Ex Parte Bradley

Board of Patent Appeals and Interferences

Jun 27, 2005

09887836 (B.P.A.I. Jun. 27, 2005)

The opinion in support of the decision being entered today
was not written for publication and is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte JAMES S. BRADLEY
_______________

Appeal No. 2005-0486
Application No. 09/887,836
_______________

HEARD: April 21, 2005
_______________

Before KIMLIN, WARREN, and PAWLIKOWSKI, Administrative
Patent Judges.

PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1 through 5
and 11. We dimiss the appeal of claim 12.1
Claim 1 and claim 11 are representative of the subject
matter on appeal and are set forth below:
1. A packaging laminate comprising an outer layer
impermeable to a butylated phenolic antioxidant; an

1Claim 12 is of record, but appellant has withdrawn claim 12 from
consideration. Brief, page 4.
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adhesive layer between said outer layer and an inner layer
and in contact with both said layer and said inner layer to
form said packaging laminate, wherein said adhesive layer
comprises an adhesive resin, a curing agent and said
butylated phenolic antioxidant; and said inner layer
allowing migration of said butylated phenolic antioxidant
therethrough.

11. An antioxidant adhesive film comprising: a
solventless cured adhesive resin selected from the group
consisting of: polyether urethanes, polyester urethanes,
and polyurethane; and a butylated phenolic antioxidant
present in a concentration of between 1000 and 300,000
parts per million applied from 0.00005 to 0.001 dry pounds
per square foot of a substrate.

The examiner relies upon the following references as
evidence of unpatentability:
Omura et al. (Omura) 4,650,847 Mar. 17, 1987
Saad et al. (Saad) 5,562,874 Oct. 8, 1996
Satoh et al. (Satoh) 6,194,061 Feb. 27, 2001

Claims 1 through 5 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Saad in view of Satoh.
Claim 11 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Omura in view of Satoh.
As a preliminary matter, with regard to appellant’s
arguments concerning entry of the amendment made to
claim 11, this is a petitionable matter, and not an
appealable one. Hence, the status of claim 11 is as
reproduced above, and as described by the examiner on pages
2-3 of the Answer.
We have carefully reviewed appellant’s Appeal Brief
and Reply Brief and the Examiner’s Answer. This review has
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Application No. 09/887,836

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led us to conclude that the examiner’s rejections are not
sustainable.
OPINION
I. The 35 U.S.C. § 103 rejection of claims 1 through 5
as being obvious over Saad in view of Satoh

The examiner’s position for this rejection is set
forth on pages 4-6 of the Answer. Appellant’s position
regarding this rejection is set forth on pages 4-6 of the
Brief, and on pages 3-6 of the Reply Brief.
On page 8 of the answer, the examiner responds to
appellant’s position regarding this rejection. Appellant
argues that the teachings of Saad and Satoh are not
combinable because the graft copolymerization mixture
according to Satoh is incompatible with the coextrusion
process detailed by Saad. In response, the examiner states
that his rejection proposes to replace the adhesive of Saad
with the adhesive of Satoh. Answer page 9. The examiner
also states that appellant’s argument depends upon the
method of forming the laminate, and therefore not germane
to the laminate product claimed. Answer page 9.
We cannot agree with the position taken by the
examiner. Firstly, as correctly pointed out by appellants
in the reply brief, the examiner’s proposal to replace the
adhesive layer in Saad with the adhesion layer of Satoh
does not suggest the claimed invention because such a
combination lacks the buytylated phenolic antioxidant.
Reply Brief, pages 3-4.
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Secondly, although we appreciate the examiner’s
discussion that process limitations are not relevant in a
product claim, we believe the examiner misses the point
made by appellant. Appellant’s discussion of the process
requirements of Saad and Satoh are relevant with respect to
the issue as to whether the references are combinable.
That is, if a proposal for modifying the prior art in an
effort to attain the claimed invention causes the art to
become inoperable or destroys its intended function, then
the requisite motivation to make the modification would not
have existed. See In re Fritch, 972 F.2d 1260, 1265 n.12,
23 USPQ2d 1780, 1783 n.12 (Fed. Cir. 1992). In this
regard, appellants comments made on page 5 of the brief
regarding the blown film extrusion process of Saad, and the
incompatablity of the graft polymerization mixture of Satoh
with the blown film extrusion process of Saad, is well
taken.
In view of the above, we reverse the rejection of
claims 1 through 5 under 35 U.S.C. § 103 as being
unpatentable over Saad in view of Satoh.

II. The 35 U.S.C. § 103 rejection of claim 11 as being
obvious over Omura in view of Satoh

The examiner’s position for this rejection is set
forth on pages 6-8 of the Answer. Appellant’s position
regarding this rejection is set forth on pages 6 and 7
of the Brief, and pages 6-8 of the Reply Brief.
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Appellant argues that Omura does not teach that the
adhesive resin is cured solventlessly; does not teach that
the adhesive resin is selected from the group recited in
claim 11; and does not teach that the adhesive material is
applied from 0.00005 to 0.001 dry pounds per square foot of
a substrate. Reply Brief, page 6.
The examiner’s response regarding the issue of a
“solventless cured” adhesive resin is set forth on page 12
of the Answer. The examiner states that claim 11 is a
product claim, and that therefore the manner in which the
adhesive is applied is not relevant. The examiner explains
that the adhesive of the final product of Satoh is
solventless. In paragraph 15 of the Office Action of Paper
9, the examiner states that the coating solution in Satoh
is applied to a thermoplastic substrate, and dried, and it
returns to the carboxylic anhydride group due to
dehydration. See column 8, lines 7-9, of Satoh. The
examiner states that this teaching shows that the
cured/dried adhesive resin is solventless.
We believe the examiner’s reasoning does not address
the requirement of claim 11 that the solventless cured
adhesive resin is applied from 0.00005 to 0.001 dry pounds
per square foot of a substrate.2 That is, in its already
solventless cured state, the adhesive resin is applied from
0.00005 to 0.001 dry pounds per square foot of the

2 This aspect of the claimed invention is described on page 4 of
appellant’s specification.
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substrate. The examiner does not point to any teaching in
either Omura or Satoh that suggests this claimed
recitation.
In view of the above, we therefore also reverse the 35
U.S.C. § 103 of claim 11 as being obvious over Omura in
view of Satoh.

III. Conclusion
Each of the rejections is reversed.

REVERSED

EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
)INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP:psb

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Avery N. Goldstein
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