Ex Parte Chang

Patent Trial and Appeal Board

Oct 11, 2018

13835499 (P.T.A.B. Oct. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/835,499 03/15/2013 Moh-Ching Oliver Chang
97056 7590 10/15/2018
Levenfeld Pearlstein, LLC (Hollister Incorporated)
2 N. LaSalle St.
Suite 1300
Chicago, IL 60602
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.
417 37150-91781 5218
EXAMINER
TOWNSEND, GUY K
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
10/15/2018 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):
ipdocket@lplegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOH-CHING OLIVER CHANG 1
Appeal2018-000755
Application 13/835,499
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and LEE L. STEPINA,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 1, 3, 4, 6-16, 18-20, and 22-24. See Appeal Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Hollister Incorporated is identified as the real party in interest (Appeal Br.
3) and also is the applicant pursuant to 37 C.F.R. § 1.46.
Appeal2018-000755
Application 13/835,499
CLAIMED SUBJECT MATTER
Claims 1, 9, and 19 are independent. Claim 1 is illustrative and is
reproduced below.
1. An ostomy pouch, comprising:
an outer wall;
a bodyside wall, wherein the outer wall and the bodyside
wall are sealed along their peripheral edges to define a cavity;
and
wherein the bodyside wall is formed of a first composite
film including an outer foam layer, wherein the composite film
further includes a seal layer and an odor barrier layer, and
layers of the first composite film are a non-laminated
coextrusion, and wherein the outer foam layer is in contact with
a user's skin when the ostomy pouch is attached to the user, and
wherein the outer wall is formed of a second composite film
different from the first composite film.
Appeal Br. 13 (Claims App.).
REJECTIONS
Claims 1, 3, 4, 6-16, and 18 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Regnier (US 6,455,161 Bl, iss. Sept. 24, 2002) and Arai
(US 6,559,234 Bl, iss. May 6, 2003).
Claims 19, 20, and 22-24 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Arai and Regnier.
ANALYSIS
Claims 1, 3, 4, 6-16, and 18 as Unpatentable Over Regnier and Arai
Appellant argues claims 1, 3, 4, and 6-8 as a group. Br. 5-7. We
select claim 1 as representative, with claims 3, 4, and 6-8 standing or falling
with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). We address Appellant's
arguments concerning independent claim 9 separately.
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Appeal2018-000755
Application 13/835,499
Claims 1, 3, 4, and 6-8
The Examiner finds that Regnier teaches an ostomy pouch, as recited
in claim 1, with an outer wall and a body side wall of different multilayer
films but lacks an outer foam layer. Final Act. 5-6. The Examiner relies on
Arai to teach the use of a foam layer in any layer of a composite multi-layer
film to provide sound proofing. Id. at 6-7. The Examiner determines it
would have been obvious to a person of ordinary skill in the art to include a
foam layer as an outer foam layer, as taught by Arai, on Regnier' s multilayer
film to provide sound proofing as Arai explicitly teaches. Id. at 6-7.
Appellant argues that Regnier teaches an ostomy pouch comprising a
multilayer film but the composite film lacks an outer foam layer as claimed.
Appeal Br. 6. Appellant argues that the Examiner relies on Arai to teach a
composite multilayer film including a foam layer, but Arai discloses only a
cross-copolymer that may be used in foamed products and multilayer films.
Id. Appellant argues that Arai does not disclose any multilayer films with a
foam layer let alone an outer foam layer as claimed. Id.
The Examiner's determination that it would have been obvious to a
skilled artisan to use a foam layer, as taught by Arai, on Regnier' s ostomy
pouch is supported by a rational underpinning because Arai teaches to use
foamed thermoplastic resins to provide excellent sound-proofing properties.
Arai, 6:32-35; Final Act. 7 (citing id.). The Examiner reasons correctly that
a skilled artisan would have been motivated to use such a foam layer in the
multilayer films of Regnier in order to add sound-proofing to Regnier's
ostomy pouch. Final Act. 7; KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007) (using a known technique to improve similar devices in the same
way is obvious unless application is beyond the level of ordinary skill).
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Appeal2018-000755
Application 13/835,499
The Examiner correctly finds that Arai teaches a foamed layer can be
combined with a multilayered film, like Regnier's multilayered film, and,
furthermore, correctly determines it would have been obvious to a person of
ordinary skill in the art to combine such a foamed layer as an outer layer of
Regnier's multilayer film to provide a sound-insulating film. Final Act. 6-7;
Ans. 14. In this regard, Arai teaches that foamed products can be combined
with polymer, elastomer, rubber, and other films in a multilayered structure.
Arai, 27:45-50. Arai teaches to form foamed products as sheets or films to
be combined with other films to form containers. Arai, 36:51---62; 34:64---65.
Regnier also teaches to use a quiet film layer in multilayered film structures
to reduce noise emissions. Regnier, 3:30-39. The Examiner relies on Arai's
use of a foamed layer in a multilayered film (like Regnier' s multilayered
film) to provide excellent sound-proofing (Arai, 6:32-34) as motivation for a
skilled artisan to include Arni's foamed layer in Regnier's multilayered film.
Furthermore, Arai teaches to form a foamed layer as a sheet or film by
extrusion, injection, or blow molding and to include it in a multilayered
structure. Id. at 36:51-55. This teaching provides a rational basis for the
Examiner to determine that it would have been obvious to a skilled artisan to
mold a foamed layer as an outer layer on Regnier's multilayered film for
sound-proofing, and Arai also teaches to combine foamed layers with other
films in a multilayered structure without limitation. Id. at 27:45--49.
Appellant's arguments that Arai does not disclose a foam layer as part
of a multilayer film therefore is contradicted by the explicit teachings of
Arai discussed above. The Examiner reasonably determines that Arai
