In re Pactiv LLC
| Decision Date | 15 August 2013 |
| Docket Number | Appeal 2013-001728 |
| Parties | PACTIV LLC Patent Owner and Appellant Reexamination Control 90/010, 976 Patent U.S. 5, 698, 250 Technology Center 3900 |
| Court | Patent Trial and Appeal Board |
Before LORA M. GREEN, RICHARD M. LEBOVITZ, and JEFFREY B. ROBERTSON Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
This is a decision on an appeal by Patent Owner Pactiv LLC, from the Patent Examiner's rejections of claims 1-7, 9-24, 27, and 30 in this ex parte reexamination proceeding. The Board's jurisdiction for this appeal is under 35 U.S.C §§ 6(b), 134(b), and 306. We affirm.
This appeal involves U.S. 5, 698, 250 ("the '250 patent") which issued December 16, 1997. The named inventors are Gary R. DelDuca, Alan E. Deyo, Vinod K. Luthra, and Wen P. Wu.
A Request for Ex Parte Reexamination of the '250 patent was submitted by a third-party requester, Multisorb Technologies, Inc., on May 4, 2010. Reexamination of the '250 patent was subsequently ordered (Order Granting Request for Reexamination, July 16, 2010). An oral hearing was held April 10, 2013. A transcript was into the record on July 23, 2013.
The real party in interest in this ex parte reexamination proceeding is the patent owner, Pactiv LLC (Appeal Br. 2, dated February 28, 2012). Patent Owner states that it is involved in litigation against Multisorb Technologies, Inc. in Civil Action No. 10-cv-07609 (Pactiv Corporation v. Multisorb Technologies, Inc.) in the United States District Court, Northern District of Illinois in which U.S. Patent Nos. 6, 183, 790, 5, 698, 250, 5, 948, 457, 5, 811, 142, 6, 231, 905, 6, 315, 921 and 6, 395, 195 have been asserted.
The present reexamination proceeding is related to the following ex parte reexaminations:
Reexaminations (1) to (4) are decided concurrently with this appeal.
The technology in the '250 patent involves packaging for meat. The '250 patent teaches that "[p]ackaging systems which provide extremely low levels of oxygen are generally preferable because it is well known that the fresh quality of meat can be preserved longer under anaerobic conditions than under aerobic conditions." The '250 patent describes prior art systems in which the atmosphere is evacuated of oxygen and optionally filled with gases other than oxygen to preserve the meat . The '250 patent describes the invention as a packaging system which comprises an oxygen scavenger to substantially absorb residual oxygen in the package that remains after the package is flushed with gases to substantially eliminate the oxygen in the package atmosphere . The claims are drawn to packaging systems, and methods of making them, comprising an oxygen scavenger and also a predetermined amount of an activator to increase the rate of oxygen absorption . As explained in the patent, the retail meat is stored in the package, and just prior to display at the grocery store to the consumer, the package is opened and the meat exposed to air . The meat is oxygenated and quickly changes or "blooms" to a bright red color (id.).
Claims 1-7, 9-24, 27, and 30 are pending. Claims 1-7 and 9-24 were originally issued, but as indicated in the claims appendix to the appeal brief, several of the claims were amended during this reexamination proceeding. Claims 27 and 30 were added during reexamination. Patent Owner appeals the Examiner's decision to reject all the pending claims. The claims stand rejected as follows:
1. Claims 1, 7, 10, 12, 13, 15-19, 21, 22, 27 and 30 under 35 U.S.C. § 103(a) as obvious over U.S. Patent No. 3, 574, 642 to Weinke ("Weinke") in view of JP 58-158129 to Sakai ("Sakai")[1] and GB 1, 556, 853 ("GB '853").
2. Claims 1, 7, 10, 12, 13, 15-19, 21, 22, 27 and 30 under 35 U.S.C. § 103(a) as obvious over Weinke in view of Sakai and EP 468, 880 to Hamon[2] ("Hamon").
