MITSUI CHEMICALS TOHCELLO, INC.

Patent Trials and Appeals Board

Nov 6, 2020

2020002177 (P.T.A.B. Nov. 6, 2020)

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.
14/763,973 07/28/2015 Junichi NARITA 1029430-000580 1005
21839 7590 11/06/2020
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
BERRIOS, JENNIFER A
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
11/06/2020 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JUNICHI NARITA, TSUNETOSHI SHINADA, and
KAZUHIKO NEGISHI
____________

Appeal 2020-002177
Application 14/763,973
Technology Center 1600
____________

Before ERIC B. GRIMES, DEBORAH KATZ, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving
claims to a freshness-retentive film. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Mitsui Chemicals Tohcello, Inc. as
the real party in interest. Appeal Br. 2. Herein, we refer to the Final Office
Action mailed April 11, 2019 (“Final Act.”); Appellant’s Appeal Brief filed
October 7, 2019 (“Appeal Br.”); Examiner’s Answer mailed November 25,
2019 (“Ans.”); and Appellant’s Reply Brief filed January 23, 2020 (“Reply
Br.”).
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STATEMENT OF THE CASE
The Specification explains that:
[c]ommercial products requiring freshness, such as fresh
food products including vegetables and fruit are distributed
while contained in packaging materials formed of films. These
fresh food products cause discoloring and degradation such as
wilt, and in turn start rotting as time goes by, leading to a
reduction in their values as commercial products. For this
reason, commercial products such as these fresh food products
should be wrapped in packaging materials to retain freshness.
Spec. ¶ 2. According to the Specification, “[a]n object of the present
invention is to provide a freshness-retentive film and packaging material
having high antibacterial characteristics.” Id. ¶ 6.
Claims 1, 3–8, 13, and 17 are on appeal and can be found in the
Claims Appendix of the Appeal Brief. Claim 1 is illustrative and reads as
follows:
1. A freshness-retentive film, comprising stearyldiethanolamine,
wherein a total of the stearyldiethanolamine is present on
at least one surface at 0.002 to 0.040 g/m2, and
wherein an amount of the stearyldiethanolamine included
in the freshness-retentive film is 0.01 to 3% by mass.
Appeal. Br., Claims App. 1.
Appellant seeks review of the following rejections:
I. Claims 1, 3, 13, and 17 under 35 U.S.C. § 103 as unpatentable over
JP ’3842 and Sudo;3

2 JP2003176384 (English translation) (“JP ’384”).
3 US 5,262,233, issued Nov. 15, 1993 (“Sudo”).
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II. Claims 1, 3, 4, 6, 7, 13, and 17 under 35 U.S.C. § 103 as unpatentable
over Isaka,4 JP ’384, Sudo, and Chatterjee;5
III. Claims 1, 3, 5, 13, and 17 under 35 U.S.C. § 103 as unpatentable over
JP ’384, Sudo, and Irusta;6
IV. Claims 1, 3, 8, 13, and 17 under 35 U.S.C. § 103 as unpatentable over
JP ’384, Sudo, and Goldade;7
V. Claims 1, 3, 13, and 17 under 35 U.S.C. § 103 as unpatentable over
JP ’384 and Yoshioka;8
VI. Claims 1, 3, 4, 6, 7, 13, and 17 under 35 U.S.C. § 103 as unpatentable
over JP ’384, Yoshioka, and Chatterjee;
VII. Claims 1, 3, 5, 13, and 17 under 35 U.S.C. § 103 as unpatentable over
JP ’384, Yoshioka, and Irusta;
VIII. Claims 1, 3, 8, 13, and 17 under 35 U.S.C. § 103 as unpatentable over
JP ’384, Yoshioka, and Goldade; and
IX. Claims 1, 3–7, 13, and 17 under 35 U.S.C. § 103 as unpatentable over
Isaka, JP ’384, Yoshioka, Chatterjee and Irusta.
Appeal Br. 3–4.
Appellant does not address the rejections individually in its Appeal
Brief, but instead presents its arguments in two groups, urging that Examiner
has: (1) “fail[ed] to establish a prima facie case based on JP ’384 and Sudo”

