Gregory Stokes et al.

Patent Trials and Appeals Board

Apr 28, 2021

2021002862 (P.T.A.B. Apr. 28, 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.
11/863,823 09/28/2007 Gregory John Charles Stokes P-1575 2385
1695 7590 04/28/2021
SCOTT R. COX
LYNCH, COX, GILMAN & GOODMAN, P.S.C.
500 WEST JEFFERSON STREET
SUITE 2100
LOUISVILLE, KY 40202
EXAMINER
STULII, VERA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
04/28/2021 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):
HHART@LCGANDM.COM
JLINDNER@LYNCHCOX.COM
SCOX@LCGANDM.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte GREGORY JOHN CHARLES STOKES
and STEVEN JOHN ANTHONY BARICS
Appeal 2021-002862
Application 11/863,823
Technology Center 1700
Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
GEORGE C. BEST, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 17, 18, 22–25, 28–31, 34, 35, and 37–
44. 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. The
Appellant identifies the real party in interest as Intelligent Packaging Pty Ltd
(Appeal Br. 1).
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CLAIMED SUBJECT MATTER
The claims are directed to a process for packaging wine in aluminum
cans. Claim 22, reproduced below, is illustrative of the claimed subject
matter:
22. A process for packaging non-pasteurized wine in a two
piece aluminium can comprising
preparing wine characterized in that the wine has less
than 35 ppm of free SO2, less than 300 ppm of chlorides, and
less than 800 ppm of sulfates;
choosing the two piece aluminium can with a coating on
an inside surface of the can and filling it with the wine, and
sealing the can, wherein the pressure within the can is at
least 25 psi, and
wherein the wine has not been pasteurized.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Khanna US 3,960,979 June 1, 1976
Mallen US 6,808,752 B2 Oct. 26, 2004
Ferrarini Grape & Wine Research 1992
Kojima Corrosion Engineering,
Vol. 45
1996
Ribereau-Gayon Vol. 1 Handbook of Enology,
Vol. 1
1999
Ribereau-Gayon Vol. 2 Handbook of Enology,
Vol. 2
2001
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REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
41 112, first paragraph Written Description
17, 18, 30, 31, 34,
35, 42, 44
103(a) Ferrarini, Kojima, Khanna,
Ribereau-Gayon Vol. 2
22–24, 43 103(a) Ferrarini, Kojima, Ribereau-
Gayon Vol. 2
25, 28, 29 103(a) Ferrarini, Kojima, Ribereau-
Gayon Vol. 1
37, 40 103(a) Ferrarini, Kojima, Khanna,
Ribereau-Gayon Vol. 2,
Ribereau-Gayon Vol. 1
38 103(a) Ferrarini, Kojima, Ribereau-
Gayon Vol. 2, Ribereau-
Gayon Vol. 1
39 103(a) Ferrarini, Kojima, Ribereau-
Gayon Vol. 1, Ribereau-
Gayon Vol. 2
41 103(a) Ferrarini, Kojima, Ribereau-
Gayon Vol. 2, Mallen,
Khanna
OPINION
Rejections under 35 U.S.C. § 103(a)
The Appellant argues the claims in the following groups: 1) claims 17,
18, 22–24, 37, 38, and 41–43; 2) claims 25, 28, 29, 35, and 39; and
3) claims 30, 31, 34, 35, 37, 40, and 44 (Appeal Br. 8–33). We therefore
limit our discussion to one claim in each group, i.e., claims 22, 25, and 30.
The other claims in each group stand or fall with the claim we address.
See 37 C.F.R. § 41.37(c)(1)(iv) (2013).
Claim 22
Claim 22 requires that “the wine has not been pasteurized.”
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Ferrarini discloses a “[p]roposed technological line for packaging
wine in aluminum cans” wherein the wine is pasteurized in the can and
“[t]he packages must be pasteurised at temperatures and during times that
vary, depending on the product type” (pp. 6, 9–10; Fig. 7).
Ribereau-Gayon Vol. 2 discloses that “wine may be pasteurized in the
bottle or just before bottling, but other stabilization techniques, especially
sulfuring and sterile filtration prior to bottling, are easier to use” (p. 338),
and “[m]icrobial spoilage can now be avoided by other means, based mainly
on careful fermentation management, the use of sulfur dioxide and the
reduction of contaminant populations by various clarification processes”
(id.).
The Appellant argues that Ferrarini requires pasteurization, so one of
ordinary skill in the art would not have combined Ferrarini and Ribereau-
Gayon Vol. 2 (Appeal Br. 19–23).
Ribereau-Gayon Vol. 2 discloses that wine can be stabilized by
pasteurization or by other means such as careful fermentation management,
sulfur dioxide, clarification, sterile filtration, or infrared radiation (p. 338).
Ribereau-Gayon Vol. 2, therefore, would have suggested those other means
to one of ordinary skill in the art as an alternative to pasteurization.
The Appellant argues, based upon Ribereau-Gayon Vol. 1’s disclosure
that “pasteurization is the only treatment that completely eliminates germs
and stabilizes wine” (p. 473), that Ribereau-Gayon Vol. 1 recommends
pasteurization to eliminate germs and stabilize wine (Appeal Br. 14).
Although Ribereau-Gayon Vol. 1 teaches that pasteurization is the
best way to stabilize wine, the Ribereau-Gayon references also disclosed
suitable alternatives to pasteurization (Vol. 1, p. 473; Vol. 2, p. 338).
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Thus, the applied references would have suggested, to one of ordinary
skill in the art, non-pasteurized wine in a can.
Claim 25
Claim 25 requires that “the composition of head space within the can
after sealing is from 80-97% nitrogen v/v and 2-20% carbon dioxide v/v.”
Ribereau-Gayon Vol. 1 discloses that nitrogen is the most commonly
used head space gas for wine storage in tanks, and that carbon dioxide
sometimes is mixed with the nitrogen (p. 216). Ribereau-Gayon Vol. 1
exemplifies, as a head space gas to avoid degassing of certain wines that
must maintain a moderate CO2 concentration, 85% N2 and 15% CO2 (id.).
The Appellant argues that “[n]o person skilled in the art would equate
a headspace requirements of bulk storage of wine for short periods of time
with the requirement for wine stored in aluminium cans for sale to the
public” (Appeal Br. 26).
A reference encompasses not only what it expressly discloses, but also
what it would have fairly suggested to one of ordinary skill in the art. See In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Ribereau-Gayon Vol. 1
discloses that in wine, “nitrogen accumulates without reacting” and carbon
dioxide is very soluble and has an adjustable concentration when used with
an inert gas (p. 216). Ribereau-Gayon Vol. 1 does not indicate that carbon
dioxide reacts with wine. Ribereau-Gayon Vol. 1, therefore, would have
suggested, to one of ordinary skill in the art, a mixture of nitrogen and a
limited amount of carbon dioxide as a wine head space gas for wine storage
in a tank or longer storage in a can. Ribereau-Gayon Vol. 1’s disclosure that
a mixture of 85% nitrogen and 15% carbon when is appropriate when
maintenance of a moderate CO2 concentration is needed and that the CO2
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concentration is adjustable (id.) would have suggested, to one of ordinary
skill in the art when maintenance of a lower CO2 concentration is needed,
use in the head space of a lower CO2 concentration such as the Appellant’s
claim 25’s concentrations as low as 2%.
Claim 30
Claim 30 requires that “the wine has a shelf life of 6 months based on
a limitation of an increase in aluminium present in the wine after 6 months
of storage of at most 44%.”
Ferrarini packages wine in coated aluminum cans having
2 atmospheres of overpressure (pp. 1, 6, 8). The wine contains 4 mg/L free
sulfur dioxide, and no presence of sulfates or chlorides is indicated (Tables
1, 2). The coating compositions are not reported.
Kojima measures aluminum corrosion by commercial white wine
containing 18 mass ppm free sulfur dioxide, 24.6 mass ppm chlorides, and
700 mass ppm sulfates (p. 370, Table 1).
Khanna coats the interior of food and beverage aluminum cans with
150–800 milligrams per can of a cured high solids coating made from a
composition comprising epoxy resin crosslinked with melamine-
formaldehyde resin (col. 1, ll. 33–45, 55–59; col. 3, ll. 4–7, 37–40; col. 5,
ll. 18–22; col. 6, ll. 12–18, 21–26). The coating film does not crack or lose
adhesion when a coated panel is bent 180º (col. 7, ll. 9–12, 51–53; col. 8,
ll. 2–4, 59–60).
The Appellant argues that in a test of Ferrarini’s wine-in-can, the
aluminum content increased to 45–153% after only 35 days and a precipitate
formed in the wine (Appeal Br. 30).
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That argument is not relevant to the rejection, which is based upon
Ferrarini’s can coated with Khanna’s coating, not Ferrarini’s coating (Non-
Final 6).
The Appellant argues that excessive assumptions and speculative
hindsight is required to coat Ferrarini’s can with Mallen’s coating and fill
the coated can with non-pasteurized Kojima wine (Appeal Br. 31–32).
The rejection is based upon Khanna’s, not Mallen’s, coating having a
composition and thickness meeting the Appellant’s claim 30’s requirements.
Regardless, Mallen coats the interior of an aluminum can for containing
acidic products such as soft drinks, tomato juice, or beer, with about 5–
9 mg/in2 of a cured coating made from a composition comprising epoxy
resin crosslinked with melamine-formaldehyde resin (col. 1, ll. 12–18, 54–
60; col. 8, ll. 4–8, 47, 57–59; col. 11, ll. 59–62), which apparently also meets
the Appellant’s claim 30’s requirements.
Ferrarini’s use of low corrosion white wine that appears to be
commercial (p. 1) would have suggested, to one of ordinary skill in the art,
use of low corrosion white wines generally, including that of Kojima, which
has amounts of free SO2, chlorides, and sulfates falling within the
Appellant’s claim 30. Ferrarini’s can has about 2 atmospheres overpressure
(p. 6), which meets the Appellant’s claim 30’s requirement of a pressure of
at least 25 psi. Khanna (col. 1, ll. 33–45, 55–59; col. 3, ll. 4–7, 37–40; col. 5,
ll. 18–22; col. 6, ll. 12–18, 21–26), and Mallen (col. 1, ll. 12–18, 54–60;
col. 8, ll. 4–8, 47, 57–59; col. 11, ll. 59–62) would have suggested, to one of
ordinary skill in the art, coating the interior of Ferrarini’s can with a coating
having a composition and thickness falling within the Appellant’s claim 30,
to protect the aluminum from corrosive attack by the acidic wine that would
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cause increased aluminum content of the wine. Because the can, interior
coating, wine, and overpressure suggested to one of ordinary skill in the art
by the applied references fall within the Appellant’s claim 30, it appears that
the wine shelf life and aluminum content after 6 months of storage also
would fall within that claim. The claim 30 process, therefore, would have
been prima facie obvious to one of ordinary skill in the art in view of the
applied references.
The Appellant relies for patentability upon evidence of secondary
considerations (Appeal Br. 33–68).
We have begun anew and determined that for the following reasons,
the totality of the evidence supports a conclusion of obviousness of the
Appellant’s claimed process. See In re Rinehart, 531 F.2d 1048, 1052
(CCPA 1976).
The Appellant argues that numerous agreements to license a European
patent having a claim similar to the Appellant’s claim 22 show evidence of
commercial success (Appeal Br. 39–43) because “it is unreasonable to
believe that so many entities would pay significant amounts of money to
Applicants if they did not recognize the significant value of the inventive
concepts, as claimed in the reference patents” (Appeal Br. 43).
The Appellant does not provide evidence that the licensees paid
significant amounts of money (or any other amount of money). The
Appellant’s inventiveness is in the use of a wine having low amounts of
corrosive free sulfur dioxide, chlorides and sulfates (such as that of Kojima)
in combination with a crosslinked epoxide coating having a thickness (such
as that of Khanna and Mallen) greater than that used for less corrosive
beverages such as beer and soft drinks, head space with 80–97 % nitrogen
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and 2–20 % carbon dioxide (such as that of Ribereau-Gayon Vol. 1), and an
overpressure of at least 25 psi (such as that of Ferrarini) (Spec. 3:3–4, 13–
14; 6:31 – 7:2; 7:7–11, 16–17). The licensees may have expected licensing
the patent to be less expensive than trying to invalidate it, and the Appellant
provides no evidence to the contrary.
The Appellant argues that others copied the Appellant’s can interior
coating (Appeal Br. 44–46).
The Appellant uses a known aluminum can interior crosslinked epoxy
resin coating having a thickness typically greater than that of similar beer or
soft drink can interior coatings (Spec. 7:7–10), that thickness (at least 175
mg/375 ml can) being within the ranges disclosed by Khanna (150-800
mg/can; col. 6, ll. 25–26) and apparently by Mallen (about 5–9 mg/in2;
col. 8, ll. 57–59). The Appellant does not establish that others copied the
Appellant’s wine can interior coating composition and thickness instead of
using known coatings having a thickness within the known range and
selected to be sufficient to protect the can against corrosion by relatively
corrosive wine and minimize increase in the wine’s aluminum content.
The Appellant argues that the claimed process satisfies a longfelt need
that others failed to solve for a wine-in-can having a shelf life of at least
6 months with low aluminum content (Appeal Br. 46–55, 61–62). The
Appellant argues that “[t]he Affidavit from Applicant Barics proves that
Applicants’ wine-in-cans produced by the claimed process satisfied this
‘long felt need’ that had been unresolved in any conventional cans” (App.
Br. 49).2

2 Those arguments apply only to claims 30, 31, 34, 35, 40, and 44.
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The Barics affidavit (Exhibit 3) shows that the Appellant’s relatively
thick coating (175 mg/375 ml can) provides better corrosion resistance than
the thinner coating (90–120 mg/375 ml can) on industry standard beverage
cans, but does not show a long-felt, unsolved need for a wine-in-can having
a shelf life of at least 6 months with low aluminum content.
The Appellant argues that the Buck Affidavit (Exhibit 5) shows that
prior efforts to make wine-in-cans failed mainly due to lack of longevity and
stability of high quality regarding the wine’s nose, color, and taste (Appeal
Br. 50–51).
Buck states that to her knowledge, the latest wine-in-cans before the
Appellant’s invention had the standard beverage can coating thickness of
90–140 mg/350 ml can and no one skilled in the art would have used a
thicker coating, but Buck provides no evidence of failed attempts by others
to use a thicker coating (¶¶ 5, 9, 14). Buck asserts that one of ordinary skill
in the art would not have used Khanna’s coating because its high solids
content would necessitate equipment changes, its organic solvent and low
molecular weight resins would be environmentally unfriendly, it would
produce an unacceptably high film weight, its characteristic of flexibility is
irrelevant to impact resistance, and there was no recognition that it could be
used for wine-in-cans (¶¶ 9–13), but Buck provides no evidence of any
entity that tried and failed to make a wine-in-can having a thick coating such
as that of Khanna or Mallen.
The Appellant argues that May’s Affidavit (Exhibit 4) states that to
his knowledge, due primarily to short shelf life, there was no successful
commercial wine-in-can before the Appellant’s invention, Westendorf’s
Affidavit (Exhibit 6) shows significant wine aluminum content in Ferrarini’s
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can after 50 days, and numerous press releases and magazine articles
recognize the Appellant’s process (Appeal Br. 47, 48, 51–54).
Those affidavits, press releases, and magazine articles provide no
evidence of anyone trying and failing to make a wine-in-can having a
coating thickness of at least 175 mg/350 ml can.
The Appellant provides evidence of acclaim, awards, and recognition
by others (Appeal Br. 55–58), but does not show that they are due to the
merits of the claimed process, particularly the use of low corrosion wine and
a relatively thick interior coating of a conventional crosslinked epoxy resin,
rather than other factors such as marketing and public relations strategy, can
appearance, customer service, prior business relationships with customers, or
business or personal relationships with professional groups or the media.
The Appellant argues, based on the Buck Affidavit (Exhibit 5), that
the Appellant has dominance in certain markets although the Appellant’s
advertising and marketing budget is lower than the total advertising and
marketing budget of larger competitors (Appeal Br. 58–61). Buck states that
the Appellant’s wine-in-can has commercial success due to “particularly the
composition of the wine that is chosen and the composition of the coating
for the can in which the wine is placed” (Exhibit 5, ¶ 11).
The Appellant indicates that the wine is a low-corrosion wine (Spec.
6:33 – 7:2) like that of Kojima (p. 370, Table 1), and the can is coated with a
crosslinked epoxy resin similar to that used for soft drink and beer cans, only
thicker (Spec. 7:7–11) like that of Khanna (col. 1, ll. 33–45, 55–59; col. 3,
ll. 4–7, 37–40; col. 5, ll. 18–22; col. 6, ll. 12–18, 21–26) or Mallen (col. 1,
ll. 12–18, 54–60; col. 8, ll. 4–8, 47, 57–59; col. 11, ll. 59–62). The Appellant
does not establish commercial success due to those factors rather than other
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factors such as low price, marketing strategy, salesmanship, can appearance,
customer service, prior business relationships with customers, or
government relationships. See In re Huang, 100 F.3d 135, 140 (Fed. Cir.
1996); Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1151 (Fed. Cir. 1983).
Thus, the totality of the evidence, including the evidence of prima
facie obviousness and the evidence of secondary considerations, weighs in
favor of a conclusion of obviousness of the Appellant’s claimed process.
Rejection under 35 U.S.C. § 112, first paragraph
The Appellant does not challenge the rejection under the
35 U.S.C. § 112, first paragraph, written description requirement (Appeal
Br. 8). Accordingly, we summarily affirm that rejection.
CONCLUSION
The Examiner’s decision to reject claims 17, 18, 22–25, 28–31, 34,
35, and 37–44 is AFFIRMED.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
41 112, first
paragraph
Written Description 41
17, 18,
30, 31,
34, 35,
42, 44
103(a) Ferrarini, Kojima, Khanna,
Ribereau-Gayon, Vol. 2
17, 18,
30, 31,
34, 35,
42, 44

22–24, 43 103(a) Ferrarini, Kojima, Ribereau-
Gayon, Vol. 2
22–24, 43
25, 28, 29 103(a) Ferrarini, Kojima, Ribereau-
Gayon, Vol. 1
25, 28, 29
37, 40 103(a) Ferrarini, Kojima, Khanna,
Ribereau-Gayon, Vol. 2,
Ribereau-Gayon, Vol. 1
37, 40
38 103(a) Ferrarini, Kojima, Ribereau-
Gayon, Vol. 2, Ribereau-
Gayon, Vol. 1
38
39 103(a) Ferrarini, Kojima, Ribereau-
Gayon, Vol. 1, Ribereau-
Gayon, Vol. 2
39
41 103(a) Ferrarini, Kojima, Ribereau-
Gayon, Vol. 2, Mallen,
Khanna
41
Overall
Outcome
17, 18,
22–25,
28–31,
34, 35,
37–44

TIME PERIOD FOR RESPONSE
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