Ex Parte Bellmore et al

Patent Trial and Appeal Board

Mar 19, 2018

12587915 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/587,915 10/15/2009 David Bellmore
56973 7590 03/21/2018
THEW ATSON INTELLECTUAL PROPERTY GROUP, PLC
3133 HIGHLAND DRIVE
SUITE 200
HUDSONVILLE, MI 49426
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SCH-081550 5430
EXAMINER
SANDERSON, LEE E
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
JJOVANOVIC@WATSON-IP.COM
vvasiljevic@watson-ip.com
docketing@watson-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID BELLMORE and KAREN BERGER
Appeal2017-006536
Application 12/587,915
Technology Center 1700
Before: LINDA M. GAUDETTE, A VEL YN M. ROSS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
decision finally rejecting claims 1-3, 5, 6, 8, 16 and 19. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Scholle Corporation is identified as the real party in interest. App. Br. 2.
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Application 12/587 ,915
Claim 1 illustrates the subject matter on appeal and is
reproduced below:
1. A bag for a flowable material, for use within bag
in box packaging, comprising:
- a plurality of walls coupled together by way of a
plurality of seals to define a substantially fluid tight cavity, the
plurality of walls each comprising a laminate structure
compnsmg:
- a sealant layer comprising a polyethylene film
having a first side and a second side;
- a core layer comprising an oriented
polypropylene film, the core layer having a first side and
a second side, with the first side of the sealant layer
directly laminated through thermal lamination or
adhesive lamination to the first side of the core layer; and
- a cap layer comprising a coextruded film having
an EVOH layer surrounded on both sides by a
polyethylene layer, the cap layer having a first side and a
second side, the second side of the cap layer directly
laminated through thermal lamination or adhesive
lamination to the second side of the core layer, wherein
the cap layer is the outermost layer of the formed bag and
the sealant layer is the innermost layer of the formed bag.
Appellants (App. Br. 4--5) request review of the following rejections
from the Examiner's Final Office Action:
I. Claims 1, 2, 5, and 6 rejected under 35 U.S.C. § 103(a) as
unpatentable over Blemberg (US 2003/0087057 Al, published May 8,
2003).
II. Claims 1, 2, 5, and 6 rejected under 35 U.S.C. § 103(a) as
unpatentable over Lu (US 5,223,346, issued June 29, 1993), Bentmar (US
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6,165,574, issued December 26, 2000), and Stillman (US 4,309,466, issued
January 5, 1982).
III. Claim 3 rejected under 35 U.S.C. § 103(a) as unpatentable over
Blemberg and Bishop (Charles A. Bishop et al., Vacuum Deposition onto
Webs, Foils, and Films, Products Using Vacuum Deposited Coatings,
Materials Science and Process Technology Series, William Andrew Inc.,
13-14 (2007)).
IV. Claim 8 rejected under 35 U.S.C. § 103(a) as unpatentable over
Blemberg and Reid (US 4,604,322, issued August 5, 1986).
V. Claim 16 rejected under 35 U.S.C. § 103(a) as unpatentable
over Blemberg and Soamal (Soarus LLC, Soarnal DT2904R, Ethylene Vinyl
Alcohol Copolymer, a Product Datasheet, 1-3 (2008) ).
VI. Claim 19 rejected under 35 U.S.C. § 103(a) as unpatentable
over Lu, Bentmar, Stillman, and Beyer (US 3,607,519, issued September 21,
1971).
For Rejections I and II, Appellants do not argue any claim separate
from the other. See generally App. Br. For the separate Rejections III-VI,
Appellants rely on the arguments presented when discussing Rejections I
and II and do not distinguish the additional features of the claims so rejected
based on the additionally cited references. Id. Accordingly, we select claim
1 as representative of the subject matter before us for review on appeal and
decide the appeal as to all grounds of rejection based on the arguments made
by Appellants in support of patentability of claim 1.
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we affirm the rejections of claims 1-3, 5, 6, 8, 16 and 19
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under 35 U.S.C. § 103(a) for the reasons presented by the Examiner. We
add the following for emphasis.
Claim 1 is directed to a bag for a flowable material comprising a
laminate structure that includes a sealant layer, a core layer, and a cap layer.
Claim 1 is a product-by-process claim in that it requires that the laminate
structure is formed by thermal lamination or adhesive lamination.
Rejections based on Blemberg
Appellants do not dispute the Examiner's findings that Blemberg' s
Figures 2A and 2B show a laminate structure for a bag comprising the
claimed layer constituents. Final Act. 3--4; see generally App. Br. Instead,
Appellants argue that Blemberg' s laminate structure and bag are different
from the claimed laminate structure and bag because the respective laminate
structures are made by different processes (extrusion lamination (Blemberg)
versus thermal lamination/adhesive lamination (claimed invention)). App.
Br. 5.
"[E]ven though product-by-process claims are limited by and defined
by the process, determination of patentability is based on the product itself."
In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Therefore, where the
Examiner provides a reasonable basis for concluding that the claimed and
prior art products are the same, the burden shifts to the Appellants to show
that the prior art product does not necessarily or inherently possess the
characteristics of the claimed product. Id. at 698.
Appellants direct attention to the Second Declaration of David
Bellmore ("Declaration," "Declarant"), a co-inventor, in support of their
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contention that Blemberg's structure does not possess the same
characteristics as the claimed structure. Id. at 5-9. 2
Declarant testifies that the extrusion lamination procedure does not
yield film structures that are suitable for use in the field of box packaging.
Deel. i-f 5. In support of this testimony, Declarant provides comparative
testing between bags made according to the claimed invention and bags
made from a DuraTech film, said to yield a very similar structure from a
