Ex Parte Bekele

Patent Trial and Appeal Board

Nov 22, 2013

12152615 (P.T.A.B. Nov. 22, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/152,615 05/15/2008 Solomon Bekele D-44230-01 5579
7590 11/22/2013
Sealed Air Corporation
P.O. Box 464
Duncan, SC 29334
EXAMINER
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
11/22/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SOLOMON BEKELE
____________________

Appeal 2012-009394
Application 12/152,615
Technology Center 1700
____________________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
BRIAN P. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/152,615

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final Office Action
rejecting1 claims 15-20 under 35 U.S.C. § 103(a).2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

BACKGROUND
Appellant’s claimed invention is directed to a method of aseptically
packaging food by separately sterilizing the food and package into which the
food is inserted. (Spec. 1:32-38 3). Appellant’s method uses two coextruded
multilayer films, identical in composition, to form a pouch for food. (Id. at
4:27 -7:19). The thickness of the second film must be less than 80% of the
thickness of the first film according to independent claim 15. (App. Br. 14).
The sterilized pouch is filled with sterilized food and sealed. (Spec. 14).
Representative Claim 15 on appeal is reproduced below from the
Claims Appendix (emphasis added):
15. A method of making an aseptic package comprising:
c) [sic a)] sterilizing a food product;
d) [sic b)] sterilizing a printed laminate comprising
i) a first coextruded multilayer film comprising
(a) a core layer, having a first major surface and a second
major surface, comprising ethylene vinyl alcohol copolymer,
polymeric adhesive, or polyamide;

1 Final Office Action mailed August 17, 2011.
2 Appeal Brief filed January 17, 2012 (“App. Br.”).
3 Specification filed May 15, 2008 (“Spec.”).
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(h) [sic] a first intermediate layer, adjacent the first major surface
of the core layer, comprising polyamide;
(i) a second intermediate layer, adjacent the second major
surface of the core layer, comprising polyamide;
(j) an outer layer comprising amorphous cyclic olefin copolymer, or a
blend of amorphous cyclic olefin copolymer
and at least one olefinic copolymer;
(k) an inner layer comprising an olefinic copolymer, or a
blend of an olefinic copolymer and amorphous cyclic
olefin copolymer;
(l) a first tie layer adhering the first intermediate layer to
the outer layer; and
(m) a second tie layer adhering the second intermediate
layer to the inner layer;
the first coextruded multilayer film having an inside surface and an
outside surface;
ii) a second coextruded multilayer film comprising
(a) a core layer, having a first major surface and a second
major surface, comprising ethylene vinyl alcohol copolymer,
polymeric adhesive, or polyamide;
(h) [sic] a first intermediate layer, adjacent the first major surface
of the core layer, comprising polyamide;
(i) a second intermediate layer, adjacent the second major
surface of the core layer, comprising polyamide;
(j) an outer layer comprising amorphous cyclic olefin copolymer,
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or a blend of amorphous cyclic olefin copolymer
and at least one olefinic copolymer;
(k) an inner layer comprising an olefinic copolymer, or a
blend of an olefinic copolymer and amorphous cyclic
olefin copolymer;
(l) a first tie layer adhering the first intermediate layer to
the outer layer; and
(m) a second tie layer adhering the second intermediate
layer to the inner layer;
the second coextruded multilayer film having an inside surface and an
outside surface;
iii) a printed image disposed on the outside surface of the first
coextruded multilayer film, or the inside surface of the second
coextruded multilayer film; and
iv) an adhesive that bonds the outer layer of the first coextruded
multilayer film to the inner layer of the second coextruded multilayer
film;
c) forming the sterilized film into a pouch;
d) filling the pouch with the sterilized food product; and
e) sealing the pouch;
wherein the thickness of the second coextruded multilayer film is less
than 80% of the thickness of the first coextruded multilayer film.

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REJECTIONS

The Examiner rejects Claims 15-20 under §103(a) as obvious over
Musco et al., US 2003/0148123 A1, published August 7, 2003 (hereafter
“Musco”) in view of Goerlitz et al., CA 2 496 177, published March 4, 2004
(PCT) (hereafter “Goerlitz”) and further in view of Turnbull et al., US
5,948,513, issued September 7, 1999 (hereafter “Turnbull”), Brody, “The
Wiley Encyclopedia of Packaging Technology,” 2nd Ed. published 1997
(hereafter “Brody”), and Wolf et al., US 6,627,273 B2, issued September 30,
2003 (hereafter “Wolf”).
The Examiner provisionally rejects Claims 15, 17, and 20 on the
ground of non-statutory obviousness-type double patenting as being
unpatentable over claim 19 of co-pending Application No. 12/828,461 in
view of Turnbull and Wolf.
The Examiner provisionally rejects Claims 15, 17, and 20 on the
ground of non-statutory obviousness-type double patenting as being
unpatentable over claim 15 of co-pending Application No. 12/770,954 in
view of Turnbull and Wolf.
We note the 12/828,461 application is currently on appeal and the
12/770,954 application issued as US 8,377,529 on February 19, 2013.
Appellant offers to file terminal disclaimers when the “remaining issues are
reconciled” in the present application but does not raise any substantive
arguments traversing the Examiner’s non-statutory obviousness-type double
patenting rejections. (App. Br. 5). Because it is unclear whether the
provisional obviousness-type double patenting rejections are still proper, we
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decline to reach these rejections. Cf. Ex Parte Jerg, 2012 WL 1375142, at
*3 (BPAI 2012) (“Panels have the flexibility to reach or not reach
provisional obviousness-type double-patenting rejections.” (citing Ex parte
Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential)).

ANALYSIS
Appellant argues the Examiner’s rejection of Claims 15-20 under
35 U.S.C. § 103(a) as a group, represented by claim 15. Separate arguments
regarding any individual claims are waived. 37 C.F.R. § 41.37(c)(1)(vii).
Musco expressly discloses a multilayer film for use in so-called “hot-
fill” or “retort” methods of package filling and sterilization, but Musco is
silent with regard to aseptic filling. (App. Br. 6). Appellant argues “there is
no motivation or impetus for the skilled artisan to substitute a more
expensive aseptic process such as disclosed in Brody.” (App. Br. 8).
Appellant’s Specification acknowledges, however, that “[a]septic food
packaging is a well-known method of packaging foods for which
sterilization of the food and the packaging material containing the food is
required,” such as in a pouch. (Spec. 1:31-35). The Examiner responds that
Brody is just such an example of aseptic food packaging having specific
advantages over conventional retort processing, including uniform
sterilization, prevention of flavor loss, and minimization of quality
degradation, quite apart from the relative cost of the procedures. (Ans. 20-
21). The Examiner finds Brody “even teaches that multilaminate materials
[such as disclosed in Musco] can be employed with aseptic processing.” (Id.
(citing to Brody at 44-45)). Musco, moreover, does suggest alternative uses
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for a coextruded, multilayer, trap-printed laminate, which include packaging
beverages, cosmetics, and block cheese, making semi-rigid trays, vacuum
skin packages, industrial dunnage bags and the like. (Musco ¶¶ 175-183).
We are not persuaded by Appellant’s argument and see no error in the
Examiner’s findings and reasoning with respect to the proposed motivation
to modify Musco.
Two limitations of the multilayer films claimed by Appellant are not
found in Musco - the “outer layer comprising amorphous cyclic olefin
copolymer” and “wherein the thickness of the second coextruded multilayer
film is less than 80% of the thickness of the first coextruded multilayer
film.” Both limitations are expressly disclosed in prior art packaging
systems disclosed in Goerlitz, Wolf, and Turnbull, as found by the Examiner.
(Ans. 22-27).
Goerlitz describes the use of amorphous cyclic olefin copolymers in
an outer layer of a coextruded three-layer film, where the glass transition
temperature and relative film thickness are selected to achieve an optimal
balance of water-vapor barrier properties, flexibility, puncture resistance,
high transparency, good thermoformability, and a reduction in overall
thickness of the laminate film. (Goerlitz 2:16 – 3:25, 6:17 – 8:9; Ans. 6).
Goerlitz finds these film properties particularly advantageous for use in food
packaging. (Goerlitz 16:6-19). Wolf further describes a food-package
comprising a multilayer “sealant” film having a thickness less than 80% of a
multilayer “barrier” film to facilitate heat sealing the food package. (Wolf
Fig. 2 and Col. 5:3-40). Turnbull is directed to laminated films for food
packaging. (Turnbull Col. 1:9-22). Although exemplifying preferred
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“double wound” embodiments where both films are substantially the same
thickness, Turnbull expressly discloses multilayer “individual films” may be
different and of varying thickness from 19-25 microns, 19 being less than
80% of 25. (Turnbull Col. 1:40-56 and Col. 3:30-50; Ans. 24-25).
Appellant’s Specification includes multiple examples and tables of
layer and film thickness data for the claimed coextruded multilayer films,
but it does not describe the significance of utilizing a “second coextruded
multilayer film . . . less than 80% of the thickness of the first coextruded
film” or ascribe any criticality to this claim limitation. (Spec. 4-7, 14-28,
and Tables 2-6). In the absence of such description, Goerlitz, Wolf, and
Turnbull provide more than adequate evidence to support the Examiner’s
reasoned reliance thereon for supplying the claim limitations absent from
Musco. We agree with the Examiner; it would have been obvious for one of
skill in the art to use the amorphous cyclic olefin copolymer of Goerlitz in
the outer layer of Musco’s multilayer films, and to vary the relative thickness
of the two multilayer films as taught by Wolf and Turnbull, to achieve an
optimal balance of well-known aseptic food packaging properties as taught
by Brody. (Ans. 22-27). We further note Appellant does not cite any
evidence to contravene the conclusion that this would have been the
predictable result of making the prior art combination relied upon by the
Examiner.
Appellant argues claim 15 inherently requires both film layers have
certain, but unspecified, oxygen barrier properties, given the composition of
the core and intermediate layers. Appellant attempts to distinguish the
claimed films from the sealant and barrier films described in Wolf based on
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the different oxygen barrier properties of Wolf’s films and argues Wolf
“teaches away from use of a laminate in which both component films
include polymers having significant oxygen barrier properties, as claimed in
the present invention.” (App. Br. 12; Reply Br. 3-4). Appellant’s
Specification includes many examples and tables of data for coextruded
multilayer films but never mentions the oxygen barrier properties of the
claimed films, much less of the core and intermediate layers. (Spec. 11, 15-
28, and Tables 2-6). The only mention of oxygen barrier properties appears
in the Background of Invention section in connection with commercially
available films. (Spec. 3:18-23). Therefore, we agree with the Examiner,
there is nothing in Appellant’s Specification which supports the claim
construction urged by Appellant, and the claims do not recite any oxygen
barrier properties that can be used to distinguish Wolf. (Ans. 27).
“We will not read into a reference a teaching away . . . where no
such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG
v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). A reference
teaches away if a person of ordinary skill, upon reading the reference, would
be discouraged from following the path taken by the applicant, or would be
led to take a divergent path. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
When we examine Wolf under this framework, we are not persuaded a
person of ordinary skill in the art would be discouraged from using
individual films of a different thickness in an aseptically packaged food
pouch due to potentially different oxygen barrier properties of the individual
films.
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Appellant argues Turnbull’s preferred double wound film
embodiments, where both films are the same thickness, also teach away
from using two films of different thicknesses in a laminated food package.
(App. Br. 10-11). Appellant ignores the full import of Turnbull’s statement
on which the Examiner relies: “It is preferred that the individual films to be
laminated are identical, but laminates produced from different individual
films are also within the scope of the invention.” (Turnbull Col. 3:47-49;
Ans. 24). When this statement is read in light of Turnbull’s teachings that
individual multilayer films may vary in thickness, for example “from about
19 to about 25 um,” and that combining thicknesses of two films increases
packaging strength, one of ordinary skill would not reasonably understand
Turnbull to discourage use of different film thicknesses in a laminated food
package. (Turnbull Col. 1:40-56, Col. 5:45 – Col. 6:3; Ans. 24-25). “A
reference must be considered for everything that it teaches, not simply the
described invention or a preferred embodiment.” In re Applied Materials,
Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012).

DECISION
For the above reasons, the Examiner’s rejection of claims 15-20 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)(1).
AFFIRMED

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