Ex parte Bland et al.

Board of Patent Appeals and Interferences

Aug 31, 1999

07955116 (B.P.A.I. Aug. 31, 1999)

Application for patent filed October 1, 1992. 1
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journal and (2) is not binding precedent of the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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RALPH H. BLAND, JAMES M. JONZA, JAMES D. SMITH,
JEFFREY F. BRADLEY and KENNETH B. SMITH
____________
Appeal No. 95-4535
Application No. 07/955,1161
____________
ON BRIEF
____________
Before KIMLIN, JOHN D. SMITH and GARRIS, Administrative Patent
Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the
final rejection of claims 1-14, 16-19, 22, 24-30, and 32-62.
In the examiner’s supplemental answer entered June 25, 1997 as
Paper
Appeal No. 1995-4535
Application No. 07/955,116
2
No. 21, appealed claims 47-56 were indicated as allowable if
rewritten in independent form. After indicating that “all
issues” identified in the answer mailed April 13, 1995 “are
moot” (page 3 of the supplemental answer), the examiner newly
rejected appealed claims 32-46 and appealed claims 1-14, 16-
19, 22, 24-30 and 57-61 under “the judicially created doctrine
of double patenting” over the respective claims in two newly
issued U.S. patents. See the supplemental answer at pages 5
and 6. Appellants responded to these new double patenting
rejections in their “Brief in Reply to the Examiner’s
Supplemental Answer” entered as Paper No. 23 on August 18,
1997. Thus, remaining for our review in this appeal are the
new double patenting rejections of claims 1-14, 16-19, 22, 24-
30, 32-46 and 57-61.
Representative claims 1 and 32 are reproduced below:
1. A tear resistant film comprising a total of at least
three stiff and ductile layers situated one on the randomly in
the array wherein (a) at least one layer is a stiff polyester
or copolyester that has a tensile modulus greater than 200
kpsi, (b) at least one other layer is a ductile sebacic acid
based copolyester that (i) comprises at least 1 mole
equivalent of sebacic acid, including ester derivatives
thereof, based on 100 mole equivalents of acid components,
including ester derivatives thereof, in the copolyester, (ii)
has a tensile modulus less than 200 kpsi, (iii) has a tensile
elongation greater than 50%, and (iv) provides from about 1
Appeal No. 1995-4535
Application No. 07/955,116
3
weight percent to 50 weight percent of the tear resistant
film, and (c) the tear resistant film demonstrates a Graves
area in one direction of the film which exceeds the Graves
area, in the same direction, of a single layer film having a
thickness substantially equal to the thickness of the tear
resistant film, the single layer film including only the stiff
polyester or copolyester of the tear resistant film.
Appeal No. 1995-4535
Application No. 07/955,116
4
32. A security control laminate comprising a first tear
resistant film according to claim 1 having a first face and a
second face opposite the first face and a first layer of
adhesive of the first face of the tear resistant film.
The references relied upon by the examiner are:
Bland et al. (Bland’842) 5,427,842 June
27, 1995
Bland et al. (Bland’019) 5,604,019
February 18, 1997
Appealed claims 1-14, 16-19, 22, 24-30, and 57-61 stand
rejected “under the judicially created doctrine of double
patenting” over claims 1-40 of U. S. Patent No. 5,604,019
(Bland’019) “since the claims, if allowed, would improperly
extend ‘the right to exclude’ already granted in the patent”.
Appealed claims 32-46 stand rejected on the same basis over
claims 1-43 of U. S. Patent No. 5,427,842 (Bland’842).
We cannot sustain the stated rejections.
The examiner’s rejections of the appealed claims for
double patenting are based on alleged circumstances
essentially identical to those before the court in In re
Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968) wherein an
applicant later sought patent protection in a voluntary
divisional application for an invention (i.e., the best mode)
fully disclosed in and covered by broad claims in an earlier
Appeal No. 1995-4535
Application No. 07/955,116
5
issued patent. Since there was no reason preventing the
applicant from presenting the claims to the best mode for
examination in the application of the issued patent (and no
terminal disclaimer had been filed), the Schneller court held
that the rule against “double patenting” must be applied to
avoid the “timewise extention of the protection afforded” by
Schneller’s earlier patent.
With regard to the claims issued in Bland’019 and
Bland’842 which are directed to a tear resistant film and a
security control laminate comprised of a tear resistant film
respectively, the examiner points out that such patented
claims define the ductile layer component of the tear
resistant film broadly, although each patent allegedly
discloses that such ductile layer may be composed of a ductile
copolyester comprising a sebacic acid component, while the
appealed claims require a ductile layer component of a tear
resistant film as “a ductile sebacic acid based copolyester
that (i) comprises at least 1 mole equivalent of sebacic acid,
based on 100 mole equivalents of acid components.” Thus, the
examiner argues that like the situation in Schneller, the
subject matter claimed in the instant application is fully
Appeal No. 1995-4535
Application No. 07/955,116
The examiner should revisit the question of whether an2
obviousness-type double patenting rejection is applicable
under the circumstances presented here. In this regard , the
examiner may wish to review the genus-species guidelines (MPEP
§ 2144.08 July 1998) concerning the issue regarding the herein
claimed ductile sebacic acid based copolyester ductile film
component which is covered by patented claims to ductile film
copolyester component. See, for example, claim 14 of
Bland’019.
6
disclosed in the respectively applied patents and is covered
by the broad claims in the issued patents.
Appellants point out in their “brief in reply” that none
of the claims in either Bland’019 or Bland’842 fully cover the
subject matter of the appealed claims which require a tear
resistant film or tear resistant film component to include at
least three stiff and ductile layers while the patented claims
require the same tear resistant film component as including
more than five stiff and ductile layers.
Thus, as argued by appellants, the factual situation in
this appeal differs significantly from the circumstances
present in Schneller. While the herein appealed claims and
patented claims may cover overlapping subject matter in terms2
of the number of layers required, the patented claims do not
Appeal No. 1995-4535
Application No. 07/955,116
We find no disclosures in the Bland patents of tear3
resistant films having only three layers. Thus, is there is
apparently no basis to support the examiner’s contention that
the subject matter claimed in the instant application is fully
disclosed in the patents.
7
fully cover the subject matter in the same way that the broad3
claims issued to
Appeal No. 1995-4535
Application No. 07/955,116
8
Schneller covered Schneller’s best mode presented in a later
filed voluntary divisional application. Accordingly, the
examiner’s rejections cannot be sustained.
REVERSED
The decision of the examiner is reversed.
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN D. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BRADLEY R. GARRIS )
Administrative Patent Judge )
jrg
Appeal No. 1995-4535
Application No. 07/955,116
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Steven E. Skolnick
3M Office of Intellectual Prop. Counsel
P.O. Box 33427
St. Paul, MN 55133-3427
JENINE GILLIS
Appeal No. 1995-4535
Serial No. 07/955,116
Judge JOHN SMITH
Judge KIMLIN
Judge GARRIS
Received: 8/23/99
Typed: 8/23/99

DECISION: REVERSED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Remanded: Yes No
Brief or Heard
Group Art Unit: 1700
Index Sheet-2901 Rejection(s):
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Palm: ____
Mailed: Updated Monthly Disk (FOIA): ____
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