Ex Parte Van Der Straaten

Patent Trial and Appeal Board

Jul 14, 2017

12162289 (P.T.A.B. Jul. 14, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/162,289 02/26/2009 Jan Cornelis Van Der Straaten ARSI-041 9697
24353 7590 07/18/2017
BOZICEVIC, FIELD & FRANCIS LLP
Bozicevic, Field & Francis
201 REDWOOD SHORES PARKWAY
SUITE 200
REDWOOD CITY, CA 94065
EXAMINER
WEISS, NICHOLAS J
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
07/18/2017 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):
docket@bozpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN CORNELIS VAN DER STRAATEN
Appeal 2016-001035
Application 12/162,289
Technology Center 3700
Before STEVEN D.A. McCARTHY, ANNETTE R. REIMERS and
BRENT M. DOUGAL, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
1 The Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
2 decision finally rejecting claims 25—28 and 35—41 under pre-AIA 35 U.S.C.
3 § 103(a) as being unpatentable over Ejeblad (US 7,775,716 B2, issued Aug.
4 17, 2010), Sparks (US 3,553,070, issued Jan. 5, 1971) and Macleod (US
5 2007/0272711 Al, publ. Nov. 29, 2007). We have jurisdiction under 35
6 U.S.C. § 6(b).
7 We REVERSE.
8 The claims are directed to piping bags for applying foodstuffs, such as
9 whipped cream, to substrates, such as cake layers. (See Spec. 1,11. 1—3 &
1 The Appellant identifies the real party in interest as Reynards
International Holding B.V. of Breda, Netherlands. (App. Br. 2).
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Application 12/162,289
10-12; Spec. 12,11. 31 & 32). The Specification teaches that one problem
with prior art piping bags was that such bags had relatively smooth surfaces
and might slip from a user’s grip during use. (See Spec. 1,11. 14—28). The
Appellant addresses this problem by providing a rubber composition on the
outside of the bag. (See Spec. 2,11. 17—19). The Specification teaches that:
The use of the rubber composition on an outer side results in an
increase in the grip options due to the specific properties of
rubber, particularly in respect of the use of the piping bag in the
food industry. Foodstuffs often have a high fat content. The
rubber composition has, up to a certain point, an absorbing
capacity for such fatty substances, whereby the grip is not
reduced, or hardly so, when the piping bag comes into contact
with the fatty substance. In an environment with water the rubber
outer side will also display more grip than a known outer side.
(Spec. 2,1. 32-3,1. 7).
Claims 25, 35 and 41 are independent. Independent claims 25 and 41
are representative for purposes of the rejection under review in this appeal:
25. A piping bag, comprising:
a bag body comprised of an outer layer and an inner
layer mutually connected by co-extrusion, said inner layer
comprised of a polyolefin and said outer layer of a thermoplastic
elastomer;
a filling opening formed by the bag body;
a dispensing end opposite the filling opening;
wherein said outer layer is comprised of an elastomer
having a density in a range of 0.87 gr/cm3 to 1.15 gr/cm3 and a
Shore A hardness of 55 to 75, the elastomer chosen from the
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Appeal 2016-001035
Application 12/162,289
group consisting of thermoplastic vulcanizates (TPV) and
thermoplastic olefins (TPO).2
41. A piping bag for applying a foodstuff to a substrate,
comprising:
a tubular bag of polymeric foil material with an inner layer
and an outer layer, the bag comprising a filling opening and a
dispensing end, wherein a portion of the outer layer of the tubular
bag comprises a rubber composition located to improve grip for
a user of the piping bag during application of foodstuff to a
substrate;
wherein the rubber composition is fixedly connected to the
polymeric foil by means of co-extrusion during the formation of
the tubular bag;
wherein the rubber composition comprises a thermoplastic
elastomer selected from the group consisting of styrene-based
elastomers, thermoplastic vulcanizate elastomers (TPVs), and
thermoplastic polyolefin elastomers (TPOs);
wherein the rubber composition has a density of 0.88—1.00
g/cm3 and a Shore A hardness of 55 to 75; and
wherein the rubber composition is selected from the group
consisting of styrene-ethylene/butylene-styrene (SEBS),
2 Claim 26 recites the “piping bag of claim 25, wherein said outer layer
is comprised of an elastomer chosen from the group consisting of styrene-
ethylene/butylene-styrene (SEBS), styrene-ethylene/propylene-styrene,
styrene butylene styrene (SBS), and styrene isopropylene styrene (SIS).”
