Nomacorc LLC

Patent Trials and Appeals Board

Jun 1, 2021

2020003978 (P.T.A.B. Jun. 1, 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.
13/911,434 06/06/2013 Sandra Davidts 1217-017 2146
27820 7590 06/01/2021
WITHROW & TERRANOVA, P.L.L.C.
106 Pinedale Springs Way
Cary, NC 27511
EXAMINER
VAZQUEZ, ELAINE M
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
06/01/2021 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):
patents@wt-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDRA DAVIDTS, WEIBIN ZHA,
KATHERINE CAMPBELL GLASSGOW, and
MALCOLM JOSEPH THOMPASON
Appeal 2020-003978
Application 13/911,434
Technology Center 1700
Before JEFFREY B. ROBERTSON, N. WHITNEY WILSON, and
JANE E. INGLESE, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s March 5, 2019 decision to finally reject claims 1, 3, 7–20, 22,
23, and 25–28 (“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Vinventions USA, LLC (Appeal Br. 1).
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Application 13/911,434

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CLAIMED SUBJECT MATTER
The claims are directed to a closure for a product-retaining container,
in particular a closure for a wine bottle (Abstract, Spec. ¶ 4). The closure
comprises a core member comprising a thermoplastic polymer, and a
peripheral layer surrounding and intimately bonded to the core member
(Abstract). Details of the claimed invention are set forth in claim 1, which is
reproduced below from the Claims Appendix:
1. A closure for a product-retaining container constructed for
being inserted and securely retained in a portal forming neck of
said container, said closure comprising:
A. a core member comprising at least one
thermoplastic polymer and being devoid of a styrene block
copolymer; and
B. at least one peripheral layer at least partially
surrounding and intimately bonded to at least one surface of the
core member, said at least one peripheral layer comprising at
least one styrene block copolymer,
wherein the at least one peripheral layer further
comprises at least one of a further polymer and a further
copolymer, and the at least one of a further polymer and a
further copolymer differs from the at least one styrene block
copolymer; wherein the at least one of a further polymer and a
further copolymer comprises at least one thermoplastic
elastomer selected from the group consisting of thermoplastic
polyolefins, thermoplastic polyurethanes, thermoplastic
polyamides, thermoplastic copolyesters, and thermoplastic
vulcanisates;
wherein the core member has a density in a range of from
about 100 kg/m3 to 350 kg/m3 and the at least one peripheral
layer has a density in a range of from about 700 kg/m3 to about
1,500 kg/m3 and a thickness in a range of from 0.15 mm to less
than 0.50 mm;
wherein the at least one styrene block copolymer is
present in an amount in a range of from about 15 wt.% to about
88 wt.%; and the at least one of a further polymer and a further
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copolymer is present in an amount in a range of from about 12
wt.% to about 85 wt.%, based on a total weight of the at least
one styrene block copolymer and the at least one of a further
polymer and a further copolymer; and
wherein the at least one styrene block copolymer has a
block length ratio of polystyrene blocks to further polymer
blocks (polystyrene block length : further polymer block
length) in a range of from about 10:90 to about 50:50; and
wherein adhesion of the peripheral layer to the core
member determined according to the Skin Adhesion Test
method is in a range of from about 5.00 N to about 11.40 N.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Lauer et al. US 6,221,451 B1 April 24, 2001
Allman et al. US 6,355,320 B1 March 12, 2002
Davis et al. US 2010/0200606 A1 August 12, 2010
Kraton (Kraton® G SEBS/SEPS) available at
https://web.archive.org/web/20110522053620/http://www.kraton.com:80/
Products/Kraton_G_SEBS_SEPS

REJECTIONS
1. Claims 1, 3, 8–20, 22, 23, and 25–28 are rejected under
35 U.S.C. § 103(a) as unpatentable over Davis in view of Allman and
Kraton.
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Davis in view of Allman, and Kraton, and further in view of Lauer.

