Ex Parte 7163727 et al

Patent Trial and Appeal Board

Nov 29, 2012

90009788 (P.T.A.B. Nov. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/009,788 09/01/2010 7163727 REEX-11680 1060
25227 7590 11/30/2012
MORRISON & FOERSTER LLP
1650 TYSONS BOULEVARD
SUITE 400
MCLEAN, VA 22102
EXAMINER
JOHNSON, JERRY D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
11/30/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRAIL AND APPEALS BOARD
____________________

Ex parte TORAY PLASTICS (AMERICA), INC.,
Patent Owner and Appellant
____________________

Appeal 2012-009975
Reexamination control 90/009,788
Patent 7,163,727
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Toray Plastics (America), Inc. (hereinafter “Appellant”), the real party in
interest1 of Patent 7,163,727 B2, issued January 16, 2007, to Su et al. (hereinafter
the ‘“727 patent”), appeals under 35 U.S.C. §§ 134(b) and 306 from the

1 See Appellant’s Appeal Brief filed November 22, 2011 (hereinafter “App. Br.”)
at 1.

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Examiner’s decision to reject claims 1-40 and 442 (Final Office Action, mailed
April 28, 2011, pages 4-9). We have jurisdiction under 35 U.S.C. §§ 134(b) and
306. Oral arguments were heard on October 17, 2012. A transcript of the oral
argument will be made of record in due course.
We AFFIRM.
This reexamination proceeding arose from a third-party request for ex parte
reexamination filed by Martin P. Hoffman of the law firm Hoffman, Wasson and
Gitler (Request for Ex Parte Reexamination, filed September 1, 2010).
The ‘727 patent relates to a film comprising a polyolefin layer and an epoxy-
amine, namely a polyetheramine, layer (‘727 patent, col. 1, ll. 6-21 and col. 2, ll.
25-27).
Representative claim 1 on appeal reads as follows (with underlining showing
added text relative to the original patent claims):
1. A laminate film comprising a thermoplastic
polyetheramine resin-containing layer on a first polyolefin resin-
containing layer having a functional group, wherein the laminate film
has substantially zero percent peel-off.
(Claims App’x, App. Br. 12.)
II. THE REJECTIONS
The Examiner rejects claims 1-6, 9, 20-25, 27, 35, and 37-40 under 35
U.S.C. § 103(a) as unpatentable over Beckerdite3 in view of EP ‘0394. The

2 Claims 41-43 of the ‘727 patent are not subject to reexamination.

3 US 6,589,621 B1, issued July 8, 2003, to John M. Beckerdite et al. (hereinafter
“Beckerdite”).

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Examiner further rejects claims 7, 8, 10-19, 26, 28-34, 36, and 44 under 35 U.S.C.
§103(a) as unpatentable over Beckerdite in view of EP ‘039 and further in view of
additional prior art.5
The Examiner finds that Beckerdite teaches a laminate film comprising a
thermoplastic polyetheramine barrier layer and a polyolefin layer. The
polyetheramine is a “melt-stable” thermoplastic polymer. The films and laminate
structures can be formed by conventional extrusion techniques, solvent spraying or
solution casting. (Ans. 6-7) (see Beckerdite, col. 1, ll. 56-58, col. 5, ll. 28-57, and
col. 6, ll. 1-10). The Examiner acknowledges that Beckerdite does not teach that
the polyolefin layer comprises a functional group (Ans. 7).
The Examiner further finds that EP ‘039 teaches surface treating a polyolefin
layer to increase surface tension via flame-treating, corona-treating and the like, to
promote better adhesion of the polyolefin material to a thermoset polyetheramine
barrier layer (Ans. 8) (see EP ‘039, p. 3, ll. 51-54, p. 5, l. 56 to p. 6, l. 1, and p. 9,
ll. 26-32).
The Examiner concludes that:
It would have been obvious to one of ordinary skill in the art at the
time the invention was made to form a laminate film as taught by
Beckerdite wherein the surface tension of the coated layer has been
increased by, for example, flame-treating, corona-treating and the like,
in order to promote better adhesion between the barrier layer and the
coated layer as taught by EP ‘039.

4 EP 0 327 039 A2, published September 8, 1989, in the name of PPG Industries,
Inc. (hereinafter “EP ‘039”).
5 Appellant’s arguments do not reach the Exmainer’s application of the additional
prior art to the remaining dependent claims, but rather focuses on the Examiner’s
reliance on Beckerdite and EP ‘039. Accordingly, we discuss the additional prior
art no further.
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(Ans. 8.)
Appellants have not separately argued any particular claim on appeal,
including claims separately rejected. Accordingly, all the appealed claims stand or
fall together with claim 1. We note that Appellant relies on the testimony provided
by the Chang declaration.6
III. ISSUES ON APPEAL
The issues on appeal are:
(1) Does the evidence support Appellant’s view that the Examiner erred in
determining that one of ordinary skill in the art would have modified the
laminate film of Beckerdite to include discharge treating the polyolefin
substrate to produce functional groups as taught by EP ‘039?
(2) Does the evidence demonstrate that the improved adhesion between a
polyolefin and a thermoplastic polyetheramine achieved by Appellant
would have been unexpected to the skilled artisan having the teachings of
improved adhesion between a polyolefin and a thermoset polyetheramine
taught by EP ‘039?
We answer both of these questions in the negative.
IV. ANALYSIS
We adopt the Examiner’s findings in the Answer as our own and add
additional findings of fact appearing below for emphasis.
Appellant’s arguments are largely based on the premise that the Beckerdite
melt-stable polyetheramine formulation was designed for extruded polyetheramine

6 The Declaration under 37 C.F.R. § 1.132 of Keunsuk P. Chang, dated May 24,
2006, and entered into the record on November 22, 2011 (hereinafter “Chang
Declaration” or “Chang Decl.”).

