Gala Industries, Inc.Download PDFPatent Trials and Appeals BoardMay 4, 20212020002550 (P.T.A.B. May. 4, 2021) 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. 14/939,029 11/12/2015 Keith Colls GALA19 1095 6980 7590 05/04/2021 TROUTMAN PEPPER HAMILTON SANDERS LLP 600 PEACHTREE ST NE STE 3000 ATLANTA, GA 30308 EXAMINER LOWREY, DANIEL D ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 05/04/2021 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): jim.schutz@troutman.com patents@troutman.com ryan.schneider@troutman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEITH COLLS and DUANE BOOTHE Appeal 2020-002550 Application 14/939,029 Technology Center 1700 Before JEFFREY T. SMITH, GEORGE C. BEST, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–26, 28, and 29. See Final Act. 2, 7, 9. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Gala Industries, Inc., 181 Pauley Street, Eagle Rock, VA 24085 (‘Gala’).” Appeal Br. 3. Appeal 2020-002550 Application 14/939,029 2 CLAIMED SUBJECT MATTER Claims 1 and 2, reproduced below, are illustrative of the claimed subject matter: 1. A roll of film for forming one or more bags, the film having a formulation comprising: a first resin present in an amount of about 74.01 percent of the formulation; a second resin present in an amount of about 24.49 percent of the formulation, the second resin being physically softer than the first resin; and a modifying agent present in an amount of about 1.5 percent of the formulation, wherein the modifying agent comprises a blooming agent configured to act as a lubricant to prevent self-adhesion; and wherein the film is rolled onto a core. 2. A bag comprising a film, the film having a formulation comprising: a first resin present in an amount of from about 60 to about 85 percent of the formulation; a second resin present in an amount of from about 14 to about 39 percent of the formulation, the second resin being physically softer than the first resin; and a modifying agent, wherein the modifying agent is a blooming agent configured to act as a lubricant to prevent self- adhesion; wherein the bag is housing tacky materials. Claims App. (Appeal Br. 15) REFERENCES The prior art references relied upon by the Examiner are: Name Reference Date Diehl US 5,358,783 Oct. 25, 1994 Simmons US 5,869,555 Feb. 9, 1999 Rouyer Re. 36,177 Apr. 6, 1999 Free US 2012/0000161 A1 Jan. 5, 2012 Appeal 2020-002550 Application 14/939,029 3 REJECTIONS2 Claims 1–17, 19, 21–26, 28, and 29 are rejected under 35 U.S.C. § 103 based on Free, Rouyer, Diehl, and Simmons. Ans. 3; see Final Act. 2.3 OPINION Claims 1 & 284 In rejecting claim 1, the Examiner acknowledges that the combined teaching of Free, Rouyer, and Diehl does not teach or suggest “a first resin present in an amount of about 74.01 percent of the formulation” and “a second resin present in an amount of about 24.49 percent of the formulation, the second resin being physically softer than the first resin” as recited. Final Act. 3. The Examiner, however, finds that Diehl describes a copolymer blend having “about 40 parts to about 95 parts” of a soft resin and “about 5 parts to about 60 parts” of a hard resin. Id.; Deihl 4:39–43. The Examiner also finds that Diehl describes increasing the amount of the hard resin (id. 2 Claims 18 and 20 are rejected under 35 U.S.C. § 103 based on Free, Royer, Diehl, Simmons and a reference known as “Kraton D SIS.” Final Act. 7. Appellant does not separately argue for the patentability of claims 18 and 20 which depend from claim 2. See Appeal Br. 12 (arguing only that Kraton “fails to cure the above-described deficiencies of Free, Rouyer, Diehl, and Simmons with respect to independent Claim 2”) Claims 18 and 20 therefore stand or fall with claim 2 See id.; see also 37 C.F.R. § 41.37(c)(1)(iv). 3 The Final Rejection shows that claim 28 is rejected under 35 U.S.C. § 103 based on a reference known as Verma and Diehl. Final Act. 9. The Examiner subsequently withdrew the rejection in the Advisory Action. Advisory Action of June, 6, 2019, 2 (“Advisory Action”). The Examiner issued a new rejection of claim 28 under 35 U.S.C. § 103 based on Free, Rouyer, Diehl, and Simmons. Advisory Action 2; Ans. 3. 4 Appellant argues for the patentability of claims 1 and 28 as a group. See Appeal Br. 7–9. Claims 1 and 28 stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-002550 Application 14/939,029 4 (citing Diehl cols. 3–4, lines 38–38); see Ans. 12 (citing Diehl cols 3–4, lines 62–11)) and that Rouyer describes “further adding components to improve handleability” (Final Act. 3 (citing Rouyer 12:49–52)). The Examiner accordingly determines that a skilled artisan would have increased the hard resin amount in Diehl to arrive at the recited percentages. Final Act. 3. The cited portions of Diehl describe increasing the styrene content to increase the cohesive strength and heat resistance. Diehl 3:58–4:3. The cited portion of Rouyer describes a film having “additional amounts of plasticizers, stabilizers, dyes, perfumes, fillers and other materials to increase the flexibility, bandleability, visibility or other useful property of the film.” Rouyer 12:49–52. The record before us lacks a sufficient explanation as to why a skilled artisan would have increased the hard resin percentage beyond the ranges described in Diehl. We accordingly do not sustain the rejection of claims 1 and 28. Claim 25 Appellant argues that Diehl teaches away from “a first resin present in an amount of from about 60 to about 85 percent of the formulation. . . [and] a second resin present in an amount of from about 14 to about 39 percent of the formulation, the second resin being physically softer than the first resin” as recited in claim 2. Appeal Br. 10. Appellant argues that Diehl teaches the 5 Appellant argues for the patentability of claims 2–17, 19, 21–26, and 29 as a group with claim 2 as representative. See Appeal Br. 9–14. To the extent that these claims are of varying scope, because Appellant’s argument is based on claim 2 only without separately arguing any dependent