Chew, Kong Mun.

Patent Trials and Appeals Board

May 4, 2020

2019002234 (P.T.A.B. May. 4, 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.
13/274,100 10/14/2011 Kong Mun Chew 75020.0205 6557
153518 7590 05/04/2020
Dorsey & Whitney - Menicon
111 South Main Street
21st Floor
Salt Lake City, UT 84111-2176
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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):
case.kathy@dorsey.com
ip.docket.slc@dorsey.com
mckean.nicole@dorsey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KONG MUN CHEW
Appeal 2019-002234
Application 13/274,100
Technology Center 3700
Before DANIEL S. SONG, EDWARD A. BROWN, and LEE L. STEPINA,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 7, 8, 10, 11, 16, 17, 19, and 20. In
addition to its briefs, the Appellant relies on a declaration of Mr. Chew in
support of its appeal. 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(a). Appellant identifies the real party in interest as Menicon
Singapore Pte Ltd. Appeal Br. 3.
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Application 13/274,100
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CLAIMED SUBJECT MATTER
The claims are directed to an autoclavable laminated foil. Claim 1
reproduced below, is illustrative of the claimed subject matter:
1. A heat sealable, autoclavable laminated foil configured to
be heat sealed to itself or to a polypropylene substrate, wherein
the foil comprises:
i. an outer polymeric vapor barrier layer wherein the
polymeric layer is a bi-axially drawn polyester film with a
thickness of approximately 12 microns;
ii. an intermediate vapor barrier layer formed of slow
rolled aluminum having a thickness of less than 30 microns;
iii. an inner polymeric vapor barrier layer wherein the
inner polymeric vapor barrier layer is a bi-axially drawn
polyester film with a thickness of approximately 12 microns; and
iv. a heat sealable layer wherein the heat sealable layer is
a melt cast polyolefin copolymer film with a minimum melting
point of 130 degrees Celsius;
wherein a seal strength of said foil when heat sealed to
itself is less than 20N/15mm after autoclaving.
REFERENCES
The prior art relied upon by the Examiner is:

Name Reference Date
Stillman 4,085,244 Apr. 18, 1978
Taylor 5,598,919 Feb. 4, 1997
Furuya 6,139,952 Oct. 31, 2000
Voisin US 2009/0098375 A1 Apr. 16, 2009
Gollier US 2004/0146669 A1 July 29, 2004
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REJECTIONS2
The Examiner rejects various claims under pre-AIA 35 U.S.C.
§ 103(a) as follows:
1. Claims 1, 2, and 20 as unpatentable over Stillman in view of
Furuya and Gollier. Final Act. 4–8.3
2. Claims 10, 11, and 19 as unpatentable over Stillman in view of
Furuya, Gollier, and Taylor. Final Act. 8–13.4
3. Claims 7 and 8 as unpatentable over Stillman in view of
Furuya, Gollier, and Voisin. Final Act. 13.
4. Claims 16 and 17 as unpatentable over Stillman in view of
Furuya, Gollier, Taylor, and Voisin. Final Act. 14.
OPINION
Rejection 1: Claims 1, 2, and 20
The Examiner rejects claims 1, 2, and 20 as unpatentable over
Stillman in view of Furuya and Gollier. Final Act. 4–8. The Examiner finds
that Stillman discloses a heat sealable laminated foil substantially as
claimed, except for the recited polyester films, slow rolled aluminum, and a
heat sealable layer having the recited minimum melting point and seal
strength after autoclaving. Final Act. 4–5.
The Examiner finds that Furuya discloses a film made of bi-axially
stretched polyester, and concludes that use of such polyester would have

