David Voisin et al.

Patent Trials and Appeals Board

Jul 24, 2019

12092642 - (D) (P.T.A.B. Jul. 24, 2019)

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.
12/092,642 05/05/2008 David Voisin DTG1-136US 4514
31344 7590 07/24/2019
RATNERPRESTIA
2200 RENAISSANCE BLVD
SUITE 350
KING OF PRUSSIA, PA 19406
EXAMINER
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
07/24/2019 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID VOISIN,
JAY B. BARBER, STEPHEN K. FRANZYSHEN,
and MARK E. DAWES
_____________

Appeal 2018-008969
Application 12/092,642
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
December 6, 2017 decision finally rejecting claims 1–4, 8, 9, 12, and 14–23.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to the packaging and/or cooking of
ovenable food products, particularly meat and fish (Spec. 1:3–4). The

1 Appellants identify the real party in interest as DuPont Teijin Films U.S.
Limited Partnership (Appeal Br. 1).
Appeal 2018-008969
Application 12/092,642
2
Specification describes a thermoformable packaging design for both fresh
and frozen food products, wherein the packaging is dual-ovenable (id. at
1:4–6). This dual-ovenable feature refers to the food packaging’s capability
to withstand exposure to cooking conditions in both a conventional and a
microwave oven (id. at 3:15–18).
Claim 1 is reproduced below from the Claims Appendix of the Appeal
Brief (emphasis added):
1. A method of packaging ovenable fish or meat, said
method comprising the steps of:
(i) providing a dual-ovenable thermoformable polymeric
receiving film having a first and second surface and a dual-
ovenable polymeric covering film having a first and second
surface,
wherein said receiving film consists of a mono-layer
biaxially oriented polyester substrate, an optional barrier layer,
and an optional heat-sealable layer[,] which[,] where present[,]
constitutes the first surface of the receiving film,
wherein the biaxially oriented polyester substrate of the
receiving film consists of
1) a copolyester which consists of repeating units derived
from azelaic acid, terephthalic acid, and ethylene glycol, said
azelaic acid constituting in a range from 1 mol% to 10 mol%
based on the total amount of dicarboxylic acid components in
the copolyester; and
2) optionally one or more particulate inorganic fillers
selected from metal or metalloid oxides, calcined china clay and
alkaline metal salts,
wherein the optional heat-sealable layer of the receiving
film consists of
1) a polymer selected from the group consisting of:
Appeal 2018-008969
Application 12/092,642
3
(a) a copolyester which consists of repeating units
derived from an aliphatic glycol and at least two
dicarboxylic acids;
(b) a copolyester which consists of repeating units
derived from an aliphatic glycol, a cycloaliphatic glycol,
and one or more dicarboxylic acid(s);
(c) a copolyester which consists of repeating units
derived from acid components and an aliphatic glycol, in
which the acid components are selected from one or more
aromatic dicarboxylic acid(s) and one or more aliphatic
dicarboxylic acid(s); and
(d) an ethylene vinyl acetate, and
2) optionally one or more particulate inorganic fillers
selected from metal or metalloid oxides, calcined china clay and
alkaline metal salts,
wherein said covering film is a multilayer film which
comprises a substrate, an optional barrier layer and a heat-
sealable layer such that the heat-sealable layer constitutes the
first surface of the covering film,
wherein the substrate of the covering film consists of
polyester and optionally one or more particulate inorganic
fillers selected from metal or metalloid oxides, calcined china
clay and alkaline metal salts,
wherein the heat-sealable layer of the covering film
consists of
1) a polymer selected from the group consisting of:
(a) a copolyester which consists of repeating units
derived from an aliphatic glycol and at least two
dicarboxylic acids;
(b) a copolyester which consists of repeating units
derived from an aliphatic glycol, a cycloaliphatic glycol,
and one or more dicarboxylic acid(s);
(c) a copolyester which consists of repeating units
derived from acid components and an aliphatic glycol, in
Appeal 2018-008969
Application 12/092,642
4
which the acid components are selected from one or more
aromatic dicarboxylic acid(s) and one or more aliphatic
dicarboxylic acid(s); and
(d) an ethylene vinyl acetate, and
2) optionally one or more particulate inorganic fillers
selected from metal or metalloid oxides, calcined china clay and
alkaline metal salts,
wherein said receiving and covering films are separate
pieces of film and wherein at least one of said first surfaces of
said receiving and covering films is a heat-sealable surface and
wherein the shrinkage of the receiving film is less than 3% and
the total thickness of the receiving film is 12μm to 250μm;
(ii) providing a raised outer portion and an indented
central portion in said receiving film by thermoforming;
(iii) disposing on the first surface of the receiving film a
portion of meat or fish;
(iv) disposing the covering film over the portion of meat
or fish such that the first surface of the covering film is
disposed towards the first surface of the receiving film;
(v) contacting the peripheral portions of the first surface
of the receiving film and the first surface of the covering film
and forming a heat-seal bond therebetween; and
(vi) optionally freezing the packaged meat or fish.
Appeal 2018-008969
Application 12/092,642
5
REJECTIONS
(I) Claims 1–4, 12, 14, 17, and 19 are rejected under
35 U.S.C. § 103(a) as unpatentable over Sankey,2 in view of Voisin,3
Hayes,4 Bell,5 and further in view of Peiffer.6
(II) Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sankey, in view of Fuller,7 and further in view of Suzuki.8
(III) Claims 15, 16, and 20–23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Sankey, in view of Swerlick,9 and further in view of
Della Bianca.10
(IV) Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Sankey, in view of Hopkins,11 and further in view of Dalgewicz.12
Appellants’ arguments in support of claims 1–4, 8, 9, 12, and 14–23 are
directed to limitations recited in independent claims 1 and 2 (see generally
Appeal Br. 7–15; Reply Br. 1–5). We limit our discussion of the independent
claims to claim 1, with the understanding that our discussion applies with
equal force to independent claim 2. 37 C.F.R. § 41.37(c)(1)(iv). Dependent
claims 3, 4, 8, 9, 12, and 14–23 will stand or fall with each of their respective
independent claims (id.).

2 Sankey et al., US 2004/0067284 A1, published April 8, 2004.
3 Voisin et al., WO 2005/007400 A2, published Jan. 27, 2005.
4 Hayes, US 2002/0115817 A1, published Aug. 22, 2002.
5 Bell et al., WO 00/23520, published April 27, 2000.
6 Peiffer et al., US 2005/0100729 A1, published May 12, 2005.
7 Fuller, EP 0470771 A2, published Feb. 12, 1992.
8 Suzuki et al., US 5,204,181, issued April 20, 1993.
9 Swerlick, US 3,959,526, issued May 25, 1976.
10 Della Bianca et al., US 2004/0197442 A1, published Oct. 7, 2004.
11 Hopkins, US 2002/0096056 A1, published July 25, 2002.
12 Dalgewicz, III, US 6,773,735 B1, issued Aug. 10, 2004.
Appeal 2018-008969
Application 12/092,642
6
DISCUSSION
Rejections (I)–(IV)
In rejecting claim 1, the Examiner finds that Sankey describes each
step and limitation of the claimed packaging method with the exception that
Sankey does not disclose, inter alia,
that the receiving film consists of a monolayer biaxially
oriented polyester substrate, . . . wherein the biaxially oriented
substrate consists of a copolyester of azelaic acid and
terephthalic acid with ethylene glycol, said azelaic acid
constituting in a range from 1 to 10[]mol% based on the total
amount of dicarboxylic acid components in the copolyester
(Final Act. 4).
The Examiner finds Voisin discloses that packaging substrate films
can be a self-supporting film or sheet, which can be a polyester formed from
terephthalic acid, azelaic acid, and ethylene glycol (id. at 4 (citing Voisin
3:19–20; 4:1–70)). The Examiner further finds that Voisin teaches or
suggests that a self-supporting polyester substrate film can be used as the
food receiving portion because this substrate may further comprise a heat
seal layer and a barrier layer (Final Act. 4 (citing Voisin 18:17–25)). Voisin
teaches, according to the Examiner, that these materials confer the film’s
capability to seal onto itself, thereby forming the packaging in its entirety
(Final Act. 4 (citing Voisin 18:17–25)).
Though Voisin does not disclose the requisite azelaic acid amounts,
the Examiner finds Hayes teaches that azelaic acid may be present at 2
mol%, along with terephthalic acid and ethylene glycol, in thermoformable
Appeal 2018-008969
Application 12/092,642
7
polyesters for ovenable food applications (Final Act. 4–5 (Hayes ¶¶ 6, 18,
19, 20, 29, 64)).
The Examiner determines that because “Sankey[] already suggests
ovenable applications, to thus use a receiving film as taught by Voisin and
Hayes[] to form the polyester receiving tray would have been obvious to one
having ordinary skill in the art” (Final Act. 5). The Examiner concludes that
substituting Sankey’s receiving tray based on the teachings of Voisin and
Hayes would have been an obvious “substitution of one conventional
polyester tray used for ovenable food packaging for another[, which is]
recognized for a similar function” (id.).
Appellants argue that Voisin’s teachings regarding an azelaic acid,
terephthalic acid, and ethylene glycol film, which is used in a covering film,
does not: (1) teach that such a film is thermoformable (Appeal Br. 9–10);
(2) motivate the ordinary skilled person to use such a covering film as
Sankey’s receiving film (id.); or (3) teach that if an azelaic acid, terephthalic
acid, and ethylene glycol film is used as a receiving film in Voisin’s distinct
alternative self-sealing embodiment, then the receiving and the covering
films must be separate pieces of films (id. at 9–10, 12; Reply Br. 2–4).
Appellants further argue that the ordinarily skilled artisan, faced with the
combined teachings of Voisin and Sankey, would have instead modified
Sankey’s covering film with Voisin’s heat-sealable polyester (Appeal Br.
10).
Appellants’ arguments are not persuasive.
Argument (1) ignores the teachings of Hayes in the Examiner’s
proposed combination of Sankey, Voisin, and Hayes. As the Examiner
finds, Hayes teaches that ovenable films comprising 2 mol% azelaic acid,
Appeal 2018-008969
Application 12/092,642
8
terephthalic acid, and ethylene glycol, are thermoformable for forming a tray
shaped receiving film (Ans. 13, citing Hayes ¶¶ 6, 18, 19, 20, 64, 79).
Similarly, Voisin teaches that the polyester film can be self-supporting and
that the entire package, i.e., receiving and covering film, can consist of
azelaic acid, terephthalic acid, and ethylene glycol film (Ans. 13 (citing
Voisin 3:19–20, 4:3, 4:2, 4:6, 18:16–25; 19:8–9); see also Ans. 22 (citing
Voisin 17:28–30, 18:16–25, 22:26–27)). Thus, Voisin and Hayes suggest
the claimed copolyester in ovenable applications where the copolyester is
thermoformable.
Therefore, we agree with the Examiner that it would have been an
obvious substitution of Sankey’s dual-ovenable receiving film for Voisin’s
and Hayes’ dual-ovenable receiving films, which are recognized for
performing a similar function of holding the food therein for heating (Ans.
15).
Appellants’ arguments (2) and (3) fail to adequately address the
combined teachings in the applied prior art. As the Examiner finds, Sankey
does not limit the particular polyester for the receiving film (id. at 14, citing
Sankey ¶ 85 (disclosing that this film “may be formed of polyester, such as
polyethylene terephthalate”)). There is no dispute that polyethylene
terephthalate “has been well known to comprise terephthalic acid and
ethylene glycol (a diol)” (Final Act. 4; Appeal Br. 9).
With respect to the azelaic acid missing in Sankey’s film, the
Examiner has found that receiving films consisting of the requisite
components were well known. For example, Voisin’s generic disclosure
teaches that the polyester film, comprising azelaic acid, terephthalic acid,
and ethylene glycol, can be a covering film for a container or can be the
Appeal 2018-008969
Application 12/092,642
9
food receiving film (Ans. 17, citing Voisin 3:19–27, 4:2, 4:3, 4:6).
Furthermore, Sankey teaches two separate films for the cover film and the
receiving film (Final Act. 3, citing Sankey ¶¶ 2, 85, 35–39; Figs. 1, 2).
Thus, Appellants’ arguments fail to identify reversible error in the
Examiner’s findings that Voisin’s polyester films consisting of azelaic acid,
terephthalic acid, and ethylene glycol repeating units have been
conventionally used as a receiving film for dual-ovenable food applications
(Ans. 17). Therefore, we agree with the Examiner that the applied prior art
teaches that Sankey’s receiving film can be equally made from the
thermoplastic polymeric materials suggested by Voisin and Hayes (id.).
Appellants argue that Voisin teaches away from the method of
packaging recited in claim 1 because: (i) Voisin’s film is required to form
substantially all of the packaging by heat-sealing the film to itself (Appeal
Br. 10–11); and (ii) such flexible packaging is not thermoformed either
before or after receiving food (Reply Br. 2–3).
Argument (i) might be persuasive if Voisin criticizes, discredits, or
otherwise discouraged the claimed subject matter. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). However, Appellants do not direct our
attention to any disclosure in Voisin that criticizes, discredits, or discourages
using the disclosed film as a receiving film by itself. As the Examiner finds,
Voisin teaches that the film can include a separate heat-sealable layer (Ans.
18, citing Voisin 4:20–24). Therefore, we agree with the Examiner that one
of ordinary skill in the art would have had a reasonable expectation of
success in heat sealing a receiving film, which consists of repeating units of
azelaic acid, terephthalic acid, and ethylene glycol, and a separate heat-
sealable layer, to Sankey’s covering film (Ans. 18). See also KSR Int’l Co.
Appeal 2018-008969
Application 12/092,642
10
v. Teleflex Inc., 550 U.S. 398, 418–19 (2007) (“[T]he analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ”).
Likewise, we are similarly unpersuaded by Appellants’ argument (ii)
because the Examiner finds Peiffer teaches that thermoformed shapes can be
used for the receiving film (Final Act. 7; see Peiffer Fig. 1). Moreover,
Appellants do not direct our attention to any disclosure in Voisin that
criticizes, discredits, or discourages thermoforming.
Appellants argue that Voisin’s self-venting composite polymeric film
does not teach or suggest that it may be thermoformed to provide a raised
outer portion and an indented central portion (Appeal Br. 11).  Appellants