Claim 27 recites the “piping bag of claim 25, wherein said outer layer is
comprised of an elastomer chosen from the group consisting of
thermoplastic vulcanizates (TPV) and thermoplastic olefins (TPO).” The
Appellant has not suggested that these categories overlap. Should the
application underlying this appeal be prosecuted further, the Examiner may
consider whether claim 26 is indefinite per pre-AIA 35 U.S.C. § 112, second
paragraph, for being inconsistent with the last Markush grouping; and
whether claim 27 fails to specify a further limitation of the subject matter
claimed in parent claim 25, per 35 U.S.C. § 112, fourth paragraph.
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styrene-ethylene/propylene-styrene, styrene butylene styrene
(SBS), and styrene isopropylene styrene (SIS).
Ejeblad describes a disposable piping bag 1 for dispensing a flowable
paste 3 such as whipped cream, marzipan, dough, cream cheese or sugar
paste. (See Ejeblad, col. 1,11. 22—25; col. 2,11. 41—43 & Fig. 1). Ejeblad
teaches that a “problem associated with prior art disposable piping bags is
that the piping bag can be difficult to handle both during manufacturing and
in connection with the dispensing operation.” (Ejeblad, col. 1,11. 36—39).
Ejeblad addresses this problem by providing the bag with three-dimensional
surface structure that “reduces the risk of [the bag] slipping from the user’s
grip, especially if the user’s hand, which may be fitted with a glove, is wet
or smeared with, for example, oil or grease.” (Ejeblad, col. 1,1. 64 — col. 2,
1. 2).
More specifically, Ejeblad teaches fabricating the piping bag from a
polymer tube having plural polymer layers laminated by co-extrusion. (See
Ejeblad, col. 3,11. 42, 43 & 50-52):
A polymer tube of this kind may have a plurality of layers having
different functions, for instance an inner layer intended to
facilitate the feeding of flowable paste and prevent said paste
from adhering to the inner walls of the piping bag and intended
to facilitate the introduction of [a] nozzle 2; a gas-tight layer, a
supporting layer and/or an outer grip-enhancing layer.
(Ejebald, col. 3,11. 43—50). For example, Ejeblad teaches forming a grip­
enhancing surface structure for a piping bag by adding an expanding agent
to the material used to form the outer layer of the polymer tube and then
heating the tube to yield an open-cell foam structure in the outer layer. (See
Ejeblad, col. 3,1. 61 — col. 4,1. 4 & Fig. 7).
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Sparks describes using a polymeric laminar material comprising an
inner layer of a lower mono-olefmic polymer and an outer layer of foamed
ethylene-vinyl acetate (“EVA”) copolymer to fabricate heavy-duty bags for
grain, feed, cement and the like. (See Sparks, col. 1,11. 26—36 & col. 2,11.
16—33). Sparks teaches producing the multilayer polymeric film-foam
laminate by “coextrusion of the respective laminar layers, in a molten state,
through a single die outlet orifice.” (Sparks, col. 3,11. 48—52). Preferred
foamed EVA copolymer materials contain approximately 18 wt%-20 wt%
vinyl acetate and have a density of about 0.943 g/cm3. (See Sparks, col. 5,11.
33—38). We may take Official Notice that a foamed ethylene-vinyl acetate
copolymer having a weight percentage of vinyl acetate in this range is
elastomeric. Nevertheless, Sparks does not appear to provide any reason
why a density of about 0.943 g/cm3 might be desirable. Sparks teaches that
the foamed ethylene-vinyl acetate outer layer provides slip or skid resistance
that facilitates stacking of the bags for storage and transport. (See Sparks,
col. 1,11. 29-45 & col. 2,11. 33-38).
Sparks teaches foaming the EVA copolymer in the outer layer of the
laminar material by adding an expanding agent to the material used to form
the outer layer of the laminar material. The expanding agent breaks down
due to the heat within the extruder and its die elements, so as to yield an
open-celled foam structure in the outer layer. (See Sparks, col. 4,11. 36—57).
In other words, Sparks’ laminar material has an outer layer comprising an
open-celled foam material similar in structure to the outer layer of the
polymer tube used to fabricate the piping bag of Ejeblad discussed above.
The Appellant argues that “Sparks does not take into consideration the
need for hygiene in connection with piping bags. The ability to readily clean
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the surface of piping bags and eliminate bacteria is critical. However, the
surfaces taught by Sparks include crater-like indentations making it very
difficult to eliminate bacteria.” (Reply Br. 9).