4 US 4,876,146, issued Oct. 24, 1989 (“Isaka”).
5 US 6,022,628, issued Feb. 8, 2000 (“Chatterjee”).
6 L. Irusta et al., Migration of Antifog Additives in Agricultural Films of
Low-Density Polyethylene and Ethylene-Vinyl Acetate Copolymers, 111 J. of
Applied Polymer Sci. 2299–2307 (2009) (“Irusta”).
7 V. Goldade et al., Polymeric Packaging Film for Food Products, 8
Packaging Tech. and Sci. 149–158 (1995) (“Goldade”).
8 US 5,814,684, issued Sept. 29, 1998 (“Yoshioka”).
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and (2) “fail[ed] to establish a prima facie case based on JP ’384 and
Yoshioka.” Appeal Br. 5–6. We interpret Appellant’s first grouping to
correspond to Rejections I–IV and the second grouping to correspond to
Rejections V–IX above. Moreover, Appellant does not argue any claim
separately from claim 1. See id. at 4–7.
We apply the same groupings of the rejections for our analysis of
Appellant’s arguments, selecting claim 1 as representative for each
grouping. See 37 C.F.R. § 41.37 (c)(1)(iv). The other claims stand or fall
with claim 1. Id. The issue for each grouping is whether the preponderance
of the evidence supports Examiner’s conclusion that claim 1 is obvious over
the cited prior art.
Findings of Fact
FF1. JP ’384 teaches a “mushroom packaging film that can retain the
freshness of the mushrooms after packaging for long-term.” JP ’384 ¶ 5.
Specifically, JP ’384 teaches a polyolefin based film that includes a mixture
of surfactants: (A) monoglycerin and/or polyglycerol fatty acid esters, (B)
fatty acid dialcohol amides and/or aliphatic dialcohol amines, and optionally
(C) polyoxyethylene alkyl ethers. Id. ¶¶ 6, 7, 13. According to JP ’384, such
films exhibit “excellent anti-fogging performance” and can maintain “the
freshness of the mushrooms” for a long period of time. Id. ¶ 6.
FF2. JP ’384 teaches that the amount of fatty acid dialcohol amide and/or
aliphatic dialcohol amine in the surfactant portion of its film is “20–50 wt%.”
JP ’384 ¶¶ 7, 13. JP ’384 further teaches that the “blending ratio of the
polyolefin-based film and the surfactant is . . . 0.1-5 parts by weight relative
to the polyolefin film 100 parts by weight.” Id. ¶¶ 7, 19. According to JP
’384, if the amount of “the surfactant is less than 0.1 part by weight,
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sufficient anti-fogging properties are not exhibited” and that “if it exceeds 5
parts by weight . . . unfavorably the adhesiveness is lowered.” Id. ¶ 19.
FF3. JP ’384 identifies “stearyl diethanolamine” as a “specific example[] of
the aliphatic dialcohol amine[]” for use in its film. JP ’384 ¶ 10.
FF4. Sudo teaches an agricultural film comprising a thermoplastic resin
film containing an ethylene copolymer “with an anti-fogging agent coated on
the inside surface thereof or incorporated therein” that provides “excellent []
anti-fogging properties.” Sudo, Abstr. Sudo further teaches that the “anti-
fogging agents are coated on the inner surface of a film in a coating amount
of from 0.05 to 5 g/m2, and preferably from 0.1 to 2 g/m2.” Id. at 8:22–24.
FF5. Yoshioka describes “an anti-fogging agent for the surface of a
thermoplastic resin sheet” that “can be used for food vessel, food film, etc.”
Yoshioka, Abstr., 6:15–18. Yoshioka teaches the amount of the anti-fogging
agent “applied to the thermoplastic resin sheet must be from 0.01 to 2 g/m2,
preferably from 0.02 to 0.5 g/m2.” Id. at 3:45–48. Yoshioka explains that if
the amount on the surface sheet “falls below 0.01 g/m2, the resulting anti-
fogging properties are insufficient,” but if the amount over 2 g/m2 is used “it
disadvantageously renders the surface of the sheet sticky or causes blocking.”
Analysis
I. 103 Rejections premised on the combination of JP ’384 and Sudo
Examiner finds that JP ’384 teaches a freshness-retentive film for use
in packaging mushrooms that contains stearyldiethanolamine in “amounts
ranging from 0.02-2.5%, which overlaps with the instantly claimed range.”9

9 Examiner apparently calculates this range by multiplying the range
disclosed for the amount of the surfactant mixture in the film (i.e., 0.1-5%)
by the disclosed range for the amount of aliphatic dialcohol amine (i.e., 20-
50%) in that mixture. See Ans. 4–5; see also FF2. Appellant does not
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Final Act. 7. Examiner acknowledges that JP ’384 does not teach that the
stearyldiethanolamine is “present on at least one surface of the film at 0.002-
0.040 g/m2,” but relies on Sudo’s teaching that an anti-fogging agent may be
coated onto a thermoplastic film “in amounts ranging from 0.05-5 g/m2.” Id.
at 7–8. Examiner concludes that it would have been obvious to apply JP
’384’s mixture of surfactants, containing 20-50% stearyldiethanolamine, to
coat the surface of a film in amounts ranging from 0.05-5 g/m2 as taught in
Sudo and that this would result in an amount of stearyldiethanolamine on the
surface of “the film in amounts ranging from 0.01-2.5 g/m2 which overlaps
with the instantly claimed range.” Id. at 8. According to Examiner, one of
ordinary skill in the art would have been motivated to do so because “Sudo
teaches that this quantity of anti-fogging agents is suitable to create a film
having durable anti-fogging properties without affecting the transparency of
the film” and would have had “a reasonable expectation of success as both
JP'384 and Sudo teach polyethylene films comprising anti-fogging agents.”
Id.
After considering the record and the arguments in the Appeal Brief,
we adopt Examiner’s findings of fact and reasoning regarding the scope and
content of the prior art (Final Act. 2–4, 7–15; FF1–FF4) and agree that the
freshness-retentive film recited in claim 1 would have been obvious over JP
’384 and Sudo with or without the other cited art. We address Appellant’s
arguments below.
Appellant’s argument that “[n]one of the cited references teaches or
fairly suggests sufficient antimicrobial performance of the presently claimed
invention at a small amount of stearyldiethanolamine of 0.002 to 0.04 g/m2,

dispute this finding in its Appeal Brief.
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which is smaller than [the] 0.05 g/m2 described in Sudo” is not persuasive.
See Appeal Br. 4–5. Examiner’s rejection is premised on the combination of
Sudo’s coating range (i.e., 0.05-5 g/m2) with JP ’384’s anti-fogging agent,
i.e., a surfactant mixture containing 20–50% stearyldiethanolamine. See
Final Act. 8. The record supports Examiner’s finding that this combination
provides an anti-fogging coating on a surface of JP ’384’s packaging film
containing stearyldiethanolamine “in amount ranging 0.01-2.5 g/m2.” Id.;
FF2, FF4. The fact that the prior art range overlaps with the range recited in
claim 1 is sufficient to establish a prima case of obviousness. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving
overlapping ranges, we and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie case of
obviousness.”).
We are also unpersuaded by Appellant’s argument that the recited
range is critical. See Appeal Br. 4. In order to demonstrate criticality for a
recited range, the evidence offered by the patent applicant must be
“commensurate in scope with the degree of protection sought by the claims.”
In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Here, however,
Appellant concedes it is only “argu[ing] that the lower limit of 0.002 g/m2 is
critical, but not that the claimed range of 0.002–0.040 g/m2 is critical.”
Appeal Br. 4. Indeed, the data in Table 1 of the Specification shows that
Examples 1–3, all of which contain stearyldiethanolamine in amounts
exceeding the upper end of the recited range (i.e., 0.040 g/m2), show the
same or better antibacterial activity as the films (Examples 4–7) containing
amounts of stearyldiethanolamine within the recited range. Spec. ¶ 177
(Table 1). For this reason, when considered within the context of the record
as a whole, the data Appellant points to in the Specification does not
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overcome Examiner’s strong prima facie showing. See Peterson, 315 F.3d
at 1330–31 (affirming that the prima facie case was not overcome where
unexpected results had not been shown “for the entire claimed range”).
Appellant’s other attempts to distinguish JP ’384 and Sudo are
likewise unpersuasive. Appellant urges that “Sudo discloses imparting anti-
fogging property, not antibacterial effect.” Appeal Br. 4. But the fact that
the prior art teaches the use of stearyldiethanolamine for a different purpose
than Appellant’s Specification does not overcome the rejection. See In re
Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law does not require
that the references be combined for the reasons contemplated by the
inventor.”). Here, Examiner has articulated a sufficient reason, i.e., to
provide an anti-fogging effect, without affecting transparency, for
combining the references (see Final Act. 8) and that finding is supported by
the record (see FF1, FF4).
Appellant further contends that “the coating amount of the anti-
fogging agents . . . disclosed in Sudo is not the surface amount as defined in
claim 1.” Appeal Br. 4–5. Again, we disagree. The text of claim 1 does not
specify a particular surface, but instead requires only that
stearyldiethanolamine be present within the recited range on “at least one
surface” of the film. Appeal. Br., Claims App. 1. Moreover, Appellant’s
Specification describes spraying or applying a “coating” as “[e]xamples of
the method of distributing [stearyldiethanolamine] on the surface of the
freshness film.” Spec. ¶ 9. This description closely corresponds to Sudo’s
teaching regarding the application of anti-fogging agents. See Sudo 8:8:28–
34 (teaching “[s]uitable coating methods”). Accordingly, we agree with
Examiner that the combination of Sudo’s coating range with JP ’384’s
stearyldiethanolamine-containing surfactant mixture reads upon the surface
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amount recited in claim 1. See Ans. 23–24 (noting that Appellant is
“arguing limitations not recited in the instant claims”).10
For these reasons, we conclude that the rejections of claim 1 premised
upon the combination of JP ’384 and Sudo are supported by a preponderance
of the evidence of record. Appellant does not argue any of the other claims
separately from claim 1 for these rejections. Thus, we affirm the rejections
of Appellant’s other claims for the same reasons.
II. 103 Rejections premised on the combination of JP ’384 and
Yoshioka
Relying on the same findings regarding JP ’384 discussed above, the
Examiner additionally finds that Yoshioka “discloses a thermoplastic resin
sheet comprising an anti-fogging agent on the surface of the sheet” and
“teaches the amount of anti-fogging agent applied to the sheet must be from
0.01–2 g/m2, preferably from 0.02–.5 g/m2.” Final Act. 15–16. Examiner
concludes it would have been obvious,

10 In addition, we note that Appellant does not dispute Examiner’s finding
that Isaka teaches the application of an anti-fogging agent to the surface of a
film in contact with the package contents. See generally Appeal Br. 4–7
(failing to address Isaka). Specifically, Examiner finds Isaka teaches a
“multilayered film suitable for packaging fresh vegetables and fruits
comprising a base layer and at least one surface layer [in direct contact with
the vegetable and fruits] containing an anti-fogging agent” such as “nonionic
surfactants.” Final Act. 8–9. Examiner determines “[i]t would have been
obvious to use the anti-fogging agent . . . of JP’384 as the anti-fogging agent
in the film of Isaka” and to do so “in amounts ranging from 0.05–5 g/m2, as
Sudo teaches that this quantity of anti-fogging agents is suitable to create a
film having durable anti-fogging properties without affecting the
transparency of the film.” Id. at 11. Thus, even if we agreed with Appellant
that the combination of JP ’384 and Sudo did not provide for a “surface
amount as defined in claim 1” (see Appeal Br. 5), the combination of Isaka,
JP ’384 and Sudo does, and Appellant has waived any argument otherwise
by not addressing Isaka in its Appeal Brief. See 37 C.F.R. § 41.37(c)(1)(iv).
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to produce the film of JP’384 to have the anti-fogging agent
(0.1-5% of a mixture of surfactants wherein 20-50% is
stearyldiethanolamine) present on the film in amounts ranging
from 0.02-.5 g/m2, as Yoshioka teaches that this quantity of
anti-fogging agents is suitable for providing a thermoplastic
resin sheet with anti-fog properties.
Id. at 16. Examiner determines this combination would yield a surface
amount of stearyldiethanolamine “ranging from .004-.25 g/m2 which
overlaps with the instantly claimed ranges” and thereby establishes a prima
facie case of obviousness. Id.
After considering the record and the arguments in the Appeal Brief,
we adopt Examiner’s findings of fact and reasoning regarding the scope and
content of the prior art (Final Act. 4–5, 15–24; FF1–FF3, FF5) and agree
that the freshness-retentive film recited in claim 1 would have been obvious
over JP ’384 and Yoshioka with or without the other cited art. We address
Appellant’s arguments below.
Appellant argues that Examiner “fails to provide any factual finding
that the surface amount taught in Yoshioka,” which concerns a “special”
anti-fogging agent, “is applicable to the anti-fogging agent of JP ’384 which
is a conventional surfactant.” Appeal Br. 6. According to Appellant, “the
amount used [in Yoshioka] is specific to the special anti-fogging agent
described therein” and, therefore, a skilled artisan would not have had a
reasonable expectation “to achieve the same effects when applied to the anti-
fogging agent of JP ’384.” Id.
Appellant’s argument is not persuasive. It is prima facie obvious to
substitute one known element for another based on a finding that both are
known to perform the same function and that the results would have been
predictable. See MPEP 2143(I) (listing “Exemplary Rationales” for a prima
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facie case of obviousness). Here, Examiner has articulated sufficient
findings in this regard (see Final Act. 4–5, 16) and those findings are
supported by the record (FF2, FF5). The mere fact that Yoshioka teaches a
different anti-fogging agent than the stearyldiethanolamine-containing
surfactant mixture in JP ’384 does not suggest that a skilled artisan would
lack a reasonable expectation that the latter would provide an effective anti-
fogging effect when applied at the same surface amounts taught in
Yoshioka.
Finally, Appellant’s reference to stearyldiethanolamine having a
“higher melting point compared with other alkyl diethanolamines” and the
cases in Comparative Examples 2 and 3 of the Specification “in which
stearyldiethanolamine was replaced with myristyldiethanolamine or
lauryldiethanolamine” (Appeal Br. 7) is unpersuasive because Appellant has
not sufficiently articulated how these observations allegedly overcome
Examiner’s rejections. See 37 C.F.R. § 41.37(c)(1)(iv) (explaining that
argument “not included in the appeal brief will be refused consideration by
the Board”). We further note that JP ’384 specifically identifies
stearyldiethanolamine as one of a relatively small number of exemplary
aliphatic dialcohol amines all of which are suitable for use in its anti-fogging
surfactant mixtures. See JP ’384 ¶ 10 (listing 7 “specific examples” of
aliphatic dialcohol amines). That Appellant may have identified additional
properties of stearyldiethanolamine that for other reasons make it preferable
to some other aliphatic dialcohol amines does not make the selection of the
stearyldiethanolamine-containing, anti-fogging formulations taught in JP
’384 any less obvious. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (explaining that the fact that a prior art reference
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“discloses a multitude of effective combinations does not render any
particular formulation less obvious”).
For these reasons, we conclude that the rejections of claim 1 premised
upon the combination of JP ’384 and Yoshioka are supported by a
preponderance of the evidence of record. Appellant does not argue any of
the other claims separately from claim 1 for these rejections. Thus, we
affirm the rejections of Appellant’s other claims for the same reasons.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 13, 17 103 JP ’384, Sudo 1, 3, 13, 17
1, 3, 4, 6, 7,
13, 17
103 Isaka, JP ’384,
Sudo, Chatterjee
1, 3, 4, 6, 7,
13, 17

1, 3, 5, 13,
17
103 JP ’384, Sudo,
Irusta
1, 3, 5, 13,
17

1, 3, 8, 13,
17
103 JP ’384, Sudo,
Goldade
1, 3, 8, 13,
17

1, 3, 13, 17 103 JP ’384, Yoshioka 1, 3, 13, 17
1, 3, 4, 6, 7,
13, 17
103 JP ’384, Yoshioka,
Chatterjee
1, 3, 4, 6, 7,
13, 17

1, 3, 5, 13,
17
103 JP ’384, Yoshioka,
Irusta
1, 3, 5, 13,
17

1, 3, 8, 13,
17
103 JP ’384, Yoshioka,
Goldade
1, 3, 8, 13,
17

1, 3–7, 13,
17
103 Isaka, JP ’384,
Yoshioka,
Chatterjee, Irusta
1, 3–7, 13,
17

Overall
Outcome
1, 3–8, 13,
17

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED