Joseph Dooley et al.

Patent Trials and Appeals Board

Aug 30, 2019

14369105 - (D) (P.T.A.B. Aug. 30, 2019)

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.
14/369,105 06/26/2014 Joseph Dooley 71479-US-PCT 3350
21898 7590 08/30/2019
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH DOOLEY, STEVEN R. JENKINS, and
PATRICK CHANG DONG LEE

____________
Appeal 2018-002160
Application 14/369,105
Technology Center 1700
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JANE E. INGLESE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
rejections under 35 U.S.C. § 103(a) of claims 1–13 as unpatentable over
Kimura (WO97/03803; published Feb. 6, 1997; as translated) (hereinafter
“Kimura”), as well as an alternative rejection over at least the basic
combination of Ling (US 2009/0087654 A1, published Apr. 2, 2009) with

1 Appellant is the Applicant, Dow Global Technologies, LLC, which is also
stated to be the real party in interest (Appeal Br. 2).
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Mitani (US 2003/0114623 A1, published June 19, 2003).2 An oral hearing
was held on August 20, 2019. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We affirm.
Claim 1 is representative and reproduced below (emphasis added to
highlight the key disputed limitation):
1. A coextruded multilayer film or sheet comprising at least
four alternating layers of layer materials A and B, the layers of
A and B each having an average layer thickness of from 1 to
3000 nm, wherein;
a. layer material A is from 5 to 95 volume percent of the film or
sheet based on layer materials A and B and comprises a cyclic
olefin polymer (“COP”);
b. layer material B is from 5 to 95 volume percent of the film or
sheet based on layer materials A and B and comprises an
ethylene polymer having a density of at least about 0.940 g/cc.

Independent claim 12 is directed to a “profile, tube or parison”
comprising the same “at least four alternating layers” as recited in claim 1
(Appeal Br. 13, Claims Appendix).
Appellant relies upon the arguments made for claim 1 for all the other
claims in each rejection, including those claims with separate rejections (see
generally Appeal Br.).

2 In the rejection based on Ling and Mitani, the Examiner applied additional
prior art to Ling and Mitani to dependent claims 8 and 11–13 (Ans. 4, 5). A
discussion of these rejections is not necessary for disposition of this appeal.
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OPINION
Upon consideration of the relied-upon evidence of record and each of
Appellant’s contentions as set forth in the Appeal Brief, and the Reply Brief,
we determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., Ans. 2–10). In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011). We sustain the rejections for essentially the reasons
expressed by the Examiner in the Final Office Action and the Answer. We
add the following for emphasis.
The § 103 Rejection based on Kimura
Appellant argues that Kimura does not teach that component B is
polyethylene with the required density (Appeal Br. 9). Appellant generally
alleges that Kimura teaches a “laundry list” such that there is no adequate
guidance to select such a polyethylene to arrive at the claimed invention
(Appeal Br. 9, 10). This argument is not persuasive.
Appellant does not sufficiently address the Examiner’s position that
there are a limited number of possibilities needed to arrive at the claimed
invention that are all explicitly taught or suggested in Kimura (e.g., Ans. 5–
6, 9, 10). One in the art need only select the specifically taught option of
HDPE for component B of Kimura.3 Cf. also Perricone v. Medicis Pharm.

3 It is noted that Kimura explicitly teaches either one of HDPE (high density
polyethylene) and LLDPE (linear low density polyethylene) as appropriate
materials for a layer of its multilayered film (Kimura translation p. 6/43).
“Low density polyethylene typically has a density value ranging from 0.91
to 0.925 g/cm³, linear low density polyethylene is in the range of 0.918 to
0.94 g/cm³, while high density polyethylene ranges from 0.935 to 0.96 g/cm³
and above” as stated in
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Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005) (“This court rejects the notion
that one of [14 listed] ingredients cannot anticipate because it appears
without special emphasis in a longer list.”); Merck & Co. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s
disclosure of a multitude of 1200 possible combinations failed to render any
particular formulation less obvious).
In the instant case, the rejection is obviousness, not anticipation, so it
is only necessary that the teaching of Kimura would have rendered obvious
the claimed multilayer film.
It is noted that Appellant does not rely upon any evidence of
unexpected results.
For all the reasons set out by the Examiner and above, a
preponderance of the evidence supports the Examiner’s obviousness
determination of the claimed subject matter.

The §103 Rejections based on the Ling/Mitani Combination
There is no dispute that Ling teaches a multilayered film having
alternating layers of a cyclic olefin block copolymer and an olefin block
copolymer that may be polyethylene (Ans. 2, 3; see generally Appeal Brief).
Ling teaches its flexible olefin layer may be “substantially linear
polyethylenes having a density less than about 0.90” (Ling ¶ 28). As stated
in footnote 3 of this Decision, it is known that linear low density

https://plastics.ulprospector.com/generics/27/polyethylene-pe. See also
https://www.usplastic.com/knowledgebase/article.aspx?contentkey=508
which states roughly the same density ranges, and adds that MDPE (medium
density polyethylene) has a density range of 0.926 to 0.94 g/m3.
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polyethylenes (LLDPE) may have a density from 0.918 to 0.940 g/m3. One
of ordinary skill in the art would have readily inferred that such a
polyethylene may be used in Ling, especially since the disclosure of “about
0.90” is so close to 0.918 and 0.940. In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003) (“[A] prima facie case of obviousness exists when the
claimed range and the prior art range do not overlap but are close enough
such that one skilled in the art would have expected them to have the same
properties.”). Furthermore, the use of “about” in a claimed range can
expand the scope of a claim so as to sweep in the prior art. In re Ayers, 154
F.2d 182, 185 (CCPA 1946) (Court found at least about 10% anticipated by
about 8% because it permitted “some tolerance and the use of the words ‘at
least’ before ‘about’ in the claim” was not viewed as a modification critical
in character).
In any event, the Examiner relies upon Mitani to exemplify the use of
an olefin block copolymer comprising high density polyethylene which
would have a density of greater than 0.94 g/m3. Appellant’s main argument
is that Mitani does not teach the required density for its polyethylene block
copolymer, since the density of one block will not determine the overall
density of the polymer (Appeal Br. 5, 6; Reply Br. 2). However, Mitani
teaches that its block copolymer may be made of HDPE and LLDPE blocks
(Mitani ¶¶ 29, 30). Accordingly, one of ordinary skill in the art would have
readily appreciated that the block copolymer may have the recited density.
Appellant also argues that the Examiner is using impermissible
hindsight to use the polyethylene material of Mitani’s laminate in Ling,
since Ling uses a lower density polyethylene layer (that does not need to be
heat resistant) and HDPE would already have a melting point above the
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autoclave temperature used in Ling of 121°C (Appeal Br. 7, 8; Reply Br. 4).
This argument is not persuasive of reversible error for reasons stated by the
Examiner (Ans. 9 (pointing out that Mitani’s polymer may have a melting
point temperature as low as 70°C)).
In any event, it has been established that “the [obviousness] 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.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972
F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference stands for all of the
specific teachings thereof as well as the inferences one of ordinary skill in
the art would have reasonably been expected to draw therefrom). Balancing
the effects of known components in a multilayer film would have been
readily inferred and appreciated by one of ordinary skill. “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.” Winner Int'l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000).
Accordingly, Appellant has not shown reversible error in the
Examiner’s obviousness determination based on the combined prior art of
Ling and Mitani.
In summary, all of the Examiner’s rejections are sustained.
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).
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AFFIRMED