Dow Global Technologies LLC

Patent Trials and Appeals Board

Jan 12, 2021

2019006279 (P.T.A.B. Jan. 12, 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.
14/183,954 02/19/2014 Yushan Hu 75327-US-NP
(DC150002US)
6816
14268 7590 01/12/2021
The Dow Chemical Company/Cantor Colburn LLP
20 Church Street
22nd Floor
Hartford, CT 06103-3207
EXAMINER
SHAH, SAMIR
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
01/12/2021 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):
ffuimpc@dow.com
usptopatentmail@CantorColburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUSHAN HU, RAJEN M. PATEL,
GARY R. MARCHAND, SHARON L. BAKER,
CHRISTOPHER I. GANDY, and LORI L. KARDOS1
____________

Appeal 2019-006279
Application 14/183,954
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, CHRISTOPHER C. KENNEDY, and
JANE E. INGLESE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Dow
Global Technologies LLC. Appeal Br. 2.
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Application 14/183,954

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BACKGROUND
The subject matter on appeal relates to multilayered polyolefin films.
E.g., Spec. ¶ 1; Claim 1. Claim 1 is reproduced below from page 12 (Claims
Appendix) of the Appeal Brief:
1. A multilayer film comprising:
two outer layers; where each outer layer comprises polyethylene;
two tie layers; where each tie layer comprises 50 weight percent
to 100 weight percent of a crystalline block copolymer
composite; where each tie layer has a first face and a second face
that are opposed to each other, and where the first face of each
tie layer contacts at least one outer layer; and
a core layer; where the core layer comprises a polypropylene;
and where the second face of each tie layer contacts the core
layer.
ANALYSIS
Claims 1–15 stand rejected under 35 U.S.C. § 103 as unpatentable
over Saavedra (US 2006/0057410 A1, published Mar. 16, 2006) and Liang
(WO 2012-044732; the Examiner relies on US 2013/0177720 A1, published
July 11, 2013, as an English-language equivalent).2
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejection.
Accordingly, we affirm the rejection for reasons set forth below, in the Final
Action dated October 10, 2018, and in the Examiner’s Answer.

