Ex Parte Busch et al

Patent Trial and Appeal Board

Dec 18, 2018

12092646 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/092,646 05/05/2008
123223 7590 12/20/2018
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Detlef Busch
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.
05581-00159-US 4589
EXAMINER
NEWAY,BLAINE GIRMA
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
DBRIPDocket@dbr.com
IPDocketWM@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DETLEF BUSCH, BJOERN DRAGUN,
BERTRAM SCHMITZ, and YVONNE DUEPRE
Appeal2017-001256
Application 12/092,646 1
Technology Center 3700
Before LINDA E. HORNER, PHILLIP J. KAUFFMAN, and
BARRY L. GROSSMAN, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's rejections of claims 34, 36, 37, 39, 41--47, 51, 52, 55, and 58-
64, which are all of the pending claims. Final Office Action (February 28,
2017) ("Final Act."). We have jurisdiction under 35 U.S.C. § 6(b ).
1 The above-identified applicants ("Appellants") identify Treofan Germany
GmbH & Co. KG as the real party in interest. Appeal Brief (April 4, 2016)
("Appeal Br."), at 2.
Appeal2017-001256
Application 12/092,646
The Examiner rejected the pending claims as unpatentable over
various combinations of the prior art. Appellants do not assert in the Appeal
Brief that the Examiner erred in the first ground of rejection. Thus,
Appellants waived arguments of error in this first ground. Appellants
contest the remaining grounds of rejection and rely on evidence of
unexpected results submitted in a declaration from one of the inventors. For
the reasons explained below, the Examiner failed to provide adequate
reasoning to support the obviousness of the claimed subject matter of some
of the dependent claims, but did not err in the obviousness determination as
to the remaining claims. Thus, we AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The subject matter on appeal relates to "cigarette packaging
comprising at least one outer packaging and an inner wrapping for
cigarettes." Substitute Specification (June 12, 2013) ,r 2. Claims 34 and 59
are the independent claims on appeal. Claim 34 is illustrative of the subject
matter on appeal and is reproduced below.
34. A cigarette package comprising:
a collection of cigarettes;
an inner liner wrapped around the collection of cigarettes
to form a bundle, comprising:
a biaxially-oriented, single or multi-layer poly-
monohydroxy-carboxylic acid film comprising 70 to
100 % aliphatic poly-monohydroxycarboxylic acid by
weight of the film and having a thickness of about 20 µm
to about 100 µm; wherein the film is metallized on one
surface and
an outer packaging surrounding the bundle wherein the
poly-mono-hydroxy-carboxylic acid is polylactic acid (PLA) and
wherein the film is a vacuole-free PLA film.
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Appeal Br. 23 (Claims Appendix). Independent claim 59 is directed to a
biaxially-oriented, single or multi-layer poly-monohydroxy-carboxylic acid
film substantially as recited in claim 1.
Gerber
Ashcraft et al.
Ajioka et al.
Oya et al.
Rosenbaum et al.
EVIDENCE
us 3,123,206
us 5,249,676
us 5,556,711
us 6,153,276
US 2004/0209073 Al
REJECTIONS
Mar. 3, 1964
Oct. 5, 1993
Sept. 17, 1996
Nov. 28, 2000
Oct. 21, 2004
The Final Office Action includes the following rejections:
1. Claim 34 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Ashcraft and Oya.
2. Claims 34, 36, 37, 39, 42-47, 51, 52, 55, 58, and 64 are rejected
under 35 U.S.C. § I03(a) as unpatentable over Ashcraft and
Rosenbaum.
3. Claim 41 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Ashcraft, Rosenbaum, and Gerber.
4. Claims 59-63 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Ajioka and Rosenbaum.
PROCEDURAL HISTORY
This is the second appeal to the Board in this application. In the first
appeal, we affirmed rejections of then-pending claims 17-33 on the grounds
of nonstatutory, obviousness-type double patenting as unpatentable over
claims of various patents and co-pending patent applications and/or as
anticipated by or unpatentable over the prior art. Appeal 2011-002227
(PTAB April 12, 2013), at 2-3. After the Board issued this prior decision,
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Application 12/092,646
the applicants filed a Request for Continued Examination (RCE), which
included an amendment cancelling claims 17-33 and adding new claims 34-
51. RCE (June 12, 2013). The Examiner examined the new claims and
issued a Non-Final Office Action. Further prosecution and claim
amendments culminated in the present appeal.
ANALYSIS
First Ground of Rejection: Unpatentability of claim 34 over Ashcraft and
Oya
Despite acknowledging in the Appeal Brief that the Examiner rejected
claim 34 over Ashcraft and Oya, Appellants did not present any arguments
contesting this rejection. Appeal Br. 6 (listing the rejection of claim 34 over
Ashcraft and Oya as a ground of rejection), id. at 7 (omitting any arguments
contesting this rejection). The Examiner noted Appellants' omission of
arguments as to this first ground in the Examiner's Answer. Examiner's
Answer (August 25, 2016), at 8. Appellants confirmed in the Reply Brief
that they had not presented arguments in the Appeal Brief contesting this
ground of rejection. Reply Brief (October 21, 2016) at 1. Appellants then
proceeded to present substantive arguments contesting this first ground of
rejection for the first time in the Reply Brief. Id. at 2-3.
Our rules provide, "Any argument raised in the reply brief which was
not raised in the appeal brief, or is not responsive to an argument raised in
the examiner's answer, ... will not be considered by the Board for purposes
of the present appeal, unless good cause is shown." 37 C.F.R. § 41.41(b)(2).
Appellants' did not contest the first ground of rejection in the Appeal Brief
and the new arguments in the Reply Brief are not responsive to an argument
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raised in the Examiner's Answer. Thus, Appellants must show good cause
for the Board to consider these new arguments.
In the Reply Brief, Appellants attempted to explain its omission as an
apparent oversight because Appellants "[i]nadvertently believ[ ed] that the
rejection was overcome" by a proposed after-final amendment to incorporate
claim 41 into claim 34. Reply Br. 1-2. Appellants contradicted this
explanation in the Appeal Brief, in which Appellants admitted that they were
aware at the time of filing of the Appeal Brief that the Examiner had refused
entry of the proposed after-final amendment of claim 34. Appeal Brief 3
( discussing status of amendments). Thus, Appellants have not shown good
cause why they did not present earlier their arguments contesting the first
ground of rejection. Appellants' arguments contesting the first ground of
rejection are untimely, and we will not consider them. We summarily
sustain the uncontested first ground of rejection of claim 34 under 35 U.S.C.
§ 103(a).
Second Ground of Rejection: Unpatentability of claims 34, 36, 37, 39, 42-
47, 51, 52, 55, 58, and 64 over Ashcraft and Rosenbaum
Group I: Claims 34, 36, 37, 42-47, 51, 52, 55, and 58
Appellants argue claims 34, 36, 37, 42--47, 51, 52, 55, and 58 as a
group. Appeal Br. 7-15. We select claim 34 as the representative claim and
the remaining claims in this group stand or fall with claim 34. 37 C.F.R.
§ 4I.37(c)(l)(iv). Appellants present additional arguments for claim 39
(Group II) and claim 64 (Group III), which we address below.
The Examiner found that Ashcraft discloses a conventional cigarette
package including a collection of cigarettes, an inner liner made of film that
is metallized on one surface, and an outer packaging, as recited in claim 34.
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Final Act. 4 (citing Ashcraft, 7:19-31 and 8:25-31). The Examiner found
that Ashcraft does not disclose the biaxially-oriented film recited in the
claim. Id. The Examiner relied on Rosenbaum to disclose this film. Id.
(citing Rosenbaum ,r,r 6, 26, 27, 44, and 62). The Examiner determined that
it would have been obvious to use Rosenbaum's film for Ashcraft's inner
liner "for the predictable result of protecting contents against rapid
drying-out and against loss of aroma." Id. at 4-5 (citing Rosenbaum ,r 1).
Appellants contest the rejection because "Rosenbaum does not relate
to cigarette packaging." Appeal Br. 13, 15. Yet Rosenbaum describes in the
background of the invention that the problem of uncontrolled tear
propagation behavior of biaxially oriented films is particularly
disadvantageous in packaging containing piece products, such as cigarette
cartons. Rosenbaum ,r 9. This discussion implies that Rosenbaum's
improved film product exhibiting controlled tear-open behavior would be
applicable to cigarette packaging. Id. ,r 10. Further, Appellants fail to
provide evidence to support the contention (Appeal Br. 13) that a person of
ordinary skill in the art "would have hardly considered employing the film
of Rosenbaum," which contains a lubricating element that should be kept
away from cigarettes, in the inner liner of Ashcraft. In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the
place of evidence."). 2 We also agree with the Examiner's findings that
Rosenbaum's device is in the same field of endeavor (i.e., packaging) as the
2 The Declaration under 37 C.F.R. § 1.132 of Dr. Bertram Schmitz
("Schmitz Dec.") does not discuss the lubricating element of Rosenbaum's
film that Appellants assert would have been detrimental to use for packaging
cigarettes. Appeal Br., Ex. 1.
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claimed invention and that Rosenbaum is reasonably pertinent to the
problems facing Appellants of tearing behavior and environmental aspects.
Ans. 3 ( citing Spec. ,r,r 6, 8; Rosenbaum ,r,r 2, 10, 11 ).
Appellants also contest the rejection because "[t]here is no disclosure
of metallization in Rosenbaum." Appeal Br. 13 ( emphasis omitted). This
argument does not identify error in the rejection because the Examiner did
not base the rejection on a finding that Rosenbaum teaches a metallized film.
As noted above, and as pointed out in the Examiner's Answer, the Examiner
based the rejection on a finding that Ashcraft discloses an inner liner made
from a film that has been metallized on one surface. Examiner's Answer
(August 25, 2016), at 2. Indeed, the portion of Ashcraft cited by the
Examiner describes a conventional cigarette package that includes an inner
foil liner comprising a metal foil laminated to a paper substrate or a
metallized paper. Ashcraft, 7:22-25. The Examiner's rejection proposes to
substitute Rosenbaum's film3 for Ashcraft's paper substrate. Ans. 2. Thus,
according to the Examiner, the combined teachings of Ashcraft and
Rosenbaum would result in Ashcraft's inner liner, made from Rosenbaum's
film, and metallized on one surface as disclosed in Ashcraft. Appellant's
3 Appellants do not contest the Examiner's finding that Rosenbaum discloses
"a biaxially-oriented, single or multi-layer poly-monohydroxy-carboxylic
acid film comprising 70 to 100% aliphatic poly-monohydroxycarboxylic
acid by weight of the film and having a thickness of about 20 µm to about
100 µm" and "wherein the poly-mono-hydroxy-carboxylic acid is polylactic
acid (PLA) and wherein the film is a vacuole-free PLA film" as recited in
claim 34. Final Act. 4; Appeal Br. 13-15 (arguing only that Rosenbaum
does not relate to cigarette packaging and does not disclose metallization and
that a person having ordinary skill in the art would not have used
Rosenbaum's film for cigarette packaging).
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argument does not explain why the Examiner erred in proposing to modify
Ashcraft to use Rosenbaum's film while retaining the metallization of
Ashcraft. Appellants' argument attacks the references individually, rather
than considering what the combined references would have suggested to the
person of ordinary skill in the art. "Non-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references." In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,425 (CCPA
1981)).
Even if Appellants' argument could be read to contest the proposed
retention of the metallization aspect of Ashcraft after substituting the PLA
substrate of Rosenbaum for Ashcraft's paper substrate, we find no error in
the Examiner's reasoning. As evidenced by Ajioka, it was known in the art
at the time of Appellants' invention to use a composite material consisting of
aluminum and a thermoplastic polymer comprising a lactic acid polymer to
achieve both the high mechanical strength advantage of the polymer and the
excellent gas-barrier properties of aluminum. Ajioka, 1:9-14, 2:2-10. Thus,
the Examiner's proposed modification to retain Ashcraft's metallized layer
on Rosenbaum's film within the cigarette package of Ashcraft is reasonable
in view of the background knowledge of one having ordinary skill in the art.
Appellants also present evidence of unexpected results in the form of
the Schmitz Declaration describing a comparison of claimed film with
conventional paper sheeting. Appeal Br. 14, Schmitz Dec. We consider the
totality of the evidence presented in reaching our determination of
obviousness.
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Rosenbaum describes that biaxially oriented plastic films exhibit
excellent mechanical strength, low weight, good barrier properties and good
weldability and that these films "protect[ ] pack contents against rapid
drying-out and against loss of aroma on using a very small amount of
material." Rosenbaum ,r 1. Rosenbaum aims to improve such films to
provide for easy and controllable opening, which Rosenbaum acknowledges
would be a beneficial attribute in cigarette cartons, where a consumer would
like to remove initially only one cigarette and store the remainder in the
packaging for later. Id. ,r,r 2, 9, 10. Thus, Rosenbaum provides a strong
suggestion to use its biaxially oriented film for cigarette packaging, in place
of the paper substrate used in conventional cigarette packaging, such as
Ashcraft, to provide good barrier properties to prevent drying-out and
prevent loss of aroma of the cigarettes and to provide controlled tear
properties.
The Schmitz Declaration describes testing to compare the barrier
properties of a metallized stretched PLA film made according to Working
Example 1 in the Specification having a layer of vapor-deposited aluminum
of maximally 50 nm on the film surface, with the barrier properties of paper
sheeting conventionally used for cigarette inner liners in the form of a
laminate with an aluminum foil of at least 3-9 µm thickness. Schmitz Dec.
,r,r 7, 9. The Schmitz Declaration states that thinly metallized film made
with PLA film "is gaining - unexpectedly - excellent barrier properties by a
thin Aluminum layer of approx. 50 nm thickness, that is 2000x- 10.000x
thinner than an Aluminum foil employed for laminating paper." Id. ,r 9.
The Schmitz Declaration thus explains that the use of PLA film allows for
reduction in the amount of aluminum used in the inner layer, which reduces
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non-degradable metal waste and cost. Id. ,r 10. This evidence is not
pertinent to the claimed subject matter, which does not limit the thickness of
the metallized layer. 4
Even if the thickness of the metallized film were relevant to the
claimed subject matter, the Schmitz Declaration does not provide data of
testing that compares the barrier properties of conventional paper-foil
sheeting with the claimed metallized PLA film. Rather, the data contained
in paragraph 8 of the Schmitz Declaration compares metallized PLA film to
non-metallized PLA film. Id. ,r 8 ( describing comparison of "Biophan-
metalised 130" with the control "Biophan 130"). This data does not include
a comparison of a conventional foil-paper sheeting inner liner and a
metallized PLA film. Thus, this data is very weak evidence of unexpected
or surprising results of the barrier properties of the claimed metallized PLA
film over the barrier properties of the conventional "metalized, standard
paper in liner." Appeal Br. 14.
Appellants further argue that they "found that the present invention
had excellent dead-fold property of biaxially stretched PHC/PLA film, and
its use an in liner for cigarette packaging." Appeal Br. 15. Appellants do
not cite to the Schmitz Declaration in support of this assertion. We did not
find adequate evidence in the Schmitz Declaration to show that the dead-fold
4 Appellants submit evidence of a definition of "metallizing plastic" that
describes that thickness of the metal coating as from 0.01 to 3 mils (0.03 to
0. 8 mm) and a definition of "foil" as a "very thin sheet" of material. Appeal
Br., Ex. 2 (Rosato's Plastics Encyclopedia and Dictionary). This evidence
does not show that the thickness of the foil, as used in conventional paper
sheeting, necessarily differs from the thickness of the claimed metallized
layer.
