Ex Parte Wang et al

Patent Trial and Appeal Board

Jul 8, 2016

13219984 (P.T.A.B. Jul. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/219,984 08/29/2011
23556 7590 07111/2016
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
FIRST NAMED INVENTOR
James H. Wang
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.
64770654US01 1970
EXAMINER
SANDERSON, LEE E
ART UNIT PAPER NUMBER
1782
MAILDATE DELIVERY MODE
07/11/2016 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 JAMES H. WANG,
BRENTM. THOMPSON, WILLIAMLARATTA,
and MARCELO P. PAULINO
Appeal2014-008465
Application 13/219,984
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
MONTE T. SQUIRE, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner's
decision finally rejecting claims 1, 3-9, and 12-23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Representative claim 1 is reproduced below from the Claims Appendix of
the Appeal Brief dated February 24, 2014 ("Br.").
1. A multiple layer polymeric film comprising at least three layers
wherein at least two layers comprise at least one polyolefin and a
Appeal2014-008465
Application 13/219,984
third layer comprises from about 5% to about 45% of a non-cross-
linked thermoplastic starch, from about 55% to about 95% of at least
one polyolefin, and from about 0.5% to about 10% of a
compatibilizer, wherein said compatibilizer is a graft copolymer of
polyethylene and maleic anhydride.
Br. 8 (emphasis added).
The claims on appeal stand rejected as follows:
(1) claims 1, 3, 5-9, 12, 14, 15, 17, and 20-23 under 35 U.S.C. § 103(a)
as unpatentable over Changping et al. 1 in view of Dehennau et al.;2
(2) claims 1, 3-5, 9, 12, 14, 16, 17, and 20-23 under 35 U.S.C. § 103(a)
as unpatentable over Tomka3 in view ofDehennau;
(3) claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Tomka
in view ofDehennau, and further in view of Otey et al.; 4
(4) claim 13 under 35 U.S.C. § 103(a) as unpatentable over Tomka in
view Dehennau, and further in view of Tsunashima et al.; 5 and
(5) claims 1, 3, 4, 6, 9, 17-19, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Shi et al. 6
The rejections are sustained for the reasons set forth in the Examiner's
Answer dated May 28, 2014 ("Ans."). We add the following for emphasis.
B. DISCUSSION
1. Rejection (1)
1 WO 2011/009165 Al, published January 27, 2011 ("Changping").
2 US 5,635,550, issued June 3, 1997 ("Dehennau").
3 US 6,242,102 Bl, issued June 5, 2001 ("Tomka").
4 US 4,133,784, issued January 9, 1979 ("Otey").
5 US 4,410,582, issued October 18, 1983 ("Tsunashima").
6 US 2009/0286906 Al, published November 19, 2009 ("Shi 906").
2
Appeal2014-008465
Application 13/219,984
The Examiner finds the core layer of the multilayer film disclosed in
Changping comprises polyethylene, thermoplastic starch, and an ethylene/acrylic
acid copolymer as a compatibilizer. The Examiner finds Changping does not
disclose the claimed compatibilizer. Ans. 3.
Turning to Dehennau, the Examiner finds Dehennau' s film comprises
polyethylene, thermoplastic starch, and the claimed compatibilizer. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art "to
have modified the film of Changping by substituting the ethylene/acrylic acid
copolymer with an art recognized equivalent compatibilizer such as the maleic
anhydride grafted polyethylene taught by Dehennau." Ans. 3.
The Appellants argue that neither Changping nor Dehennau disclose that
ethylene/acrylic acid copolymer and maleic anhydride grafted polyethylene are
equivalent and Dehennau does not use the disclosed compatibilizer with
thermoplastic starch. For these reasons, the Appellants argue that the claimed
invention is not rendered obvious by the combination of Changping and Dehennau.
Br. 3.
The Appellants' arguments are not persuasive of reversible error. The
Appellants disclose that a "[t]he thermoplastic starch in the polymeric film
comprises either a native starch or a modified starch with a plasticizer." Spec. 8,
11. 6-7; see also Spec. 5, 11. 12-15 (defining "native starch" as unmodified starch
separated from plants). Dehennau plasticizes starch of natural and plant origin
using some of the same plasticizers disclosed in the Appellants' Specification. See
Dehennau, col. 3, 11. 13-15 (plasticizers include glycerine and/or sorbitol); Spec. 8,
11. 13-17 (plasticizers include glycerine and sorbitol). Thus, one of ordinary skill
in the art would have understood that the plasticized starch disclosed in Dehennau
is a thermoplastic starch within the scope of the claimed invention.
3
Appeal2014-008465
Application 13/219,984
Moreover, it is of no moment that neither Changping nor Dehennau
expressly discloses that ethylene/acrylic acid copolymer and maleic anhydride
