Ex Parte Schiffmann

Patent Trial and Appeal Board

Oct 2, 2018

14060383 (P.T.A.B. Oct. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/060,383 10/22/2013
33072 7590 10/04/2018
KAGAN BINDER, PLLC
SUITE 200, MAPLE ISLAND BUILDING
221 MAIN STREET NORTH
STILLWATER, MN 55082
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Jurgen Schiffmann
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
KNW0004/US/2 1026
EXAMINER
YAGER, JAMES C
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
10/04/2018 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):
docketing@kaganbinder.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN SCHIFFMANN
Appeal2017-010457
Application 14/060,383
Technology Center 1700
Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1--4, 13, 14, and 16-18. 2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants are the applicants, inventor Jurgen Schiffmann, and Kuhne
Anlagenbau GmbH. According to the Appeal Brief, Kuhne Anlagenbau
GmbH is the real party in interest. Appeal Brief filed February 14, 2017
("App. Br."), 3.
2 Appellants cancelled claims 5-12 in an Amendment filed November 28,
2016, and the Examiner confirmed entry of the amendment in an Advisory
Action issued December 21, 2016. Appellants also cancelled claim 15 in an
Amendment filed February 14, 2017 (with the Appeal Brief), and the
Examiner confirmed entry of the amendment in an Advisory Action issued
August 7, 2017.
Appeal2017-010457
Application 14/060,383
STATEMENT OF THE CASE
Appellants claim a multilayered two-dimensional or tubular food
casing or food film. App. Br. 5. Claim 1 illustrates the subject matter on
appeal and is reproduced below:
1. A multilayered two-dimensional or tubular food casing or
food film which is produced by the nozzle blast-drawing process
and biaxially oriented by the triple-bubble process, characterized
by the following laminated structure including at least seven
layers that are counted from the outside to the inside, wherein:
a first layer from the outside comprises PET as a layer
component,
a second layer from the outside comprises an adhesion
promoter as a layer component,
a third layer from the outside comprises an ionomer as a
layer component,
a fourth layer from the outside comprises an adhesion
promoter as a layer component,
a fifth layer from the outside comprises EVOH as a layer
component,
a sixth layer from the outside comprises an adhesion
promoter as a layer component,
a seventh layer from the outside comprises a polyolefin as
a layer component.
App. Br. 16 (Claims Appendix).
The Examiner sets forth the following rejections in the Final Office
Action entered July 28, 2016 ("Final Act."), and maintains the rejections in
the Examiner's Answer entered April 28, 2017 ("Ans.") 3:
3 The Examiner indicated in the Advisory Action issued December 21, 2016
that the rejections directed to claims 5-12 were withdrawn in view of
Appellants' cancellation of these claims, and indicated in the Advisory
Action issued August 7, 2017 that in view of Appellants' cancellation of
claim 15, the rejections directed to the remaining claims were maintained,
thus implicitly indicating that the rejection of claim 15 was withdrawn.
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Application 14/060,383
I. Claims 1, 2, 13, 14, 16, and 17 under 35 U.S.C. § I03(a) as
unpatentable over Buelow et al. (US 2004/0173491 Al; published
September 9, 2004) ("Buelow") in view of Wolf et al. (US 6,406,763 B 1;
issued June 18, 2002) ("Wolf'); and
II. Claims 3, 4, and 18 under 35 U.S.C. § I03(a) as unpatentable
over Buelow in view of Wolf and Hughes et al. (US 5,705,565, issued
January 6, 1998) ("Hughes").
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' timely contentions4, we affirm the Examiner's rejections
of claims 1--4, 13, 14, and 16-18 under 35 U.S.C. § I03(a) for the reasons
set forth in the Final Office Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellants provide for each ground of rejection. 37
C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) ( explaining that even if the examiner had failed to make a
prima facie case, "it has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections").
4 We do not consider any new argument Appellants raise in the Reply Brief
that Appellants could have raised in the Appeal Brief. 37 C.F.R.
§ 4I.37(c)(l)(iv); 37 C.F.R. § 41.4I(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown).
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Application 14/060,383
Rejection I
Appellants argue claims 1, 2, 13, 14, 16, and 17 as a group. App. Br.
7-13. Therefore, we select claim 1 as representative, and decide the appeal
as to claims 1, 2, 13, 14, 16, and 17 based on claim 1 alone. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Buelow discloses a tube-shaped biaxially-oriented multilayer structure
used to package food products. ,r,r 15, 50. Buelow discloses that the
multilayer structure can include an outer layer that includes ionomers (third
layer), a first tie layer that adheres or bonds adjacent layers (adhesion
promoter fourth layer) disposed between the outer layer and oxygen barrier
layer formed of EVOH (fifth layer), and a second tie layer (adhesion
promoter sixth layer) disposed between the barrier layer and a polyolefin
heat-sealant layer (seventh layer). ,r,r 17, 18, 22, 26, 28-30, 41, 48, 50, 51,
68, 70; Fig. 1. Buelow discloses that the multilayer structure can include
additional layers (such as first and second polyamide layers disposed on
opposite sides of the barrier layer), and preferably has seven layers, but can
include more than seven layers. ,r,r 26, 61.
The Examiner finds that Buelow thus discloses a multilayer structure
having layers corresponding to the third through seventh layers recited in
claim 1, but finds that Buelow' s multilayer structure does not include a first
layer from the outside comprising PET and a second layer from the outside
comprising an adhesion promoter, and the Examiner relies on Wolf for
suggesting these features. Final Act. 5---6.
Wolf discloses a multiple layer film for packaging food products that
includes an outer abuse layer and a tie layer directly adhered to the internal
surface of the outer abuse layer, which bonds the outer abuse layer to an
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adjacent inner layer. Col. 1, 11. 6-9; col. 3, 11. 38-50; col. 9, 11. 37-39, 64--
66. Wolf discloses that the outer abuse layer may consist essentially of a
polyester, such as PET, and provides resistance to environmental stresses
such as abrasion, as well as resistance to heat applied during heat sealing,
helping to prevent bum-through. Col. 5, 11. 25-32, 62---66; col. 6, 11. 12-13,
35-37. Wolf discloses that the outer abuse layer also imparts desired gloss,
clarity, and haze characteristics to the multiple layer film. Col. 5, 11. 41--47;
col. 6, 11. 35-37.
The Examiner determines that one of ordinary skill in the art would
have been led at the time of Appellants' invention to incorporate an outer
abuse layer and associated tie layer as disclosed in Wolf into the multilayer
structure disclosed in Buelow to provide "protection against environmental
stresses, heat-resistant properties to prevent 'bum-through' during heat
sealing and also good appearance characteristics and good adhesion." Final
Act. 6.
Appellants argue that Buelow discloses a strong, puncture-resistant,
heat-sealable, and heat-resistant film, and teaches the advantages of using
fewer materials in the film. App. Br. 8-9. Appellants contend that based on
these disclosures, one of ordinary skill in the art would not have had a reason
to modify Buelow's film to prevent bum through during heat sealing by
adding more layers to the film because Buelow's film is heat-resistant and
already possesses the "physical strength requirements" for heat sealable food
products, and Buelow discourages the addition of more materials or layers to
the film. App. Br. 9, 13. Appellants argue that one of ordinary skill in the
art therefore "would not have combined the films of Buelow and Wolf,
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because there would have been no motivation to modify Buelow from the
Wolf disclosure." App. Br. 10.
However, although Buelow does disclose that the multilayer structure
described in the reference includes a heat-sealant layer that allows the film
to be heat-sealed to itself or to another film (i139), the Examiner's rationale
for modifying Buelow' s multilayer structure to include an outer PET abuse
layer as disclosed in Wolf is not based solely on the abuse layer's prevention
of bum-through during heat sealing. Rather, as the Examiner also correctly
finds, Wolf discloses that the outer abuse layer provides resistance to
environmental stresses such as abrasion, and imparts desired gloss, clarity,
and haze characteristics to a multiple layer film. Final Act. 4--5; Wolf col. 5,
11. 41--4 7, col. 6, 11. 3 5-3 7. In view of these disclosures, one of ordinary skill
in the art would have been led to modify Buelow' s multilayer structure to
include an outer PET abuse layer bonded to the ionomer layer of Buelow's
structure by a tie layer ( adhesion promoter) as disclosed in Wolf in order to
realize the numerous advantageous properties imparted by the abuse layer,
including resistance to environmental stresses such as abrasion, and desired
gloss, clarity, and haze characteristics.
Furthermore, as discussed above, Buelow discloses that the multilayer
structure described in the reference most preferably has seven layers, and
although Buelow indicates that thinner structures contribute to cost
efficiencies, Buelow nonetheless explicitly teaches that the structure can
include more than seven layers. One of ordinary skill in the art would have
recognized that adding an outer PET abuse layer and an adjacent tie layer as
disclosed in Wolf to Buelow' s multilayer structure would have both
advantages and disadvantages. However, any disadvantages would not
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negate Wolf's explicit disclosure that an outer PET abuse layer imparts
numerous advantages, including resistance to environmental stresses such as
abrasion, and desired gloss, clarity, and haze characteristics, thus providing a
reason to add such a layer and an adjacent tie layer to Buelow's structure
despite potential reduced cost efficiencies. See Allied Erecting &
Dismantling Co., Inc. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381
(Fed. Cir. 2016) ("Although modification of the movable blades may impede
the quick change functionality disclosed by Caterpillar, '[a] given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine."' ( quoting Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006))); Winner Int'! Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another").