2 Claims 4, 6, 13, and 15, which were rejected under 35 U.S.C. § 112(a) or
§ 112(b), have been canceled. Appeal Br. 23; see also Final Act. 2–4.
3 We note that claims 4 and 6 have been canceled. Appeal Br. 3, Claims
App.
4 We note that claims 13 and 15 have been canceled. Appeal Br. 3, Claims
App.
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Application 13/274,100
4
been an obvious design choice to attain “the predictable result of providing a
package with excellent heat resistance and dimensional stability.” Final Act.
5–6, citing Furuya col. 2, ll. 22–28; col. 5, ll. 51–60. As to the slow rolled
aluminum, the Examiner finds that this is a product-by-process limitation,
which does not add patentable distinction to the claim. Final Act. 6. As to
the recited adhesive characteristics, the Examiner finds that “Stillman would
inherently have the claimed values since it is made with the same material as
the invention” (Final Act. 7), or alternatively relies on Gollier for disclosing
a heat sealable polyolefin layer having a seal strength and melt temperature
as recited after autoclaving. Final Act. 6, citing Gollier ¶¶ 26, 56. The
Examiner concludes that it would have been obvious to modify Stillman as
taught by Gollier for providing an autoclavable package, and that such
modification is merely optimization. Final Act. 7.
The Appellant submits numerous arguments in its briefs seeking
reversal of this rejection. We address two of these arguments, which are
dispositive to the appeal. In particular, the Appellant argues that “Stillman
does not teach a ‘slow rolled aluminum layer,’” and that “this limitation
must be given patentable weight and is patentably distinct from the cited
art.” Appeal Br. 16. According to the Appellant, the rejection is deficient
because the rejection does not address the Appellant’s evidence and
arguments. Appeal Br. 18. Referring to the declaration of inventor
Mr. Chew, the Appellant points out that:
Here, Appellant has provided evidence that slow rolled aluminum
does indeed possess structural differences, and thus different physical
properties, when compared to metal formed via processes other than
slow rolling. See, e.g., Zhang et al., Texture, Microstructure and
Mechanical Properties of 6111 Aluminum Alloy Subject to Rolling
Deformation, Mat. Res. vol. 20, no.5 (2017) [(hereinafter, “Zhang”)].
Appellant also presented evidence that the use of thin slow rolled
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aluminum in the instant invention achieves unexpected results,
namely the prevention of the development of pinholes in the
laminated foil. See Chew Declaration dated October 19, 2017, para.
8–12.
Appeal Br. 17.
We agree with the Appellant that the Examiner’s response is not
adequate. “Where a product-by-process claim is rejected over a prior art
product that appears to be identical, although produced by a different
process, the burden is upon the applicants to come forward with evidence
establishing an unobvious difference between the claimed product and the
prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (citing
In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Brown, 459 F.2d 531,
535 (CCPA 1972)). Presently, the Appellant has set forth evidence in
support of its argument that the recitation “slow rolled aluminum” results in
a structural distinction over the prior art. See In re Garnero, 412 F.2d 276,
279 (CCPA 1979) (“[I]t seem[s] to us that the recitation of the particles as
‘interbonded one to another by interfusion between the surfaces of the perlite
particles’ is as capable of being construed as a structural limitation as
‘intermixed,’ ‘ground in place,’ ‘press fitted,’ ‘etched,’ and ‘welded,’ all of
which at one time or another have been separately held capable of
construction as structural, rather than process, limitations.” (Footnote
omitted)).
However, the Examiner merely responds that the declaration “states
that Declarant believes slow rolled aluminum provides a consistent cross-
section with few defects (page 3). It is the examiner’s posit[i]on that ‘I
believe’ is just the Declarant’s opinion and not a statement of fact.” Ans. 6.
Such a response is inadequate because, as the Appellant argues, “Declarant’s
statements are observations based on experimentation, experimentation
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which resulted in the claimed autoclavable foil that helps prevent pinholing.”
Reply Br. 7, citing Chew Decl. ¶¶ 8–12. The Examiner does not address the
declarant’s experimental results or the technical reference (Zhang) relied
upon by the Appellant. Thus, because the Examiner does not adequately
address the Appellant’s evidence and arguments as to the limitation “slow
rolled aluminum,” we reverse the Examiner’s rejection on that basis.
In addition, we also find insufficient, the Examiner’s response to the
Appellant’s argument that modifying the device of Stillman to have a heat-
sealable layer having a seal strength of less than 20N/15mm suitable for
peeling the layers apart manually, “would render the reference substantially
inoperable for its intended purpose.” Appeal Br. 15. In particular, the
Appellant argues that a person of ordinary skill in the art would have known
that the recited seal strength would make the pouch in Stillman designed to
hold large volumes of liquid contents “susceptible to rupture, leakage, or
other failure mechanisms.” Appeal Br. 15–16; see also Reply Br. 3;
Stillman, col. 1, ll. 14–15 (“useful as containers for large volumes of liquid
materials”); col. 1, ll. 42–43 (“large volume of from 5 to 20 liters preferred
in accordance with this invention.”).
The Examiner responds that “modifying the heat-sealable layer of
Stillman as taught by Gollier (paragraphs 0026 and 0056) would not make
the packaging film of Stillman inoperable,” and that “the intended purpose
of Stillman is to provide a self-sealing packaging film laminate of high
strength (col. 1, lines 6–7).” Ans. 5–6. Despite the purported purpose of
“high strength,” the Examiner’s suggested modification limits the seal
strength of the foil to that recited by the claim, which is appropriate for
allowing manual peeling of the layers as disclosed in the Appellant’s
Specification. See Spec. ¶¶ 99–102; Figs. 7A–7C.
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Accordingly, considering that Stillman’s packaging is intended to
hold “large volumes of liquid materials” on the order of 5 to 20 liters, and
the claimed limitation is suitable for allowing hand peeling of the layers, the
Appellant’s argument that the suggested modification to Stillman’s
packaging would result in a package susceptible to rupture or leakage
appears to be substantiated. At minimum, it is unclear to us, and the
Examiner has not adequately explained, why a person of ordinary skill
would seek to limit the seal strength to be at a level that allows it to be
peeled apart considering there is no indication that the layers forming the
packaging of Stillman were intended to be peelable, and there is a screw top
spigot provided for dispensing its contents. Stillman, col. 5, ll. 16–19; Fig.
3. The Examiner’s further assertion that Stillman inherently discloses the
recited limitation by virtue of its use of polyolefin is not sustainable in view
of Stillman’s disclosure of a melting point of about 70ºC to 90ºC (which is
substantially lower than the recited limitation of at least 130ºC), thereby
indicating that polyolefin class of materials have a wide range of properties.
Therefore, we find the Examiner’s rejection deficient for this
additional basis. Accordingly, we reverse this rejection of independent
claim 1, and claims 2 and 20 that depend therefrom.

Rejection 2: Claims 10, 11, and 19
Claims 10, 11, and 19 stand rejected as unpatentable over Stillman in
view of Furuya, Gollier, and Taylor. Final Act. 8–13. Independent claim 10
includes substantially the same limitations of claim 1, and claims 11 and 19
depend from claim 1. The Examiner’s rejection is based on the same
findings and deficient reasoning as claim 1 as to the combination of
Stillman, Furuya, and Gollier, and the Examiner’s application of Taylor does
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not remedy the above discussed deficiencies. Final Act. 8. Thus, this
rejection of claims 10, 11, and 19 is also reversed.

Rejections 3 and 4: Claims 7, 8, 16, and 17
The Examiner rejects claims 7 and 8 that depend from claim 1 as
unpatentable over Stillman in view of Furuya, Gollier, and Voisin, and
rejects claims 16 and 17 that depend from claim 10 as unpatentable further
in view of Taylor. Final Act. 13–14. However, the Examiner’s application
of Voisin and Taylor does not remedy the above noted deficiencies of the
combination of Stillman Furuya, and Gollier. Thus, these rejections of
claims 7, 8, 16, and 17 are also reversed.
CONCLUSION
The Examiner’s rejections are REVERSED.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 20 103(a) Stillman, Furuya,
Gollier
1, 2, 20
10, 11, 19 103(a) Stillman, Furuya,
Gollier, Taylor
10, 11, 19
7, 8 103(a) Stillman, Furuya,
Gollier, Voisin
7, 8
16, 17 103(a) Stillman, Furuya,
Gollier, Taylor,
Voisin
16, 17
Overall
Outcome
1, 2, 7, 8,
10, 11, 16,
17, 19, 20

Appeal 2019-002234
Application 13/274,100
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REVERSED