2 The Final Action included an obviousness-type double patenting rejecting,
see Final Act. 2, which is moot in view of the terminal disclaimer filed
December 10, 2018.
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As to claim 1, the Examiner finds that Saavedra discloses multilayer
films comprising outer layers, intermediate (tie) layers, and a core layer as
recited by claim 1. Final Act. 4–5. The Examiner finds that Saavedra does
not specifically disclose that its intermediate (tie) layers comprise 50–100
wt% crystalline block copolymer composite, as recited by claim 1. Id. at 5.
The Examiner finds that Liang discloses polymeric compositions for
use as layers in polymer films, and that Liang’s composition includes a
crystalline block copolymer composite within the scope of claim 1. Id. The
Examiner finds that a person of ordinary skill in the art would have used
Liang’s composition as the intermediate layer of Saavedra to achieve low
heat seal initiation temperatures and strong/high hot tack strength. Id. The
Examiner also finds that Liang discloses that the amount of crystalline block
copolymer composite in its composition is a result-effective variable, and
that a person of ordinary skill in the art would have optimized the amounts
of each component in Liang’s composition—including crystalline block
copolymer composite—to achieve desired results. Id. at 5–6.
In view of those and other findings less relevant to the issues raised by
the Appellant, the Examiner concludes that the subject matter of claim 1
would have been obvious to a person of ordinary skill in the art.
Relying on what Liang describes as a “multi-layer film,” Liang ¶ 140,
the Appellant argues that Liang’s “layer including the CBC [crystalline
block copolymer] is an outer sealant layer, and therefore not an
intermediate/tie layer.” Appeal Br. 4. The Appellant also argues that a
person of ordinary skill in the art would not have been motivated to use
Liang’s composition as Saavedra’s intermediate layer. Id. at 6–8.
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Those arguments are not persuasive of reversible error. Liang teaches
at least two embodiments, one of which is the “multi-layer” embodiment
relied on by the Appellant in which the CBC is included in one of three
layers. See Liang ¶¶ 140–151. Even accepting that, in that particular
embodiment, the CBC is included only in an outer layer, Liang also teaches
a “film” that “can be a monolayer film” that includes CBC, see id. ¶¶ 127–
138, and it teaches use of its composition as “a film (or a film layer),” id. ¶ 5
(emphasis added). The Appellant does not persuasively address that
embodiment or identify any description of Liang’s monolayer film as being
limited to an outer film layer or otherwise limited in a way that would make
it unsuitable for use as the intermediate layer in Saavedra’s multilayer
composition. The fact that, in certain embodiments, e.g., Liang ¶ 151, CBC
is included in an outer layer does not show that a person of ordinary skill in
the art would have understood that layers including CBC could be used only
in outer layers. The Examiner’s finding that a person of ordinary skill in the
art would have understood that Liang teaches or suggests the use of its
composition as a layer in multilayer films, e.g., Ans. 3, is supported by
Liang’s disclosure that its composition may be “formed into a film (or a film
layer),” without limiting its use to outer layers. See Liang ¶ 5.
The Appellant does not persuasively dispute the Examiner’s findings
that “Saavedra broadly discloses [that its] intermediate layers may be
sandwiched between layers,” and that “[t]here is nothing in Saavedra that
specifically requires intermediate[] layers to be a tie layer or any specific
type of layers.” Ans. 7. Saavedra discloses films with “high optical
properties, high stiffness and desirable shrinkage.” Saavedra at Abstr. In its
examples, Saavedra describes a polymer “having good gloss and clarity” and
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“low seal initiation temperature” as a suitable component for its films. Id.
¶ 40. Saavedra’s description of its intermediate layer is broad, requiring that
it “comprise[] at least one of” a particular component, which may be a
polyethylene. Id. ¶ 28.
Liang describes its composition as having “low heat seal initiation
temperature,” “strong hot tack strength,” and “high hot tack strength.”
Liang ¶ 5. Liang also states that its film “has desirable optical properties:
low haze and high clarity.” Id. ¶ 135. There is no apparent dispute that
Liang’s composition includes components (e.g., ethylenes) that fall within
the scope of Saavedra’s disclosure of what is required for Saavedra’s
intermediate layers. Compare Saavedra ¶ 28, with Liang ¶¶ 7–12.
We understand the Examiner’s proposal of using Liang’s composition
as the intermediate layer of Saavedra to be the use of a known element (i.e.,
Liang’s film comprising CBC) according to its established function (layer in
a multilayer polymer film). Particularly given that Saavedra and Liang
disclose similar desirable properties (e.g., low heat seal initiation
temperature and optical clarity), and that Saavedra is not particularly
limiting of the composition used for its intermediate layer, we discern no
persuasive basis to reject the Examiner’s findings that a person of ordinary
skill would have understood Liang’s composition to be suitable for use as
Saavedra’s intermediate layer, and would have been motivated to use it as
such. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416–21 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”); see also id. at
416 (“[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
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field, the combination must do more than yield a predictable result.”). We
also observe that, even accepting the Appellant’s argument that Liang’s
reference to “hot tack” refers to adhesion “between two sheets immediately
after a seal has been made,” Appeal Br. 8, the hot tack property of Liang’s
composition would appear to be relevant to and desirable in multilayer films
such as those of Saavedra. See KSR, 550 U.S. at 421 (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”).
The Appellant argues that use of Liang’s composition as Saavedra’s
intermediate layer would result in delamination, “render[ing] the film of
Saavedra inoperable for its intended purpose.” Appeal Br. 7. That argument
is unpersuasive because it is not supported by evidence or adequate technical
explanation as to why a person of ordinary skill in the art would have
expected the proposed combination to result in delamination. See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”).
On this record, we are not persuaded of reversible error in the
Examiner’s determination that a person of ordinary skill in the art would
have had reason to use Liang’s composition as the intermediate layer of
Saavedra.
The Appellant also argues that Liang teaches a maximum of 30 wt%
of CBC in its composition, which falls beyond the scope of the claimed
range of 50–100 wt%. Appeal Br. 4–6. That argument is not persuasive
because Liang repeatedly discloses the components of composition without
providing limitation as to the amount of each component. E.g., Liang ¶¶ 6–
12, 14–20. That preferred embodiments, e.g., id. ¶ 51, include 1–30 wt% of
the component including CBC, does not negate Liang’s broader disclosures.
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Cf. In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“[A] reference is not
limited to the disclosure of specific working examples.”).
Moreover, we discern no reversible error in the Examiner’s
determination that the amounts of each component in Liang’s composition
are result-effective variables known to affect the properties of the
composition, and that optimization reasonably would have led to values
falling within the scope of claim 1. Final Act. 5. A person of ordinary skill
in the art would have understood from Liang’s broad disclosures concerning
the amounts of each component present in its composition, e.g., Liang ¶¶ 6–
12, 14–20, 51, that selection of optimum concentrations of each component
in order to obtain desired results was within the ordinary level of skill in the
art. Indeed, the Appellant recognizes that Table 6 of Liang shows that
varying the amounts of the ingredients affects the properties of the
composition. Appeal Br. 6. “A recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-effective.” In
re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
Particularly in the absence of arguments concerning criticality and
unexpected results, we are not persuaded of reversible error in the
Examiner’s rejection on the basis of the Appellant’s argument that the prior
art does not disclose that CBC content is a result-effective variable. See In
re Aller, 220 F.2d 454, 456 (CCPA 1955) (“Normally, it is to be expected
that a change in temperature, or in concentration, or in both, would be an
unpatentable modification.”); Applied Materials, 692 F.3d at 1295 (Fed. Cir.
2012) (“Discovery of an optimum value of a result effective variable . . . is
ordinarily within the skill of the art.”).
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We have carefully considered the Appellant’s arguments as to
claim 1, and we not persuaded of reversible error in the Examiner’s
rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner’s rejections . . . .”).
The Appellant presents no separate arguments as to claims 2–7, 10,
11, or 15. Consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv),
those claims fall with claim 1. Although the Appellant includes separate
section headers in the Appeal Brief for claims 8, 9, and 12–14, the
Appellant’s arguments concerning those claim hinge on the argument
discussed above concerning the use of Liang’s composition as Saavedra’s
intermediate layers. See Appeal Br. 9–10. Because we find that argument to
be unpersuasive above, we likewise find the Appellant’s arguments
concerning claims 8, 9, and 12–14 to be unpersuasive. We affirm the
Examiner’s rejection of claims 2–15.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § References Affirmed Reversed
1–15 103 Saavedra, Liang 1–15
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED