Ex Parte Dawes et al

Board of Patent Appeals and Interferences

Mar 12, 2010

10502473 (B.P.A.I. Mar. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK EDWARD DAWES, GARY VICTOR RHOADES, and
STEPHEN WILLIAM SANKEY
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Appeal 2009-004261
Application 10/502,473
Technology Center 1700
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Decided: March 12, 2010
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
ADRIENE LEPIANE HANLON, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-10, 15-23, and 37-54. We have jurisdiction
under 35 U.S.C. § 6.
We REVERSE.
Appeal 2009-004261
Application 10/502,473

2
Appellants claim an open-ended tube comprising a multi-layer
polymeric film having certain characteristics, “wherein said multi-layer film
comprises a plurality of separating means which enable one multi-layer
portion of said film to be separated from an adjacent multi-layer portion of
said film” (claim 1; Figure 4).
Representative claim 1, the sole independent claim on appeal, reads as
follows:
1. An open-ended tube comprising walls of a heat-
sealable multi-layer polymeric film, wherein said film
comprises an outer shrinkable substrate layer and an inner heat-
sealable layer, wherein said substrate layer has a degree of
shrinkage in a longitudinal dimension of the tube of about 0%
to about 50% when heated from ambient temperature to a
temperature in the range of 55 to 100°C, and a degree of
shrinkage in a transverse dimension of the tube of about 5 to
about 70% when heated from ambient temperature to a
temperature in the range of 55 to 100°C, wherein said multi-
layer film comprises a plurality of separating means which
enable one multi-layer portion of said film to be separated from
an adjacent multi-layer portion of said film.

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Hart 5,130,189 Jul. 14, 1992
Meilhon 6,105,776 Aug. 22, 2000
Boyce WO 99/62982 Dec. 09, 1999
Kendig WO 01/54886 A1 Aug. 02, 2001

Under 35 U.S.C. § 103(a), the Examiner rejects claims 1-6, 10, 15-18,
and 21-23 as being unpatentable over Kendig in view of Meilhon and
correspondingly rejects the remaining claims on appeal over these references
in various combinations with Boyce and Hart.
Appeal 2009-004261
Application 10/502,473

3
In rejecting representative claim 1, the Examiner acknowledges that
“Kendig fails to teach that the packaging film is formed into an open-ended
tube or that it comprises a plurality of separating means which enable one
multi-layer portion of said film to be separated from an adjacent multi-layer
portion of said film” (Ans. para. bridging 3-4). Nevertheless, the Examiner
concludes that “it would have been obvious to one having ordinary skill in
the art at the time Appellant’s invention was made to wrap the heat shrink
packaging film of Kendig completely around the object to be contained
forming an open ended tube and to form the film with multiple zones of
weakness to permit easy access to the object contained within the film, as
taught by Meilhon” (id. at 4).
Appellants dispute the Examiner’s obviousness conclusion regarding
the “separating means” limitation of independent claim 1 (Br. 7). Appellants
explain that Meilhon’s film 3 exhibits a preferred direction of tearing D
which is perpendicular to the linear array of perforations in zone A, whereby
finger pressure in zone A ruptures the film to initiate a tongue J which is
pulled in the direction of arrow T1 or T2 along the preferred tearing
direction D in order to open the film via a resulting strip K (id. at 6; see also
Meilhon col. 3, ll. 21-49, col. 4, ll. 41-62, Figures 1-2). Appellants argue
that “[the] film claimed and the film shown in Kendig does not exhibit a
preferred tearing direction that can be used to advantage, so that inclusion of
the perforations of Mielhon to the film of Kendig would not result in
‘separating means’ as claimed” (id. at 7).
We agree with Appellants’ interpretation of Meilhon and with
Appellants’ point that opening (i.e., separating) this film depends upon the
fact that the film exhibits a preferred direction of tearing D. The Examiner
Appeal 2009-004261
Application 10/502,473

4
does not disagree with Appellants on this matter. Significantly, the
Examiner also does not disagree with Appellants’ statement that “the film
shown in Kendig does not exhibit a preferred tearing direction” (Br. 7). This
is significant because an artisan would have recognized that the opening or
separating feature taught by Meilhon relies on the film exhibiting a preferred
tearing direction D and therefore the artisan would not have been motivated
to provide Mielhon’s opening or separating feature in a film which does not
exhibit a preferred tearing direction D such as the film of Kendig. On this
record, the Examiner has given no reason why an artisan would have been
motivated to provide Meilhon’s opening or separating feature in the film of
Kendig when this film lacks the preferred tearing direction required by
Meilhon.
Under these circumstances, Appellants have revealed harmful error
in the Examiner’s rejection of representative independent claim 1.
Accordingly, we do not sustain the § 103 rejection of this claim or the § 103
rejections of the remaining dependent claims on appeal.
The decision of the Examiner is reversed.

REVERSED

kmm

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