Ex Parte Karim et al

Board of Patent Appeals and Interferences

Jun 28, 2012

11272351 (B.P.A.I. Jun. 28, 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.
11/272,351 11/10/2005 Douglas P. Karim IM-04-2 1623
7590 06/29/2012
Michael W. Ferrell, Esq.
Ferrells, PLLC
P.O. Box 312
Clifton, VA 20124-1706
EXAMINER
KATZ, VERA
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
06/29/2012 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 DOUGLAS P. KARIM, HARRIS A. GOLDBERG,
CARRIE A. FEENEY, and MICHELE FARRELL
____________

Appeal 2011-008146
Application 11/272,351
Technology Center 1700
____________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and
ROMULO H. DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-008146
Application 11/272,351

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Douglas P. Karim, et al., the Appellants,1 seek our review under 35
U.S.C. § 134(a) of a final rejection of claims 1-3, 7-9, 11-19, 22, and 23.2
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
The invention relates to nanocomposite barrier films with at least two
distinct nanocomposite barrier layers separated by one or more intermediate
layers. Spec. 1, ll. 12-14. According to the Specification, “[t]he structures
exhibit greatly enhanced breakthrough times[3] for permeative agents such as
oil, grease or hazardous chemicals.” Id. at 1, ll. 14-16.
Claim 1, which is illustrative of the subject matter on appeal, is
reproduced below (with key limitations shown in italics):
1. A multilayer barrier structure comprising:
(a) a first nanocomposite layer including a first polymer
and a first exfoliated filler wherein the first exfoliated filler is a
silicate having an aspect ratio greater than 25 and wherein the
layer exhibits an at least 50-fold reduction in gas permeability
as compared with a coating formed from the first polymer
alone;
(b) a second nanocomposite layer including a second
polymer and a second exfoliated filler wherein the second
exfoliated filler is a silicate having an aspect ratio greater than
25 and wherein the layer exhibits an at least 50-fold reduction

1 The Appellants state that the real party in interest is InMat, Inc. Appeal
Brief filed November 15, 2010 (“App. Br.”) at 2. The Specification
(“Spec.”), as amended, indicates that the invention was made under support
from the U.S. Department of Defense. Spec. 1.
2 App. Br. 5; Final Office Action mailed June 15, 2010.
[3] A discussion of “breakthrough time” is found in the Specification at, e.g.,
page 15, lines 7-9.
Appeal 2011-008146
Application 11/272,351

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in gas permeability as compared with a coating formed from the
second polymer alone;
(c) at least one intermediate layer disposed between the
first and second nanocomposite layers, the intermediate layer
including a material selected from the group consisting of:
synthetic elastomers, non-elastomeric synthetic polymers,
natural non-elastomeric polymers, including films, fabrics,
nonwovens, papers or foams comprising the aforesaid
polymers, and further wherein the multilayer structure exhibits
a breakthrough time at least 30% higher than it would be if the
two barrier layers were combined in a single layer on one side
of the intermediate layer.
App. Br., Claims App’x A1.
The Examiner rejected claims 1-3, 7-9, 11-19, 22, and 23 under
35 U.S.C. § 103(a) as unpatentable over Feeney4 in view of Akao.5

ISSUE
The Examiner found that Feeney describes a barrier coating
comprising a polymer and dispersed, nano-scale exfoliated silicate filler
having an aspect ratio greater than 25, wherein the coating provides a
reduction in gas permeability from 7-fold to almost 2,300-fold. Ans. 3;
Feeney’s Abst.; col. 2, ll. 50-52, 53-65; col. 9, ll. 46-49, 66; col. 15, ll. 31-
35; Fig. 1. The Examiner acknowledged that Feeney differs from the subject
matter of claim 1 in that it does not disclose a multilayer barrier structure, as
recited in the claims. Ans. 4. The Examiner found, however, that Akao
discloses a packaging material comprising a thermoplastic resin film layer
and two layers of conductive thermoplastic resin film layers disposed on

4 U.S. Patent 6,232,389 B1 issued May 15, 2001.
5 U.S. Patent 6,376,057 B1 issued April 23, 2002.
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Application 11/272,351

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both sides of the thermoplastic resin film layer. Id.; Akao’s col. 3, ll. 1-6.
The Examiner concluded from these findings that:
It would have been obvious to one of ordinary skill in the
art . . . to apply a barrier layer, comprising a polymer and filler
material with the properties as discussed by Feeney, for the first
and the second nanocomposite layers provided on the both sides
of the intermediate layer in a multi-layered barrier structure
arrangement as taught by Akao.
Ans. 4.
Regarding unexpected results, the Examiner stated that the
Appellants’ showing of unexpected results in terms of breakthrough time is
unpersuasive because the showing is not considered to be commensurate in
scope with the claims. Ans. 9. According to the Examiner, “[t]he combined
references teach an article made of the same materials, having the same
structure thicknesses and is subject to similar treatment, and therefore the
property of the breakthrough time is expected to be present.” Id.
The Appellants contend, inter alia, that “the rejections should be
reversed because the claimed structures exhibit surprising increase in
breakthrough times to gas permeation.” App. Br. 6. In support, the
Appellants rely on the data found in the Specification and Figures. Id. at 8-
12.
Thus, a dispositive issue in this appeal is:
Did the Examiner articulate sufficient reason(s) supporting a
conclusion that the evidence offered in support of nonobviousness does not
outweigh the evidence of obviousness? We answer in the negative.

Appeal 2011-008146
Application 11/272,351

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DISCUSSION
We cannot agree with the Examiner’s stated position that the claims
are not commensurate in scope with the showing of unexpected results.
Claim 1, for example, explicitly recites “wherein the multilayer structure
exhibits a breakthrough time at least 30% higher than it would be if the two
barrier layers were combined in a single layer on one side of the
intermediate layer.” The other independent claims, namely claims 14 and
18, recite similar limitations. Because these limitations narrow the scope of
the claims to only those that achieve the recited property, the Examiner’s
position that the claims are not commensurate in scope with the offered
showing is incorrect.
The Examiner’s assertion that the property “is expected to be
present[,]” Answer 9, in a structure resulting from the proposed combination
of references is also without merit. Under that approach, an applicant could
never rely on unexpected results where obviousness is predicated on a
combination of prior art references to arrive at the invention claimed.
Because the Examiner did not discredit or otherwise provide a
sufficient reason for finding the proffered data unpersuasive, we cannot
affirm.
ORDER
The Examiner’s stated rejection of claims 1-3, 7-9, 11-19, 22, and 23
under 35 U.S.C. § 103(a) as unpatentable over Feeney in view of Akao is
reversed.
REVERSED

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