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OPINION
Appellant does not present separate arguments with respect to the
claims subject to this rejection. See Appeal Br. 4–11. We select claim 1 as
representative for disposition of this rejection. 37 C.F.R.
§ 41.37(c)(1)(iv)(2019). We focus our discussion on the rejection of claim 1
over the combination of Davis, Allman, and Kraton. The reasoning applied
to that rejection applies equally to the rejection of each of the remaining
claims.
The Examiner finds that Davis teaches each of the limitations of
claim 1, except that Davis does not teach (a) the relative amounts of the
styrene block copolymer and the further polymer/copolymer, and (b) the
block length ratio of the polystyrene blocks to the further polymer blocks
(Final Act. 3, 5). The Examiner relies on teachings from Allman and Kraton
as suggesting missing limitations (a) and (b) above (Final Act. 3–5). In
connection the final limitation of claim 1, the Examiner finds that “wherein
adhesion of the peripheral layer to the core member determined according to
the Skin Adhesion Test method is in a range of from about 5.00 N to about
11.40 N is a property of the structure or composition” which is “necessarily”
met by the combination of Davis, Allman, and Kraton (Final Act. 5–6).
With respect to the relative amounts of the styrene block copolymer
and the further polymer/copolymer in the peripheral layers, Appellant argues
that a person of skill in the art would not have used the ratios described in
Allman because Allman’s closure is a unitary body, and does not have the
claimed core member/peripheral layer structure (Appeal Br. 6–7). This
argument is not persuasive, essentially for the reasons set forth by the
Examiner in the Answer (Ans. 12–13). That is, the basic core
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member/peripheral layer structure is described by Davis, while Allman
describes a particular ratio of components for a material used in Davis’s
peripheral layer, and describes why that ratio provides properties which a
person of skill in the art would have deemed useful in the peripheral layer.
In particular, Davis teaches that the composition used for its peripheral layer
is selected to withstand the compression forces imposed by the corking
machines (Davis ¶ 110), while Allman teaches that its composition has those
characteristics (Allman 5:60–6:10). Accordingly, we determine that
Appellant has not shown error in the Examiner’s conclusion that it would
have been obvious to use the ratio of styrene block copolymer to further
polymer/copolymer disclosed by Allman in Davis’s peripheral layer.
Appellant further argues the Examiner’s reliance on Kraton as
teaching the block length ratio of the polystyrene blocks to the further
polymer blocks is misplaced because a person of skill in the art would have
recognized that Kraton’s claim that its material is “the strongest, the most
highly dilutive, and the most compatible with polyolefins and mineral oil” is
exaggerated for promotional purposes and would not have expected it to
have those characteristics (Appeal Br. 7–8). This is not persuasive because,
at the very least, Kraton describes its products as having those properties,
which would have led a person of skill in the art to use those properties in
order to try to reap the benefits of the properties.
The Examiner’s determination that the adhesion limitation would
“necessarily [be] present” (Final Act. 6) relies on the doctrine of inherency.
In the obviousness context, inherency renders a claimed limitation obvious
only if the limitation is “necessarily present,” or is “the natural result of the
combination of elements explicitly disclosed by the prior art.” Persion
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Pharm. LLC v. Alvogen Malta Operations Ltd., 945 F.3d 1184, 1191 (Fed.
Cir. 2019) (quoting PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186,
1195–96 (Fed. Cir. 2014)).
In this instance, the claim recites a specific adhesion value between
the core member and the peripheral layer. According to Appellant (Appeal
Br. 8–10; Reply Br. 3–4), this value is not solely dependent on the
composition of the core member and the peripheral layer, but can also
depend on the presence of any other materials, or the methods by which the
core member and peripheral layers are joined together. 2 However, in this
instance both Davis and the present Specification indicate that the preferred
method of creating the closure is via coextrusion of the components, which
is said by both to create “intimate bonded interengagement” between the
core member and the peripheral layer (Spec. ¶¶ 87, 89; Davis ¶ 99).
Although both Davis and the present Specification suggest that it is possible
to use tie layers and bonding agents (Davis, ¶ 106; Spec. ¶ 90), neither
indicates that such components are needed or necessary, and the presently
appealed claims do not recite (i.e. require) their presence. Accordingly,
Davis teaches and suggests a method of producing the closure which is
identical, or substantially identical, to the claimed method, and which would,
therefore, be expected to produce the same level of adhesion between the
core and the peripheral layer. The burden to show a difference, therefore,
shifts to Appellant. See, In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986);

2 Appellant proffers the possibility of a tacky adhesive between the core
member and the peripheral layer, as opposed to the use of an adhesive-
reducing oil being present as example of why the compositions of the core
member and the peripheral layer alone do not establish the adhesion value
(Appeal Br. 8).
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In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed
and prior art products are identical or substantially identical, or are produced
by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. . . . Whether the rejection
is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’
under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same
. . . [footnote omitted].”). Appellant has not met this burden.
Accordingly, we determine that the Appellant has not demonstrated
reversible error in the Examiner’s determination that the claimed adhesion
value would have been obvious over the cited art.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 8–20,
22, 23, 25–
28
103(a) Davis, Allman,
Kraton
1, 3, 8–20,
22, 23, 25–
28

7 103(a) Davis, Allman,
Kraton, Lauer
7
Overall
Outcome
1, 3, 7–20,
22, 23, 25–
28

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).
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AFFIRMED