PLASTIPAK PACKAGING, INC.

Patent Trials and Appeals Board

Oct 6, 2021

2020004524 (P.T.A.B. Oct. 6, 2021)

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.
14/466,717 08/22/2014 Shenshen Li 03371.0012U1- 5151
23859 7590 10/06/2021
BALLARD SPAHR LLP
SUITE 1600
999 PEACHTREE STREET
ATLANTA, GA 30309-4421
EXAMINER
DIAZ, MATTHEW R
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
10/06/2021 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):
USpatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHENSHEN LI, MATT DAUZVARDIS, and RICHARD HOCH
____________

Appeal 2020-004524
Application 14/466,717
Technology Center 1700
____________

Before TERRY J. OWENS, JULIA HEANEY, and JANE E. INGLESE,
Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1, 3–6, 8, 15, 17–20, 22–24, and 27.2,3 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Plastipak Packaging, Inc. as the real party in interest.
Appeal Brief filed December 2, 2019 (“Appeal Br.”), 2.
2 Non-Final Office Action entered June 24, 2019 (“Non-Final Act.”), 1.
3 Although the Examiner lists claims 28–31 as pending in the application
and as rejected under 35 U.S.C. §§ 102(a)(1) and 103 (Non-Final Act. 1, 5,
10), Appellant cancelled these claims in an amendment filed November 21,
2019, and the Examiner confirmed entry of the amendments in an Advisory
Action entered December 2, 2019.
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CLAIMED SUBJECT MATTER
Appellant claims an oxygen scavenging master batch composition
(independent claim 1), and a method of making an oxygen scavenging
master batch composition (independent claim 15). Claims 1 and 15 illustrate
the subject matter on appeal, and read as follows:
1. An oxygen scavenging master batch composition
consisting of:
(a) a transition metal compound; and
(b) an oxygen scavenger compound;
wherein the transition metal compound is present in an
amount greater than about 500 ppm (by metal) based on the
total weight of the oxygen scavenging master batch
composition.

15. A method of making an oxygen scavenging master batch
composition comprising the step of combining:
(a) a transition metal compound; and
(b) an oxygen scavenger compound;
under conditions effective to provide an oxygen
scavenging master batch composition;
wherein the transition metal compound is present in an
amount greater than about 500 ppm (by metal) weight
percent based on the weight of the oxygen scavenging
master batch composition, and
wherein the oxygen scavenging master batch composition
consists of the transition metal compound and the oxygen
scavenger compound.

Appeal Br. 12, 14 (Claims Appendix) (emphasis added).
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REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered March 30, 2020 (“Ans.”):
I. Claims 1, 3–6, 15, 17–20, 22–24, and 27 under 35 U.S.C.
§ 102(a)(1) as anticipated by Deshpande;4
II. Claim 8 under 35 U.S.C. § 103 as unpatentable over
Deshpande; and
III. Claims 1, 3, 4, 15, 17, 18, 22–24, and 27 under 35 U.S.C. § 103
as unpatentable over Speer.5
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 1, 3, 4, 15, 17, 18, 22–24, and 27 under 35 U.S.C. § 103 as
unpatentable over Speer (Rejection III), for reasons set forth in the Non-
Final Action, the Answer, and below, and we reverse the Examiner’s
rejection of claims 1, 3–6, 15, 17–20, 22–24, and 27 under 35 U.S.C.
§ 102(a)(1) as anticipated by Deshpande (Rejection I), and rejection of claim
8 under 35 U.S.C. § 103 as unpatentable over Deshpande (Rejection II), for
reasons set forth in the Appeal and Reply Briefs, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had

4 US 7,691,290 B2, issued April 6, 2010.
5 US 5,211,875, issued May 18, 1993.
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failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Rejection I
We turn first to the Examiner’s rejection of claims 1, 3–6, 15, 17–20,
22–24, and 27 under 35 U.S.C. § 102(a)(1) as anticipated by Deshpande.
We need address only independent claims 1 and 15, which both recite an
oxygen scavenging master batch composition consisting of a transition metal
compound and an oxygen scavenger compound.
The Examiner finds that Deshpande discloses an oxygen scavenging
master batch composition that includes only (“consists of”) a transition
metal and an oxidizable organic compound (oxygen scavenger compound).
Non-Final Act. 5–6. In so finding, the Examiner interprets Deshpande’s
disclosure that “the [transition] metal may be present in a concentrate or
carrier with the oxidizable organic component,” as “mean[ing] the transition
metal is present in one of the following two alternative embodiments: 1) in a
concentrate with the oxidizable organic component (i.e., a concentrate
consisting of a transition metal compound and an oxidizable organic
component), or 2) in a carrier with the oxidizable organic component.”
Ans. 11 (emphasis omitted) (citing Deshpande col. 9, ll. 45–46). The
Examiner finds that the first alternative “directly anticipates the claimed
oxygen scavenging master batch composition consisting of a transition metal
compound and an oxygen scavenger compound” because “[a] concentrate of
only the transition metal and oxidizable organic component . . . consists of a
transition metal compound and an oxygen scavenger compound, and is free
of/does not comprise any of a polymer, binder or carrier.” Ans. 11.
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On the record before us, however, the Examiner does not provide a
sufficient factual basis to establish that Deshpande discloses an oxygen-
scavenging master batch composition that contains only a transition metal
compound and an oxygen scavenger compound, as required by claims 1 and
15, for reasons expressed by Appellant and discussed below.
Deshpande discloses a composition used “in the construction of
packaging for oxygen sensitive materials.” Deshpande col. 1, ll. 13–17.
Deshpande repeatedly and consistently indicates that the composition
comprises a base polymer, an oxidizable organic component, and a transition
metal. Deshpande col. 1, ll. 13–15 (“[t]he present invention relates to
substantially transparent compositions that comprise a base polymer, an
oxidizable organic component, and a transition metal”); col. 1, l. 64–col. 2, l.
47 (“[t]he invention relates to a composition which comprises: (a) at least
one base polymer; (b) at least one non-polymeric oxidizable organic
component . . . ; and (c) at least one transition metal”); col. 5, ll. 61–64 (“the
invention concerns compositions that contain a base polymer, a transition
metal in a positive oxygen state, and at least one non-polymeric oxidizable
organic component”); col. 8, ll. 27–28; col. 9, ll. 10–11, 63–64
(“[c]ompositions of the instant invention comprise a base polymer” in
addition to a transition metal and an oxidizable organic component).
Deshpande defines a “master batch” as “a mixture of base polymer,
oxidizable organic component, and transition metal that will be diluted,
typically with at least additional base polymer, prior to forming an article.”
Deshpande col. 14, ll. 23–26. And Deshpande discloses that “[t]he instant
compositions can be made by mixing a base polymer (PET, for example)
with the oxidizable organic component and the transition metal
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composition,” and the resulting composition can be melt processed to form
an article, using techniques such as injection molding, stretch blow molding,
extrusion, thermoforming, and extrusion blow molding. Deshpande col. 11,
ll. 64–66; col. 13, ll. 33–36.
The disclosure in Deshpande relied upon by the Examiner (discussed
above) occurs in the context of Deshpande’s description of the transition
metal component of Deshpande’s composition, and states in its entirety:
The transition metal or metals may be added neat or in a carrier
(such as a liquid or wax) to an extruder or other device for
making the article, or the metal may be present in a concentrate
or carrier with the oxidizable organic component, in a
concentrate or carrier with a base polymer, or in a concentrate
or carrier with a base polymer/oxidizable organic component
blend.

