Ex Parte Sakellarides et al

Patent Trial and Appeal Board

Jun 30, 2017

13179007 (P.T.A.B. Jun. 30, 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.
13/179,007 07/08/2011 Stefanos L. SAKELLARIDES 584642002700 9529
25227 7590 07/05/2017
MORRTSON fr FOFRSTFR T T P
EXAMINER
1650 TYSONS BOULEVARD RUMMEL, IAN A
SUITE 400
MCLEAN, VA 22102 ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
07/05/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFANOS L. SAKELLARIDES
and
KEUNSUK P. CHANG,1
Appeal 2016-002635
Application 13/179,007
Technology Center 1700
Before JEFFREY T. SMITH, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1, 3—6, 9-11, 13—15, 17, and 20-21. We have
jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
Appellants’ invention relates to bio-based polyethylene terephthalate
homopolymers and copolymers for various packaging applications and
1 According to Appellants, the real party in interest is Toray Plastics
(America), Inc. See Appeal Br. 1.
Appeal 2016-002635
Application 13/179,007
methods of making the same. (Spec. 110). Independent claims 1 and 11 are
reproduced below:
1. A laminate film comprising:
a biaxially oriented bio-based polyester resin-containing layer
comprising crystalline polymer and having a radiocarbon
content of at least 21.5 pMC,
wherein both surfaces of the bio-based polyester resin-
containing layer comprise particulate antiblock or slip
additives, and
a metal layer on a discharge-treated surface of the laminate bio­
based polyester film,
wherein the laminate film has an oxygen transmission rate of 5-
50 cc/m2/day at 23
degrees Celsius and 0% RH, and a water vapor transmission
rate of 0.03-0.70 g/m2/day at 38 degrees Celsius and 90% RH.
11. A lamination comprising:
a biaxially oriented bio-based polyester film (A) comprising at
least about 21.5 pMC and comprising particulate antiblock or
slip additives;
a biaxially oriented bio-based polyester film (B) comprising at
least about 21.5 pMC and
comprising particulate antiblock or slip additives;
an adhesive that laminates polyester film (A) to polyester film
(B);
and a vapor-deposited aluminum layer on a side of film (A).
2
Appeal 2016-002635
Application 13/179,007
Appellants appeal the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 1 and 3—6 as unpatentable over the combination of
Janssens et al. (US 2004/0076821 Al, published Apr. 22,
2004)(“Janssens”), of Kriegel et al. (US 2010/0028512 Al, published
Feb. 4, 2010)(“Kriegel”), Wood, JR et al. (US 2005/0208282 Al,
published Sept. 22, 2005)(“Wood”), and Robertson “Shelf Life of
Packaged Foods, Its Measurement and Prediction,” CRC Press, 2000;
and claims 9-11, 13—15, 17, and 20—21 over the above references
further in view of Matsuda et al. (US 5,856,017, issued Jan. 5,
1999)(“Matsuda”).
OPINION
Claims 1, 3—6, 9, 10, 17, and 20—212
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have identified reversible error in the Examiner’s
determination that the combination of Janssens, Kriegel, Wood, and
Robertson would have suggested a laminate film comprising bio-based
polyesters having the claimed oxygen transmission rate of 5—50 cc/m2/day at
23 degrees Celsius and 0% RH, and a water vapor transmission rate of 0.03—
0.70 g/m2/day at 38 degrees Celsius and 90% RH as required by independent
claims 1 and 17.
2 We limit our discussion to independent claims 1 and 17.
3
Appeal 2016-002635
Application 13/179,007
The Examiner has the burden of establishing a prima facie case of
obviousness regarding the subject matter recited in the claims on appeal. In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he [patent] examiner
bears the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability”); see also In re Jung, 637
F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining that while “the applicant
must identify to the Board what the examiner did wrong, . . . the examiner
retains the burden to show [unpatentability]”).
According to the Examiner Janssens discloses a laminate film
comprising a biaxially oriented polyester resin-containing layer that differs
from the claimed invention by not describing the claimed oxygen
transmission rate and water vapor transmission rate radiocarbon content.
(Ans. 2-4). To address the oxygen transmission rate, the Examiner turns to
Robertson for describing varying the thickness of a layer to achieve the
claimed oxygen transmission rate based on the description of equation
13.16. (Ans. 3; Robertson pg. 11). To address the water transmission rate,
the Examiner determines it would have been obvious to select water vapor
permeability based on the moisture sensitivity of the enclosed product.
(Ans. 3; Janssens 1 55). The Examiner relied on Kriegel for describing a
bio-based polyester from plant materials and Wood for describing anti-block
agents. (Ans. 4).
We agree with Appellants that the Examiner’s rejection is premised
on achieving both the claimed oxygen transmission rate and the claimed
water vapor transmission rate by simply adjusting the thickness of
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Appeal 2016-002635
Application 13/179,007
Janssens’s film. (App. Br. 19). The Examiner has not directed us to
portions of Janssens that correlate layer thickness with both oxygen
transmission rate and water vapor transmission rate. Paragraph 55 of
Janssens merely discloses that the thickness of the polyester film is
dependent upon the intended application. The Examiner’s reliance on
Robertson is also misplaced. Robertson’s equation 13.16 does not account
for film formed from different polymers. (Robertson p. 11). Robertson’s
equation depends on other variables besides thickness including the surface
area of the package as well as the partial pressure of water outside and inside
the package. (Id.). Robertson further discloses varying degrees of
protection are achieved dependent upon the type of polymer. (Id.).
Consequently we agree with Appellants that:
Regardless of what combination the Examiner uses, a person of
ordinary skill in the art would in no way find the achievement of both
claimed oxygen and water vapor transmission rates obvious based on
the combination of Janssens and Robertson which: (1) does not
disclose the claimed oxygen transmission rate; (2) does not disclose a
single water vapor transmission rate; and (3) does not suggest a
supposed thickness (or amount of antiblock particles) for
simultaneously achieving both the claimed transmission rates at once.
(App. Br. 21).
Accordingly, on this record, we are constrained to reverse the
Examiner’s rejections of claims 1, 3—6, 9, 10, 17, and 20-21under 35 U.S.C.
§ 103(a).
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Appeal 2016-002635
Application 13/179,007
Claims 11 and 13—15
The Examiner does not identify any teaching in Janssens, Kriegel,
Wood, or Robertson for describing a lamination comprising a biaxially
oriented bio-based polyester film (A) comprising at least about 21.5 pMC
and comprising particulate antiblock or slip additives and a biaxially
oriented bio-based polyester film (B) comprising at least about 21.5 pMC as
required by independent claim 11. Since the Examiner failed to present a
reasoned basis supported by factual evidence to support the rejection of
independent claim 11, we are constrained to reverse the rejection of
independent claim 11 and depending claims 13—15. See In re Oetiker,
supra.
ORDER
The Examiner’s prior art rejections of claims 1, 3—6, 9-11, 13—15, 17,
and 20—21 under 35 U.S.C. § 103(a) are reversed.
REVERSED
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