Ex Parte Ettridge et al

Patent Trial and Appeal Board

May 24, 2017

12495781 (P.T.A.B. May. 24, 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.
12/495,781 06/30/2009 Peter Ettridge 28489/44858 3359
4743 7590 05/26/2017
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
SANDERSON, LEE E
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
05/26/2017 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER ETTRIDGE and CHRISTOPHER R. WHITE
Appeal 2016-004850
Application 12/495,7811
Technology Center 1700
Before BRADLEY R. GARRIS, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—14. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Amcor Flexibles
Transpac N.V. Appeal Br. 2.
Appeal 2016-004850
Application 12/495,781
STATEMENT OF THE CASE2
Appellants describe the invention as relating to biodegradable
packaging for food products such as fresh produce. Spec. 12. Claim 1,
reproduced below with spacing added for readability and emphases added to
certain key recitations, is illustrative of the claimed subject matter:
1. Modified gas atmosphere packaging for fresh produce
comprising a multi-layer structure including
a biodegradable compostable regenerated cellulose film
and
an extrusion coating of biodegradable compostable
copolyester polymer on the inside of the packaging relative
to the cellulose film,
the extrusion coating of biodegradable compostable
co-polyester polymer being arranged to reduce
uptake of moisture from packed fresh produce by
the cellulose film,
wherein the packaging has one or more microperforations
formed therein arranged to maintain the modified gas atmosphere
within the packaging.
Appeal Br. 11 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Yabusa et al. US 5,409,772 Apr. 25, 1995
(hereinafter “Yabusa”)
Varriano-Marston US 6,441,340 B1 Aug. 27,2002
Isshiki et al. US 2005/0163944 Al July 28, 2005
(hereinafter “Isshiki”)
2 In this decision, we refer to the Final Office Action dated September 13,
2012 (“Final Act.”), the Appeal Brief filed February 13, 2013 (“Appeal
Br.”), and the Examiner’s Answer dated October 7, 2013 (“Ans.”).
2
Appeal 2016-004850
Application 12/495,781
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1—5 and 7 under 35 U.S.C. § 103 as unpatentable
over Yabusa in view of Varriano-Marston. Ans. 2.
Rejection 2. Claims 1 and 4—14 under 35 U.S.C. § 103 as
unpatentable over Isshiki in view of Varriano-Marston. Id. at 6.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellants and in light of the arguments and evidence
produced thereon. Cf. 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) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ arguments, we
are not persuaded that Appellants identify reversible error. Thus, we affirm
the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Appellants argue all claims as a group, but Appellants make certain
arguments that apply to only the Examiner’s first rejection or only the
Examiner’s second rejection. See Appeal Br. 4—10. Therefore, consistent
with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013) and because both
rejections address claim 1, we limit our discussion to claim 1. All other
claims on appeal stand or fall together with claim 1. For clarity, however,
we address the Examiner’s rejections and Appellants’ arguments pertaining
to each rejection separately below.
Rejection 1. The Examiner rejects claims 1—5 and 7 as obvious over
Yabusa in view of Varriano-Marston. Ans. 2—6. The Examiner finds that
3
Appeal 2016-004850
Application 12/495,781
Yabusa teaches a biodegradable multi-layer laminate comprising cellophane
(i.e., cellulose) and a co-polyester layer that may be used in food packaging.
Ans. 3 (providing citations to Yabusa). The Examiner finds that Yabusa is
silent with respect to micro-perforations, but the Examiner finds that
Varriano-Marston teaches that micro-perforation of multi-layer films was
well-known in the art to make the film more suitable for modified
atmosphere packaging applications for food. Ans. 3^4 (providing citations
to Varriano-Marston). The Examiner concludes that it would have been
obvious to incorporate the micro-perforations of Varriano-Marston into
Yabusa because, for example, doing so would be application of a known to
technique to a known product to achieve predictable results. Ans. 4—5. A
preponderance of the evidence supports the Examiner’s findings and
conclusion.
Appellants argue that neither Yabusa nor Varriano-Marston nor a
combination thereof discloses a multilayer structure with a co-polyester
polymer coating on the inside of the packaging relative to the cellulose film.
Appeal Br. 4—5. The Examiner finds, however, that Yabusa discloses a
cellulose substrate film with a co-polyester polymer layer on “at least one
side” so that, therefore, Yabusa teaches a film with co-polyester on both
sides of the cellulose film including “on the inside of the packaging relative
to the cellulose film,” as recited in claim 1. Ans. 14 (citing Yabusa 2:46—67,
5:26—33). This finding is adequately supported by the evidence, and
Appellants present no persuasive argument or evidence disputing this
finding. Appellants’ argument therefore does not identify reversible error.
Appellants also argue that a person of ordinary skill would not
consider Yabusa suitable for maintaining “a modified gas atmosphere by the
introduction of micro-perforations” because of, for example, the allegedly
4
Appeal 2016-004850
Application 12/495,781
“well known problems in the art of micro-perforations in cellulose film.”
Appeal Br. 6. The Examiner finds, however, that Yabusa teaches its film is
useful for food packaging. Ans. 3; see also Yabusa 1:6—15. Varriano-
Marston teaches the use of micro-perforations for modified atmosphere food
packaging. Ans. 3—5; see also, e.g., Varriano-Marston Abstract, Title. The
Examiner finds that Varriano-Marston teaches that its micro-perforations
can be used with packaging materials that are, for example, polyester or
cellophane. Ans. 16 (quoting Varriano-Marston 5:37—43). The evidence of
record thus supports that use of Varriano-Marston’s perforations to improve
the film of Yabusa would be no more than the predictable use of prior art
elements according to their established function. KSR Int 7 Co. Teleflex Inc.,
550 U.S. 398, 417 (2007). Appellants do not persuasively explain why the
Examiner erred in combining the teachings of these two references.
Finally, Appellants argue that unexpected results rebut any prima
facie case of obviousness. Appeal Br. 9—10. In particular, Appellants
contend that a person of ordinary skill in the art “would not expect... a co­
polyester layer to prevent the absorption of moisture by a cellulose film and
the resulting constriction of micro-perforations.” Id. at 9. Superior results
alone, however, are not sufficient to show that the results is unexpected.
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny
superior property must be unexpected to be considered as evidence of non­
obviousness.” (emphasis in original)). Here, the Examiner finds that “there
is nothing unexpected about a reduction in the uptake of moisture by a
cellulose film that has a reduced surface area that is available for moisture
absorption.” Ans. 17. Appellants do not rebut this finding of fact, and
Appellants present no evidence that the argued results are unexpected. See
Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)
5
Appeal 2016-004850
Application 12/495,781
(“Counsel’s argument cannot take the place of evidence lacking in the
record.”). Rather, the portions of the record cited by Appellants merely
provide evidence of the superior property rather than establishing that the
superiority was unexpected. See Spec. H 13, 29—30 (stating that co­
polyester reduces moisture uptake of the cellulose film despite not providing
a barrier to moisture vapor transmission but not indicating that this result is
surprising or unexpected); June 7, 2012 Declaration of Mr. Alan Campbell
12, 14, 16 (explaining that co-polyester lining controls moisture vapor but
not stating this result is surprising or unexpected).
Moreover, Appellants’ burden of establishing unexpected results
requires Appellants to proffer factual evidence that shows unexpected results
relative to the closest prior art, see In re Baxter TravenolLabs., 952 F.2d
388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope
with the protection sought by the claim on appeal, In re Grasselli, 713 F.2d
731, 743 (Fed. Cir. 1983). Here, Appellants present no data establishing
improved results as compared to the films of Yabusa or Varriano-Marston
and present no data reasonably establishing that improved results will occur
over the wide range of, for example, cellulose films, co-polyesters, and
dimensions within the scope of claim 1. Because Appellants’ unexpected
results argument rests upon conclusory statements rather than evidence, it
does not persuade us of error in the Examiner’s rejection.
We thus sustain the Examiner’s rejection of claims 1—5 and 7 under
35 U.S.C. § 103 as obvious over Yabusa in view of Varriano-Marston.
Rejection 2. The Examiner rejects claims 1 and 4—14 under 35 U.S.C.
§ 103 as unpatentable over Isshiki in view of Varriano-Marston. Ans. 6.
The Examiner finds that Isshiki teaches a biodegradable film with a moisture
barrier layer coated by a biodegradable polymer that may be cellulose or
6
Appeal 2016-004850
Application 12/495,781
polyester. Id. at 6—7. Isshiki’s film, much like the Yabusa film, may be
used for packaging foods. Isshiki Tf 2. The Examiner finds that Isshiki is
silent as to using micro-perforations in its film. Ans. 7. The Examiner relies
on findings regarding Varriano-Marston teachings of micro-perforations
(discussed above) and concludes that it would have been obvious to modify
the Isshiki packaging by incorporating the micro-perforations as taught by
Varriano-Marston because doing so would be application of a known
technique to a known product ready for improvement and yielding
predictable results. Id. at 8—9. A preponderance of the evidence supports
the Examiner’s findings and conclusion.
Appellants argue that neither Isshiki nor Varriano-Marston nor a
combination thereof discloses a multilayer structure with a co-polyester
polymer coating on the inside of the packaging relative to the cellulose film.
Appeal Br. 4—5. The Examiner finds, however, that Isshiki teaches such a
film. Ans. 14—15. In particular, the Examiner finds that Isshiki teaches a
film having “the layer arrangement: co-polyester/barrier layer/cellulose/co­
polyester.” Id. at 14. The Examiner finds that in such an arrangement, the
inner surface would necessarily comprise a co-polyester. Id. The evidence
supports the Examiner’s finding (see, e.g., Isshiki || 15, 16, 19, 24, 48, 53—
55), and Appellants do not persuasively dispute this finding of fact or
identify contrary evidence. Appellants’ argument therefore does not identify
reversible error.
Appellants also argue that a person of skill in the art would not
perforate the film of Isshiki because its barrier layer is flowable and would
therefore ooze out of the interior of the film if the film were perforated.
Appeal Br. 8—9. The Examiner, however, finds that Isshiki teaches barrier
layers of polyvinyl alcohol resin and of wax that would not be flowable (at
7
Appeal 2016-004850
Application 12/495,781
least at typical food storage temperatures below 60°C). Ans. 17. The
evidence supports the Examiner’s finding (Isshiki || 27—29), and Appellants
do not persuasively rebut this finding.
Appellants also argue unexpected results. Appeal Br. 9—10. This
argument is unpersuasive for the reasons addressed above.
Because Appellants’ arguments do not identify reversible error, we
sustain the Examiner’s rejection of claims 1 and 4—14 under 35 U.S.C. § 103
as unpatentable over Isshiki in view of Varriano-Marston.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
1-14.
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
8