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properties achieved by the metallized PLA film of the claim were surprising
as compared to the dead-fold properties of traditional paper-aluminum inner
liners.
Appellants further argue that "the moderate barrier properties of the
traditional paper in liners are immensely improved by replacement with the
new, metalized film material." Appeal Br. 15. As noted above, the data
provided in the Schmitz Declaration, do not support this assertion. The
Schmitz Declaration does mention that a "paper sheet metalized with a thin-
layer of Aluminum" was tested as a control. Schmitz Dec. ,r 9. We
understand, however, from the Schmitz Declaration that the barrier
properties of such a "metallized" paper sheet are not comparable to the
conventional laminate of paper and aluminum foil used in cigarette
packaging. To the extent that the statement in paragraph 9 of the Schmitz
Declaration that thinly metallized film made with PLA film "is gaining -
unexpectedly - excellent barrier properties" as compared to conventional
laminate paper is evidence of improved results, it is weak evidence, as no
data was supplied in the Declaration in support of this statement, and thus,
no quantification of the extent of the improvement can be discerned. See
Bristol-Myers Squibb Co. v. Teva Pharmaceuticals USA, Inc., 769 F.3d 1339
(per curiam) (Fed. Cir. 2014) ("[O]ne should consider the substantiality of
the differences between the properties of the prior art and those of the
invention to determine the significance of those differences."); In re Soni, 54
F.3d 746, 751 (Fed. Cir. 1995) ("Mere improvement in properties does not
always suffice to show unexpected results."). Thus, Appellants have not
proven the substantiality of the improved barrier properties in the claimed
metalized PLA film over conventional paper sheeting or shown that these
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improved properties would have been surprising to one having ordinary skill
in the art, particularly in light of Rosenbaum's teaching that biaxially
oriented plastic films have "good barrier properties." Rosenbaum ,r 1.
Having considered the Examiner's evidence and reasoning in support
of obviousness and Appellants' evidence and argument in support of
non-obviousness, we find that the totality of the evidence supports the
Examiner's determination of obviousness. Particularly, the teachings in
Rosenbaum provide a strong suggestion to use its film for cigarette
packaging and the evidence in the inventor's declaration is not tied
sufficiently to the claimed subject matter and/or does not provide adequate
evidence that the results obtained were significant or surprising. Thus, we
sustain the rejection of claims 34, 36, 37, 42--47, 51, 52, 55, and 58.
Group II: Claim 3 9
Claim 39 depends from claim 34 and recites that "the film is
metallized on both surfaces." Appeal Br. 23 (Claims Appendix).
The Examiner found that it would have been obvious to metallize the
modified film of Ashcraft on both sides as a mere duplication of essential
working parts that involves only routine skill in the art. Final Act. 5
( clarified in Ans. 4 ). The Examiner further explains that metallizing both
sides of the modified film of Ashcraft would provide the predictable result
of easy assembly during manufacturing. Ans. 4. Appellants contest the
Examiner's determination that metallizing both surfaces is a mere
duplication of parts and argues that "[t]here is an advantage to hav[ing] both
sides of the film metallized." Appeal Br. 16. Appellants' Specification
describes that the inner liner can be metallized on only the visible side, or
can be metallized on both sides so that direct contact between the cigarettes
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and the film is avoided, so that no detriments to the taste of the cigarettes
because of the film are possible. Spec. ,r 32. We understand that the metal
layer on the visible side of the inner liner enhances the barrier properties of
the inner, while the metal layer on the inside surface prevents direct contact
between the PLA film and the cigarettes. Thus, the metal layers on the
opposite sides of the PLA substrate perform different functions. For this
reason, the Examiner's reliance on duplication of parts is not sufficient,
without further explanation, to support a determination of obviousness.
Thus, we do not sustain the rejection of claim 39.
Group III: Claim 64
Claim 64 is directed to the process by which the film is biaxially
stretched. 5 Appeal Br. 26-27 (Claims Appendix). Both the Examiner and
Appellants agree that claim 64 is a product-by-process claim. Final Act. 7;
Appeal Br. 1 7. The Examiner found that the limitations in claim 64 did not
patentably distinguish the claimed product from the product resulting from
the combination of Ashcraft and Rosenbaum. Final Act. 7. We agree that
the Examiner has met the Office's burden to show prima facie obviousness
of the claimed subject matter. We also note that Rosenbaum's disclosed
process overlaps with the claimed temperature ranges and ranges of ratios
for longitudinal and lateral stretching. Rosenbaum ,r 5 6 ( disclosing
longitudinal stretching at a temperature from 50 to 150 QC and at a ratio in
5 Claim 64 depends from claim 34 and recites "wherein the film is
longitudinal stretched at a roller temperature of the stretch roller of 50 to
100° C., and laterally stretched at a temperature of 60 to 120° C. and the
longitudinal stretch ratios are in a range of 1. 5 to 3. 5 and the lateral stretch
ratios are in the range from 4 to 7 and the film has a total thickness of about
25 µm to about 60 µm." Appeal Br. 26-27 (Claims Appendix).
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the range of 1.5 to 6, preferably from 2 to 5, and lateral stretching at a
temperature from 50 to 150 QC and at a ratio in the range of 3 to 10,
preferably from 4 to 7).
Appellants argue that "their film [ made by the claimed process] is
different [ from the prior art]" and that Appellants "were able to show
unexpected results with this film." Appeal Br. 17. Appellants do not
explain the difference in the film made according to the claimed process
versus the film made according to the process described in Rosenbaum.
Thus, Appellants have not met their burden to show a patentable distinction
in the product obtained by the claimed process. See In re Fessman, 489 F.2d
742, 744 (CCPA 1974) (holding that the Patent Office bears a lesser burden
of proof in making out a case of prima facie obviousness for a product-by-
process claim and the burden then shifts to the appellant to present evidence
which would demonstrate the unobvious character of the claimed invention
over the prior art.) Also, for the reasons discussed above, Appellants have
not provided sufficient evidence to show unexpected results.
Thus, we sustain the rejection of claim 64.
Third Ground of Rejection: Unpatentability of claim 41 over Ashcraft,
Rosenbaum, and Gerber
Claim 41 depends from claim 34 and recites that "the metallized
surface of the film is embossed." Appeal Br. 23 (Claims Appendix). The
Examiner found that Gerber teaches cigarette packaging having fine
embossing of letters and shapes used for advertising. Final Act. 10 ( citing
Gerber, 3:52-55). The Examiner determined that it would have been
obvious to emboss the metallized surface of the modified film of Ashcraft
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"for the predictable result of having advertisements and labeling on the
film." Id.
Appellants argue that because Gerber is not related to the claimed
material and does not disclose that one can emboss the claimed metallized
layer of a biaxially-oriented film, a person of ordinary skill in the art would
not combine the teaching of Gerber with Ashcraft and Rosenbaum. Appeal
Br. 18. Appellants' arguments do not address the Examiner's rejection.
Gerber shows that it was known in the art at the time of Appellants'
invention to emboss cigarette packaging material with advertising. Gerber,
3 :52-55. The Examiner proposes to modify Ashcraft's packaging to emboss
the metallized film in light of the known use of embossing techniques to add
advertising to cigarette packaging. "[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill." KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellants do not explain
why the Examiner erred in determining that one of ordinary skill in the art
would recognize that using embossing to add advertising to Ashcraft's
modified metallized film would improve its cigarette packaging in the same
way as the embossing in Gerber. Appellants also do not argue that it would
have been beyond the level of one having ordinary skill in the art to emboss
Ashcraft's modified metallized film. For these reasons, we sustain the
Examiner's rejection of claim 41.
