Ex Parte Beckwith et al

Patent Trial and Appeal Board

Feb 22, 2016

11845846 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111845,846 08/28/2007
826 7590 02/24/2016
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
Scott Beckwith
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.
031456/318349 9403
EXAMINER
BLACKWELL, GWENDOLYN
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
02/24/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT BECKWITH, FRANK BRYAN EDWARDS,
JANET RIVETT, CYNTHIA EBNER, THOMAS KENNEDY,
RACHEL McDOWELL, and DREW V. SPEER
Appeal2013-010506
Application 11/845,846
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-25, 27-30, 38, and 39. We have
jurisdiction over the appeal under 35 U.S.C. §6(b ).
We AFFIRM.
Appellants' invention relates to irradiated multilayer films having an
active oxygen barrier layer (Specification ("Spec.") 1 :4---6; claim 1 ).
Claims 1 and 39 are illustrative of the claimed subject matter
(formatting and emphasis added):
1 Appellants identify the Real Party in Interest as Cryovac, Inc. (App. Br. 1 ).
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Application 11/845,846
1. An active oxygen barrier film comprising an irradiated
multilayer film having an active oxygen barrier layer
comprising an oxygen scavenging composition that is a blend
of: (A) a thermoplastic resin having carbon-carbon double
bonds substantially in its main chain; (B) a transition metal salt;
and (C) an oxygen barrier polymer,
wherein the oxygen scavenging composition has active
oxygen barrier properties prior to irradiation, and the active
oxygen barrier layer is disposed between an outer sealant layer
and an outer abuse layer,
wherein the multilayer film has been irradiated with an
electron beam radiation dosage between about 2 and 200 kilo
Gray, and wherein the film has an oxygen scavenging rate that
is at least about 0.01 cc oxygen per day per gram of the oxygen
scavenging composition blend;
and the film exhibits a higher rate of oxygen scavenging
in comparison to the same film prior to irradiation.
39. A method of packaging an oxygen-sensitive product
compnsmg:
(a) providing a film with at least one layer comprising
blend of ethylene/vinyl alcohol copolymer, an oxygen
scavenging composition that is a blend of ethylene vinyl
alcohol copolymer, a thermoplastic resin having carbon-carbon
double bonds substantially in its main chain, and a transition
metal salt, and wherein the oxygen scavenging composition has
active oxygen barrier properties prior to irradiation;
(b) exposing the film to electron beam radiation of at
least about 2 kilo Gray; the film exhibits a higher rate of oxygen
scavenging in comparison to the same film prior to irradiation,
and
( c) placing the oxygen-sensitive product inside a
container made from the film.
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Application 11/845,846
Independent claims 23 and 38 also recite a similar product to claim 1
(Claims App.).
The Examiner maintains, and Appellants appeal, the rejection of
claims 1-25, 27-30, 38, and 39 under 35 U.S.C. § 103(a) as unpatentable
over Tsuji et al. (U.S. 2005/0153087 Al published July 14, 2005 (hereinafter
"Tsuji")) in view of Mueller et al. (U.S. 4,684,573 issued Aug. 4, 1987
(hereinafter "Mueller")) and further in view of Cotterman et al (U.S.
2002/0153511 Al published Oct. 24, 2002 (hereinafter "Cotterman")).2
Appellants did not respond to the provisional obviousness-type double
patenting rejections of all the claims over claims of two other applications:
U.S. 11/845,944 and U.S. 11/845,9153 (Ans. 7; Final Rej. 3). Thus, we
summarily affirm these rejections.
ANALYSIS
After consideration of the record before us, a preponderance of the
evidence supports Appellants' position that the Examiner has not established
that a person of ordinary skill in the art would have been prompted to
provide an active oxygen barrier film containing a multilayer film wherein
the multilayer film includes an already active oxygen scavenging layer that
has been irradiated with electron beam dosage as recited in claim 1 (as well
as the other independent product claims and corresponding method claim
39), and the evidence of record supports Appellants' position that irradiating
a multilayered film having an active oxygen barrier as required in claim 1
2 The Examiner also relied upon dictionary.com as an evidentiary reference
(http://dictionary.reference.com/browse/wrapped) for claims 30, 38, and 39
(Ans. 5).
3 The latter application has since issued as U.S. 8,815,360 B2.
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Application 11/845,846
results in a product having unexpectedly improved oxygen scavenging
properties (generally App. Br.; Reply Br.).
We add the following primarily for emphasis.
The Examiner relies upon Cotterman as teaching using electron beam
irradiation to sterilize food packages containing an oxygen scavenging
barrier layer by using a radiation dosage within the range recited in claim 1
(Ans. 6). The Examiner concluded that it would have been obvious to one
of ordinary skill in the art in view of Cotterman' s teachings to sterilize the
food package of Tsuji and Mueller and its goods (i.e., by irradiating the
package) (id. at 7). The Examiner further concluded that because the prior
art package (i.e., Tsuji in combination with Mueller) has the same materials
present in the same amounts/layers as that recited in Appellants' claims, it
must necessarily possess the same chemical, mechanical, and physical
properties as of the instantly claimed invention, such as comparisons of
oxygen scavenging and ingress (id.).
Appellants contend that, contrary to the Examiner's position,
Cotterman does not teach irradiating active scavenging compositions but
instead discloses irradiating dormant ones wherein actinic radiation is used
to trigger the oxygen scavenger present in its articles (App. Br. 5, citing
Cotterman i-fi-f 14 and 46). Appellants argue that the Examiner's statement
that one skilled in the art would have been motivated to use a radiation step
to sterilize an article (of a dormant scavenging composition as taught in
Cotterman) to enhance oxygen scavenging activity of an already active
composition is incorrect (App. Br. 6). Appellants contend that Dr. Speer
(one of the named inventors on the Cotterman reference), in his 35 U.S.C
§ 1.132 Declaration dated September 16, 2011 ("Declaration"), explains why
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Application 11/845,846
one skilled in the art would not have expected an increase of scavenging
properties upon irradiation of an active oxygen scavenging composition
(App. Br. 6-8). Appellants contend that the Examiner has not provided any
evidence of the use of a radiation step to sterilize a food package comprising
an already active scavenging composition and has failed to respond to Dr.
Speer's factual arguments stating that a person skilled in the art would
expect the contrary: a decrease in scavenging properties upon irradiation (id.
at 8).
Appellants further contend that even if one skilled in the art would
have been led to employ a radiation step to sterilize an active scavenging
composition, the claimed enhancement of oxygen scavenging activity is
unexpected and surprising (id. at 9). Moreover, Appellants have provided
comparative data contending that it shows evidence of unexpected results
(id. at 9-11 ). Appellants also contend the Examiner's conclusion regarding
the modified food package of Tsuji, Mueller, and Cotterman inherently
possessing the same physical properties as the instantly claimed invention is
improper because the obviousness rejection is based on a combination of
references and the Examiner's inherency argument is based upon
probabilities and possibilities (id. at 11-13).
Appellants point out that although Cotterman discloses using
irradiation to sterilize food packages having a dormant multilayer
scavenging film, Cotterman does not suggest irradiating a multilayer film
containing an active oxygen scavenging composition, so as to increase the
oxygen scavenging rate of an already active composition, and also does not
suggest an irradiated multilayered film possessing the alleged "inherent"
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Application 11/845,846
properties as posited by the Examiner (see, e.g., id. at 6, 8; Reply Br. 7; Ans.
8).
A preponderance of the evidence supports Appellant's position. Dr.
Speer in the Declaration reasonably rebuts the Examiner's determination that
one of ordinary skill would have applied radiation to an already active
scavenging composition. Dr. Speer explains why a person skilled in the art
would have had no reason to apply radiation to an already active scavenging
composition, because one would have expected that applying radiation to an
already active scavenging composition would lead to an increased rate of
recombination of radicals and radical termination, resulting in a diminished
rate of oxygen scavenging capacity (App. Br. 6-8; Reply Br. 6; Declaration
,-r 7, also ,-r 84).
The Examiner has not provided any substantive arguments traversing
Dr. Speer's explanation regarding the enhanced scavenging properties
obtained from irradiating an active scavenging composition as unpredictable
and, therefore, would not have motivated one skilled in the art to irradiate an
already active oxygen scavenging film.
Thus, Appellants have established that the Examiner has not provided
an adequate reason why one of ordinary skill in the art would have irradiated
a multilayered film/package comprising an already active oxygen
scavenging composition to enhance scavenging properties as required by the
4 This Declaration refers to "Gauthier" (U.S. 6,214,254 Bl to Gauthier et
al.). Gauthier was a previously applied reference relied upon in a prior
rejection to address the "irradiated with an electron beam radiation dosage"
limitation in the claims under appeal. The Examiner replaced Gauthier with
Cotterman in a subsequent rejection. Appellants reasonably assert that Dr.
Speer's statements apply equally to the current rejection on appeal (App. Br.
13).
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claims. Thus, the Examiner has not established by a preponderance of the
evidence that Cotterman cures the deficiencies of Tsuji and Mueller without
the use of improper hindsight reconstruction (see, e.g., App. Br. 5; Reply Br.
5-7).
Moreover, even if there existed a prima facie case of obviousness for
one skilled in the art to have sterilized a multilayered package having an
already active scavenging composition, Appellants have provided evidence
that the claimed enhancement of oxygen scavenging activity is unexpected
and surprising (App. Br. 9). Appellants have provided comparative studies
demonstrating that the inventive film exhibits a significant decrease in
oxygen ingress through the film in comparison to the same film that has not
been irradiated (id. at 9-11, particularly, Tables 5 and 6 and Figure 3). For
example, in Table 5, Sample 2 (exposed to irradiation) shows an 88%
decrease in oxygen ingress through the film in comparison to Control 2
(same film as Sample 2 but not irradiated) (id. at 9).
The Examiner has not substantively addressed the particulars of the
results from these comparative studies proffered by Appellants (generally
Ans.).
"After a prima facie case of obviousness has been made and rebuttal
evidence submitted, all the evidence must be considered anew." In re Eli
Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990) (citing In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984)); Piasecki, 745 F.2d at 1472 ("Prima facie
obviousness is a legal conclusion, not a fact. Facts established by rebuttal
evidence must be evaluated along with the facts on which the earlier
conclusion was reached, not against the conclusion itself." (Internal cites
omitted.)); see also MPEP § 716.0l(d). Although factual evidence is
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preferable to opinion testimony, such testimony is entitled to consideration
and some weight so long as the opinion is not on the ultimate legal
conclusion at issue. Although an affiant's or declarant's opinion on the
ultimate legal issue is not evidence in the case, "some weight ought to be
given to a persuasively supported statement of one skilled in the art on what
was not obvious to him." In re Lindell, 385 F.2d 453, 456 (CCPA 1967).
The Examiner has not directed our attention to any persuasive
evidence or provided any persuasive line of technical reasoning to rebut the
facts and conclusions of Dr. Speer's Declaration or the comparative results
shown by Appellants as evidence of nonobviousness (see generally Ans.).
After weighing all of the evidence, we conclude on this record that
preponderance of the evidence weighs in favor of Appellants' position.
Under these circumstances, we reverse the § 103 rejection on appeal.
DECISION
We affirm the obviousness-type double patenting rejections.
We reverse the § 103 rejection of all the claims on appeal.
AFFIRMED
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