Ex Parte Deng et al

Patent Trial and Appeal Board

Aug 22, 2018

12675262 (P.T.A.B. Aug. 22, 2018)

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.
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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).
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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.
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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.
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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
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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
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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
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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
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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.
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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
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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.
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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
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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
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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.").
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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.
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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.
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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
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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
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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).
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AFFIRMED
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