Detlef H¿tt

Patent Trials and Appeals Board

Nov 27, 2019

13575768 - (D) (P.T.A.B. Nov. 27, 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.
13/575,768 07/27/2012 Detlef Hütt 074004-0186-US (286049) 9530
123223 7590 11/27/2019
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
PLESZCZYNSKA, JOANNA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
11/27/2019 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DETLEF HÜTT
Appeal 2019-002721
Application 13/575,768
Technology Center 1700

Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
WESLEY B. DERRICK, Administrative Patent Judges.

FRANKLIN, 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 15, 17, 18, 21–24, and 31–35. 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 Treofan Germany
GmbH & Co. KG. Appeal Br. 2.
Appeal 2019-002721
Application 13/575,768

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CLAIMED SUBJECT MATTER
Claim 15 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
15. A transparent, multilayer, biaxially oriented polyolefin
film comprising a base layer and at least one matt outer cover
layer, wherein the outer cover layer consists essentially of two
incompatible polymers and a polydialkyl siloxane with a
viscosity from 150,000 to 400,000 mm2/s and has a surface
roughness of at least 2.0 μm with a cut-off of 25 μm, and the
surface of the matt outer cover layer has undergone corona
surface treatment and wherein the surface tension of the surface
of the outer cover layer is 37 to 50 mN/m after corona treatment
and the mixture of incompatible polymers consists essentially
of a propylene polymer and polyethylene polymer which is an
MDPE.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Murschall ’704 US 5,364,704 Nov. 15, 1994
Murschall ’820 US 5,474,820 Dec. 12, 1995
Cretekos US 6,472,077 B1 Oct. 29, 2002
Ambroise US 2004/0023052 A1 Feb. 5, 2004
REJECTIONS
1. Claims 15, 17, 18, 21, 22, 24, and 31–35 are rejected under
preAIA 35 U.S.C. § 103(a) as being unpatentable over Murschall ’820 in
view of Murschall ’704 and Ambroise.
2. Claim 23 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Murschall ’820 in view of Murschall ’704 and Ambroise,
and further in view of Cretekos.
Appeal 2019-002721
Application 13/575,768

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OPINION
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
of record supports Appellant’s position. We thus reverse the Examiner’s
decision to reject the appealed claims essentially for the reasons provided by
Appellant, and add the following for emphasis, in which we focus on the
dispositive issue in this case involving the claim element of the polyethylene
polymer being an MDPE.
Appellant’s claim 15 requires, inter alia, that the polyethylene
polymer is an MDPE, as Appellant discusses on pages 15–16 of the Appeal
Brief. Therein, Appellant argues that this feature is not mentioned in the
description of the invention of Murschall ’820. Appellant explains that
although Murschall ’820 mentions MDPE and HDPE in the background art,
Murschall ’820 does not mention the use of MDPE in making its subject
invention. Appeal Br. 16. Appellant argues that Murschall ’820 relates to
tertiary mixtures of incompatible polymers, namely highly crystalline iPP
homopolymer, highly crystalline polyethylene (PE) (high density
polyethylene (HDPE)), and at best semicrystalline copolymer or terpolymer.
Appeal Br. 15.
Appellant also argues that Murschall ’704 similarly mentions MDPE
and HDPE in the background art (as in Murschall ’820), but Murschall ’704
does not mention the use of MDPE in the description of its invention.
Appeal Br. 16–17.
Appellant thus submits that Murschall ’820 and Murschall ’704 teach
the importance of using HDPE in the composition of the respective
Appeal 2019-002721
Application 13/575,768

4
inventions. Appeal Br. 17. Appellant also submits that therefore MDPE and
HDPE are not recognized as equivalent in such compositions. Appeal Br.
16.
On the other hand, it is the Examiner’s position that the
Ambroise reference indicates that HDPE and MDPE are
interchangeable in multilayered thermoplastic oriented films. Ans. 4,
5, and 11. However, we find that the preponderance of evidence
supports Appellant’s position in the record. We agree with Appellant,
for the reasons stated in the record, that Murschall ’820 and Murschall
’704 indicate, at least for the purposes of the respective inventions
therein, that MDPE is not used, whereas HDPE is used, and thus not
interchangeable, contrary to the Examiner’s stated position. As such,
there is no apparent reason to employ MDPE in place of HDPE as
proposed by the Examiner. Setting forth a prima facie case of
obviousness requires establishing that the applied prior art would have
provided one of ordinary skill in the art with an apparent reason to
modify the prior art to arrive at the claimed invention. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[O]bviousness
concerns whether a skilled artisan not only could have made but
would have been motivated to make the combinations or modifications
of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-
Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).
On this record, the Examiner’s proposed modification appears
to be premised on an impermissible use of hindsight after review of
Appellants’ disclosure rather than on a supported reason to modify
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Application 13/575,768

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Murschall ’820 available to an ordinarily skilled artisan at the time of
the invention and consistent with the teachings thereof. KSR, 550
U.S. at 421 (The fact finder must be aware “of the distortion caused
by hindsight bias and must be cautious of arguments reliant upon ex
post reasoning”; citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966) (warning against a “temptation to read into the prior art the
teachings of the invention in issue”)).
In view of the above, we reverse Rejection 1. We also reverse
Rejection 2 as the Examiner does not rely upon the additional reference to
cure the stated deficiencies of the combination applied in Rejection 1.
CONCLUSION
We reverse the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15, 17, 18,
21, 22, 24,
31–35
103(a) Murschall ’820,
Murschall ’704,
Ambroise
15, 17, 18,
21, 22, 24,
31–35
23 103(a) Murschall ’820,
Murschall ’704,
Ambroise, Cretekos
23
Overall
Outcome
15, 17, 18,
21–24, 31–
35

REVERSED