strength perspective as compared to the films disclosed in Blemberg. Id. i-f 7.
That is, Declarant asserts that the DuraTech film is substantially identical
from a suitability standpoint as the films disclosed in Blemberg. Id.
We have considered the evidence relied upon by Appellants and
Declarant, but agree with the Examiner's determination that the data are
insufficient to persuasively weigh in favor of non-obviousness in light of the
prior art. Ans. 15-17.
As noted by the Examiner, Declarant has not adequately established
that the Dura Tech films have substantially the same structure as the films
disclosed by Blemberg. Ans. 16. Declarant provides no details of how the
Dura Tech laminate structure and compositions of each layer constituent
compare with the laminate structure/layer constituents of Blemberg.
Declarant has also not provided any details as to how the extrusion
lamination process used to make the DuraTech film compares with
Blemberg's extrusion lamination process, a key detail given that Appellants
and Declarant assert that the method by which Blemberg's structure and the
2 The Declaration, submitted pursuant to 37 C.F.R. § 1.132, was filed on
November 3, 2015 and entered into the record by the Examiner in the
appealed Final Action dated (mailed December 29, 2015).
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claimed structure are made result in structural differences. App. Br. 6; Deel.
i-fi-1 5-7. Therefore, it is not clear that Appellants' evidence compares the
claimed invention against the closest prior art, Blemberg. Thus, Appellants
and Declarant do not adequately show or explain how the comparison testing
presents an adequate showing that distinguishes the claimed laminate
structure from Blemberg's laminate structure.
Accordingly we affirm the Examiner's prior art rejections of claims 1-
3, 5, 6, 8, and 16 under 35 U.S.C. § 103 (a) based on Blemberg for the
reasons presented by the Examiner and given above.
Rejections based on Lu3
The Examiner finds Lu discloses a laminate packaging material
suitable for producing bags comprising a heat sealable polyethylene layer
laminated to a polypropylene layer formed by lamination. Final Act. 9; Lu
col. 1, 11. 27-52, col. 2, 11. 45-52, and col. 4, 11. 13-16. The Examiner finds
Lu is silent regarding the laminate material comprising a cap layer. Final
Act. 9. The Examiner finds Bentmar discloses a laminate packaging
material comprising a polymer substrate layer disposed on a multilayer gas
barrier cap structure, where the cap structure comprises an EVOH gas
barrier layer encapsulated between two low density polyethylene (LDPE)
layers to protect the EVOH layer from moisture. Final Act. 1 O; Bentmar col.
1, 11. 7-16, col. 2, 11. 54---67, col. 3, 11. 57---60, and col. 4, 11. 5-14. The
3 A discussion of Stillman is unnecessary for disposition of the rejection of
claim 1 because Appellants do not substantively dispute the Examiner's
findings with respect to this reference. See generally App. Br.
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Examiner finds it would have been obvious to one of ordinary skill in the art
to modify the laminate material of Lu by bonding the multilayer gas barrier
cap structure disclosed by Bentmar to the polypropylene layer in order to
provide moisture resistant gas barrier properties to the laminate. Final Act.
10-11.
Appellants principally argue that, absent impermissible hindsight, the
combined teachings of Lu and Bentmar would frustrate Lu's purpose
because there is nothing to suggest that an additional layer could be
provided, much less the specific layers claimed. App. Br. 9--11. Appellants
further argue that the combination of Lu and Bentmar would yield a
paperboard material structure because Bentmar requires a paper/paperboard
base. Id. at 11.
We have considered Appellants' arguments but are unpersuaded of
error in the Examiner's determination of obviousness. Appellants'
arguments do not address the Examiner's reasons for combining the
teachings of the cited art. Final Act. 10-11; Ans. 17-18. It is well
established that nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986); In re Keller, 642 F.2d 413, 425-26 (CCPA 1981) ("The test [for
obviousness] is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.").
As noted by the Examiner, contrary to Appellants' assertion (App. Br.
10), Lu's laminate structure is not limited to two layers, because the
disclosure at column 2 (lines 20-21) of Lu teaches that the film may
comprise additional layers. Ans. 17. Appellants' arguments do not address
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this disclosure in Lu. Therefore, Appellants do not adequately explain why
the combined teachings frustrate Lu's purpose.
Appellants' argument that the combination of Lu with Bentmar would
require a paper/paperboard base also does not address the reasons given by
the Examiner to combine their teachings. Moreover, the language of claim 1
is drafted using the open transitional language of "comprising" and does not
exclude the presence of a paper/paperboard layer as a laminate constituent.
Thus, Appellants do not adequately explain why the Examiner erred
in finding that one skilled in the art would have modified Lu's laminate by
incorporating Bentmar' s moisture resistant gas barrier cap structure to
achieve the advantage of providing moisture resistant gas barrier properties
as disclosed in Bentmar. Appellants also have not adequately explained why
one skilled in the art would not have had a reasonable expectation of success
in using Bentmar's moisture resistant gas barrier in Lu's laminate. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary
skill is also a person of ordinary creativity, not an automaton."); In re
Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (Skill is presumed on the part of
one of ordinary skill in the art.).
Accordingly we affirm the Examiner's prior art rejections of claims 1,
2, 5, 6, and 19 under 35 U.S.C. § 103 (a) based on Lu for the reasons
presented by the Examiner and given above.
ORDER
The Examiner's rejections of claims 1-3, 5, 6, 8, 16, and 19 under 35
U.S.C. § 103(a) are affirmed.
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No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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