Appellants argue that Buelow does not describe or teach an internal
ionomer layer between a central three-layer EVOH oxygen barrier layer
portion and an outer PET layer. App. Br. 9. Appellants argue that even if
the films of Buelow and Wolf were combined, "the resulting film would not
have an inner layer that contains an ionomer, as presently claimed." App.
Br. 10 ( emphasis omitted).
However, as discussed above, the Examiner acknowledges that
Buelow' s multilayer structure does not include an outer PET layer. As also
discussed above, Buelow discloses a multilayer structure including an outer
layer that includes ionomers (third layer), a first tie layer that adheres or
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bonds adjacent layers (adhesion promoter fourth layer) disposed between the
outer layer and oxygen barrier layer formed of EVOH (fifth layer), and a
second tie layer (adhesion promoter sixth layer) disposed between the barrier
layer and a polyolefin heat-sealant layer (seventh layer). ,r,r 17, 18, 22, 26,
28-30, 41, 48, 50, 51, 68, 70; Fig. 1. Therefore, incorporating an outer PET
abuse layer and an adjacent tie layer as disclosed in Wolf into Buelow's
multilayer structure as proposed by the Examiner would result in a modified
structure that includes an internal ionomer layer between a central three-
layer EVOH oxygen barrier layer portion (an oxygen barrier layer
sandwiched between tie layers) and an outer PET layer, as recited in claim 1.
Appellants further assert that Wolf describes using ionomers "even
more restrictively than Buelow, and uses them only in the heat sealing
layer." App. Br. 9. (citing Wolf col. 3, 11. 66; col. 5, 1. 3; col. 10, 11. 37-38).
Appellants contend that "in order to work as a heat sealing layer as taught by
Wolf, the ionomer must be in the outer layer." App. Br. 10 (emphasis
omitted). Appellants argue that combining Wolf with Buelow as proposed
by the Examiner would place Wolf's ionomer layer "in the middle of the
construction, thereby converting the ionomer layer to an inner layer." App.
Br. 13. Appellants contend that this would frustrate the purpose of the
ionomer layer of Wolf, which is used for heat sealing, because "in order to
work as a heat sealing layer as taught in the prior art, the ionomer must be in
the outer layer." Id. Appellants further contend that the proposed
combination "ignores the function of the ionomer layer in Buelow as a heat-
sealant layer ... for a layer to function as a heat-sealant layer, this layer
must be an outer layer." Reply Br. 2 (emphasis omitted).
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Application 14/060,383
However, contrary to Appellants' arguments, as discussed above,
Buelow discloses that the heat-sealant layer is the innermost layer of the
multilayer structure described in the reference. ,r,r 17, 18, 22, 26, 28-30, 41,
48, 50, 51, 68, 70; Fig. 1. Wolf similarly discloses an inner heat-sealant
layer in a multiple layer film. Col. 3, 11. 46-50 ("[T]he first outer layer or
'heat seal layer' of the film is considered the 'inside' or food-side layer of
the film and the ... second outer layer is considered the 'outside' layer or an
'abuse layer' of the film.") Contrary to Appellants' arguments, a heat-
sealant layer thus need not be an outer layer of a multiple layer film in order
to function as a heat-sealant layer.
In view of the disclosure of inner heat-sealant layers in Buelow and
Wolf, one of ordinary skill in the art reasonably would have expected that
incorporating an outer PET abuse layer and an adjacent tie layer as disclosed
in Wolf into Buelow' s multilayer structure as proposed by the Examiner
would not affect the function of the heat-sealant layer of Buelow's
multilayer structure. The effect of this modification on Wolf's ionomer
layer is of no moment, because the proposed modification does not involve
incorporation of Wolf's ionomer layer into Buelow's multilayer structure.
Appellants argue that the art of preparing "multi-layer films of the
nature of the articles described in the present claims" is complex and
unpredictable, and is not a simple matter of adding or exchanging materials
at will. App. Br. 10-11. Appellants contend that due to this complexity, and
the unpredictable effect of combinations of various potential layers on
multilayer films, one of ordinary skill in the art would not have expected at
the time of their invention that any added or exchanged material would
automatically work to yield predictable results. App. Br. 12-13. Appellants
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assert that one of ordinary skill in the art would therefore not have had a
reasonable expectation of success for a final product when simply
attempting combinations of various layers. App. Br. 12-13; Reply Br. 3. In
support of these arguments, Appellants rely on the Declarations ofUwe
Kohl and Josef Schief, which were submitted to the Patent and Trademark
Office on April 18, 2016.
