Gateway Plastics, Inc.

Patent Trials and Appeals Board

Oct 25, 2021

2020005725 (P.T.A.B. Oct. 25, 2021)

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.
15/819,999 11/21/2017 Joel R. Frerichs 028757-0210 2969
26371 7590 10/25/2021
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
YAGER, JAMES C
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
10/25/2021 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEL R. FRERICHS, BRIAN W. ELFLEIN, and
JOSHUA J. EASTMAN
Appeal 2020-005725
Application 15/819,999
Technology Center 1700
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
LILAN REN, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7 and 21–33. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest of record in this application as Gateway
Plastics, Inc. Appeal Br. 2.
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Application 15/819,999

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CLAIMED SUBJECT MATTER
The claims are directed to a coinjection molded multi-layer container
useful for storing food and other substances. Spec. ¶ 1. Claim 1 is
illustrative of the claimed subject matter and is reproduced here (emphasis
added to highlight key limitations in dispute):
1. A coinjection molded multi-layer container comprising:
an inner layer comprising a first polymeric material and forming an
inside surface of the container;
an outer layer comprising the first polymeric material and forming an
outside surface of the container; and
a barrier layer located between the inner layer and the outer layer and
comprising a second polymeric material less permeable to gas than the first
polymeric material, wherein the barrier layer is biased toward the inside
surface or the outside surface such that the inner layer and the outer layer
have different thicknesses;
wherein the inner layer, the barrier layer, and the outer layer form a
multi-layer wall structure defining a closed base of the container and a side
wall of the container, the side wall of the container having a lower rim
coupling the side wall of the container to a perimeter of the base of the
container and an upper shoulder offset from the lower rim, a cross-section of
the side wall of the container having a substantially linear portion extending
from the lower rim to the upper shoulder;
an energy director ring protruding from the inside surface at a
location along the substantially linear portion of the side wall between the
upper shoulder and the lower rim of the container and extending
circumferentially along the inside surface, the energy director ring
configured to concentrate a welding force applied to the inside surface;
a filter comprising a base of the filter and a side wall of the filter, the
side wall of the filter welded to the inside surface at the location of the
energy director ring such that a gap exists between the base of the filter and
the base of the container, the gap allowing the base of the container to be
punctured when the container is in use without puncturing the filter; and
a circumferential weld formed along the inside surface at the location
of the energy director ring as a result of welding the filter to the inside
surface, the weld securing the filter to the inside surface.

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Independent claims 25 and 31 are also directed to a multi-layer
container similar to that of claim 1 (See Claims App. 42–45).
REFERENCES
The prior art relied upon by the Examiner are:
Name Reference Date
Coltman, Jr. US 4,426,014 Jan. 17,1984
Swenson US 2003/0113493 Al June 19, 2003
Horn US 2003/0181628 Al Sept. 25, 2003
Busch US 2012/0132558 Al May 31, 2012
Swenson US 8,435,434 Bl May 7, 2013
Oh US 2013/0340626 Al Dec. 26, 2013
Walters US 2014/0377414 Al Dec. 25, 2014
Shigeru JP2011051627 (A) Mar. 17, 2011
REJECTIONS
Claims 1–7 and 21–33 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Final Act. 3.
Claims 1–7 and 21–33 are rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 4.
Claims 1–6, 22, 23, 25–28, and 30–33 are rejected under 35 U.S.C.
§ 103 as being unpatentable over the combined prior art of Swenson,
Coltman, Walters, Shigeru, and Oh. Final Act. 5–9, 12–13, 16–20.
Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combined prior art of Swenson, Coltman, Walters, Shigeru, Oh, and
Swenson 434. Final Act. 9.
Claims 21 and 29 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined prior art of Swenson, Coltman, Walters,
Shigeru, Oh, and Busch. Final Act. 9, 15.
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Application 15/819,999

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Claim 24 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combined prior art of Swenson, Coltman, Walters, Shigeru, Oh,
andHorn. Final Act. 10.
OPINION
The § 112(a) Rejection for failing to comply with the written description
requirement
The written description “must clearly allow persons of ordinary skill
in the art to recognize that [the inventor] invented what is claimed.” Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc) (citation and quotations omitted, alteration in the original). The test is
whether the disclosure “conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Id.
The Examiner’s position is that there is no support for the limitation
“a cross-section of the side wall of the container having a substantially linear
portion extending from the lower rim to the upper shoulder” as recited in
claim 1 (similar limitations are recited in claims 25 and 31). Appellant
points out that Figure 10 plainly shows a container having such a cross-
section (Appeal Br. 12–13). The Examiner appears to agree with Appellant
that Figure 10 shows a cross-section as claimed, however, the Examiner
states that Figure 10 is not sufficient because it “only shows one example of
these limitations” (Ans. 21). However, as pointed out by the Appellant,
Figures 7–9 also show such a cross-section and one of ordinary skill would
have readily understood from the overall disclosure that they were in
possession of the claimed invention (Appeal Br. 13–14; Reply Br. 4–7).
While we agree with the Examiner that what constitutes a “substantially”
linear portion may be indefinite for reasons we discuss below, a
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preponderance of the evidence supports Appellant’s position that one of
ordinary skill in the art would have understood that Appellant was in
possession of the claimed subject matter.
Accordingly, we reverse the Examiner’s § 112 rejection for lack of
written description.

