Nils Toft et al.

Patent Trials and Appeals Board

Jul 30, 2019

12922598 - (D) (P.T.A.B. Jul. 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.
12/922,598 02/21/2011 Nils Toft 1027651-000612 1547
21839 7590 07/30/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
07/30/2019 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NILS TOFT,
BERTRAND JACCOUD, ANDRÉ CHIQUET, GIL ROCHAT,
PIERRE FAYET, ALAIN BONNÉBAULT, and WALKER CAMACHO
____________

Appeal 2018-003668
Application 12/922,598
Technology Center 1700
____________
Before JAMES C. HOUSEL, GEORGE C. BEST, and
SHELDON M. McGEE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1, 2, 4, and 6–68 of Application
12/922,598 under 35 U.S.C. § 103(a) as obvious. Non-Final Act. 3–13
(April 20, 2017). The Examiner also rejected claims 46 and 68 under 35
U.S.C. § 112, ¶ 2. Id. at 2. Appellants1 seek reversal of these rejections
pursuant to 35 U.S.C. § 134(a). At least one of the ’598 Application’s

1 Tetra Laval Holdings & Finance S.A. is identified as the real party in
interest. Appeal Br. 2.
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Application 12/922,598
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claims has been twice-rejected. We, therefore, have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we affirm.
BACKGROUND
The ’598 Application describes a laminated material used for
packaging liquid foods, methods for making the laminate, and packages
formed from the laminate. Spec. 1. The laminated material comprises a
paper or paperboard core. Id. An outermost liquid tight, heat sealable
polyolefin layer is disposed on one side of the core. Id. An innermost liquid
tight, heat sealable polyolefin layer is located on the other side of the core.
Id. An oxygen gas barrier layer is located between the core and the
innermost liquid tight, heat sealable polyolefin layer. Id. The oxygen gas
barrier layer is formed by liquid film coating and subsequent drying of a
composition consisting essentially of a polymer binder, inorganic particles,
and a dispersion stabilizer. Id.
Claim 1 is representative of the ’598 Application’s claims and is
reproduced below from the Claims Appendix:
1. Packaging laminate having gas barrier properties, for
packaging of a liquid food product, comprising
a core layer of paper or paperboard,
a first outermost liquid tight, heat sealable polyolefin layer,
a second innermost liquid tight, heat sealable polyolefin layer
and,
coated onto the inner side of the core layer of paper or
paperboard,
an oxygen gas barrier layer formed by liquid film coating of a
liquid gas barrier composition and subsequent drying,
Appeal 2018-003668
Application 12/922,598
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the liquid composition consisting essentially of
(1) a polymer binder dispersed or dissolved in an aqueous or
solvent medium, wherein the polymer binder is selected from
the group consisting of PVOH, water dispersible EVOH,
polysaccharides, chitosan or other cellulose derivatives, water
dispersible polyvinylidene chloride and combinations of two or
more thereof, wherein, if the binder is PVOH, ethylene acrylic
acid copolymer optionally is present at 1–20 weight% based on
dry coating weight,
(2) inorganic particles present at about 1 to about 40 weight %
based on dry coating weight, and
(3) a dispersion stabilizer present at not more than 1 weight%
based on dry coating weight,
a vapour deposited barrier layer coated onto a polymer substrate
film, which vapour deposition coated film
is arranged between said oxygen gas barrier layer and said
innermost heat sealable polyolefin layer or
the polymer substrate film for vapour deposition is also the
innermost heat sealable polymer layer, and
the vapour deposition coated film is bonded to the coated core
layer by an intermediate polymer layer that is an extruded
thermoplastic polymer.
Appeal Br. 17 (paragraphing and indentation added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 46 and 68 are rejected under 35 U.S.C. §112, ¶ 2, as
indefinite. Non-Final Act. 2.
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Application 12/922,598
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2. Claims 1, 2, 6, 7, 9, 11–13, 15–21, 24, 27–32, 37–39, 41–52, and
55–68 are rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Fish2 and Murai.3 Non-Final Act. 3.
3. Claims 4, 22, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Fish, Murai, and Chu.4 Non-
Final Act. 7.
4. Claims 8, 10, 33, and 40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Fish, Murai, and DE 44 45
193.5 Non-Final Act. 8.
5. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Fish, Murai, and Jaccoud.6 Non-Final Act. 10.
6. Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Fish, Murai, and Martinez.7
Non-Final Act. 10.
7. Claims 34–36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Fish, Murai, and Noma.8
Non-Final Act. 11.

