Ex Parte McLean et alDownload PDFPatent Trial and Appeal BoardOct 31, 201713284526 (P.T.A.B. Oct. 31, 2017) Copy Citation 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. 13/284,526 10/28/2011 Andrew Fenwick McLean 1800-100731-US 4149 22242 7590 11/01/2017 FITCH EVEN TAB IN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 EXAMINER MATHEW, FENN C ART UNIT PAPER NUMBER 3781 MAIL DATE DELIVERY MODE 11/01/2017 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 PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW FENWICK McLEAN, VICTOR SACHS, and CRAIG WARREN THORNHILL Appeal 2016-001114 Application 13/284,526 Technology Center 3700 Before MICHELLE R. OSINSKI, TARA L. HUTCHINGS, and MATTHEW S. MEYERS, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Andrew Fenwick McLean et al. (Appellants)1 appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 15 and 18—32, which are all of the pending claims. An oral hearing was held on October 3, 2017. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Selig Sealing Products, Inc. Appeal Br. 3. Appeal 2016-001114 Application 13/284,526 THE CLAIMED SUBJECT MATTER Claims 15, 22, and 27 are independent. Claim 15, reproduced below, is illustrative of the claimed subject matter on appeal. 15. A primary laminate comprising: a seal laminate including a heat seal layer for sealing to a container, a foil layer and a top foam layer; a tab stock which has a top and a bottom face wherein the bottom face is in contact with the top foam layer of the seal laminate; and a. layer of plastic film adhered to the top face of the tab stock and to the top foam layer by a random copolymer of ethylene and alkyl acrylate and having a melt flow index in the range of 1 to less than 5 dg/ min (190°C, 2.16 kg); and wherein the random copolymer of ethylene and alkyl acrylate bonds the layer o f plastic film to the top foam layer so that the layer of plastic film does not delaminate therefrom when subjected to a low temperature freezer test by exposing a sealed container with the primary/ laminate to a temperature from about 0°C to about -30 to form a cold primary/ laminate and when applying a removal force to the cold primary laminate for removal of the cold primary7 laminate from the container. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Metzger US 4,416,937 Latiolais US 5,543,233 Mueller US 6,027,776 Smelko US 2005/0208242 A1 THE REJECTIONS I. Claims 15, 18—26, 31, and 32 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Smelko, Mueller, and Metzger. Final Act. 3—5. Nov. 22, 1983 Aug. 6, 1996 Feb. 22, 2000 Sept. 22, 2005 2 Appeal 2016-001114 Application 13/284,526 II. Claims 27—30 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Smelko, Mueller, Metzger, and Latiolais. Id. at 5—6. OPINION Rejection I The Examiner finds that Smelko discloses (i) “a primary laminate with a heat seal layer (19), a foil layer (21), [and] a top foam layer (22);” (ii) “a tabstock (27) with a bottom face in contact with the top foam layer [22];” and (iii) “a layer of plastic film (23) adhered to the top face of the tabstock [27] and to the top foam layer [22]” by a bonding agent. Final Act. 3 (citing Smelko, Fig. 3). The Examiner acknowledges that the bonding agent of Smelko is not a random copolymer of ethylene and alkyl acrylate. Id. Instead, Smelko discloses that the bonding agent that adheres plastic film layer 23 to the top face of tab stock 27 and to the top foam layer 22 is ethylene vinyl acetate. Smelko | 66. The Examiner finds that “Mueller discloses a laminate with an adhesive that is a copolymer of ethylene and alkyl acrylate (i.e. [,] anhydride- modified ethylene/methyl acrylate copolymer) with a melt flow index of 2.8 dg/min.” Final Act. 3 (citing Mueller, 13:50—54). The Examiner also finds that “Mueller teaches that the material of the adhesive layer is chosen based on the surrounding layers.” Id. (citing Mueller, 11:42 44). Because the adhesive layer of Smelko bonds two layers made of PET2 and because Mueller’s disclosed copolymer of ethylene and alkyl acrylate (referred to as 2 Smelko discloses that plastic film layer 23 and tab stock 27 are polyethylene terephthalate (“PET”). Smelko H 61, 66. 3 Appeal 2016-001114 Application 13/284,526 BYENL™ E374)3 “is commonly used to adhere to PET,” the Examiner reasons that it would have been obvious “to modify the laminate disclosed by Smelko with [a] copolymer of ethylene and alkyl acrylate disclosed by Mueller because [BYNEL™] E374 is commonly used as an adhesive for PET layers.” Final Act. 3. The Examiner further states that “the selection of a known material based on its suitability for its intended use is considered to be obvious.” Ans. 6 (citing MPEP § 2144.07). As to the copolymer of ethylene and alkyl acrylate bonding the plastic film layer to the top foam layer “so that the layer of plastic film does not delaminate therefrom when subjected to a low temperature freezer test” as claimed, the Examiner finds that “Mueller and Metzger4 would inherently disclose the properties of the adhesive (i.e.[,] causing the plastic film to not delaminate from the foam layer when the laminate is exposed to cold temperatures.” Final Act. 2; see also id. at 4 (“[Sjince the modified laminate of Smelko meets the structural limitations of [Appellants’] laminate, it would not delaminate when a removal force is applied to a cold primary laminate.”). Appellants argue that “Smelko describes using ethylene vinyl acetate (EVA) layer 28 to bond PET layer 23 to a polyester foam layer 22.” Appeal Br. 20 (citing Smelko | 66). Appellants argue that the Examiner has not sufficiently articulated why it would be desirable to replace the EVA layer 3 Mueller describes BYENL™ as a suitable, commercially-available anhydride-modified ethylene/methyl acrylate copolymer. See Mueller, 11:48-52. 4 The Examiner relies on Metzger for teaching that a copolymer of ethylene and alkyl acrylate can be a “random” copolymer, as recited in the claims. Final Act. 3^4. 4 Appeal 2016-001114 Application 13/284,526 with a random copolymer of ethylene and alkyl acrylate. Id. at 20—21. More particularly, Appellants argue that “[sjimply swapping out Smelko’s EVA layer 28 for Mueller’s material because Mueller exists and is purportedly common is not [a] sufficient rationale to suggest Smelko’s materials be replaced.” Id. at 21. Appellants maintain that “Mueller does not suggest its material is a substitute for EVA or suggest[] it provides better results than EVA in the context of a laminate configured for robust temperature performance including cold temperatures.” Id. Appellants argue that the rationale is “improper hindsight based on using the [Appellants’] claims as a road map.” Id. at 20. Obviousness requires something more than the mere capability of combination. In particular, obviousness requires a reason why one of ordinary skill in the art would have combined the known elements in the fashion claimed. KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 417—18 (2007). The Examiner has failed to explain, absent hindsight, why one of ordinary skill in the art would be led to replace Smelko’s EVA layer with Mueller’s copolymer of ethylene and alkyl acrylate. At best, the Examiner’s articulated rationale to replace Smelko’s EVA layer with Mueller’s copolymer of ethylene and alkyl acrylate appears to be based on the fact that a person of ordinary skill in the art would look for a bonding layer that adheres to the surrounding layers, and a person of ordinary skill in the art would know that Mueller’s copolymer adheres to PET in laminate structures. As an initial matter, the Examiner overlooks that at least one of the surrounding layers to Smelko’s EVA layer is a polyester foam layer (i.e., top foam layer 22), such that Smelko’s EVA layer does not bond only to PET layers (i.e., plastic film layer 23 and tab stock 27). The Examiner makes no 5 Appeal 2016-001114 Application 13/284,526 findings regarding the suitability of Mueller’s copolymer of ethylene and alkyl acrylate for bonding to a polyester foam layer. Accordingly, there is no evidence in the record to support that Mueller’s bonding agent would be considered by a person of ordinary skill in the art for bonding a PET layer to a polyester foam layer. Furthermore, we agree with Appellants that the Examiner has not shown a random copolymer of ethylene and alkyl acrylate to be equivalent to EVA or a substitute for EVA with predictable results when so substituted. See Appeal Br. 21. As to the Examiner’s reliance on In re Leshin for the proposition that replacing Smelko’s EVA layer with Mueller’s copolymer of ethylene and alkyl acrylate is the mere selection of a known material suitable for its intended use (Ans. 6), we find such reliance on Leshin to be unavailing. In Leshin, the court addressed dependent claims requiring that the “container- dispenser for cosmetics” recited in the parent claim be made from molded plastic materials. In re Leshin, 277 F.2d 197, 198—99 (CCPA 1960). Before the court was a secondary reference (Anderson) teaching the use of molded plastic in a “similar container.” Id. at 199. On those facts, the court held that “[m]ere selection of known plastics to make a container-dispenser of a type made of plastic prior to the invention, the selection of the plastics being on the basis of suitability for the intended use, would be entirely obvious.” Id. In contrast, here, the Examiner has not shown that a person of ordinary skill in the art would have known that Mueller’s material could be used for the same or similar applications at issue in the claims—a laminate comprising a layer of plastic film adhered to a tab stock and a top foam layer, in which the plastic film does not delaminate from the top foam layer 6 Appeal 2016-001114 Application 13/284,526 when subjected to low temperature freezer tests and when applying a removal force. See Appeal Br. 32 (Claims App.) (claim 15). Instead, Mueller is concerned with multilayer films for packaging and administering medical solutions. See Mueller, Abstract. That is, even if the Examiner has shown that a copolymer of ethylene and alkyl acrylate exists, the Examiner has not shown that such a material was known to be suitable for the intended uses here. See Leshin, 277 F.2d at 199; see also Appeal Br. 21. The lack of evidentiary support on this issue distinguishes this record from that in In re Leshin, and undermines the rejection here. Without an articulated reason based on a rational underpinning for modifying Smelko based on the teachings of Mueller, the Examiner’s rejection appears to be the result of an impermissible hindsight reconstruction. For the foregoing reasons, we determine that the Examiner erred in concluding that the subject matter of independent claims 15 and 22 is unpatentable over Smelko, Mueller, and Metzger. We do not sustain the rejection of claims 15 and 22, or claims 18—21, 23—26, 31, and 32 which depend therefrom, as unpatentable over Smelko, Mueller, and Metzger. Rejection II The rejection of independent claim 27 relies the same erroneous conclusion that Smelko, Mueller, and Metzger renders obvious a copolymer of ethylene and alkyl acrylate for adhering a layer of polymer film to the top polymer foam layer of a seal laminate. Final Act. 5. The Examiner’s added reliance on Latiolais does not remedy the deficiencies discussed above. Thus, for the same reasons discussed above, we do not sustain the rejection of claim 27, or claims 28—30 which depend therefrom, as unpatentable over Smelko, Mueller, Metzger, and Latiolais. 7 Appeal 2016-001114 Application 13/284,526 DECISION The Examiner’s decision to reject claims 15, 18—26, 31, and 32 under 35 U.S.C. § 103(a) as unpatentable over Smelko, Mueller, and Metzger is reversed. The Examiner’s decision to reject claims 27—30 under 35 U.S.C. § 103(a) as unpatentable over Smelko, Mueller, Metzger, and Latiolais is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation