Ex Parte Jerdee et al

Board of Patent Appeals and Interferences

Oct 30, 2009

10364631 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARY D. JERDEE, JAMES P. LEONARD, TA YEN CHING,
JOSEPH L. GOODRICH, BRAD D. RODGERS, and
RICHARD P. SCHMIDT
____________

Appeal 2009-006628
Application 10/364,631
Technology Center 1700
____________

Decided: October 30, 2009
____________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 55, 64-67, 81, and 82. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
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I. STATEMENT OF THE CASE
The invention relates to incorporating oxygen scavenging agents into
the structure of food packaging materials, such as paperboard stock for gable
top or rectangular cartons. (Spec. 6, ll. 11-16). Claim 55 is illustrative of
the subject matter on appeal:
55. A rigid paperboard container, the container being constructed
from extrusion coated or laminated paperboard comprising:
(a) a paperboard substrate having opposed inner and outer surfaces;
(b) a first polymer layer coated or laminated onto the outer surface of
said paperboard substrate, the first polymer layer comprising one or more
materials selected from the group consisting of
i) low density polyethylene polymer,
ii) linear low density polyethylene polymer,
iii) a blend of low density polyethylene polymer and linear low
density polyethylene polymer, and
iv) a coextrusion of low density polyethylene polymer and
linear low density polyethylene polymer; and
(d) an inner product contact sandwich layer comprising
i) a second polymer layer coated or laminated onto the inner
surface of said paperboard substrate,
ii) a first tie layer, the first tie layer comprising one or more
materials selected from the group consisting of
(a) anhydride grafted polymer, copolymer or terpolymer,
(b) maleic anhydride modified polymer, and
(c) ionomer;
iii) an oxygen barrier layer comprising one or more materials
selected from the group consisting of
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(a) ethylene vinyl alcohol copolymer, and
(b) polyamide;
iv) a second tie layer, the second tie layer comprising one or
more materials selected from the group consisting of
(a) anhydride grafted polymer, copolymer or terpolymer,
(b) maleic anhydride modified polymer, and
(c) ionomer;
v) an oxygen scavenging layer comprising an oxygen
scavenging material; wherein the oxygen scavenging material is
selected from the group consisting of
(a) poly[ethylene-methyl acrylate-cyclohexene acrylate]
terpolymer and a transition metal catalyst,
(b) a combination of a polymeric backbone, cyclic
olefinic pendent groups and linking groups linking the olefinic
pendent groups to the polymeric backbone, and a transition
metal catalyst; and
(c) styrene/butadiene/styrene copolymer, and a transition
metal catalyst, and
vi) a seal layer coating or laminating the innermost surface of
the inner product contact sandwich layer;
wherein the container is a gable top carton or a rectangular carton.
Appellants request review of the sole rejection maintained by the
Examiner, namely, the rejection of claims 55, 64-67, 81, and 82 under
35 U.S.C. § 103(a) as obvious over Speer (US 5,942,297, issued Aug. 24,
1999) in view of Ching (US 5,736,616, issued Apr. 7, 1998).
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II. ISSUE ON APPEAL
The dispositive issue on appeal arising from the contentions of
Appellants and the Examiner is: have Appellants shown that the Examiner
reversibly erred by failing to explain why a container having a first polymer
layer of the claimed composition coated or laminated onto the outer surface
of a paperboard substrate would have been obvious to one of ordinary skill
in the art having before them the teachings of Speer and Ching?
III. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the issue
on appeal:
1. The Examiner finds that Speer teaches “a first polymer layer
laminated onto the outer surface of the paperboard substrate and an inner
product contact sandwich layer comprising an oxygen barrier layer and an
oxygen scavenging layer comprising an oxygen scavenging material,” and
cites to column 5, lines 48-64 of Speer (Ans. 4).
2. The Examiner also states that
embodiments where both the outer and inner
surfaces of the container are “coated or laminated
with” the claimed polymer materials fall within the
scope of Speer et al. since Speer et al. teach, for
example, that “the oxygen scavenging composition
may be used in a flexible or rigid single layer or
multilayer article” (col. 5, lines 48-50), that “layers
compris[e] the composition” (col. 5, line 50), and
that “the [oxygen scavenging] layer may be within
the container’s walls” (col. 5, line 56). A separate
polymer layer coated (or laminated) on the outer
surface of the container is also taught by Speer
also due to the teachings of Speer, for example,
that “the oxygen scavenging composition may be
used in a flexible or rigid single layer or multilayer
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article” (col. 5, lines 48-50), that “layers
compris[e] the composition” (col. 5, line 50), and
that “the [oxygen scavenging] layer may be within
the container’s walls” (col. 5, line 56)
(Ans. 7).
3. Speers discloses that
the oxygen scavenging composition may be used
in a flexible or rigid single layer or multilayer
article. The layers comprising the composition
may be in several forms. They may be in the form
of stock films, including “oriented” or “heat
shrinkable” films, which may ultimately be
processed as bags, etc. The layers may also be in
the form of sheet inserts to be placed in a
packaging cavity. In rigid articles such as beverage
containers, thermoformed trays or cups, the layer
may be within the container’s walls and may
furthermore be foamed. Even further, the layer
may also be in the form of a liner placed with or in
the container’s lid or cap. The layer may even be
coated or laminated onto any one of the articles
mentioned above.
In multilayered articles, the oxygen scavenging
layer may be included with layers such as, but not
necessarily limited to, “oxygen barriers”, that is,
layers of material having an oxygen transmission
rate equal to or less than 500 cubic centimeters per
square meter (cc/m2) per day per atmosphere at
room temperature, i.e. about 25° C.
(Speer, col. 5, ll. 47-67).
4. Speer discloses the oxygen scavenging layer to be an ethylenically
unsaturated hydrocarbon and transition metal catalyst (Speer, col. 3, ll. 31-
33). Speer does not disclose the oxygen scavenging layer may be low
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density polyethylene (LDPE), linear low density polyethylene (LLDPE) or a
blend or coextrusion thereof.
IV. PRINCIPLES OF LAW
The Examiner bears the initial burden, on review of prior art or on
any other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The analysis supporting
obviousness should be made explicit. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (“[I]t can be important to identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.”). “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with approval in KSR, 550 U.S.
at 418).
V. ANALYSIS
Appellants contend that Speer does not teach a container with a
polymer layer on both the outer surface and the inner surface of a
paperboard substrate (Br. 11-12). We agree that the Examiner fails to point
out, at least, where Speer teaches the first polymer layer recited in claim 55.
Claim 55 expressly requires that the first polymer layer be a low
density polyethylene (LDPE), a liner low density polyethylene (LLDPE), or
a blend or coextrusion of both. In both the Rejection and the Response to
Arguments sections of the Answer, the Examiner directs our attention to
column 5, lines 48-64 of Speer as teaching the first polymer layer (FF 1-2).
However, this portion of Speer is directed to the various locations that are
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suitable for positioning the oxygen scavenging layer (FF 3). The oxygen
scavenging layer of Speer is not LDPE or LLDPE (FF 4). The Examiner is
correct that the claims do not exclude the recited first polymer layer from
being an oxygen scavenging layer (see Ans. 6), but the claims do require the
composition of the layer be LDPE or LLDPE.
The Examiner also finds that Speer teaches that LDPE and LLDPE
are suitable materials for the seal layer but does not assert that the seal layer
constitutes any layer other than the innermost surface seal layer that is also
required by claim 55 (Ans. 4). Particularly, the Examiner makes no
correlation between the material of the seal layer and the recited first
polymer layer.
The Examiner’s reliance on Ching does not cure the deficiencies
discussed above.
Accordingly, Appellants have shown that the Examiner reversibly
erred by failing to particularly identify reasons why a container having the
first polymer layer of the claimed composition coated or laminated onto the
outer surface of the paperboard substrate would have been obvious to one of
ordinary skill in the art having before them the teachings of Speer and
Ching.
VI. CONCLUSION
Since the Examiner applies the same reasoning for each of the
rejected claims, we cannot sustain the Examiner’s rejection of claims 55, 64-
67, 81, and 82 under 35 U.S.C. § 103(a) as obvious over Speer in view of
Ching.

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VII. DECISION
We reverse the Examiner’s decision.

REVERSED

cam

LAW DEPARTMENT
SEALED AIR CORPORATION
P O BOX 464
DUNCAN, SC 29334