Ex Parte Stokes et al

Patent Trial and Appeal Board

Jun 13, 2017

12051056 (P.T.A.B. Jun. 13, 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.
12/051,056 03/19/2008 Gregory John Charles Stokes P-1575A 9831
1695 7590 06/15/2017
SCOTT R. COX
LYNCH, COX, GILMAN & GOODMAN, P.S.C.
500 WEST JEFFERSON STREET
SUITE 2100
LOUISVILLE, KY 40202
EXAMINER
STULII, VERA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/15/2017 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):
SCOX@LCGANDM.COM
HHART@LCGANDM.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY JOHN CHARLES STOKES and
STEVEN JOHN ANTHONY BARICS
Appeal 2016-005029
Application 12/051,056
Technology Center 1700
Before TERRY J. OWENS, BEVERLY A. FRANKLIN,
and MICHAEL G. McMANUS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1, 6, 8, 9, and 17—31. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a wine-filled aluminum can. Claims 1 and 25
are illustrative:
1. A wine filled two-piece aluminium can comprising wine that
has less than 35 ppm of free SO2, less than 300 ppm of
chlorides and less than 800 ppm of sulfates wherein the can is
sealed with an aluminium closure such that there is a pressure
within the can sufficient to prevent buckling of the can, wherein
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the inner surface of the aluminium can is coated with a
corrosion resistant coating, wherein the coating comprises an
epoxy resin combined with a formaldehyde based cross-linking
agent, and wherein the quantity of coating within the can
comprises at least about 175 mg as computed for a conventional
375 ml can.
25. A wine filled two-piece aluminium can comprising wine
that has less than 35 ppm of free SO2, less than 300 ppm of
chlorides and less than 800 ppm of sulfates, wherein the can is
sealed with an aluminium closure such that there is a pressure
within the can sufficient to prevent buckling of the can, wherein
the inner surface of the aluminium can is coated with a
corrosion resistant coating, wherein the coating comprises an
epoxy resin combined with a formaldehyde based cross-linking
agent, and wherein the wine has a shelf life of at least 6 months
based on a limitation on an increase in aluminium present in the
wine after 6 months of storage of at most 44%.
The References
Khanna US 3,960,979 June 1, 1976
R. Ferrarini et al., Packaging of Wine in Aluminum Cans, Grape & Wine
Res. 59—64 (1992) (hereinafter Ferrarini).
Yoichi Kojima et al., Corrosion of Aluminum in White Wine, 45 Corrosion
Engr. 357—71 (1996) (hereinafter Kojima).
P.A. Leske et al., The composition of Australian grape juice; chloride,
sodium and sulfate ions, 3 Australian J. Grape Wine Res. 26—30 (1997)
(hereinafter Leske).
The Rejections
The claims stand rejected as follows: claims 1, 8, 9, 25—28, 30, and 31
under 35 U.S.C. § 103 over Ferrarini in view of Kojima and Khanna,
claims 6 and 29 under 35 U.S.C. § 103 over Ferrarini in view of Kojima,
Khanna and Leske, claims 17, 19—21, 23, and 24 under 35 U.S.C. § 103 over
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Ferrarini in view of Kojima, claims 18 and 22 under 35 U.S.C. § 103 over
Ferrarini in view of Kojima and Leske, and claims 1, 6, 8, 9, and 17—31
provisionally on the ground of nonstatutory obviousness-type double
patenting over claims 17, 22, 25—27, and 30-33 of copending Application
No. 11/863,823.
OPINION
Rejections under 35 U.S.C. § 103
We affirm the rejections as to claims 1, 6, 9, 25—29 and 31, and
reverse them as to claims 8, 17—24 and 30.
The Appellants argue in the following groups the claims for which the
rejections are affirmed: 1) claims 1, 6 and 9, and 2) claims 25—29 and 31
(Br. 8—74). We therefore limit our discussion to one claim in each group,
i.e., claims 1 and 25. The other claims in each group stand or fall with the
claim we address. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Claim 1
The Appellants state (Spec. 138):
The two-piece cans suitable for the present invention are
cans that are currently used for soft drink and beer beverages.
The can linings are also similar and are typically an epoxy resin
combined with a formaldehyde based cross-linking agent.
Typically the film thickness used is greater than that used for
beer or soft drinks. Typically 175 mg/375 ml cans have been
found to lead to a suitable film thickness.
Ferrarini discloses a white wine-containing aluminum can wherein the
wine contains 4 mg/L free SO2 and has a corrosion-resistant interior coating
(pp. 1, 2, 8).
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Kojima discloses a white wine-containing aluminum can wherein the
wine is a commercial wine containing 18 ppm free SO2, 24.6 ppm chlorides
and 700 ppm sulfates (pp. 357, 358).
Khanna teaches that “[t]he can manufacturing industry is utilizing
cans customarily made from aluminum or steel, coated on their interior by a
thin coating designed to protect the metal walls from attack by food or
beverage to be stored therein” (col. 1,11. 12—16). Khanna discloses
a high solids coating composition, applicable to the interior of
food or beverage cans, consisting essentially of
A. 30-65 parts of a low molecular weight epoxy resin,
B. 10-35 parts of a liquid nitrogen resin or phenolic
crosslinking agent,
C. 20-40 parts of a flexibilizing polyol,
D. 0.5—10 parts of an inorganic or organic monomeric or
polymeric acid which acts both as reactant and catalyst,
and
E. 0-2 parts of a surface modifier,
wherein all components are by weight based on the total of (A)
plus (B) plus (C) plus (D) plus (E) and can be rapidly cured by
heating at a temperature for a time sufficient to substantially
complete the crosslinking reaction. . . . [(col. 1,11. 34—50)]
The coating composition of this invention utilizes
nitrogen resins such as melamine-formaldehyde or phenolic
resins as the crosslinking agents for the epoxy resins. . . .
[(col. 3,11. 4-7)]
.... When the coating composition of this invention is applied
to the interior of food and beer or beverage cans by
spray-coating a thin uniform film is deposited which, after
curing, corresponds to a coating weight of 150 to
800 milligrams per can. [(col. 6,11. 21—25)]
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Establishing a prima facie case of obviousness requires showing that
one of ordinary skill in the art would have had both an apparent reason or
suggestion to modify the prior art and predictability or a reasonable
expectation of success in doing so. SeeKSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007); In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991).
Ferrarini’s (p. 8) and Kojima’s (Abstract) disclosures that wine
corrodes aluminum cans and Khanna’s disclosure that the can manufacturing
industry coats the interior of aluminum cans to protect the aluminum from
attack by food or beverages (col. 1,11. 12—16) would have provided one of
ordinary skill in the art with an apparent reason or motivation to apply a
corrosion-resistant coating to the interior of wine-in-cans. Khanna’s
indication that the disclosed coating composition protects aluminum can
interiors from attack by beverages generally (col. 1,11. 34—35; col. 6,11. 21—
22) would have provided one of ordinary skill in the art with predictability
or a reasonable expectation of success in doing so. “Obviousness does not
require absolute predictability of success .... For obviousness under § 103,
ah that is required is a reasonable expectation of success.” In re O ’Farrell,
853 F.2d 894, 903-04 (Fed. Cir. 1988).
The Appellants assert that affiant Michelle Buck provides specific,
detailed reasons why one of ordinary skill in the art would not have used
Khanna’s coating on an aluminum can to be used for storing wine
(App. Br. 10-18; Reply Br. 16—28).