Deshpande col. 9, ll. 43–49.
Although, as discussed above, the Examiner determines that “[a]
concentrate of only the transition metal and oxidizable organic component
. . . consists of a transition metal compound and an oxygen scavenger
compound, and is free of/does not comprise any of a polymer, binder or
carrier,” the Examiner does not identify any disclosure in Deshpande that
defines a “concentrate,” or that indicates what is, and is not, included in a
“concentrate.” Ans. 11. Nor does the Examiner identify any actual
disclosure in Deshpande indicating that the relied-upon “concentrate”
includes only the transition metal and oxidizable organic component. The
Examiner’s finding to this effect, therefore, appears to be based on improper
speculation. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent
Office . . . may not . . . resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.”).
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One of ordinary skill in the art reasonably could interpret Deshpande’s
disclosure that “the metal may be present in a concentrate . . . with the
oxidizable organic component” as indicating that the metal is present in
concentrated form in some sort of vehicle with the oxidizable organic
component. Alternatively, one of ordinary skill in the art reasonably could
interpret this disclosure in accordance with the Examiner’s view to indicate
that only the metal and oxidizable organic component, and no additional
components, are included in the “concentrate.” But because the Examiner
does not identify any disclosure in Deshpande establishing the meaning of a
“concentrate” as the term is used in the reference, the Examiner does not
show that the relied-upon portion of Deshpande discloses that only the
transition metal and oxidizable organic component are present in the
concentrate. Consequently, on the record before us, the Examiner does not
provide a sufficient factual basis to establish that Deshpande discloses an
oxygen scavenging master batch composition that contains only a transition
metal compound and an oxygen scavenger compound, as required by
independent claims 1 and 15.
We, accordingly, do not sustain the Examiner’s rejection of claims 1,
3–6, 15, 17–20, 22–24, and 27 under 35 U.S.C. § 102(a)(1) as anticipated by
Deshpande.
Rejection II
We turn now to the Examiner’s rejection of claim 8 under 35 U.S.C.
§ 103 as unpatentable over Deshpande.
Claim 8 depends from claim 1. We do not sustain this rejection
because it suffers from at least the same reversible error as the Examiner’s
rejection of claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by
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Deshpande, discussed above. Non-Final Act. 9–10 (“Deshpande teaches an
oxygen scavenging master batch composition consisting of a transition metal
compound and an oxygen scavenger compound”).
Rejection III
Finally, we turn to the Examiner’s rejection of claims 1, 3, 4, 15, 17,
18, 22–24, and 27 under 35 U.S.C. § 103 as unpatentable over Speer.
Appellant argues the rejected claims as a group. Appeal Br. 7–10.
We, therefore, select claim 1 as representative, and the remaining claims
subject to this rejection stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
Speer discloses an oxygen-scavenging composition and method that
allow oxygen-scavenging properties of an oxygen scavenger to be
controlled, so as to permit on-demand initiation of oxygen scavenging.
Speer col. 2, ll. 40–44. Speer discloses that the composition comprises an
oxidizable organic compound and a transition metal catalyst. Speer col. 2,
ll. 54–56. Speer discloses incorporating the composition into a layer or
article used to package oxygen-sensitive products, such as foods and
beverages. Speer col. 2, ll. 45–52. Speer discloses that exposing the
composition, layer, or article to radiation initiates oxygen scavenging. Speer
Abstr.; col. 8, ll. 29–33.
Speer discloses that “the method of this invention can initiate oxygen
scavenging in a composition, layer or packaging article solely prepared from
the oxidizable organic compound and transition metal catalyst without
photoinitiator.” Speer col. 5, ll. 13–17. Speer goes on to explain, however,
that “components such as photoinitiators or antioxidants can be added to
further facilitate or control the initiation of oxygen scavenging properties.”
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Speer col. 5, ll. 17–20. Speer also discloses that “additional components
such as diluents can be added to render the layers more adaptable for use as
packaging layers.” Speer col. 5, ll. 20–22. And Speer discloses that “[o]ther
additives which may also be included in oxygen scavenger layers include,
but are not necessarily limited to, fillers, pigments, dyestuffs, stabilizers,
processing aids, plasticizers, fire retardants, anti-fog agents, etc.” Speer col.
6, ll. 32–36.
The Examiner determines that Speer’s disclosure of a composition,
layer, or packaging article solely prepared from an oxidizable organic
compound and transition metal catalyst without photoinitiator “directly
meets” the “consisting of” language as recited in claim 1 because “the
composition solely contains the oxidizable organic compound and transition
metal catalyst without any additives.” Non-Final Act. 11.
Appellant argues that “whether or not a composition contains an
additive is irrelevant to a discussion of whether or not a composition
contains any other component such as, for example, a carrier” because “as
would be readily appreciated by one of ordinary skill in the art, additives,
which are added to improve or preserve, are not synonymous with carriers.”
Appeal Br. 8. Appellant argues that “Speer does not even suggest that all
additives are absent,” and “only says that in some instances, the composition
of Speer does not contain a photoinitiator.” Appeal Br. 8 (citing Speer col.
15, ll. 13–15). Appellant argues that Speer, therefore, “does not teach or
suggest compositions consisting of a transition metal and an oxygen
scavenger.” Appeal Br. 8.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, because Speer’s disclosures as a whole would have
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suggested a composition that includes only an oxidizable organic compound
and a transition metal catalyst, for reasons that follow.
As discussed above, Speer discloses an oxygen-scavenging
composition comprising an oxidizable organic compound and a transition
metal catalyst, and Speer discloses incorporating the composition into a
layer or article used to package oxygen-sensitive products. As also
discussed above, Speer discloses that exposing the composition, layer, or