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layers, particularly polyetheramine layers co-extruded with a polyolefin layer, a
process in which no functional group additions are necessary for good adhesion
and which cannot be applied by known methods due to the molten condition of the
materials applied during extrusion (App. Br. 5-8).
We agree with the Examiner that Appellant’s arguments are unpersuasive
because Beckerdite is not limited to co-extrusion of the composition to form films.
The Examiner’s rejection relies on the alternative conventional processes for
forming a film from the composition disclosed by Beckerdite, namely extrusion
coating, solvent spraying, and solution casting (see Ans. 7 and 13; Beckerdite, col.
5, ll. 28-32).
Appellant contends that these alternative processes are only a “generic list of
methods of forming laminates” that lack details, are for layers other than the
polyetheramine layer, and that solvent spraying and solution casting are “counter
to the whole purpose of Beckerdite – to produce melt stable polyetheramines”
(App. Br. 8; Reply Br. 3).
The evidence does not support Appellant’s contention that Beckerdite’s
teaching of film forming methods other than co-extrusion is not relevant to the
polyetheramine film. Beckerdite is directed to modified polyetheramine
compositions that do not undergo crosslinking when films are fabricated at
elevated temperatures (Beckerdite, col. 1, ll. 5-19). The section of Beckerdite
relied upon by the Examiner states that “[f]ilms and laminate structures can be
formed from the composition of the present invention” using alternative processes,
such as solvent spraying (Beckerdite, col. 5, ll. 28-32). Since the “composition of
the present invention” in Beckerdite is the polyetheramine composition, the skilled
artisan would expect that the polyetheramine composition can be formed into a
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film using any of the methods expressly disclosed as suitable for that purpose. In
addition, a skilled artisan would not require a detailed description of such
“conventional,” techniques to form a polyetheramine film from the composition
disclosed in Beckerdite. Moreover, Beckerdite also describes a solvent-based
composition (Beckerdite, col. 4, l. 57 to col. 5, l. 7), as might be used in a solvent
spraying or solution casting techniques.
Appellant further contends that the skilled artisan would not look to
improving adhesion of a thermosetting film, as taught by EP ‘039, to improve the
adhesion of thermoplastic films, as taught by Beckerdite (App. Br. 9). Appellant
presents evidence of distinctions between a thermoplastic polyetheramine and a
thermosetting polyetheramine, particularly the need to cure thermosetting films
and the fact that thermoplastic films, but not thermosetting films, can be melted
and extruded (id.).
However, Appellant’s evidence does not show a difference in adhesion
between the two types of polyetheramine layers and polyolefin or that the noted
distinctions materially impact adhesion. Thus, Appellant’s evidence is not
persuasive that there would be no expected improvement in adhesion between a
treated polyolefin layer and thermoplastic polyetheramine, as pointed out by the
Examiner (Ans. 14).
EP ‘039 teaches that surface treatments increase surface tension to promote
better adhesion to a polyolefin layer (EP ‘039, p. 9, ll. 26-32). It is reasonable for
one of ordinary skill in the art to expect the treatment would also increase
polyolefin film adhesion to thermoplastic polyetheramine films using the same
surface tension property when they are formed into a film. The resulting increase
in film adhesion would be the predictable use of a known prior art method
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according to its established function to increase surface tension and adhesion of
polyolefin films. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (The
question to be asked is “whether the improvement is more than the predictable use
of prior art elements according to their established functions.”). Based on these
teachings, it does not follow that “there would be no motivation or stated need to
apply this treatment to the completely different thermoplastic material described in
Beckerdite,” as argued by Appellant.
Appellant further contends that the Chang Declaration details the
unexpectedly better adhesion a polyetheramine resin-containing layer to a treated
surface of a polyolefin substrate when compared to no surface treatment (App. Br.
5). However, the Chang Declaration fails to explain why the improvement would
have been unexpected in light of the statements of known increased surface tension
and improved adhesion with treated polyolefin surfaces of EP ‘039.
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness.
V. CONCLUSION
On the record before us, we affirm the rejections maintained by the
Examiner.
VI. TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination proceeding
are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

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FOR PATENT OWNER:
MORRISON & FOERSTER LLP
1650 TYSONS BOULEVARD
SUITE 400
MCLEAN, VA 22102

FOR THIRD-PARTY REQUESTER:
MARTIN P. HOFFMAN, ESQ. C/O STEIN MCEWEN LLP
1400 EYE STREET, NW SUITE 300
WASHINGTON, DC 20005

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