Ex Parte Malfait et al

Board of Patent Appeals and Interferences

Aug 22, 2012

10504311 (B.P.A.I. Aug. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/504,311 08/11/2004 Tony Malfait 04-476 8800
20306 7590 08/22/2012
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
08/22/2012 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 TONY MALFAIT, ERIK BOGELS, PATRICK ROSSEAU, and
LUC VEYS
____________

Appeal 2011-002639
Application 10/504,311
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 11 through 37, all of the pending claims in the above-
identified application.1 We have jurisdiction over the appealed subject
matter pursuant to 35 U.S.C. § 6.

1 See Appeal Brief (“App. Br.”) filed April 19, 2010, 1; Reply Brief (“Reply
Br.”) filed September 13, 2010, 1; Examiner’s Answer (“Ans.”) dated July
16, 2010, 2; and Final Office action (“FA”) dated November 25, 2009, 1.
Appeal 2010-002639
Application 10/504,311

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STATEMENT OF THE CASE
The subject matter on appeal is directed to “a transparent coextruded
gas tight peelable seal poly olefin film for packaging application, and in
particular[,] for various types of standing pouches.” (See Spec. 1, para.
0001.) Details of the appealed subject matter are recited in representative
claim 11 and 28 which are reproduced below:
11. A co extruded multilayer polyolefin film that is heat sealable
and peelable onto polypropylene based substrates, the film comprising a
peelable top layer, a base layer, and an intermediate layer comprising an
easy flowable low melting polymer with a melt flow index higher than the
melt flow index of the base layer, wherein the intermediate layer is in
contact with the base layer and the top layer, and represents at least 60% by
weight of the total weight of the multilayer polyolefin film, wherein the top
layer and the base layer do not delaminate from the intermediate layer when
the film is peeled from a polypropylene based substrate, and wherein the
easy flowable low melting polymer is one of:
(i) a copolymer selected from the group consisting of a copolymer
comprising propylene and ethylene, a copolymer comprising propylene and
butylene, and a copolymer comprising propylene and an olefin having 5-10
carbon atoms;
(ii) a terpolymer comprising polypropylene and two polymers selected
from the group consisting of ethylene, butylene and an olefin having 5-10
carbon atoms, or
(iii) a mixture of (a) a copolymer selected from the group consisting
of a copolymer comprising propylene and ethylene, a copolymer comprising
propylene and butylene, a copolymer comprising propylene and an olefin
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Application 10/504,311

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having 5-10 carbon atoms, and a terpolymer comprising polypropylene and
two polymers selected from the group consisting of ethylene, butylene or an
olefin having 5-10 carbon atoms, and (b) a polymer selected from the group
consisting of a poly 1-butene hompolymer,- a poly I-butene ethylene
copolymer, a homogenous ethylene alpha-copolymer with a density below
0.920 g/cm3, and heterogeneous ethylene alpha-copolymer with a density
below 0.920 g/cm3.

28. A polymer film that is heat-sealable onto a polypropylene based
substrate, the film comprising a polyolefin top layer that is peelable onto the
substrate, a polyolefin base layer, and an intermediate layer in contact with
the base layer and the top layer comprising an easy flowable low melting
polyolefin having a melt flow index higher than the melt flow index of the
base layer, wherein the easy flowable polyolefin of the intermediate layer
represents at least 60% by weight of the total weight of the polymer film,
wherein top layer and the base layer do not delaminate from the intermediate
layer when the film is peeled from a polypropylene based substrate, and
wherein the easy flowable low melting polymer is one of:
(i) a copolymer selected from the group consisting of a copolymer
comprising propylene and ethylene, a copolymer comprising propylene and
butylene, and a copolymer comprising propylene and an olefin having 5-10
carbon atoms;
(ii) a terpolymer comprising polypropylene and two polymers selected
from the group consisting of ethylene, butylene and an olefin having 5-10
carbon atoms, or
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(iii) a mixture of (a) a copolymer selected from the group consisting
of a copolymer comprising propylene and ethylene, a copolymer comprising
propylene and butylene, a copolymer comprising propylene and an olefin
having 5-10 carbon atoms, and a terpolymer comprising polypropylene and
two polymers selected from the group consisting of ethylene, butylene or an
olefin having 5-10 carbon atoms, and (b) a polymer selected from the group
consisting of a poly 1-butene hompolymer,- a poly 1-butene ethylene
copolymer, a homogenous ethylene alpha-copolymer with a density below
0.920 g/cm3, and heterogeneous ethylene alpha-copolymer with a density
below 0.920 g/cm3.

As evidence of unpatentability of the subject matter claimed, the
Examiner relies upon the following evidence at page 3 of the Answer:
Mauri US 4,777,094 Oct. 11, 1988
Lai US 5,272,236 Dec. 21, 1993
Rasp US 6,506,500 B2 Jan. 14, 2003
Demain EP 1 026 199 A1 Aug. 9, 2000

Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer:
1) Claims 11 through 13, 15 through 17, 28 through 30 and 32 through
34 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Rasp and Lai;
2) Claims 14 and 31 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Rasp, Lai and Demain; and
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3) Claims 18 through 27 and 35 through 37 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Rasp, Lai and Mauri. (See
App. Br. 4 and Reply Br. 2.)

DISCUSSION
I. REJECTION (1) 2
As correctly found by the Examiner at page 4 of the Answer, Rasp, at
col. 8, ll. 28-31, exemplifies a coextruded polyolefin multilayer film. The
exemplified coextruded multilayer film is said to have layers D1/B/D2,
wherein D1 and D2 are outer layers corresponding to the top and base layers
recited in claims 11 and 28 and B is a base layer corresponding to the
intermediate layer recited in claims 11 and 28. (See also Rasp, col. 8, l. 28
to col. 9, l. 5, Example 1 and col. 1, ll. 8-10.) There is no dispute that Rasp’s
base layer (corresponding to the intermediate layer recited in claims 11 and
28) constitutes an easily flowable low melting polymer comprising about
95% by weight of polypropylene and about 5% of a co-monomer selected
from ethylene, butylene or an olefin having 4 to 10 carbon atoms, represents
about 50% to 90% of the coextruded multilayer film and does not
delaminate from its outer layers D1 and D2 upon pulling the coextruded
multilayer film from a substrate. (Compare Ans. 4 with App. Br. 5-13; see

2 Appellants have presented substantive arguments for claims 11 and 28
only. (See App. Br. 9-21 and Reply Br. 3-7.) Therefore, for purposes of this
appeal, we decide the propriety of the Examiner’s § 103(a) rejection of
claims 11 through 13, 15 through 17, 28 through 30 and 32 through 34
based on claims 11 and 28 alone consistent with 37 C.F.R. §
41.37(c)(1)(vii).

