which is reproduced below from the Claims Appendix to the Appeal
Brief:
7. A method of forming an injection stretch blow molded
article comprising;
providing a propylene based polymer;
forming a preform from the propylene based polymer, wherein
the preform comprises:
a neck comprising an internal neck diameter and an
external neck diameter;
a body comprising an internal body diameter and an
external body diameter, the internal body diameter and the external
body diameter forming a sidewall, wherein the internal body diameter
is at least 80% of the internal neck diameter; and
an end-cap positioned on the body at a transition point
and comprising an end-cap depth and a transition point radius,
wherein the end-cap depth is greater than the transition point radius;
heating the preform; and
injection stretch blow molding the preform into an article.
The Examiner relies on Fukai for a teaching of Appellants’ claimed method
with the exception of forming the preform from a propylene based polymer and an
explicit teaching of an end-cap having a depth greater than the transition point
radius. (Ans. 3-4.)
Appeal 2011-001559
Application 11/999,913

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Appellants argue the Examiner erred in relying on Fukai column 1, lines 16-
17 for a teaching of an injection stretch blow molding method. (Br. 3.)
In the Response to Argument, the Examiner clarifies Fukai column 2, line 51
is relied upon for a teaching of this technique. (Ans. 11-12.) Appellants have not
disputed that Fukai does, in fact, teach a “method of forming an injection stretch
blow molded article” (claim 7). (Cf. Br. 3-4 (arguing Fukai does not teach such
method in column 1 and that Fukai does not teach injection stretch blow molding a
propylene based preform).)
The Examiner determines it would have been obvious to have used
polypropylene in Fukai’s method of forming an injection stretch blow molded
article based on Fukai’s use of “polyethyleneterephthalate [(“PET”)] or the like”
(col. 3, l. 12), and either the known use of polypropylene as a lower cost material
in injection stretch blow molding processes (Ans. 8 (citing AAPA); see Spec.
[0002]) or Collette’s disclosure that both PET and polypropylene are injection
moldable materials useful in forming containers. (Ans. 4; Collette [0080]).
Appellants contend one of ordinary skill in the art would not have been
motivated to use polypropylene in Fukai’s process because “attempts to utilize
polypropylene in injection stretch blow molded processes has proven difficult and
required substantial redesign of premolds and process parameters to successfully
form injection stretch blow molded articles.” (Br. 4 (citing the Specification and
US 2006/0035045 A1, issued Feb. 16, 2006 (“Batlaw”).)
Both the AAPA and Batlaw (paras. [0008-0009]) support findings that: it
was known in the art to use both PET and polypropylene to produce stretch blown
thermoplastic articles, polypropylene is a less expensive raw material than PET,
and injection and blow molding cycle time is much longer for polypropylene than
for PET. We agree with the Examiner (Ans. 13-15) that the drawbacks in
Appeal 2011-001559
Application 11/999,913

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processability of polypropylene are insufficient to establish that one of ordinary
skill would not have utilized polypropylene in Fukai’s method, given the
advantage of lower cost afforded by polypropylene as compared to PET. Cf. In re
Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) (explaining that just because a
particular modification would not have been made by a businessman for economic
reasons does not mean that one of ordinary skill would not have been motivated to
make the modification).
Appellants also argue one of ordinary skill in the art would not have looked
to Collette when considering materials for use in Fukai’s injection molding
process, because Collette is directed to sleeve molding processes. (Br. 5.)
We are not persuaded by this argument which we understand to be that
Collette is non-analogous art. Even if Collette is properly viewed as outside
Appellants’ field of endeavor, Appellants have not explained why the Examiner
erred in finding one of ordinary skill in the art would have nonetheless considered
this reference for its teaching of materials usable “under similar molding
circumstances” (Ans. 13). See In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)
(explaining a reference is considered analogous art if “even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because of the
matter with which it deals, logically would have commended itself to an inventor’s
attention in considering his problem”).
The Examiner finds the claim limitations pertaining to the end-cap are met
by an end-cap having the shape of a hemisphere. (Ans. 4, 8.) This finding is based
on Appellants’ Figure 2 wherein the Examiner finds the end-cap depth of the
“otherwise spherical endcap” is greater than the transition point radius by virtue of
the sprue which adds additional depth. (Id.) The Examiner maintains Fukai
illustrates a preform with a hemispherical end-cap (Ans. 4, 8 (citing Fukai Fig. 1)),
Appeal 2011-001559
Application 11/999,913

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further finding Unterlander explicitly teaches the known use of a hemispherical
end cap (Id. (citing Unterlander [0008])).
Appellants dispute the Examiner’s finding that Fukai Figure 1 illustrates an
end-cap which meets the depth and radius requirements recited in claim 7. (Br. 4.)
We agree with Appellants that Fukai’s Figure 1 alone is insufficient to
support a finding that Fukai discloses or suggests an end-cap having a depth
greater than the transition point radius. 6 However, Appellants’ argument is
insufficient to show error in the Examiner’s obviousness determination, since
Appellants have not addressed the Examiner’s optional reliance on Unterlander for
a teaching of this feature (see Unterlander [0008] (“The preform 5 typically
includes a gate vestige 9 on the end portion 8. The end portion 8 is also commonly
known as the gate area. The end portion 8 is commonly hemispherical in shape,
although it may be any shape.”)).
In sum, we have fully considered Appellants’ arguments in support of
patentability of the appealed claims, but find them unpersuasive of error in the
Examiner’s obviousness determination for the reasons explained above.
ORDER

6 See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956
(Fed. Cir. 2000) (“HHI's argument thus hinges on an inference drawn from certain
figures about the quantitative relationship between the respective widths of the
groove and fins. Under our precedent, however, it is well established that patent
drawings do not define the precise proportions of the elements and may not be
relied on to show particular sizes if the specification is completely silent on the
issue.”); In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (declining to find that,
based on a comparison of the relative dimensions of appellant's and patentee’s
drawing figures, patentee’s disclosure “clearly point[ed] to the use of a chime
length of roughly 1/2 to 1 inch for a whiskey barrel”); In re Wilson, 312 F.2d 449,
454 (CCPA 1963) (noting that specific dimensions could not be established based
on measurements of patent drawings).
Appeal 2011-001559
Application 11/999,913

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We AFFIRM the following rejections7:
1. claims 7, 8, 10, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable
over Fukai in view of Collette and Unterlander;
2. claims 7, 8, 10, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable
over Fukai in view of AAPA and Unterlander;
3. claim 11 under 35 U.S.C. § 103(a) as unpatentable over Fukai in view
of Collette and Unterlander, and optionally Takakusaki;
4. claim 11 under 35 U.S.C. § 103(a) as unpatentable over Fukai in view
of AAPA and Unterlander, and optionally Takakusaki;
5. claim 12 under 35 U.S.C. § 103(a) as unpatentable over Fukai in view
of Collette, Unterlander, and Mero; and
6. claim 12 under 35 U.S.C. § 103(a) as unpatentable over Fukai in view
of AAPA, Unterlander, and Mero.
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

bar

7 The rejections as set forth in the Answer have been modified to remove claim 11
from the first two grounds of rejection (as enumerated below), to add Unterlander
to the third through sixth grounds of rejection, and to remove the term “optionally”
which preceded “Unterlander” in the first two grounds of rejection.