Ex Parte McLean et al

Patent Trial and Appeal Board

Oct 31, 2017

13284526 (P.T.A.B. Oct. 31, 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.
13/284,526 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
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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.
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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.
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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
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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
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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.
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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
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