Ex Parte Deardurff

Board of Patent Appeals and Interferences

Feb 17, 2009

10689357 (B.P.A.I. Feb. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte L. ROBERT DEARDURFF
____________

Appeal 2008-3563
Application 10/689,357
Technology Center 1700
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Decided:1 February 17, 2009
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 10, which are all of the claims

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-3563
Application 10/689,357

pending in the above-identified application. We have jurisdiction pursuant
to 35 U.S.C. § 6.
The subject matter on appeal is directed to “generally to a process for
preparing a blow molding preform…[m]ore particularly,…to a process for
conditioning the melt polymer stream from an extruder, prior to the injection
molding of a blow molding preform” (Spec. 1, ll. 10-15). Details of the
appealed subject matter are recited in representative independent claims 1
and 4 reproduced from the Claims Appendix to the Appeal Brief as follows2:

1. A process for preparing a blow molding preform, comprising:

melting polymer flakes in a plasticating screw extruder, to prepare a
homogeneous stream of hot polymer melt at the discharge of the extruder;

cooling the polymer melt stream to a temperature at least 20 degrees
Centigrade below the extruder discharge temperature, by heat exchange with
a liquid heat transfer medium; and

forming the cooled polymer melt into a blow molding preform.

4. The process for preparing a blow molding perform according to
Claim 1, wherein the polymer flakes comprise an average mean particle size
from about 1/8 to about 3/4 inch.

According to page 4, lines 1-16, of the Specification,

2 To the extent that Appellant has presented substantive arguments for
separate patentability of any individual claims on appeal, we will address
them separately consistent with 37 C.F.R. § 41.37(c)(1)(vii) (2005).

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The polymer flakes that are useful in the present
invention may comprise any plastic, or combinations, blends, or
copolymers of plastics, known to be useful in the blow molding
of containers. Suitable examples comprise, but are not
necessarily limited to polyethylene terephthalate (hereinafter,
PET), polyolefin, polyester, polyamide, acrylonitrile acid ester,
vinyl chloride, and derivatives, blends, and copolymers
thereof….
By the term “polymer flakes” as it is used herein is meant
particles of those polymers set-forth above, which are generally
commercially available in the form of flakes, chunks, sphere,
pellets, and the like, and which are generally made
commercially available in bulk in a substantially uniform
average mean particles size from about 1/8 inch to about ¾
inch. [Emphasis added.]

As evidence of unpatentability of the appealed subject matter, the
Examiner has proffered the following prior art references:
Bright US 4,622,001 Nov. 11, 1986
Schwarzkopf US 4,642,043 Feb. 10, 1987
Belcher US 4,988,279 Jan. 29, 1991
Hata US 5,411,686 May 2, 1995
Takahashi US 6,320,014 B1 Nov. 20, 2001

The Examiner has rejected the claims on appeal as follows:
1) Claims 1 through 3 and 5 through 10 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Bright and Hata;
2) Claim 4 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Bright, Hata, and Takahashi;
3) Claims 1 through 3 and 5 through 10 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Belcher and Schwarzkopf;
and
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4) Claim 4 under 35 U.S.C. § 103 as unpatentable over the
combined disclosures of Belcher, Schwarzkopf, and Takahashi.
Appellant appeals from the Examiner’s decision rejecting the claims
on appeal under 35 U.S.C. § 103(a).
RELEVANT FACTUAL FINDINGS (FF)
The Factual Findings set forth below are supported by a
preponderance of the evidence of record:
REJECTIONS (1) AND (2)
1. Appellant does not dispute the Examiner’s finding that Bright teaches
a process for preparing an article which can be used as a blow molding
preform. (Compare Ans. 3 with Br. 6-8).
2. Bright teaches providing molten polyethylene terephthalate (PET)
from a plasticating and injection unit subject to a temperature above about
275o C to a preform mold via a heated nozzle unit coupled to the plasticating
and injection unit (col. 1, ll. 52-60 and col. 3, ll. 17-45).
3. Bright teaches (col. 1, ll. 58-68) that:
Upon injection of the PET into the mold, it is necessary that the
plastic be cooled very quickly to a temperature less than 100°
C. so as to avoid the range of maximum crystallite growth….To
avoid this crystal growth, the mold is typically cooled with the
aid of a chilled heat transfer liquid circulated around the mold,
the temperature of the heat transfer liquid being maintained less
than about 16o C. and preferably less than about 10o C.

4. Bright also teaches (col. 2, ll. 50-54) that:
The cavity member [of the mold] of the present invention
achieves a quick heat transfer from the molten plastic to the
cooling liquid, particularly in the region adjacent to the nozzle
and gate of the cavity member [of the mold], thereby enabling
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cycle times to be significantly reduced. [See also col. 3, ll. 30-
64).

5. Bright does not mention (a) the PET introduced in its plasticating and
injection unit in the claimed particle form (flake), (b) its plasticating and
injection unit as the claimed plasticating screw extruder, and (c) its cooling
temperature for a molten plastic cooled in the region adjacent to the nozzle
and gate of the cavity of the preform mold to be at least 20° C below the
extruder discharge temperature.
6. One of ordinary skill in the art can reasonably inferred that Bright’s
molten plastic is cooled by heat exchange with a liquid heat transfer medium
to at least 20° C below an extruder discharge temperature prior to forming a
preform in the cavity of a mold since Bright teaches pre-cooling the plastic
melt in the vicinity of the gate of the cavity of the mold with a chilled heat
transfer liquid having a temperature of preferably less than about 10o C for
the purpose of quickly cooling the plastic melt in the cavity of the mold to a
temperature less than 100o C from a temperature above about 275o C as
indicated supra.
7. It is also well within the ambit of one of ordinary skill in the art to
pre-cool the plastic melt to an optimum temperature, such as those claimed,
for the purpose of quickly cooling the resulting plastic melt in the cavity of
the mold to a temperature less than 100o C as indicated supra.
8. Hata teaches employing resin particles in a screw extruder to deliver a
molten polymer to the cavity of a mold, which is cooled by a liquid coolant
that flows through the vicinity of the cavity of the mold (col. 1, ll. 54-63,
col. 22, ll. 1-23, and Fig. 16).
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9. Takahashi teaches polyester pellets, particularly polyethylene
terephthalate containing pellets having an average diameter of 2.0 to 5.0
mm, useful for making containers, such as bottles (col. 1, ll. 5-22 and col.
10. ll. 5-12).
10. Appellant acknowledges (Spec. 1) that:
Conventional blow molding operations, such as those used to
produce plastic containers, utilize an extruder to melt and
homogenize plastic pellets, to prepare a polymer melt from
which a blow molding preform may be produced.

11. Appellant acknowledges that “[t]he polymer flakes that are useful in
the present invention may comprise any plastic, or combinations, blends, or
copolymers of plastics, known to be useful in the blow molding of
containers” (Spec. 4, ll. 1-4).
12. According to Appellant (Spec. 4, ll. 10-16):
By the term “polymer flakes” as it is used herein is meant
particles of those polymers set-forth above, which are generally
commercially available in the form of flakes, chunks, sphere,
pellets, and the like and which are generally made commercially
available in bulk in a substantially uniform average mean
particles size from about 1/8 inch to about ¾ inch. [Emphasis
added.]

13. Appellant acknowledges that a conventional plasticizing or
plasticating screw extruder is known to be useful for producing a polymer
melt for forming a blow molding preform (Spec. 1. l. 27 to 2, l. 2 and Spec.
4, ll. 17-19).
14. Appellant acknowledges that “[c]onventional apparatus and methods
for cooling by means of quench oil systems are well known in the art” (Spec.
5, ll. 18-20).
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15. Appellant acknowledges (Spec. 5, ll. 22-26) that:
Methods and apparatus for preparing a preform from a polymer
melt stream are well known in the art. The preform thus
produced may thereafter be blow molded by conventional
techniques to from a plastic container.

REJECTIONS (3) AND (4)
16. Belcher teaches a process for extrusion blow molding polyethylene
terephthalate articles, comprising charging suitable PET pellets, such as
those commercially sold under the name Eastman’s 7352, 9663, 9921, and
9899; ICI’s 5122c and 5822c; Goodyear’s 7207 and 8006; and American
Hoechst’s T-95, in plasticating screw extruders to produce a molten PET
having a discharge temperature of about 490o F to 520o F (col. 2, l. 33 to co.
4, l. 15, and col. 11, 10-55).
17. Belcher teaches immediately cooling the molten PET in a vacuum box
with cooling means, i.e., water cooling, to a temperature below the glass
transition temperature, Tg, of PET (155o F to 160o F) and then heating the
cooled PET within the stretch orientation temperature prior to subjecting it
to blow molding in a mold (col. 4, ll. 16-51 and col. 11, ll. 10-55).
18. Schwarzkopf teaches using a fluid cooling jacket to cool molten
polymers is known. (See generally Schwarzkopf).
19. Takahashi teaches polyester pellets, particularly polyethylene
terephthalate containing pellets having an average diameter of 2.0 to 5.0
mm, useful for making containers, such as bottles (col. 1, ll. 5-22 and col.
10. ll. 5-12).
20. Appellant acknowledges (Spec. 1) that:
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Conventional blow molding operations, such as those used to
produce plastic containers, utilize an extruder to melt and
homogenize plastic pellets, to prepare a polymer melt from
which a blow molding preform may be produced.

21. Appellant acknowledges that “[t]he polymer flakes that are useful in
the present invention may comprise any plastic, or combinations, blends, or
copolymers of plastics, known to be useful in the blow molding of
containers” Spec. 4, ll. 1-4).
22. According to Appellant (Spec. 4, ll. 10-16):
By the term “polymer flakes” as it is used herein is meant
particles of those polymers set-forth above, which are generally
commercially available in the form of flakes, chunks, sphere,
pellets, and the like and which are generally made commercially
available in bulk in a substantially uniform average mean
particles size from about 1/8 inch to about ¾ inch. [Emphasis
added.]

23. Appellant acknowledges that “[c]onventional apparatus and methods
for cooling by means of quench oil systems are well known in the art” (Spec.
5, ll. 18-20).

PRINCIPLES OF LAW
In making a patentability determination, analysis must begin with the
question, “what is the invention claimed?” since “[c]laim interpretation, . . .
will normally control the remainder of the decisional process.” Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987).
During examination, claims terms must be given their broadest reasonable
construction consistent with the Specification. In re Icon Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)(“[T]he PTO must give
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claims their broadest reasonable construction consistent with the
specification. . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.”).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966). As stated in KSR Int’l Co., v.
Teleflex, Inc., 127 S. Ct. 1727, 1740-41 (2007):
[A]nalysis [of whether the subject matter of a claim would have
been prima facie obvious] need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.

KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 127 S. Ct. at
1741 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”). See also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)
(“Our suggestion test is in actuality quite flexible and not only permits, but
requires, consideration of common knowledge and common sense”). The
common knowledge attributable to one of ordinary skill in the art includes
what was admittedly known in the art by Appellants at the time of the
invention. See In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The
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admitted prior art in applicant’s Specification may be used in determining
the patentability of a claimed invention.); see also In re Davis, 305 F.2d 501,
503 (CCPA 1962).
KSR further instructs that “when a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR, 127 S. Ct. at 1740 (quoting
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
“[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955)
(“[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.”).
ISSUES, ANALYSES and CONCLUSIONS OF LAW
REJECTIONS (1) AND (2)
As indicated supra, Bright teaches a process for preparing a blow
molding preform, which comprises providing molten polyethylene
terephthalate (PET) from a plasticating and injection unit subject to a
temperature above about 275o C to a preform mold via a heated nozzle unit
coupled to the plasticating and injection unit. Although Bright does not
mention the PET introduced in its plasticating and injection unit in the
claimed particle form and its plasticating and injection unit as the claimed
plasticating screw extruder, Hata teaches employing resin particles in a
screw extruder to deliver a molten polymer to the cavity of a mold cooled by
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a liquid coolant. More importantly, Appellant acknowledges that the
claimed polymer flakes (inclusive of flakes, chunks, sphere, pellets and like
having a mean particle size from about 1/8 inch to ¾ inch) are known for
blow molding and are commercially available at the time of the invention.
Appellant also acknowledges that the conventional plasticating screw
extruders included by the plasticating and injection unit taught by Bright are
known to homogenize such polymer pellets to deliver a polymer melt for
blow molding.
Given the above knowledge, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ the claimed polymer
flakes, together a conventional plasticating and injection unit, such as the
claimed conventional plasticating screw extruder, to form a PET melt for the
purpose of forming a blow molding preform in the process of Bright.
Thus, the dispositive question is: Would one of ordinary skill in the
art have been led to cool the resulting polymer melt by heat exchange with a
liquid heat transfer medium to at least 20° C below an extruder discharge
temperature prior to forming a blow molding preform within the meaning of
35 U.S.C. § 103? On this record, we answer this question in the affirmative.
As indicated supra, Bright teaches that:
Upon injection of the PET into the mold, it is necessary that the
plastic be cooled very quickly to a temperature less than 100o C
so as to avoid the range of maximum crystallite growth….To
avoid this crystal growth, the mold is typically cooled with the
aid of a chilled heat transfer liquid circulated around the mold,
the temperature of the heat transfer liquid being maintained less
than about 16o C and preferably less than about 10o C.

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The cavity member [of the mold] of the present invention
achieves a quick heat transfer from the molten plastic to the
cooling liquid, particularly in the region adjacent to the nozzle
and gate of the cavity member [of the mold], thereby enabling
cycle times to be significantly reduced. [See also col. 3, ll. 30-
64).

In other words, Bright not only teaches cooling the plastic (PET) melt in the
cavity of the mold with a chilled heat transfer liquid having a temperature
preferably less than about 10o C, but also teaches pre-cooling the plastic
(PET) melt in the vicinity of the gate of the cavity of the mold with the same
chilled heat transfer liquid for the purpose of quickly cooling the plastic
(PET) melt in the cavity of the mold to a temperature less than 100o C from
a temperature above about 275o C.
It follows that one of ordinary skill in the art would have reasonably
inferred from Bright that the plastic (PET) melt from a plasticating and
injection unit, such as the claimed conventional plasticating screw extruder,
is cooled indirectly by a liquid heat transfer medium to at least 20° C below
an extruder discharge temperature upon contacting a chilled heat transfer
liquid having a temperature preferably less than about 10o prior to forming a
preform in the cavity of a mold in the process of Bright within the meaning
of 35 U.S.C. § 103. In any event, it is well within the ambit of one of
ordinary skill in the art to pre-cool the polymer (PET) melt to an optimum
temperature, such as that claimed, for the purpose of quickly cooling the
resulting polymer melt in the cavity of the mold as suggested by Bright.
Accordingly, based on the totality of the record, including due
consideration of Appellant’s arguments, we hold that the preponderance of
evidence weighs most heavily in favor of obviousness regarding the subject
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matter recited in claims 1 through 10 within the meaning of 35 U.S.C. §
103(a).
REJECTIONS (3) AND (4)
Belcher teaches a process for extrusion blow molding polyethylene
terephthalate articles, comprising charging suitable PET pellets, such as
those commercially sold under the name Eastman’s 7352, 9663, 9921, and
9899; ICI’s 5122c and 5822c; Goodyear’s 7207 and 8006; and American
Hoechst’s T-95, in plasticating screw extruders to produce a molten PET
having a discharge temperature of about 490o F to 520o F. The claimed
commercially available and admittedly known polymer flakes for blow
molding (inclusive of flakes, chunks, sphere, pellets and like having a mean
particle size from about 1/8 inch to ¾ inch) are embraced by the suitable
blow molding PET pellets taught by Belcher.
Belcher also teaches immediately cooling the molten PET in a
vacuum box with cooling means, i.e., water cooling, to a temperature below
the glass transition temperature, Tg, of PET (155o F to 160o F) and then
heating the cooled PET within the stretch orientation temperature prior to
subjecting it to blow molding in a mold (col. 4, ll. 16-51 and col. 11, ll. 10-
55).
Thus, the dispositive question is: Does Belcher’s cooling of the
polymer melt indirectly with a liquid heat transfer medium to at least 20° C
below an extruder discharge temperature occur prior to the claimed forming
step within the meaning of 35 U.S.C. § 103? On this record, we answer this
question in the affirmative.
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As is apparent from claim 1, the claimed indirect heat exchange liquid
cooling step must occur prior to “forming the cooled polymer melt into a
blow molding preform”. The Specification, however, does not define the
claimed forming step as excluding Belcher’s heating step for forming a PET
article useful for subsequent blow molding. Nor does the Specification
define the claimed forming step as including Belcher’s indirect heat
exchange liquid cooling step which occurs prior to forming a preform used
in subsequent blow molding (a heated PET article within the stretch
orientation temperature for subsequent blow molding).
Hence, we concur with the Examiner that Belcher teaches cooling the
polymer melt indirectly with a liquid heat transfer medium to at least 20° C
below an extruder discharge temperature prior to the claimed forming step
within the meaning of 35 U.S.C. § 103.
Accordingly, based on the totality of the record, including due
consideration of Appellant’s arguments, we hold that the preponderance of
evidence weighs most heavily in favor of obviousness regarding the subject
matter recited in claims 1 through 10 within the meaning of 35 U.S.C. §
103(a).

ORDER
The decision of the Examiner is affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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PL Initial:
sld

FRASER CLEMENS MARTIN & MILLER LLC
28366 KENSINGTON LANE
PERRYSBURG, OH 43551

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