Roberto Forloni

Patent Trials and Appeals Board

Jan 24, 2020

14119677 - (D) (P.T.A.B. Jan. 24, 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.
14/119,677 04/10/2014 Roberto Forloni D-44598-01 1026
28236 7590 01/24/2020
Sealed Air Corporation
Patent Department
2415 Cascade Pointe Boulevard
Charlotte, NC 28208
EXAMINER
YAGER, JAMES C
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
01/24/2020 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):
patents@sealedair.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERTO FORLONI
____________

Appeal 2019-002080
Application 14/119,677
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–19.2 We have jurisdiction
over this appeal 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. Appellant identifies Cryovac, Inc. as the real party in interest.
Appeal Brief filed October 12, 2018 (“Appeal Br.”) at 2.
2 Final Office Action entered November 6, 2017 (“Final Act.”) at 1.
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Application 14/119,677

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CLAIMED SUBJECT MATTER
Claim 1 illustrates the subject matter on appeal, and is reproduced
below with emphasis added to highlight contested subject matter:
1. A coextruded, biaxially oriented multilayer film
comprising
a base layer comprising a polyester having an intrinsic
viscosity measured according to ASTM method D4603-03
greater than 0.75 dl/g and a heat-sealable layer directly adhered
to said base layer, said heat-sealable layer comprising
- from about 25% to 70% by weight of an amorphous
polyester having a melting temperature not higher than the
melting temperature of the polyester of the base layer, wherein
said amorphous polyester is derived from an aliphatic diol and a
cycloaliphatic diol with one or more dicarboxylic acids,
- from 10% to 20% by weight of a thermoplastic resin,
wherein the thermoplastic resin comprises at least one member
selected from the group consisting of polyamide, polystyrene,
ionomer resin, ethylene/unsaturated carboxylic acid copolymer,
ethylene/unsaturated ester copolymer, ethylene/propylene
copolymer, and ethylene/cyclic olefin copolymer; and
- from 20% to 60% by weight of a further polyester,
which is different from the first amorphous polyester, wherein
the further polyester resin comprises at least one further
polyester resin selected from those derived from one or more
aliphatic diols and an aromatic dicarboylic acid and it is
characterized by a melting point higher than 240°C.

Appeal Br. 7 (Claims Appendix) (emphasis added).
REJECTION
The Examiner maintains the rejection of claims 1–19 under 35 U.S.C.
§ 103(a) as unpatentable over Forloni (WO 2007/093495 Al, published
August 23, 2007) in view of Shih (US 5,859,116, issued January 12, 1999)
in the Examiner’s Answer entered November 14, 2018 (“Ans.”).
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Application 14/119,677

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FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s timely contentions,3 we affirm the Examiner’s rejection
of claims 1–19 under 35 U.S.C. § 103(a) for the reasons set forth in the Final
Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Appellant presents arguments directed to the subject matter of claim 1
only, to which we accordingly limit our discussion. Appeal Br. 3–5; 37
C.F.R. § 41.37(c)(1)(iv).
Appellant does not dispute the Examiner’s finding that Forloni
discloses a coextruded, biaxially oriented multilayer film comprising a base
layer having the features recited in claim 1, and a heat-sealable layer directly
adhered to the base layer. Compare Final Act. 3 (citing Forloni Abstr.; ¶¶ 1,
35), with Appeal Br. 3–5. Nor does Appellant dispute the Examiner’s

3 We do not consider the new arguments Appellant raises in the Reply Brief
(Reply Br. 2–3), because Appellant does not show that the arguments could
not have been raised in the Appeal Brief, and Appellant does not show good
cause for raising the arguments for the first time in the Reply Brief. 37
C.F.R. § 41.37(c)(1)(iv); 37 C.F.R. § 41.41(b)(2) (arguments raised for the
first time in the Reply Brief that could have been raised in the Appeal Brief
will not be considered by the Board unless good cause is shown).
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finding that Forloni discloses that the heat-sealable layer comprises an
amorphous polyester and a thermoplastic resin, both of which have the
features recited in claim 1. Compare Final Act. 3–4 (citing Forloni ¶¶ 20,
24–26, 32), with Appeal Br. 3–5. The Examiner finds that Forloni does not
disclose, however, that the heat-sealable layer includes a further polyester,
which is different from the amorphous polyester, is derived from one or
more aliphatic diols and an aromatic dicarboylic acid, and has a melting
point higher than 240ºC. Final Act. 4. The Examiner relies on Shih for
suggesting inclusion of such a further polyester in the heat-sealable layer of
Forloni’s multilayer film. Final Act. 4 (citing Shih Abstr.; col. 2, ll. 14–57;
col. 4, ll. 45–50).
Shih discloses a heat-shrinkable film comprising a polyester blend
that includes “an improved clarity” diethylene glycol (DEG)-modified
polyethylene terephthalate (PET) (DEG-modified PET) copolyester, which
Shih discloses eliminates haze in the heat-shrinkable film. Shih col. 2, ll.
14–24, 49–52. Shih discloses that the DEG-modified PET copolyester
comprises a dicarboxylic acid residue component and a diol residue
component. Shih col. 4, ll. 17–20. Shih discloses that the dicarboxylic acid
residue component comprises terephthalic acid residues, and the diol residue
component comprises diethylene glycol residues, ethylene glycol residues,
and may include cyclochexanedimethanol. Shih col. 4, ll. 22–24, 33–36,
40–42.
The Examiner finds that Shih thus discloses “a DEG modified PET
copolyester derived from ethylene glycol, cyclohexanedimethanol and
terephthalic acid” (Final Act. 4), which Appellant’s Specification indicates is
a preferred “further polyester . . . deriv[ed] from one or more aliphatic diols
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and an aromatic dicarboylic acid” as recited in claim 1. Spec. ¶ 28.
(“Suitable further polyesters are those deriving from one or more aliphatic
diols, preferably ethylene glycol and/or cyclohexandimethanols [sic], and an
aromatic dicarboxylic acid, preferably terephthalic acid.”).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellant’s invention “to add the DEG
modified PET copolyester of Shih to the film of Forlani [sic] in order to
provide a film having improved clarity.” Final Act. 4. The Examiner finds
that because “the DEG modified PET copolyester of Shih is identical to the
instantly claimed further polyester (derived from ethylene glycol,
cyclohexanedimethanol and terephthalic acid) . . . it will intrinsically have a
melting point higher than 240°C.” Final Act. 4. The Examiner alternatively
determines that in view of Forloni’s disclosure that the heat-sealable layer of
Forloni’s multilayer film is sealed at temperatures up to 200°C, it “would
have been obvious to one of ordinary skill in the art to use a polyester having
a melting temperature significantly higher than the sealing temperature such
as 240°C so that the heat seal layer would not completely melt and run off
during sealing and therefore would provide a good seal.” Final Act. 4–5
(citing Forloni ¶ 65).
Appellant argues that the Examiner does not meet the burden of
showing that “the DEG modified PET of Shih inherently has a melting point
of higher than 240ºC” because “Shih does not teach any melting point for
any type of DEG modified PET, nor what the effect of the relative amount of
DEG co-monomer has for melting point.” Appeal Br. 4–5. Appellant
argues that “the DEG modified PET of Shih is not primarily derived from
CHDM [cyclohexanedimethanol] monomer.” Appeal Br. 4.
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Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
Claim 1 recites that the “further polyester resin” is “derived from one
or more aliphatic diols and an aromatic dicarboylic acid.” Claim 1 does not
require the further polyester resin to be primarily derived from
cyclohexanedimethanol [CHDM] monomer. Nor does claim 1 require the
further polyester resin to include any particular amount of aliphatic diol
monomer.
Shih discloses a copolyester (diethylene glycol-modified polyethylene
terephthalate) derived from the same monomeric components as the “further
polyester resin” recited in claim 1—ethylene glycol (aliphatic diol),
cyclohexanedimethanol (aliphatic diol), and terephthalic acid (aromatic
dicarboxylic acid). Shih col. 4, ll. 22–24, 33–36, 40–42. And as discussed
above, Appellant’s Specification indicates that a preferred “further polyester
resin” derived from one or more aliphatic diols and an aromatic dicarboxylic
acid recited in claim 1 is derived from the same monomeric components as
Shih’s copolyester: ethylene glycol and/or cyclohexandimethanols, and
terephthalic acid. Spec. ¶ 28.
Thus, a preponderance of the evidence supports a finding that Shih
discloses a copolyester that is the same as, or substantially similar to, the
“further polyester resin” recited in claim 1. The Examiner, therefore, has a
reasonable basis for finding that the diethylene glycol-modified polyethylene
terephthalate polyester disclosed in Shih would have a melting point higher
than 240°C as recited in claim 1. In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (citation and footnote omitted) (“Where . . . the claimed and prior art
products are identical or substantially identical, or are produced by identical
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or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. Whether the rejection is based on
‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35
U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.”).
The burden, therefore, shifts to Appellant to show that a diethylene
glycol-modified polyethylene terephthalate polyester as disclosed in Shih
would not have a melting point higher than 240°C. Best, 562 F.2d at 1255.
On the record before us, Appellant does not meet this burden because
Appellant does not argue, much less direct us to evidence to demonstrate,
that a diethylene glycol-modified polyethylene terephthalate polyester as
disclosed in Shih would not have a melting point higher than 240°C. Appeal
Br. 3–5.
Appellant argues that “[i]t is well known and economically logical
that one of skill desires the heat sealing process be conducted as quickly as
possible at a lower temperature.” Appeal Br. 5. Appellant argues that if one
of ordinary skill in the art “[e]ncounter[ed] a problem with the heat seal
layer ‘completely melting and running off during sealing,”’ as the Examiner
proposes, the ordinarily skilled artisan “would more likely solve the problem
by reducing the sealing pressure, reducing the sealing frame temperature, or
reducing the dwell time (i.e., speed up the process), rather than adding a
higher melting point polyester [as disclosed in Shih] that would likely cause
the need for increased dwell time, increased sealing pressure, and increased
sealing temperature.” Id. Appellant argues that “[t]here is no evidence that
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the addition of a higher melting point polyester is beneficial for creating a
good seal, much less that the selection of an additional polyester having a
melting point higher than 240°C would be beneficial when the sealing frame
temperature is from 140°C to 200°C as in Forloni.” Id.
Appellant’s arguments again do not identify reversible error in the
Examiner’s rejection, for the following reasons. We point out initially that
Appellant does not direct us to evidence to support the assertion that “[i]t is
well known and economically logical that one of skill desires the heat
sealing process be conducted as quickly as possible at a lower temperature.”
Id. Appellant’s unsupported assertion is thus mere attorney argument, which
does not constitute the requisite evidence necessary to establish that one of
ordinary skill in the art would have desired to conduct heat sealing as
quickly as possible at “a lower temperature.” In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common
experience is just attorney argument and not the kind of factual evidence that
is required to rebut a prima facie case of obviousness.”); In re Schulze, 346
F.2d 600, 602 (CCPA 1965) (“Argument in the brief does not take the place
of evidence in the record.”).
Nor does Appellant direct us to evidence to support the assertion that
if one of ordinary skill in the art encountered a problem with the heat seal
layer completely melting and running off during sealing, the ordinarily
skilled artisan would more likely solve the problem by reducing the sealing
pressure, sealing temperature, or dwell time, rather than by adding a higher
melting point polyester as disclosed in Shih. These unsupported assertions
do not constitute the requisite evidence necessary to establish how one of
ordinary skill in the art would have addressed the problem of a heat seal
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layer completely melting and running off during sealing.
In view of Forloni’s disclosure that the heat-sealable layer of Forloni’s
multilayer film is sealed at temperatures of to 140°C to 200°C, one of
ordinary skill in the art reasonably would have used a polyester in the heat-
sealable layer having a melting temperature higher than the sealing
temperature, such as 240°C as recited in claim 1, so that the heat seal layer
would not melt during sealing. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
420–21 (2007) (explaining that the skilled artisan is “a person of ordinary
creativity, not an automaton.”). One of ordinary skill in the art likely would
have recognized that preventing the heat seal layer from melting during
sealing could be achieved in numerous ways, such as using a polyester in the
heat-sealable layer having a melting temperature significantly higher than
the sealing temperature, or by reducing the sealing pressure, sealing
temperature, and/or dwell time, as Appellant argues. Any such approach,
consequently, would have been obvious to one of ordinary skill in the art at
the time of Appellant’s invention, and recognition of one such approach
would not have negated recognition of other approaches.
Although Appellant argues that “[t]here is no evidence that the
addition of a higher melting point polyester is beneficial for creating a good
seal, much less that the selection of an additional polyester having a melting
point higher than 240°C would be beneficial when the sealing frame
temperature is from 140°C to 200°C as in Forloni” (Appeal Br. 5), we note
that claim 6 of Forloni, when read in combination with claims 1 and 11,
explicitly recites a coextruded, biaxially oriented multilayer film comprising
a base layer comprising a polyester having intrinsic viscosity greater than
0.75, and an outer heat-scalable layer directly adhered to the base layer
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comprising (1) an amorphous polyester having a melting temperature not
higher than the melting temperature of the polyester of the base layer, (2) a
second material selected from polyamides, ethylene/unsaturated carboxylic
acid copolymers, ionomers, polystyrenes, ethylene/cyclic olefin copolymers,
and ethylene/propylene copolymers, and (3) a copolyester of terephthalic
acid with ethylene glycol and 1, 4-cyclohexanedimethanol.
This explicit disclosure in Forloni of including a copolyester of
terephthalic acid with ethylene glycol and 1, 4-cyclohexanedimethanol in
Forloni’s heat sealable layer constitutes further evidence supporting the
Examiner’s conclusion of the obviousness of including a polyester resin
derived from one or more aliphatic diols and an aromatic dicarboxylic acid
in the heat-sealable layer of the coextruded, biaxially oriented multilayer
film of claim 1.
We, accordingly, sustain the Examiner’s rejection 1–19 under
35 U.S.C. § 103(a) as unpatentable over Forloni in view of Shih.

CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19 103(a) Forloni, Shih 1–19

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