Ex Parte 6,095,359 et al

Patent Trial and Appeal Board

Dec 15, 2015

90013044 (P.T.A.B. Dec. 15, 2015)

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.
90/013,044 10/25/2013 6,095,359 086567-0381 1003
22922 7590 12/15/2015
REINHART BOERNER VAN DEUREN S.C.
ATTN: TRAVIS MCDONNELL, PARALEGAL
1000 NORTH WATER STREET
SUITE 2100
MILWAUKEE, WI 53202
EXAMINER
LEWIS, AARON J
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/15/2015 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SILGAN PLASTICS LLC
1

Appellant, Patent Owner
____________________

Appeal 2015-005564
Reexamination Control 90/013,044
Patent No. 6,095,359
2

Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1
Silgan Plastics LLC is the real party in interest (Appeal Brief (hereinafter
"App. Br.") 2).
2
Issued August 1, 2000 to Richmond (hereinafter "the ’359 patent").
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Claims 1, 2, 4 and 5 are the subjects of the present appeal, claims 3
and 6 having been canceled. The Patent Owner appeals under 35 U.S.C.
§§ 134(b) and 306 from a Final Rejection of these claims. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306. In addition to the Appeal
Brief, the Patent Owner also relies on a Reply Brief (hereinafter "Reply
Br.") and two declarations of Mr. Dennis Szczesniak.
The invention is directed to a molded plastic container closure having
a fully embedded barrier (Title, Abs.). Representative independent claim 1
and dependent claim 5, read as follows with underlining to show
amendments made during the reexamination prosecution (App. Br., Claims
App.):
1. (Amended) An injection molded container closure for
engaging a neck of a container defining a container opening and
having closure engaging members on an outer surface thereof,
said closure comprising:
an injection molded cap comprising an end wall having a
gate at the center of the end wall and an integral skirt extending
axially from a periphery of said end wall and having container
engaging members on an inner surface for engaging said
closure engaging members on said outer surface of said
container neck with said end wall closing off said container
opening; and
an injection molded ethylene vinyl alcohol copolymer
(EVOH) barrier member extending at least across and
substantially fully embedded within said end wall.

5. The closure of claim 4 wherein said barrier member
further extends circumferentially within and at least partially
axially along, and is substantially fully embedded in said skirt.

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REJECTIONS
The Examiner rejects the appealed claims under 35 U.S.C. § 103(a) as
follows:
1. Claims 1, 2 and 4 as unpatentable over Gellert
3
in view of
Kudert
4
and McGrevy
5
(Ans. 2–5).
2. Claim 5 as unpatentable over Gellert in view of Kudert,
McGrevy and Yamada
6
(Ans. 5–6).
We AFFIRM.

ANALYSIS
Rejection 1
Claims 1, 2 and 4 stand rejected as unpatentable over Gellert, in view
of Kudert and McGrevy (Ans. 2–5). The Examiner finds that Gellert
discloses most of the limitations of claim 1 except for "a gate at the center of
the end wall of the injection molded cap and an injection molded ethylene
vinyl alcohol copolymer (EVOH) as the material of the barrier member."
(Ans. 3). The Examiner finds that McGrevy discloses a "scar" that
corresponds to the recited "gate," and that the recited location of the gate "in
the center of the end wall" does not patentably distinguish the claimed
invention from the prior art (Ans. 3–4).
As to the use of EVOH, the Examiner relies on Kudert's disclosure of
a method for injection molding multi-layer containers having an oxygen

