The Procter & Gamble Company

Patent Trials and Appeals Board

Sep 22, 2020

2019006524 (P.T.A.B. Sep. 22, 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.
15/661,033 07/27/2017 Norman Scott Broyles 13349MD 1127
27752 7590 09/22/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/22/2020 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):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NORMAN SCOTT BROYLES,
APRIL RENAE BROWN, ARMAN ASHRAF,
GARY WAYNE GILBERTSON,
and JEFFREY THOMAS GROTHAUS

Appeal 2019-006524
Application 15/661,033
Technology Center 1700
____________

Before JEFFREY T. SMITH, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–3, 7–13, 15, and 16. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as The Procter &
Gamble Company. Appeal Brief dated Jan. 29, 2019 (“Appeal Br.”) 1.
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CLAIMED SUBJECT MATTER
The present application generally relates to “thermoplastic polymer
films having a soft tactile impression.” Specification filed July 27, 2017
(“Spec.”) 1. The Specification teaches that certain products include films
that are touched by a user in the normal course of use. Id. In such products,
the perceived softness of the film is an important attribute for the user. Id.
The Specification teaches that such products may include diapers, feminine
hygiene products, bandages, as well as packaging products. Id. The
Specification further teaches that the noise a film makes when deformed
influences the consumer perception of softness. Id.
The Specification teaches that it is desirable to provide a soft touch
film incorporating a renewable material, having good tensile properties,
which can be made using a blown film process, and which has a micro-
textured surface. Id. at 2.
The Specification teaches a film layer that has a continuous phase and
a discrete phase. Id. The continuous phase includes one or more
thermoplastic polymers. Id. The discrete phase is formed of a thermoplastic
starch (TPS). Id.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A film layer having a micro-textured surface, the film layer
comprising a film layer composition comprising:
(a) a continuous phase comprising:
(i) 20% to 35%, by weight of the film layer composition,
of a low-modulus polymer having a 2% secant modulus
of less than or equal to 140 MPa and
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(ii) 30% to 50%, by weight of the film layer composition,
of a high-modulus polymer having a 2% secant modulus
of greater than 140MPa; and
(b) a discrete phase comprising 5% to 45%, by weight of the
film layer composition, of a thermoplastic starch.
Appeal Br. 8 (Claims App.).
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Chen et al.
(“Chen”)
US 2012/0315416 A1 Dec. 13, 2012
Wang (et al.) (“Wang”) US 2013/0046262 A1 Feb. 21, 2013
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1–3, 9, 10, 13, 15, and 16 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Wang. Final Action dated
Aug. 28, 2018 (“Final Act.”) 2–5.
2. Claims 7, 8, 11, and 12 are rejected under 35 U.S.C. § 103 as
being unpatentable over Wang in view of Chen. Id. at 5–7.
DISCUSSION
Rejection 1. The Examiner rejects claims 1–3, 9, 10, 13, 15, and 16
as obvious over Wang. Id. at 2–5. In support of the rejection, the Examiner
finds that Wang teaches a flexible polymeric film comprising a polyolefin or
mixtures of polyolefins. Id. at 2. The Examiner finds that Wang teaches a
film having “from about 55% to about 95% of a polyolefin or mixtures of
polyolefins.” Id. at 3. The Examiner further finds that Wang teaches that
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“the polyolefins that may be incorporated include very low density
polyethylene (VLDPE) (i.e., low modulus thermoplastic polymer), linear
low density polyethylene (LLDPE), and low density polyethylene (LDPE)
(high modulus thermoplastic polymers).” Id. As a result, the Examiner
determines that “the possible combination of ranges of the low modulus
thermoplastic polymer and the high modulus thermoplastic polymers would
overlap that of the instant claims” and the claims are prima facie obvious.
Id.
The Examiner further determines that one of ordinary skill in the art
would have known that “by adjusting the blend or mixtures of the
thermoplastic polymers and TPS as taught by Wang (para 57, 75) that
ultimately the physical properties . . . of the final film formed from the
mixture or blend thermoplastic polymers could be optimized.” Id.
Appellant contends that the rejection should be reversed. Appeal Br.
2–7. Appellant argues that Wang teaches a broad genus of polyolefins and
is silent regarding the species recited in independent Claim 1. Id. at 3.
Appellant argues that Wang draws no distinction between the species of
“low modulus polymers” and “high modulus polymers” contained within the
genus polyolefin and lacks any guidance that would lead one to select
species as claimed. Id. at 4. Appellant asserts that Wang’s disclosure
encompasses both the inventive examples and the comparative examples of
the Specification. Id.