The Kohl Declaration indicates that mismatching of materials used to
form various layers of biaxially-oriented multilayer films can result in
product failure by any of several modes of failure. ,r,r 10, 13. The Kohl
Declaration further states that the "skilled person in this art is aware of this
situation, and therefore would not expect that one could simply add another
layer with a reasonable expectation of success before attempting a new
combination of materials in a multi-layer construction." ,r 13.
The Schief Declaration states that "knowledgeable potential
customers" have numerous misconceptions about the properties of oriented
films that lead them to expect that certain film materials are not suitable for
biaxially-oriented multilayer films for food applications. ,r,r 11-13. The
Schief Declaration further states that the potential customers find the films
surprising in view of their understanding before being provided with
information to educate them about their misconceptions. ,r 13.
However, although the Kohl Declaration states that mismatching of
materials used to form various layers of biaxially-oriented multilayer films
can result in product failure, the Kohl Declaration provides no indication
that mismatching would occur between an outer PET layer and adjacent tie
layer as disclosed in Wolf and the layers of Buelow' s multilayer structure.
And although the Kohl Declaration also states generally that one of ordinary
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skill in the art would not have expected that one could simply add another
layer to a multilayer film with a reasonable expectation of success, the
Declaration does not provide any objective evidence corroborating this
conclusory opinion. Nor does the Declaration specifically address whether
one of ordinary skill in the art would have reasonably expected that an outer
PET layer and adjacent tie layer as disclosed in Wolf could be successfully
added to Buelow' s multilayer structure.
It follows that we give the conclusory opinion provided in the Kohl
Declaration little weight. 37 C.F.R. § 42.65(a) (opinion testimony that does
not disclose underlying facts or data "is entitled to little or no weight");
Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("[W]hat the
Board consistently did was accord little weight to broad conclusory
statements that it determined were unsupported by corroborating references.
It is within the discretion of the trier of fact to give each item of evidence
such weight as it feels appropriate."); In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations."). We also accord
the Schief Declaration little to no weight because it is not based on the
asserted views of a person of ordinary skill in the art, and instead discusses
"knowledgeable potential customers."
As discussed above, Buelow discloses a multilayer structure including
an ionomer layer that provides strength, an oxygen barrier layer, a heat-
sealant layer, and two tie layers that adhere adjacent layers. ,r,r 17, 41, 48,
50, 60. As also discussed above, Buelow explicitly discloses that the
multilayer structure can include more than seven layers. ,r 61. Wolf
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discloses a similar multilayer film that can contain 3 to 20 layers, including
an outer PET abuse layer, a heat seal layer, a core layer that enhances the
film's strength, one or more barrier layers that exclude gases or vapors, and
one or more tie layers that improve the adherence of adjacent layers. Col. 3,
11. 53-55; col. 5, 11. 25-29; col. 8, 11. 11-14, 54--57; col. 9, 11. 36-38; col. 10,
11. 15-16.
Given the similarity between the layers of Buelow' s multilayer
structure and corresponding layers in Wolfs multilayer film, one of ordinary
skill in the art reasonably would have expected that an outer PET layer and
an adjacent tie layer as disclosed in Wolf could be successfully added to
Buelow's multilayer structure to provide resistance to environmental stresses
such as abrasion, and impart desired gloss, clarity, and haze characteristics
to the multilayer structure, as disclosed in Wolf. In re Kubin, 561 F.3d
1351, 1360 (Fed. Cir. 2009) ("Obviousness does not require absolute
predictability of success ... all that is required is a reasonable expectation of
success." ( emphasis omitted) ( citing In re O 'Farrell, 853 F.2d 894, 903-04
(Fed. Cir. 1988))). Appellants and the Declarant do not identify any
teaching in Buelow or Wolf, or any other persuasive evidence or reasoning,
demonstrating otherwise.
Therefore, considering the totality of the evidence relied upon in this
appeal, a preponderance of the evidence weighs in favor of the Examiner's
conclusion of obviousness. We accordingly sustain the Examiner's rejection
of claims 1, 2, 13, 14, 16, and 17 under 35 U.S.C. § 103(a).
Rejection II
Appellants argue that Hughes does not bridge the gap between
Buelow and the present claims because Hughes does not provide a reason to
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modify Buelow, and does not describe a construction that would lead one to
make a multilayer film having an inner layer that contains an ionomer. App.
Br. 13. However, because we are unpersuaded of reversible error in the
Examiner's rejection of claim 1 for the reasons discussed above, Appellants'
position as to this rejection is also without merit. We accordingly sustain the
Examiner's rejection of claims 3, 4, and 18 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejections of claims 1--4, 13, 14, and 16-18
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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