BEMIS COMPANY, INC.

Patent Trials and Appeals Board

Apr 21, 2021

2020002799 (P.T.A.B. Apr. 21, 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.
15/120,946 08/23/2016 Chris S. Mussell 20878-US 5000
30482 7590 04/21/2021
AMCOR FLEXIBLES NORTH AMERICA, INC.
Office of Intellectual Property Counsel
P.O. Box 669
Neenah, WI 54957
EXAMINER
POWERS, LAURA C
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
04/21/2021 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):
legal@amcor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS S. MUSSELL and NATHAN T. MOCADLO
Appeal 2020-002799
Application 15/120,946
Technology Center 1700
Before CHRISTOPHER C. KENNEDY, DEBRA L. DENNETT, and
SHELDON M. MCGEE, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–6 and 14–20. See Final Act. 1;
Appeal Br. 12–14.3 We have jurisdiction under 35 U.S.C. § 6(b).

1 In our Decision, we refer to the Specification (“Spec.”) of Application
15/120,946 filed Aug. 23, 2016; the Final Office Action dated Apr. 15, 2019
(“Final Act.”); the Advisory Action dated July 2, 2019 (“Adv. Act.); the
Appeal Brief filed Dec. 2, 2019 (“Appeal Br.”); the Examiner’s Answer
dated Jan. 27, 2020 (“Ans.”); and the Reply Brief filed Feb. 27, 2020
(“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Bemis Company, Inc. Appeal Br. 2.
3 Claims 7–13 were cancelled in Appellant’s Oct. 5, 2018 Response to
Office Action. Reply Br. 2.
Appeal 2020-002799
Application 15/120,946

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We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to packaging materials having purported
improved release properties for packaging foods. Spec. ¶¶ 1, 4.
Claim 1, reproduced below from the Claims Appendix, illustrates the
claimed subject matter:
1. A packaging web having a first side edge and an
opposing second side edge, a third side edge and opposing
fourth side edge, comprising:
a. an inner surface comprising a sealing border positioned
adjacent to the first, second, third and fourth side edges and
comprising a cold-seal adhesive coating; and
b. a product-release coating applied in an area
circumscribed by the sealing border, wherein the product-
release coating comprises a compound of formula:
.

REFERENCES
The Examiner relies on the following prior art in rejecting the claims:

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Application 15/120,946

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Name Reference Date
Clayton US 4,348,455 Sept. 7, 1982
Zhang US 5,616,400 Apr. 1, 1997
Muschelewicz et al.
(“Muschelewicz”)
US 5,965,226 Oct. 12, 1999
Krampe et al.
(“Krampe”)
US 6,099,682 Aug. 8, 2000
Kasturi et al.
(“Kasturi”)
US 6,433,053 B1 Aug. 13, 2002
REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ 103:
A. Claims 1–4, 14, 16, and 18–20 over Krampe in view of
Clayton;
B. Claims 5 and 6 over Krampe in view of Clayton and Kasturi;
C. Claim 15 over Krampe in view of Clayton and Zhang;
D. Claim 17 over Krampe in view of Clayton and Muschelewicz.
Ans. 3–11.
OPINION
Appellant argues the claims as a group, stating that the only issue on
appeal is the proper interpretation of the claim term “circumscribe.” Appeal
Br. 5. We select claim 1, the sole independent claim, as representative of the
group. Claims 2–6 and 14–20 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 1 recites, inter alia, “a product-release coating applied in an
area circumscribed by the sealing border.” The Examiner finds that claim 1
Appeal 2020-002799
Application 15/120,946

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requires that the product-release coating is present in an area that is
circumscribed by the sealing border. Ans. 13. Of relevance to our decision,
the Examiner also finds that the inclusion of “circumscribed” in claim 1 does
not prevent the product release coating from additionally being present in the
sealing border area, i.e., overlapping, with the cold-seal adhesive. Adv. Act.
2; Ans. 13. As the Examiner explains: “the claims do not require or recite
that the product release coating is limited to only being applied in an area
circumscribed by the sealing border.” Ans. 14 (emphasis added).
Appellant argues that the Examiner erroneously interprets the claim
term “circumscribe.” Appeal Br. 5. Appellant argues that the ordinary and
customary meaning of “circumscribe” is “to draw a line around” or “to
surround by or as if by a boundary.” Id.
Appellant’s argument for patentability is unpersuasive at least because
the Examiner does not give an interpretation of “circumscribe” that is
contrary to Appellant’s. See generally Final Act., Ans. The Examiner’s
position is that claim 1 is not limited such that the product-release coating is
applied within the area bounded by the sealing border, but nowhere else.
See Adv. Act. 2; Ans. 14. The Examiner’s position is entirely consistent
with the use of the open transitional term “comprising,” which permits
elements in addition to those specified to be included in the composition of
the claim. In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004) (“[I]t is well-
established that ‘[c]omprising’ is a term of art used in claim language which
means that the named elements are essential, but other elements may be
added and still form a construct within the scope of the claim.’ Genentech,
Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).”). In the instant
case, Appellant’s use of “comprising” and the lack of any language limiting
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Application 15/120,946

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the application of the product-release coating to only an area circumscribed
by the sealing border encompasses a packing web with the product-release
coating applied in other locations as well.
For the reasons above, we sustain the rejection of claim 1 as obvious
over Krampe in view of Clayton. We sustain the rejections of claims 2–6
and 14–20 for the same reasons as given in relation to claim 1.
CONCLUSION
The Examiner’s decision to reject claims 1–6 and 14–20 is affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 14,
16, 18–
20
103 Krampe, Clayton 1–4, 14, 16,
18–20

5, 6 103 Krampe, Clayton,
Kasturi
5, 6
15 103 Krampe, Clayton,
Zhang
15
17 103 Krampe, Clayton,
Muschelewicz
17
Overall
Outcome
1–6, 14–20
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2018).
AFFIRMED