Ex Parte Deng et alDownload PDFPatent Trial and Appeal BoardAug 22, 201812675262 (P.T.A.B. Aug. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/675,262 02/25/2010 31344 7590 08/24/2018 RATNERPRESTIA 2200 RENAISSANCE BL VD SUITE 350 KING OF PRUSSIA, PA 19406 FIRST NAMED INVENTOR Fenghua Deng 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. CONFIRMATION NO. DTG-114US 3094 EXAMINER THAKUR, VIREN A ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 08/24/2018 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): PCorrespondence@ratnerprestia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FENGHUA DENG and STEPHEN K. FRANZYSHEN Appeal 2016-006529 Application 12/675,262 Technology Center 1700 Before LINDA M. GAUDETTE, MARK NAGUMO, and JANEE. INGLESE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL 1 1 This Decision includes citations to the following documents: Specification filed February 25, 2010, as amended ("Spec."); Final Office Action dated April 30, 2015 ("Final"); Appeal Brief filed November 4, 2015 ("Appeal Br."); Examiner's Answer dated April 21, 2016 ("Ans."); and Reply Brief filed June 21, 2016 ("Reply Br."). Appeal2016-006529 Application 12/675,262 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's decision finally rejecting claims 1-15, 17, and 18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Claims 1 and 17, reproduced below, are illustrative of the claimed subject matter: 1. An ovenable vacuum skin package for storage and cooking of a food product, comprising a receptacle and a thermoformable biaxially oriented composite polymeric film cover capable of being heat-sealed thereto, the composite polymeric film cover compnsmg: (i) a thermoformable substrate layer comprising a first copolyester material comprising units of terephthalic acid, azelaic acid, ethylene glycol and diethylene glycol; and (ii) on a surface of the substrate layer, a heat-sealable layer comprising a second copolyester material, the second copolyester material being different from the first copolyester material; wherein i. the receptacle comprises on a surface thereof a sealing region adapted to contact and form a seal with the heat- sealable layer; ii. both the receptacle and the composite polymeric film cover are such that the food contact surface, when exposed to distilled water at 250°F (121 °C) for 2 hours, yields chloroform-soluble extractives not to exceed 0.02 mg/in2 (0.003 lmg/cm2 ) of food contact surface exposed to the solvent; and such that the food contact surface, when exposed to n- heptane at 150°F for 2 hours, yields chloroform-soluble 2 Appellants identify the real party in interest as "DuPont Teijin Films U.S. Limited Partnership." Appeal Br. 1. 2 Appeal2016-006529 Application 12/675,262 extractives not to exceed 0.02 mg/in2 (0.0031 mg/cm2) of food contact surface exposed to the solvent; and 111. the composite polymeric film cover has a shrinkage of less than 5% in the machine and/or transverse directions as measured by placing a sample in an oven at a temperature of 190°C for 5 minutes and determining the average % shrinkage in both the machine and transverse directions, based on five film samples; wherein the composite polymeric film cover is capable of being vacuum thermoformed to conform to the surface of the food product. 17. The ovenable vacuum skin package according to claim 1, wherein the first copolyester material in the thermoformable substrate layer has a crystallinity percentage in a range from 3% to 40%. Appeal Br., Claims Appendix. The Examiner relies on the following references in rejecting the claims: Kane Fisher Hayes Peiffer Sankey Yamamoto Pawlick Bell Jeffels us 3,912,823 us 4,933,193 US 2004/0024102 Al US 2005/0100729 Al US 2005/0249906 Al WO 2004/028920 Al US 2008/0138473 Al WO 00/23520 WO 96/19333 Oct. 14, 1975 June 12, 1990 Feb. 5,2004 May 12, 2005 Nov. 10, 2005 April 8, 2004 June 12, 2008 April 27, 2000 June 27, 1996 Cryovac Simple Steps Packaging- Sealed Air North America, Sealed Air Corporation. Stanley R. Rosen, Thermoforming: Improving Process Performance, Society of Manufacturing Engineers, (2002). 3 Appeal2016-006529 Application 12/675,262 Gas Barrier Technologies, Web Archive Organization, http://web.archive.org/web/20050404200117/http://www.gasbarriertechnologies.co m/films.html (last visited Aug. 17, 2014). Claims 1-15, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as follows: 1. claims 1--4, 10-12, 14, 15, 17, and 18 over Bell in view of Fisher, Hayes, "Cryovac Simple Steps Packaging" ("Cryovac"), Kane, Jeffels, and Yamamoto3, a. claim 5 over the same references relied on in rejecting claim 1, further in view of Sankey, b. claims 6-9, 11, and 13 over the same references relied on in rejecting claims 1 and 12, further in view of Peiffer; 2. claims 1--4, 6-15, 17, and 18 over Peiffer in view of Yamamoto, "Gas Barrier Technologies," Fisher, Hayes, Cryovac, and Kane, a. claim 5 over the same references relied on in rejecting claim 1, further in view of Sankey; and 3. claims 1---6, 12, 14, 15, 17, and 18 over Sankey in view of Fisher, Hayes, Cryovac, and Kane, a. claims 2--4, 7-11, and 13 over the same references relied on in rejecting claims 1 and 12, further in view of Peiffer. Final 3-31. Claims 1-15, 1 7, and 18 also stand rejected on the ground of nonstatutory obviousness-type double patenting as follows: 4. claims 1--4, 6-15, 17, and 18 over claims 34 and 44 of the '612 patent (US 8,202,612), in view of Peiffer, Fisher, Hayes, Kane, Cryovac, and Yamamoto, 3 The Examiner's relies on US 7,237,371 for an English translation. Final 3, 14. 4 Appeal2016-006529 Application 12/675,262 a. claim 5 over the same references relied on in rejecting claim 1, further in view of Sankey; and 5. claims 1--4, 6-15, 17, and 18, provisionally, over claims 4, 29, 33, and 44 of copending Application No. 12/447,983 in view of Peiffer, Yamamoto, Fisher, Hayes, Cryovac, and Kane, a. claim 5, provisionally, over the same references relied on in rejecting claim 1, further in view of Sankey. Final 32--44. 4 The Examiner additionally relies on Pawlick and Rosen for evidentiary support. Final 3, 14, 23, 32, 40. The Prior Art Bell Bell discloses an ovenable food tray that is fabricated by conventional thermoforming techniques. Bell 6:23, 26-27. The tray is "designed to receive a lid or other closure to provide an hermetically sealed container." Id. at 18:27-28. Peiffer Peiffer discloses an ovenable tray and a lid that comprises a biaxially oriented polester film having a base layer (B) and a heatsealable, peelable, outer layer (A). See Peiffer Fig. 1, ,r,r 5, 43. "The base layer of the film includes preferably at least 50% by weight of thermoplastic polyester," such as "polyesters of ethylene glycol and terephthalic acid." Id. ,r 66. The base layer may also include aliphatic dicarboxylic acids, of which C3-C19 alkanedioic acids are 4 The rejection of claim 15 under 35 U.S.C. § 112, second paragraph, has been withdrawn. Ans. 2. 5 Appeal2016-006529 Application 12/675,262 preferred ( e.g., azelaic acid (id. ,r 54)), and diethylene glycol. Id. ,r,r 67---68. The base layer may be prepared by a polycondensation process. Id. ,r 70. Sankey Sankey discloses a coated polymeric film for use as a lid on an oven or microwaveable tray. Sankey ,r 2. The coating layer of the film provides a heat seal bond to the container. Id. ,r 13. The substrate layer of the film may be obtained by condensing one or more dicarboxylic acids with one or more glycols, such as ethylene glycol and diethylene glycol. Id. ,r,r 38, 46. "Particularly preferred examples of the copolyesters of the coating layer are ... copolyesters of azeleic acid and terephthalic acid with an aliphatic glycol, preferably ethylene glycol .... " Id. ,r 39. Fisher Fisher discloses a microwave cooking package that includes "a film lid covering the tray and conformed to the shape of the food item." Fisher Abstract. Fisher describes the lid as being "made from a film which is soft and flexible enough when heated to conform to the shape of the tray [and] the food" during the vacuum forming process. Id. at 5:58---64. According to Fisher, "[i]t is also important that the film, after thermoforming, should harden, upon cooling, to form a tight mechanical seal or lock over the lip of the tray." Id. at 6:3---6. Fisher discloses an exemplary embodiment wherein the lid comprises a "film of polyethylene terephthalate ( coated with a layer of copolyester prepared from the condensation of ethylene glycol with terephthalic acid and azelaic acid)." Id. at 7:34--37. Hayes Hayes discloses coatings comprising sulfonated aliphatic-aromatic copolyetheresters that may be used in food packaging applications such as films 6 Appeal2016-006529 Application 12/675,262 and skin packaging. Hayes ,r 130. Hayes further discloses that