Tekni-Plex, Inc.

Patent Trials and Appeals Board

May 26, 2021

2020006621 (P.T.A.B. May. 26, 2021)

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.
15/091,607 04/06/2016 Philip D. Bourgeois T012-7101US0 8921
21127 7590 05/26/2021
POLSINELLI PC
One International Place
Suite 3900
Boston, MA 02110
EXAMINER
MANGOHIG, THOMAS A
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
05/26/2021 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):
mswannichols@polsinelli.com
patentdocketing@polsinelli.com
thendricks@polsinelli.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIP D. BOURGEOIS

Appeal 2020-006621
Application 15/091,607
Technology Center 1700
____________

Before DONNA M. PRAISS, N. WHITNEY WILSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–6 and 8–13. A telephonic hearing
was held on May 17, 2021.3 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In this Decision, we refer to the Specification filed Apr. 6, 2016 (“Spec.”),
the Final Office Action dated Aug. 8, 2019 (“Final Act.”), the Appeal Brief
filed Jan. 7, 2020 (“Appeal Br.”), the Examiner’s Answer dated July 23,
2020 (“Ans.”), and the Reply Brief filed Sept. 22, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Tekni-Plex, Inc. as the real party in
interest. Appeal Br. 2.
3 A transcript of the hearing will be filed in the record in due course.
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STATEMENT OF THE CASE
The subject matter on appeal relates to an induction heat-sealable liner
for sealing to a rim of a container and to a method of its fabrication.
Spec. 1:4–5. An exploded cross-sectional view of Appellant’s liner is shown
in Figure 2 below. Spec. 6:30.

Figure 2 above depicts three spaced apart, stacked components 52, 70, 56
that are referred to as upper multilayer component 52, lower multilayer
component 56, and collapsed tube 70. Spec. 11:29–12:12.
Claim 1 is illustrative and reproduced from the Claims Appendix to
the Appeal Brief (disputed limitation italicized).
1. A liner comprising:
three stacked multilayer components thermally laminated
together to form a composite liner, the liner having an induction
heat sealable lower layer for sealing to a rim of a container and
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a pull tab for ease of removal of the liner from the rim of the
container, the three multilayer components comprising:
an upper multilayer component (UMC) comprising an
upper support layer and a lower heat bondable polyolefin layer;
and
a lower multilayer component (LMC) comprising an
upper heat bondable polyolefin layer, the lower induction heat
sealable layer, and an inductive heating layer therebetween;
a folded insert comprising upper and lower multilayer
insert portions joined at a fold line, each insert portion
comprising an outer heat bondable polyolefin layer and an inner
heat resistant separable layer wherein in a folded position the
inner separable layers of the insert portions are facing one
another and resist bonding by thermal lamination and induction
heating to form the pull tab in the liner,
the liner being formed by a method comprising:
in a first area of the liner the UMC and LMC polyolefin
layers are disposed facing one another and are thermally
laminated by application of heat and pressure to form an
integral polyolefin layer of a non-separable first liner portion;
and
in a second area of the liner the polyolefin layers of the
upper and lower insert portions are disposed facing the UMC
and LMC polyolefin layers respectively and thermally
laminated, by application of heat and pressure, to form integral
polyolefin layers in a second liner portion having the pull tab
wherein the polyolefin layers of the liner are thermally
laminated by at least partially melting the adjacent polyolefin
layers to form the respective integral polyolefin layers in the
first and second areas.
Appeal Br. 11 (Claims Appendix).
ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
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thereon. 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)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
argued claims and Appellant’s arguments, we are persuaded of reversible
error in the appealed rejections.
The Examiner rejects claims 1–6 and 8–13 as follows for the reasons
provided in the Final Office Action.4 Final Act. 6–15.
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–6, 8, 10–13 102(a)(2) Cassidy5
1–6, 8, 10–13 103 Cassidy
9 103 Cassidy, Miura6
We need only address claim 1, which is the sole independent claim in
this Appeal.
Anticipation of Claim 1
The Examiner finds Cassidy discloses a tabbed seal comprising three
stacked multilayer components 106, 112, and 100 shown in Cassidy’s Figure
2 below. Final Act. 3–4.

4 All rejections of claim 5 were withdrawn by the Examiner following
Appellant’s cancellation of claim 5. Ans. 12.
5 Cassidy et al., US 2018/0079576 A1, published Mar. 22, 2018.
6 Miura et al., US 2009/0117354 A1, published May 7, 2009.
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Figure 2 above is a cross-sectional view of a tabbed sealing member
including a release layer formed from a folded, wrapped, or cylindrical
release film, paper, or foam layer. Cassidy ¶ 8. The Examiner finds upper
laminate 106 includes polymer support layer 108 and bonding layer 110 that
is heat activated and comprises polyolefins. Final Act. 4 (citing Cassidy
¶¶ 40, 85). Regarding lower laminate 112 composed of foil layer 114 and
lower heat seal layer 118, the Examiner finds that although it does not
disclose an upper heat bondable polyolefin layer as required by claim 1,
“Cassidy’s product is substantially identical to that of the claims” because
the bonding of the lower and upper heat bondable layers “necessarily forms
a continuous and integral polyolefin layer that also envelops the folded
release portion [100].” Id.
The Examiner alternatively finds Cassidy’s embodiment wherein
lower laminate comprises a polymer insulation layer 109 comprising
polyethylene foam is construed to meet the requisite upper heat bondable
polyolefin layer. Id. at 5 (citing Cassidy ¶ 79, Fig. 10). Regarding the portion
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of the claim that begins “the liner being formed by a method comprising,”
the Examiner finds it contains product-by-process limitations. Id.
Appellant contends the Examiner erred in rejecting claim 1 over
Cassidy because Cassidy’s foil layer 114 is a metal and not polyolefin as
required by claim 1. Appeal Br. 4. Appellant also contends Cassidy’s
polyolefin foam heat insulation layer 109 bonds to metal foil layer 114
rather than to another polyolefin layer and expressly teaches not melting the
foam. Id. at 8. Appellant also challenges the Examiner’s position that
Cassidy’s product is substantially identical to that of the claims as an
incorrect legal standard for anticipation or obviousness. Id.
Appellant’s arguments persuade us that the Examiner reversibly erred
in rejecting the claims as anticipated by Cassidy. “[T]he examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[A]nticipation of a claim under § 102 can be
found only if the prior art reference discloses every element of the claim.”
In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann
Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457
(Fed. Cir. 1984)). “[A]bsence from the reference of any claimed element
negates anticipation.” Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565,
1571 (Fed. Cir 1986). Anticipation, therefore, is not a “substantially
identical” analysis as the Examiner applies here to overcome the missing
element of an upper heat bondable polyolefin layer in the lower multilayer
component.
In the Answer, the Examiner finds the claimed structure is an
intermediate structure prior to thermal lamination that is different from
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Cassidy’s structure. Ans. 16. The Examiner further finds that “when
assembled together” heat bondable layer 110 and outer layer 132 “would
necessarily be identical to the combined structures” of Appellant’s layers
because the product of both Cassidy and the claims is “a single integral layer
of polyolefin with an enveloped insert.” Id. The Examiner’s findings
regarding structural changes due to thermal lamination are not supported by
the preponderance of the evidence cited in this appeal record. The claims
recite “a composite liner” and “heat bondable polyolefin” layers “wherein
the polyolefin layers of the liner are thermally laminated by at least partially
melting the adjacent polyolefin layers” which do not suggest the required
multilayer components cease to exist. Nor does Cassidy suggest that its
multilayer structure is melted to a degree such that the multilayer
components in the structure cease to exist. As Appellant points out (Appeal
Br. 8; Reply Br. 2–3), neither Cassidy’s foil layer nor Cassidy’s insulation
layer are disclosed to be heat bondable polyolefin layers as required by the
claim. Instead, Cassidy’s insulation layer functions as an insulation layer and
Cassidy discloses that the insulation layer must be of sufficient thickness so
as not to melt during an induction sealing process. Cassidy ¶ 79. The
Examiner’s finding that “heat bondable” is an intended use limitation rather
than a required property of the claimed polyolefin layer is not supported by
the record. Ans. 18.
Accordingly, we reverse the Examiner’s rejection of claim 1 for the
reasons given above. We also reverse the Examiner’s anticipation rejection
of claims 2–6, 8, and 10–13 based on their dependency from claim 1.
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Obviousness of Claim 1
Appellant contends the Examiner erred in rejecting claim 1 as obvious
over Cassidy because Cassidy fails to disclose the structures identified above
in connection with the anticipation rejection of claim 1 and the Examiner’s
conclusion that the claimed structure is “substantially identical” to Cassidy’s
structure constitutes improper hindsight reconstruction based on Appellant’s
disclosure. Appeal Br. 8–9. Appellant asserts that the rejection ignores the
specific structural and composition limitations of the claimed liner product.
Id. at 9.
We find Appellant’s arguments persuasive of error for the reasons
discussed above in connection with the anticipation rejection of claim 1. As
discussed above, Cassidy’s multi-layer structure contains a foil layer and an
insulation layer that structurally and functionally differ from the heat
bondable polyolefin layers required by claim 1. During examination, the
Examiner bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). To
establish prima facie obviousness of a claimed invention, all the claim
limitations must be taught or suggested by the prior art. See In re Royka, 490
F.2d 981, 985 (CCPA 1974). “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner acknowledges that Cassidy’s structure differs from the
claimed structure and determines that the differences in the multilayer
structures cease to exist in the final liner product in a conclusory manner.
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Final Act. 4; Ans. 16, 20. The Examiner’s conclusion is not supported by the
preponderance of the evidence cited in this Appeal record. In addition, the
Examiner’s interpretation of claim 1 reads out limitations based on the
Examiner’s determination that “heat bondable” is an intended use rather than
a required property of the claimed polyolefin layers. Ans. 18.
For these reasons, we reverse the Examiner’s rejection of claim 1
under 35 U.S.C. § 103. We also reverse the Examiner’s rejection of claims
2–6, 8, and 10–13 under 35 U.S.C. § 103 based on their dependency from
claim 1.

Obviousness of Claim 9
Claim 9 indirectly depends from claim 1 and specifically recites
“ethylene-alpha olefin copolymer” and “propylene-alpha olefin copolymer”
as claim 1’s polyolefin layers. Appeal Br. 12 (Claims Appendix). Appellant
contends the Examiner erred in rejecting claim 9 as obvious over the
combination of Cassidy and Miura because Miura does not cure the
deficiencies of Cassidy identified in connection with the rejections of claim
1. Id. at 8. Because the Examiner relies upon Miura for disclosing the
specific polyolefin copolymers required by claim 9 and not the laminate
structure required by claim 1, Miura fails to cure the deficiencies discussed
above in connection with claim 1. Accordingly, we reverse the Examiner’s
rejection of claim 9 under 35 U.S.C. § 103 for the same reasons.
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CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8, 10–13 102(a)(2) Cassidy 1–6, 8, 10–13
1–6, 8, 10–13 103 Cassidy 1–6, 8, 10–13
9 103 Cassidy, Miura 9
Overall
Outcome
1–6, 8–13

REVERSED