Ex Parte BAER et al

Patent Trial and Appeal Board

Aug 22, 2018

12631964 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/631,964 12/07/2009 ERIC BAER
68705 7590 08/27/2018
TAROLLI, SUNDHEIM, COVELL & TUMMINO, LLP
1300 EAST NINTH STREET
SUITE 1700
CLEVELAND, OH 44114
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CWR-018770US ORD 2937
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
08/27/2018 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):
rkline@tarolli.com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC BAER and ANNE HILTNER 1
Appeal2017-002756
Application 12/631,964
Technology Center 1700
Before GEORGE C. BEST, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, 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, 3-5, 7-9, 11-13, 15, and 23-31. 2 We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
1 According to the Appellants, the real party in interest is Case W estem
Reserve University. App. Br. 2. The Specification states that "[t]he United
States government has certain rights in the invention." Spec. ,r 2.
2 The "Office Action Summary" attached to the Final Action dated January
25, 2016, does not list claims 27-31 as being subject to the Office Action.
However, claims 27-31 are substantively addressed in the Office Action,
e.g., Final Act. 5, 7, 9, and, in the Appeal Brief, the Appellants acknowledge
that those claims are subject to the Office Action. See App. Br. 2, 4 (listing
claims 27-31 as among the claims subject to the appeal).
Appeal2017-002756
Application 12/631,964
BACKGROUND
The subject matter on appeal relates to a multilayer film that includes
a confined crystallization layer. E.g., Spec. ,r 3; Claim 1. Claim 1 is
reproduced below from page 28 (Appendix A) of the Appeal Brief
(formatting added):
1. A multilayer film comprising
a first polymer layer coextruded with and confined between
second polymer layers,
the first polymer layer having a thickness under confinement
of the second polymer layers that provides the first polymer
layer with high aspect ratio substantially crystalline lamellae,
the crystalline lamellae having an aspect ratio of at least
about 5,
the multilayer film being-selective [sic] to the diffusion of gases
therethrough.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1, 3, 5, 7-9, 11, 13, 15, 24, and 27 under 35 U.S.C.
§ I02(b) as anticipated by Baer3 (US 2005/0105191 Al, published May 19,
2005);
2. Claims 4 and 12 under 35 U.S.C. § I03(a) as unpatentable over
Baer and Ohta (US 2005/0219683 Al, published Oct. 6, 2005);
3. Claims 23, 25, 26, 28, and 29 under 35 U.S.C. § I03(a) as
unpatentable over Baer and Wheatley (US 6,451,414 B 1, issued Sept. 17,
2002);
3 Both named inventors of the application subject to this appeal are named
inventors on the Baer prior art reference.
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Application 12/631,964
4. Claims 1, 3-5, 7-9, 11-13, 15, and 23-31 under 35 U.S.C.
§ 103(a) as unpatentable over Baer, VanPutte (US 5,429,874, issued July 4,
1995), andDasher(US 5,312,689, issued May 17, 1994). 4
ANALYSIS
As set forth below, we REVERSE as to Rejection 1, we AFFIRM as
to Rejections 2 and 3, and we AFFIRM-IN-PART as to Rejection 4.
Rejection 1
With respect to claim 1, the Examiner finds that Baer teaches a
multilayer film comprising a first polymer layer coextruded with and
confined between second polymer layers. Ans. 2. The Examiner finds that
Baer teaches a crystalline first polymer layer, and that Baer teaches a first
polymer layer having a thickness of from 5 nm to 1,000 µm. Id. The
Examiner acknowledges that Baer does not explicitly disclose high aspect
ratio crystalline lamellae, a specific aspect ratio of at least about 5, or
selective diffusion of gases. Id. The Examiner finds, however:
[G]iven that Baer et al. produces the multilayer film using
coextrusion process which is the same process used in the present
invention wherein the first polymer layer has a thickness
identical to that of the present invention and is confined between
second polymer layers identical to the present invention and
4 In the Final Rejection and Answer, the Examiner lists two separate
rejections involving Baer, VanPutte, and Dasher, and the claims subject to
the first stated rejection are fully encompassed by those subject to the second
stated rejection. Compare Ans. 6 ( claims 23, 25, 26, and 28-31 as
unpatentable over Baer, VanPutte, and Dasher), with Ans. 8 (claims 1, 3-5,
7-9, 11-13, 15, and 23-31 as unpatentable over Baer, VanPutte, and
Dasher). In the Appeal Brief, the Appellants treat the rejection over Baer,
VanPutte, and Dasher as a single ground of rejection. E.g., App. Br. 4. We
do the same in this Decision.
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Application 12/631,964
absent evidence to the contrary, it is clear that the first polymer
layer would inherently possess the high aspect ratio, substantially
crystalline lamellae, and gas impermeability as present [sic]
claimed.
Id. at 3. In view of those findings, the Examiner determines that claim 1 is
anticipated by Baer. Id. at 2-3.
The Appellants argue that the Examiner's findings regarding
inherency are not supported by the record because Baer teaches multiple
options for the thickness and identity of its first polymer, and at least some
of those options would result in a composition that does not inherently
possess the high aspect ratio lamellae of claim 1. See App. Br. 6-10; Reply
Br. 2-3.
The Appellants have identified reversible error in the anticipation
rejection of claim 1. Baer teaches a polymer layer thickness of from 5 nm to
1,000 µm. Baer ,r 41. The Appellants' Specification discloses a first
polymer layer thickness of "about 10 nm to about 500 nm" as "effective to
promote crystallization of the first polymer layer." Spec. ,r 10. The upper
end of Baer's thickness range is 2,000 times the upper end of the range
disclosed by the Specification (1,000 µm = 1,000,000 nm; 1,000,000 nm/
500 nm= 2,000). Thus, the Examiner's determination that Baer teaches that
"the first polymer layer has a thickness identical to that of the present
invention," see Ans. 3, such that it anticipates thicknesses that would have
been expected to inherently produce the claimed crystalline lamellae, is not
supported by the record.
The Examiner has provided no basis to believe that layer thicknesses
greater than the 500 nm disclosed by the Specification would inherently
yield the claimed crystalline lamellae. See Ans. 2-3. Although Baer' s
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disclosed thickness range fully encompasses the range disclosed by the
Specification as suitable for promoting crystallization, the difference
between the upper end ofBaer's range (1,000,000 nm) and the upper end of
the range disclosed by the Specification ( 500 nm) is large enough that Baer
cannot be said to "describe[] [ a range that would have been expected to
inherently yield the claimed crystalline lamellae] with sufficient specificity
to anticipate" claim 1. See, e.g., Atofina v. Great Lakes Chem. Corp., 441
F.3d 991, 999 (Fed. Cir. 2006) (reversing anticipation rejection where
claimed range was 330-450°C and prior art disclosed a range of 100-
5000C). Accordingly, we reverse the Examiner's anticipation rejection of
claim 1.
Because the Examiner relies on the same analysis in rejecting the
other claims subject to Rejection 1, we likewise reverse the Examiner's
anticipation rejection of claims 3, 5, 7-9, 11, 13, 15, 24, and 27 as set forth
in Rejection 1.
Rejection 2
Unlike Rejection 1, Rejection 2 is based on obviousness under
35 U.S.C. § 103(a). Although the Examiner states that "Baer et al. is relied
upon as disclosed above [in Rejection 1 ]," the Examiner's findings regarding
Baer are sufficient to support an obviousness rejection of claim 1. E.g.,
Ans. 2 (finding that Baer's disclosed thickness range "encompasses" the
range described by the Specification as promoting crystallization). Indeed,
in Rejection 4 the Examiner sets forth an obviousness rejection of, inter alia,
claim 1 based on primary reference Baer. We affirm that rejection below.
Although the Examiner's findings were not sufficient to sustain an
anticipation rejection based on Baer, the error identified in our discussion of
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Rejection 1 is harmless in the context of a rejection based on obviousness.
See infra Rejection 4. On appeal, the Appellants do not challenge the
Examiner's reliance on Ohta as teaching or suggesting the additional
limitations of claims 4 and 12 (subject to Rejection 2); nor do the Appellants
argue that a person of ordinary skill in the art would not have combined Baer
and Ohta as proposed by the Examiner. See App. Br. 23. Accordingly, on
this record, the Appellants have not identified reversible error in the
Examiner's obviousness rejection of claims 4 and 12.
Rejection 3
Like Rejection 2, Rejection 3 is based on obviousness under
35 U.S.C. § 103(a). Thus, as with Rejection 2, the error identified above in
our discussion of Rejection 1 is harmless in the context of a rejection based
on obviousness. See infra Rejection 4. Below we address the Appellants'
specific arguments directed to Rejection 3.
The Appellants present arguments with respect to claims 23 and 26,
and do not present distinct arguments for the other claims subject to
Rejection 3. We address claims 23 and 26 below. Claim 25 falls with
claim 1, see infra Rejection 4, from which it depends. Claim 28 falls with
claim 9, see infra Rejection 4, from which it depends. With respect to
independent claim 29, it is unclear why that claim was grouped with
Rejection 3 because it does not require the specific polymer materials or
melting point properties recited by claims 23, 25, 26, and 28. The
Appellants do not raise distinct arguments against the rejection of claim 29
in the context of Rejection 3; the Appellants, however, do raise distinct
arguments concerning claim 29 in the context of Rejection 4. Thus, we
address claim 29 below in our discussion of Rejection 4.
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Claims 23 and 26 depend from claims 1 and 9, respectively, and recite
"the second polymer layers being selected from the group consisting of
ethylene-co-acrylic acid and polyoxymethylene."
The Examiner finds that Baer does not teach the specific materials
recited by claims 23 and 26. However, the Examiner finds that Baer teaches
"the second polymer layers being polyethylene napthalate," and that
Wheatley "teaches a multilayer film comprising a second polymer layer of
polyethylene napthalate and polyoxymethylene." Ans. 4. The Examiner
determines:
Id.
Given that Wheatley et al. discloses the use of polyethylene
napthalate and polyoxymethylene as being interchangeable and,
thus, materials [sic] being equivalents, it would have been
obvious to one of ordinary skill in the art at the time of the
invention to substitute the polyethylene napthalate in the second
polymer layers of Baer et al. with polyoxymethylene as a matter
of substitution of equivalents known for the same purpose.
The Appellants argue that Baer is directed to GRIN lenses and that
Wheatley is directed to optical bodies for polarizers and/or mirrors, and that
a person of ordinary skill "would not look to the materials used to form the
polarizer/mirror of Wheatley because the materials in the Baer and Wheatley
[references] are intended for completely different purposes." App. Br. 23-
24; Reply Br. 7. The Appellants also argue that, because Baer lists "dozens
of suitable polymeric materials for the component (b )," and "Wheatley lists
dozens [if not hundreds] of suitable polymeric materials for the layers B,"
"[t]he number of possible permutations and substitutions ... is innumerable
and, thus, it is clear that specifically selecting POM [polyoxymethylene]
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from Wheatley to replace PEN [polyethylene napthalate] in Baer would
require undue experimentation." App. Br. 25.
Those arguments are not persuasive. Both Baer and Wheatley are
directed to optical components made of multilayer polymer compositions.
E.g., Baer at Abstract; Wheatley at Abstract. Both Baer and Wheatley teach
an alternating two-layer polymer structure. E.g., Baer ,r 41; Wheatley Fig. 2.
Both Baer and Wheatley teach that the alternating layers should have
different indices of refraction. E.g., Baer ,r 51; Wheatley at 5:7-10.
In the Appeal Brief, the Appellants do not persuasively dispute the
Examiner's determination that Wheatley describes polyethylene napthalate
and polyoxymethylene as interchangeable in the context of optical
multilayer polymer compositions, and the Appellants have not provided any
specific reason that a person of ordinary skill in the art would have
considered polyoxymethylene unsuitable in the context of Baer's optical
multilayer polymer composition. The mere fact that Baer and Wheatley are
not directed to precisely the same optical application, see App. Br. 23-24, is
not sufficient to show reversible error in the Examiner's reasoning. 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."); see also KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
3 98, 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 field, the combination must do more than
yield a predictable result.").
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In the Reply Brief, the Appellants argue that the Examiner has not
provided evidence that Wheatley's materials are interchangeable with Baer's
materials. Reply Br. 7. However, the relevant disclosures of Baer and
Wheatley include a significant number of overlapping polymers beyond
polyethylene napthalate. Compare Baer ,r 47, with Wheatley at 14:14--15:35
(both references disclosing polyethylene terephthalate, polybutylene
terephthalate, poly-1,4-cyclohexanedimethylene terephthalate, polyimides,
syndiotactic polystyrene, polycarbonates, etc.). And, as set forth above,
Baer and Wheatley include other relevant similarities, including an
alternating layer structure and a disclosure that alternating layers have
different indices of refraction. Absent evidence to the contrary, the
significant list of overlapping materials, particularly in view of the other
similarities between Baer and Wheatley, is sufficient to support the
Examiner's finding that a person of ordinary skill in the art reasonably
would have inferred that the materials are interchangeable, particularly in
view of the fact that both Baer and Wheatley concern multilayer films for
use in optical components. On this record, the Appellants have not shown
reversible error in the Examiner's determination that Wheatley reasonably
suggests the use of polyoxymethylene in Baer's composition because a
person of ordinary skill would have viewed it as interchangeable with
materials disclosed by Baer. See Jung, 637 F.3d at 1365.
Similarly, the mere fact that Baer and Wheatley each disclose
numerous polymers suitable for use as the second polymer layer, see App.
Br. 24--25, does not make any particular polymer choice less obvious. See
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
("That the [prior art] patent discloses a multitude of effective combinations
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does not render any particular formulation less obvious."). The Appellants'
argument concerning undue experimentation is not persuasive. See App.
Br. 25. Although the term "undue experimentation" typically arises in the
context of enablement, the Appellants have not argued that the prior art is
not enabled ( and, in any event, have not overcome the presumption of
enablement, see, e.g., In re Antor Media Corp., 689 F.3d 1282, 1287-88
(Fed. Cir. 2012)). In this case, any experimentation involved in the
combination proposed by the Examiner would be routine experimentation
specifically guided by the disclosures of the prior art and, thus, would not
amount to undue experimentation. See In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988) ("The test is not merely quantitative, since a considerable
amount of experimentation is permissible, if it is merely routine, or if the
specification in question provides a reasonable amount of guidance with
respect to the direction in which the experimentation should proceed .... ").
On this record, the Appellants' arguments do not persuade us that the
combination of Baer and Wheatley is improper. We affirm the Examiner's
rejection of claims 23, 25, 26, and 28.
Rejection 4
The Examiner's findings regarding Baer for purposes of Rejection 4,
which is based on obviousness under§ 103, are similar to the Examiner's
findings for purposes of Rejection 1. See Ans. 8-9. In particular, the
Examiner finds that Baer teaches a multilayer film comprising a first
polymer layer coextruded with and confined between second polymer layers.
Id. The Examiner finds that Baer teaches a crystalline first polymer layer,
and that Baer teaches a first polymer layer having a thickness of from 5 nm
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to 1,000 µm, "which encompasses the claimed range [ claim 5] of about 10
nm to about 500 nm." Id.
With respect to the use of specific polymers recited by claims 4, 12,
23, 26, 30, and 31, the Examiner finds that VanPutte "teaches a multilayer
film comprising a first polymer layer, wherein the first polymer layer
comprises polyethylene oxide." Id. at 9 (internal citations omitted). The
Examiner finds that a person of ordinary skill would have been motivated to
use PEO as the first polymer in Baer "to control tensile strength, bulk, and
abuse resistance." Id. The Examiner finds that Dasher "teaches a multilayer
film comprising a first polymer layer coextruded with a second polymer
layer, wherein the second polymer layer comprises ethylene co-acrylic acid."
Id. (internal citations omitted). The Examiner finds that a person of ordinary
skill would have been motivated to use ethylene-co-acrylic acid as the
second layer "in order to impart chemical resistance, better adhesion and
optical properties." Id.
The Examiner acknowledges that the combined prior art does not
expressly disclose certain limitations recited by the rejected claims, 5 but the
Examiner determines that compositions rendered obvious by the combined
prior art would "intrinsically possess" the claimed features and properties.
Id. at 10.
With respect to claim 29, which recites a "multilayer food packaging
film" in both the preamble and body of the claim, the Examiner finds that
the language is not limiting because it merely states the purpose or intended
use of the invention. Id. at 10-11.
5 Including limitations concerning crystalline lamellae, melting points, and
gas impermeability.
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In view of those and other determinations, the Examiner concludes
that the subject matter of claims 1, 3-5, 7-9, 11-13, 15, and 23-31 would
have been obvious to a person of ordinary skill in the art.
Claim 1. With respect to claim 1, the Appellants argue that
"VanPutte does not cure the deficiencies of Baer [ argued by the Appellants
in the context of Rejection 1 ], that a person of ordinary skill would not have
combined Baer and VanPutte, and that a person of ordinary skill in the art
would not have combined Baer and Dasher. App. Br. 14--19.
Although, as set forth below in the discussion of claim 4, we agree
with the Appellants that the Examiner has not adequately established that a
person of ordinary skill in the art would have had reason to combine Baer
and VanPutte, any error in the Examiner's rejection involving reliance on
V anPutte is harmless in the context of claim 1. Claim 1 does not require the
use of polyethylene oxide as the first polymer, for which the Examiner relies
on VanPutte. The Examiner finds that Baer itself discloses crystalline
polymers suitable for use as the first polymer layer of claim 1. E.g., Ans. 8-
9, 11 ("Baer does teach first polymer layer is formed from a crystallizable
material including polyethylenes, polypropylenes, polyamides, polyesters,
and polyvinylidene fluoride."). Thus, the Examiner's reliance on VanPutte
is unnecessary for the rejection of claim 1.
Baer teaches a multilayer polymer that "alternate[ s] between at least
two types [of polymer]: (A) and (B)." Baer ,r 41. Baer teaches that "[l]ayers
of type (A) are comprised of component (a) and layers of type (B) are
comprised of component (b )." Id. Baer discloses an embodiment in which
its composition is "prepared by multilayered coextrusion of the two
polymeric materials." Id. ,r 55. Baer teaches that components (a) and (b)
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"are polymeric materials, preferably thermoplastic polymeric materials, such
as glassy, crystalline or elastomeric materials." Id. Baer specifically teaches
that "[ s Jui table polymeric materials" include "polyethylene, polypropylene,
... polyvinylidene fluoride, ... [and] polyamides .... " Id. ,r 47. Baer
teaches that the "layers of the multilayered polymer composite film of the
present invention have a thickness in the range of from 5 nanometers (nm) to
1,000 micrometers (µm)." Id. ,r 41.
As set forth above, Baer expressly teaches not only the genus of
"crystalline" polymeric materials, but also several individual species of that
genus, including at least polyethylene, polypropylene, polyvinylidene
fluoride, and polyamides-several of the polymers specifically disclosed by
the Appellants' Specification as suitable first polymers. Compare Baer ,r 4 7,
with Spec. ,r 8.
Baer teaches layer thicknesses of 5 nm to 1,000 µm. Baer ,r 41. The
Appellants' Specification discloses that "[t]he first polymer layer can have a
thickness that is effective to promote crystallization of the first polymer
layer. For example, the first polymer layer can have an average thickness of
about 10 nm to about 500 nm." Spec. ,r 10. As recognized above in the
discussion of the anticipation analysis of Rejection 1, Baer's disclosed
thickness range fully encompasses, but is broader than, the range disclosed
by the Specification as promoting crystallization. However, "even a slight
overlap in range establishes a prima facie case of obviousness." See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
We recognize that, in the obviousness rejection set forth in Rejection
4 (as in the anticipation rejection set forth in Rejection 1), the Examiner
states that "the first polymer layer has a thickness ... identical to that of the
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present invention." Ans. 10. As set forth above in our discussion of
Rejection 1, the record does not support that finding. However, the error is
harmless in the context of the Examiner's obviousness rejection because,
although the thickness ranges are not identical, there is no dispute that the
range of the prior art fully encompasses the claimed range. While an
overlapping range may not be sufficient for anticipation in this case, it does
establish a prima facie case of obviousness. See Peterson, 315 F.3d at 1329.
Thus, given that (1) Baer discloses several of the same first polymer
materials disclosed by the Specification, and (2) Baer discloses a first
polymer thickness range that overlaps the range disclosed by the
Specification as suitable for promoting crystallization, Baer reasonably
teaches or suggests compositions for which both the identity and thickness
of the first polymer are the same as those disclosed by the Specification as
suitable for the invention.
In the Reply Brief, the Appellants concede that they are "not arguing
whether the claimed construction would be formed if the appropriate
materials and layer thickness were selected in Baer. Rather, the Appellant
contends that it would not be obvious ... to make the very specific material
and thickness selections in Baer." Reply Br. 3 (emphasis in original).
For the reasons set forth above, we disagree. Baer specifically
discloses the materials that the Appellants assert would not have been
obvious to select, and Baer specifically discloses a range of thicknesses that
overlaps the thickness that the Appellants assert would not have been
obvious to select. We agree with the Examiner that selection of such
materials and thicknesses would have been obvious in view of Baer's
disclosure of them. The Appellants do not dispute that, once such materials
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and thicknesses are selected, the crystalline lamellae, aspect ratio, and gas
diffusion limitations naturally flow from the composition. See id.; cf Ex
parte Obiaya, 227 USPQ 58, 60 (BP AI 1985) ("The fact that appellant has
recognized another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious."); In re Kubin, 561 F.3d 1351,
1357 (Fed. Cir. 2009) ("Even if no prior art of record explicitly discusses the
[limitation], [applicants'] application itself instructs that [the limitation] is
not an additional requirement imposed by the claims on the [ claimed
invention], but rather a property necessarily present in [the claimed
invention]."); cf also In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
("Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.").
In the context of Rejection 1, the Appellants also raise arguments
concerning crystallinity and transparency. See App. Br. 10-11. However,
those arguments constitute attorney argument unsupported by evidence, and
are entitled to little-if any-weight. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) ("Attorney's arguments in a brief cannot take the place
of evidence."). In the Answer, the Examiner specifically notes that those
arguments are not supported by evidence. E.g., Ans. 15, ,r,r 62---63. In the
Reply Brief, the Appellants provide no evidence or persuasive argument that
selecting crystalline materials in Baer would be undesirable due to concerns
regarding transparency. Reply Br. 3. On this record, the Appellants
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arguments concerning transparency are not persuasive of reversible error in
the Examiner's obviousness rejection.
Having carefully considered the arguments presented, we conclude
that the Appellants have not identified reversible error in the Examiner's
obviousness rejection of claim 1. Because the Appellants raise no distinct
arguments for claims 3, 5, 7-9, 11, 13, 15, 24, 25, 27, or 28, we likewise
conclude that the Appellants have not identified reversible error in the
Examiner's obviousness rejection of those claims.
Claim 4. Claim 4 depends from claim 1 and further requires that "the
first polymer layer be[] selected from the group consisting of polyethylene
oxide and polycaprolactone." Claim 12 includes the same limitation.
Claims 30 and 31 require the first polymer layer to comprise polyethylene
oxide.
As noted above, the Examiner finds that V anPutte "teaches a
multilayer film comprising a first polymer layer, wherein the first polymer
layer comprises polyethylene oxide." Ans. 9 (internal citations omitted).
The Examiner finds that a person of ordinary skill would have been
motivated to use PEO as the first polymer in Baer "in order to control tensile
strength, bulk, and abuse resistance." Id.
