Ex Parte Sakellarides et alDownload PDFPatent Trial and Appeal BoardJun 30, 201713179007 (P.T.A.B. Jun. 30, 2017) Copy Citation 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): EOfficeVA @ mofo.com PatentDocket @ mofo. com pair_mofo @ firsttofile. com 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 4 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). 5 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 6 Copy with citationCopy as parenthetical citation