Ex Parte Aguirre et al

Board of Patent Appeals and Interferences

Jun 5, 2009

10949659 (B.P.A.I. Jun. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JUAN JOSE AGUIRRE
and MARK B. MILLER
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Appeal 2009-002246
Application 10/949,659
Technology Center 1700
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Decided:1 June 05, 2009
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Before CHUNG K. PAK, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-002246
Application 10/949,659

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-19 and 21-242. We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.
BACKGROUND
The invention relates to an opaque biaxially oriented polymer film
that may be used as a label or packaging material (e.g., food wrapper) (Spec.
2, paras. [0006] to [0008]).
Claim 1 is illustrative:
1. An opaque biaxially oriented polymer film comprising an
opaque biaxially oriented polymer film prepared from high crystalline
polypropylene wherein the film has a thickness of less than 1.25 mil
(32 micrometres).

The Examiner relies upon the following prior art references in the
rejections of the appealed claims:

Tollette US 4,264,657 Apr. 28, 1981
Lohmann US 5,817,412 Oct. 6, 1998
Moseley US 6,228,316 B1 May 8, 2001
Su US 6,844,078 B2 Jan. 18, 2005

The Examiner has rejected claims 1-17 and 19, 21-24 under 35 U.S.C.
§ 103(a)3 as being unpatentable over the combined teachings of Lohmann

2 Claim 20 has been cancelled (see Br. 2).
3The rejections under 35 U.S.C. § 112, first and second paragraphs, made in
the final office action have been withdrawn by the Examiner (see, Advisory
Action mailed March 14, 2007).
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and Moseley, as evidenced by Su4. To reject dependent claim 18 under 35
U.S.C. § 103(a), the Examiner added Tollette to the combination of
Lohmann and Moseley.
Appellants focus the arguments on independent claim 1 (Br. 3-5).
Appellants’ remarks regarding dependent claim 2 do not provide a
substantive argument for the separate patentability of claim 2 (Br. 4). See 37
C.F.R. § 41.37(c)(1)(vii).5
Accordingly, our discussion will focus on independent claim 1.
ISSUE ON APPEAL
The issue on appeal is whether the Examiner has reversibly erred
because, according to Appellants, there is no “sufficient motivation to
combine the teaching of using the high crystallinity polypropylene of
Moseley to form the multi-layer films of Lohmann” (Br. 3).
FINDINGS OF FACT (FF)
Findings of fact throughout this opinion are supported by a
preponderance of the evidence.
Appellants describe that prior art polypropylene film used as labels
and packaging material “typically have a thickness of approximately 1.1 to
3.2 mils (27.9 to 81.3 micrometers)” (Spec. 1, para. [0002]).

4 The Examiner relied upon Su as “evidence” of the heat of fusion of high
crystalline polypropylene (see, page 6 of the Final Rejection mailed Jan. 20,
2007, and Ans. 3, 5). As this issue is not in dispute in the current appeal, we
will not further discuss Su (generally, Br.; no Reply Brief has been filed).
5 Further, as the Examiner aptly pointed out, claim 2 does not require the
feature that Appellants refer to, since it is claimed as an alternative feature
(Ans. 13; claim 2).
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Appellants also describe that the “exemplary high crystalline
polypropylene useful” for the purposes of their invention are commercially
available with an isotactic index at least 97 percent (Spec. 5:16-23).
Appellants do not dispute the Examiner’s findings that Lohmann
describes an opaque biaxially orientated propylene film that may have a
thickness of less 1.25 mils (32 micrometres) (Ans. 3-4; Lohmann, e.g., col.
1, ll. 6-7; col. 3, ll. 61-65; col. 7, ll. 58-62; generally Br.).
Appellants also do not dispute the Examiner’s findings that Moseley
describes an opaque biaxially oriented highly crystalline polypropylene film
(Ans. 4; Moseley, e.g., col. 2, ll. 54-59; col. 4, ll. 47-60; generally Br.).
The film of Moseley has a film thickness of from about 1.75 mil to 4
mil and may be used to form an “in-mold label” (col. 2, ll. 54-65).
Appellants also do not dispute that both Loehmann and Moseley
describe that their films are made opaque by adding a particulate filler to
cause microvoids or cavities to form (Ans. 4; Loehmann col. 4, ll 47-60;
Moseley, col. 6, ll. 42-46; generally Br.).
Lohmann describes that the preferrred polyproylene has a melting
point of preferably from 150° to 170°C, and a melt flow index of 0.5g/10
min to 8 g/10min, preferably from 2g/10min to 5/10min at 230°C under a
force of 2.16 N (col. 3, ll. 5-12). Lohmann also describes that isotactic
propylene homopolymer having an atactic fraction of 15% or less is
preferred (col. 3, ll. 13-14 and 20-21).
Moseley describes that “conventional isotactic polypropylene of
commerce” may be used for the opaque biaxially oriented highly crystalline
polypropylene film (col. 3, ll. 33-34). Conventional isotactic polypropylene
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has a melting point of from about 160° to 166°C, and a melt flow rate of
between about 2g/10min to 10g/10min at 230°C (col. 3, ll. 34-40).
Moseley describes that highly crystalline polypropylene results in the
“best combination of stiffness and low shrinkage values” (col. 3, ll. 46-48),
and that “highly crystalline refers to a polypropylene species having an
isotactic index of at least 93” (col. 3, ll. 48-50).
One of ordinary skill in the art would have known and appreciated
that the commercially available high crystalline isotactic polypropylene such
as described in Moseley would have been useful as the polypropylene film
layer of Lohman as their described properties are comparable to (that is,
substantially overlap) the properties described by Lohmann as preferred for
their polypropylene.
PRINCIPLES OF LAW
The Supreme Court has instructed that although the teaching,
suggestion, and motivation test “captured a helpful insight,” an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-418 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. 398 at 415-416. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 550 U.S. at 417.
It is well established that a prior art description of a chemical genus
often renders a claimed species within the genus prima facie obvious to one
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of ordinary skill in the art, especially when the claimed composition is used
for the identical purpose taught by the prior art. Merck & Co. Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
The burden is on Appellant to identify reversible error in the appealed
§ 103 rejection. Cf. In re Kahn, 441 F.3d 977, 985-986 (Fed. Cir. 2006); see
also 37 C.F.R. § 41.37(c)(1)(vii).
ANALYSIS
Contrary to the Appellants’ position that there is insufficient
motivation to combine the teachings of Moseley and Lohmann, Lohmann
describes that the most preferred polypropylene for their opaque biaxially
oriented film is isotactic and has comparable properties to the high
crystalline isotactic polypropylene of Moseley (see FF). Therefore, we
determine that one of ordinary skill in the art would have looked to the
commercially available highly crystalline isotactic polypropylene taught by
Moseley for forming Lohmann’s opaque biaxially oriented films and would
have been led to use such readily available highly crystalline species with a
reasonable expectation of successfully forming the opaque biaxially oriented
polypropylene layer of Lohmann. The “improvement” herein appears to be
no more than the predictable use of commercially available highly
crystalline polypropylene for its known purpose. See KSR, 550 U.S. 398 at
417.
Appellants further contend that no motivation exists since Lohmann
utilizes polymers with “a low seal initiation temperature” and that “it is
unknown whether the films of Moseley would destroy the intended function
of Lohmann” (Br. 4). However, Appellants have not presented any evidence
or persuasive reasoning why one of ordinary skill in the art would have
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expected that the films of Moseley would destroy the intended function of
Lohmann. This argument is therefore not persuasive of reversible error.
CONCLUSION
For the foregoing reasons, as well as those expressed in the Answer,
Appellants have not established that the Examiner reversibly erred in
making out a prima facie case of obviousness.
Accordingly, we sustain the Examiner’s § 103 rejection of claims 1-
17, 19, and 21-24 based on the combined teachings of Lohmann and
Moseley, as well as the Examiner’s separate § 103 rejection of dependent
claim 18.
ORDER
The Primary Examiner’s decision is affirmed.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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