Essentially for reasons stated by the Appellants, see Ans. 15-18, the
Examiner's analysis does not persuasively establish that a person of ordinary
skill in the art would have been motivated to combine Baer and VanPutte.
In particular, unlike Baer, VanPutte is not directed to optical applications
and does not concern a two-layer polymer structure. The Examiner has not
adequately established that properties such as tensile strength, bulk, and/or
abuse resistance would have been desirable or present in the significantly
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different compositions of Baer. Accordingly, we reverse the Examiner's
rejection of claims 4, 12, 30, and 31.
Claim 23. Claim 23 depends from claim 1 and further requires that
"the second polymer layers being selected from the group consisting of
ethylene co-acrylic acid and polyoxymethylene." Claim 26 includes the
same limitation.
As noted above, the Examiner finds that Dasher "teaches a multilayer
film comprising a first polymer layer coextruded with a second polymer
layer, wherein the second polymer layer comprises ethylene co-acrylic acid."
Id. (internal citations omitted). The Examiner finds that a person of ordinary
skill would have been motivated to use ethylene-co-acrylic acid as the
second layer "in order to impart chemical resistance, better adhesion and
optical properties." Id.
The Appellants argue that a person of ordinary skill in the art would
not have been motivated by Dasher to use ethylene-co-acrylic acid as the
second layer of Baer. See App. Br. 17-18. However, the arguments are
largely directed to differences between Baer and Dasher without
persuasively explaining why those differences are indicative of error in the
stated rejection. See id. We recognize that Dasher's layer structure does not
fall within the scope of claim 1 and is not the same as Baer' s layer structure.
See App. Br. 18. The Examiner, however, does not rely on Dasher for the
claimed layer structure, and the Appellants do not dispute the Examiner's
finding that Dasher teaches that its ethylene-co-acrylic acid layer "impart[ s]
chemical resistance, better adhesion and optical properties." Ans. 9.
Notwithstanding the fact that Baer "does not employ an epoxy or experience
migration between Layers (A), (B)," and thus arguably does not need the
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chemical resistance described by Dasher, see App. Br. 18; Reply Br. 6, the
Appellants provide no reason that a person of ordinary skill would not have
found the other identified benefits-i.e., improved adhesion and improved
optical properties, see Dasher at 4: 18-20 ("A higher acrylic acid content will
give better adhesion and optical characteristics, but worse chemical barrier
performance."}-to be desirable in Baer. Unlike VanPutte, which is not
directed to optical applications, Dasher is directed to optical applications.
See generally Dasher (title: "Laminated ophthalmic lens"). On this record,
the Examiner's determination that a person of ordinary skill in the art would
have viewed as desirable in the GRIN lens of Baer the improved adhesion
and optical properties disclosed by Dasher is supported by the record. In
that regard, we note that the Appellants concede that both Baer and Dasher
describe optical uses for their disclosed multilayer polymer films. See App.
Br. 18.
Additionally, and contrary to the Appellants' arguments, the
Examiner's rejection does not propose the incorporation of a new layer (i.e.,
Dasher's barrier layer) into Baer's multilayer polymer composition. See
Reply Br. 6 ("the barrier layer 22 of Dasher has no purpose or function in
the GRIN lens of Baer"). Rather, the Examiner proposes the use of a
polymer ( ethylene-co-acrylic acid) known as suitable for use in optical
applications as the second polymer layer in Baer with the expectation that it
will provide improved adhesion and optical properties. See Ans. 9. The use
of a known element according to an established function typically does not
result in nonobvious subject matter. E.g., KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 416-21 (2007).
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The Appellants also argue that Dasher's ethylene-co-acrylic acid
might not "satisfy the required elastic modulus and refractive index criterion
of Baer." App. Br. 16, 18. However, as the Examiner explains, Ans. 16, the
Appellants do not persuasively identify a disclosure in Baer with specific
requirements related to elastic modulus or refractive index beyond a
requirement that there be "a difference in refractive index between the
polymeric components of the layers," Baer ,r 45; see also Baer ,r 51. The
Appellants have not alleged, much less provided evidence, that the ethylene-
co-acrylic acid proposed by the Examiner for use as the second polymer has
the same refractive index as materials taught by Baer for use as the first
polymer. Thus, we are not persuaded that concerns regarding elastic
modulus and refractive index would have dissuaded a person of ordinary
skill in the art from making the proposed combination. See Jung, 637 F.3d
at 1365.
As stated above with respect to claim 1, although the Examiner's
statement of the rejection purports to rely on VanPutte, the error in the
Examiner's reliance on VanPutte is harmless in the context of claims that do
not require the use of polyethylene oxide as the first polymer, including
claims 23 and 26. Accordingly, on this record, we are not persuaded of
reversible error in the Examiner's rejection of claims 23 and 26.
Claim 29. Claim 29 recites, inter alia, a "multilayer food packaging
film" and a "multilayer food packaging film for enclosing food." The
Appellants argue that, because claim 29 is limited to food packaging films,
and Baer, VanPutte, and Dasher do not disclose food packaging films, the
combination of those references does not render claim 29 unpatentable. Id.
at 21-22. The Appellants also state that "none of Baer, VanPutte, and
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Dasher teach or suggest a structure both capable of enclosing food and
which is selective to the diffusion of gasses therethrough." Id.
"It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable." In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). The body of claim 29
recites a structurally complete multilayer polymer composition. Although
the body also recites the intended use ("film for enclosing food"), the
Appellants do not persuasively explain how that claim recitation structurally
distinguishes the multilayer polymer composition of the combined prior art.
Although Baer discloses optical applications for its multilayer polymer
composition that may have hundreds or thousands of layers, Baer' s
disclosure is not limited to compositions comprising hundreds or thousands
of layers. Baer teaches, "[p ]referably, stacking 5 to 100,000 multilayered
polymer composite films will form a multilayered composite .... " Baer
,r 43. Baer teaches that each film "compris[ es] at least 10 alternating layers
(A) and (B)." Id. ,r 51. Even assuming that a multilayer polymer film
comprising thousands of layers may be structurally unsuitable for use as a
food packing film, there is no evidence of record that Baer's thinner films
would be structurally incapable of satisfying the intended use recited by
claim 29. See Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's
arguments in a brief cannot take the place of evidence."); cf Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990)
("[ A Jpparatus claims cover what a device is, not what a device does."
( emphasis in original)). Indeed, the Appellants' Specification discloses
embodiments having "1025 alternating layers," Spec. ,r 25, which is
significantly more than the minimum disclosed by Baer. See also Spec. ,r 41
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("The multilayer film of the present invention preferably have at least 3
layers, for example, at least about 30 layers, 50 layers, 100 layers, or 1000
layers, including any number of layers within that range."). Accordingly, we
are not persuaded that the intended use recited by claim 29 patentably
distinguishes the claimed composition from compositions taught or
suggested by Baer, alone or in combination with the other prior art of record.
As above, although the Examiner's statement of the rejection lists
VanPutte as part of the rejection of claim 29, the Examiner's reliance on
VanPutte is harmless because claim 29 does not require the use of
polyethylene oxide as the first polymer (nor, for that matter, does it require
the use of a specific second polymer).
CONCLUSION
We REVERSE the Examiner's rejection of claims 1, 3, 5, 7-9, 11, 13,
15, 24, and 27 under 35 U.S.C. § 102(b) as anticipated by Baer.
We AFFIRM the Examiner's rejection of claims 4 and 12 under 35
U.S.C. § 103(a) as unpatentable over Baer and Ohta.
We AFFIRM the Examiner's rejection of claims 23, 25, 26, and 28
under 35 U.S.C. § 103(a) as unpatentable over Baer and Wheatley.
We AFFIRM the Examiner's rejection of claims 1, 3, 5, 7-9, 11, 13,
15, and 23-29 under 35 U.S.C. § 103(a) as unpatentable over Baer,
VanPutte, and Dasher. We REVERSE the Examiner's rejection of claims 4,
12, 30, and 31 under 35 U.S.C. § 103(a) as unpatentable over Baer,
VanPutte, and Dasher.
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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-IN-PART
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