Ex Parte Mazzola et al

Patent Trial and Appeal Board

Jul 27, 2017

13458457 (P.T.A.B. Jul. 27, 2017)

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.
13/458,457 04/27/2012 Nicolas C. Mazzola 72662-US-NP 1089
109 7590 07/31/2017
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICOLAS C. MAZZOLA, JORGE C. GOMES, and
MARCELO D. CANTU
Appeal 2016-001463
Application 13/458,457
Technology Center 1700
Before N. WHITNEY WILSON, CHRISTOPHER L. OGDEN, and
BRIAN D. RANGE, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35U.S.C. § 134 from the Examiner’s April
10, 2015 decision finally rejecting claims 28, 32, 35—44, 47, and 48. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing
was held on July 20, 2017.
We reverse.
1 Appellants state that the real party in interest is Appeal is Dow Brasil Industria
e Comercio de Produtos Quimicos Ltda., formerly known as Dow Brasil S.A.,
which is a subsidiary of The Dow Chemical Company. (Appeal Br. 2).
Appeal 2016-001463
Application 13/458,457
CLAIMED SUBJECT MATTER
Appellants’ invention relates to multilayer polyethylene films having a
combination of high stiffness and good optical properties (Abstract). The films
have a first layer comprising a linear polyethylene having a melt flow index
less than or equal to 1.3 g/10 min, and a second layer comprising a linear
polyethylene and having a melt index greater than or equal to 2.0 g/10 min
(id.). Claim 1 is representative and is reproduced below from the Claims
Appendix of the Appeal Brief:
1. A multilayer cast film comprising:
a. a first layer comprising a linear polyethylene having a
density greater than 0.94 g/cm3 and a melt index less than or
equal to 1.3 g/10 min;
b. a second layer comprising 80 to 100 wt. % of a high
density linear polyethylene having a density greater than 0.94
g/cm3 and a melt index greater than or equal to 2.0 g/10 min;
wherein the second layer is an external layer of the film.
REJECTIONS
I. Claims 1—6 and 9-14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Migliorini2 in view of Larter3 and Golze,4 as
evidenced by Dohrer,5 Peacock,6 and http://www.pslc.ws/macrog/pe.htm.7
2 Migliorini et al., US 6,623,866 B2, issued September 23, 2003.
3 Larter et al., US 6,689,857 Bl, issued February 10, 2004.
4 Golze et al., US 2004/0249047 Al, published December 9, 2004.
5 Dohrer et al., US 2002/0183433 Al, published December 5, 2002.
6 Peacock, US 5,502,112, issued March 26, 1996.
7 Of record and printed on July 24, 2013.
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Application 13/458,457
II. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Migliorini in view of Larter and Golze, and further in
view of Lillis.8
III. Claims 1—6 and 9-14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Migliorini in view of Larter, Williams,9 or
Chikanari,10 and Golze, as evidenced by Dohrer, Peacock, and
http://www.pslc.ws/rn.acrog/pe.htm.
IV. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Migliorini in view of Larter, Williams, or Chikanari, and
Golze, and further in view of Lillis.
DISCUSSION
Because we decide this appeal based on facts and conclusions
common to each of the rejections — in particular the combination of
Migliorini and Larter — we focus our analysis on the rejection of claim 1
over Migliorini in view of Larter and Golze, as evidenced by Dohrer,
Peacock, and http://www.pslc.ws/macrog/pe.htm.
Details of the rejection are set forth in the Non-Final Action at pages
3—7. We reiterate some of the pertinent findings and conclusions below.
The Examiner finds that Migliorini teaches a multilayer cast film that
includes a first layer comprising a high density polyethylene (HDPE) and a
second layer comprising an HDPE, where HDPE has the claimed density
8 Lillis et al., US 3,998,914, issued December 21, 1976.
9 Williams et al., US 2010/0125114 Al, published May 20, 2010.
10 Chikanari et al., JP 2004-99679, published February 4, 2004.
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Application 13/458,457
(greater than 0.94) (Non-Final Act. 3, citing Migliorini, Abstract, 2:45, 3:1—
6, 6:17—29). The Examiner also finds that Migliorini does not disclose that
the first layer HDPE has a melt index of less than or equal to 1.3 g/10 min
and HDPE in the outer skin layer has a melt index of greater than or equal to
2.0 g/10 min and the outer skin comprises from 80—100% HDPE (Non-Final
Act. 3).
The Examiner finds that Larter teaches a three layer film where the
outer layer comprises HDPE with a density of 0.940 or greater and a melt
index of 0.5 to 2 g/10 min (Final Act. 4, citing Larter 3:62—64, 7:24—26,
7:42—43; Dohrer, | 50). The Examiner further finds that Larter’s inner layer
comprises HDPE having a density of 0.940 or greater and a melt flow index
of 0.5 to 10 (Non-Final Act. 4, citing Larter, 3:57—58, 6:10-15).
The Examiner determines that it would have been obvious to use
HDPE having a melt flow index of 0.5 to 10 as disclosed in Larter in both
layers of Migliorini’s multilayer film to obtain the physical properties for the
film described in Larter (Non-Final Act. 5). The Examiner also determines
that because the recited melt indices of Larter overlap with those recited in
the claim, a prima facie case of obviousness exists (id.).
Appellants argue, generally, that the Examiner’s rejection is based on
hindsight (Reply Br. 2). Taking into the account the evidence and
arguments set forth by Appellants in the Appeal Brief and the Reply Brief,
as well as the findings and conclusions of the Examiner as articulated in the
Non-Final Action and the Answer, we find that the preponderance of
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Application 13/458,457
evidence of record does not support the Examiner’s conclusion of
obviousness.
In order to establish a prima facie case of obviousness, an examiner
must undertake the factual inquiries listed in Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). In addition, the examiner must articulate some
“reasoning with some rational underpinning to support the legal conclusion
of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006). This
reasoning must show that “there was an apparent reason to combine the
known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398,418 (2007).
In this instance, the Examiner finds that Migliorini discloses the basic
structure of the claimed multilayer cast film (i.e., an inner layer comprising
HDPE and an outer layer comprising HDPE), and that Farter discloses that
HDPE can have the claimed melt indices for the inner and outer layers.
However, the Examiner has not provided a persuasive explanation that,
without the benefit of hindsight, a person of skill in the art would have
employed an outer layer with a melt index of 2.0 g/10 min or greater and an
inner layer with a melt flow index of 1.3 g/10 min or lower, or even a reason
why a person of skill in the art would have selected an outer layer with a
higher melt index than the inner layer.
The Examiner’s findings that Larter teaches that the outer layer can
comprise HDPE and that HDPE can have a melt index of 0.5 to 10 g/10 min
are supported by Larter. However, the Examiner has not persuasively
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explained why a person of skill in the art would have chosen an HDPE with
a melt flow index of 2.0 or greater for the outer layer of Migliorini’s film.
In this instance, the Examiner finds that a person of skill in the art
would have made the necessary combination of properties from Larter in
order “to obtain low water vapor transmission rate, high impact strength,
tensile properties and other physical properties” (Non-Final Act. 5).
However, without the benefit of Appellants’ disclosure, Larter does not
provide an explanation of why a melt index of 2.0 or greater, rather than, for
example 0.5 to 1.3, as used in the outer layer would achieve better properties
for Migliorini’s film and, thus, been chosen by a person of skill in the art.
Accordingly, we reverse each of the rejections.
CONCLUSION
We REVERSE the rejection of claims 1—6 and 9—14 under
35 U.S.C. § 103(a) as being unpatentable over Migliorini in view of Larter and
Golze, as evidenced by Dohrer, Peacock, and http://www.psic.ws/macrog/pe.htm.
We REVERSE the rejection of claims 7 and 8 under 35 U.S.C. § 103(a)
as being unpatentable over Migliorini in view of Larter and Golze, and further
in view of Lillis.
We REVERSE the rejection of claims 1—6 and 9—14 under
35 U.S.C. § 103(a) as being unpatentable over Migliorini in view of Larter,
Williams, or Chikanari, and Golze, as evidenced by Dohrer, Peacock, and
http://www.pslc.ws/macrog/pe.htm.
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Application 13/458,457
We REVERSE the rejection of claims 7 and 8 under 35 U.S.C. § 103(a)
as being unpatentable over Migliorini in view of Larter, Williams, or
Chikanari, and Golze, and further in view of Lillis.
REVERSED
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