claims, these claims stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-002550 Application 14/939,029 5 percentage of the hard resin cannot be more than 50% to prevent the end product from being too stiff. Id. Appellant’s argument is unpersuasive because it is unsupported by the record. Diehl describes a copolymer blend having “about 40 parts to about 95 parts” of a soft resin and “about 5 parts to about 60 parts” of a hard resin. Deihl 4:39–43. Although Appellant argues that the unit of parts do not necessarily correspond to the unit of percentages (Appeal Br. 19), a Declaration from the co-inventor Mr. Keith Colls does not distinguish between the unit in parts and in percentages and in fact acknowledges that “[t]he Diehl polymer is 40-95% of soft resin and 5-60% of hard resin.” Decl. ¶ 15. We further note that Appellant’s calculation of the total composition in Diehl to be 180 parts resulting in a range between 2.78% and 33.3% of the hard resin (Appeal Br. 11, n.2) fails to show that Diehl’s unit of parts does not correspond to the recited unit of percentages. More specifically, Appellant arrives at the sum of 180 parts by combining “100 parts for the block copolymer blend and 80 for the tackifying resin” which includes plasticizer oil, secondary tackifying resin, and antioxidants.” Id. As the Examiner points out, Diehl does not require its copolymer to include such optional components. Ans. 13. Appellant does not dispute the Examiner’s finding that such additional components are optional. Reply Br. 6. No reversible error has therefore been identified in the Examiner’s finding that Diehl teaches a copolymer blend having about 40 parts to about 95 parts of a soft resin and about 5 parts to about 60 parts of a hard resin which renders unpatentable the recited ranges in claim 2. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (concluding that a claimed invention was rendered obvious by a prior art reference whose disclosed range (“about 1– Appeal 2020-002550 Application 14/939,029 6 5%” carbon monoxide) abutted the claimed range (“more than 5% to about 25%” carbon monoxide)); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) (concluding that a claim directed to an alloy containing “0.8% nickel, 0.3% molybdenum, up to 0.1% maximum iron, balance titanium” would have been prima facie obvious in view of a reference disclosing alloys containing 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium). See also, Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1168, 77 USPQ2d 1865, 1872 (Fed. Cir. 2006) (“normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”). Where the difference between the claimed invention and the prior art is some range or other variable within the claims, Appellant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. Woodruff, supra. The burden of showing unexpected results rests on Appellant by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests on he who asserts them”). Further, a showing of unexpected results supported by factual evidence must be reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). In this case, Appellant does not argue that the composition recited in claim 2 exhibits unexpected results. Appellant’s argument regarding long-felt need and failure of others is unsupported by evidence. Mr. Colls’s Declaration describes the effort his Appeal 2020-002550 Application 14/939,029 7 team undertook to provide a solution to a problem which led to the filing of the pending application but does not sufficiently show that there is a long- felt need in the industry for the solution or failure of others in the industry. See Declaration ¶¶ 11–14. See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332–33 (Fed. Cir. 2009) (finding that patentee failed to demonstrate, as a matter of law, a long-felt but unmet need with bare assertions that the patent provided “improved efficiency”). Appellant’s remaining arguments are unpersuasive because they are based on the unsupported premise that the compositional ranges in Diehl do not overlap those recited which we addressed supra. See Appeal Br. 10–11 (arguing that the film in Diehl is pressure sensitive and does not use the harder resin as the primary copolymer); see also Decl. ¶ 15 (“Diehl expressly states that the hard polymer would be too stiff to be used as a ‘primary’ copolymer.”). The remaining portions of the Declaration by Mr. Colls are likewise unpersuasive because the statements are incommensurate in scope with the claim. For example, Mr. Colls states: “Diehl repeatedly states that the primary polymer in its formulation must be the soft polymer to produce the rapid wet out of the surfaces to which they must adhere.” Decl. ¶ 15. The plain language of claim 2 does not require any such rapid wet out. Mr. Colls also states that “Diehl actually suggests that its hot melt adhesives may be used in packaging as adhesives or films as a backing substrate” and therefore an ordinary skilled artisan would not have relied on the teaching “for packaging film applications and jellyfish in the fom1ed film.” Id. Mr. Colls’s statement does not structurally distinguish claim 2. The rejection of claim 2 is sustained. Appeal 2020-002550 Application 14/939,029 8 Claims 18 & 20 Because Appellant does not separately argue for the patentability of claims 18 and 20 which depend from claim 2, they stand or fall together with claim 2. See Appeal Br. 12 (arguing only that Kraton “fails to cure the above-described deficiencies of Free, Rouyer, Diehl, and Simmons with respect to independent Claim 2”); see also 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION The Examiner’s rejection of claims 1 and 28 is reversed. The Examiner’s rejection of all other claims is affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–17, 19, 21–26, 28, 29 103 Free, Rouyer, Diehl, Simmons 2–17, 19, 21–26, 29 1, 28 18, 20 103 Free, Rouyer, Diehl, Simmons, Karaton D SIS 18, 20 Overall Outcome 2–26, 29 1, 28 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART Copy with citationCopy as parenthetical citation