The § 112(a) Rejection for Indefiniteness
During prosecution, claims are definite if they “set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Examiner found the language of each independent claim (claims
1, 25, and 31) indefinite, since each claim requires that a cross-section of a
sidewall has a “substantially linear” portion, and there is no definition or
standard set out in the Specification by which to ascertain how much one
may deviate from linear, or what constitutes a portion (Final Act. 4).
Appellant contends that the objected to terms are definite in light of Figures
7–10, and points out that the Specification provides a definition of
“substantially” in paragraph 126. (Appeal Br. 15). We agree that one of
ordinary skill in the art would readily understand what a “portion”
encompasses, noting that “breadth [of a claim] is not to be equated with
indefiniteness.” In re Miller, 441 F.2d 689, 693 (CCPA 1971).
On the other hand, Appellant does not persuasively identify error in
the Examiner’s position that there is inadequate guidance set forth in the
Specification as to what constitutes a substantially linear portion. The
acceptability of words of degree as claim language depends on whether one
of ordinary skill in the art would understand what is claimed, in light of the
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specification. Seattle Box Co., Inc., v. Industrial Crating & Packing, Inc.,
731 F.2d 818 (Fed. Cir. 1984). Similarly, more recent cases recognize that
claims having terms of degree will fail for indefiniteness unless they
“provide objective boundaries for those of skill in the art” when read in light
of the specification. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
1370–71 (Fed. Cir. 2014) (finding a single example of the term “unobtrusive
manner” in the specification did not outline the claims to a skilled artisan
with reasonable certainty). As set out in Halliburton Energy Servs., Inc. v.
M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008):
The fact that Halliburton can articulate a definition supported
by the specification, however, does not end the inquiry. Even if
a claim term's definition can be reduced to words, the claim is
still indefinite if a person of ordinary skill in the art cannot
translate the definition into meaningfully precise claim scope.
Having reviewed the remaining two parts of Halliburton's
proposed construction, both individually and in combination, in
the context of the intrinsic record and the knowledge of a
person of ordinary skill in the art, we hold that the ambiguity as
to the scope of “fragile gel” cannot be resolved.

Similar to Halliburton, Appellant’s Specification definition does not
provide guidance as to what constitutes a substantially linear portion;
indeed, it heightens the lack of clarity and ambiguity by stating that the term
“should be interpreted as indicating that insubstantial or inconsequential
modifications or alterations of the subject matter described and claimed are
considered to be within” its scope.2 Spec. ¶ 126 (emphasis added).

2 Notably, in prosecution before the PTO “[i]t is the applicants’ burden to
precisely define the invention, not the PTO’s.” In re Morris, 127 F.3d 1048,
1056 (Fed. Cir. 1997). The purpose of this requirement is to provide the
public with adequate notice of the boundaries of protection involved. The
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There is no doubt that one of ordinary skill in the art would have
understood what a linear portion would have meant. However, what
modifications and alterations are permissible deviations from a linear
portion? We agree with the Examiner that the Specification Figures and
definition are not adequate to provide any meaningful standard or definite
definition for the claim term “substantially linear”.
Accordingly, we affirm the Examiner’s § 112 rejection of all the
claims on appeal for indefiniteness.

The § 103 Rejections
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Upon consideration of the evidence and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
conclude that the preponderance of the evidence supports Appellant’s
position that the Examiner has not met the burden in this case for
substantially the same reasons as set forth by Appellant in the Briefs.

time to do so is during prosecution where an applicant has the ability to
amend the claims to more precisely define the metes and bounds of the
claimed invention. See Ex parte Miyazaki, 89 USPQ2d 1207, 1210–12
(BPAI 2008).

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Accordingly, we reverse the Examiner’s § 103 rejections of all the
claims on appeal.
We add the following primarily for emphasis.
A preponderance of the evidence supports Appellant’s position that
the Examiner’s proposed modification of Swenson to incorporate Coltman’s
sealing protrusion in the recited location required by the claims is based on
an improper hindsight reconstruction for the reasons discussed by Appellant
in the Briefs (Appeal Br. 23−35; Reply Br. 12–16). As explained by
Appellant, the recited location requires that the ring be located on the
sidewall between the upper shoulder and the lower rim of the container and
Coltman’s sealing ring at best is located above a shoulder of its sidewall
(e.g., Reply Br. 12–16). The Examiner has not adequately explained how
one of ordinary skill would have combined Swenson and Coltman so as to
render obvious the claimed subject matter without the use of impermissible
hindsight.
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966) (warning against a “temptation to read into the prior art the teachings
of the invention in issue”)).
The Examiner has not adequately explained why the skilled artisan’s
knowledge or inferences and creativity would have supported the
obviousness determination based on the relied upon teachings of at least
Swenson and Coltman. The Examiner does not rely upon any other
reference to teach the energy director ring in the location recited in the
claims.
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Accordingly, we reverse the § 103 rejections of the claims.
CONCLUSION
The Examiner’s rejection is affirmed, since the rejection under
35 U.S.C. § 112(b) of all the claims on appeal is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 21–33 112 Written Description 1–7, 21–33
1–7, 21–33 112 Indefiniteness 1–7, 21–33
1–6, 22, 23,
25–28, 30–33
103 Swenson, Coltman,
Walters, Shigeru, Oh
1–6, 22, 23,
25–28, 30–33
7 103 Swenson, Coltman,
Walters, Shigeru, Oh,
Swenson 434
7
21, 29 103 Swenson, Coltman,
Walters, Shigeru, Oh,
Busch
21, 29
24 103 Swenson, Coltman,
Walters, Shigeru, Oh,
Horn
24
Overall
Outcome
1–7, 21–33

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED