Ex Parte Chang et al

Patent Trials and Appeals Board

Jun 27, 2019

14989535 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/989,535 01/06/2016 Moh-Ching Oliver Chang
97056 7590 07/01/2019
Levenfeld Pearlstein, LLC (Hollister Incorporated)
2 N. LaSalle St.
Suite 1300
Chicago, IL 60602
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.
406.0lUS
37150-89094CON
CONFIRMATION NO.
3788
EXAMINER
TOWNSEND, GUY K
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
ipdocket@lplegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOH-CHING OLIVER CHANG and
GEORGE J. CISKO
Appeal 2018-006209
Application 14/989,535
Technology Center 3700
Before MICHAEL J. FITZPATRICK, JEREMY M. PLENZLER, and
LEE L. STEPINA, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims l-16under 35 U.S.C. § 103 as being
unpatentable over Chang (WO 2011/056861, published May 12, 2011)1 and
Broda (US 6,261,698, issued July 17, 2001). We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 The Examiner cites to the corresponding US Patent Application
Publication Number 2012/0232504 Al. Final Act. 6.
Appeal 2018-006209
Application 14/989,535
CLAIMED SUBJECT MATTER
Claims 1 and 11 are independent. Claims 2-10 depend from claim 1
and claims 12-16 depend from claim 11. Claim 1 is reproduced below:
1. A multi-layer, chlorine-free film for ostomy and bowel
management applications, comprising:
a barrier layer having first and second sides, the barrier
layer comprising a nylon 6/69 resin having a melting
temperature between about 125°C and about 135°C present in a
concentration of about 90 percent to about 100 percent by
weight (% wt.) of the barrier layer, the barrier layer being
substantially impermeable to malodor causing compounds,
wherein the barrier layer has a thickness of about 3 5 µm to
about 80µm; and
first and second outer layers, each outer layer comprising
at least one selected from an ethylene vinyl acetate or ethylene
methyl acrylate copolymer and blends thereof, or
polypropylene-based resins and blends thereof, wherein each
outer layer is arranged on a respective side of the barrier layer.
OPINION
The Examiner's rejection requires a combination of Broda's teachings
with those of Chang. Final Act. 6-11. Appellant explains that "[t]he
Examiner relied on Broda to modify Chang's multilayer film for ostomy
pouches to render the claimed multilayer film obvious." Appeal Br. 6.
Appellant contends that "Broda has nothing to do with ostomy pouch films
or any other ostomy or bowel management related materials" and, instead,
"Broda discloses a breathable, heat shrinkable film for packaging high
gassing cheeses that includes a barrier layer having a high carbon dioxide
(CO2) transmission rate." Id. ( citing Broda, Abstract). Appellant further
contends, for example, that "Broda' s multilayer film is configured to
transmit gasses released from high gassing cheeses during curing, such that
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Application 14/989,535
the gasses would not be captured in the packaging and cause the packaging
to burst" and "[i]f such a multilayer film was used to make an ostomy pouch,
gasses released from body excretion collected in the ostomy pouch would
also be transmitted and released through the multilayer film, which is highly
undesirable and unacceptable for ostomy applications." Id.
We read Appellant's contentions as challenging whether Broda is
analogous art.
"A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention." In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citinginnovention Toys, LLC
v. MGA Entm 't., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
Two separate tests define the scope of analogous art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Klein, 647 F.3d at 1348 (quoting In re Bigio, 381 F.3d at 1325).
"[T]he field of endeavor test ... requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention's
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention." In re Bigio, 381 F.3d at
1325. "This test does not make the assessment of the field of endeavor a
wholly subjective call for the examiner." Id. at 1326. Rather, "[t]he
examiner and the Board must have a basis in the application and its claimed
invention for limiting or expanding the scope of the field of endeavor." Id.
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Application 14/989,535
The Examiner acknowledges Appellant's contentions that Broda is
unrelated to ostomy bags and that Broda's film material would not be suited
for such applications. See, e.g., Ans. 11-12. The Examiner does not assert
that Broda is in Appellant's field of endeavor. Appellant's characterization
of the field of endeavor as "ostomy pouch films or any other ostomy or
bowel management related materials" (Appeal Br. 6) is consistent with
Appellant's Specification, which explains, for example, that "[t]he ...
disclosure relates to odor barrier materials, and more particularly to films
and tubes having a layer of an odor barrier material for medical uses such as
ostomy and bowel management applications" (Spec. ,i 2).
"A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem." In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992). "[T]he purposes of both the invention and the
prior art are important in determining whether the reference is reasonably
pertinent to the problem the invention attempts to solve." Id.
The Examiner does not dispute, or even address the characterization
of the problem addressed by Appellant. Appellant explains, for example,
that "the multilayer film of Chang, which is commonly assigned to the
assignee of the present application, was developed to provide a chlorine free
multilayer film having desired properties for ostomy applications including
odor barrier properties." Appeal Br. 6 (citing Spec. ,i 13). Appellant
contends that "[t]he multilayer film of the present application was developed
to improve upon Chang's multilayer film to solve manufacturing challenges
in making and converting Chang's multilayer film." Id. (citing Spec. ,i 13).
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Application 14/989,535
The cited portion of the Specification explains that Chang uses amorphous
polyamides, which have "characteristics ... such as its high rigidity and
high temperature requirements for extrusion" and "have presented
manufacturing challenges in making and converting the multilayer film."
Spec. 13. The Specification provides examples, such as "when coextruding
the multilayer film including amorphous polyamide, high extrusion
temperature for the amorphous polyamide can damage other layers, such as
layers comprising EV A" and that "hardness of the amorphous polyamide
makes it tougher to cut the film and wears cutting knives quickly." Id. That
is, these manufacturing concerns are some of the problems addressed by
Appellant's arrangement.
Consistent with Appellant's contentions noted above, Broda "is
directed to a heat shrinkable film for packaging high gassing cheeses."
Broda, Abstract. The title of Broda' s disclosure is "Breathable Film for
Cheese Packaging," and its purpose is described as to provide "relatively
low oxygen transmission[] and relatively high carbon dioxide transmission."
Id. at 1 :6-8. The Examiner provides no reason sufficient to establish that
Broda is in Appellant's field of endeavor or reasonably pertinent to any of
the problems addressed by Appellant.
For at least these reasons, we do not sustain the Examiner's decision
to reject claims 1-16.
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Application 14/989,535
DECISION
We REVERSE the Examiner's decision to reject claims 1-16.
REVERSED
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