grafted polyethylene are equivalent compatibilizers. As the Examiner finds, the
compatibilizers disclosed in Changping and Dehennau are both used to
compatibilize blends of thermoplastic starch and polyethylene and are structurally
and chemically similar. Thus, the Examiner finds "one of ordinary skill in the art
would have ... had a reasonable expectation that MA-g-PE [maleic anhydride
grafted polyethylene] and EAA [ethylene/acrylic acid copolymer] would function
equivalently as compatibilizers." Ans. 14. Significantly, the Appellants do not
direct us to any evidence to the contrary.
2. Rejections (2}--(4)
Similar to rejection (1 ), the Examiner substitutes the compatibilizer of
Tomka ( ethylene/maleic anhydride copolymer) with the compatibilizer of
Dehennau (maleic anhydride grafted polyethylene) to arrive at the claimed
polymeric film. Ans. 7-8.
The Appellants argue that neither Tomka nor Dehennau discloses that
maleic anhydride grafted polyethylene and the compatibilizers disclosed in Tomka
(e.g., ethylene/maleic anhydride copolymer) are equivalent. Therefore, the
Appellants argue that the claimed invention is not rendered obvious by the
combination of Tomka and Dehennau. Br. 4.
The Appellants' argument is not persuasive of reversible error. Tomka and
Dehennau use their respectively disclosed compatibilizers in blends comprising
polyethylene and thermoplastic starch. The Examiner finds the compatibilizers
disclosed in Dehennau include maleic anhydride grafted polyethylene as well as
some of the same compatibilizers disclosed in Tomka (e.g., a copolymer of
ethylene and maleic anhydride). Ans. 16; see also Dehennau, col. 3, 11. 8-12;
4
Appeal2014-008465
Application 13/219,984
Tomka, col. 9, 1. 60-col. 10, 1. 6. Thus, the Examiner finds Dehennau teaches that
maleic anhydride grafted polyethylene and at least the compatibilizer of Tomka
identified above (i.e., a copolymer of ethylene and maleic anhydride) are
functionally equivalent. Ans. 7, 16. The Appellants have failed to show that the
Examiner's findings are erroneous.
As for the§ 103(a) rejections of dependent claims 7, 8, and 13, the
Appellants argue that neither Otey nor Tsunashima cures the deficiencies of
Tomka or Dehennau in the rejection of claim 1. Br. 5. For the reasons set forth
above, there are no deficiencies in the rejection of claim 1 that require curing by
either Otey or Tsunashima.
3. Rejection (5)
The Appellants argue that Shi describes a single layer film for use in an
absorbent article such as a sanitary napkin. Br. 5. The Appellants argue that "[i]t
is not explained how a sanitary napkin can be both a film and a feminine pad." Br.
,
0.
In response, the Examiner explains that "the Office Action does not read
th[ e] sanitary napkin of Shi on the claimed multilayer film as asserted by appellant,
but rather it reads the multilayer film disclosed by Shi on the claimed multilayer
film." Ans. 17. More specifically, Shi discloses that the multi-layered film may
comprise the backsheet of a sanitary napkin. Shi 906, at i-fi-159, 83; see also Shi
906, at i1 82 (peelable release liner for a sanitary napkin may be formed from the
disclosed multilayer film); Shi 906, at i1 83 (film may be employed as an individual
wrap, packaging pouch, or bag for an absorbent article).
5
Appeal2014-008465
Application 13/219,984
Referring to Shi Example 1, the Appellants also contend that "it is not clear
from Shi whether glycerol is being used to plasticize GLUCOSOL 800[7J in view
of the other components present, and the example includes no compatibilizer." Br.
6.
In response, the Examiner finds Shi 906 "specifically teaches that glycerol is
relied upon to plasticize the water-soluble polymer layer in order to produce melt-
processible (i.e. thermoplastic) [0034]. Thus, it is clear that the glycerol in the
water soluble layer of Shi' s Example 1 is for the purpose of plasticizing." Ans. 17;
see also Shi 906, at i-f 93 (describing the formation of "[a] starch-based blend,
which was a water-soluble polymer"). The Appellants do not direct us to any error
in the Examiner's finding.
Moreover, it is of no moment that the starch-based blend disclosed in Shi
Example 1 does not include a compatibilizer. See In re Fracalossi, 681 F.2d 792,
794 n.1 (CCP A 1982) ("the disclosure of a reference is not limited to specific
working examples contained therein"). Shi expressly discloses that a
compatibilizer may be employed in the film to enhance the compatibility between
the polyolefin and the water-soluble polymer. Shi 906, at i-f 43.
C. DECISION
The decision of the Examiner is 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)(l).
AFFIRMED
7 According to paragraph 77 of Shi 940 (US 2010/0272940 Al, published October
28, 2010), Glucosol 800 is a modified com starch.
6