Ex Parte Kriegel et al

Patent Trial and Appeal Board

Feb 4, 2019

13169562 (P.T.A.B. Feb. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/169,562
121055 7590
King & Spalding
1180 Peachtree Street
Atlanta, GA 30309
06/27/2011
02/06/2019
FIRST NAMED INVENTOR
Robert M. Kriegel
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
12600.105064 2167
EXAMINER
YAGER, JAMES C
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
02/06/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
atlipdocketing@kslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT M. KRIEGEL, XIAOY AN HUANG, and
MIKELL W. SCHULTHEIS
Appeal2018---004730
Application 13/169,562
Technology Center 1700
Before JEFFREY B. ROBERTSON, WESLEY B. DERRICK, and
MICHAEL G. McMANUS, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 30-36, 39, 40, 43-51, 56, 58, 59, and 61---66.
(Appeal Br. 1.) We have jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
THE INVENTION
1 This Decision includes citations to the following documents: Specification
filed June 27, 2011 ("Spec."); Non-Final Office Action dated November 9,
2016 ("Non-Final Act."); Appeal Brief filed December 11, 2017 ("Appeal
Br."); Examiner's Answer dated February 2, 2018 ("Ans."); and Reply Brief
filed April 2, 2018 ("Reply Br.").
2 Appellants identify The Coca-Cola Company as the real party in interest.
(Appeal Br. 1.)
Appeal2018---004730
Application 13/169,562
Appellants state that the invention relates to bio-based polyethylene
terephthalate polymers with a terephthalate and/or a diol component that
derives partially or totally from bio-based materials. (Spec. ,r 2.)
Claim 30 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
30. A beverage or food container comprising polyethylene
terephthalate (PET) polymer, wherein the polymer comprises a
terephthalate component and a diol component, wherein at least
ten percent of the terephthalate component derives from at least
one bio-based material and at least ten percent of the diol
component derives from at least one bio-based material.
(Appeal Br. 39, Claims Appendix.)
REJECTIONS
The Examiner rejected the claims 30-36, 39, 40, 43-51, 56, 58, 59,
and 61---66 under 35 U.S.C. § 103 as follows:
1. Claims 30-36, 39, 40, 43-51, 56, 58, and 59 as obvious over
Edwards et al. (US 6,500,890 B2, issued December 31, 2002,
"Edwards"), Binder et al. (US 2008/0103340 Al, published on
May 1, 2008, "Binder"), and Gong (US 7,385,081 Bl, issued June
10 2008 "Gong")·
' ' '
2. Claims 30-36, 39, 40, 43-51, 56, 58, and 59 as obvious over
Edwards, Purtle et al. (WO 2007 /027832 A2, published on March
8 2007 "Purtle") and Gong·
' ' ' '
3. Claims 61---66 as obvious over Smith et al. (US 4,482,586, issued
November 13, 1984, "Smith"), Binder, and Gong; and
4. Claims 61---66 as obvious over Smith, Purtle, and Gong.
(Non-Final Act. 3-19; Ans. 3-19.)
2
Appeal2018---004730
Application 13/169,562
Appellants rely also on the following evidence:
Declaration of Robert J. Schiavone dated September 16, 2016
(Schiavone Deel.).
Declaration of Michael W. Knutzen dated March 3, 2015 (Knutzen
Deel.).
Declaration of Robert M. Kriegel dated April 19, 2012 (Kriegel
Deel.).
Bonini et al., "Cultivating the Green Consumer," Stanford Social
Innovation Review (Stanford Review) (2008).
"Understanding the plastics industry: Plastics Converting in Europe,"
European Plastics Converters.
"Unwrapping the packaging industry: Seven factors for success," EY.
(EY Report).
"PepsiCo Unveils 100% Bio-Based Rival to Coke's PlantBottle,"
Press Release dated March 15, 2011, available at
http://www.environmentalleader.com/2011 /03/15/pepsico-unveils-100-bio-
based-rival-to-cokes-plantbottle/
Appellants do not argue any particular claim subject to Rejections 1-
4. (Appeal Br. 11-37.) Accordingly, we select claim 30 as representative
for disposition of this appeal. 37 C.F.R. § 4I.37(c)(l)(iv). Appellants also
argue Rejections 1--4 together. 3 (Appeal Br. 11-14, 28-36.) We also
discuss the rejections together.
3 Appellants' summary of Rejections 1--4 listed under separate headings
does not contain any arguments. (Appeal Br. 18-26.)
3
Appeal2018---004730
Application 13/169,562
ISSUE
The Examiner found that Edwards and Smith disclose polyester
bottles formed from terephthalic acid and ethylene glycol. (Non-Final Act.
4, 8, 13, and 16.) The Examiner found that Edwards and Smith do not
disclose terephthalic acid and ethylene glycol derived from at least one bio-
based material. (Non-Final Act. 4--6, 9--10, 14, and 17-18.) The Examiner
found that Binder and Purtle disclose bio-based replacement for petroleum
derived ethylene glycol and Gong discloses terephthalic acid prepared from
biomass. (Non-Final Act. 5-6, 9--11, 14--15, and 17-18.) The Examiner
determined that it would have been obvious to have replaced the ethylene
glycol in Edwards or Smith with the bio-based ethylene glycol of Binder or
Purtle "in order to provide a bottle with the advantage of reducing strain on
limited petroleum reserves and being derived at least partially from
renewable biological feedstock." (Non-Final Act. 5, 9, 14, and 17-18.) The
Examiner determined that it would have been obvious to replace the
terephthalic acid in the bottle of Edwards or Smith with the biomass based
terephthalic acid in Gong "in order to provide a bottle with the advantage of
being made from a polymer component that has less impurities and reducing
strain on limited petroleum reserves and being derived from renewable
biological feedstock." (Non-Final Act. 6-7, 11, 15, and 18.)
Appellants argue4 that one of ordinary skill in the art is a "plastics
converter," an artisan who is engaged in manufacturing food and beverage
4 In accordance with 37 C.F.R. § 4I.37(c), we only consider arguments that
are presented in the Appeal Brief, and have not considered other arguments
referred to by Appellants presented in previous responses. See MPEP
§ 1205.02. ("[37 C.F.R. § 4I.37(c)] requires that the brief must set forth
arguments and the basis therefor, with citations of the statutes, regulations,
authorities and parts of the record relied upon. It is essential that the Board
4
Appeal2018---004730
Application 13/169,562
containers from PET, whereas the Examiner's position is that one of
ordinary skill in the art is anyone interested in plastics bottle making.
(Reply Br. 4; Ans. 24.) Appellants argue that the Examiner has not
established a prima facie case of obviousness as to why one of ordinary skill
in the art, i.e., a "plastics converter," would have been motivated to use the
bio-based terephthalic acid of Gong or the bio-based ethylene glycols
disclosed in Binder or Purtle as replacements for the petroleum derived
feedstocks disclosed in Edwards or Smith. (Appeal Br. 11-12, 28-30.)
Appellants argue that one of ordinary skill in the art would not have had a
reasonable expectation of success on the basis that one of ordinary skill in
the art would have been uniquely motivated to reduce costs and bio-based
polymers were more expensive and difficult to reliably source at the time of
the invention. (Appeal Br. 13, 30-37.) Appellants argue that Gong teaches
that the impurity levels for bio-based terephthalic acid are comparable to
petroleum-based terephthalic acid, which is sufficiently pure to produce
bottles and readily available at lower cost than bio-based terephthalic acid,
such that one of ordinary skill in the art would not have been motivated to
use bio-based terephthalic acid. (Appeal Br. 14, 31-32.) Appellants
contend also that the Examiner has ignored evidence of copying. (Appeal
Br. 14, 37.)
Accordingly, the issue on appeal is:
When the evidence is considered as a whole, have Appellants
identified reversible error in the Examiner's determination that one of
be provided with a brief fully stating the position of the appellant with
respect to each ground of rejection presented for review in the appeal so that
no search of the Record is required in order to determine that position.
Thus, the brief should not incorporate or reference previous responses.")
5
Appeal2018---004730
Application 13/169,562
ordinary skill in the art would have had sufficient reason to formulate the
polyethylene terephthalate beverage or food containers disclosed in Edwards
or Smith with bio-based components as disclosed in Binder or Purtle and
Gong?
DISCUSSION
Person of Ordinary Skill in the Art
Appellants contend that one of ordinary skill in the art is "one of skill
in the art of manufacturing food and beverage containers from PET" or a
"plastics converter," one who would have been uniquely motivated to reduce
cost of production beyond a general desire to reduce costs common to any
business. (Appeal Br. 13; Reply Br. 4.) The Examiner's position is that one
of ordinary skill in the art "is broadly anyone interested in plastic bottle
making not only a 'plastics converter"'. (Ans. 24.) According to
Appellants, raw material providers sell feedstocks (monomers) to resin
suppliers, who use them to produce plastic resins for sale to converters, who
in tum use the resins in a wide variety of plastic products for sale to their
customers. (Knutzen Deel. ,r 9.) For this reason, Appellants contend that
one of ordinary skill in the art is a businessman and that this case is not
analogous to In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) ("That a
given combination would not be made by businessmen for economic reasons
does not mean that persons skilled in the art would not make the
combination because of some technological incompatibility. Only the latter
fact would be relevant.") (See Appeal Br. 35.) Appellants contend that "a
person of ordinary skill in the art is not always an academic or esoteric sort,
divorced from the reality of the commercial landscape." (Appeal Br. 35; see
Schiavone Deel. ,r,r 10-11; Knutzen Deel. ,r,r 9-14; Kriegel Deel. ,r,r 9-11.)
6
Appeal2018---004730
Application 13/169,562
We are not persuaded by Appellants' arguments. Appellants have not
identified any technical feasibility issues with respect to the combination of
prior art set forth by the Examiner, only economic factors. It is well settled
that such economic consideration are not relevant to the obviousness inquiry.
Farrenkopf, 713 F.2d at 718; Orthopedic Equipment Co., Inc. v. US., 702
F.2d 1005, 1013 (Fed. Cir. 1983) ("the fact that the two disclosed apparatus
would not be combined by businessmen for economic reasons is not the
same as saying that it could not be done because skilled persons in the art
felt that there was some technological incompatibility that prevented their
combination. Only the latter fact is telling on the issue of nonobviousness. ").
We do not agree that the economic considerations identified by
Appellants are so "unique" that it would affect the pursuits of one of
ordinary skill in the art in producing polyester plastic bottles. (Appeal Br.
13, 29-30.) In this regard, although Appellants argue that six of seven
factors for success in the plastics industry identified in the EY Report are
focused on reduced cost, Appellants do acknowledge that the innovation
factor is not related to cost. (Appeal Br. 29-30; see EY Report, p. 2.) While
Appellants contend that there is no mention of a package's environmental
profile with respect to innovation (Appeal Br. 30), the EY Report cited by
Appellants clearly discloses that innovation involves the use of "new
materials." (EY Report, p. 13.) In the instant case, such new materials are
the particular ethylene glycols and terephthalic acids that are the subject of
Binder, Purtle, and Gong. We also observe that neither Edwards nor Smith
discusses costs of the terephthalic acid and ethylene glycol components used
to produce the polyester bottles disclosed therein, but rather are concerned
with specific properties of the bottles formed therefrom. (Edwards, col. 1,
11. 15-18; Smith col. 5, 11. 10-25.)
7
Appeal2018---004730
Application 13/169,562
In addition, as discussed further below, even if we were to agree with
Appellants that cost of bio-based components would be an important factor
in producing polyester bottles, Appellants have not addressed the effect of
the potential benefits of using such components, which would also be a part
of the "reality of the commercial landscape" advocated by Appellants as
relevant to one of ordinary skill in the art.
Thus, while we agree with Appellants that one of ordinary skill in the
art is "one of skill in the art of manufacturing food and beverage containers
from PET," we disagree that such a person would have been a businessman
that would have put cost ahead of innovation without considering the
potential benefits of the innovation.
Reason to Combine
We are not persuaded that the Examiner has failed to provide
sufficient evidence to support the combinations of prior art set forth in the
rejection. The prior art cited provides ample support for the Examiner's
reasoning. In particular, Gong discloses the production of terephthalic acid
used in bottles in other packaging materials using "an abundant untapped
supply of biomass carbohydrates, which can potentially be used for the
production of non-petroleum based commodity chemicals that are fully
renewable." (Col. 2, 11. 55-58.) Purtle discloses the production of ethylene
glycol "in an economic and environmentally friendly way." (Purtle, p. 1, 11.
