Toray Plastics (America), Inc.

Patent Trials and Appeals Board

Jun 10, 2020

2019004502 (P.T.A.B. Jun. 10, 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.
15/336,249 10/27/2016 Stefanos L. Sakellarides 042593-000023USPT 1464
70001 7590 06/10/2020
NIXON PEABODY LLP
70 WEST MADISON STREET
SUITE 3500
CHICAGO, IL 60602
EXAMINER
FIGG, TRAVIS M
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
06/10/2020 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):
docketingchicago@nixonpeabody.com
ipairlink@nixonpeabody.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEFANOS L. SAKELLARIDES,
PAIGE MANUEL, and JAN MORITZ
____________

Appeal 2019-004502
Application 15/336,249
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16 and 21–30 of Application
15/336,249. Final Act. (August 30, 2018).2 We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Toray Plastics (America), Inc. as the real
party in interest. Appeal Br. 2.
2 Claims 17–20 are withdrawn from consideration and, thus, are not subject
to the appealed rejections. Final Act. 1; Appeal Br. 4.
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I. BACKGROUND
The ’249 Application describes biaxially-oriented films, which
include a crystalline polyester, such as crystalline polyethylene terephthalate
(PET). See Spec. ¶ 2. According to the Specification, the described
biaxially-oriented films are said to have a lower resistance to stretching and
a softer feel. Id. The ’249 Application describes that the biaxially-oriented
films have been used: (i) to package fresh meat products or (ii) as a film
laminate’s layer in a decorated balloon. Id. ¶¶ 3, 4. According to the
Specification, polyester films for these purposes require a higher degree of
formability, while exhibiting a high moisture barrier. Id. ¶ 6.
Claim 1 is representative of the ’249 Application’s claims and is
reproduced below from the Claims Appendix of the Brief.
1. A formable biaxially-oriented film, the film comprising:
a first layer comprising from about 10 to about 60 wt.%
crystalline polyester and from about 40 to about 90 wt.% of a
formability enhancer to assist in increasing the polymeric chain
flexibility, the formability enhancer having a melting point less
than about 230°C,
wherein the film has a MD and a TD Young’s Modulus
of at least 10% lower than a crystalline polyester film in the
absence of the formability enhancer,
wherein the MD stretching ratio of the film is from about
3 to about 4.5 and the TD stretching ratio of the film is from
about 3 to about 4.5.
Appeal Br. (Claims App. A1).
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II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–3, 5–16, and 21–30 are rejected under 35 U.S.C. § 103 as
unpatentable over Sargeant,3 Itoh,4 and Chicarella.5 Final Act. 3–
8.6
2. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over
Sargeant, Itoh, and Wijay,7 as evidenced by HYTREL® Product
Reference Guide.8 Final Act. 9.
Appellant argues for the reversal of the rejections of claims 1–16 and
21–30 on the basis of limitations present in independent claim 1. Appeal Br.
7–18. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
Accordingly, claims 2–16 and 21–30 will stand or fall with claim 1.

3 US 2007/0287017 A1, published Dec. 13, 2007.
4 US 2005/0118442 A1, published June 2, 2005.
5 US 2009/0022919 A1, published Jan. 22, 2009.
6 The Examiner included grounds for the rejection of claim 21. Final Act. 7–
8; see also Appeal Br. 3 fn.1. The Examiner, however, omitted claim 21
from the Final Office Action’s statement of the rejection. Final Act. 3; see
also Appeal Br. 3 fn.1. Accordingly, we view the Examiner’s omission of
claim 21 from the list of rejected claims as a clerical error.
7 US 6,004,339, issued Dec. 21, 1999.
8 DuPontTM HYTREL® Thermoplastic Polyester Elastomer Product
Reference Guide (hereinafter “HYTREL® Product Reference Guide”).
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III. DISCUSSION
A. Rejection of claims 1–3, 5–16, and 21–30 as unpatentable over
the combination of Sargeant, Itoh, and Chicarella.
According to Appellant, the combination of Sargeant, Itoh, and
Chicarella does not describe or suggest the following elements of claim 1:
(i) “a first layer comprising from about 10 to about 60 wt.% crystalline
polyester and from about 40 to about 90 wt.% of a formability enhancer,”
(ii) “the MD stretching ratio of the film is from about 3 to about 4.5 and the
TD stretching ratio of the film is from about 3 to about 4.5,” and (iii) “the
film has a MD and a TD Young’s Modulus of at least 10% lower than a
crystalline polyester film in the absence of the formability enhancer.”
Appeal Br. 7–8.
First, Appellant argues that neither Sargeant nor Itoh describes or
suggests the claimed first layer’s ranges of crystalline polyester and
formability enhancer. Appeal Br. 8–13; Reply Br. 2–4.
In the Final Action, the Examiner found that Sargeant and Itoh
describes or suggests the claimed crystalline polyester’s and formability
enhancer’s ranges. Final Act. 3–5. The Examiner found that Sargeant
teaches a biaxially-oriented film, which may be formed from mixing two
different polyesters, such as PET and polybutylene terephthalate (PBT). Id.
at 4 (citing Sargeant ¶ 33). Likewise, the Examiner similarly found that “Itoh
teaches a biaxially[-]oriented polyester film composed of 10 to 90 wt[.]% of
a polyester (A) composed of PET and 90 to 10 wt[.]% of a polyester (B)
composed of . . . (PBT), which overlaps with the claimed ranges.” Final Act.
4.
The Examiner found, inter alia, that Itoh “provides a film with
improved mechanical strength.” Id. (citing, e.g., Itoh Abstract). The
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Examiner determined that it would have been obvious to one of ordinary
skill in the art at the time of the invention to have blended Sargeant’s
crystalline PET with a polyester formability enhancer, such as PBT, in the
claimed ranges of from about: (i) 10 to 60 wt.% for the crystalline PET and
(ii) 40 to 90 wt.% of PBT, to provide a biaxially-oriented film with Itoh’s
improved mechanical properties. Final Act. 5.
Appellant argues that “[t]he combination of Sargeant and Itoh is
improper because (1) the processes of forming the mixtures in Sargeant and
Itoh are different.” Appeal Br. 9; Reply Br. 3. In particular, Appellant
contrasts Sargeant’s single extrusion method with Itoh’s method of
separately extruding PET and PBT and then combining these melt streams.
Appeal Br. 10. According to Appellant, Sargeant initially dry mixes two
types of polyester pellets together, with melting thereafter. Id. Appellant
argues that Itoh’s separate extrusions for PET and PBT avoids
transesterification issues and undesirable whitening, which can result from
Sargeant’s dry blended method. Id. Appellant concludes that Itoh’s separate
extrusions process teaches away from Sargeant’s dry blended process. Id. at
11.
These arguments are not persuasive.
The teachings of a reference that arguably teaches away from a
claimed feature must be weighed alongside the teachings of a cited reference
that teaches the propriety of employing that feature. Para-Ordnance Mfg.,
Inc. v. SGS Imps. Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995). For a
reference to “teach away,” it must criticize, discredit, or otherwise
discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004).
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In this case, the Examiner relied on Itoh for teaching the propriety of
blending PET and PBT in certain wt.% ranges to attain, inter alia, improved
mechanical strength. Final Act. 4 (citing, e.g., Itoh Abstract). Appellant does
not direct our attention to any teaching in Sargeant that criticizes, discredits,
or discourages blending PET and PBT in Itoh’s wt.% ranges. We,
furthermore, agree with the Examiner that claim 1 is drawn to a biaxially-
oriented film, but not to a process of manufacturing the claimed film.
Answer 12.
On this record, Itoh’s alleged teaching away from a dry blending
method, which may affect features not recited in claim 1, is outweighed by
Itoh’s teachings regarding the propriety of blending PET and PBT in certain
wt.% ranges to attain desirable mechanical properties.
Appellant argues that the combination of Sargeant and Itoh is also
improper because “(2) Sargeant is directed to a much narrower use[] than the
wide variety of use[s] in Itoh.” Appeal Br. 9; see Reply Br. 3. In particular,
Appellant argues that Sargeant’s gas barrier laminates for packaging films is
narrower in scope than Itoh’s films for food packaging, industrial use,
optical use, electrical materials, form processing, and in a film laminated
metal sheet. Appeal Br 11.
We are not persuaded by these arguments because Sargeant, like Itoh
teaches a biaxially-oriented polyester film comprising a blend of PET and
PBT, which can be used for food packaging. Answer 13; see also Sargeant
claims 13–21, ¶¶ 3, 4, 33; Itoh Abstract, ¶¶ 1, 40.
Appellant argues that the combination of Sargeant and Itoh is also
improper because “(3) Sargeant . . . is directed to specific teachings in its
films and one skilled in the art would not [have] look[ed] to modify the film
compositions of Sargeant with Itoh without any teaching or motivation to do
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the same.” Appeal Br. 9; see Reply Br. 3. In particular, Appellant argues that
Sargeant only exemplifies a formability enhancer concentration of “at most
3 wt.% and has no other teachings coming anywhere near the claimed about
40 wt.% to 90 wt.% . . . recited in claim 1.” Appeal Br 12; see also id. at 9.
These arguments are not persuasive.
In an obviousness inquiry, the fact that a specific embodiment is
taught to be preferred is not controlling, since all disclosures of the prior art,
including non-preferred embodiments, must be considered. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (citing In re
Lamberti, 545 F.2d 747, 750, (CCPA 1976)).
We find that the Examiner’s proposed modification is reasonable
because Sargeant’s teachings do not limit the formability enhancer
concentration to 3 wt.%. See Merck, 874 F.2d at 807. Rather, Sargeant
discloses that the two polyesters of a “high crystalline layer are . . . selected
from the group consisting of polyethylene terephthalate [(PET)],
polybutylene terephthalate [(PBT)], [etc.]. . . mixtures, copolymers and
combinations thereof.” Sargeant ¶ 33 (emphasis added); see In re Fritch,
972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference stands for all of the
specific teachings thereof as well as the inferences one of ordinary skill in
the art would have reasonably been expected to draw therefrom). Appellant,
therefore, does not identify reversible error in the Examiner’s determination
that it would have been obvious to one of ordinary skill in the art at the time
of the invention to have modified Sargeant’s biaxially-oriented film with
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Itoh’s blended PET and PBT wt.% ranges to attain improved mechanical
properties.9
Second, Appellant argues that neither Sargeant, Itoh, nor Chicarella
describes or suggests the claimed biaxially-oriented film’s MD and TD
stretching ratios. Appeal Br. 13–14; Reply Br. 4–5.
In the Final Action, the Examiner found that Chicarella and Sargeant
each describe biaxially-oriented polyester films, which are useful as gas
barriers. Final Act. 6. The Examiner found Chicarella describes or suggests
that the polyester film “may be extruded and preferably stretched from 2 to 5
times in the longitudinal direction and 2 to 5 times in the transverse
direction,” which “corresponds to the MD and TD stretching ratios.” Id. The
Examiner found Chicarella teaches or suggests that such biaxial stretching
provides a crack resistant polyester film with excellent gas barrier properties.
Id. at 5–6 (citing Chicarella ¶¶ 30, 31, 45, 70; Abstract).
Appellant argues that Chicarella’s “stretching numbers in the
longitudinal and transverse directions are not directed to film layers having a
combination of PET/PBT.” Appeal Br. 13; see also Reply Br. 5. In
particular, Appellant argues that there is an insufficient nexus between the

9 To the extent Appellant argues that “the Examiner relies on Itoh’s process
for providing motivation to the combination” with Sargeant, thereby
overhauling Sargeant’s film forming process, this is incorrect. Reply Br. 6
(citing Answer 12–13); see also Appeal Br. 16. Rather, the Examiner’s
rejection proposes modifying Sargeant’s biaxially-oriented film to include
Itoh’s blended PET and PBT wt.% ranges, without including Itoh’s film
forming process. Final Act. 5; see also Answer 12, 17 (citing Spec. ¶¶ 41,
74; Sargeant ¶¶ 37–41) (noting that Sargeant and the ’249 Application’s
Specification each describe a “layer formed through a substantially similar
process such as extrusion of the PET and PBT pellets” as evidence that
Sargeant’s modified film inherently possesses the claimed film’s property).
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claimed stretching ratios and the prior art’s because Chicarella’s stretching
ratios were used to manufacture a PET/PET blend. Reply Br. 5. Appellant
argues that Chicarella’s manufacturing process teaches away from Itoh’s
because “Chicarella discloses a dry-blend ratio like Sargeant by mixing the
polyester pellets, drying[,] and extruding the same.” Appeal Br. 14.
These arguments are not persuasive.
There is no dispute that Chicarella discloses that “[t]he high
crystalline polyester layer 12 can include any suitable material,” such as
“high intrinsic viscosity . . . copolyester of PET/PBT.” Chicarella ¶ 30;
Appeal Br. 13; Final Act. 5. We find that the Examiner’s proposed
modification is reasonable because Chicarella’s teachings do not limit the
polyester film to a PET/PET blend. See Merck, 874 F.2d at 807. Moreover,
Appellant’s teaching away arguments are not persuasive for the same
reasons set forth supra discussing the alleged differences between Itoh’s and
Sargeant’s manufacturing processes.
On this record, the Examiner has provided a sufficient nexus between
the claimed stretching ratios and the prior art’s because Sargeant, Itoh, and
Chicarella each teach biaxially-oriented polyester films comprising
PET/PBT blends. Answer 15. As the Examiner found, Chicarella broadly
teaches both: (1) “blending PET and PBT together to form a biaxially[-
]oriented film” and (2) “an advantage,” namely crack resistance and
desirable gas barrier properties, which are derived from “stretching in the
claimed ratios.” Id.
We, therefore, are not persuaded that Appellant has established the
existence of reversible error in the Examiner’s findings that the combined
teachings would have rendered obvious the claimed stretching ratios.
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Third, Appellant argues that neither Sargeant, Itoh, nor Chicarella
describes or suggests the claimed biaxially-oriented film’s MD and TD
Young’s Modulus features. Appeal Br. 14–16; Reply Br. 5–8. Appellant
particularly argues that there exists “no legal obligation to show that the
impermissible cobbling of multiple features of three different references for
forming the same meets the claimed Young’s modulus recited in claim 1.”
Reply Br. 6.
The Examiner, however, has explained that
Sargeant, Itoh, and Chicarella teach a formability film with the
required structure . . . , the layer ordering of a crystalline
polyester layer and an amorphous copolyester layer, and biaxial
orientation with overlapping stretch ratios . . . , similar
properties (i.e.[,] intrinsic viscosity and crystallinity), each layer
having same compositional structure (i.e.[,] the crystalline PET
layer having the same degree of crystallinity for the crystalline
PET blended with a polyester having PBT repeating units (a
formability enhancer) that are blended in the claimed
proportions and an amorphous copolyester layer having the
same compositions) for each layer formed through a
substantially similar process such as extrusion of the PET and
PBT pellets.
Final Act. 6–7 (citing Chicarella ¶ 45; Spec. ¶¶ 41, 74, 75; Sargeant ¶¶ 13,
37–41). As the Examiner determined, modified Sargeant’s “formable film
. . . would [have] intrinsically possess[ed] similar characteristics such as
having a MD and a TD Young’s Modulus of at least 10% lower . . . than a
crystalline polyester film in the absence of the formability enhancer.” Final
Act. 7.
On this record, the Examiner’s findings are reasonable that the
proposed biaxially-oriented film, comprising a known PET and PBT blend,
would have had the claimed Young’s Modulus properties. Therefore, the
burden is on Appellant to provide evidence or reasoning sufficient to rebut
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the findings. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as
here, the claimed and prior art products are identical or substantially
identical, or are produced by identical 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 [the] claimed
product.”). We find, however, that Appellant has not provided any evidence
or reasoning that would support a conclusion that Sargeant’s modified
formable biaxially-oriented film would not have possessed the Young’s
Modulus features recited in claim 1.
In view of the foregoing, we determine that the Examiner did not
reversibly err in rejecting claim 1 as unpatentable over the combination of
Sargeant, Itoh, and Chicarella. Accordingly, we also affirm the rejection of
claims 2, 3, 5–16, and 21–30. 37 C.F.R. § 41.37(c)(1)(iv).
B. Rejection of claim 4 as unpatentable over the combination of
Sargeant, Itoh, and Wijay, as evidenced by the HYTREL®
Product Reference Guide.
Appellant argues that the rejection of claim 4 as unpatentable over the
combination of Sargeant, Itoh, and Wijay, as evidenced by the HYTREL®
Product Reference Guide, should be reversed for the reasons set forth in
arguing for reversal of the rejection over the combination of Sargeant, Itoh,
and Chicarella. See Appeal Br. 16 (“For at least the same reasons as
discussed above in the claim 1, dependent claim[ 4] . . . should not be
rendered obvious over Sargeant, Itoh, Chicarella, or any combination
thereof.”).
For the reasons set forth above, we have affirmed the rejection of
independent claim 1 as unpatentable over the combination of Sargeant, Itoh,
and Chicarella. We, therefore, also affirm the rejection of claim 4 as
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unpatentable over the combination of Sargeant, Itoh, and Wijay, as
evidenced by the HYTREL® Product Reference Guide. 37 C.F.R.
§ 41.37(c)(1)(iv).
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–3, 5–16, 22–30 103 Sargeant, Itoh, and Chicarella 1–3, 5–16, 21–30
4 103 Sargeant, Itoh, Wijay, HYTREL
®
Product Reference Guide 4
Overall Outcome 1–16, 21–30
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