12411887 (P.T.A.B. Jun. 23, 2016)

Ex Parte Turner et al

Patent Trial and Appeal BoardJun 23, 2016

12411887 (P.T.A.B. Jun. 23, 2016)

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. 12/411,887 03/26/2009 David Turner COS-1167 RCE 5981 25264 7590 06/23/2016 FINA TECHNOLOGY INC PO BOX 674412 HOUSTON, TX 77267-4412 EXAMINER YAGER, JAMES C ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 06/23/2016 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 DAVID TURNER and MARK MILLER1 ________________ Appeal 2014-008310 Application 12/411,887 Technology Center 1700 ________________ Before: MARK NAGUMO, CHRISTOPHER M. KAISER, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appellants timely appeal under 35 U.S.C. § 134(a) from a Final Rejection2 of claims 1–14 and 20–26.3 (Br. 7.) We have jurisdiction. 35 U.S.C. § 6(b). We affirm. 1 The Real Party in Interest is identified as FINA TECHNOLOGY, INC. (Appeal Brief, filed 12 May 2014 (“Br.”), 6.) 2 Final Office Action mailed 17 January 2014 (“Final Rejection”; cited as “FR.”). 3 Claims 15–19 have been cancelled. (Br. 7.) Appellants include in the Appendix of Claims only those claims that are appealed, namely claims 1, 12–14, 21, 23, 25, and 26. (Br. 7, 18–19.) Appeal 2014-008310 Application 12/411,887 2 OPINION A. Introduction4 The subject matter on appeal relates to “[i]n mold labeling (IML)” which “is a process for labeling a molded plastic object while the object is being formed in the mold.” (Spec. ¶ 43.) “The applications [of IML] range from automobile dashboards to liquid detergent bottles to ice cream cartons.” (Id.) The claims are more specifically directed to “polypropylene cast films for use in in-mold labeling” which are said to have improved properties such as stiffness and clarity. (Id. ¶¶ 1, 2.) Representative Claim 21 reads: An article comprising: an in-mold label comprising a cast film, wherein the cast film comprises a polypropylene resin and a nucleator; and a molded resin, wherein the molded resin envelops the cast film. (Claims App., Br. 18 (emphasis added).) The Examiner maintains the following grounds of rejection:5 A. Claims 21 and 23–25 stand rejected under 35 U.S.C. § 103(a) in view of Nishizawa.6 B. Claims 1, 2, 8, 8-12–14, 20, and 26 stand rejected under 35 U.S.C. § 103(a) in view of Nishizawa and Blackmon.7 4 Application 12/411,887, Polyolefin Films for In-Mold Labels, filed 26 March 2009. We refer to the “ʼ887 Specification,” which we cite as “Spec.” 5 Examiner’s Answer mailed 11 June 2014 (“Ans.”). 6 Takatoshi Nishizawa & Masaki Shiina, Label for In-Mold Forming, U.S. Patent Application Publication No. 2005/0100751, published May 12, 2005 (“Nishizawa”). Appeal 2014-008310 Application 12/411,887 3 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Claim 218 The Examiner finds that Nishizawa discloses “a label for in-mold forming” which may include “a surface layer, a central layer, and a heat- sealing resin layer.” (FR. 4 (citing Nishizawa Abstract).) Nishizawa discloses that the central layer may include “propylene resins” and “nucleating agents.” (Nishizawa ¶¶ 36, 37 (cited in FR. 4).) The Examiner also finds that “Nishizawa discloses that the label is placed inside the mold and then the molten resin is placed in the mold forming an in-mold label.” (Ans. 10.) “Given that the process of forming the in-mold label container comprises placing the in-mold label in the mold and then introducing resin,” the Examiner concludes that a skilled artisan would have found the limitation of “wherein the molded resin envelopes the cast film” recited in claim 21 obvious. Appellants do not dispute that the central layer of Nishizawa’s label corresponds to the “cast film” recited in claim 21. (Br. 12.) Appellants also do not dispute that Nishizawa discloses using molten resin to mold the label that includes the central layer. (Id. at 13; Reply 8 (stating that “the disclosure of Nishizawa does teach an in-mold labeling process”).)9 7 Kenneth P. Blackmon et al, Succinate-Containing Polymerization Catalyst System Using N-Butylmethyldimethoxysilane for Preparation of Polypropylene Film Grade Resin, U.S. Patent Application Publication No. 2008/0161515, published July 3, 2008 (“Blackmon”). 8 Claim 23 stands or falls with claim 21. (Br. 12.) 9 Reply Brief filed 24 July 2014 (“Reply”). Appeal 2014-008310 Application 12/411,887 4 Appellants, however, argue that “the central layer of Nishizawa is located between a surface layer and a heat-sealing resin layer, not molded resins” and that “Nishizawa does not introduce a flowing molten resin into the mold.” (Id. at 12, 13.) Appellants argue that “Nishizawa does not disclose that the differential pressure is sufficient to cause the molten resin sheet to envelope the label[.]” (Id. at 14; Reply 10.) Appellants also argue that “Nishizawa discloses a process where the resin is pressed against the label to a degree sufficient to adhere with the heat-sealing layer of Nishizawa” whereas “the present specification explains that the molten plastic resin is extruded or injected into the mold and envelopes the label.” (Br. 15; Reply 9–10.) We are not persuaded that the Examiner harmfully erred here. The fact that “the central layer of [the label in] Nishizawa is located between a surface layer and a heat-sealing resin layer” does not point us to harmful errors in the Examiner’s finding that “the label is placed inside the mold and then the molten resin is placed in the mold forming an in-mold label.” (See Ans. 10.) Appellants’ arguments that Nishizawa does not disclose “flowing molten resin into the mold” or “the molten plastic resin is extruded or injected into the mold” are not based on limitations recited in claim 21, and we decline to import into the claim limitations that are not recited. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). Appellants’ remaining argument that Nishizawa does not disclose sufficient differential pressure appears to assert that Nishizawa is not enabled. “Under § 103, a reference need not be enabled; it qualifies as prior art, for whatever is disclosed therein.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d Appeal 2014-008310 Application 12/411,887 5 1313, 1357 (Fed. Cir. 2003). No harmful error has been shown with regard to these findings. Appellants additionally argue that the Examiner erred in failing to establish that Nishizawa’s molded resin would necessarily or inherently envelope the central layer of the label. (Br. 15). Appellants, however, do not dispute that the ’887 Specification discloses an in mold labeling process in which “[t]he hot plastic envelopes the label” without additional specification or disclosure. (See Ans. 11 (citing Spec. ¶ 44).) Where, as here, the Examiner establishes a reasonable belief that the property or characteristic recited in claim 21 would have been inherent to the product, the burden of proof shifts to Appellants to show that this characteristic or property is not possessed by the prior art. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Moreover, an obviousness analysis “may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). No harmful error has been shown in the Examiner’s conclusion that a skilled artisan would have found the differences between claim 21 and Nishizawa are such that claim 21 as a whole would have been obvious. Appeal 2014-008310 Application 12/411,887 6 Claim 25 Claim 25 depends from claim 21 and recites “wherein the molded resin is in contact with the polypropylene resin of the cast film.”10 Based on the teachings in Nishizawa that “the label is placed inside the mold and then the molten resin is placed in the mold forming an in-mold label,” the Examiner finds that a skilled artisan would have found that “the molded resin is in contact with the polypropylene resin of the cast film via the heat sealing layer and at the edges of the label.” (FR. 4.) Appellants argue that the Examiner’s holding that “the molded resin is in contact with the polypropylene resin of the cast film ‘via the heat sealing layer’ is to interpret the word ‘contact’ out of the claim[].” (Br. 12.) We agree. Claims should not be construed so broadly as to vitiate an express claim limitation. See Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 27 (1997) (each element in a claim is material to defining the scope of the invention). The Examiner’s construction of the term “molded resin [] in contact with the . . . cast film” to include molded resin that is separated from the cast film by a heat sealing layer is in error. We, however, do not find that the Examiner harmfully erred in “presum[ing] that the molded resin would necessarily contact the edges of the central layer during the process of Nishizawa.” (See Br. 15.) The Examiner has established a reasonable belief that the property or characteristic recited in claim 25 would have been inherent to the product, the burden of proof therefore shifts to Appellants to show that this characteristic or property is not possessed by the prior art. See In re Best, 10 We note that it is not clear from the record before us that this limitation of claim 25 is supported by the ’887 Specification. Appeal 2014-008310 Application 12/411,887 7 562 F.2d 1252, 1255 (CCPA 1977). Absent a showing of evidence contrary to the Examiner’s finding that Nishizawa’s “in-mold forming” process teaches or suggests to the skilled artisan molded resin contacting the edges of a label which includes the central layer, no harmful error has been shown. We therefore uphold the Examiner’s obviousness determination of claim 25 on this basis. Claim 111 Appellants argue that the rejection of claim 1 is in error solely on the basis that the reference “Blackmon adds nothing to the already discussed deficiencies of Nishizawa.” (Br. 16–17; Reply 13–14). We are not persuaded by these arguments for the reasons discussed with respect to claim 21. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). C. Order It is ORDERED that the rejections of claims 1–14 and 20–26 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 11 Claims 12–14 and 26 stand or fall with claim 1. (Br. 16.)