further argue that Voisin’s self-supporting polyester film is used as a seal or
lid for a container (id.). Thus, Appellants contend that the self-venting
features in the food receiving portion of the package would be inherently
undesirable since any liquid or sauce in the ovenable food would leak from
the package (id.).
We are not persuaded by these arguments because Hayes teaches that
such ovenable films are thermoformable for forming a tray shaped receiving
film (Ans. 13, citing Hayes ¶¶ 6, 18, 19, 20, 64, 79). Furthermore, as set
forth above, Peiffer teaches that such thermoformed shapes as a raised outer
portion and an indented central portion can be used for the receiving film
(Peiffer Fig. 1).
With regard to Appellants’ assertion that Voisin’s vents would have
undesirably leaked, we agree with the Examiner that it would have been
within the level of the ordinarily skilled artisan to place these vents in
Appeal 2018-008969
Application 12/092,642
11
locations that allow the receiving film to contain food, while preventing
liquid leakage (Ans. 20). Moreover, the presently appealed claims do not
require the presence of liquid or sauce. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (explaining that “[m]any of appellant’s arguments fail from
the outset because . . . they are not based on limitations appearing in the
claims.”).
Appellants argue that there is no motivation from Hayes to exclude
isosorbide from Hayes’ thermoformable polyester receiving film, which
contains a copolyester derived from 2 mol% azelaic acid, terephthalic acid,
ethylene glycol, and isosorbide (Reply Br. 4). According to Appellants,
excluding isosorbide “would destroy Hayes’ invention” (id., citing Hayes
¶ 5). Appellants contend that “the skilled person would conclude . . . that
such biodegradable aliphatic-aromatic polyesters would not have been
considered for dual[-]ovenable trays” (Reply Br. 5 (citing Hayes ¶ 6)).
On the other hand, the Examiner finds that although
Hayes[] teaches that isosorbide can be included for improving
the biodegradability of the copolyester[,] . . . eliminating this
element and its function would have been obvious since
Sankey[] is not concerned with biodegradability . . . . Hayes
thus teaches isosorbide in the copolyester composition as an
improvement, thus establishing that receiving films of repeating
units of azelaic acid, terephthalic acid[,] and ethylene glycol
were conventional.
(Ans. 14 (citing Hayes ¶¶ 9–15; MPEP § 2144.04(II)(A)).
On this record, Appellants have not identified adequate support,
evidence, or facts that excluding isosorbide would render Hayes’ invention
inoperable. In other words, Appellants have not shown that one of ordinary
skill in the art would have believed that the presence of isosorbide affects the
thermoforming capabilities of thermoplastic polymeric materials in dual-
Appeal 2018-008969
Application 12/092,642
12
ovenable trays. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
(holding that arguments of counsel cannot take the place of evidence); In re
Payne, 606 F.2d 303, 315 (CCPA 1979)). Appellants’ arguments have thus
failed to find reversible error in the Examiner’s findings that receiving films
consisting of repeating units of azelaic acid, terephthalic acid, and ethylene
glycol were conventional.
For the reasons set forth above and in the Final Action and the
Answer, we sustain Rejections (I)–(IV).
CONCLUSION
We AFFIRM the rejection of claims 1–4, 12, 14, 17, and 19 under
35 U.S.C. § 103(a) as unpatentable over Sankey, in view of Voisin, Hayes,
Bell, and further in view of Peiffer.
We AFFIRM the rejection of claims 8 and 9 under 35 U.S.C. § 103(a)
as unpatentable over Sankey, in view of Fuller, and further in view of Suzuki.
We AFFIRM the rejection of claims 15, 16, and 20–23 under 35 U.S.C.
§ 103(a) as unpatentable over Sankey, in view of Swerlick, and further in view
of Della Bianca.
We AFFIRM the rejection of claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Sankey, in view of Hopkins, and further in view of
Dalgewicz.

Appeal 2018-008969
Application 12/092,642
13
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