article to radiation initiates oxygen scavenging, and Speer explains that
oxygen scavenging can be initiated “in a composition, layer or packaging
article solely prepared from the oxidizable organic compound and transition
metal catalyst without photoinitiator.” Speer col. 5, ll. 13–17.
Although Speer discloses that “components such as photoinitiators or
antioxidants can be added to further facilitate or control the initiation of
oxygen scavenging properties,” one of ordinary skill in the art would have
understood this disclosure to indicate that inclusion of such components in
Speer’s composition is optional—and is not required in order for the
composition to initiate oxygen scavenging upon exposure to radiation—in
view of Speer’s disclosure that oxygen scavenging can be initiated in a
composition “solely prepared from the oxidizable organic compound and
transition metal catalyst without photoinitiator.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (An obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for [an examiner] can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.”); see also In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account
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not only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.”).
And although Speer also discloses that additional components, such as
diluents and additives, can be added to “layers” used for packaging oxygen-
sensitive products, such “layers” do not refer to Speer’s oxygen-scavenging
composition itself, but, rather, refer to a material into which the composition
is incorporated. Speer thus does not disclose including additives in Speer’s
oxygen-scavenging composition, and instead, discloses optionally including
additives in packaging material layers into which Speer’s oxygen-
scavenging composition is incorporated.
Speer thus discloses a composition that need only include an
oxidizable organic compound and transition metal catalyst to function as an
oxygen scavenger, but may optionally include additional components.
Speer, therefore, reasonably would have suggested an oxygen-scavenging
composition that includes only an oxidizable organic compound and a
transition metal catalyst, and does not include any additional components.
In re Mercier, 515 F.2d 1161, 1165 (CCPA 1975) (“[A]ll of the relevant
teachings of the cited references must be considered in determining what
they fairly teach to one having ordinary skill in the art.”); In re Burckel, 592
F.2d 1175, 1179 (CCPA 1979) (Under 35 U.S.C. § 103, a prior art reference
“must be considered not only for what it expressly teaches, but also for what
it fairly suggests.”); see also In re Lamberti, 545 F.2d 747, 750 (CCPA
1976) (“[T]he question under 35 U.S.C. § 103 is not merely what the
references expressly teach, but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.”).
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Appellant argues that data provided in Appellant’s Specification
demonstrate that polymer resins can be prepared from master batch
compositions that do not contain a carrier, and the resins exhibit oxygen
scavenging performance “that is at least comparable if not superior to known
resins that do not include the instantly claimed master batch,” even
distribution in plastics, and minimal degradation during molding. Appeal
Br. 9. Appellant argues that such results would have been unexpected to
those of ordinary skill “in view of the teachings of Speer” because “Speer is
completely silent with respect to master batch compositions that are devoid
of a carrier.” Appeal Br. 9–10.
The burden of analyzing and explaining evidence relied upon to
establish unexpected results rests with Appellant. In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests
on he who asserts them”). To meet this burden, Appellant must show that
the relied-upon evidence constitutes results that are commensurate in scope
with the claimed subject matter, and would have been unexpected by one of
ordinary skill in the art relative to the closest prior art. In re Lindner, 457
F.2d 506, 508 (CCPA 1972) (explaining that “objective evidence of
nonobviousness must be commensurate in scope with the claims,” meaning
that the relied-upon evidence must provide a reasonable basis for concluding
that untested embodiments encompassed by the claims would behave in the
same manner as the tested embodiments).
The Specification disclosures cited by Appellant describe preparation
of master batch compositions that included an oxygen scavenger referred to
as “DC-300,” and cobalt II neodecanoate, referred to as “CoNDA.” Spec.
¶¶ 178–181. The relied-upon Specification disclosures also describe
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preparation and testing of resins including the master batch compositions,
and resins that included DC-300 and CoNDA in “two-component systems.”
Spec. ¶¶ 184–192.
The relied-upon data, therefore, were generated by testing resins
produced from master batch compositions containing a single oxygen
scavenging compound, and a single transition metal compound, falling
within the scope of claim 1. Appellant does not provide an explanation
grounded in objective evidence or technical reasoning establishing that the
results generated from the tested master batch compositions would extend to,
or are representative of, the full scope of the master batch compositions
encompassed by claim 1. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005) (“Even assuming that the results were unexpected, Harris needed to
show results covering the scope of the claimed range. Alternatively Harris
needed to narrow the claims.”); In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978) (“Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for ‘it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support.’” (quoting In re Tiffin,
448 F.2d 791, 792 (CCPA 1971))).
Appellant, therefore, does not meet the burden of establishing
unexpected results commensurate in scope with claim 1. Consequently,
considering the totality of the evidence relied upon in this appeal, a
preponderance of the evidence weighs in favor of the Examiner’s conclusion
of obviousness. We, accordingly, sustain the Examiner’s rejection of claims
1, 3, 4, 15, 17, 18, 22–24, and 27 under 35 U.S.C. § 103 as unpatentable
over Speer.
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DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–6, 15,
17–20,
22–24, 27
102 Deshpande 1, 3–6, 15,
17–20,
22–24, 27
8 103 Deshpande 8
1, 3, 4, 15,
17, 18,
22–24, 27
103 Speer 1, 3, 4, 15,
17, 18,
22–24, 27

Overall
Outcome
1, 3, 4, 15,
17, 18,
22–24, 27
5, 6, 8, 19, 20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART