Ex Parte 6,945,013 et al

Patent Trial and Appeal Board

Mar 25, 2016

95001452 (P.T.A.B. Mar. 25, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,452 11/24/2010 6,945,013 415545US 110 RX 7633
22850 7590 03/25/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
DAWSON, GLENN K
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/25/2016 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
____________

KHS USA, INC.
Requester

v.

STEUBEN FOODS, INC.
Patent Owner
____________

Appeal 2015-007987
Reexamination Control 95/001,452
Patent 6,945,013
Technology Center 3900
____________

Before JAMES T. MOORE, PHILLIP J. KAUFFMAN, and
BRETT C. MARTIN, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

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INTRODUCTION
KHS USA, Inc. (“Requester”) filed a corrected request for
inter partes reexamination of claims 1–20 of U.S. Patent No.
6,945,013 (“the ’013 patent”) on November 24, 2010. Paper 7.
Steuben Foods, Inc. (“Patent Owner”) added claims 21–65 during
prosecution, also canceling claims 36 and 40–43. Claims 1, 4–21, 24–
27, 29–35, 37–39, and 44–65 stand rejected and are the subject of this
appeal. PO Br. 1. Claims 2 and 3 are confirmed, while Claims 22, 23
and 28 are found to be patentable as amended.
On December 24, 2014 the Patent Owner filed its Appeal Brief
(“PO Br.”), and we also have the benefit of a Respondent Brief filed
by the Requester on March 4, 2015 (“Resp. Br.”). Patent Owner filed
a Rebuttal Brief July 6, 2015 (“PO Reb. Br.”), and oral argument was
conducted February 10, 2015. A transcript of the oral argument is in
the record (“Tr.”) with a date of entry of March 3, 2016.
We have jurisdiction under 35 U.S.C. § 6(c).
For the reasons that follow, we affirm the rejections of record as
set forth in the Right of Appeal Notice (“RAN”) dated September 10,
2014.
A. Related Proceedings
The ’013 patent is the subject of two terminated board
proceedings, Case IPR2014-00041, GEA Process Engineering, Inc. v.
Steuben Foods, Inc., and Case IPR2014-01235, Nestle USA, Inc. v.
Steuben Foods, Inc. In those proceedings, the petitioner was found (1)
to have filed an incomplete petition, and (2) not to have carried its
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burden of showing unpatentability, respectively. The ’013 patent has
also been asserted in several district court cases in the United States
District Court for the Western District of New York. In addition, the
’013 patent is related to other United States patents, which are or were
the subject of Office proceedings. PO Br. 1.

B. The ’013 Patent
The ’013 patent is directed to a method and aseptic packaging
system for the aseptic packaging of food products in containers, such
as bottles. Specification 1:10–14. The ’013 patent Specification
discloses the steps of: “providing a plurality of bottles; aseptically
disinfecting the plurality of bottles; aseptically filling the aseptically
disinfected plurality of bottles with the aseptically sterilized
foodstuffs; and filling the aseptically disinfected plurality of bottles at
a rate greater than 100 bottles per minute.” Id. at 3:9–18.
Additionally, the method provides for the step of aseptically
disinfecting the plurality of bottles at a rate greater than 100 bottles
per minute. Id. at 3:23–24.

C. Claims
Claim 1 is reproduced below:
1. A method for automatically aseptically bottling
aseptically sterilized foodstuffs comprising the steps of:

providing a plurality of bottles;

aseptically disinfecting the bottles at a rate greater
than 100 bottles per minute wherein the disinfecting is
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with hot atomized hydrogen peroxide, wherein said
plurality of bottles are in an upright position during
disinfecting; and

aseptically filling the bottles with aseptically
sterilized foodstuffs.

D. The Cited Prior Art
Reference Printed Publication Date
Buchner N. Buchner, Aseptic Glass in the Food
Sector, Pharma Technologie J., at 25
(with translation).
1988
ZFL N. Buchner, Aseptic Filling of Glass
and Plastic Containers, 41 ZFL 295
(with translation).
1990
Biewendt H.-G. Biewendt et al., Report on the
Type Testing of the Aseptic Filling and
Sealing Plant for Glass Bottles for
UHT Milk, 48 Kiel Dairy Research
Reports 321 (with translation).
1996
Bosch

Robert Bosch GmbH, Aseptically
Operating Filling and Closing Lines
for Bottles, Jars and Wide-Mouth
Containers of Glass.
May 1990
Chambers Principles of Aseptic Processing and
Packaging (James V. Chambers &
Philip E. Nelson eds., 2d ed.).
1993
FDA 1 FDA Regulation 21 C.F.R. § 178.1005 1977
Krämer Johannes Krämer, Food Microbiology,
3rd Edition, 1997 Eugen Ulmer GmbH
& Co.
1997
Campden Aseptic Packaging Symposium, Food
Preservation Research Association
April 20,
1983
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Reference Printed Publication Date
Rippen “Aseptic Packaging of Grade A Dairy
Products” Food Science Department,
Michigan State University
June 1969
Miyazaki “Development of PET Bottle In-line
Formation Aseptic Filling Line”
Packaging Technology pp. 28–34
August
1998
Willhoft Aseptic Processing and Packaging of
Particulate Foods, Blackie Academic
and Professional
1993
David Aseptic Processing and Packaging of
Food, CRC Press
1995

Reference Patent Number Date
Lisiecki US 3,723,060 March 27, 1973
Wilcox US 3,770,209 November 6, 1973
Hoshino US 4,296,068 October 20, 1981
Bjerborn WO 98/16259 April 23, 1998
Gustafsson WO 98/17579 April 30, 1998
Scholle US 4,417,607 November 29, 1983
Hada US 5,879,648 March 9, 1999
Vokins EP 0 481 361 A1 April 22, 1992
Clüsserath US 5,031,673 July 16, 1991

The Appellant has not challenged the prior art status of these
documents.
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Inter alia, Appellant also relies upon the declarations of
Mr. Thomas D. Taggart (04-01-2011) (“Taggart I and Taggart II”),
Dr. Norbert Buchner (01-24-2012)(“Buchner I”), Mr. Jeff Sokal (01-
24-2012)(“Sokal I”), Dr. Wouter de Haan (01-24-2012)(“de Haan”),
Mr. Jeff Sokal (11-28-2012)(“Sokal II”), Dr. Sudhir K. Sastry (11-28-
2012)(“Sastry I”), Dr. Philip E. Nelson (11-28-2012)(“Nelson II”),
and Dr. Thomas D. Taggert (11-28-2012)(“Taggart III”), which we
have reviewed.
E. Grounds of Rejection
1. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bosch and Krämer.
2. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bosch and Bjerborn.
3. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bosch in view of FDA Regulation 21 C.F.R.
§ 178.1005.
4. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bosch, Bjerborn, and Lisiecki.
5. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bosch, Bjerborn, and Lisiecki.
6. Claims 1, 4, 5, 7, 8, and 10–17 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Buchner, Campden,
Gustafsson, ZFL, and either Rippen or Krämer.
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7. Claims 18–20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Buchner, Campden, Gustafsson, ZFL, and
either Rippen or Krämer.
8. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buchner, Campden, Gustafsson, ZFL, either Rippen
or Krämer, as applied to claim 5, and further in view of Miyazaki or
Willhoft.
9. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buchner, Campden, Gustafsson, ZFL, and either
Rippen or Krämer, as applied to claim 5, and further in view of
Willhoft or Scholle.
10. Claims 21, 24, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Buchner in view of Campden,
Gustafsson, ZFL, and either Rippen or Krämer, as applied to claim 20
above, and further in view of Lisiecki.
11. Claims 26 and 29 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Krämer, Lisiecki, and Campden.
12. Claims 30, 31, 33, 34, 38, and 39 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bosch, Lisiecki,
Buchner, Bjerborn, Gustafsson, and Willhoft.
13. Claims 30, 31, 33, 34, 35, and 39 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over ZFL and Gustafsson.
14. Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over ZFL and Gustafsson, as applied to claim 30, and
further in view of David.
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15. Claim 21 stands rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Hada, and Bjerborn.
16. Claim 24 stands rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Hada, Bjerborn, and Vokins.
17. Claim 25 stands rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Gustafsson, Clüsserath, Bjerborn,
and Lisiecki.
18. Claim 26 stands rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Bjerborn, and Lisiecki.
19. Claim 29 stands rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Bjerborn, Lisiecki, and Vokins.
20. Claims 30, 31, 33, 34, 35, 38, 39, 51, 53, 55, 58, and 60
stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over ZFL and Bjerborn.
21. Claim 32 stands rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Bjerborn, and David.
22. Claim 44 stands rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Clüsserath, and Gustafsson.
23. Claim 45 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Lisiecki, Hoshino, Wilcox, and
Bosch.
24. Claims 46, 47, and 48 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL and Bosch.
25. Claims 50, 52, 54, 57, 59, 62, 63, 64, and 65 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over ZFL.
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26. Claims 26, 29, 44–48, 60, 64, and 65 stand rejected under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as
failing to comply with the written description requirement.
27. Claims 25–27, 29–35, 37–39, 49, 55, 56, 60, and 61 stand
rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA),
second paragraph.
28. Claims 59–63 stand rejected under 35 U.S.C. § 314(a) as
enlarging the scope of the claims of the patent being reexamined.
ANALYSIS
A. 35 U.S.C. § 112
1. (Rejection 26) Claims 26, 29, 44–48, 60, and 64–65 stand
rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description
requirement.
The Examiner concluded that the claims contain subject matter
that was not described in the Specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor
had possession of the claimed invention. RAN 106–107. The
conclusion is founded on those facts found at RAN 107–108.
The Appellant has not made any argument directed towards this
rejection, and indicated at oral argument that this was intentional. Tr.
69–70. Accordingly, any argument is waived and this rejection is
affirmed.
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2. (Rejection 27) Claims 25–27, 29–35, 37–39, 49, 55, 56, 60,
and 61 stand rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph.
The Examiner concluded that the claims are indefinite for
failing to particularly point out and distinctly claim the subject matter
which the applicant regards as the invention. RAN 108–109. The
conclusion is founded on facts found at RAN 109–110.
The Appellant has not made any argument directed towards this
rejection, and indicated at oral argument that this was intentional. Tr.
69–70. Accordingly, any argument on this issue is waived and this
rejection is affirmed.
B. 35 U.S.C. § 314(a)
1. (Rejection 28) Claims 59–63 stand rejected under 35 U.S.C.
§ 314(a) as enlarging the scope of the claims of the patent being
reexamined. RAN 110. The Examiner found that the use of the term
“about” enlarges the scope of the claims. RAN 110–111.
The Appellant has not made any argument directed towards this
rejection, and indicated at oral argument that this was intentional. Tr.
69–70. Accordingly, any argument on this issue is waived and this
rejection is affirmed.
As a consequence, we dismiss as moot the appeal of claims 25–
27, 29–35, 37–39, 44–48, 49, 55–56, and 59–65 from any other issues
in this proceeding. This includes rejections 12–14, 17–19, and 21–24,
as indicated below.
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C. The Effect of the Related Proceedings
We are presented with an issue to resolve at the outset of this
proceeding. During the Oral Argument on February 10, 2016,
Appellant’s counsel asserted that the Board’s prior decisions in
IPR2014-00041 and IPR2014-01235 are “the law of the case” and that
we should follow their findings and conclusions. Tr. 4–5 (citing the
“Board Standard Operating Procedure 6B”). In its briefs, the
Appellant Patent Owner references papers and evidence in the inter
partes review proceedings, which adds a degree of confusion to the
record as some of this evidence and argument is not properly in the
record.
For the reasons which follow, we disagree with the Appellant’s
assertion of a preclusive effect in the trial proceedings before the
Board, and look at the judgment of the final written decision in
IPR2014-01235 solely as informative to our deliberations in this
matter. Our reasoning follows.
Appellant has not identified any persuasive authority for the
“law of the case” argument under the facts of this case. See Tr. 4–5
(citing the “Board Standard Operating Procedure 6B”). The Board
does not have a Standard Operating Procedure 6B; however, based on
content, it appears Appellant is referring to Standard Operating
Procedure 2, which states that a routine Board opinion is “binding law
of the case, even if it is not designated as precedential, informative, or
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representative.” SOP 2 ¶ VI.B. (Revision 9) (emphasis added).1 In
context, this statement means that a routine Board opinion is a binding
determination for that proceeding.
This statement says nothing about the applicability of a routine
opinion to other proceedings. See SOP 2, ¶ III.E (in contrast to a
routine opinion, a precedential opinion “is binding authority in
subsequent matters involving similar facts or issues.”). Further, this
SOP is not legal precedent. SOP 2, 1 (“This SOP creates internal
norms for Board administration; it does not create any legally
enforceable rights.”).
GEA Process Engineering, Inc., was the Petitioner in IPR2014-
00041. The ’041 petition was determined to be incomplete based
upon a failure to identify the real party in interest in violation of 35
U.S.C. § 312(a). Accordingly, that proceeding was terminated and the
initial decision instituting vacated. IPR2014-00041, Paper 140, pp.
26–27.
As the requester in this proceeding is an entirely different party,
Patent Owner has not persuaded us that there can be a preclusive
effect as regards IPR2014-00041. .
Likewise, there can be no preclusive effect as regards IPR2014-
01235. Nestle USA, Inc. is the petitioner in IPR2014-01235 while the
present Requester is not Nestle. As noted above “litigants . . . who
never appeared in a prior action[] may not be collaterally estopped

1 Attached to this decision as an Appendix.
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without litigating the issue. . . . Due process prohibits estopping them
despite one or more existing adjudications of the identical issue which
stand squarely against their position.” Blonder-Tongue Labs., Inc. v.
Univ. of Ill. Found., 402 U.S. 313, 329 (1971); see also Parklane
Hosiery Co., v. Shore, 439 U.S. 322, 327 n.7 (1979) (“It is a violation
of due process for a judgment to be binding on a litigant who was not
a party or a privy and therefore has never had an opportunity to be
heard.”).
We also observe that Nestle USA, Inc. has filed at the Board a
notice of appeal to the United States Court of Appeals for the Federal
Circuit, dated February 8, 2016, and accordingly that decision could
not have a preclusive effect at this time for that additional reason.
IPR2014-01235, Paper 67.
Moreover, there is not identity of issues between IPR2014-
01235 and the case at hand. IPR2014-01235 resulted in a judgment
that the Petitioner in that proceeding had not shown by a
preponderance of the evidence that claims 18–20 of the ’013 patent
are unpatentable under 35 U.S.C. § 103 over Biewendt, Bosch,
Buchner, ZFL, and Chambers. IPR2014-01235, Paper 63. In the case
at hand, none of the rejections, including the rejections against claims
18–20, are based on this particular combination of references.2
Additionally, a reexamination proceeding appeal from findings
made by an Examiner in a reexamination proceeding is in a different

2 Regarding claims 18–20, see rejections 2, 3, and 7, supra.
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procedural posture than a trial proceeding. The Examiner, who makes
the initial findings of fact and conclusions of law, is not a party with
an interest in the outcome and is presumed correct in the
reexamination proceeding, unless error is shown by the Appellant
during the appeal. Further, the proceedings are governed by different
rules. See 37 C.F.R. Part 41 (reexamination) and Part 42 (inter partes
review).
In a reexamination proceeding, the Examiner also has the
ability to establish certain presumptions during prosecution and
occasionally can shift the burden of proof when making rejections.
For example, in proving criticality of result effective variables, the
Examiner can shift the burden to the applicant. In re Boesch, 617
F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA
1955). As an Examiner has no access to laboratories, a patent owner
or applicant can legitimately be placed in the position of being
required to prove differences between the cited art and the claimed
invention. The same extends to enablement of a prior art publication
or patent. In re Antor Media Corp., 689 F. 3d 1282, 1289 (Fed. Cir.
2012).
Additionally, the entered evidence of record for this proceeding
is different. In IPR2014-01235, the Board and Petitioner relied upon
Buchner, ZFL, Biewendt, Bosch, and Chambers. Paper 63, p. 5.
While those references provide some overlap, the present record also
includes Krämer, Campden, Rippen, Miyazaki, Willhoft, David,
Lisiecki, Wilcox, Hoshino, Bjerborn, Gustafsson, Scholle, Hada,
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Vokins, and Clüsserath. These references are applied differently over
multiple rejections.
Moreover, the claims in this proceeding are different from the
claims in IPR2014-01235. Patent Owner has availed itself of the
opportunity to make amendments in this proceeding, whereas we have
not been pointed to corresponding granted motions to amend in the
IPR proceeding.
Finally, on January 14, 2016, the Patent Owner sought remand
of this proceeding to the Examiner in order to consider the final
written decision in IPR 2014-01235, stating that the inter partes
reexamination appeal must be remanded for entry and consideration
of the final written decision. That petition was denied February 5,
2016.
Accordingly, we decline the invitation of Appellant Patent
Owner’s counsel to decide this case based upon the outcome or
evidence in a different case. We therefore consider only the evidence
and argument before the examiner that has been properly entered and
considered. Citations in the Appellant’s brief to the IPR papers and
IPR evidence have not been considered.3

3 Portions of the Appellant’s briefs make factual assertions, then cite
to pleadings in other proceedings along with evidence from those
proceedings. We have not considered those citations, relying only
upon the evidence of record of this proceeding. To the extent
evidence not considered by the Examiner has been placed into the
record, we consider those to be unauthorized papers not forming part
of the record. 37 C.F.R. § 1.939(a). Similarly, arguments made
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The final written decision in IPR2014-01235 is part of the ’013
history. However, as mentioned above, the the only overlap in the
claimed subject matter at issue are claims 18–20, and that the ground
of unpatentability in IPR2014-01235 differs from the rejections
presented here. Also as mentioned above, the record in IPR2014-
01235 differs from the case at hand. For these reasons, the final
written in IPR2014-01235 has no substantive effect on the
patentability of the ’013 patent claims in this case.
C. Principles of Law – Obviousness
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are
such that the subject matter, as a whole, would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007).
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR, 550 U.S. at 418. “[I]t can be important
to identify a reason that would have prompted a person of ordinary
skill in the relevant field to combine the elements in the way the
claimed new invention does.” Id. Moreover, “[i]n order to render a
claimed apparatus or method obvious, the prior art must enable one

during oral argument in this case that rely upon evidence not of record
have not been considered. 37 C.F.R. § 41.73(e)(1).
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skilled in the art to make and use the apparatus or method.” Beckman
Instruments, Inc. v. LKB Produkter, AB, 892 F.2d 1547, 1551 (Fed.
Cir. 2010) (citing In re Payne, 606 F.2d 303, 314 (CCPA 1979)). In
addition, a person of ordinary skill in the art must have had a
reasonable expectation of success of doing so. PAR Pharm., Inc. v.
TWI Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014).
D. The Obviousness Rejections
1. Bosch (Rejections 1–5, and 12)
(Rejection 1) Claims 18 and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bosch and Krämer.
(Rejection 2) Claim 20 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bosch and Bjerborn.
(Rejection 3) Claim 20 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bosch in view of FDA Regulation
21 C.F.R. § 178.1005.
(Rejection 4) Claim 21 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bosch, Bjerborn, and Lisiecki.
(Rejection 5) Claim 24 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bosch, Bjerborn, and Lisiecki.
(Rejection 12) Claims 30, 31, 33, 34, 38, and 39 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Bosch, Lisiecki,
Buchner, Bjerborn, Gustafsson and Willhoft. As these claims all have
been found unpatentable under either the unappealed 35 U.S.C. § 112
and § 314 rejections, we dismiss this appeal as to this rejection.
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Claims 18 and 20 are illustrative of the rejection and
reproduced below.
Claim 18
18. A method for automatically aseptically bottling
aseptically sterilized foodstuffs comprising the steps of:
providing a plurality of bottles;
aseptically disinfecting the bottles at a rate greater
than 100 bottles per minute; and
aseptically filling the bottles with aseptically
sterilized foodstuffs, wherein the aseptically sterilized
foodstuffs are sterilized to a level producing at least a 12
log reduction in Clostridium botulinum.

Claim 20
20. A method for automatically aseptically bottling
aseptically sterilized foodstuffs comprising the steps of:
providing a plurality of bottles;
aseptically disinfecting the bottles at a rate greater than
100 bottles per minute, wherein the disinfecting the bottles is
with hot hydrogen peroxide spray, wherein a residual level of
hydrogen peroxide is less than 0.5 PPM; and
aseptically filling the bottles with aseptically sterilized
foodstuffs.

“Aseptic”
We first focus on the claimed subject matter. Claim 18 is a
broad claim, claiming any method of providing bottles, sterilizing the
bottles, and filling them aseptically. Claim 20, also an independent
claim, is more of a species of disinfection, claiming the use of hot
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hydrogen peroxide spray with a specific residual hydrogen peroxide
level. We deem these claims representative.
Our first inquiry is “what is aseptic?”
Appellant urges that aseptic means “‘the FDA level of aseptic’
which in turn at the time of filing required no more than 0.5 ppm
residual hydrogen before the bottles are filled.” PO Br. 16. Appellant
further asks that we interpret “aseptic” as specifically as the Board did
in IPR2014-01235, to mean “aseptic to any applicable United States
FDA standard, and in the absence of any such standard, aseptic
assumes its ordinary meaning of free or freed from pathogenic
microorganisms.” We are cited to IPR2014-01235, Paper 63, 11–14.
We think this interpretation imports much into the claim
language that is not written there. The Specification teaches only the
FDA level of aseptic. The Specification does not state the definition
requires a particular residual level of hydrogen peroxide or other
ingredients that might have been banned from foodstuffs by the FDA.
Nor does claim 18 necessarily require hydrogen peroxide. Claim 20,
on the other hand, does.
The Specification specifically gives us guidance — aseptic
means “the FDA level of aseptic.” ’013 Patent 4:28–30. The
evidence currently of record, 21 C.F.R. § 113.3(a), defines aseptic
processing and packaging as “the filling of a commercially sterilized
cooled product into presterilized containers, followed by aseptic
hermetical sealing, with a presterilized closure, in an atmosphere free
of microorganisms.” Free of microorganisms therefore appears to be
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at least one ideal aseptic level used in the FDA regulations concerning
aseptic packaging and processing.
There is more evidence in the instant Specification that
“aseptic” relates to a level of microorganisms, not additional FDA
regulatory packaging or labeling requirements.
Column 4, lines 28–40 reads as follows:
Hereafter, “aseptic” will refer to the FDA level of aseptic. The
present invention provides a method and apparatus for producing
at least about a 12 log reduction of Clostridium botulinum in food
products. In addition, the present invention produces packaging
material with at least about a 6 log reduction of spores. Actual
testing of the aseptic processing apparatus is accomplished with
spore test organisms. These test organisms are selected on their
resistance to the media selected used to achieve sterility. For
example, when steam is the media, the test organism is Bacillus
stearothermophilus. When hydrogen peroxide is the media, then
the test organism is Bacillus subtilis var. globigii.

The claims as drafted also tend to lead to this interpretation of
level meaning precisely what it states — a level of reduction of
organisms. For example, original Claim 19 recites that “the
aseptically disinfected plurality of bottles are sterilized to a level
producing at least a 6 log reduction in spore organism[s].” Additional
“levels” recited in the claims include Claim 17 reciting “wherein
aseptically denotes meeting the United States FDA level of aseptic;”
Claim 18 “wherein the aseptically sterilized foodstuffs are sterilized to
a level producing at least a 12 log reduction in Clostridium
botulinum;” and Claim 21 “at least about a 6 log reduction in Bacillus
subtilus.”
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Original claim 20 actually recites the step of “aseptically
disinfecting the bottles at a rate greater than 100 bottles per minute,
wherein the disinfecting the bottles is with hot hydrogen peroxide
spray, wherein a residual level of hydrogen peroxide is less than 0.5
PPM.” If “aseptically” naturally carried the panoply of FDA
restrictions with it, then the residual level of hydrogen peroxide used
with hydrogen peroxide sterilization would be somewhat redundant.
See also claims 21, 25, and 26 each reciting a level of residual
sterilant.
It is the applicants’ burden to precisely define the invention, not
the PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Applicant could have amended the claims during this proceeding to
recite a more precise standard. Instead, we are left with two equally
plausible interpretations.
Under the Appellant’s favored interpretation, “aseptic” means
in compliance with any applicable FDA standard, triggering the
residual hydrogen peroxide limitation. Under the broader
interpretation, unrecited FDA requirements would not be included.
We conclude that it does not matter to the instant decision
which claim interpretation is correct. Under either alternative
construction, the Examiner has shown that the proposed combination
of references teaches the residual hydrogen peroxide limitation.
Bosch and Krämer
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The Examiner found that Bosch alone describes bottles,
disinfecting the bottles, and “aseptically filling the bottles with
aseptically sterilized” foodstuffs. Request 37.
Krämer was found to describe reduction of Clostridium
botulinum by 12 log in sterilized foods. Id. at 38. The Examiner then
concluded that
one skilled in the art would be motivated to combine the
teachings from Bosch with Krämer as both references are
directed to the same technological field and subject
matter which is aseptic processing of bottles and filling
of bottles with sterilized food. Bosch relates to aseptic
processing of food and therefore one skilled in the art
would be motivated to apply the teachings of Krämer to
reduce the level of microorganisms in Bosch.

Id.
The Examiner also further concluded that reaching or obtaining
a specific value is not patentable subject matter when it involves only
routine experimentation by the skilled artisan, and that routine
experimentation by one skilled in the art would be able to achieve the
claimed value of “‘producing at least a 12 log reduction in
Clostridium botulinum’ as the value is well known in the art and the
prior art teaches how to attain and test for the value.” Id.
The Appellant first argues that one of ordinary skill in the art
would not have had a reasonable expectation of success in making the
combination. PO Br. 9–10. More specifically, the Appellant urges
one could not reach the speeds of 100 bottles per minute as claimed.
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Id. The gravamen of this assertion is that the technology is highly
unpredictable. Id.
The first argument in this regard is that low acid aseptic bottling
is unpredictable. PO Br. 10. Two principal reasons make this
argument unpersuasive. First, the claims argued are not limited to low
acid aseptic bottling. Second, the evidence relied upon is not actually
evidence, nor was it of record and considered during this
reexamination proceeding. We are referenced by the Appellant Patent
Owner to Patent Owner’s own pleading in IPR2014-00041, as if it
were evidence. That document is a collection of unentered and
unconsidered attorney argument, citing evidence not of record
presently. We therefore disregard the arguments spanning pages 10–
14 of Patent Owner’s brief.
Appellant next urges that the Bosch reference machine was a
trade secret, and the prior art gave no reasonable expectation of
success in improving upon the machine. PO Br. 16.
Buchner Declaration
Testimony in support of this argument is provided by Dr.
Buchner, who “admitted that he deliberately omitted from his
publications any design parameters which would have allowed others
to successfully build competing machines.” PO Br. 9; citing Buchner
Decl. at ¶ 18.
Looking at this declaration, initially we observe that we are not
provided with a statement by Dr. Buchner of his interest in this
proceeding. While the declaration does include the standard
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paragraph on false statements (¶ 27) we are provided with no
information upon which we can determine potential bias or weigh
credibility. We therefore give this declaration somewhat diminished
weight.
We also give it less weight because the factual statements in the
declaration are vague and do not directly address the principal point
urged by Appellant’s counsel. We are not able to find a paragraph
stating unequivocally that one of ordinary skill in the art could not
engineer a plant with the claimed features with a reasonable
expectation of success based upon what is described in Bosch when
considered with that person’s knowledge. Instead, we are provided
with vague statements that “there are many features that you need to
consider” and “[i]t is not possible to anticipate all [of] the problems
that may arise when expanding the size of a machine and adding
additional lines” are provided. Buchner ¶¶ 21 and 22. That a general
disclosure resulted in some engineering work to implement does not
mean that one of ordinary skill in the art could not have reasonably
implemented the subject matter of the claimed invention.
We also find that the declaration is somewhat inconsistent in its
treatment of predictability in that paragraph 13 of the Buchner
declaration notes that a dissertation in 1983 “gave us useful and
reliable sterilizing results” using hydrogen peroxide.
When viewed in light of the Bosch reference, we find it hard to
give persuasive weight to the assertion that this art was unpredictable
and the challenges to success rendering an expectation of success
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unreasonable. For example, the first figure of Bosch indicates the
general layout of the machine. In the description on page 1, we are
informed that sterilization can occur by air or steam in acid products,
while hydrogen peroxide is used for low acid products. Drying occurs
using sterile air.
The aseptic machine is described as flushing the bottles inside
and outside with H2O2 and subsequently drying with sterilized air.
Bosch p. 2. Sterilization machines of 6–80 lines are described, with
outputs ranging from 6000–12000 bottles per hour.
The functional diagram on page 3 of Bosch describes and
illustrates the layout of a feed transfer, bottle sterilization infeed,
bottle sterilization unit, discharge, 2 lane transport of bottles to filler,
aseptic in line filler, closing machine, discharge for closed bottles, and
lid sterilizer. Bosch p. 3.

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The Figure from Bosch Page 3 is a perspective illustration of an
aseptic filling machine

That Dr. Buchner’s publications were checked by his employer
to keep certain trade secret engineering details private for commercial
advantage does not address the central issue, as noted above. PO Br.
16. Indeed, none of those “critical” engineering details are recited in
claim 18, 19, or 20.
We focus on whether one of ordinary skill in the art could
engineer a method for automatically aseptically bottling aseptically
sterilized foodstuffs by providing a plurality of bottles; aseptically
disinfecting the bottles at a rate greater than 100 bottles per minute;
and aseptically filling the bottles with aseptically sterilized foodstuffs,
wherein the aseptically sterilized foodstuffs are sterilized to a level
producing at least a 12 log reduction in Clostridium botulinum. We
also consider whether one could do it with a reasonable expectation of
success given the guidance in Bosch and Krämer.
Appellant’s counsel characterizes the rejection as an “obvious
to try” rejection where the art shows only a “general approach” PO
App. Br. 17. The evidence of record does not support that narrow
view as argued. A concrete arrangement of elements is given in
Bosch with the particular level of aseptic details in Krämer at 165.
Appellant’s counsel next argues that the Examiner erred and
relied upon the machine described in Bosch because the literature
intentionally omitted the technical details necessary to achieve that
functionality. PO Br. 18. Principal in that position is that Bosch does
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not describe the means for applying and removing sterilant in order to
meet the FDA requirement of residual hydrogen peroxide. Id.
This argument is also without persuasive merit. Claim 18 does
not require hydrogen peroxide. Moreover, for claim 20, the evidence
of record establishes that hydrogen peroxide sterilization was well
known to aseptic levels. Bosch describes the sterilization with
hydrogen peroxide spray and air drying. Bosch p. 2. The FDA
regulation spells out the residual level permitted. Bjerborn notes
“[t]he authorities have established limit values which must not be
exceeded for residues of hydrogen peroxide.” Bjerborn 2:25–26.
Thus, as noted above, under either claim interpretation, we see no
error in the Examiner’s findings.
Appellant urges that there was “no evidence of record”
establishing that the machine was known. PO Br. 19. This argument
again misfocuses the analysis. One of ordinary skill in the art at the
time the invention was made was generally familiar with bottling and
sterilization machines, as illustrated by the totality of the art of record
cited in the tables above. It is with the knowledge of such a person,
given Bosch’s description and Krämer’s specifics, that the claimed
invention of claim 18 is rendered obvious (rejection 1). The subject
matter of claim 20 is rendered obvious by the further inclusion of
Bjerborn’s description of hydrogen peroxide, as well as by the
description in the FDA regulations (rejections 2 and 3).
In other words, the Appellant focuses on individual references
and their individual deficiencies, and systemically fails to address the
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underlying ability of one of ordinary skill in the art in view of the
entirety of the evidence of record.
Appellant next urges that the disinfection rates claimed are not
obvious. PO Br. 20. The thrust of this argument is that the references
do not provide any explanation as to how the addition of parallel
processing lines would be achieved. PO Br. 21. Although this
argument appears to be principally directed at the second grouping of
rejections, there is some overlap in the claims of the argument with
the rejection presently being discussed. Accordingly, we consider that
argument as regards this rejection as well.
Taggart Declaration
The evidence relied upon in support of this contention is the
declaration of Thomas Taggart (dated November 27, 2012) (“Taggart
III”). According to the Appellant, the information contained in the
Bosch publication was not sufficient for him “to even begin the design
process of an aseptic bottle filler.” PO Br. 21 (citing Taggart III
¶¶ 17–20).
Turning to the declaration itself, we observe that Mr. Taggart is
an inventor, presumably with some interest in the outcome of this
proceeding. In view of the failure to disclose his current interests in
this proceeding, we give the declaration diminished weight.
Mr. Taggart testifies in his declaration that “[b]ased upon the
disclosure of Dr. Buchner’s article, I would not know how to build an
aseptic bottling machine without years of experimentation.” Taggart
III ¶ 18.
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Mr. Taggart further testifies that his “criteria for the invention
included that it meet the FDA regulations and 3-A standards.” Id. ¶ 5.
He also testifies that other factors were considered including
minimizing the mechanical parts within a sterile zone;
assuring that the air entering the machine is sterile
(filtered); assuring that the air pressure compared to
outside air is maintained as positive; assuring minimal
collection of spore organisms by having a smooth bottle
design; assuring minimal collection of spore organisms on
the neck of the bottle through neck design of the bottle;
placing the sterilant on at minimum levels for quick easy
removal; choosing a material with appropriate properties
for construction of the tunnel; minimizing outside
environmental contact at the bottle infeed, the incoming
lid point and the output of the bottles; assuring that the
bottle conveying mechanism never leaves the sterile
tunnel; and implementing indexing stations into the
design.

Id. ¶ 6.
Like the FDA regulations and 3-A standards, we observe that
none of these considerations are expressly in the limitations of claim
18. Additionally, Mr. Taggart appears to be looking at Bosch without
considering the perspective of one of ordinary skill in the art. We
therefore do not agree that the evidence of record supports the
Appellant’s assertion that one would not even know “where to begin”
to design such a machine, as the basic layout from which one of
ordinary skill in the art might choose to begin is presented in Bosch.
For example, paragraphs 21 and 22 of Taggart III states that:
21. Buchner merely states that the entire plant has
completely closed aseptic spaces that are subject to a slight
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overpressure of sterile air or incoming steam in the sealing region
without explaining how to achieve the overpressure. (Id. at pg.
8).

22. Such little disclosure is akin to telling an automotive
engineer to build an automobile that gets over 100 mile per
gallon based upon a publication that states a car has been made
that can get 100 miles per gallon and the publication shows you
a picture of a car and states it uses gasoline and an engine.

This pair of assertions, among others, undermines the
persuasiveness of the entire declaration. First, paragraph 21 seems to
imply that it was not known in the prior art how to achieve an
overpressurized sterile space. Based upon the evidence in the record
(Buchner, p. 4 describes the “entire plant has completely closed
aseptic spaces that are subject to a slight overpressure of sterile air”,
ZFL, p. 7 “[t]his entirely closed system which is aerated by a slight
overpressure of sterile air”) that such standard spaces were already
known, such an implied representation that how it would be done was
not known is not given weight. Second, paragraph 22 seems to imply
that one of ordinary skill in the art would not rely upon those things
known in the art, which is ignoring well over a century of automotive
technology and the known design parameters of a car.
Simply put, we find this testimony not to be persuasive, let
alone reliable in supporting the statement that Taggart could not even
begin the design process of an aseptic bottle filler.
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Sastry Declaration
Appellant next relies upon the Declaration of Dr. Sudhir Sastry.
According to the Appellant, Dr. Sastry concurs with Mr. Taggart in
that if he were provided the disclosure of Bosch with Gustafsson or
ZFL he would not have been able to practice the claimed sterilization
speeds without extensive research and development. PO Br. 22.
Dr. Sastry, like other witnesses, fails to explain if he is being
compensated for his testimony or whether he has an interest in the
outcome of this proceeding. Accordingly, this to some extent
diminishes the overall persuasiveness of his testimony.
The central portion of his testimony is as follows:
14. I have reviewed claims 18 and 19 of the ’013 patent
and am of the opinion that if I were provided with the teachings
of Bosch and Kramer at the time this patent was filed, I would
not be able to practice this invention without extensive research
and development. Even if Bosch and Kramer in combination
teach methods of package sterilization and removal of hydrogen
peroxide; they do not provide the critical guidance of how to
accomplish these at high speed in a bottle or without damaging
the bottle materials. Towards that end, the ’013 patent
specifically teaches the use of a relatively low temperature,
typically around 55 degrees Celsius (131 degrees Fahrenheit),
which is the temperature of softening of polyethylene
terephthalate (PET) which is used for bottles, and also shows
how to accomplish the entire drying operation in about 24
seconds per claims 2 and 3, which have already been accepted by
the examiner. The Bosch and Kramer combination provides no
such teaching.

Sastry Decl. ¶ 14.
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We find this testimony also to be unpersuasive. First, neither of
claim 18 and 20 requires PET. Although left untestified to, we are
reasonably confident that this testimony concerning softening of
bottles is irrelevant if the bottle material is glass. Second, the 24
second drying time is not contained in claim 18 or 20. Third, the
removal of hydrogen peroxide is not contained in claim 18, and even
if the claim is interpreted such that it is required, the residual level is
taught by Bjerborn and the FDA regulation. All of these “critical”
teachings are not particularly relevant to broad claim 18. Claim 20
does recite the residual level of hydrogen peroxide, which is taught by
Bjerborn and the FDA regulation.
Dr. Sastry further testifies that Krämer would not work for
disinfecting bottles. Sastry ¶ 19. In essence, Dr. Sastry sets up a
“straw man” argument by taking the Krämer application process of
rolling and saying it would not work for bottles. Id. We find this to
be unpersuasive as Bosch p. 2–3 teaches spray application within the
bottle followed by air drying. One of ordinary skill in the art is
presumed to have some minimal skill. See In re Sovish, 769 F.2d 738,
743 (Fed. Cir. 1985). “A person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR, 550 US at 421. We find
it difficult to believe that one of ordinary skill would simply exchange
the working Bosch application method for bottles for an immersion
bath method (Krämer 165) used for rolled material. That the witness
would posit such an exchange to support his position further
diminishes his credibility in our view.
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As far as we can tell from the Appellant’s briefs, this appears to
constitute the argument concerning claims 18, 19, and 20 and the
dependent claims 21 and 24. We remain unpersuaded of error. As a
consequence, we affirm these rejections.
2. Buchner (Rejections 6–10)
(Rejection 6) Claims 1, 4, 5, 7, 8, and 10–17 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Buchner,
Campden, Gustafsson, ZFL, and Rippen or Krämer.
(Rejection 7) Claims 18–20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Buchner, Campden, Gustafsson,
ZFL, and Rippen or Krämer.
(Rejection 8) Claim 6 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Buchner, Campden, Gustafsson, ZFL,
either Rippen or Krämer, as applied to claim 5, and further in view of
Miyazaki or Willhoft.
(Rejection 9) Claim 9 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Buchner, Campden, Gustafsson, ZFL, and
either Rippen or Krämer, as applied to claim 5, and further in view of
Willhoft or Scholle.
(Rejection 10) Claims 21, 24, and 25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Buchner in view of
Campden, Gustafsson, ZFL, and either Rippen or Krämer, as applied
to claim 20 above, and further in view of Lisiecki. As claim 25 has
been found unpatentable under either of the unappealed 35 U.S.C.
§ 112 and § 314 rejections, we dismiss this appeal as to claim 25.
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For ease of reference, we again reproduce Claim 1 as follows:
1. A method for automatically aseptically bottling
aseptically sterilized foodstuffs comprising the steps of:
providing a plurality of bottles;
aseptically disinfecting the bottles at a rate greater than
100 bottles per minute wherein the disinfecting is with hot
atomized hydrogen peroxide, wherein said plurality of bottles are
in an upright position during disinfecting; and
aseptically filling the bottles with aseptically sterilized
foodstuffs.

The Examiner has found that Buchner describes a method for
automatically aseptically bottling aseptically sterilized foodstuffs by
providing a plurality of bottles, aseptically disinfecting the bottles at a
rate greater than 100 bottles/minute, disinfecting with hot hydrogen
peroxide, and aseptically filling the aseptically disinfected bottles with
the sterilized foodstuffs. RAN 80–81. The Examiner found that
Buchner does not describe that the “foodstuffs are ‘aseptically’
sterilized to the FDA’s levels.” Id. at 81.
The Examiner has additionally found that Campden describes
presterilization of foodstuffs before packaging them is a prerequisite,
and that the degree of sterilization of the foodstuffs is discussed to the
degree that a 12 log reduction in C. botulinum is achieved. Id.
The Examiner then concludes that it would have been obvious
to have aseptically sterilized the foodstuffs before packaging, as
taught by Campden, as this assures a safer, more stable product. Id.
The Examiner also found that Buchner does not describe that
the bottles are in the upright orientation during disinfecting. Id. The
Examiner found that Gustafsson described that it was known to
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disinfect containers in an upright orientation, and concludes that it
would have been obvious to have modified Buchner to disinfect the
bottles in the upright orientation, in view of Gustafsson, as this has
been shown to obviate being forced to turn the bottle over after
disinfecting the bottle in order to fill it. Id. at 81–82.
The Examiner lastly found that Buchner fails to describe that
the hydrogen peroxide spray is atomized. The Examiner found that
ZFL, Rippen, and Krämer describe spraying vaporized hydrogen
peroxide onto bottles, carried by air or steam. Id. at 82.
The Examiner then concluded that “[i]t would have been
obvious for Buchner to have used a hot hydrogen peroxide spray to
aseptically disinfect the bottles because it would have been an obvious
design choice as it was well known to have been used for such a
purpose.” Id.
The Examiner has also found that the claimed disinfecting rate
of the bottles being greater than 100 bottles per minute is described by
Buchner, but as being in a future production plant not yet in
production. The Examiner has found that Buchner, Gustafsson, and
ZFL describe the concept of adding additional lines to increase
production. Id. at 83–84.
The Examiner concludes that “[i]t would have been obvious to
have added more lines or parallel lines to Buchner’s aseptic bottling
plant, as it would merely allow the plant to increase its production. It
would amount to an obvious predictable result from such a
modification.” Id.
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The Appellant urges that the Examiner’s finding is a “concept”
that would have made adding parallel lines obvious to try, at best.
According to the Appellant, the Examiner fails to identify any details
that would allow the person of ordinary skill to achieve the “concept.”
PO Br. 20.
According to the Appellant the references cited by the
Examiner do not provide any details that provide a person of ordinary
skill in the art with any reasonable expectation of success. Id.
Appellant asserts that the Examiner has failed to provide any
explanation as to how the addition of parallel processing lanes would
actually be achieved, and that such detail is necessary to move the
Examiner’s argument from a “concept” to a roadmap that would
provide a reasonable expectation of success. Id.
We disagree. The Examiner has observed that Buchner
described the addition of lanes to increase output was known. See,
e.g., Buchner, at page 8 where it is described that
[u]ntil now, plants have been realized for bottles made of
glass, of plastics, of basis polypropylene with a barrier
layer and of polyester, for PT and heat sealing closures.
The plants are to find application in Europe, the U.S.A.
and in Japan. They have an output of 100/min. Plants in
double lane construction for an output of 200/min are in
development.

The Examiner has put forth sufficient evidence that addition of
lanes is described in Buchner. That the faster machines are under
commercial development does not change the finding that adding
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additional lanes to increase output was in fact described to those of
skill in the art.
Appellant counters that its witnesses testify that one would not
know “[where to] begin” to develop the aseptic bottler. PO Br. 21.
As noted above, this is unpersuasive as Mr. Taggart has not
adequately considered the art as a whole, the level of skill of one in
the art, and that background knowledge.
Dr. Sastry’s testimony is likewise unpersuasive for the reasons
noted above. His testimony that he would not be able to practice this
invention without “extensive research and development” cites to many
features not contained within the claims that define the subject matter
of the invention. PO Br. 22 (citing Sastry Decl. ¶ 27).
According to the Appellant, Dr. Sastry testifies that Buchner
lacks any teaching as to how a person of ordinary skill in the art
would “effectively coat the interior and exterior of a bottle” or how
sterilant can be effectively removed in such a way as to ensure that
less than 0.5 ppm remains on the bottle to comply with FDA
regulations. Id.
We disagree with Dr. Sastry’s characterization of the art as a
whole. Buchner, section 5.1 describes the following:
Subsequently to preheating, hydrogen peroxide vapor is
condensed out of the carrier hot air onto all inner and outer
surfaces of the containers which vapor will be dried off after a
certain duration of exposure by sterile hot air. Figure 2 is
showing the procedure: The containers which are turned upside
down are lifted up by means of a blast pipe so that the sterilizing
agent may flow around all surfaces; during this process, the
containers are maintained in a chamber-like enclosure. The
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sterilizing conditions such as flow velocity, temperature and
peroxide concentration, may be adapted to the requirements for
different containers. Figure 3 shows the individual treating zones
in the sterilizing machine.

Very high sterilizing rates can be achieved. In adjusting them
practically, they will be reduced to the realistic requirements in
order to avoid unnecessary consumptions so
that the following minimum results will be achieved:
- Sterilization of containers and lids: >5D
- Residual peroxide in the containers: <0.5 ppm
- Peroxide concentration in the working environment: <1
ppm
- Maximum of unsterility rate: 1:10,000

Buchner and ZFL (which are similar) teach which variables to
adjust in order to achieve FDA sterility rates and residual hydrogen
peroxide. Accordingly, we find Dr. Sastry’s testimony to be counter
to the weight of evidence of record as regards Buchner and ZFL.
Appellant also urges that Dr. Sastry explains, “in order to add
lines to a machine, I first must be taught how to construct the
machine.” PO Br. 23 (citing Sastry Decl. ¶ 33). Appellant urges that
the complex field of aseptic processing and packaging requires one be
provided with a working example before any modifications can be
made to a method.
We are unpersuaded by this contention. Appellant urges that
complexity in an aseptic bottle filler resides in the fluid dynamics
within the pressurized sterile tunnel. PO Br. 23. However, we
observe that the claims do not require a sterile tunnel. Claims 1, 18,
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19, and 21 as written are broad enough to cover an apparatus
functioning in a sterile room, such as that described in Buchner.
Appellant also asserts that airflow patterns and temperature
distribution must be managed in the sterile tunnel. While that
assertion may be factual, we observe that that Buchner teaches
management of those characteristics in section 5.1 quoted above, as
result-effective variables.
Appellant points to a parallel processing lane machine that
Dr. Buchner testified to as evidence of the lack of a reasonable
expectation of success. Dr. Buchner’s testimony is as follows:
22. For example, in a case where we were making a machine
with a number of lines we found that the air-pressure dropped
from nozzle to nozzle across the first lines and at the end the
pressure increased again. You have to make sure that you have
at every station sufficient sterilizing agent for sterilizing and a
sufficient temperature for the activity of the sterilizing medium
and also sufficient air for drying with a sufficient temperature for
removing the sterilizing medium in order to be below the
hydrogen peroxide limit of 0.5 ppm.

Dr. Buchner seems to have faced an engineering challenge in
adjusting pressure across a distribution manifold. We are not
provided with the solution, but Buchner section 5.1 teaches which
parameters to adjust. We do not find this testimony sufficient to deem
aseptic processing generally unpredictable.
Appellant next turns to the testimony of Dr. Philip Nelson, who
appears to be an expert in aseptic packaging and processing. We are
not informed of his interest in this proceeding. Accordingly, we are
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unable to ascertain bias, and as a result give his testimony diminished
weight.
Appellant asserts that “Dr. Nelson explains that Buchner fails
to describe how to sterilize a bottle to FDA standards including an
acceptable residual hydrogen peroxide level without undue
experimentation, including in achieving a 6 log reduction.” PO Br. 25
(citing Nelson Decl. ¶¶ 33–37). Among the issues raised by Dr.
Nelson is that a cup and a bottle have different shapes, Buchner does
not teach how to construct an aseptic bottle filler, and the effort would
require undue experimentation. PO Br. 25–26.
We observe that the Buchner reference itself teaches adjusting
parameters for different shaped containers. “The sterilizing
conditions such as flow velocity, temperature and peroxide
concentration, may be adapted to the requirements for different
containers.” Buchner, 5.1. Moreover, the bottle shape is undefined in
the claim. The bottles being sterilized and filled could be wide
mouthed, short, or small. We therefore conclude that this testimony
of Nelson is likewise unpersuasive.
Appellant urges that as the Patent Owner offered four experts
and the Third Party Requestor none, the Examiner erred in
maintaining the rejection. PO Br. 25. While we understand that there
are engineering challenges in constructing a machine, the art of record
reflects a level of skill such that one of ordinary skill would
understand how to handle these engineering challenges. While the
work might be substantial, we find it does not rise to the level of
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establishing unpredictability or undue experimentation. As regards
the four witnesses, we observe that each of their analyses tends to
overlook the level of skill in the art and the actual substance of the
description of the references, noting only the difficulties they can see.
However, the references themselves indicate that adjustments can be
made for different types of containers.
Separately Argued Claim 19
Claim 19 reads as follows:
19. A method for automatically aseptically bottling aseptically
sterilized foodstuffs comprising the steps of:
providing a plurality of bottles;
aseptically disinfecting the bottles at a rate greater than 100
bottles per minute, wherein the aseptically disinfected plurality of
bottles are sterilized to a level producing at least a 6 log reduction in
spore organism; and aseptically filling the bottles with aseptically
sterilized foodstuffs.
Claim 19 is rejected (in rejection 7) under 35 U.S.C. § 103(a) as
being unpatentable over Buchner, Campden, Gustafsson, ZFL, and
Rippen or Krämer.
The Appellant asserts that Krämer’s disclosure is insufficient to
teach how a 6 log reduction would be obtained. Appellant urges that
Dr. Buchner testified that “sterilization of bottles is much more
difficult than sterilization of film-webs or other packages like cans,
cups and cartons because of the surface geometry of the bottle.” PO
Br. 27 (citing Buchner Decl. ¶14). Given this difficulty, the Appellant
urges error in that the Examiner did not identify a solution to the
problem.
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We are unpersuaded of this allegation of error. Buchner
teaches that the result-effective variables include flow velocity,
temperature and peroxide concentration, which may be adapted to the
requirements for different containers, as discussed above. Appellant
has not provided sufficient persuasive evidence to the contrary.
Accordingly, we disagree with the Appellant as regards claim 19.
Separately Argued Claim 6
Claim 6 reads as follows:
6. The method according to claim 5, wherein the plastic is
selected from the group: polyethyelene terephthalate, and high density
polyethyelene.

Claim 5, from which claim 6 depends, reads as follows:
5. The method according to claim 1, wherein the plurality of
bottles are made from a plastic.

Claim 6 is rejected (in Rejection 8) under 35 U.S.C. § 103(a)
as being unpatentable over Buchner, Campden, Gustafsson, ZFL,
either Rippen or Krämer, as applied to claim 5, and further in view of
Miyazaki or Willhoft.
The Examiner has found that Buchner does not describe a
polyethylene terephthalate plastic bottle. However, the Examiner has
found that Miyazaki teaches that PET bottles can be used to
aseptically package. The Examiner then concludes that it would have
been obvious to one having ordinary skill in the art at the time of the
invention to have used a polyethylene terephthalate plastic bottle for
the generically disclosed plastic bottle of Buchner, as this material
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has been shown to reduce plastic bottle costs. RAN 92–93.
The Appellant argues that the natural tendency is to simply
increase temperature to increase sterilization. PO Br. 28. It is urged
that when lightweight plastic bottles such as PET or HDPE are used,
temperature cannot simply be increased because PET and HDPE
bottles have relatively low melting points. Id. at 28–29.
Miyazaki is said by Appellant to be silent as to sterilization
rates, and operate in a different manner. Miyazaki is also said to be
silent as to how the polyethylene terephthalate bottles are sterilized
such that the softening point is avoided. Id. at 29. Appellant then
concludes that a person of ordinary skill in the art would not have had
any reasonable expectation of success in doing so. Id.4
We accept the Appellant’s underlying assertion that
deformation of polyethylene terephthalate bottles during sterilization
is to be avoided. However, Miyazaki teaches the benefits of
aseptically filling a non-heat resistant bottle over hot filling a heat-
resistant bottle. Miyazaki 2. It appears from the art of record that one
of ordinary skill in the art would therefore have been aware of
thermal limitations of plastic during sterilization and filling
procedures. See, e.g., ZFL’s discussion of polyethylene terephthalate
bottles thermal stress limit of 74 degrees C. ZFL, 2. While such
constraints may present a technical challenge or problem to be

4 We have not considered the unentered and unconsidered evidence of
the Spinak deposition, from IPR2014-00041, cited at PO App. Br.
29–30.
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surmounted, we do not agree with Appellant that the Examiner erred
in determining one of ordinary skill in the art would have had a
reasonable expectation of success in aseptic sterilization of
polyethylene terephthalate bottles.
Accordingly, we are unpersuaded of error, and affirm these
rejections.
3. ZFL (Rejections 11, 13–25)
(Rejection 11) Claims 26 and 29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over ZFL, Krämer, Lisiecki,
and Campden. As these claims all have been found unpatentable
under either the unappealed 35 U.S.C. § 112 and § 314 rejections, we
dismiss this appeal as to this rejection.
(Rejection 13) Claims 30, 31, 33, 34, 35, and 39 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over ZFL and
Gustafsson. As these claims all have been found unpatentable under
either the unappealed 35 U.S.C. § 112 and § 314 rejections, we
dismiss this appeal as to this rejection.
(Rejection 14) Claim 32 stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over ZFL and Gustafsson, as applied to
claim 30, and further in view of David. As this claim has been found
unpatentable under either the unappealed 35 U.S.C. § 112 and § 314
rejections, we dismiss this appeal as to this rejection.
(Rejection 15) Claim 21 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Hada, and
Bjerborn. This rejection was adopted by the Examiner in the RAN
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page 99, citing the Requester’s December 28, 2012 response, pages
41–43 and Exhibit G, pages 1–3.
(Rejection 16) Claim 24 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Hada, Bjerborn
and Vokins. This rejection was adopted by the Examiner in the RAN
page 99, citing the Requester’s December 28, 2012 response, page 48
and Exhibit G, page 6.
(Rejection 17) Claim 25 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Gustafsson,
Clüsserath, Bjerborn, and Lisiecki. As this claim has been found
unpatentable under either the unappealed 35 U.S.C. § 112 and § 314
rejections, we dismiss this appeal as to this rejection.
(Rejection 18) Claim 26 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Bjerborn, and
Lisiecki. As this claim has been found unpatentable under either the
unappealed 35 U.S.C. § 112 and § 314 rejections, we dismiss this
appeal as to this rejection.
(Rejection 19) Claim 29 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Bjerborn,
Lisiecki, and Vokins. As this claim has been found unpatentable
under either the unappealed 35 U.S.C. § 112 and § 314 rejections, we
dismiss this appeal as to this rejection.
(Rejection 20) Claims 30, 31, 33, 34, 35, 38, 39, 51, 53, 55, 58,
and 60 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over ZFL and Bjerborn. This rejection was adopted by
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the Examiner in the RAN page 100, citing the Requester’s December
28, 2012 response, pages 54–55 and Exhibit G, pages 14–17. As
claims 30, 31, 33, 34, 35, 39, 55 and 60 have been found unpatentable
under either the unappealed 35 U.S.C. § 112 and § 314 rejections, we
dismiss this appeal as to those claims of this rejection.
(Rejection 21) Claim 32 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Bjerborn, and
David. As this claim has been found unpatentable under either the
unappealed 35 U.S.C. § 112 and § 314 rejections, we dismiss this
appeal as to this rejection.
(Rejection 22) Claim 44 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Clüsserath, and
Gustafsson. As this claim has been found unpatentable under either
the unappealed 35 U.S.C. § 112 and § 314 rejections, we dismiss this
appeal as to this rejection.
(Rejection 23) Claim 45 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Lisiecki,
Hoshino, Wilcox, and Bosch. This rejection was adopted by the
Examiner in the RAN page 103, citing the Requester’s December 28,
2012 response, pages 59–60 and Exhibit G, page 22. As this claim
has been found unpatentable under either the unappealed 35 U.S.C. §
112 and § 314 rejections, we dismiss this appeal as to this rejection
(Rejection 24) Claims 46, 47, and 48 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over ZFL and Bosch.
As these claims all have been found unpatentable under either the
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unappealed 35 U.S.C. § 112 and § 314 rejections, we dismiss this
appeal as to this rejection.
(Rejection 25) Claims 50, 52, 54, 57, 59, 62, 63, 64, and 65
stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over ZFL. This rejection was adopted by the Examiner
in the RAN page 104, citing the Requester’s December 28, 2012
response, page 62 and Exhibit G, page 25. As claims 59 and 62–65
have been found unpatentable under either the unappealed 35 U.S.C. §
112 and § 314 rejections, we dismiss this appeal as to those claims of
this rejection.
In these rejections, the Examiner generally found that ZFL
describes an aseptically working plant using hydrogen peroxide
sterilant with a single conveying apparatus at maximum output of 200
bottles per minute. The additional references are cited by the
Examiner to meet certain additional limitations. Requester’s
December 28, 2012 response, pages 41–43 and Exhibit G, pages 1–3
The Appellant has addressed some general argument towards
these rejections in that it has asserted that the ZFL author,
Dr. Buchner, withheld details such that one of ordinary skill in the art
would not have a reasonable expectation of success, and only
rendered the claims obvious to try. PO Br. 16–18. We find this
argument unpersuasive for the reasons noted above.
Moreover, ZFL expressly describes dual line plants, and the
Appellant has not shown with sufficient persuasive evidence that one
of ordinary skill in the art, armed not only with their background
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knowledge of aseptic processing, but also with the specific teachings
of multi-lane machines to improve processing output, would not have
a reasonable expectation of success.
As regards Dr. Sastry’s specific testimony regarding the ZFL
description, the lack of specifics for time and temperature for
application of a sterilant (PO Br. 22 (citing Sastry ¶ 32)), we observe
that the only claims on appeal with a time limitation are claims 30, 37,
49, 56, and 61, which recite either “at least 5 seconds” to break down
the sterilant (claim 30) or “about 24 seconds” to activate and remove
the sterilant. However, only one of these claims rejected in these
rejections (claim 30) recites a time period. Claim 30 is rejected in
rejection 13 (ZFL and Gustafsson) and rejection 20 (ZFL and
Bjerborn).
ZFL describes managing conditions routinely to get the
appropriate sterilization rates. The conditions are recited on page 5 of
ZFL, reproduced below:
The sterilizing conditions such as flow velocity, temperature and
peroxide concentration, may be adapted to the requirements for
different containers. Figure 3 shows the individual treating zones
in the sterilizing machine. Very high sterilizing rates can be
achieved. In adjusting them practically, they will be reduced to
the realistic requirements in order to avoid unnecessary
consumptions so that the following minimum results will be
achieved:
- Sterilization of containers and lids: >5D
- Residual peroxide in the containers: <0.5 ppm
- Peroxide concentration in the working environment: <1
ppm
- Maximum of unsterility rate: 1: 10,000

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We disagree with the Appellant and Dr. Sastry that every detail
of these result-effective variables needs to be described in order to
give a reasonable expectation of success. We specifically disagree
with Dr. Sastry’s statement that ZFL “lacks any detail to demonstrate
how those achievements have been and could be met.” PO Br. 22
(citing Sastry Decl. ¶ 32). ZFL gives the basic machine structure in
the description and Figures 1–7 and outlines general operating
conditions.
Bjerborn describes different ventilation times for gassing,
holding, and ventilating (3 seconds, 1 second, 10 seconds) with
adjustment “in such a way that all visible condensate had evaporated.”
Bjerborn p. 5 ll. 29–31. The results were a reduction of “at least log
5.” Id. at p. 6. Dr. Sastry fails to discuss how this combination of
references would fail to inform one of ordinary skill in the art and as a
consequence his testimony remains unpersuasive.
Separately Argued Claim 52
Claim 52 depends from claim 19, and both are reproduced
below for ease of reference.
19. A method for automatically aseptically bottling
aseptically sterilized foodstuffs comprising the steps of:
providing a plurality of bottles;
aseptically disinfecting the bottles at a rate greater than
100 bottles per minute, wherein the aseptically disinfected
plurality of bottles are sterilized to a level producing at least a 6
log reduction in spore organism; and aseptically filling the
bottles with aseptically sterilized foodstuffs.

52. The method according to claim 19, wherein the
plurality of bottles are made from polyethyelene terephthalate.
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The Appellant urges that ZFL fails to describe a 6 log
reduction, and “any art” cited against claim 52 must teach a 6 log
reduction. PO Br. 33. The basis for this assertion is that ZFL’s Table
1 does not reflect the claimed subject matter because the upstream
rinser is not used when plastic bottles are being processed by the
system. PO Br. 32.
This argument lacks persuasive merit. The ZFL containers are
sterilized to a level greater than 5 log and ZFL describes target rates,
because excessive rates of sterilization (i.e. too far above 5) would
result in a waste by excess consumption.. See, e.g., Bjerborn p. 5, ll.
5–10, Armed with this teaching, we see no error in the Examiner’s
conclusion that a 6 log reduction (even on a logarithmic scale) would
have been obvious.
As a consequence, we affirm these rejections.
Claims reciting less than 0.5 PPM Residual H2O2
Although not tied to any particular rejection, the Appellant
argues that as claims 20, 21, 25, 26, 39, 55, 56, and 60 recite residual
sterilant levels of less than 0.5 ppm, the skilled artisan could not
navigate the narrow path between sterilization and residual H2O2 in
the FDA requirements. PO Br. 34–35.
In support of this contention, Appellant cites David 42–43.
Given how difficult the reference is to read in the record, we
reproduce the section cited hereinbelow:
E. Hazard Analysis Critical Control Point Approach

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The hazard analysis critical control point (HACCP)
system has been successfully applied by the FDA to the
regulation of acidified or low-acid canned foods. A recent
report by the Food and Nutrition Board Subcommittee on
Microbiological Criteria recommended the HACCP
system be applied by industry and regulatory agencies to
all U.S. food protection programs. The introduction of
UBT products, aseptically packed in containers other than
glass jars or metal cans in the United States was delayed
by several years because of the FDA’s different and more
comprehensive requirements.

[TABLE OMITTED]

It took more than 2 years for the FDA to approve
the use of hydrogen peroxide for the sterilization of
packaging materials. When the FDA finally granted the
petition for the use of hydrogen peroxide, it set maximum
residue levels at 0.5 ppm (originally it was 0.1 ppm). As
a consequence, U.S. processors must concern themselves
with maximum hydrogen peroxide levels, as well as
minimum levels, to ensure proper sterilization. The
resulting effect of these regulations is a much lower
peroxide level in the U.S. as compared to the rest of the
world, and a greater potential for the production of
defective containers due to an insufficient amount of
peroxide for proper sterilization.

We do not find that this passage supports the statement that
much of the difficulty in the industry is finding the “narrow path”
between sterility and residual requirements. This passage illustrates
that one of ordinary skill in the art was aware of the need for sufficient
sterilization, which had to be balanced against the FDA residual
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hydrogen peroxide requirements, by adjusting the known result-
effective process parameters.
Accordingly, we find this last argument unpersuasive.
Secondary Considerations
The RAN, page 33, references a discussion of secondary
considerations proffered by the Appellant during prosecution.
However, we are unable to find this issue raised and discussed in the
Appellant’s briefs. Accordingly, we deem it waived.

