Ex Parte Dawes

Board of Patent Appeals and Interferences

Jun 18, 2010

10489457 (B.P.A.I. Jun. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MARK EDWARD DAWES
________________

Appeal 2010-000635
Application 10/489,457
Technology Center 1700
________________

Decided: June 18, 2010
________________

Before EDWARD C. KIMLIN, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000635
Application 10/489,457

2
A. Introduction1
Mark Edward Dawes (“Dawes”) timely appeals under
35 U.S.C. § 134(a) from the final rejection2 of claims 4-27 and 32-36.3
We have jurisdiction under 35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to laminated polymer films that
are said to provide a strong seal to a package during transport and storage,
and yet to provide the “apparently conflicting” characteristic of being readily
opened—even self-opened, during the cooking cycle. (Spec. 5, ll. 16-20.)
The sealing function is provided by a heat sealable layer on one side of a
substrate film. The opening function is provided by a polymeric heat
shrinkable layer on the opposite side of the substrate film. (Id. at 4, ll. 7-15.)
A conductive (usually metal) layer provides efficient heat transfer for more
rapid self-peeling and self-opening (id. at 5, ll. 12-14), as well as browning
or crisping of the food (id. at ll. 30-32). On heating, the heat sealable
peelable layer softens, and the heat-shrinkable layer shrinks, applying a
shear force to the lid and, “causing the lid to curl back on itself and peel
open during the cooking cycle.” (Id. at 6, ll. 13-16.) As a result, the user

1 Application 10/489,457, Multi-layer Polymeric Film for Packing
Ovenable Meals, filed 16 September 2004, as the National Stage of an
International Application filed 23 September 2002, claiming the benefit of
UK applications filed 7 May 2002 and 24 September 2001. The
specification is referred to as the “457 Specification,” and is cited as “Spec.”
The real party in interest is listed as DuPont Teijin Films U.S. Limited
Partnership. (Appeal Brief, filed 8 May 2009 (“Br.”), 1.)
2 Office action mailed 16 September 2008 (“Final Rejection”).
3 Claims 28-30, the only other pending claims, have been withdrawn from
consideration.
Appeal 2010-000635
Application 10/489,457

3
need not pierce the lid to vent steam during the cooking cycle. (Id. at 3,
ll. 21-26; 6, ll. 16-17.)
Representative Claim 36 reads:
36. A heat-sealable peelable multilayer laminated polymeric
film comprising the following substantially coextensive
elements:
(a) a self-supporting polymeric film substrate having a
first melting point temperature,
(b) a polymeric heat-sealable peelable layer on one side
of the substrate, and
(c) a self-supporting polymeric heat shrinkable film
having a second melting point temperature, on a side of
the substrate opposite the heat-sealable peelable layer;
(d) a layer of an electrically conductive material; and
(e) one or two intermediate heat-sink film(s), disposed
between the substrate and the shrinkable film and/or
between the substrate and the heat-sealable peelable
layer;
wherein said shrinkable film has a degree of shrinkage in
a first dimension of about 10-80% over the temperature
range 55 to 100°C, and a ratio of shrinkage at 100°C in
said first dimension relative to a second, orthogonal
dimension in the range of 1:1 to 10:1;
wherein the shrinkable film has a degree of shrinkage in
one or both of said first and second dimension(s) that is
greater than the degree of shrinkage of the film substrate
in said dimension(s) at substantially the same
temperature; wherein the polymeric heat-sealable,
peelable layer is capable of forming a heat seal bond to a
receptacle surface at a temperature which is less than said
first and second melting point temperatures; and
wherein a difference in the degree of shrinkage in the
substrate layer and the shrinkable film upon heating is
Appeal 2010-000635
Application 10/489,457

4
selected to curl said film away from said receptacle
bonded thereto generating a peeling force sufficient to
overcome said bond between the heat sealable layer and
at least part of said receptacle surface.
(Claims App., Br. 15-16; indentation and paragraphing added.)
The Examiner has maintained the following grounds of rejection:4
A. Claims 4-27 and 32-36 stand rejected under 35 U.S.C. § 112(1)
as lacking an adequate written description of the limitation
“coextensive elements.”
B. Claims 36, 4-8, 17-20, and 22-27 stand rejected under and
35 U.S.C. § 103(a) in view of Kendig.5
C. Claims 9-16 stand rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Kendig and Boyce.6
D. Claims 21 and 32-35 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Kendig and Kinigakis.7
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The issues dispositive of this appeal center on the requirement that the
claimed film have “substantially coextensive elements”—films and
layers (a) through (e) —as recited in claim 36.

4 Examiner’s Answer mailed 2 July 2009. (“Ans.”)
5 Terrance D. Kendig and Patricia L. Kelly, Heat-Shrinkable, Heat-Sealable
Polyester Film for Packaging, WO 01/54886 A1 (2 August 2001).
6 David Boyce et al., Polyester Film, WO 99/62982 (1999).
7 Panagiotis Kinigakis et al., Microwavable Package and Process, U.S.
Patent 5,039,001 (1991).
Appeal 2010-000635
Application 10/489,457

5
The first question is whether the originally filed specification
describes “substantially coextensive elements.” Dawes admits (Br. 4,
ll. 1-9) that the express limitation, “substantially coextensive elements,” is
not present in the original specification. Dawes argues, however, that
“unless other wise indicated, ALL of those layers must be present across the
entire length and width of the film, otherwise the utility and advantage
conferred upon the multilayer film by each of the respective layers is not
present at all points across the film.” (Id., 2d full para.) Dawes notes that
the specification explicitly discloses a non-coextensive option for only one
of the five required film layers (a metal layer), which disclosure, in Dawe’s
view, clearly conveys that co-extensive coverage is being implicitly
described for all the layers of the film under the circumstances when that
option is not exercised. (Id.)
The Examiner denies, without explanation, that the term as used by
Dawes is supported in the original disclosure. (Ans. 3, first full para.)
However, the sense the Examiner would give to the disputed limitation is not
entirely clear. By rejecting the claims as obvious in view of Kendig, the
Examiner appears to argue that the existence of “coextensive
regions/dimensions” (id., penultimate para.) of a prior art film suffices to
meet the disputed limitation. At the same time, the Examiner renews the
argument that the 457 Specification “does not disclose coextensive elements
or expressly state the elements have the same dimensions.” (Id.)
The term “substantially” can acquire meanings ranging from “nearly
all” to “enough to make a difference,” depending on the context. Here, as
Dawes argues, the context provided by the nature of elements (a)
Appeal 2010-000635
Application 10/489,457

6
through (e), all of which are characterized as “films” or “layers,” and the
disclosed use, namely covering or packaging an “ovenable meal” with a self-
opening lid, indicates that the layers are coextensive “nearly everywhere,”
rather than “enough anywhere to make a difference.” The Examiner’s mere
denial that the meaning advanced by Dawes is conveyed by the originally
filed specification fails to establish any persuasive facts that tend to indicate
that a person having ordinary skill in the art would have understood
the 457 Specification to mean something else. Whether the written
description requirement has been met is a question of fact that is resolved
based on the preponderance of the evidence of record. Here, the evidence
advanced by Dawes weighs more than the evidence advanced by the
Examiner. Hence, we REVERSE the rejection for lack of an adequate
written description.
The Examiner relies on seams described by Kendig as forming a bag
from a multilayer polymeric film to meet the coextensive layers recited in
the claims. The seams, however, even if they comprise the necessary layers
in the necessary relations, do not form a multilayer laminated film
comprised of “substantially coextensive elements.” (Cf. Br. 6-7.)
The rejections based further on the teachings of Boyce and Kinigakis do not
cure this fundamental infirmity of Kendig with respect to the claimed
invention. Accordingly, we REVERSE the rejections for obviousness.
C. Order
We REVERSE the rejection of claims 4-27 and 32-36 under
35 U.S.C. § 112(1) as lacking an adequate written description.
Appeal 2010-000635
Application 10/489,457

7
We REVERSE the rejection of claims 36, 4-8, 17-20, and 22-27 under
and 35 U.S.C. § 103(a) in view of Kendig.
We REVERSE the rejection of claims 9-16 under 35 U.S.C. § 103(a)
in view of the combined teachings of Kendig and Boyce.
We REVERSE the rejection of claims 21 and 32-35 under
35 U.S.C. § 103(a) in view of the combined teachings of Kendig and
Kinigakis.
REVERSED

PL Initial:
sld

RATNERPRESTIA
P.O. BOX 1596
WILMINGTON DE 19899