Ex Parte Middleton

Patent Trial and Appeal Board

Sep 28, 2017

12480892 (P.T.A.B. Sep. 28, 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.
12/480,892 06/09/2009 Scott W. Middleton R029 13200.1 4173
26158 7590 10/02/2017
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
MAYE, AYUB A
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
IPDocketing@WCSR.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT W. MIDDLETON
Appeal 2016-004462
Application 12/480,8921
Technology Center 3700
Before JOHN C. KERINS, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Scott W. Middleton (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1, 2, 4—22, and 31—48
under 35 U.S.C. § 103(a) as unpatentable over Beckett (US 5,213,902, iss.
May 25, 1993) and Mizuma (JP 2001348075 (A), pub. Dec. 18, 2001).2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Graphic Packaging
International, Incorporated. Appeal Br. 1 (filed Aug. 24, 2015).
2 Claims 3 and 23—30 have been canceled. Amendment 2, 5 (entered Dec.
8, 2014).
Appeal 2016-004462
Application 12/480,892
INVENTION
Appellant’s invention relates to “a microwave energy interactive
structure that includes a plurality of microapertures configured to provide
venting of moisture and/or exudates away from the food item, while not
adversely affecting the performance of the microwave energy interactive
elements within the structure.” Spec. 1—2.
Claims 1, 12, 31, and 36 are independent. Claims 1 and 31 are
illustrative of the claimed invention, and are reproduced below with
emphasis added to highlight the limitations at the center of this appeal.
1. A microwave energy interactive structure comprising:
a layer of microwave energy interactive material
supported on a polymer film, wherein
the polymer film has opposite first and second sides,
the first side of the polymer film is for facing a food
item,
the microwave energy interactive material has
opposite first and second sides,
the first side of the microwave interactive material
faces toward the second side of the polymer film;
a support layer joined to the second side of the microwave
energy interactive material so that the microwave energy
interactive material is positioned between the support layer and
the polymer film; and
a plurality of microapertures extending through the layer
of microwave energy interactive material and the polymer film,
the micro apertures having a major linear dimension of from
about 0.05 mm to about 2 mm, a microaperture of the plurality of
microapertures having opposite first and second ends, the first
end of the microaperture comprising an opening located at the
first side of the polymer film, and the support layer extending
across the second end of the microaperture so that the second end
of the microaperture is obstructed by the support layer, so that
the microaperture extends from the first side of the polymer film
to the support layer.
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Appeal 2016-004462
Application 12/480,892
31. A microwave energy interactive structure comprising:
a polymer film having a first side and a second side
opposite one another, and a thickness between the first side and
the second side;
a layer of microwave energy interactive material deposited
on the second side of the polymer film;
a plurality of microapertures extending through the layer
of microwave energy interactive material and into the second
side of the polymer film, the microapertures extending only
partially through the thickness of the polymer, and
a support layer joined to the layer of microwave energy
interactive material,
wherein the microwave energy interactive structure is
configured for being responsive to microwave energy so that
after sufficient exposure of the microwave energy interactive
structure to microwave energy, the microapertures automatically
become extended so that the microapertures extend through the
layer of microwave energy interactive material and through the
thickness of the polymer film, so that the first side of the polymer
film is in communication with the support layer by way of the
microapertures.
Appeal Br. 28, 31—32 (Claims App.).
ANALYSIS
Claims 1, 2, 4^-22, and 36—48
Independent claims 1,12, and 36 each recite “a microwave energy
interactive structure comprising,” inter alia, “a plurality of microapertures
extending through the layer of microwave energy interactive material and
the polymer film,” which have “a major linear dimension of from about
0.05 mm to about 2 mm.” Appeal Br. 28, 30, 33 (Claims App.). The
Examiner finds Beckett, at column 4, lines 30-45, discloses this limitation.
See Final Act. 3—4, 8. In support of this finding, the Examiner explains,
“because the word ‘about’ in the ranges render[s] the limitation as indefinite,
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Appeal 2016-004462
Application 12/480,892
and Beckett teaches the ranges of the microapertures therefore, since it has
been held that discovering optimum ranges only involves routine skill in the
art.”3 4Id. at 13—14. Appellant challenges the Examiner’s determination that
Beckett discloses the dimensional limitations claims 1, 12, and 36 recite for
the plurality of microapertures. Appeal Br. 15—18. In particular, Appellant
contends Beckett does not disclose the recited range, nor does Beckett
support a finding that the recited range would have been arrived at using
only routine skill in the art. Id. For the following reasons, we agree with
Appellant.
Column 4, line 30, of Beckett teaches, “[t]he size of the apertures 20
may be varied.” Beckett, however, provides further guidance for selecting
an aperture size and explains, “increasing the size of the aperture generally
increases the percentage of the microwave power which is absorbed by the
thin metal susceptor and generally increases the percentage of the
microwave power which is transmitted through the combination of grid layer
16 and susceptor layer 24.” Beckett, col. 4,11. 30—36 (emphasis added).
Beckett then recommends the following preferred ranges of aperture sizes:
“about 0.125 inch to about 2 inches, more preferably from about 0.375 to
about 0.875 inch.” Id. at col.4,11. 36—39 (emphasis added). Finally, Beckett
cautions, “\i\f the aperture is made too small, the amount of absorption of
3 We note that the Examiner states, the use of the term “about” renders this
limitation of ranges indefinite, but the Examiner does not make an
indefmiteness rejection under 35 U.S.C. § 112, second paragraph. As a
result, there is no indefmiteness issue before us for review regarding the use
of “about” in this case to describe the ranges claims 1, 12, and 36.
Therefore, we do not address this issue and this decision should not be
understood as implicitly agreeing, or disagreeing, with the Examiner that
“about” in this case renders claims 1, 12, and 36 indefinite.
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Appeal 2016-004462
Application 12/480,892
energy by the susceptor layer 24 becomes insufficient while, if the aperture is
made too large, the advantages of the invention with respect to uniformity of
heating and control of reflectance diminish.” Id. at col. 4,11. 39-44
(emphasis added).
In view of the evidence the Examiner cites from Beckett (the only
evidence identified), a preponderance of the evidence fails to support the
Examiner’s finding that Beckett teaches a plurality of microapertures with “a
major linear dimension of from about 0.05 mm to about 2 mm,” as claims 1,
12, and 36 recite. We note that even the smallest aperture size Beckett
discloses (i.e., 0.125 inches, which converts to 3.175 mm) is still more than a
150% greater than the upper limit of 2 mm for the aperture size recited in
these claims.
Moreover, considering the consequences Beckett cautions against
making the apertures “too small,” and the benefits gained by “increasing the
size of the apertures,” Beckett further fails to indicate Appellant’s claimed
aperture sizes would have been a simple application of routine skill in the art
in determining an optimal or workable range. We agree with Appellant that
Beckett actually teaches against the claimed range. See Appeal Br. 16—17.
The C.W. Zumbiel Co. v. Kappos, 702 F.3d 1371 (Fed. Cir. 2012),
decision is instructive on this point. In that case, there was a dispute about
whether the location of a finger flap, which is a tear line in the top wall of a
container for carrying cans, would have been obvious in view of the prior
art. Zumbiel, 702 F.3d at 1383. The claims recited the finger flap to be
located between the first and second cans, and the Federal Circuit held that
the cited reference taught away from this location because it disclosed
locating a tear line in the top wall “a distance more than one-half diameter
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Appeal 2016-004462
Application 12/480,892
and less than one diameter of one can, preferably about three-fourths of a
diameter.” Id. Here, not only does Beckett teach a minimum aperture size
that is still 150% larger than the largest 2 mm aperture size recited in claims
1,12, and 36, Beckett expressly cautions against making the aperture size
too small and teaches increasing the size leads to beneficial results (although
these benefits begin to diminish if the aperture size is too large). See
Beckett, col. 4,11. 30-45. The Examiner’s determination that selecting the
range recited in claims 1, 12, and 36, in view of Beckett, involves only
routine skill in the art is not supported by rational underpinnings, because
Beckett teaches against the direction taken by Appellant. Therefore, we do
not sustain the Examiner’s rejection of claims 1,12, and 36, or claims 2,
4—11, 13—22, and 37-48, which depend directly, or indirectly, therefrom.
Claims 31—35
Independent claim 31 recites “a microwave energy interactive
structure comprising,” inter alia, “a plurality of microapertures” that extend
“only partially through the thickness of the polymer [film].” Appeal Br.
31—32 (Claims App.). Finding “Beckett fails to teach . . . the microapertures
extend . . . only partially through the thickness of the polymer film on the
second side of the polymer film,” the Examiner relies on Mizuma for this
limitation. Final Act. 9—11. In particular, the Examiner finds “Mizuma
discloses . . . the microapertures (14) extend through the layer of microwave
energy interactive material and only partially through the thickness of the
polymer film on the second side of the polymer film.” Id. at 11 (citing
Mizuma Figs. 1,2). Appellant asserts this finding was error. See Appeal Br.
21—22. We agree.
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Appeal 2016-004462
Application 12/480,892
As Appellant notes (see Appeal Br. 21), the Examiner’s rejection of
claim 31 is internally inconsistent because, in the same paragraph the
Examiner made the above finding regarding only partial extension, the Final
Action also characterizes Figures 1 and 2 of Mizuma as “disclosing] ... a
plurality of microapertures (14) extending through the layer of microwave
energy interactive material and the polymer film (13).” Final Act. 11
(emphasis added). Figures 1 and 2 of Mizuma are reproduced below, with
annotations added to Figure 1.
JM i J 118 2]
The above reproduction of Figures 1 and 2 of Mizuma illustrates a
packaging sheet for a microwave oven according to the solutions Mizuma
asserts are inventive. See Mizuma, Abstract. It is readily apparent from
Figures 1 and 2, reproduced above, that the microapertures (14) extend
completely through the polymer film (13). Because the Examiner relies
solely upon the above figurers as support for finding Mizuma discloses a
plurality of microapertures that extend only partially through the polymer
film, this finding lacks support by a preponderance of the evidence.
Therefore, we also do not sustain the Examiner’s rejection of claim 31, as
well as claims 32—35 depending therefrom.
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Appeal 2016-004462
Application 12/480,892
DECISION
The Examiner’s rejection of claims 1, 2, 4—22, and 31—48 is reversed.
REVERSED
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