Ex parte BAX et al.

Board of Patent Appeals and Interferences

May 8, 2000

08357487 (B.P.A.I. May. 8, 2000)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte SERGE BAX, PAOLO CIOCCA
and EDWARD L. MUMPOWER
________________
Appeal No. 1997-3520
Application No. 08/357,487
________________
ON BRIEF
________________
Before KIMLIN, PAK and LIEBERMAN, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-7,
13 and 14. Claims 8-12, the other claims remaining in the
present application, stand withdrawn from consideration as
Appeal No. 1997-3520
Application No. 08/357,487
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being directed to a non-elected invention. Claim 1 is
illustrative:
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1. A heat-shrinkable film comprising:
a) a core layer comprising an ethylene-vinyl alcohol
copolymer;
b) two outer layers comprising a blend of ethylene-vinyl
acetate copolymer and ethylene-"-olefin copolymer; and
c) two adhesive layers,
wherein said film has
i) a free shrink of at least 40% in both directions
at 120EC and
ii) a maximum shrink force in the transverse
direction, throughout its range of shrink
temperatures, not exceeding 0.5 N/cm.
The examiner relies upon the following references as
evidence of obviousness:
Bornstein et al. (Bornstein) 4,064,296 Dec. 20, 1977
Newsome (Newsome '960) 4,457,960 Jul. 3, 1984
Newsome (Newsome '897) 0,092,897 Feb. 11, 1983
(European patent application)
Appellants' claimed invention is directed to a heat-
shrinkable film comprising a copolymeric core layer, and two
adhesive layers bonding the core layer to two outer layers of
a blend of copolymers. The film has a free shrink of at least
40% in both directions at 120EC and a maximum shrink force in
the transverse direction that does not exceed 0.5 N/cm.
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Application No. 08/357,487
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According to appellants, heat-shrinkable films having a
maximum shrink force
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Application No. 08/357,487
Newsome '897 is equivalent in disclosure to Newsome1
'960.
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in excess of 0.5 N/cm can lead to a severe distortion of a
food-carrying tray and "even render the package unfit for
commercial use" (page 7 of Brief). Appellants' heat-
shrinkable film possessing the claimed maximum shrink force
"is obtained by submitting the film, after orientation, to a
subsequent heat treatment" (page 8 of Brief).
Appealed claims 1-7, 13 and 14 stand rejected under
35 U.S.C. § 112, second paragraph. The appealed claims also
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Newsome '897 or Newsome '960 in view of Bornstein.1
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain either of the
examiner's rejections.
We consider first the examiner's rejection of the
appealed claims under 35 U.S.C. § 112, second paragraph.
According to the examiner, claim 1 is indefinite "since the
relative position of the adhesive and outer layers are not
unambiguously set forth and since there is no antecedent basis
for 'transverse direction' or 'both directions'" (page 3 of
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Application No. 08/357,487
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Answer). However, we fully concur with appellants that when
the criticized claim language is read in light of the present
specification, as it must be, one of ordinary skill in the art
would readily understand that "one adhesive layer is disposed
between, and adheres, the barrier core layer to an outermost
layer, and the other adhesive layer is disposed between, and
adheres, the barrier core layer to another outermost layer"
(page 11 of Brief). Likewise, the examiner has not set forth
any compelling line of reasoning which establishes that one of
ordinary skill in the art would not understand the claim
language "both directions" to refer to the longitudinal and
transverse directions of the film.
We now turn to the examiner's rejection under 35 U.S.C.
§ 103. The examiner acknowledges that the applied references,
particularly the primary references of Newsome, are silent
regarding the maximum shrink force of the disclosed heat-
shrinkable film. Notwithstanding this silence, the examiner
concludes that "the film of Newsome would inherently meet the
criterion of 0.5 N/cm since depending upon test sample
dimensions or thickness of the Newsome film it would meet the
limitation as now claimed" (page 5 of Answer). However, the
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Application No. 08/357,487
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fatal flaw in the examiner's rejection is that the examiner
fails to lend factual support to the ultimate conclusion of
inherency. It is well settled that a determination of
inherency cannot be established by probabilities or
possibilities, but that it is incumbent upon the examiner to
establish the inevitability of the inherency which is
propounded. In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981); In re Wilding, 535 F.2d 631, 635-36, 190 USPQ
59, 63-64 (CCPA 1976). The examiner's reference to the
dimensions or thickness of Newsome's test samples is bare
speculation.
In some instances it is appropriate for an examiner to
reject a claimed article on the principle of inherency when it
can be demonstrated that there is a substantial correspondence
between the methods of making the claimed article and the
article of the prior art. However, in the present case, the
examiner has not attempted to draw any such correspondence
between appellants' method of making the claimed heat-
shrinkable film and the method disclosed by Newsome.
Significantly, appellants disclose that the claimed film is
prepared by heating the film obtained by the known extrusion
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and orientation processes to a temperature in the range of
about 70EC to about 100EC. On the other hand, Newsome
discloses no such processing after orientation. Hence, there
is no factual basis on this record for concluding that the
films of Newsome have the maximum shrink force recited in the
appealed claims.
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In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
ECK:clm
Appeal No. 1997-3520
Application No. 08/357,487
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W.R. Grace & Co. Conn
P.O. Box 464
Duncan, SC 29334