10524270 (B.P.A.I. Jun. 4, 2009)

Ex Parte Itoh et al

Board of Patent Appeals and InterferencesJun 4, 2009

10524270 (B.P.A.I. Jun. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PAUL E. SHARE and KEITH R. PILLAGE ____________ Appeal 2008-006357 Application 10/416,135 Technology Center 1700 ____________ Decided:1 June 4, 2009 ____________ Before EDWARD C. KIMLIN, TERRY J. OWENS, and MARK NAGUMO, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. ON REQUEST FOR REHEARING 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-006357 Application 10/416,135 2 Appellants request rehearing of our decision of February 19, 2009, wherein we affirmed the Examiner’s rejection of the appeal claims under 35 U.S.C. § 103(a). We have thoroughly reviewed the arguments presented by Appellants in their request, but we are not persuaded that we erred in sustaining the Examiner’s rejections of the appealed claims under 35 U.S.C. § 103(a). Appellants correctly point out that we mistakenly stated that there is no dispute that Kushida, the primary reference, discloses a multilayered container comprising a layer including a functionalized polyolefin material. In point of fact, the Examiner’s rejection is based on including the blend of vinyl alcohol and functionalized polyolefin material disclosed by Moritani in the polyester layer of Kushida for the purpose of providing good gas barrier properties to the Kushida container. We remain of the opinion, however, that the Examiner’s conclusion of obviousness is well founded and Appellants have presented no argument in their request that convinces us otherwise. Appellants point out that the blend of Moritani comprises EVOH at a minimum amount of 55% by weight, whereas “the present claims require the EVOH be present between 25 and 55% by weight, which is outside the range taught by Moritani” (Page 3 of Request, penultimate paragraph). However, this argument was not made in Appellants’ principal and Reply Briefs and, therefore, has been waived. Also, appealed claim 1, with which all the appealed claims stand or fall, does not recite EVOH. Furthermore, we find that Moritani’s disclosure of 55% by weight EVOH renders prima facie obvious the claimed upper limit of 55% by weight. To the extent it can be argued that “between 25 to 55% by weight” does not in include 55%, we find that values slightly below 55%, such as 54.95%, would have been prima Appeal 2008-006357 Application 10/416,135 3 facie obvious based upon a reasonable expectation of similarity in properties. Titanium Metals Corporation v. Banner, 778 F.2d 775, 782-83 (Fed. Cir. 1985). We do not subscribe to Appellants’ argument that “both the Examiner and the Board have failed to clearly state the grounds of the obviousness rejection in this case, and to provide a technical rationale in support of this rejection” (Page 4 of Request, second paragraph). Our decision explains that Moritani establishes the compatibility of the presently claimed vinyl alcohol material and functionalized polyolefin material with the polyesters and polyamides of Kushida’s blend, and the technical reason for modifying the blend of Kushida would have been to impart good gas barrier properties to the container. Also, to the extent Kushida contemplates polymeric blends that provide a transparent container, as urged by Appellants, we are convinced, based on the collective teachings of Kushida and Moritani, that one of ordinary skill in the art would have found it obvious to formulate blends that produce either a transparent, semi-transparent or opaque material contingent upon the ultimate use of the container. As stated by the Examiner and noted in our opinion, appealed claim 1 contains no recitation regarding transparency. In conclusion, based on the foregoing, Appellants’ request is granted to the extent we have reconsidered our decision, but is denied with respect to reversing the Examiner’s § 103 rejections of the appealed claims. DENIED Appeal 2008-006357 Application 10/416,135 4 PL initial: sld SHUMAKER & SIEFFERT, P.A. 1625 RADIO DRIVE SUITE 300 WOODBURY, MN 55125