10523130 (B.P.A.I. May. 18, 2012)

Ex Parte Bernig et al

Board of Patent Appeals and InterferencesMay 18, 2012

10523130 (B.P.A.I. May. 18, 2012)

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. 10/523,130 08/24/2005 Walter Bernig 785-012074-US (PAR) 3497 27386 7590 05/18/2012 GERSTENZANG, WILLIAM C. NORRIS MCLAUGHLIN & MARCUS, PA 875 THIRD AVE, 8TH FLOOR NEW YORK, NY 10022 EXAMINER WOOD, ELLEN S ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 05/18/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte WALTER BERNIG, BERNARD DUJARDIN, STEFAN JENDROSCH, and CHRISTOPH SCHWEITZER ____________ Appeal 2010-012268 Application 10/523,130 Technology Center 1700 ____________ Before PETER F. KRATZ, CATHERINE Q. TIMM, and JEFFREY T. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012268 Application 10/523,130 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1-5, 7-21 and 23-26. We have jurisdiction under 35 U.S.C. § 6. Appellants’ claimed invention relates to a film comprising at least one O2 gas barrier layer consisting substantially of a mixture of ethylene/vinyl alcohol copolymer (EVOH) and at least one multipolyamide. Claim 1 is illustrative: 1. A film comprising at least one O2 gas barrier layer consisting substantially of a mixture of 30-45 wt. % by weight of an ethylene/vinyl alcohol copolymer (EVOH) and 55-70 wt. % by weight of at least one multipolyamide, wherein the multipolyamide is made up of the 3 components I) hexamethylenediamine/adipic acid (polyamide 6,6), II) hexamethylenediamine/azelaic acid (polyamide 6,9) and/or hexamethylenediamine/sebacic acid (polyamide 6,10) and III) hexamethylenediamine/isophthalic acid (polyamide 6,I) and/or hexamethylenediamine/terephthalic acid (polyamide 6,T). The grounds for rejection to be reviewed on appeal are whether claims 1-5, 7-13, 15-21 and 23-26 are obvious under 35 U.S.C. § 103(a) over Ramesh, US 5,763,095 issued June 9, 1998 in view of Edwards, US 2002/0034622 A1 published Mar. 21, 2002; and whether claim 14 is obvious under 35 U.S.C. § 103(a) over Ramesh, Edwards, and Vadhar, US 6,333,061 B1 issued Dec. 25, 2001. Appeal 2010-012268 Application 10/523,130 3 OPINION The dispositive issue on appeal is: Did the Examiner err in determining that the evidence in the Specification was insufficient to rebut the Examiner’s prima facie case of obviousness based on the combination of Ramesh and Edwards? 1 We answer this question in the affirmative and we REVERSE. We refer to the Examiner’s Answer for a statement of the Examiner’s rejection (Ans. 5-10). Appellants relied on a Declaration to rebut the Examiner’s prima facie case of obviousness. App. Br. 4. Specifically, Appellants state: “[t]he declaration of Mr. Bernig proves this effect and the surprising results achieved with the presently claimed invention. Interestingly, in the examples wherein EVOH is also used as a component in the oxygen barrier layer no oxygen transmission rates are disclosed.” Id. The Examiner appears to conclude that the Declaration exhibits evidence of unexpected results. Specifically the Examiner states (Ans. 10): The applicant provides a declaration that demonstrates that the barrier layer of EVOH and multipolyamide, when having a ratio of 20:80, respectively, has a higher oxygen permeability than when the ratio is 30:70. Thus, the applicant has discovered unexpected results because the barrier layer with the higher content of EVOH has a higher [sic., lower] oxygen permeability rate. Notwithstanding this statement the Examiner contends that “[t]he declaration is insufficient to overcome the rejection, because the declaration does not provide evidence that the two references that are disclosed by the 1 We will focus our discussion on independent claim 1 for this section of the present appeal. App App Offic appl evid perso faile Cir. prese given Ans. rejec (Fed error cons error 2 It is Grah 531 evid conc 783 first whet entir eal 2010-0 lication 10 e cannot b icant.” (Id The Exa ence.2 The n skilled d to overco 1996). Th nted is in the Exam 11 Under th tions set f . Cir. 2007 .); In re R ider the re .) well settl am factor F.2d 1048 ence must lusion was F.2d 1038 instance, a her buttre e merits of 12268 /523,130 e combin .). miner has Examine in art with me the rej e Examine sufficient t iner’s fin ese circum orth in the ) (Failure inehart , 5 buttable ev ed that all s in reachi , 1052 (CC be evaluat reached, , 1039 (Fe nd if the a ssed by ex the matte ed to form erred by n r erred by out adequa ection. Se r has not a o overcom ding that th stances, w Answer. to meanin 31 F.2d 1 idence in of the evid ng an obvi PA 1976) ed along w not agains d. Cir. 198 pplicant c periment, r are to be 4 the multil ot properly dismissing te explana e In re Al dequately e the prim e evidenc e reverse See In re S gfully add 048, 1053- the affidav ence must ousness d (“Facts es ith the fac t the concl 6) (“If a p omes forw prior art re reweighed ayer film a evaluatin declaratio tion of ho ton, 76 F.3 explained a facie ca e shows u the Exam ullivan, 4 ress subm 54 (CCPA it relied u be consid eterminati ta[]blished ts on whi usion itsel rima facie ard with r ferences, o .”). s claimed g Appella n evidenc w the Dec d 1168, 1 why the e se of obvio nexpected iner’s § 10 98 F.3d 13 itted evide 1976) (F pon by Ap ered unde on. In re R [sic] by r ch the earl f.”); In re case is ma easonable r argumen by nts’ e of a laration 176 (Fed. vidence usness results. 3(a) 45, 1353 nce is ailure to pellant is r the inehart, ebuttal ier Hedges, de in the rebuttal, t, the Appeal 2010-012268 Application 10/523,130 5 Accordingly, the Examiner’s rejections of claims 1-5, 7-21 and 23-26 under 35 U.S.C. § 103(a) are reversed. ORDER REVERSED bar