Buck asserts that one of ordinary skill in the art would not have used
Khanna’s composition for wine-in-cans because 1) the high solids content
(at least 70%; col. 1,11. 60-62) is too high for one of ordinary skill in the art
to maintain quality and manufacturing specification without significant
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expenditure for equipment changes (Tflf 9i, lOi, 12a), 2) Khanna’s organic
solvents (col. 5,11. 24—32) and low molecular weight epoxy resins (col. 2,
11. 1—20) are disadvantageous environmentally and with respect to food
safety compared to water based technology (19ii, 1 liv), 3) one of ordinary
skill in the art would not have known whether the disclosed cure times
(col. 1,11. 62—63) are time at peak metal temperature or total time at a
particular air temperature (1 lOii), 4) Khanna does not disclose the flexibility
testing conditions and those tests are not relevant to a 206 neck diameter can
(1 lli, ii), 5) Khanna does not test wine-in-cans (112c, 12d), 6) no wine-in­
cans sold between 1990 and 1996 used Khanna’s coating composition
(112b), and 7) one of ordinary skill in the art would have used only the
conventional coating weight (90-150 mg for a conventional 375 ml can), as
stated in the Barics and Riponi affidavits, and surprisingly and unexpectedly
did not consider using Khanna’s coating weight of 150-800 mg/can (col. 6,
11. 25-26) (1 13).
Khanna would have indicated to one of ordinary skill in the art that
the coating is suitable for use on the interior of aluminum cans containing
beverages generally, even at a coating weight (800 mg/can) much higher
than the minimum required by the Appellants’ claim 1 (about 175 mg for a
conventional 375 ml can). Buck provides no evidence that Khanna’s coating
is unsuitable for wine-in-cans or that one of ordinary skill in the art, through
no more than ordinary creativity, would not have determined through no
more than routine experimentation the coating weight needed to provide the
required corrosion protection for each beverage, including wine. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton”). In making
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an obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
550 U.S. at 418. Buck’s assertions (and also the unsupported statement in
Barics’ First Affidavit that “the increased thickness was expected to cause
problems regarding the crack resistance of the coating and the formation of
fissures, and also it could not be expected that increasing the coating
thickness over those optimized in the soft drink and beer industry would
have a positive effect” (| 3(c)(vii))) when considered with Khanna’s
disclosure are insufficient to support a conclusion of nonobviousness of the
can claimed in the Appellants’ claim 1.
The Appellants provide evidence of secondary considerations
(App. Br. 9—52). We have begun anew and determined that due to the
following deficiencies in the evidence relied upon by the Appellants, the
totality of the evidence and argument supports a conclusion of obviousness
of the claimed wine-in-cans. See In re Rinehart, 531 F.2d 1048, 1052
(CCPA 1976)
The Appellants assert that they have identified and solved a long felt
but unsolved need for a wine-in-aluminum can that retains good taste after
6 months of storage (App. Br. 33—36; Reply Br. 32—35).
The Appellants provide examples of lack of success by others in
attempts to make suitable wine-in-cans (Buck Affidavit 114; Barics
Affidavit 13), but do not establish a long felt need for the Appellants’
claimed wine-in-can. Moreover, the Appellants’ improperly are arguing a
limitation (good wine taste after 6 months of storage) that is not in claim 1.
See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[AJppellant's arguments
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fail from the outset because . . . they are not based on limitations appearing
in the claims.”).
The Appellants assert that their wine-in-cans have received praise by
others (App. Br. 36—39; Reply Br. 35—36).
That praise, when considered with Khanna’ disclosures that the
coating can be thick and the coated aluminum can is useful for beverages
generally (col. 6,11. 20-25), is insufficient to support a conclusion of
nonobviousness of the claimed wine-in-can.
The Appellants assert that their claimed wine-in-can has achieved
commercial success and that the superior performance of their wine-in-cans
with a relatively thick coating indicates a nexus between the commercial
success and the claim limitations (App. Br. 39—52; Reply Br. 36—37).
The Appellants have not provided the required evidence that the sales
resulted from the recited characteristics of the claimed invention rather than
from another factor such as features of the product not related to the claimed
subject matter, low price, marketing and salesmanship, customer service, or
a prior business relationship between the company and its customers. See In
re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996); Kansas Jack, Inc. v. Kuhn,
719 F.2d 1144, 1151 (Fed. Cir. 1983).
Thus, the evidence considered as a whole supports a conclusion that
the wine-filled can claimed in the Appellants’ claim 1 would have been
obvious to one of ordinary skill in the art.
Claim 25
The Appellants assert, in reliance upon Leo Pharm. Prods., Lte. v.
Rea, 726 F.3d 1346, 1359 (Fed. Cir. 2013), that “[cjourts have recognized
that, when such long periods of time [34 years between Khanna’s
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publication date and the Appellants’ filing date] have elapsed, if discoveries
and advances were routine and relatively easy, the record would
undoubtedly show that some person skilled in the art would have achieved
the invention, as claimed, sometime within this thirty plus year period”
(App. Br. 59).
The Appellants do not establish that opinions by “courts”, or even the
Leo Pharmaceutical opinion, support that assertion.
The Appellants rely upon the Buck Affidavit and secondary
considerations as they do with respect to claim 1 (App. Br. 59—65).
For the reasons given above, the wine-in-can claimed in the
Appellants’ claim 1 would have been obvious to one of ordinary skill in the
art. The shelf life recited in claim 25 is a characteristic of that wine-in-can.
Hence, the wine-in-can claimed in claim 25 also would have been obvious to
one of ordinary skill in the art. Compare In re Papesch, 315 F.2d 381,391
(CCPA 1963) (“From the standpoint of patent law, a compound and all of its
properties are inseparable; they are one and the same thing”).
For the above reasons we are not persuaded of reversible error in the
rejection of claims 1, 6, 9, 25—29, and 31.
Claims 8, 17—24, and 30
Claims 8, 19, 23, and 30 require “a head space in the can which
comprises 80-97% nitrogen v/v and 2-20% carbon dioxide v/v.” Claims 21—
24 require that “the filled can further comprises a head space of the can with
an oxygen content less than 1% v/v.” The Examiner concludes that “[t]he
specific amounts of nitrogen or carbon dioxide in the headspace is seen to
have been an obvious result effective variable, routinely determinable”
(Ans. 6, 8).
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The Examiner does not provide the required facts supporting that
conclusion. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A
rejection based on section 103 clearly must rest on a factual basis, and these
facts must be interpreted without hindsight reconstruction of the invention
from the prior art”).
Claims 17—20 require that the wine in the can is not pasteurized. The
Examiner concludes that “the method steps included or excluded [lack of
pasteurization] in the product claims would not impart any patentable
distinction” (Ans. 8).
Claims 17—20 require that the wine has the characteristics of
non-pasteurized wine. The Examiner does not establish that non-pasteurized
wine is the same as or obvious from pasteurized wine.
Thus, the Examiner has not established a prima facie case of
obviousness of the wine-in-cans claimed in the Appellants’ claims 8, 17—24,
and 30.
Provisional obviousness-type double patenting rejection
The Appellants do not challenge the provisional obviousness-type
double patenting rejection (App. Br. 8). Accordingly, we summarily affirm
that rejection.
DECISION/ORDER
The rejection of claims 1, 8, 9, 25—28, 30 and 31 under
35 U.S.C. § 103 over Ferrarini in view of Kojima and Khanna is affirmed as
to claims 1, 9, 25—28 and 31 and reversed as to claims 8 and 30. The
rejection of claims 6 and 29 under 35 U.S.C. § 103 over Ferrarini in view of
Kojima, Khanna and Leske is affirmed. The rejection of claims 17, 19—21,
23 and 24 under 35 U.S.C. § 103 over Ferrarini in view of Kojima is
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reversed. The rejection of claims 18 and 22 over Ferrarini in view of
Kojima and Leske is reversed. The rejection of claims 1, 6, 8, 9 and 17—31
provisionally on the ground of nonstatutory obviousness-type double
patenting over claims 17, 22, 25—27 and 30-33 of copending Application
No. 11/863,823 is affirmed.
It is ordered that the Examiner’s decision is affirmed.
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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