Ex Parte Dawes

Board of Patent Appeals and Interferences

Feb 9, 2012

10381897 (B.P.A.I. Feb. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/381,897 09/25/2003 Mark Edward Dawes DTG1-103US 3652
31344 7590 02/10/2012
RATNERPRESTIA
P.O. BOX 1596
WILMINGTON, DE 19899
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
02/10/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARK EDWARD DAWES
__________

Appeal 2010-001911
Application 10/381,897
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001911
Application 10/381,897

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s final
rejection of claims 1-18 and 23. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to a heat-sealable peelable multi-
layer laminated polymeric film (claims 1-16, 18, and 23) and a process for
producing the film (claims 17 and 18).1 The film comprises a self-supporting
polymeric film having a polymeric heat-sealable peelable layer on one side of the
self-supporting film and a polymeric shrinkable layer on the opposite side of the
self-supporting film. Claims 1 and 17 recite that the shrinkable layer has a degree
of shrinkage in one or both of a first and a second, orthogonal dimension(s) “that is
greater than the degree of shrinkage of the self-supporting polymeric film in said
dimension(s) when both are heated at substantially a same temperature within said
temperature range.” App. Br., Claims Appendix (emphasis added).2
The Appellant seeks review of the following Examiner’s rejections:
(1) the rejection of claims 1-4, 16-18, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Kendig (US 6,623,821 B1, issued Sept. 23, 2003); and
(2) the rejection of claims 5-15 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kendig and Boyce (WO 99/62982, published Dec. 9,
1999).

1 We note that claims 5/3, 5/4, 6, 7, 8, 18/3-18/16 are improperly multiple
dependent. See 37 C.F.R. § 1.75(c) (2011) (“A multiple dependent claim shall not
serve as a basis for any other multiple dependent claim.”).
2 Appeal Brief dated April 10, 2009.
Appeal 2010-001911
Application 10/381,897

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B. ISSUE
Did the Examiner reversibly err in concluding that the polymeric film recited
in claims 1 and 17, wherein the degree of shrinkage of the shrinkable layer is
greater than the degree of shrinkage of the self-supporting film, would have been
obvious to one of ordinary skill in the art in view of the teachings of Kendig?
We answer this question in the affirmative.
C. DISCUSSION
The Examiner finds that Kendig discloses a laminated polymeric film
comprising a self-supporting shrinkable layer having a peelable heat-seal coating
on one side of the shrinkable layer and a “second layer” on the opposite side of the
shrinkable layer. The Examiner finds that the “second layer” of Kendig
corresponds to the “polymeric shrinkable layer” recited in claims 1 and 17 and the
shrinkable layer of Kendig corresponds to the “self-supporting polymeric film”
recited in claims 1 and 17. Ans. 3.3
Kendig does not disclose that the “second layer” has a greater degree of
shrinkage than the shrinkable layer as recited in claims 1 and 17. Nonetheless, the
Examiner finds that Kendig discloses that the “second layer” and the shrinkable
layer have different degrees of shrinkage and concludes that it “would have been
obvious for one of ordinary skill in the art to have selected a desired shrinkage of
the second layer depending on the intended use of the end product.” Ans. 3-4.
The Appellant recognizes that Kendig discloses that the shrinkage values of
the shrinkable layer and the “second layer” may not be the same. However, the
Appellant argues:

3 Examiner’s Answer dated July 21, 2009.
Appeal 2010-001911
Application 10/381,897

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[Kendig] implies that the “other” layer [(i.e., the “second
layer”)] shrinks less than the shrinkable PET base film
[(i.e., the shrinkable layer)]. Kendig consistently
indicates that he relies upon his heat-shrinkable PET base
film . . . and not the “other” layer to provide the shrink
properties of his films.
App. Br. 5-6.
For support, the Appellant directs us to the following disclosure in Kendig:
The amount of shrinkage will be dictated by the heat-
shrinkable PET base [(i.e., the shrinkable layer)], but just
as important by the thickness and stiffness of the
secondary web. An example would be when adhesive
laminating to a thicker or stiffer substrate, in order to
gain the shrinkage desired from the laminate, a higher
percentage of shrinkage may be required of the PET base
sheet.
App. Br. 6; Kendig, col. 6, ll. 31-37 (emphasis added and initial emphasis omitted).
The Examiner does not address this disclosure in Kendig. Rather, the
Examiner contends that it would have been obvious for the outer, “second layer” of
Kendig to have a greater degree of shrinkage than the shrinkable layer because
“elimination of wrinkling at the outermost surface, which is desirable for a lidding
film used in the packaging industry, would be achieved by having the greater
shrinkage in the outermost layer.” Ans. 7. Significantly, the Examiner does not
direct us to any credible evidence that supports this position. Moreover, the
Appellant points out that Kendig discloses “that his films are just fine with respect
to wrinkling as-is, i.e., with the shrinkable layer inside.” Reply Br. 24; Kendig, col.
7, ll. 39-41 and col. 9, ll. 4-6.

4 Reply Brief dated September 18, 2009.
Appeal 2010-001911
Application 10/381,897

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Based on the foregoing, the preponderance of the evidence of record weighs
most heavily in favor of a conclusion of unobviousness. Therefore, the § 103(a)
rejection of claims 1-4, 16-18, and 23 based on Kendig is reversed.
The Examiner does not rely on Boyce as evidence that it would have been
obvious to modify the “second layer” of Kendig to have a greater degree of
shrinkage than the shrinkable layer as recited in claims 1 and 17. See Ans. 4-6, 8.
Therefore, the § 103(a) rejection of claims 5-15 based on the combined teachings
of Kendig and Boyce is also reversed.
D. DECISION
The decision of the Examiner is reversed.

REVERSED

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