10479640 (B.P.A.I. May. 31, 2012)

Ex Parte Rosenbaum et al

Board of Patent Appeals and InterferencesMay 31, 2012

10479640 (B.P.A.I. May. 31, 2012)

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. 10/479,640 04/16/2004 Sonja Rosenbaum 05581-00129-US 5631 23416 7590 05/31/2012 CONNOLLY BOVE LODGE & HUTZ, LLP P O BOX 2207 WILMINGTON, DE 19899 EXAMINER CHEN, VIVIAN ART UNIT PAPER NUMBER 1787 MAIL DATE DELIVERY MODE 05/31/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte SONJA ROSENBAUM (Deceased), MARLIES ROSENBAUM (Legal Representative), MANFRED ROSENBAUM (Legal Representative), and DETLEF BUSCH __________ Appeal 2010-005950 Application 10/479,640 Technology Center 1700 ___________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and PETER F. KRATZ, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005950 Application 10/479,640 2 A. STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s decision finally rejecting claims 1-3, 7, 9, and 11-18, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The Appellants disclose that films from degradable polymers, such as polymers and copolymers of lactic acids (PLAs), were known at the time of the Appellants’ invention. Spec. 3, ll. 12-21. It was known to biaxially stretch these films to increase the strength of the final film. Spec. 3, ll. 22-29. However, according to the Appellants, these biaxially oriented films have an uncontrolled tear propagation behavior. Spec. 2, ll. 19-20. The Appellants disclose that an object of the present invention is to provide films from PLA that have controlled initial-tear and tear propagation behavior. Spec. 4, ll. 1-2. This object is said to be achieved by adding a thermoplastic polymer (e.g., propylene or ethylene homopolymers or mixtures thereof) to a biaxially stretched film comprising PLA. Spec. 4, ll. 24-27. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. Biaxially stretched film having a controlled initial-tear and tear propagation behavior, characterized in that the film includes at least one base layer which comprises at least one polymer I comprising at least one hydroxycarboxylic acid and 0.2 – 5% by weight, based on the weight of the layer, of a thermoplastic polymer II which is propylene homopolymer or a mixture thereof. App. Br., Claims Appendix.1 1 Appeal Brief dated September 17, 2009. Appeal 2010-005950 Application 10/479,640 3 The sole rejection on appeal is the rejection of claims 1-3, 7, 9, and 11-18 under 35 U.S.C. § 103(a) as unpatentable over the combination of Sinclair,2 Ullmann,3 and Chen.4,5 For the reasons set forth in the Examiner’s Answer, this rejection is affirmed. We add the following for emphasis. B. DISCUSSION The Examiner relies on Sinclair to establish that a biodegradable film comprising PLA and a polymer, such as polyethylene or polypropylene, in amounts that overlap the claimed range was known at the time of the Appellants’ invention. The Examiner finds that Sinclair does not teach biaxially orienting the film. Ans. 4. Consistent with the teachings of Ullman, the Appellants recognize that biaxially orienting film to improve mechanical properties is well known in the art. However, the Appellants argue that “the underlying principle of the present invention is not to simply improve the mechanical properties, but instead to provide a film having a very specific mechanical property, namely tear propagation.” Br. 7. Significantly, the Appellants do not discuss the Examiner’s application of Chen in the rejection on appeal in any detail. See Br. 9 (generally contending that “Chen does not address the fundamental deficiencies of the Sinclair/Ullman’s 2 US 5,216,050 issued June 1, 1993. 3 Peter Schmitz et al., Films, A 11 Ullmann’s Encyclopedia of Industrial Chemistry 85-110 (1988). 4 US 5,756,651 issued May 26, 1998. 5 The § 112, second paragraph, rejection of claims 1-3, 7, 9, and 11-18 was withdrawn in the Examiner’s Answer dated December 28, 2009 (“Ans.”), at 3. Appeal 2010-005950 Application 10/479,640 4 combination”). The Examiner finds that Chen teaches that biaxially orienting a PLA film enhances or modifies its mechanical properties, including tear propagation. Ans. 5. Based on the teachings of Ullman and Chen, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to biaxially orient the PLA film of Sinclair to produce films having a useful combination of properties, including controlled tear properties. Ans. 6. To the extent the Examiner combines the prior art of record for reasons other than modifying the tear properties of Sinclair’s film, we note that the reason for combining the prior art need not be the same as the Appellants’ reason. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”); In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“the motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness”). Moreover, the Examiner explains: [T]he fact that Appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Ans. 12; see also In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977). In this regard, we note that the Appellants have not directed us to any evidence establishing that the film of Sinclair, when modified as proposed by the Examiner, would not have “a controlled initial-tear and tear propagation behavior” as recited in the claims on appeal. Appeal 2010-005950 Application 10/479,640 5 C. DECISION The decision of the Examiner 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 ssl