Ex Parte Barre et al

Board of Patent Appeals and Interferences

Oct 30, 2008

10838513 (B.P.A.I. Oct. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte VINCENT HERI BARRE, JEFF NAIM,
MICHAEL ALLEN McLEOD and LAYNE LUMAS
____________________

Appeal 2008-5897
Application 10/813,513
U.S. Patent Publication 2005/0249900
Technology Center 1700
____________________

Decided: October 30, 2008
____________________

Before: FRED E. McKELVEY, Senior Administrative Patent Judge,
and RICHARD E. SCHAFER and JAMES T. MOORE, Administrative
Patent Judges.

McKELVEY, Senior Administrative Patent Judge.

DECISION ON APPEAL

A. Statement of the case 1
Fina Technology Inc. ("Fina"), the real party in interest, seeks review 2
under 35 U.S.C. § 134(a) of a final rejection of claims 2-12, 15-19 and 24-27 3

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as being unpatentable (1) over the prior art, (2) for failure to comply with the 1
written description requirement and (3) as being indefinite. 2
In view of our disposition of the appeal, it is not necessary to list or 3
otherwise discuss the prior art. 4
We have jurisdiction under 35 U.S.C. § 6(b). 5
We affirm the written description and indefinite rejections. 6
B. Findings of fact 7
The following findings of fact are believed to be supported by a 8
preponderance of the evidence. References to the specification are to U.S. 9
Patent Publication 2005/0249900. To the extent that a finding of fact is a 10
conclusion of law, it may be treated as such. Additional findings as 11
necessary may appear in the Discussion portion of the opinion. 12
The invention 13
The present invention relates to molded polymer articles and methods 14
of making same. Specification, ¶ 0002. 15
The polymer article of the Fina invention includes (1) an injection 16
molded substrate and, adherent thereto, (2) a polymer film. The injection 17
molded substrate is prepared using a polymer selected so that adhesion 18
occurs with the film under injection molding temperature and pressure 19
conditions. The polymer used to prepare the substrate is also selected to 20
have the physical properties necessary to meet the specifications of the 21
items being molded. For example, if the object being molded is a milk jug, 22
the polymer used to prepare the milk jug must have the dimensional 23
stability, impact resistance, and cold temperature fracture resistance to be 24
useful for preparing a milk jug. Specification, ¶ 0024. 25

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The polymer film of the method of the Fina invention is selected to be 1
thermally bonded to the injection molded substrate under injection molding 2
temperature and pressure conditions. According to Fina, thermally bonding 3
(or heat sealing) is a process wherein two materials are brought together at 4
a temperature wherein one or both of the materials become tacky and 5
adhere one to another. Further according to Fina, the bond between the two 6
materials generally strengthened when the temperature of the two materials 7
is lowered. The polymer film is also selected to impart some desirable 8
property to surface of the injection molded substrate. For example, 9
it may be necessary to further attach a label to the injection molded 10
substrate and it may be desirable to use heat sealing to do so. A polymer 11
film could be selected that would facilitate such a subsequent heat sealing. 12
For example, the present invention can be used with film laminates such as 13
FLUOREX® Exterior film laminates that are said to be described at: 14
http://www.paintfilm.com/pdf/techhowto.pdf 15
Specification, ¶ 0025.1 16
The pairing of the polymers used to prepare the injection molded 17
substrate and the polymer film of the present invention can be done by 18
taking into consideration the compatibility of the two polymers. For 19
example, a polypropylene is more likely to be compatible with another 20
polypropylene than a very different polymer such as, for example, 21

1 We have not found it necessary to consult this internet site, or any other
internet site mentioned in the specification. Accordingly, we have no
occasion to determine whether the internet site today is the same as the
internet site on the day Fina filed its application, i.e., 4 May 2004.

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polystyrene. It is therefore one embodiment of the Fina invention to use 1
similar, or compatible, polymers types to prepare both the injection molded 2
substrate and the polymer film of the present invention. Specification, 3
¶ 0026. 4
The polymers used to prepare the polymer films and inserts of the 5
present invention are selected so that they will impart a desirable property 6
to the injection molded object, namely providing a surface that can make a 7
good heat seal. A good heat seal means that the material has a low heat seal 8
initiation temperature as determined using ASTM F88. Or stated another 9
way, the polymer films and inserts of the present invention are said to have 10
a lower heat seal initiation temperature than the substrates upon which they 11
are bound. Specification, ¶ 0027. 12
Four figures accompany the specification. 13
Fig. 1 is said to be a photograph of an injection molded part of the 14
Fina invention. Specification, ¶ 0013. 15
Fig. 2 is said to be a photograph of an injection molded plaque of the 16
Fina invention including a label. Specification, ¶ 0014. 17
Fig. 3 is said to be a graph of the maximum seal force as a function of 18
temperature for an example of the present invention and a comparative 19
example. Specification, ¶ 0015. 20
Fig. 4 is said to be a photograph of a blow molded bottle of the Fina 21
invention. Specification, ¶ 0016. 22

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We pause at this point to note that Figs. 1-2 and 4 as they appear in 1
the official USPTO IFW record2 of the application on appeal are unclear. 2
Fig. 3, which becomes important in view of arguments on appeal 3
made by Fina, is also somewhat unclear. We have taken Fig. 3, as it 4
appears in the IFW record, and tried our best to make a "readable" version 5
of Fig. 3. Our version, and not that of the IFW record, is reproduced below. 6
7
Fig. 3 shows seal force data as a function of temperature 8
for both a Fina article and a comparison article 9
10

2 The IFW [image file wrapper] is the official file for all purposes.
Notification of United States Patent and Trademark Office Patent
Applications Records, being Stored and Processed in Electronic Form,
1271 Off. Gaz. Pat. & Tm Office 100 (17 June 2003).

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As best we can tell the data in Fig. 3 comes from Example 4 and 1
Comparative Example II. 2
Example 1 3
A plaque having a polymer film heat sealed to one side is prepared by 4
preparing a 2 mil (50.8 micrometres) film using a syndiotactic 5
polypropylene random copolymer having a melting point of 130 ºC. and a 6
melt flow rate of 4.1 g/10 minutes commercially available from ATOFINA 7
under the trade designation FINAPLAS 1471. The film is cut to fit a food 8
container mold and a 50 mil (1270 micrometres) plaque cavity. The film is 9
set onto the mold at the opposite from the injection port. The cavities are 10
then filled using injection molding with a random copolymer polypropylene 11
having a melt flow rate of 30 g/10 minutes sold under the trade designation 12
7823 MZ by ATOFINA. The resultant food lid is displayed in the photo 13
designated FIG. 1 [not reproduced]. Note that the film covers the inside of 14
the sealing lip of the food container lid. The plaque is tested for certain 15
physical properties and the results are displayed below in Table 1 [not 16
reproduced herein]. Specification, ¶ 0041. 17
Example 4 18
Example 1 is repeated substantially identically except that the 19
polymer film used is EOD 02-15j, a metallocene random polypropylene 20
copolymer and the mold is filled with 7622MZ, both available from 21
ATOFINA. The resulting plaque is tested for heat seal properties when 22
heat sealed with EOD 02-16j and is displayed below in Table 2 [reproduced 23
in part below]. The trace of the heat seal test is displayed in the graph 24
found in Fig. 3. Specification, ¶ 0045. 25

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Comparative Example II 1
Example 4 is repeated substantially identically except that no film is 2
used. The resulting plaque is tested for heat seal properties when heat 3
sealed with EOD 02-16j and is displayed below in Table 2. The trace of the 4
heat seal test is displayed in the graph found in Fig. 3. Specification, 5
¶ 0046. 6
Table 2 7
8
Heat Seal Comparative 9
properties Example 4 Example II 10
11
Avg. 12
Force 107.3 122.5 13
Seal Initiation 14
Temperature @ 1.83 N/cm 15
ASTM-F88 16
17
Specification, ¶ 0050. 18
Claims on appeal 19
The claims on appeal are (1) independent claim 24 and (2) dependent 20
claims 2-12, 15-19 and 25-27. 21
Independent claim 24, which we reproduce from the claim appendix 22
of the Appeal Brief, reads [matter in brackets and some indentation added]: 23
An injection molded article comprising: 24
[1] an injection molded substrate; and 25
[2] a polymer film comprising: 26
[a] a first surface and 27
[b] a second surface, 28

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wherein: 1
[i] the first surface is adhered to at least a first 2
portion of the injection molded substrate and 3
[ii] the second surface is adapted to adhere to a 4
second article at a heat seal initiation temperature that is less 5
that about 115 ºC. 6
Other claims are discussed later in this opinion, as needed. 7
C. Discussion 8
Examiner’s § 112 rejections 9
(1) 10
The examiner rejected claim 24 for failure to comply with the written 11
description requirement, 35 U.S.C. § 112, first paragraph. Examiner's 12
Answer, page 3. 13
Whether a specification adequately describes claimed subject matter is 14
a question of fact. In re Alton, 76 F.3d 1168, 1171-72 (Fed. Cir. 1996); In re 15
DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). 16
The examiner found that claim 24 contains a limitation added by 17
amendment to the original claims as follows: "a heat seal initiation 18
temperature that is less that about 115 ºC." Examiner's Answer, page 3. 19
The examiner was unable to find any support for the limitation added 20
by amendment. Examiner's Answer, page 3. 21
Since the examiner could not find any necessary support for the 22
limitation added by amendment, the examiner did the only thing reasonable 23
under the circumstances—pointed out the nonexistence of the limitation in 24

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the application as filed. Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 1
2007). 2
The dependent claims stand or fall with independent claim 24 since 3
the limitation in question applies to all claims. 4
How does Fina respond? 5
First, Fina says that Fig. 4 illustrates the maximum seal force of each 6
sample and a corresponding temperature. Appeal Brief, page 5. Second, 7
Fina further says in the Appeal Brief that "[a]s known to one skilled in the 8
art and recited in Figure 2, the seal initiation temperature is a seal force of 9
1.93 N/cm." Id. Third, Fina still further says that "[a] heat seal initiation 10
temperature of less that about 115 ºC is further supported by the Examples 11
[Example 4 and Comparative Examiner II] which state that a trace [of seal 12
force as a function of temperature] is shown in Fig. 3. Id. 13
The examiner was not impressed with Fina's arguments. The 14
examiner correctly points out that Fig. 4 "does not disclose anything with 15
regard to a maximum seal force." Examiner's Answer, page 13. Fig. 4, as 16
the examiner notes, shows a photograph of a blow-molded bottle. Id. As we 17
have noted earlier, it is hard to tell from the official PTO record what Fig. 4 18
shows. The examiner could have stopped with Fina's Fig. 4 argument. 19
Commendably, however, the examiner reached the merits and determined 20
that what Fina probably meant was Fig. 3. The examiner noted that Fig. 3 21
"shows a graph of the maximum seal force of each sample and the 22
corresponding temperature, but does not give any correlation between the 23
force and heat seal force initiation temperatures." Examiner's Answer, 24
page 13. Fina utterly fails to explain why the examiner is wrong. We note 25

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that there is an incomplete sentence in the Answer: "Also, it is unclear from 1
the graph …." Id. We need not speculate how the examiner intended to 2
complete the sentence, because it does not matter. 3
In its Reply Brief, Fina asserts that "the correlation is known to one 4
skilled in the art. In particular, the temperature required to activate the heat 5
sealable initiation temperature is defined as the minimum temperature for 6
1.94 lb/in seal strength. See examples." Reply Brief, page 3. We find no 7
reference in any example to "1.94 lb/in." Fina's "evidence" is nothing more 8
than an argument of counsel and we decline, as did the examiner, to give any 9
weight to counsel's unsupported argument. 10
(2) 11
Claim 24 refers to a "second article." 12
Claim 25 reads: 13
The article of claim 24 wherein the second article 14
comprises a second portion of the injection molded substrate. 15
The examiner with good reason was totally confused about the 16
meaning of "second article." Examiner's Answer, page 4. At the outset, it is 17
facially apparent that there is no antecedent in claim 24 of "the second 18
article." In fact, insofar as we can tell the phrase "second article" did not 19
appear in the specification as filed. The examiner goes on to say that it is 20
unclear from the language of claim 24 (or for that matter claim 25) how the 21
"second article" is a "second portion" of the substrate. The examiner 22
reasonably asks "How can both the first and second surfaces of the polymer 23
film be adhered to the same article?" What is Fina's response? According to 24
Fina, the "second portion" (a phrase which does not appear in the 25

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specification as filed) can be the second surface when the injection molded 1
article is a "case" (a word which does not appear in the specification as 2
filed). Fina's response is not convincing. 3
Other rejections 4
The examiner made § 102 rejections, § 103 rejections and other § 112 5
rejections. We find it unnecessary to reach or discuss those rejections. 6
Fina's other arguments 7
We have considered Fina's remaining arguments related to the § 112 8
rejections which we affirm. We find none of those other arguments warrant 9
reversal. Cf. Hartman v. Nicholson, 483 F.3d 1311, 1315 (Fed. Cir. 2007). 10
D. Decision 11
Appellant has not sustained its burden on appeal of showing that the 12
examiner erred in rejecting the claims on appeal as being unpatentable under 13
§ 112. 14
Upon consideration of the appeal, and for the reasons given herein, 15
it is 16
ORDERED that the decision of the Examiner rejecting all the 17
claims for failure to comply with first and second paragraph 35 U.S.C. § 112 18
is affirmed. 19
FURTHER ORDERED that no time period for taking any 20
subsequent action in connection with this appeal may be extended under 21
37 C.F.R. § 1.136(a)(1)(iv) (2008). 22

AFFIRMED

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