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also Rasp, col. 3, l. 64 to col. 4, l. 10 and col. 6, ll. 41-47.) Nor is there any
dispute that the selection of Rasp’s base layer (corresponding to the
intermediate layer recited in claims 11 and 28) having a melt flow index
higher than that of the outer layer D2 (corresponding to the base layer
recited in claims 11 and 28) would have been obvious to one of ordinary
skill in the art. (Compare Ans. 4 with App. Br. 5-13; see also Rasp, col. 4,
ll. 10-14 and col. 5, l. 66 to col. 6, l. 6.)
Appellants contend that Rasp, as explained by Lai, does not teach or
suggest a heat sealable multilayer film having a top layer that is “peelable
onto polypropylene based substrates” as recited in claims 11 and 28. (See
App. Br. 5-13 and Reply Br. 3-6.) According to Appellants, Rasp teaches
that its outer layer D1 corresponding to the top layer recited in claims 11 and
28 is a polyethylene heat sealable layer that is peelable onto a polyethylene
substrate, not polypropylene based substrates. (See App. Br. 5-13.)
Thus, the dispositive question is: Has the Examiner reversibly erred
in finding that Rasp, as explained by Lai, teaches or would have suggested a
heat sealable multilayer film having a top layer that is “peelable onto
polypropylene based substrates” as recited in claims 11 and 28? On this
record, we answer this question in the negative.
During prosecution of patent applications, "the PTO must give claims
their broadest reasonable construction consistent with the specification ....
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation." In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee." Id.
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As is apparent from the preambles of claims 11 and 28 on appeal, they
do not recite a combination of a coextruded multilayer polyolefin film and a
polypropylene based substrate. Rather, they recite a coextruded multilayer
polyolefin film that is capable of being heat sealed onto and peeled away
from various “polypropylene based substrates”. As is apparent from
paragraphs 0010 and 0024, pages 3 and 6, of the Specification, the peelable
top layer of the claimed coextruded multilayer polyolefin film provides such
peeling capability relative to any polypropylene based substrates.
Neither the claims nor the Specification, however, specifically defines
the “peelable top layer” of the claimed coextruded multilayer polyolefin
film. (See Spec. in its entirety and claims 11 and 28.) The Specification
states that the key aspects of the invention lie in particular intermediate and
base layers, but does not identify the peelable top layer to be critical. (See
Spec. 0013-0020.) The Specification, at paragraphs 0025 and 0027, pages 6
and 7, only states that a peelable layer can have “a thickness of
approximately 5-8 µm” and then exemplifies a peelable polypropylene layer
which appears to be identical to at least one polymer included in
polypropylene based substrates.
The Specification and the claims also do not define the
“polypropylene based substrates” from which the claimed heat sealable
coextruded multilayer polyolefin film can be peeled. (See Spec. in its
entirety and claims 11 and 28.) The Specification does not limit such
polypropylene based substrates as including those made only of
polypropylenes. (Id.) The use of the term “based” in the context of the
propylene based substrates indicates that polypropylene forms a supporting
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part of substrates.3 Thus, such broadly recited substrates, when given the
broadest reasonable interpretation not inconsistent with the Specification,
include substrates having any polymers, such as linear polyethylene or other
polyolefins, in addition to polypropylene.
Having interpreted the claims in the above manner, we now focus on
the content of the prior art references relied upon by the Examiner. As
correctly found by the Examiner at page 4 of the Answer, Rasp teaches
employing linear polyolefin, such as linear polyethylene and polypropylene
described by Lai, in forming a thin D1 outer layer corresponding to the
peelable top layer recited in claims 11 and 28. (See also Rasp, col. 2, ll. 20-
31 and Lai (US 5,272,236), col. 1, ll. 25-47.) Although Rasp does not
mention that its D1 outer layer is capable of being heat sealable and peelable
onto polypropylene based substrates, it teaches that its thin D1 outer layer,
like the exemplified peelable top layer recited in claims 11 and 28, can be
made of polypropylene, which according to appellants, is capable of being
heat sealable and peelable onto polypropylene based substrates as indicated
supra. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (holding
that a prior art disclosure of an oil dispensing funnel is presumed to be
capable of dispensing popcorn once the Examiner established that the
claimed and prior art structures were identical or substantially identical); In
re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed
and prior art products are identical or substantially identical…, the PTO can
require an applicant to prove that the prior art products do not necessarily or

3 See the definition for “base” and “based” at page 155 of WEBSTER’S II
New Riverside University Dictionary, The Riverside Publishing Company
(1994).
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inherently possess the characteristics of his claimed product…Whether the
rejection is based on “inherency” under 35 U.S.C. § 102, on “prima face
obviousness” under 35 U.S.C. § 103 , jointly or alternatively, the burden of
proof is the same, and its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art products.”) Even
when the thin D1 outer layer of Rasp is made of other linear polyolefins,
including preferred linear polyethylene, there is still a reasonable basis to
believe that such outer layer is capable of being heat sealable and peelable
onto polypropylene based substrates since the polypropylene based
substrates, as recited in claims 11 and 28, can include a significant amount
of any additional corresponding polymers, including a significant amount of
any linear polyolefin taught by Rasp and Lai, in addition to some amount of
polypropylene. Schreiber, 128 F.3d at 1477-78; Best, 562 F.2d at 1255. On
this record, Appellants have not shown that the thin D1 outer layer of Rasp
made of linear polypropylene or any other linear polyolefins is not capable
of performing the function recited in the preambles of claims 11 and 28.
It follows that we find no reversible error in the Examiner’s decision
rejecting claims 11 through 13, 15 through 17, 28 through 30 and 32 through
34 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Rasp and Lai.
II. REJECTIONS (2) AND (3)
Appellants merely reiterate the same arguments advanced in
connection with the rejection of claims 11 through 13, 15 through 17, 28
through 30 and 32 through 34 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Rasp and Lai discussed supra. (See App. Br. 13.)
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It follows that, based on the same reasons stated above and in the
Answer, we find no reversible error in the Examiner’s decision rejecting
claims 14 and 31 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Rasp, Lai and Demain and rejecting claims 18
through 27 and 35 through 37 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Rasp, Lai and Mauri.

ORDER
Upon consideration of the record relied upon by Appellants and the
Examiner, and for the reasons given, it is:
ORDERED that the decision of the Examiner to reject the claims on
appeal based on the applied prior art is AFFIRMED; and,
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED

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