4---6.) Binder discloses that "Biology offers an attractive alternative for
industrial manufacturers looking to reduce or replace their reliance on
petrochemicals and petroleum derived products ... products and feedstocks
from biological sources are typically a renewable resource." (Binder, ,r 9.)
Binder also discloses that "companies may benefit from marketing
8
Appeal2018---004730
Application 13/169,562
advantages associated with bio-derived products from renewable resources
in the view of a public becoming more concerned with the supply of
petrochemicals." (Id.) Indeed, this appears to be the very benefit realized
by Appellants. (Kriegel Deel. ,r 13.) Thus, Appellants' contentions that one
of ordinary skill in the art would not have combined the prior art due to
increases in costs and because consumers are not interested in environmental
considerations when cost is an issue are belied not only by the prior art of
record, but also by Appellants' evidence. Moreover, while Appellants assert
that one of ordinary skill in the art would not have used bio-based
components because of cost and sourcing issues, Appellants do not
meaningfully address the expected benefits as disclosed by the prior art for
the use of renewable resource, which support the Examiner's position that
the benefits of using such sources outweigh the cost.
In this regard, the evidence cited by Appellants indicates that with
respect to packaging producers, factors such as the use of new materials and
consumer trends are important. (EY Report, p. 13, 14.) In addition,
regarding Appellants' argument that consumers are not willing to pay more
with respect to environmentally friendly goods, the evidence discloses that
companies play an important role in driving consumer behavior, and can
reap multiple benefits including enhancing their brands and increasing their
revenue. (Stanford Review, pp. 56-57.)
Even assuming, as Appellants suggest, that cost is a factor for one of
ordinary skill in the art, one of ordinary skill would not only consider costs,
but would also consider aspects of using the bio-based components of
Binder or Purtle, and Gong in producing plastic bottles that are beneficial,
which would provide a reason to use such components as sources for
producing the polyethylene terephthalate bottles in Edwards or Smith. The
9
Appeal2018---004730
Application 13/169,562
declaration evidence does not address these disclosures, and does not
provide persuasive evidence that one of ordinary skill in the art would not
have had a reasonable expectation of success in combining the prior art as
indicated by the Examiner.
We are also not persuaded by Appellants' arguments with respect to
the purity of petroleum based terephthalic acid and the terephthalic acid
disclosed in Gong being comparable and that conventional terephthalic acid
was sufficiently pure to make bottles. (Appeal Br. 12.) Gong discloses that
use of such processes "reduces or eliminates the production of impurities ...
[ and] also eliminates the need for the purification step in current commercial
processes. It would also be desirable if the alternative feedstock utilized in
the process was derived from biomass." (Col. 2, 11. 59-67, see also col. 4, 11.
1-10.) According to Gong, these considerations are important in polyesters
used for bottles, because impurities "are known to cause or correlate with
color formation in polyesters made from the acids and, in tum off-color in
polyester converted products." (Col. 2, 11. 6-9.) Appellants do not address
these improvements disclosed in Gong, which support the Examiner's
reasoning for combining Gong with Edwards or Smith. (See Ans. 10-11,
20.)
Secondary Considerations/Copying
We agree with the Examiner that Appellants have not produced
sufficient evidence of copying on the part of PepsiCo. The mere fact of
copying is insufficient to make the action significant in an obviousness
analysis. Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1027
(Fed. Cir. 1985), overruled on other grounds by, Midwest Indus., Inc. v.
Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed. Cir. 1999) (en bane).
"Our case law holds that copying requires evidence of efforts to replicate a
10
Appeal2018---004730
Application 13/169,562
specific product, which may be demonstrated through internal company
documents, direct evidence such as disassembling a patented prototype,
photographing its features, and using the photograph as a blueprint to build a
replica, or access to the patented product combined with substantial
similarity to the patented product." Zup, LLC v. Nash Manufacturing, Inc.,
896 F.3d 1365, 1375 (Fed Cir. 2018) quoting Wyers v. Master Lock Co., 616
F.3d 1231, 1246 (Fed. Cir. 2010). The considerations cited by Appellants of
significant investment in its own portfolio and defending against
infringement suits are not sufficient to support the allegations of copying
raised by Appellants. (Appeal Br. 37 .)
DECISION
We affirm the Examiner's decision rejecting claims 30-36, 39, 40,
43-51, 56, 58, 59, and 61---66.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
11