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Fourth Ground of Rejection: Unpatentability of claims 59-63 over Ajioka
and Rosenbaum
Group I: Claims 59, 60, and 62
Appellants argue claims 59, 60, and 62 as a group. Appeal Br. 19-20.
We select claim 59 as the representative claim and the remaining claims in
this group stand or fall with claim 59. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants present additional arguments for claim 61 ( Group II) and claim
63 (Group III), which we address below.
The Examiner found that Ajioka discloses a film comprising
polylactic acid (PLA) where the film is metallized on one surface. Final
Act. 8 ( citing Ajioka, 2:2-26). The Examiner found that Ajioka does not
disclose the specific biaxially-oriented film recited in the claim. Id. The
Examiner relied on Rosenbaum to disclose this film. Id. ( citing Rosenbaum
,r,r 26, 27, 44, and 62). The Examiner determined that it would have been
obvious to use Rosenbaum's PLA film for Ajioka's film "for the predictable
result of providing a film with excellent mechanical strength properties as
taught by Rosenbaum." Id. ( citing Rosenbaum ,r 1 ).
Appellants argue that Rosenbaum does not teach metallization and
that because Ajioka focuses on the barrier properties of non-voided PLA-
metal laminate and Rosenbaum focuses on voided PLA film, one having
ordinary skill in the art would not have combined their teachings. Appeal
Br. 20. Appellants do not further explain the distinction they are trying to
raise by their argument and do not support this attorney argument with any
evidence. 6 As explained in Rosenbaum and reiterated above, Rosenbaum
6 The Schmitz Declaration does not discuss the films of either Ajioka or
Rosenbaum or attest as to whether their teachings would have been thought
to be combinable by one having ordinary skill in the art.
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shows a demand in the marketplace for an improved PLA film to make it
more consumer-friendly. Rosenbaum ,r,r 1, 2, 9 ( discussing consumer
complaints about uncontrolled tear propagation in existing PLA film
packaging). We find no error in the Examiner's reasoning that Rosenbaum's
disclosure of an improved PLA film would have led one having ordinary
skill in the art to substitute this improved PLA film for Ajioka's PLA film.
For these reasons, we sustain the rejection of claims 59, 60, and 62.
Group II: Claim 61
Claim 61 depends from claim 60 and recites "the film is metallized on
both surfaces." Appeal Br. 26 (Claims Appendix). As with claim 39, the
Examiner determines that it would have been obvious to modify Ajioka's
film to include metallization on both surfaces as an obvious duplication of
parts. Final Act. 9. Appellants raise the same arguments as presented for
dependent claim 39. Appeal Br. 21. For the reasons discussed above in our
analysis of claim 39, we likewise do not sustain the rejection of claim 61.
Group III: Claim 63
Claim 63 depends from claim 60 and recites the same product-by-
process limitations as dependent claim 64. Appeal Br. 26 (Claims
Appendix). Appellants raise the same arguments as presented for dependent
claim 64, discussed above, that the claimed film is different from
Rosenbaum's film and the claimed film exhibited unexpected results.
Appeal Br. 21. For the same reasons set forth above in our analysis of claim
64, we likewise sustain the rejection of claim 63.
DECISION
We summarily sustain the rejection of claim 34 under 35 U.S.C.
§ 103(a) as unpatentable over Ashcraft and Oya.
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We sustain the rejections under 35 U.S.C. § 103(a) of: claims 34, 36,
37, 42--47, 51, 52, 55, 58, and 64 as unpatentable over Ashcraft and
Rosenbaum, claim 41 as unpatentable over Ashcraft, Rosenbaum, and
Gerber, and claims 59, 60, 62, and 63 as unpatentable over Ajioka and
Rosenbaum.
We do not sustain the rejections under 35 U.S.C. § 103(a) of: claim 39
as unpatentable over Ashcraft and Rosenbaum and claim 61 as unpatentable
over Ajioka and Rosenbaum.
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)(l )(iv).
AFFIRMED-IN-PART
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