3. Claims 23 and 24 under 35 U.S.C. § 103(a) as obvious over Weinke, Sakai, GB '853 and further in view of U.S. Patent No. 5, 247, 746 to Johnson ("Johnson").
4. Claims 23 and 24 under 35 U.S.C. § 103(a) as obvious over Weinke, Sakai, Hamon and further in view of Johnson.
5. Claims 2-5, 9 and 14 under 35 U.S.C. § 103(a) as obvious over Weinke, Sakai, GB '853 and further in view of U.S. Patent No. 4, 339, 161 to Nakamura ("Nakamura").
6. Claims 2-5, 9 and 14 as unpatentable under 35 U.S.C. § 103(a) as obvious over Weinke, Sakai, Hamon and further in view of Nakamura.
7. Claim 6 under 35 U.S.C. § 103(a) as obvious over Weinke, Sakai, GB '853, Nakamura in view of U.S. Patent No. 3, 700, 096 to Reifers ("Reifers") or Johnson.
8. Claim 6 under 35 U.S.C. § 103(a) as obvious over Weinke, Sakai, Hamon, Nakamura in view of Reifers or Johnson.
9. Claims 11 and 20 under 35 U.S.C. § 103(a) as obvious over Weinke, Sakai, GB '853 in view of U.S. Patent No. 3, 419, 400 to Hayhurst ("Hayhurst") or U.S. Patent No. 5, 064, 698 to Courtright ("Courtright").
10. Claims 11 and 20 under 35 U.S.C. § 103(a) as obvious over Weinke, Sakai, Hamon in view of Hayhurst or Courtright.
Claim 1 is representative and reads as follows (underlining and brackets delineating added and removed subject matter, respectively relative to the originally issued claim):
In the Reply Brief, Patent Owner newly cites the Federal Circuit decision Belkin Int'l Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir. 2012) which issued on October 2, 2012, after their Appeal Brief was filed on February 28, 2012. According to Patent Owner, Belkin affirmed the Board's decision not to consider any references that the Director had decided did not form a substantial new question (SNQ) of patentability (Reply Br. 2). Although Belkin was an inter partes reexamination. Patent Owner contends that it is pertinent to this ex parte reexamination because the statues are comparable (id. 2-3). Based on Belkin, Patent Owner contends that the Board should not reach the rejections in this appeal because they involve references that were not part of the original SNQ of patentability (id. 3-4; ("Specifically, all of the rejections involve references that were not applied in the original SNQ of patentability EP 0698563 to Mize, JP 58158129 to Sakai ('Sakai'), GB 1556853 ('GB '853') or EP 0468880 to Hamon ('Hamon').).
Patent Owner argues "to the extent that any amended, new or substituted claim overcomes the SNQ of patentability, further rejection of those claims based on patentability exceeds the statutory authority granted to the PTO under the reexamination statute." (Id. at 4) Patent Owner contends the rejections under the initial SNQ were overcome and that the case should be remanded to the Examiner to allow the claims (id.)
First, we find that Belkin involved an inter partes reexamination proceeding and therefore is not applicable to this ex parte reexamination. We decline to extend a holding in decision on an appeal in a specific inter parte reexamination proceeding to an ex parte reexamination proceeding, which was invoked under a different statutory and regulatory regime. See 35 USC § 303 (2002) and 37 CFR § 1.510 for Ex Parte Reexamination; 35 USC § 312 (2011) and 37 CFR § 1.913 (2002) for Inter Partes Reexamination.
Nonetheless we fail to see the applicability of Belkin. In Belkin, the Examiner had not found an SNQ of patentability for certain publications cited in a Request for Inter Partes Reexamination (id. at 1382). On appeal to the Board, Belkin challenged the Examiner's failure to make rejections involving the three publications that the Director had determined did not raise a substantial new question of patentability (id. at 1383). The Board did not consider the SNQ issue. The court affirmed the Board's decision not to consider the SNQ determination because the SNQ determination in an inter partes reexamination is non-appealable as...
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