This argument is not persuasive. The Appellant has not identified any
language of the claim that would not allow the piping bag to be single-use,
or that would require “[t]he ability to readily clean the surface of piping bags
[or] eliminate bacteria.” (Reply Br. 9). In addition to this, as pointed out
earlier, Sparks’ laminar material has an outer layer comprising an open-
celled foam material similar in structure to the outer layer of the polymer
tube used to fabricate the piping bag described in column 3, line 61 through
column 4, line 4, and Figure 7, of Ejeblad. Ejeblad’s suggestion to fabricate
a piping bag from a polymer tube having an outer layer comprising an open-
celled, foamed material that implies that the similar material described by
Sparks also may be used to fabricate a piping bag.
Indeed, the similarity between the tubular polymeric laminar material
described by Sparks and the polymer tube material described by Ejeblad at
column 3, line 61 through column 4, line 4, and Figure 7, along with Sparks’
teachings that the outer layer of Sparks’ polymeric laminar material provides
slip or skid resistance (see Sparks, col. 1,11. 29-45 & col. 2,11. 33—38),
would have provided one of ordinary skill in the art reason to fabricate a
piping bag from Spark’s polymeric laminar material as a means to address
the difficulty in handling piping bags during manufacture and subsequent
use (see Ejeblad, col. 1,11. 36—39). As the Examiner concludes, it would
have been obvious “to modify the outer layer of Ejeblad with the outer layer
of Sparks, since this would have been a use of [a] known technique to
improve similar devices (multi-layer bags) in the same way.” (Final Act. 3).
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The piping bag resulting from the substitution would have differed
from those recited in independent claims 25, 35 and 41 in two significant
ways, however. First, we may take Official Notice that EVA is not a
thermoplastic vulcanizate (“TPV”) or a thermoplastic olefin (“TPO”), as
recited in claims 25 and 35. Neither is it a styrene-based elastomer as
recited in claim 41. Second, nothing in Ejeblad or Sparks suggests that the
elastomer comprising the outer layer should have a hardness between 55 and
75 Shore A, as recited in each independent claim. (See Reply Br. 11).
Macleod describes a container for dispensing an extrudable viscous
fluid such as toothpaste. (See Macleod, paras. 8 & 14). The container has a
container wall comprising an elastomeric material. (See Macleod, para. 9).
Macleod’s container is intended, at least in part, to address the unsightliness
of collapsible tubes commonly used to package toothpaste. (See Macleod,
paras. 3 & 4). The preferred elastomeric material is:
suitably elastically deformable inwardly by applied external
hand pressure to thereby reduce the internal volume of the
container, and resilient to return to its original shape and volume
on removal of the external pressure, whilst at the same time
sufficiently robust that it can retain its shape whilst resting on a
hard surface without deformation under the weight of the
container wall and the said contents.
(Macleod, para. 19). Macleod teaches that a suitable elastomer material may
be multilayered, including specifically an inner layer and an outer layer.
(See Macleod, para. 22). Macleod teaches fabricating such multilayered
materials by coextrusion blow molding, “in which two or more materials are
simultaneously extruded to form a tubular parison, then blown into the final
container shape.” (Macleod, para. 26).
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Macleod describes the class of “[sjuitable elastomer materials for use
as the material of the container wall polymer” as including either SEBS
copolymer or a TPV. (Macleod, para. 27). In addition, Macleod teaches
that suitable elastomeric materials are smooth to the touch and have
hardnesses in the range of 30 Shore A to 75 Shore D.3 (See Macleod, para.
28).
The Examiner concludes that:
It would have merely taken routine skill in the art to use [SEBS
copolymer or a TPV to fabricate the outer layer] at the time of
the invention. Furthermore, it would have been obvious ... to
have an elastomer having a Shore A hardness in a range of 55 to
75, since where the general conditions of the claim are disclosed
in the prior art, discovering the optimum of workable ranges
involves only routine skill in the art (Sparks teaches the tacky
nature of the thermoplastic—column 2,11. 41 44).
(Final Act. 3 & 4). There are two problems with this rationale.
First, the Examiner has not shown that it would have taken no more
than routine skill in the art to use SEBS copolymer or a TPV to fabricate the
outer layer of a piping bag. The combined teachings of Ejeblad and Sparks
would have suggested forming the outer layer of a laminate material used to
fabricate a piping bag from a foamed EVA material in order to provide slip
3 We take Official Notice that there is a distinction between Shore A
hardness and Shore D hardness. Both types of hardness are measured by
measuring the depths to which probes of standard shape, pressed at standard
pressures, indent a surface of the measured material. Shore A and Shore D
hardness are measured using probes of different standard shapes, however.
As a result, Shore A values are higher for the same materials than Shore D
values. For example, the hardness of a material exhibiting a 75 Shore D
durometer would be too hard to measure reliably using a Shore A probe.
The ranges of hardness recited in claims 25 and 41 fall entirely within
Macleod’s range.
