Ex Parte 6183790 et al

Patent Trial and Appeal Board

Aug 16, 2013

90011128 (P.T.A.B. Aug. 16, 2013)

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.
90/011,128 09/09/2010 6183790 91943.000576 6060
56356 7590 08/16/2013
PACTIV CORPORATION
c/o NIXON PEABODY LLP
300 S. Riverside Plaza
16TH FLOOR
CHICAGO, IL 60606
EXAMINER
JASTRZAB, KRISANNE MARIE
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
08/16/2013 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
____________

PACTIV LLC
Patent Owner and Appellant
____________

Appeal 2013-002087
Reexamination Control 90/011,128
Patent U.S. 6,183,790 B1
Technology Center 3900
____________

Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal by Patent Owner Pactiv LLC, from the
Patent Examiner‟s rejections of claims 1-7, 9, and 10 in this ex parte
reexamination proceeding. The Board‟s jurisdiction for this appeal is under
35 U.S.C. §§ 6(b) and 306. We affirm.

Appeal 2013-002087
Reexamination Control 90/011,128
Patent 6,183,790 B1

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I. STATEMENT OF CASE
This appeal involves US 6,183,790 (“the „790 patent”) which issued
February 6, 2001. The named inventors are Gary R. DelDuca, Alan E.
Deyo, Vinod K. Luthra, and Wen P. Wu.
A Request for Ex Parte Reexamination of the „790 patent was made
by a third-party requester, Multisorb Technologies, on August 2, 2010.
Reexamination of the „790 patent was subsequently ordered (Order Granting
Request for Reexamination, November 4, 2010). An oral hearing was held
April 10, 2013. A transcript was into the record on July 23, 2013.
The real party in interest in this ex parte reexamination proceeding is
the patent owner, Pactiv LLC (Appeal Br. 2, dated February 28, 2012).
Patent Owner states that it is involved in litigation against Multisorb in Civil
Action No. 10-cv-07609 (Pactiv Corporation v. Multisorb Technologies,
Inc.) in the United States District Court, Northern District of Illinois in
which U.S. Patent Nos. 6,183,790, 5,698,250, 5,948,457, 5,811,142,
6,231,905, 6,315,921 and 6,395,195 have been asserted.
The present reexamination proceeding is related to the following ex
parte reexaminations:
(1) Control No. 90/010,976 (US 5,698,250) (Appeal 2013-001728).
(2) Control No. 90/011,131 (US 5,948,457) (Appeal 2013-003338).
(3) Control No. 90/011,130 (US 5,811,142) (Appeal 2013-003324).
(4) Control No. 90/011,132 (US 6,231,905) (Appeal 2013-003339).
(5) Control No. 90/011,596 (US 6,315,921).
(6) Control No. 90/011,597 (US 6,395,195).
Reexaminations (1) to (4) are decided concurrently with this appeal.
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The technology in the „250 patent involves packaging for meat. The
„250 patent teaches that “[p]ackaging systems which provide extremely low
levels of oxygen are generally preferable because it is well known that the
fresh quality of meat can be preserved longer under anaerobic conditions
than under aerobic conditions.” (Col. 1, ll. 36-39.) The „250 patent
describes prior art systems in which the atmosphere is evacuated of oxygen
and optionally filled with gases other than oxygen to preserve the meat (col.
1, ll. 40-61). “The meat in the modified atmosphere package takes on a less
desirable purple-red color which few consumers would associate with
freshness. This purple-red color, however, quickly „blooms‟ to a bright red
color generally associated with freshness when the package is opened to
oxygenate the fresh meat by exposure to air.” (Col. 1, ll. 61-66.) The „250
patent describes the invention as a packaging system which comprises an
oxygen scavenger to substantially absorb residual oxygen in the package that
remains after the package is flushed with gases to substantially eliminate the
oxygen in the package atmosphere (col. 2, ll. 36-56). The claims are drawn
to packaging systems, and methods of making them, comprising an oxygen
scavenger and also a predetermined amount of an activator to increase the
rate of oxygen absorption (claims 1, 12, 21, 23; col. 4, ll. 35-39). As
explained in the patent, the retail meat is stored in the package, and just prior
to display at the grocery store to the consumer, the package is opened and
the meat exposed to air (col. 2, ll. 31-33; col. 4, ll. 55-58). The meat is
oxygenated and quickly changes or “blooms” to a bright red color (id.).
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Patent 6,183,790 B1

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II. REJECTIONS
Claims 1-7, 9, and 10 are original claims and pending in this appeal
(Appeal Br. 3). Claims 1 and 10 are the only independent claims on appeal
and were amended “in the Response to Final Office Action in Ex Parte
Reexamination Mailed September 28, 2011, which was filed with the PTO
on November 22, 2011” (id. at 2).
Patent Owner appeals the Examiner‟s decision to reject the claims.
The claims stand rejected by the Examiner as follows:
1. Claims 1, 3-6, 9 and 10 under 35 U.S.C. § 103(a) as obvious over
U.S. Patent No. 3,574,642 to Weinke (“Weinke”) in view of JP 58-158129
to Sakai
1
(“Sakai”) and GB 1,556,853 (“GB '853”).
2. Claims 1, 3-6, 9 and 10 under 35 U.S.C. § 103(a) as obvious over
Weinke in view of Sakai and EP 468,880 to Hamon
2
(“Hamon”).
3. Claim 2 under 35 U.S.C. § 103(a) as obvious over Weinke in view
of Sakai, GB '853 and U.S. Patent No. 4,339,161 to Nakamura
(“Nakamura”).
4. Claim 2 under 35 U.S.C. § 103(a) as obvious over Weinke in view
of Sakai, Hamon and Nakamura.
5. Claim 7 under 35 U.S.C. § 103(a) as obvious over Weinke in view
of Sakai, GB '853 and U.S. Patent No. 5,064,698 to Courtright
(“Courtright”).
6. Claim 7 is unpatentable under 35 U.S.C. § 103(a) as obvious over
Weinke in view of Sakai, Hamon and Courtright.

1
Citations to English Translation of Record.
2
Citations to English Translation of Record.

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III. REPRESENTATIVE CLAIM
Claim 1 is representative and reads as follows (underlining and
brackets delineating added and removed subject matter, respectively relative
to the originally issued claim):
1. A modified atmosphere package comprising
first and second compartments separated by a partition
member, said partition member including a non-barrier portion
substantially permeable to oxygen, said first and second
compartments being encompassed by an outer wall
substantially impermeable to oxygen, said outer wall includes a
plastic bag, an oxygen scavenger activated with a
predetermined amount of oxygen scavenger accelerator and
positioned to absorb oxygen in said first compartment, said
second compartment containing a retail cut of raw meat.

IV. SNQ ISSUE
In the Reply Brief, Patent Owner newly cites the Federal Circuit
decision Belkin Int'l Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir. 2012) which
issued on October 2, 2012, after their Appeal Brief was filed on February 28,
2012. According to Patent Owner, Belkin affirmed the Board‟s decision not
to consider any references that the Director had decided did not form a
substantial new question (SNQ) of patentability and they should not be
considered here (Reply Br. 2). We addressed this SNQ issue in the related
Appeal 2013-1728 (“the „1728 Appeal”). Since we have fully addressed
these arguments in the decision in the „1728 Appeal (“the „1728 Decision”),
rather than repeat the reasoning again as to why we found the arguments
unpersuasive, we incorporate by reference that part of the decision here.

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V. REJECTIONS 1, 3, AND 5 BASED ON WEINKE, SAKAI,
AND GB „853
Claims 1 and 10 are the only independent claims. Claim 1 is directed
to a modified atmosphere package containing raw meat, comprising “an
oxygen scavenger activated with a predetermined amount of oxygen
scavenger accelerator.” Claim 10 is also directed to a modified atmosphere
package comprising an oxygen scavenger and oxygen scavenger accelerator.
The Examiner found that Weinke describes a package for meats, but
not comprising an oxygen scavenger and oxygen scavenger accelerator as
claimed (Answer 4). For the latter components, the Examiner cited Sakai
and GB „853, respectively (id. at 5-6). The Examiner concluded:
It would have been obvious to one of ordinary skill in the art to
include an oxygen scavenger as taught in Sakai between the
inner and outer containers of Weinke with the enhanced
utilization of the activation means taught in GB „853 because it
would enhance the protection provided by the inert gas flushing
of Weinke by absorbing any residual oxygen present with the
enhanced action of the scavenger preventing the onslaught of
oxidative deterioration of the meat.
(Id. at 6.)
On pages 10-15 of the Appeal Brief and pages 5-10 of the Reply
Brief, Patent Owner argues that the combination of Weinke, Sakai, and GB
„853 is improper. The arguments set forth in the Appeal Brief and Reply
Brief appear to be substantially the same as those in Appeal 2013-001728
(“the „1728 Appeal”). Since we have fully addressed these arguments in the
decision in the „1728 Appeal, rather than repeat the reasoning again as to
why we found the arguments unpersuasive, we incorporate by reference that
part of the decision here, specifically, pages 9-21. For those reasons, we
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conclude that the Examiner has provided sufficient evidence to establish that
claims 1 and 10 are prima facie obvious in view of Weinke, Sakai, and GB
„853. Patent Owner relied on the same arguments for claim 1, as for
dependent claims 2-7 and 9 (Appeal Br. 22), and thus we find a prima facie
case of obviousness has been established for claims 2-7 and 9 the same
reasons as for claim 1.

VI. REJECTIONS 2, 4, AND 6 BASED ON WEINKE, SAKAI,
AND HAMON
The Examiner applied the same rationale for combining Weinke and
Sakai as for Rejection 1 (Answer 8). The Examiner further found that
Hamon describes an oxygen reducing agent (“oxygen scavenger”) and an
activation chemical (“oxygen scavenger accelerator”) for enhancing the
activity of the oxygen reducing agent (id. at 9). Based on these teachings,
the Examiner concluded:
It would have been obvious to one of ordinary skill in the art to
include an oxygen scavenger as taught in Sakai between the
inner and outer containers of Weinke with the enhanced
configuration for activation as taught in Hamon because it
would enhance the protection provided by the inert gas flushing
of Weinke by absorbing any residual oxygen present with the
enhanced action of the scavenger preventing the onslaught of
oxidative deterioration of the meat.
(Id.)
On pages 15-17 of the Appeal Brief and pages 10-11 of the Reply
Brief, Patent Owner argues that the combination of Weinke, Sakai, and
Hamon is improper. The arguments set forth in the Appeal Brief and Reply
Brief appear to be substantially the same as those in the „1728 Appeal.
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Since we have fully addressed these arguments in the decision in the „1728
Appeal (“the „1728 Decision”), rather than repeat the reasoning again as to
why we found the arguments unpersuasive, we incorporate by reference that
part of the decision here, specifically, pages 21-23.
For those reasons, we conclude that the Examiner has provided
sufficient evidence to establish that claims 1 and 10 are prima facie obvious
in view of Weinke, Sakai, and Hamon. Patent Owner relied on the same
arguments for claim 1, as for dependent claims 2-7 and 9 (Appeal Br. 22),
and thus we find a prima facie case of obviousness has been established for
2-7 and 9 for the same reasons as for claim 1.

VII. SECONDARY CONSIDERATIONS
In making an obviousness determination, secondary considerations
must be considered if present. Graham v. John Deere Co. of Kan. City, 383
U.S. 1, 17-18 (1966); TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1343
(Fed. Cir. 2010). Evidence rebutting a prima face case of obviousness can
include evidence of secondary considerations, such as commercial success,
long-felt but unresolved needs, and unexpected results. WMS Gaming, Inc.
v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999); In re Soni, 54
F.3d 746, 750-51 (Fed. Cir. 1995). “When a patent applicant puts forth
rebuttal evidence, the Board must consider that evidence.” In re Sullivan,
498 F.3d 1345, 1351 (Fed. Cir. 2007).
The evidence of secondary considerations put forth in this appeal is
the same as in the „1728 Appeal. We fully considered this evidence and
found it inadequate to rebut the Examiner‟s strong case of prima facie
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obviousness. Rather than repeat our analysis, we refer to the discussion in
the ‟1728 Decision on pages 28-33.
After considering the totality of the evidence, we conclude that the
preponderance of the evidence establishes that claims 1 and 10, and
dependent claims 2-7 and 9, are obvious in view of Weinke, Sakai, and GB
„853; Weinke, Sakai, and Hamon; and the additionally cited publications
cited in Rejections 3-6. Rejections 1-6 of claims 1-7, 9, and 10 are affirmed
for the reasons described above, in the „1728 Decision, and those given by
the Examiner.

TIME PERIOD FOR RESPONSE
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).

AFFIRMED

alw

Appeal 2013-002087
Reexamination Control 90/011,128
Patent 6,183,790 B1

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PATENT OWNER:

PACTIV CORPORATION
C/O NIXON PEABODY LLP
300 S. Riverside Plaza, 16
th
Floor
Chicago, IL 60606

THIRD PARTY REQUESTER:

Stephen B. Salai, Esq.
HARTER SECREST & EMERY LLP
1600 Bausch & Lomb Place
Rochester, NY 14604-2711