3
U.S. Patent No. 5,094,603 issued March 10, 1992.
4
U.S. Patent No. 4,892,699 issued January 9, 1990.
5
U.S. Patent No. 5,474,439 issued December 12, 1995.
6
U.S. Patent No. 4,904,512 issued February 27, 1990.
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barrier layer made of EVOH (Ans. 4; Kudert, col. 30, ll. 11–30). The
Examiner also relies on Kudert's teaching that:
[w]hen oxygen barrier property is desired and the packaged
product has high oxygen sensitivity, EVOH is the preferred
material for layer C. High oxygen barrier property may be
attained with a very thin layer of EVOH, on the order of about
0.001 inch thickness, which, in view of the relatively high cost
of EVOH, is quite important from the economic standpoint of
cost-effectiveness. The present invention provides for
continuous, high-speed manufacture of multi-layer containers
having such a thin layer of EVOH which is substantially
continuous throughout the wall of the container. Where oxygen
sensitivity of the packaged product exists, but is relatively low,
other oxygen-barrier materials such as nylon, plasticized
polyvinyl alcohol and polyvinylchloride may be used.
(Kudert, col. 31, ll. 12–27; see also Ans. 4).
Thus, the Examiner concludes that:
[i]t would have been obvious to substitute EVOH for nylon as
the barrier material in the injection molded multi-layered
container [of] Gellert because it would have provided improved
oxygen and moisture impermeability characteristics over nylon
as taught by Kudert et al.
(Ans. 4; see also Ans. 8).
We agree with the Examiner's findings and conclusion, and address
the Patent Owner's arguments infra.
While conceding that Kudert "does teach certain benefits of EVOH as
a barrier material," the Patent Owner argues that because Kudert relates to
an injection molded food container instead of a cap, its teaching regarding
use of EVOH provides no teaching that would have "[led] one of skill in the
art to specifically select EVOH, from the universe of potential barrier
materials, as a replacement for the nylon barrier material in an injection
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molded cap as is explicitly taught by Gellert." (App. Br. 6, citing 2
nd
Decl.
Szczesniak ¶8). The Patent Owner also argues that neither Gellert nor
Kudert "provide[s] a teaching that, in a closure barrier application, nylon is
deficient or that the superior oxygen barrier properties of EVOH discussed
in Kudert et al. are needed to improve the closure of Gellert." (App. Br. 6;
see also Reply Br. 3–4).
However, it is common knowledge that containers often include caps
for sealing the container, and we agree with the Examiner that:
since Kudert [] also teach[es] EVOH as a preferred barrier
material when an oxygen barrier property is desired and when
the packaged product has high oxygen sensitivity (co1.[]31,
lines 12-15), . . . one of ordinary skill would also have
recognized the suitability of EVOH as an oxygen barrier
material in general and therefore, would have been motivated to
substitute EVOH for nylon as a barrier material in the cap of
Gellert because of its art related suitability for an intended
purpose of blocking oxygen.
(Ans. 6–7; see also Ans. 12).
While Gellert does not discuss any deficiency of nylon as the barrier
layer in its cap, this argument is unpersuasive as to obviousness. Kudert
clearly establishes that it was already known to use EVOH instead of nylon
in injection molding in those instances where better oxygen barrier
properties were desired or required due to high oxygen sensitivity of the
contents of the container. The rationale articulated by the Examiner in
combining the teachings of Kudert to the cap of Gellert is rational and is
based on the explicit teachings of Kudert, which is that EVOH is a superior
oxygen barrier than nylon and is desirable, despite its cost, when the oxygen
sensitivity of the contents is high (Ans. 12). KSR Int’l v. Teleflex, Inc., 550
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U.S. 398, 418 (2007); see also id. at 416 ("when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.").
The Patent Owner further argues that "[t]he replacement of nylon with
EVOH as a barrier material in the molding system/closure of Gellert is
typically not a simple replacement of interchangeable materials," but
instead,
a number of mold components and molding parameters would
need to be changed or adjusted to form the closure of Gellert
with an EVOH barrier layer in place of its nylon barrier layer.
See Second Szczesniak Declaration, ¶ 10. For example, the
geometry of the mold screws, the geometry of the nozzle, the
geometry of the flow channels and the geometry of the gates
would likely undergo significant design changes and require
testing in order to operate properly to form the Gellert closure
with an EVOH barrier rather than a nylon barrier. See Second
Szczesniak Declaration, ¶ 10. In addition, EVOH tends to be a
more temperature sensitive material than nylon, such that
various processing parameters, such as processing temperature
and the timing of material flow within the mold system, would
typically undergo significant adjustment and require testing to
form the Gellert closure with an EVOH barrier rather than a
nylon barrier. See Second Szczesniak Declaration, ¶ 10.
(App. Br. 7; see also Reply Br. 5).
However, we note that Mr. Szczesniak does not declare, nor do we
find persuasive evidence indicating, that even if these changes and
adjustments would have been needed, such adjustments were not routine and
thus would have been beyond the ordinary skill of those in the art. The
Patent Owner relies on these changes and adjustments to argue that "a
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person of ordinary skill in the art would not [have] replace[d] the nylon
barrier material of Gellert with an EVOH barrier material without a
significant reason to do so, particularly when the expected design changes,
testing and related expenses are considered" (App. Br. 8, citing 2
nd
Decl.
Szczesniak ¶ 11). However, as already discussed, providing an improved
barrier against oxygen "when the packaged product has high oxygen
sensitivity" as disclosed in Kudert is a "significant reason." (See Kudert, col.
31, ll. 10–27; col. 30, ll. 11–30). As the Examiner notes, the Patent Owner
"has provided no technological reason why one [of] ordinary skill would not
have been motivated to substitute EVOH for nylon in Gellert for its known
increased oxygen impermeability properties as taught by Kudert et al."
(Ans. 12). See Orthopedic Equipment Company, Inc. et al. v. United States,
702 F.2d 1005, 1013 (Fed. Cir. 1983) ("the fact that the two disclosed
apparatus would not be combined by businessmen for economic reasons is
not the same as saying that it could not be done because skilled persons in
the art felt that there was some technological incompatibility that prevented
their combination. Only the latter fact is telling on the issue of
nonobviousness.").
Moreover, Kudert recognizes and teaches the economic cost/benefit
considerations involved in using other materials, such as nylon, which is
suggested when "oxygen sensitivity of the packaged product exists, but is
relatively low" (Kudert, col. 31, ll. 12–27), thereby establishing that the
selection of EVOH as the barrier material is already known, despite its cost.
Finally, the Patent Owner argues that:
[t]he Patent Office has had ample opportunity to develop
evidence to support the Examiner's conclusions. For example,
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the Patent Office could have identified documentary evidence
of whether or not one of ordinary skill in the art would have
recognized the benefit of an EVOH barrier layer (e.g., Kudert et
al.) in an injection molded closure (e.g., Gellert et al.).
(Reply Br. 2).
However, for the reasons discussed supra, the applied references are
sufficient and persuasive evidence as to the obviousness of the claims. The
Examiner has articulated reasoning with rational underpinnings sufficient to
support the conclusion of obviousness. KSR, 550 U.S. at 418.