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Application 12/162,289
or skid resistance facilitating a user’s grip on the bag. The Examiner has
cited no evidence that either SEBS copolymer or a TPV necessarily would
possess similar slip or skid resistance. Indeed, Macleod teaches that the
surface of a container fabricated from either SEBS copolymer or a TPV in
accordance with Macleod’s teachings is “smooth to the touch” (see Macleod,
para. 28), suggesting that the surface of such a container might lack slip or
skid resistance. The only suggestion in the record that either SEBS
copolymer or a TPV might provide suitable slip or skid resistance comes
from the Appellant’s disclosure, indicating that the proposed substitution
relies on impermissible hindsight. (See Reply Br. 14 & 15).
Second, had one of ordinary skill in the art substituted SEBS
copolymer or a TPV for the foamed EVA described by Sparks, there would
have been no apparent reason to substitute SEBS copolymer or a TPV
having a density in the range recited in claim 25, 35 or 41. Sparks does not
provide a reason why EVA having a density of 0.943 g/cm3 was selected for
its Example E (See generally Sparks, col. 5,11. 28—51). The Examiner has
not articulated a persuasive reason why one of ordinary skill in the art
substituting SEBS copolymer or a TPV for Sparks’ EVA would have
selected either an SEBS copolymer or a TPV having the same density as
Sparks’ preferred EVA.
Therefore, the Examiner has not articulated a prima facie case that the
subject matter of claims 25—28 and 35—41 would have been obvious from
the combined teachings of Ejeblad, Sparks and Macleod.
Although the Examiner has not articulated a prima facie case, we
briefly address the Appellant’s objective evidence so as to provide a
complete review of the record in this appeal. The named inventor, Jan
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Comelis Van Der Straaten, executed a declaration of record in this appeal.
(See “Declaration under 37 C.F.R. § 1.132,” executed October 22, 2013
(“Van Der Straaten Decl.”), Exh. 7 to the Appeal Br.).4 Mr. Van Der
Straaten testifies to revenues generated by One Way Plastics B.V., a
subsidiary of the real party in interest, from the sale of COMFORT5 piping
bags during the period from 2009 to 2013. Mr. Van Der Straaten compares
these revenues to those generated by the sale of a different piping bag having
an outer surface comprising a tacky, very low density polyethylene. (See
generally Van Der Straaten Deck, paras. 7—11). In addition, Mr. Van Der
Straaten testifies that “One Way Plastics was voted as one of the Top 100
Most Innovative Companies in the Netherlands in 2009.” (Van Der Straaten
Deck, para. 12).
The revenue growth to which Mr. Van Der Straaten testifies is not
significantly probative of either commercial success or nonobviousness. Mr.
Van Der Straaten’s testimony does not establish that the COMFORT piping
bags embody the subject matter of the appealed claims. As such, the
testimony does not demonstrate that any commercial success was due to the
claimed subject matter. (See Office Act., mailed Dec. 5, 2013, at 7 & 8
(finding no nexus between the revenues and the claimed subject matter)).
4 Citations to paragraph numbers in Mr. Van Der Straaten’s declaration
will be to paragraphs in the “Opinion” section of the declaration, unless
otherwise noted.
5 It is not clear from Mr. Van Der Straaten’s testimony whether One
Way Plastics uses “Comfort” as a product designator or as a laudatory
description of its product. (See Van Der Straaten Deck, para. 2). This
opinion will place the word “Comfort” in all capital letters so as not to
suggest disrespect for any proprietary rights One Way Plastics or its parent
legitimately may claim in the word.
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Even if the testimony adequately linked the revenue growth with the claimed
subject matter, the comparison between the revenue growth experienced by
the two products marketed by One Way Plastics, while suggestive, does not
demonstrate success against competing products in the market for piping
bags, or in any sub-market in which COMFORT piping bags may be sold.
Mr. Van Der Straaten’s testimony that “One Way Plastics was voted as one
of the Top 100 Most Innovative Companies in the Netherlands in 2009”
(Van Der Straaten Decl., para. 12), without more detail as to who voted or
why they voted as they did, is not significantly probative of nonobviousness.
As stated earlier, the Examiner has not articulated a prima facie case
that the subject matter of claims 25—28 and 35—41 would have been obvious
from the combined teachings of Ejeblad, Sparks and Macleod. Considering
the record as a whole, including both the teachings of the references and the
objective evidence, we are not persuaded to sustain the Examiner’s rejection
of claims 25—28 and 35—41 under § 103(a) as being unpatentable over
Ejeblad, Sparks and Macleod.
DECISION
We REVERSE the Examiner’s decision rejecting claims 25—28 and
35—41.
REVERSED
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