teaches to use a foamed layer as any layer such that an outer layer would
have been obvious to form using the molding techniques taught by Arai.
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Appeal2018-000755
Application 13/835,499
Appellant also argues that claim 1 requires a second composite film
different from the first composite film. Br. 7. Appellant admits that Regnier
teaches different embodiments of its multilayer films but argues that Regnier
"does NOT teach that two walls of an ostomy bag may be formed using two
different composite films." Id. This argument is not persuasive because it
does not apprise us of error in the Examiner's rejection. See Final Act. 6.
The Examiner's findings also are supported by Regnier's teachings of
different multilayer films with different properties/uses as Appellant admits.
Br. 7. The Examiner correctly finds that Regnier teaches a first embodiment
of a multilayer structure that provides a barrier to odors and determines that
this structure would be desirable to use as the claimed inner wall that faces a
body of a user where an additional noise barrier is not needed. Final Act. 6.
The Examiner also correctly finds that Regnier teaches another embodiment
of a multilayer structure that provides both an odor barrier and reduced noise
emission and determines it would have been desirable to use this different
multilayer film as the claimed outer wall that faces away from a user's body.
Id. The Examiner reasons that Regnier's teaching of different films with
different properties would have motivated a skilled artisan to form a bag
with such films to provide different properties as Regnier explicitly teaches.
Appellant's arguments do not address this reasoning as set forth in the
Final Action and therefore do not apprise us of error in that reasoning. This
is especially true where Regnier teaches that these polymeric barrier films
are particularly useful for ostomy bags and the like and also provides many
different examples of such films and their different properties. See Regnier,
3:53---64, 28:1-31:25. Thus, we sustain the rejection of claim 1. Claims 3,
4, and 6-8 fall with claim 1.
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Appeal2018-000755
Application 13/835,499
Claims 9-16 and 18
Independent claim 9 recites a sound insulating ostomy pouch with a
first wall and a second wall, wherein only one wall is formed of a composite
film including "at least one foam layer comprising a vinyl-bond rich triblock
copolymer." Br. 14 (Claims App.). The Examiner relies on Regnier to teach
a composite film with a vinyl rich triblock copolymer layer as a styrene-
isoprene copolymer (SI or SIS). Final Act. 7 ( citing Regnier, 8:45--46). The
Examiner relies on Arai to teach a foam layer comprising a vinyl-bond rich
triblock copolymer, as claimed, as a foamed triblock copolymer such as a
styrene/isoprene block copolymer (SIS). Id.; Ans. 16-17.
Appellant argues persuasively that the SIS block copolymer of Arai is
not a vinyl-bond rich triblock copolymer as claimed. Br. 7-8. In particular,
Appellant argues that a vinyl-bond rich SIS block copolymer includes vinyl-
polyisoprene blocks that are lacking in conventional SIS block copolymers
as disclosed in the prior art. Id. at 9. As a result, Appellant argues that the
claimed vinyl-bond rich triblock copolymer has different chemical structure
and properties, especially different sound absorbing properties, than other
conventional SIS block copolymers. Id. Appellant has the better position.
The Examiner has not established that the SIS block copolymers that
are disclosed in Regnier and Arai are vinyl-bond rich copolymers as claimed
or that a skilled artisan would understand the prior art block copolymers to
be vinyl-bond rich copolymers as claimed. The Specification discloses foam
layers 134, 136 can have sound absorbing properties if they comprise a non-
hydrogenated vinyl-bond rich styrene-isoprene-styrene (SIS) block
copolymer (e.g., Hybrar® 5125, 5127) or a hydrogenated vinyl-bond rich SIS
block copolymer (e.g., Hybrar® 7125) from Kuraray Co. Ltd. Spec. ,r 48.
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Appeal2018-000755
Application 13/835,499
The Specification thus discloses vinyl-bond rich triblock copolymers
as one type of SIS triblock copolymer. In other words, it distinguishes SIS
triblock copolymers generally from SIS triblock copolymers that also are
vinyl-bond rich. We appreciate the Examiner's finding that Arai teaches SIS
triblock copolymers that are foamed to provide sound-proofing properties,
but claim 9 requires a triblock copolymer that is "a vinyl-bond rich triblock
copolymer." Br. 14 (emphasis added). Appellant asserts that such a vinyl-
bond rich triblock copolymer includes a vinyl-polyisoprene, which the SIS
triblock copolymers of Regnier and Arai lack. Br. 9. Although it may have
been obvious to include such a known vinyl-bond rich triblock copolymer in
a multilayer film of Regnier to provide known sound absorbing properties,
such a rejection is not before us. Here, the Examiner has taken the position
that Regnier and Arai teach SIS triblock copolymers that are vinyl-bond rich
triblock copolymers as claimed. We are not persuaded that a skilled artisan
would consider the SIS triblock copolymers of Regnier and Arai to be a
vinyl-bond rich triblock copolymer as recited in claim 9 when this term is
interpreted in light of the Specification.
Thus, we do not sustain the rejection of claims 9--16 and 18.
Claims 19, 20, and 22-24 Unpatentable Over Arai and Regnier
Independent claim 19 recites "at least one foam layer comprising a
vinyl-bond rich triblock copolymer." Br. 15 (Claims App.). The Examiner
again relies on Arai' s teaching of a foamed SIS triblock copolymer to teach
this feature. Final Act. 11; Ans. 19. We agree with Appellant that Arai does
not teach this feature for the reasons discussed above for the rejection of
claim 9. See Br. 9-10. Thus, we likewise do not sustain the rejection of
claims 19, 20, and 22-24.
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Appeal2018-000755
Application 13/835,499
DECISION
We affirm the rejection of claims 1, 3, 4, and 6-8, and we reverse the
rejections of claims 9--16, 18-20, and 22-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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