Rejection 2
Claim 5 stands rejected as unpatentable over Gellert, in view of
Kudert, McGrevy and Yamada (Ans. 5–6). The Examiner finds that
Yamada discloses a
barrier member (36) [that] further extends circumferentially
within and at least partially axially along, and is substantially
fully embedded (col.[]4, lines 48–60) in said skirt (10). In view
of the teaching of the protective advantages of providing a
barrier layer throughout the container walls by Kudert et al., it
would have been obvious to further extend the barrier member
of Gellert circumferentially and axially along the skirt, while
remaining fully embedded in said skirt, because it would have
constituted use of a known technique (extension of a barrier
member) to improve a similar device (container cap) in the
same way.
(Ans. 5–6; see also Ans. 14–15).
The Patent Owner argues that Yamada teaches away from the
suggested combination because "Yamada et al. teaches a compression
molded cap and related system expressly to address deficiencies of injection
molding systems, such as the one taught by Gellert" (App. Br. 12), which are
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taught as having been "found to have difficulty in producting [sic,
producing] these articles at high speeds and low costs enough to achieve
industrial and commercial success." (App. Br. 12, quoting Yamada, col. 1,
ll. 19–25).
However, as set forth above and as the Examiner responds, Yamada is
being relied upon "for its teaching of providing extended coverage against
oxygen permeability by the barrier member within the skirt (10) of the
closure member." (Ans. 16, citing Yamada, col. 4, ll. 48-60). The Patent
Owner does not persuasively establish that provision of a barrier layer along
the skirt of an injection molded cap would not have been technically viable,
or that it would have been beyond the skill of those in the art.
Furthermore, whereas the Patent Owner's teaching away argument is
premised on the fact that Yamada is directed to compression molding that is
said to address deficiencies of injection molding, this needs to be considered
together with the teachings of Kudert's disclosure that it "provides for
continuous high-speed manufacture of multi-layer containers having such a
thin layer of EVOH." (Kudert, col. 31, ll. 20–23). Thus, as noted by the
Examiner (Ans. 10), Kudert establishes the technical ability of using EVOH
in a high production environment in injection molding. While Yamada
provides an alternative solution, its solution appears to be based on cost,
which are not dispositive as to the question of obviousness, and also appears
to be refuted by Kudert's disclosure already discussed. Orthopedic
Equipment, 702 F.2d at 1013; Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) ("Where the prior art contains 'apparently
conflicting' teachings (i.e., where some references teach the combination and
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others teach away from it) each reference must be considered 'for its power
to suggest solutions to an artisan of ordinary skill.... consider[ing] the degree
to which one reference might accurately discredit another.'") (citations
omitted). When the asserted teaching away argument based on Yamada is
considered together with the teachings of Kudert, it is not persuasive.
Therefore, in view of the above, we also affirm the Examiner's
rejection of claim 5.

ORDERS
The Examiner's rejections are affirmed.

AFFIRMED

Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

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For Patent Owner:

REINHART BOERNER VAN DEUREN S.C.
ATTN: TRAVIS MCDONNELL, PARALEGAL
1000 NORTH WATER STREET
MILWAUKEE, WI 53202

For Third Party:

MOLD-MASTERS (2007) LIMITED
INTELLECTUAL PROPERTY DEPARTMENT
233 ARMSTRONG AVENUE
GORGETOWN, ON L7G4X-5