2 US 8,088,478 B2, issued January 3, 2012.
3 US 5,770,301, issued June 23, 1998.
4 US 5,192,620, issued March 9, 1993.
5 DE 44 45 193, published July 6, 1995. We cite the translation entered into
the record of the ’598 Application on June 21, 2013.
6 US 2002/0028336 A1, published March 7, 2002.
7 US 6,608,157 B1, issued August 19, 2003.
8 US 2004/0198889 A1, published October 7, 2004.
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Application 12/922,598
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8. Claims 53 and 54 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Fish, Murai, and Bagrodia.9
Non-Final Act. 12.
DISCUSSION
Rejection 1. The Examiner rejected claims 46 and 68—which
depend from independent claim 1—as indefinite. Non-Final Act. 2. In
particular, the Examiner concluded that using the transitional phrase
“comprising” to define the gas barrier composition in these claims is
incompatible with the use of the transitional phrase “consisting essentially
of” in claim 1. Answer 15–16.
In claim 1, the transitional phrase “consisting essentially of” appears
before the list of ingredients in the liquid gas barrier composition which is
film coated onto the paper or paperboard core layer and then dried. The
liquid gas barrier composition, therefore, is open to the inclusion of other
components that do not materially affect the basic and novel properties of
the liquid gas barrier composition. See, e.g., In re Herz, 537 F.2d 549, 551–
52 (CCPA 1976).
In claims 46 and 68, the transitional phrase “comprising” is used as
part of a further definition of the composition of the oxygen gas barrier layer
created by drying the liquid gas barrier composition. The oxygen gas barrier
layer, therefore, may include any component in addition to the amount of
polymer binder specified in each of these claims. Nothing in either claim 46
or claim 68, however, allows any additional component of the oxygen gas
barrier layer to materially affect the basic and novel properties of the liquid

9 US 6,395,386 B2, issued May 28, 2002.
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gas barrier composition specified in claim 1. This is because claims 46 and
68 must, by statute, further limit the composition set forth in claim 1. See 35
U.S.C. § 112, ¶ 4.
We, therefore, reverse the rejection of claims 46 and 68 as indefinite.
Rejection 2. Appellants argue for reversal of this rejection with
respect to the claims as an undifferentiated group. Appeal Br. 8–14. We,
therefore, select claim 1 as representative of the claims subject to this ground
of rejection. Claims 2, 6, 7, 9, 11–13, 15–21, 24, 27–32, 37–39, 41–52, and
55–68 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
In rejecting claim 1, the Examiner found that Fish describes or
suggests each limitation of claim 1 except for a second barrier layer that is
vapor deposited on a polymer substrate film and an outermost layer that is
liquid tight. Non-Final Act. 3–4. The Examiner further found that Murai
describes a barrier film comprising a barrier layer that is vapor deposited on
a substrate. Id. at 4. The Examiner also found that Murai’s barrier film
serves as a barrier even when exposed to external mechanical forces. Id.
The Examiner also found that a person having ordinary skill in the art
at the time of the invention would have been motivated to use Murai’s
barrier film in Fish’s packaging laminate to obtain a laminate having barrier
properties even when exposed to mechanical forces. Id.
Appellants argue that the rejection of claim 1 should be reversed
because the Examiner has not established a prima facie case of obviousness.
Appeal Br. 9. In particular, Appellants argue that the Examiner has not
identified a sufficient reason to combine Fish and Murai. Id.
We are not persuaded by this argument. As discussed above, the
Examiner found that a person having ordinary skill in the art would have
combined Murai’s barrier layer with Fish’s packaging laminate because
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Application 12/922,598
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Murai’s barrier layer retains its barrier properties even when exposed to
external mechanical forces. Non-Final Act. 4 (citing Murai 12:58–63).
Contrary to Appellants’ argument, this is a sufficient reason to combine Fish
and Murai. The only thing that is required of the Examiner is the
identification of a reason why, in the absence of knowledge of Appellants’
disclosure, a person of ordinary skill in the art would have combined the
prior art in the manner specified in the rejection. In this case, the Examiner
has met this burden.
Appellants also argue that they have provided sufficient evidence of
unexpected results to overcome the prima facie case of obviousness. Appeal
Br. 9–14. In particular, Appellants argue that the combination of the oxygen
gas barrier layer formed by liquid film coating of the core layer of paper or
paperboard and the vapor deposition coated film achieves synergistic results
with respect to oxygen gas transmission rates. Id. According to Table 1 of
the Specification, the measured oxygen transmission rate in one embodiment
tested by Appellants was 13.5.10 Id. at 11 (citing Spec. 27). According to
Appellants’ counsel, a person of ordinary skill in the art would have
calculated the expected value of this transmission rate to be 23.2. Id. (citing
S.E. Solovyov & A.Y. Goldman, Permeability of multi-layer structures,
2004 e-Polymers no. 23 (April 27, 2004) (providing formula ostensibly used
by Appellants’ counsel)).
The Examiner determined that Appellants’ evidence of unexpected
results is not sufficiently persuasive to overcome the prima facie case of

10 Appellants’ brief does not report the units associated with this number.
We assume that the units are those used in the Specification: cc/m2/day/atm
at 23°C and 50% relative humidity. See, e.g., Spec. 25.
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obviousness. See Non-Final Act. 13–14; Answer 14–15. Specifically, the
Examiner determined that the equation used by Appellants’ counsel to
calculate the expected value of the transmission rate was based upon certain
assumptions. Non-Final Act. 13. According to the Examiner, “[t]he
presence of an assumption in the equation indicates that the equation is an
approximation, and that large differences between the approximated result
and the observed result, depending on the properties of the specific layers of
a packaging material [should be expected].” Id. The Examiner also
explained that
because it would have been obvious for one of ordinary skill in
the art to provide for the barrier layer of Murai et al[.] in Fish et
al[.], and the claimed structure would thereby be obtained, the
transmission rate would be expected to be the transmission rate
of the claimed invention, and therefore different from the
transmission rate approximated by the equation.
Id. at 13–14.
Neither of these reasons is sufficient to support the Examiner’s
determination that Appellants’ unexpected results are insufficient to
overcome the prima facie case of obviousness.
First, we note that every theoretical formula used by persons of skill
in the art to predict the properties of material is based upon certain
assumptions. Whether the formula may be properly applied in a particular
situation depends upon whether the assumptions underlying the formula are
justified in that situation. In this case, Appellants persuasively argue that the
conditions associated with the formula used by Appellants’ counsel do, in
fact, satisfy the assumptions associated with that formula. See Appeal
Br. 11–12; Reply Br. 2–3.
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Application 12/922,598
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Second, the Examiner’s reasoning that a prima facie obvious
invention would be expected to provide the results actually provided by the
prima facie obvious invention is incorrect. As Appellants correctly point
out, this reasoning is circular and leads to the conclusion that there never can
be unexpected results from a combination of known elements. See Appeal
Br. 12. Thus, this reasoning is contrary to law. See, e.g., In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992) (explaining that evidence of unexpected
results must be considered in making an obviousness determination).
Nevertheless, the Examiner correctly determined that Appellants have
not presented sufficient evidence of unexpected results to rebut the prima
facie case of obviousness. As the Examiner determined, Appellants have
presented data regarding the results obtained from only one embodiment
and, therefore, does not support the full scope of claim 1. Answer 14–15.
Appellants argue that they have presented sufficient data
notwithstanding the broad scope of claim 1. Appeal Br. 13–14 (citing In re
Saunders, 444 F.2d 599 (CCPA 1971); In re Clemens, 622 F.2d 1029, 1036
(CCPA 1980)).
We are not persuaded by Appellants’ arguments. Appellants are
correct that they need not present data showing that every possible variation
of the claimed invention yields unexpected results. Saunders, 444 F.2d at
605–06. The Federal Circuit’s predecessor court has held that “the
unobviousness of a broader claimed range was proven by a narrower range
of data, when one having ordinary skill in the art could ascertain a trend in
the exemplified data which would allow him to reasonably extend the
probative value thereof.” Clemens, 622 F.2d at 1036. A person of ordinary
skill in the art, however, cannot ascertain a trend or pattern when only a
single datum is provided. This is the case in the instant appeal. As
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Application 12/922,598
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Appellants concede, there are multiple possibilities for the polymer binder
used in the oxygen gas barrier layer. Appeal Br. 14. Appellants’ attempt to
point out the commonalities between these polymers is insufficient to
persuade us that a person of ordinary skill in the art could reasonably believe
that testing of a single species is sufficient to establish that all of the possible
polymers would exhibit the same synergy observed with PVOH.
Thus, we affirm the rejection of claim 1. Accordingly, we also affirm
the rejection of claims 2, 6, 7, 9, 11–13, 15–21, 24, 27–32, 37–39, 41–52,
and 55–68.
Rejections 3–8. Appellants argue for reversal of these rejections
“[f]or the same reasons discussed for claim 1.” Appeal Br. 14–15. As
discussed above, we have affirmed the rejection of claim 1. We, therefore,
also affirm these rejections.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 46
and 68 as indefinite. We, however, affirm the rejection of claims 1, 2, 4, and
6–68 as obvious.
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