Ex Parte Breese et al

Board of Patent Appeals and Interferences

Mar 15, 2011

11053962 (B.P.A.I. Mar. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte D. RYAN BREESE,
KELLY L. WILLIAMS, CHARLES S. HOLLAND,
and MARK P. MACK
__________

Appeal 2010-002612
Application 11/053,962
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
KAREN M. HASTINGS, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/053,962

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A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
finally rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal relates to a multilayer thin film. Claim
1, reproduced below is illustrative.
1. A multilayer thin film having a thickness within the
range of about 0.1 mil to about 1 mil, comprising at least one
layer of a linear low density polyethylene (LLDPE) and at least
one layer of a high density polyethylene (HDPE) or a medium
density polyethylene (MDPE), and having a normalized
machine-direction tear strength of 44 grams/mil or greater.

Br., Claims Appendix (emphasis added).2
The Appellants disclose that the “normalized machine-direction tear
strength” is obtained by dividing the measured machine-direction (MD) tear
value by the film thickness. Spec. 8:4-6.
The following Examiner’s rejections are before us on appeal:
(1) Claims 1-5, 8, 9, 11-13, 16-18, and 20 are rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of White3 and Ong.4
(2) Claims 1-10, 12-18, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of White and Szul.5
(3) Claims 1-10, 11-18, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of White and Firdaus.6

2 Appeal Brief dated June 23, 2009.
3 US 6,013,378 issued January 11, 2000.
4 US 6,316,546 B1 issued November 13, 2001.
5 US 6,936,675 B2 issued August 30, 2005.
6 US 5,840,244 issued November 24, 1998.
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(4) Claims 11 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over White in view of Firdaus or Szul and further in view of
Garrison.7
B. DISCUSSION
1. Rejection based on the combination of White and Ong
a. Claim 1
The Examiner finds that White discloses a coextruded multilayer film
comprising a layer of low dispersibility polyethylene copolymer (LLDPE)
and a layer of high molecular weight high density polyethylene (HMW
HDPE). The Examiner finds that the film may have a B/A/B structure8 and
is drawn down to a thickness of 0.2 to 2.0 mil.9 The Examiner also finds
that the film has an MD tear as disclosed in the Table bridging columns 6
and 7 of White. However, the Examiner does not find that White discloses
an MD tear strength within the claimed range. Ans. 4.10
The Examiner finds that Ong discloses extruded HDPE films that
have an MD tear strength of at least about 10 g/mil, preferably about 15 to
60 g/mil, and more preferably about 20 to 60 g/mil. Ans. 8-9. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art “to utilize the HDPE composition taught in Ong (which is taught to

7 US 6,770,715 B2 issued August 3, 2004.
8 Layer A comprises low polydispersity resins and layer B comprises HMW
HDPE resins. White 4:30-33.
9 There is no dispute on this record that the film thickness disclosed in White
overlaps the film thickness recited in claim 1. See In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003) (overlap in range establishes a prima facie case
of obviousness).
10 Examiner’s Answer dated September 29, 2009.
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have superior MD tear resistance) in the laminate taught in White in order to
improve the MD tear resistance of the multilayer film.” Ans. 9.
The Appellants recognize that Ong discloses that the HMW HDPE
film preferably has an MD tear strength up to 60 g/mil. However, the
Appellants argue that “Ong et al. were never able to make a film having an
MD tear strength greater than 28 g/mil.” The Appellants rely on the
Examples disclosed in Ong which describe an MD tear strength as high as
28 g/mil. Br. 6.
It is of no moment that Ong does not exemplify a film having an MD
tear strength within the claimed range. Ong expressly discloses that the
ethylene polymer product of the invention is capable of being formed into
thin gauge films, e.g., of up to 1.5 mil, having superior mechanical
properties including an MD tear within a preferred range of “about 20 to 60
g/mil.” Ong 4:57-65; see also In re Lamberti, 545 F.2d 747, 750 (CCPA
1976) (all disclosures of the prior art must be considered). Significantly, the
Appellants have failed to direct us to any credible evidence establishing that
the films disclosed in Ong could not have been made by the disclosed
process. See In re Spence, 261 F.2d 244, 246 (CCPA 1958) (a patent enjoys
a statutory presumption of validity under 35 U.S.C. § 282).
The Appellants also argue that their invention relies on the discovery
that orienting a multilayer film in the machine direction (i.e., MDO) yields a
multilayer thin film which has a uniquely high MD tear strength among
other properties. The Appellants argue that neither White nor Ong discloses
the MDO technique. Thus, the Appellants argue that the combination of
White and Ong would not have led one of ordinary skill in the art to the
claimed multilayer thin film or ways to make the claimed film. Br. 7.
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Significantly, claim 1 is not limited to the particular MDO process
disclosed by the Appellants. Moreover, the Appellants do not direct us to
any credible evidence establishing that the claimed film could not have been
made by a process other than the Appellants’ disclosed MDO process. See
Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)
(nothing in the rules or in jurisprudence requires the fact finder to credit
unsupported or conclusory assertions); In re Schulze, 346 F.2d 600, 602
(CCPA 1965) (“Argument in the brief does not take the place of evidence in
the record.”).
Indeed, Ong discloses a process for making a thin film, albeit a single
layer film, having an MD tear within the claimed range. On this record,
there is no reason to believe that the HMW HDPE of Ong could not have
been coextruded with the LLDPE of White to form a multilayer film having
an improved MD tear within the claimed range. See Ans. 9-10.
For the reasons set forth above, the § 103(a) rejection of claims 1-3, 5,
11-13, 18, and 20 based on the combination of White and Ong will be
affirmed.11
b. Claims 4, 8, 9, 16, and 1712
The Appellants argue that claim 4 “limits the multilayer thin film to
those made by the machine-direction orientation (MDO).” Br. 8. The

11 The Appellants also argue that claims 6, 7, 14, and 15 are patentable over
the combination of White and Ong. Br. 7-8. However, the Examiner
correctly points out that claims 6, 7, 14, and 15 were not rejected over the
combination of White and Ong.
12 The Appellants do not present separate arguments for claims 8, 9, 16, and
17 but merely reiterate the limitations of these claims. Therefore, claims 8,
9, 16, and 17 stand or fall with the patentability of claim 4. 37 C.F.R.
§ 41.37(c)(1)(vii) (2010).
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Appellants argue that neither White nor Ong discloses an MDO treated film.
Br. 9.
The Appellants’ argument is not persuasive of reversible error.
Significantly, claim 4 does not limit the multilayer film to a film made by
the disclosed MDO process. Claim 4 merely recites that the film is
“oriented in the machine direction.”13 Br., Claims Appendix. According to
the coextrusion process disclosed in White, the layered polymeric material is
drawn down to the intended gauge thickness by a machine direction draw
down followed by a bubble inflation. White 5:1-22. The Appellants do not
provide any evidence or argument explaining why the resulting film is not
“oriented in the machine direction” as recited in claim 4.
The Appellants also argue that the experimental results reported in
Tables 1 and 2 of the Appellants’ Specification rebut any prima facie case of
obviousness based on the combined teachings of White and Ong. Br. 9.
Suffice it to say that the Appellants have failed to show, at the very
least, that the results reported in Tables 1 and 2 are “unexpected.” See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in order for a showing of
“unexpected results” to be probative evidence of non-obviousness, the
applicant must establish that the difference between the results obtained
through the claimed invention and those of the prior art would not have been
expected by one skilled in the art at the time of invention).
For the reasons set forth above, the § 103(a) rejection of claims 4, 8,
9, 16, and 17 based on the combination of White and Ong will be affirmed.

13 According to the Appellants’ Specification, uniaxially orienting a
multilayer film in the machine (or processing) direction is called “MDO.”
Spec. 7:1-12. In contrast, claim 4 merely recites that the film is “oriented”
in the machine direction.
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2. Rejection based on the combination of White and Szul14
The Examiner finds that Szul discloses an extruded LLDPE film
having an MD tear strength greater than 500 g/mil. Ans. 6. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to replace the LLDPE of White with the LLDPE of Szul to improve the tear
modulus of the film disclosed in White. Ans. 6.
The Appellants argue that “the Examiner merely speculates that using
the LLDPE film taught by Szul et al. in the multilayer film in White et al.
may produce the film claimed by Appellants.” Br. 9.
The Examiner’s conclusion of obviousness is reasonable based on the
record before us. See, e.g., White 4:39 (film may have an A/A/A/B
construction). The Appellants do not offer any credible evidence or
explanation to the contrary. Therefore, the § 103(a) rejection of claims 1-10,
12-18, and 20 based on the combination of White and Szul and the § 103(a)
rejection of claims 11 and 19 based on the combination of White, Szul, and
Garrison will be affirmed.

14 The Appellants argue the patentability of claims 1-10, 12-18, and 20 as a
group. Br. 9-10. Therefore, for purposes of this appeal, claims 2-10, 12-18,
and 20 stand or fall with the patentability of claim 1. As for rejection (4),
the Appellants do not address the patentability of claims 11 and 19
separately from the patentability of claim 1. Br. 10. Therefore, for purposes
of this appeal, the patentability of claims 11 and 19 will be based on the
arguments set forth in support of the patentability of claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2010).
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Application 11/053,962

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3. Rejection based on the combination of White and
Firdaus15

As to this rejection, the Appellants argue that the Examiner did not
explain why the claimed invention follows from the teachings of the cited art
and did not provide at least one reason why one of ordinary skill in the art
would have modified the cited art to achieve the claimed invention. Br. 10.
To the contrary, the Examiner finds that Firdaus discloses an LLDPE
film having an MD tear strength greater than 250 g/mil that is produced by a
high stalk process. The Examiner concludes that it would have been obvious
to one of ordinary skill in the art to produce the multilayer film of White
using the high stalk process disclosed in Firdaus in order to improve the tear
modulus of White’s film. Ans. 7.
The Examiner’s conclusion of obviousness is reasonable based on the
record before us. Indeed, Firdaus discloses that high stalk extrusion “results
in enhancing impact strengths and MD tear resistance.” Firdaus 1:23-26.
The Appellants do not direct us to any error in the Examiner’s
findings of fact or conclusions of law. Therefore, the § 103(a) rejection of
claims 1-10, 11-18, and 20 based on the combination of White and Firdaus
and the § 103(a) rejection of claims 11 and 19 based on the combination of
White, Firdaus, and Garrison will be affirmed.

15 The Appellants argue the patentability of claims 1-10, 11-18, and 20 as a
group. Br. 9-10. Therefore, for purposes of this appeal, claims 2-10, 11-18,
and 20 stand or fall with the patentability of claim 1. As for rejection (4),
the Appellants do not address the patentability of claims 11 and 19
separately from the patentability of claim 1. Br. 10. Therefore, for purposes
of this appeal, the patentability of claims 11 and 19 will be based on the
arguments set forth in support of the patentability of claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2010).

Appeal 2010-002612
Application 11/053,962

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C. DECISION
For the reasons set forth above and in the Examiner’s Answer, the
decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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