Ex Parte Aagaard et al

Patent Trial and Appeal Board

Oct 3, 2018

14175266 (P.T.A.B. Oct. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/175,266 02/07/2014
27820 7590 10/05/2018
WITHROW & TERRANOVA, P.L.L.C.
106 Pinedale Springs Way
Cary, NC 27511
FIRST NAMED INVENTOR
Olav Marcus Aagaard
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1217-020 5178
EXAMINER
ALLEN, JEFFREY R
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
10/05/2018 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 OLAV MARCUS AAGAARD, DAMON JAMES BOST,
SANDRA DA VIDTS, MALCOLM JOSEPH THOMPSON,
and KATHERINE CAMPBELL GLASGOW1
Appeal2018-000753
Application 14/175,266
Technology Center 3700
Before JAMES P. CALVE, LEE L. STEPINA, and SEAN P. O'HANLON,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 1-15, 17-20, and 23-28. Appeal Br. 8. Claim 16 is
cancelled. Id. Claims 21 and 22 are withdrawn. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Nomacorc, LLC is identified as the real party in interest (Appeal Br. 2) and
also is the applicant pursuant to 37 C.F.R. § 1.46.
Appeal2018-000753
Application 14/175,266
CLAIMED SUBJECT MATTER
Appellants claim a synthetic closure for containers. Spec. ,r 4. To
reduce the amount of synthetic polymer, Appellants add cork powder, which
is a waste product. Id. ,r 15. A thermoplastic polymer with an unfoamed
density of from 0.7 g/cm3 to 1.5 g/cm3 allows more cork powder, e.g., more
than 51 wt.%, to be used by compensating for the increased density resulting
from adding cork powder as a filler, thus reducing cost. Id. ,r 57.
Claims 1 and 23 are independent, with claim 1 reproduced below.
1. A synthetic 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 low density
thermoplastic polymer having an unfoamed density in a
range of from 0.7 g/cm3 to 1.5 g/cm3, and
b. at least one peripheral layer at least partially surrounding
and intimately bonded to at least one surface of the core
member, said peripheral layer comprising at least one
thermoplastic polymer, wherein
the synthetic closure is formed by extrusion,
at least one of the core member and the peripheral layer
comprises a plurality of cells, and the synthetic closure
comprises cork powder.
Appeal Br. 17 (Claims App.).
REJECTI0N2
Claims 1-15, 17-20, and 23-28 are rejected under 35 U.S.C. § 103 as
unpatentable over Romao de Sousa (US 2008/0229569 Al; pub. Sept. 25,
2008) and Takeuchi (US 6,548,598 B2; iss. Apr. 15, 2003).
2 The rejection of claim 23 under 35 U.S.C. § 112(b) as being indefinite is
withdrawn. See Ans. 4.
2
Appeal2018-000753
Application 14/175,266
ANALYSIS
The Examiner relies on Romao de Sousa to teach synthetic closure 29
for a product-retaining container comprising a core member ( inner core 3 1)
and a peripheral layer ( outer layer 33) made of a thermoplastic polymer and
a plurality of cells and formed by extrusion as recited in independent claims
1 and 23. Final Act. 3. 3 The Examiner finds that Romao de Sousa does not
disclose a core member with an unfoamed density of 0.7 g/cm3 to 1.5 g/cm3,
but determines that it would have been obvious to make a closure with such
materials to adjust the price and the insulation properties "since it has been
held to be within the general skill of a worker in the art to select a known
material on the basis of its suitability for the intended use as a matter of
obvious design choice." Id. at 3--4. The Examiner finds that the claimed
density range is not critical because Appellants disclose numerous other
density ranges and amounts of cork powder, which suggests that the density
can be altered and there is no criticality to it. Ans. 5---6.
Appellants argue that the claimed range "from 0.7 g/cm3 to 1.5 g/cm3"
is a critical range that achieves unexpected results by compensating for the
increase in density of the closure caused by the inclusion of cork powder.
Appeal Br. 13. Appellants argue that the claimed density range is critical to
allowing the core member to include large amounts of cork powder contrary
to the prior art, which taught that such large amounts of cork powder make
synthetic composite closures unsuitable as closures for wine bottles. Id.
( citing Spec. ,r 15); Reply Br. 6.
3 The Examiner relies on Takeuchi to teach making a thermoplastic resin
with cork powder. Final Act. 3. The Examiner determines that it would
have been obvious to make Romao de Sousa's closure with cork powder as
Takeuchi teaches, "in order to have a closure with a filler material." Id. at 4.
3
Appeal2018-000753
Application 14/175,266
The Examiner's determination that the claimed unfoamed density is
an obvious design choice to select as a known material based on suitability
for an intended use is not supported by a rational underpinning. We agree
with the Examiner that Appellants disclose density ranges that are suitable
for their synthetic closure. Ans. 6. In particular, the Specification discloses
a core member comprising densities of about 100 kg/m3 to about 600 kg/m3
and more particularly about 200 kg/m3 to about 350 kg/m3. Spec. ,r 62.
However, as Appellants point out, this disclosure pertains to the densities of
foamed core members, and the density results from the degree of foaming.
It does not disclose densities of unfoamed thermoplastic polymers, which is
a material property of the claimed polymer. See Reply Br. 6.
As a result, the Examiner has not provided evidence of densities of
unfoamed thermoplastic polymers that are suitable for use with synthetic
closures, particularly those containing cork powder. The Examiner thus
lacks a rational basis to support the determination that it would have been
obvious to select a known material based on its suitability for an intended
use as an obvious design choice. Romao de Sousa also discloses densities
of inner cores and outer layers of synthetic closures (Romao de Sousa ,r,r 99,
100), but the densities pertain to foamed polymers rather than to unfoamed
polymers as claimed. Thus, we lack evidence of suitable unfoamed polymer
densities for a skilled artisan to select among.
In addition, Appellants provide evidence that the claimed unfoamed
density range is critical because it allows the use of higher amounts of cork
powder in the core member, contrary to the understanding in the art. Spec.
,r,r 15, 57; see In re Chu, 66 F.3d 292,299 (Fed. Cir. 1995) (design choice
precluded where the placement of a catalyst affected the function of filters).
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Appeal2018-000753
Application 14/175,266
Takeuchi's teaching that cork powder is one of many additives that
can be added to a thermoplastic resin that may be used in food wrappings
(Takeuchi, 1:61-66, 7:32-53) does not teach unfoamed thermoplastic resin
densities that are suitable for use in synthetic closures with cork powder.
Thus, we do not sustain the rejection of independent claims 1 and 23
or their respective dependent claims 2-15, 17-20, and 24--28.
DECISION
We reverse the rejection of claims 1-15, 17-20, and 23-28.
REVERSED
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