the films may be laminated onto a wide variety of substrates by known processes such as thermoforming. Id. ,r 132; see also ,r 93. Cryovac Cryovac discloses a microwavable food package formed by vacuum skin packaging technology. Cryovac 1. The package is said to be advantageous in that the vacuum film provides a total seal to reduce leakage and contours to the product to improve visual presentation of the product. Id. Jeffels Jeffels discloses "a sealed container comprising a receptacle containing food or drink, and a lid formed from a polymeric film comprising a substrate layer of a polymeric material having on at least one surface thereof a coating layer comprising a copolyester." Jeffels 2: 14--17. Suitable materials for the substrate include terephthalic acid, azelaic acid, and one or more glycols including ethylene glycol. See Jeffels 2:26-36. Jeffels discloses that a biaxially oriented polyethylene terephthalate film is preferred. Id. at 3 :2--4. Yamamoto Yamamoto discloses a container material film for vacuum packaging of food comprising a laminate structure that includes a sealable resin layer and an outer surface layer. See Yamamoto 1:13-27, 9:59---66. Yamamoto provides a list of preferred resins for use in the outer surface layer that includes terephthalic acid, azelaic acid, ethylene glycol, and diethylene glycol. See id. at 12: 1-24. Kane Kane discloses a vacuum skin-package that may be used to cook foods at a temperature up to about 400°F. See Kane 1: 6-11. Kane discloses that the upper 7 Appeal2016-006529 Application 12/675,262 package member is a thermoformable polyethylene terephthalate film having a degree of crystallinity of less than 15%. Id. at 2: 15-17, 6: 10-18. Gas Barrier Technologies Gas Barrier Technologies is a publication that describes Nylon MXD6 as improving thermo formability of films. Rosen Rosen is titled "Thermoforming: Improving Process Performance." Rosen teaches that "[a]s density (crystallinity) goes down [low density polyethylene] becomes softer and more pliable, and the melting point also decreases." Rosen 25. Rejections Under 35 U.S.C. § 103(a) With respect to each of above-listed grounds of rejection 1-3, Appellants present arguments in support of patentability as to claims 1-15, 17, and 18 based on limitations common to independent claims 1 and 12. Appellants also present arguments in support of dependent claims 1 7 and 18, which recite similar limitations but differ in that claim 1 7 depends from claim 1 and claim 18 depends from claim 12. We note that any arguments not addressed below have been fully addressed by the Examiner and are unpersuasive for the reasons stated in the Final Office Action and the Answer. Rejections based on Bell as the primary reference ( Ground 1) Claims 1 and 12 The Examiner finds "Bell teaches an ovenable tray having a lip onto which a lid or closure has been sealed to provide a hermetically sealed container." Final 4 (internal citations omitted). The Examiner finds Bell does not specify that the lid comprises a thermoformable composite polymeric film having the features recited 8 Appeal2016-006529 Application 12/675,262 in appealed claims 1 and 12. Id. The Examiner finds, however, that "Fisher and Hayes teach cook-in lidding films that can be used in vacuum skin packaging," and determines that modify[ing] Bell ... to use [a] vacuum skin packaging covering film would ... have been obvious to one having ordinary skill in the art for the purpose of conforming the shape of the film to that of the food and thus securing the food in place, and for the purpose of removing the air from the package to thus facilitate extending the shelf-life of the contents. Id. at 5. The Examiner finds Fisher and Hayes do not disclose a film comprising the specific components recited in claims 1 and 12. See id. The Examiner cites Jeffels and Yamamoto in support of a finding that "substrate films that are ovenable and can comprise units of terephthalic acid, azelaic acid, ethylene glycol and diethylene glycol have been conventionally used for vacuum skin packaging." Id. at 6. The Examiner finds, more specifically, that Jeffels teaches "the substrate can comprise units of terephthalic acid, azelaic acid, and more than one glycol including ethylene glycol and where the polymeric covering film has been biaxially oriented." Id. at 5---6 (internal citations omitted). The Examiner finds "Yamamoto further teaches substrates similar to Jeffels, and where the substrate can be coated with a heat sealable resin, and where the substrate can also comprise units of terephthalic acid, azelaic acid, ethylene glycol and diethylene glycol." Id. at 6 ( emphasis omitted). The Examiner finds Kane teaches that "vacuum skin packaging can be achieved by using various degrees of thermoformability to the film, by way of the film's crystallinity," and that "levels of diethylene glycol can be used to control the glass transition temperature [(Tg)]." Id. at 6-7. The Examiner also cites Rosen as evidence that crystallinity is a factor in thermoformability of films. Id. ( citing Rosen, page 25, second full sentence: "As 9 Appeal2016-006529 Application 12/675,262 density ( crystallinity) goes down, the polymer becomes softer and more pliable .... "). Based on these findings, the Examiner determines one of ordinary skill in the art would have made the vacuum skin packaging covering for Bell's container using a substrate film comprising units of terephthalic acid, azelaic acid and ethylene glycol, as well as diethylene glycol, as a matter of engineering choice and/or design, based on the desired glass transition temperature for thermoforming the film to the contents. Id. at 6. The Examiner further determines "one having ordinary skill in the art [ would] have used a ... copolyester layer [having a crystallinity] ... as taught by Kane, for the purpose of being able to provide the requisite pliable characteristics for providing a vacuum skin lidding film." Id. at 7-8. Appellants argue the rejection is based on impermissible hindsight reasoning. See generally, Appeal Br. 4--9. Appellants argue Jeffels neither explicitly discloses nor suggests a thermoformable film, and provides no direction to select the components of the film recited in claims 1 and 12 from the list of numerous components identified as suitable for use in Jeffels' substrate film. See, e.g., id. at 5 ("The various acids and diols mentioned here might be combined in any of a number of undefined permutations and proportions, but not all of these combinations, in all possible amounts, would necessarily produce a film capable of being vacuum thermoformed to conform to the surface of a packaged food product."). Appellants further argue there is no evidentiary support for the Examiner's finding that one of ordinary skill in the art would have added diethylene glycol units to Jeffels' substrate layer. Id. at 6-7. More specifically, Appellants contend the Examiner has not identified persuasive evidence that the ordinary artisan would have understood that adding diethylene glycol would reduce T g and/or that reducing T g would improve thermoformability. Id. 10 Appeal2016-006529 Application 12/675,262 Appellants similarly argue Yamamoto fails to provide direction to select the components of the substrate layer from the numerous components identified as suitable for use in Yamamoto's film. Appeal Br. 8. Appellants further argue Yamamoto discloses the use of a polyamide rather than a copolyester for the heat- sealable layer and, therefore, even if Bell was modified to include a vacuum skin packaging covering as taught by Yamamoto, the claimed invention would not result. Id. Having considered the respective arguments of the Examiner and Appellants, and the evidence of record in this appeal, we are not convinced of reversible error in the Examiner's conclusion of obviousness for the reasons given by the Examiner in the Answer. See Ans. 2-13. We add the following for emphasis. As an initial matter, we note that Appellants' arguments, particularly with respect to Jeffels and Yamamoto, are directed to each reference individually, and fail to address the Examiner's findings with respect to what the ordinary artisan would have understood from the collective teachings of the references. Appellants concede Jeff els teaches that each of terephthalic acid, azelaic acid, and ethylene glycol is among the "starting materials that may be chosen to contribute to the substrate layer in the coated film of that invention," and do not dispute that Jeff els teaches that more than one glycol may be used in the substrate layer, but argue Jeffels discloses numerous possible combinations with no direction to select these particular components. Reply Br. 4; see Appeal Br. 6. Appellants' argument is not persuasive because it does not address the Examiner's finding that one of ordinary skill in the art would have been motivated to select the claimed components upon consideration of the combined teachings of (1) Fisher, which explicitly discloses a thermoformable "film of polyethylene terephthalate ( coated with a layer of 11 Appeal2016-006529 Application 12/675,262 copolyester prepared from the condensation of ethylene glycol with terephthalic acid and azelaic acid)" (Fisher 7:34--37) for use in a cook-in type vacuum skin packaging, (2) Yamamoto, which discloses a laminate structure having an outer surface layer comprising a combination of two or more dicarboxylic acids, such as terephthalic acid and azelaic acid, and two or more diols, such as ethylene glycol and diethylene glycol (Yamamoto 12:3-24), and (3) Kane, which discloses that diethylene glycol can be used to adjust T g of a polyethylene terephthalate film used in vacuum skin-packaging (see Kane 5:37-39). Final 4--6; see PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1364 (Fed Cir. 2007) ( explaining that an obviousness rejection predicated on selection of one or more components from numerous possible choices may be appropriate if the prior art provides direction as to which of many possible choices is likely to be successful). Because the Examiner provided a reasonable basis for determining that the prior art would have suggested a composite polymeric film comprising the same components, useful for a similar function, recited in claims 1 and 12, the burden was properly shifted to Appellants to show that such film would not have been expected, reasonably, to be capable of being vacuum thermoformed to conform to the surface of a food product as required by the claims. See In re Best, 562 F .2d 1252, 1255 (CCPA 1977) ( citations omitted): Where ... the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on 'inherency' under 35 U.S.C. § 102, on 'prima facie obviousness' under 35 U.S.C. § 103,jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. 12 Appeal2016-006529 Application 12/675,262 Appellants' unsupported attorney argument fails to meet this burden. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (argument by counsel cannot take the place of evidence). In this regard, we find the Specification does not support Appellants' contention that the combinations of components listed in Jeffels would not necessarily produce a film capable of being thermoformed (Appeal Br. 5). Specifically, with the exception of diethylene glycol, which the Specification identifies as optional (Spec. 6: 1-2), Jeffel's list of suitable components for the substrate is substantially identical to the Specification's list. Compare 2:27-3:1, with Spec. 5:32---6:1; see In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) ("Even if no prior art of record explicitly discusses the ... [limitation], [Appellants'] application itself instructs that [ the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in [the claimed invention]."); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) ("The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise have been obvious."). We find additionally that the Specification lacks any indication of criticality in the particular claimed combination of components. See, e.g., Spec. 5:28---6:6 (listing numerous dicarboxylic acids and glycols as suitable for use in the substrate layer); id. at 9: 18-19 (listing "copolyesters of azelaic acid and terephthalic acid with an aliphatic glycol, preferably ethylene glycol" as one of three particularly preferred embodiments); id. at 6: 1-2 (identifying diethylene glycol as optional). We are also unpersuaded by Appellants' argument that the Examiner improperly relies on "an allegedly inherent property of Jeffels' film, i.e., thermo formability, as the reason to use J effels' film in Bell" because one of ordinary skill in the art would not have recognized thermoformability as a property 13 Appeal2016-006529 Application 12/675,262 of Jeffels' film. Reply Br. 6. Appellants' argument again fails to address the Examiner's findings regarding the understanding of the ordinary artisan at the time of the invention with respect to the collective teachings of the references, and misapprehends the Examiner's reasons for combining the references. See, e.g., Ans. 12 ("[S]ince Bell also similarly teaches a cook-in type package, one having ordinary skill in the art would have been motivated to use a copolyester cover film as taught by Jeff els for the purpose of providing improved heat sealing and peelability."); Alcon Research, Ltd. v Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) ("[M]otivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the patentee had." ( citing KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (stating that it is error to look "only to the problem the patentee was trying to solve"))). Specifically, the Examiner's finding that one of ordinary skill in the art would have utilized a film lid as claimed for Bell's tray is based on the combination of ( 1) Cryovac' s disclosure of various advantages in using vacuum skin packaging as a cover for an ovenable tray, such as Bell's, (2) Fisher's disclosure of a vacuum skin packaging for use as a cover/lid for an ovenable tray that "is made from a film which is soft and flexible enough when heated to conform to the shape of the tray" (Fisher 5:58---60) and "will maintain its integrity during the vacuum forming process" (id. at 5:63---64), such as a "film of polyethylene terephthalate ( coated with a layer of copolyester prepared from the condensation of ethylene glycol with terephthalic acid and azelaic acid)" (id. at 7:34--37), (3) Rosen's disclosure that polyethylene polymers become softer and more pliable as crystallinity goes down (Rosen 25), (4) Kane's disclosure that films having a degree of crystallinity higher than 15% are not readily heat-sealable (Kane 7: 18-20), ( 5) J effels' disclosure of a coated film that provides strong heat sealing and easy peeling properties and wherein the same components used in 14 Appeal2016-006529 Application 12/675,262 Fisher's film are disclosed as suitable for use as the substrate (see Jeffels 1 :8-12, 2:26-3:1, Abstract), and (6) Kane's disclosure that diethylene glycol can be used to control glass transition temperature (Kane 5:26-40). Final 4--8; Ans. 12. Appellants argue the Examiner has not identified sufficient support in finding that the ordinary artisan would have added diethylene glycol to Jeffels' substrate layer to reduce glass transition temperature. Appeal Br. 6-7; Reply Br. 5---6. This argument is not persuasive, however, because Fisher discloses that the film used for a container lid must be soft and flexible enough when heated during a vacuum forming process to conform to the shape of the container and food (Fisher 5:58---60, cited in Final 4), and Appellants have not shown error in the Examiner's finding that the ordinary artisan at the time of the invention would have known the temperature at which a polymer is soft and rubbery (i.e., formable) is the glass transition temperature (Ans. 9), which Kane discloses can be controlled by the addition of the monomer diethylene glycol. 5 See generally, Reply Br. 5---6. Claims 17 and 18 Appellants contend the Examiner's finding that one of ordinary skill in the art would have utilized a first copolyester material in the thermoformable substrate having a crystallinity percentage in the claimed range is based on an erroneous finding that Kane teaches a crystallinity of less than 15% is needed toprovide the requisite thermoformable characteristics for Kane's invention. Appeal Br. 9. Appellants argue "Kane does not teach that low crystallinity and 5 See also Spec. 4:22-27 ( explaining the relevance of glass transition temperature in a thermoforming process: "A thermoforming process is a process which comprises the steps of heating a film to a temperature (T 1) that is above the glass transition temperature (T g ) of the material, ... and then ... deforming the material while it is in its softened, rubbery, solid state."). 15 Appeal2016-006529 Application 12/675,262 thermoformability are related as cause and effect, but rather that they are both effects, i.e., of the particular stretching conditions." Id. Appellants further argue "Rosen teaches that lower-crystallinity polyethylene (PE) is 'softer and more pliable' than higher density polyethylene," but "[p]liability does not indicate thermoformability." Id. Appellants' argument is not persuasive because it fails to address the Examiner's finding that Kane teaches a cover film having a crystallinity of 15% or less is desirable when forming vacuum skin packages because it is able to conform to the shape of food when heated (Ans. 14--15 (citing Kane 2:20-30, 6: 14--18, 7: 18-22)). See Reply Br. 8-9. Rejections based on Peiffer as the primary reference (Ground 2) The Examiner finds Peiffer teaches an ovenable tray with a biaxially oriented polymeric film thereon, the film comprising a thermoformable substrate layer and a heat sealable layer. Final 14. The Examiner finds Peiffer's substrate layer is thermoformable because it comprises a copolyester made by the same process used by the inventors (i.e., polycondensation), using constituents that overlap those used by the inventors. Id. at 15. The Examiner relies on Fischer, Hayes, and Cryovac in finding one of ordinary skill in the art would have employed Peiffer' s lidding film as a vacuum skin packaging to extend the shelf life. Id. at 17-18; see discussion of Ground 1 supra. The Examiner relies on Yamamoto and Kane for a suggestion of including diethylene glycol as a monomer in the polymer of the substrate layer. Final 15; see discussion of Ground 1 supra. The Examiner relies on Kane, and cites Rosen as evidence, in support of a finding that one of ordinary skill in the art would have used a crystallinity in the claimed range in order to provide the requisite pliable characteristics for a vacuum skin lidding film. Final 26; see discussion of Ground 1 supra. 16 Appeal2016-006529 Application 12/675,262 Appellants argue Peiffer neither explicitly discloses nor suggests a thermoformable film, and discloses an almost infinite number of combinations of components, not all of which would result in a film capable of being vacuum thermoformed. Appeal Br. 11. We are not persuaded by this argument for substantially the same reasons discussed above in connection with Ground 1. Namely, we find Fisher provides direction to select ethylene glycol, terephthalic acid, and azelaic acid from among the various components listed as suitable for use in Peiffer's film, and Kane provides a reason to add diethylene glycol. 6 Appellants' remaining arguments, including the separate arguments made in support of patentability of claims 17 and 18, are unpersuasive for the same reasons explained in connection with Ground 1, above. Rejections based on Sankey as the primary reference (Ground 3) The Examiner finds Sankey discloses an ovenable tray and lid wherein "the lidding film comprises [ a heat sealable layer and] a thermoplastic layer comprising a copolyester formed by condensing dicarboxylic acids such as terephthalic acid, azelaic acid with one or more glycols, such as ethylene glycol." Final 23. The Examiner further finds diethylene glycol is included in Sankey's list of suitable glycols. Id. The Examiner also finds the list of components identified as suitable for use in Sankey' s thermoplastic (substrate) layer is similar to the Specification's list. Id.; compare Sankey ,r 46, with Spec. 5:32---6:1. The Examiner also finds Sankey's heat sealable layer includes components similar to those used in 6 We find the Examiner's citation of Peiffer's use of Nylon MXD6 to support a finding that Peiffer's film is thermoformable (see Final 16) unnecessary to our determination that a preponderance of the evidence supports the Examiner's conclusion of obviousness. Therefore, we do not address the arguments made in connection with MXD6 because any error would have been harmless. 17 Appeal2016-006529 Application 12/675,262 Appellants' heat sealable layer. Final 23-24; compare Sankey ,r,r 39--43, with Spec. 9: 13-28; see also Sankey ,r 43 and Spec. 9:25-28 (both describing an exemplary embodiment wherein the copolyester comprises azeleic acid/terephthalic acid/ethylene glycol in a relative molar ratio of 45/55/100, having a T g of -15° C. and a Tm of 150° C). The Examiner determines that because Sankey discloses a lidding film comprising the same components used in Appellants' thermoformable lid, Sankey' s lid is also thermoformable. Final 23. The Examiner relies on Yamamoto and Kane for a suggestion of using diethylene glycol. Id. at 24; see discussion of Ground 1 supra. The Examiner relies on Fischer, Hayes and Cryovac in finding one of ordinary skill in the art would have employed Peiffer' s lidding film as a vacuum skin packaging to extend the shelf life. Id. at 25; see discussion of Ground 1 supra. The Examiner finds Sankey discloses the coating layer of the lidding film can have a degree of crystallinity that falls within the range recited in claims 17 and 18. Id. at 26 (citing Sankey ,r 44). Appellants argue the combinations of components listed in Sankey would not necessarily produce a film capable of being thermoformed. Appeal Br. 15-16. In support of this argument, Appellants rely on the declarations of Stephen William Sankey executed in 2012 and in 2015 (2012 Dec. and 2015 Dec., respectively). Appeal Br. 16. Dr. Sankey testified that he is a named inventor on the Sankey reference, and that "none of the substrate layers disclosed therein is thermoformable." 2012 Dec. ,r,r 2, 5. Dr. Sankey further testified that he is "familiar with the properties of the coated polymeric films and the substrate layers disclosed in US 2005/0249906 Al [(Sankey)], and every one of these will fail to conform to the surface of the food product under vacuum thermoforming conditions." 2015 Dec. ,r 2. As found by the Examiner, the declarations are unpersuasive because they fail to discuss the properties of a film that would have 18 Appeal2016-006529 Application 12/675,262 resulted from the combined teachings of the references. See Ans. 25-26. Moreover, Dr. Sankey' s testimony appears to relate to only Sankey' s exemplary films (see Appeal Br. 16), whereas the rejection is based on a film comprising components suggested by the combined teachings of the references. See Final 23- 26. Appellants' remaining arguments, including the separate arguments made in support of patentability of claims 17 and 18, are unpersuasive for the same reasons explained in connection with Grounds 1 and 2, above. Nonstatutory Obviousness-type Double Patenting Rejections The Examiner finds claims 34 and 44 of the '612 patent disclose a food packaging container that is sealed with a coextruded composite polymeric film comprising a heat sealable layer as claimed. Final 32. The Examiner finds the '612 patent does not recite in the claims, or otherwise disclose, that the substrate layer comprises units of terephthalic acid, azelaic acid, ethylene glycol, and diethylene glycol, but finds the ordinary artisan would have used a substrate layer as claimed in view of the teachings of Peiffer, Yamamoto, Kane, Jeff els, Fisher, and Hayes as discussed in connection with Grounds 1 and 2, above. Ans. 33-35. Appellants argue neither '612 patent claims 34 and 44 nor Peiffer discloses or suggests the use of a thermoformable substrate, and, therefore, there is no support for the Examiner's finding that the ordinary artisan would have used Peiffer's substrate in the film of claims 34 and 44 based on Peiffer's teaching of the advantage of a thermoformable substrate. Appeal Br. 19. As discussed in connection with Ground 2, above, Appellants' argument is not persuasive because it fails to show error in the Examiner's findings with respect to the understanding of the ordinary artisan upon consideration of the combined teachings of the references. Appellants' arguments are not supported by 19 Appeal2016-006529 Application 12/675,262 persuasive evidence and, therefore, are insufficient to refute the Examiner's reasoned finding that the applied prior art suggests the use of a thermoformable lidding film for the packaging container of '612 patent claims 34 and 44. Appellants' separate argument in support of patentability of claim 5 is limited to an assertion that Sankey fails to cure the deficiencies of the references relied on in rejecting claim 1. Because we are not persuaded of reversible error in the Examiner's rejection of claim 1, we do not find this argument persuasive. Provisional Double Patenting Rejections The Examiner provisionally rejected claims 1-15, 17, and 18 over claims 4, 29, 33, and 44 of copending Application No. 12/447,983 in view of various secondary references. Final 40-44. Appellants do not present arguments traversing these rejections. See generally, Appeal Br. According to Patent Office records, Application No. 12/447,983 went abandoned on December 14, 2017, due to the applicants' failure to respond to an office action. Accordingly, this rejection is dismissed as moot. Conclusion The rejections of claims 1-15, 17, and 18 under 35 U.S.C. § 103(a) based on Bell, Peiffer, and Sankey are sustained. The non-statutory, obviousness-type double patenting rejections of claims 1-15, 17, and 18 are sustained. The provisional double patenting rejections are dismissed as moot. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). 20 Appeal2016-006529 Application 12/675,262 AFFIRMED 21 Copy with citationCopy as parenthetical citation