Appellant additionally argues that Wang fails to teach any distinction
between “high modulus thermoplastic polymers” and “low modulus
thermoplastic polymers” and, therefore, does not teach that such
characteristic is a result-effective variable. Id. at 5–6.
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In the Answer, the Examiner responds that “Wang specifically
suggests the species of the instant claims, i.e., very low density polyethylene
(VLDPE) (i.e., low modulus thermoplastic polymer) and low density
polyethylene (LDPE) (high modulus thermoplastic polymers).” Examiner’s
Answer dated May 16, 2019 (“Ans.”) at 9 (emphasis omitted). The
Examiner further finds that Wang teaches “that by adjusting the blend or
mixtures of the thermoplastic polymers and TPS that ultimately the physical
properties (e.g., ultimate strength in the MD [machine direction] and 2%
secant modulus in the MD direction) of the final film formed from the
mixture or blend thermoplastic polymers could be optimized.” Id. at 10
(citing Wang ¶¶ 57, 75). The Examiner further finds that Wang teaches that
the films should remain soft while having increased modulus. Id.
In regard to Appellant’s argument that Wang does not recognize the
low and high modulus properties of polyolefins as result-effective, the
Examiner finds that differences in concentration will not support
patentability over the prior art unless the concentration is critical; that Wang
specifically teaches a low modulus polymer and a high modulus polymer as
polyolefins that may be incorporated; and that Wang suggests that by
adjusting the blend or mixtures of the thermoplastic polymers and TPS that
ultimately the physical properties of the final film may be optimized. Id. at
11–12.
The Examiner relies upon Wang’s teachings regarding mixtures of
polyolefins disclosing a range that overlaps the “low-modulus polymer” and
“high-modulus polymer” limitations of claim 1. Final Act. 3. The rejection
is further predicated on optimization of the physical properties to achieve the
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recited composition. Id. at 3–4. In this regard, Federal Circuit precedent
offers guidance as follows:
The normal desire of scientists or artisans to improve upon what
is already generally known provides the motivation to determine
where in a disclosed set of percentage ranges is the optimum
combination of percentages. See In re Boesch, 617 F.2d 272,
276, 205 USPQ 215, 219 (CCPA 1980) (“[D]iscovery of an
optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.” (citations
omitted)).
In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (emphasis added).
Thus, Peterson teaches that its reasoning is predicated upon the discovery of
an optimum value of a result-effective variable. This is consistent with both
preceding and subsequent caselaw. See, e.g., In re Applied Materials, 692
F.3d 1289, 1295 (Fed. Cir. 2012) (“This rule is limited to cases in which the
optimized variable is a ‘result-effective variable.’”).
We accept the Examiner’s finding that Wang’s teaching of a mixture
of polyolefins and its specific enumeration of very low density polyethylene
(a low modulus thermoplastic polymer) and low density polyethylene (a
high modulus thermoplastic polymer) overlaps the “low-modulus polymer”
and “high-modulus polymer” limitations of claim 1. The Examiner’s finding
that Wang teaches the modulus properties of the polyolefins to be result-
effective, however, is less well-founded.
A result-effective variable is one which is known to affect “the
relevant property or result.” E.I. DuPont de Nemours & Co. v. Synvina C.V.,
904 F.3d 996, 1009 (Fed. Cir. 2018). In finding the modulus properties of
the polyolefins to be result-effective, the Examiner finds that Wang
“suggests that by adjusting the blend or mixtures of the thermoplastic
polymers and TPS that ultimately the physical properties (e.g., ultimate
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strength in the MD direction and 2% secant modulus in the MD direction) of
the final film formed from the mixture or blend thermoplastic polymers
could be optimized.” Ans. 12. The Examiner, however, is unable to cite to
any portion of Wang that teaches that the modulus properties of the
components of the polyolefin mixture are known to affect any particular
result. Accordingly, the Examiner has not shown that a person of ordinary
skill in the art would have been led to use the claimed amounts of low and
high modulus polymers in a film layer composition.
As a consequence, the Examiner has not shown that Wang teaches or
suggests the “low-modulus polymer” and “high-modulus polymer”
limitations of claim 1. In view of the foregoing, Appellant has shown error
in the rejection of claim 1. As all other pending claims depend from claim 1,
Appellant has shown error in the rejection of all claims.
CONCLUSION
The Examiner’s rejections are reversed.
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–3, 9, 10,
13, 15, 16 103 Wang
1–3, 9, 10,
13, 15, 16
7, 8, 11, 12 103 Wang, Chen 7, 8, 11, 12
Overall
Outcome
1–3, 7–13,
15, 16
REVERSED