CONCLUSION
Having not been persuaded of error by the Examiner, we
sustain the rejections of record.

ORDER

The rejection of claims 18 and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Bosch and Krämer is affirmed.
The rejection of claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Bosch and Bjerborn is affirmed.
The rejection of claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Bosch in view of FDA Regulation 21 C.F.R.
§ 178.1005 is affirmed.
The rejection of claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Bosch, Bjerborn, and Lisiecki is affirmed.
The rejection of claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Bosch, Bjerborn, and Lisiecki is affirmed.
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The rejection of claims 1, 4, 5, 7, 8 and 10–17 under 35 U.S.C.
§ 103(a) as being unpatentable over Buchner, Campden, Gustafsson,
ZFL, and Rippen or Krämer is affirmed.
The rejection of claims 18–20 under 35 U.S.C. § 103(a) as
being unpatentable over Buchner, Campden, Gustafsson, ZFL, and
Rippen or Krämer is affirmed.
The rejection of claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Buchner, Campden, Gustafsson, ZFL, either Rippen
or Krämer, as applied to claim 5, and further in view of Miyazaki or
Willhoft is affirmed.
The rejection of claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over Buchner, Campden, Gustafsson, ZFL, and either
Rippen or Krämer, as applied to claim 5, and further in view of
Willhoft or Scholle is affirmed.
The rejection of claims 21, 24, and 25 under 35 U.S.C. § 103(a)
as being unpatentable over Buchner in view of Campden, Gustafsson,
ZFL, and either Rippen or Krämer, as applied to claim 20 above, and
further in view of Lisiecki is affirmed as to claims 21 and 24, and
dismissed as to claim 25.
The appeal of the rejection of claims 26 and 29 under 35 U.S.C.
§ 103(a) as being unpatentable over ZFL, Krämer, Lisiecki, and
Campden is dismissed.
The rejection of claims 30, 31, 33, 34, 38, and 39 under
35 U.S.C. § 103(a) as being unpatentable over Bosch, Lisiecki,
Buchner, Bjerborn, Gustafsson, and Willhoft is dismissed.
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The appeal of the rejection of claims 30, 31, 33, 34, 35, and 39
under 35 U.S.C. § 103(a) as being unpatentable over ZFL and
Gustafsson is dismissed.
The appeal of the rejection of claim 32 under 35 U.S.C.
§ 103(a) as being unpatentable over ZFL and Gustafsson, as applied to
claim 30, and further in view of David is dismissed.
The rejection of claim 21 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over ZFL, Hada, and Bjerborn is affirmed.
The rejection of claim 24 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over ZFL, Hada, Bjerborn, and Vokins is affirmed.
The appeal of the rejection of claim 25 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Gustafsson,
Clüsserath, Bjerborn, and Lisiecki is dismissed.
The appeal of the rejection of claim 26 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Bjerborn, and
Lisiecki is dismissed.
The appeal of the rejection of claim 29 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Bjerborn,
Lisiecki, and Vokins is dismissed.
The rejection of claims 30, 31, 33, 34, 35, 38, 39, 51, 53, 55,
58, and 60 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable
over ZFL and Bjerborn is affirmed as to claims 51 and 53 and
dismissed as to claims 30, 31, 33, 34, 35, 38, 39, and 60 .
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The appeal of the rejection of claim 32 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Bjerborn, and
David is dismissed.
The appeal of the rejection of claim 44 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Clüsserath, and
Gustafsson is dismissed.
The appeal of the rejection of claim 45 under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over ZFL, Lisiecki, Hoshino,
Wilcox, and Bosch is dismissed.
The appeal of the rejection of claims 46, 47, and 48 under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over ZFL and Bosch is
dismissed.
The rejection of claims 50, 52, 54, 57, 59, 62, 63, 64, and 65
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over ZFL is
affirmed as to claims 50, 52, 54, and 57, and is dismissed as to claims
59 and 62–65.
The rejection of claims 26, 29, 44–48, 60, and 64–65 under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as
failing to comply with the written description requirement is affirmed.
The rejection of claims 25–27, 29–35, 37–39, 49, 55, 56, 60,
and 61 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA),
second paragraph is affirmed.
The rejection of claims 59–63 under 35 U.S.C. § 314(a) as
enlarging the scope of the claims of the patent being reexamined is
affirmed.
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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).

AFFIRMED

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PATENT OWNER:

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
Alexandria, VA 22314

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GIBBONS P.C.
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4. Routine.
II. Nominating an opinion
A. The Board consists of administrative patent judges (judges), including a
Chief Administrative Patent Judge (Chief Judge) and four ex officio
members: the Director, the Deputy Director, the Commissioner for Patents
and the Commissioner for Trademarks (35 U.S.C. § 6(a)).
B. Any member of the Board may recommend to the Chief Judge that an
opinion, including Board decisions and orders, be designated as precedential,
informative, or representative.
C. The appellant, the patentee, a petitioner, or a third party member of the
public may, within 60 days of issuance of the opinion, request in writing that
an opinion be made precedential, by forwarding that request, along with
accompanying reasons, to the Chief Judge. Where a written request for a
precedential opinion has been received, the Chief Judge shall respond in
writing to the requester to confirm receipt of the request.
III. Precedential opinion
A. If the Chief Judge considers a nominated opinion to be an appropriate
candidate for designation as precedential, the Chief Judge will circulate the
opinion to all members of the Board. An opinion may be considered
appropriate for any reason, but particular emphasis will be placed on
opinions resolving conflicts or addressing novel questions.
B. During a stated, limited period (typically ten business days), each Board
member will be invited to vote and will have an opportunity to comment in
writing on whether the opinion should be designated as precedential. The
Chief Judge may share the comments with members of the authoring panel.
C. After the expiration of the period, if a majority of the Board's voting
members agree that the opinion should be made precedential, and after
considering the Board members' comments, the Chief Judge shall notify the
Director of the results of the voting.
D. If the Director concurs that the opinion should be designated precedential,
the Director will so notify the Chief Judge. No opinion may be precedential
without concurrency by the Director.
2 SOP 2, rev. 9
E. The opinion is then published or otherwise disseminated following notice
and opportunity for written objection afforded by 37 C.F.R. § 1.14, in those
instances in which the opinion would not otherwise be open to public
inspection. A precedential opinion is binding authority in subsequent matters
involving similar facts or issues.
F. An opinion designated as precedential under a previous version of this SOP
remains precedential unless overcome by subsequent binding authority.
G. Opinions designated as precedential shall be labeled "Precedential."
Precedential opinions shall be posted electronically on the Board’s Web page
and ordinarily will be sent to commercial reporters that routinely publish
Board opinions.
H. Any Board member may notify the Chief Judge of the member's belief that a
Board opinion designated as "Precedential" has been overcome by
subsequent binding authority. If the Chief Judge determines that the subject
Board opinion has been overcome by subsequent binding authority, the Chief
Judge shall notify the Director of the Board's determination and the basis
therefore. If the Director concurs, the Director will so notify the Chief Judge,
and the subject Board opinion shall be removed from the electronic posting
of "Precedential" opinions. A notice indicating the opinion's removal shall
be posted in its stead.
I. An opinion is not precedential simply because it has been published in a
commercial reporter, involves an expanded panel, or includes an ex officio
member on the panel. Such factors may, however, augment the
persuasiveness of the opinion.
IV. Informative opinion
A. The Chief Judge may designate any nominated opinion as informative unless
it is designated as precedential. An informative opinion is not binding
authority.
B. An opinion may be designated as informative for any reason. Considerations
include:
1. Providing Board norms on recurring issues,
2. Providing guidance on issues of first impression, and
3. Providing guidance on Board rules and practices.
3 SOP 2, rev. 9
C. Opinions designated as informative shall be labeled "Informative." The
Director shall be notified of opinions designated as informative in advance of
their publication as such. Such notification shall include a brief explanation
summarizing the relevant facts that led to the determination of the opinion as
informative. Informative opinions shall be posted electronically on the
Board's Web page and ordinarily will be sent to commercial reporters that
routinely publish Board opinions following notice and opportunity for
written objection afforded by 37 C.F.R. § 1.14, in those instances in which
the opinion would not otherwise be open to public inspection.
V. Representative opinion
A. The Chief Judge may designate any nominated opinion as representative
unless it is designated as precedential. A representative opinion is not
binding authority.
B. Representative opinions typically provide a representative sample of
outcomes on a matter. This designation is used to bring such opinions to the
attention of the public from among the numerous routine decisions issued by
the Board.
C. Representative opinions will be posted electronically on the Board's Web
page.
VI. Routine opinion
A. Every Board opinion is, by default, a routine opinion until it is designated as
precedential or informative. All final Board opinions, except those not open
to public inspection, will continue to be posted electronically (http://e-
foia.uspto.gov/Foia/PTABReadingRoom.jsp). A routine opinion is not
binding authority.
B. An opinion is binding law of the case, even if it is not designated as
precedential, informative, or representative.
4 SOP 2, rev. 9