Ex Parte Freedman

Board of Patent Appeals and Interferences

Jan 30, 2003

08985443 (B.P.A.I. Jan. 30, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MELVIN S. FREEDMAN
____________
Appeal No. 2001-2132
Application No. 08/985,443
____________
ON BRIEF
____________
Before GARRIS, WARREN, and LIEBERMAN, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of the examiner
refusing to allow claims 54 through 57, 59, 61 through 66, 68, 70 through 72, 79, 80
and 82 through 86, and claims 73 through 78 as amended subsequent to the final office
action.
Appeal No. 2001-2132
Application No. 08/985,443
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THE INVENTION
The invention is directed to a multilayer film facestock. The facestock comprises a
coextrudate of at least two layers comprising a base layer and at least one face layer. The
base layer is free of filler particles and has a stiffness of from about 10 to 100 Gurley.
Additional limitations are provided in the following illustrative claim.
THE CLAIM
Claim 54 is illustrative of appellant’s invention and is reproduced below:
54. A die-cuttable and matrix strippable multilayer film facestock having an
overall thickness of from 1.5 mils to about 6.5 mils for use in pressure-sensitive
adhesive label applications comprising a coextrudate of at least two layers
comprising a base layer and at least one skin layer wherein the base layer is thicker
than the skin layer, said coextrudate having a face side, said base layer comprising a
polyethylene having a density of from 0.89 to 0.965 free of filler particles, and
having a stiffness of from about 10 to 100 Gurley, and said skin layer being on the
face side of the coextrudate and having an ink-printable surface.
THE REFERENCE OF RECORD
As evidence of anticipation and obviousness the examiner relies upon the following
reference:
Shigemoto 4,380,567 Apr. 19, 1983

Appeal No. 2001-2132
Application No. 08/985,443
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1The rejection under 35 U.S.C. § 112, first paragraph has been withdrawn. See Answer, page 2.
The rejections over Takashi under 35 U.S.C. §§ 102 and 103 have been withdrawn. See Answer, page 3.
2All references to the Brief refer to the Substitute Appeal Brief (Paper No. 28).
THE REJECTIONS1
Claims 54, 55, 59, 61, 65, 73, 76, 79, 80, 82 and 83 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Shigemoto.
Claims 54 through 57, 59, 61, 64 through 69, 70, 73 through 76, 79, 80, 82
83 and 86 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Shigemoto.
OPINION
We have carefully considered all of the arguments advanced by the appellant and
the examiner and agree with the examiner that the rejection on the grounds of anticipation
and obviousness are well founded. Accordingly, we affirm both rejections.
As an initial matter the appellant has stated that, “the claims fall into a single
group.” See Brief, page 5.2 Accordingly, we select claim 54, an independent claim as
representative of the claimed subject matter and limit our consideration thereto. See
37 CFR §1.192(c)(7) (2000).
Appeal No. 2001-2132
Application No. 08/985,443
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Rejection under Section 102
It is the examiner’s position that the “the claimed stiffness of 10-100 Gurley is
inherent of the multilayer film.” See Answer, page 6. We agree.
Shigemoto is directed to an ethylenic composite film structure of sandwich structure.
See column 1, lines 5-6. We find that the film structure is composed of a layer A of high
density polyethylene having a preferable density of 0.950-0.965 which is anticipatory of
the claimed density. See column 2, lines 30-42. We further find that the high density
polyethylene of Examples 5 and 6 is 0.952, each of which is anticipatory of the claimed
density. The high density polyethylene is surrounded by a layer of B of a random
copolymer of ethylene and an alpha olefin. See column 1, lines 16-24. We find that the
thickness of layer B is 1-20 microns. See column 3, lines 65-67. We find that the
thickness of layer A is 5-100 microns. See column 4, lines 9-11. This thickness
corresponds to a range in mils of 0.27 mils to 4.72 mils. We further find that the overall
thickness of the layer in Examples 5 and 6 is 40
m which translates to 1.57 mils and is
anticipatory of the overall thickness required by the claimed subject matter. Furthermore
the base layer A is substantially thicker than the outer layer B as required by the claimed
subject matter.
We agree with the examiner’s finding that the base layer is free of filler particles
inasmuch as the reference is silent with respect to the presence of fillers in the base layer.
Furthermore, since patentee utilizes the composition for a transparent packaging material,
Appeal No. 2001-2132
Application No. 08/985,443
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one would expect that filler is absent from the article.
As to the “stiffness of from 10-100 Gurley,” it would have been well known to the
person skilled in the art that Gurley is a measure of force required to bend paper or paper
substitutes. The force required to bend paper or a paper substitute is a function of the
material itself. Accordingly, if one were to choose a high density polyethylene having a
given length and thickness within the scope of the claimed subject matter, e.g., Examples 5
and 6, the specific parameters chosen would be determinative of the Gurley stiffness
measured and accordingly a function of the material itself. Stated otherwise, as the only
requirement of the claimed subject matter is directed to a polyethylene having a specific
density range and thickness as taught by Examples 5 and 6, and no other parameters are
required to determine Gurley stiffness, it follows that Gurley stiffness is a characteristic of
the material itself. It is well settled that when appellants’ product and that of the prior art
appears to be identical or substantially identical, the burden shifts to the appellant to
provide evidence that the prior art product does not necessarily or inherently possess the
relied-upon characteristics of appellant’s claimed product. In re Fitzgerald, 619 F.2d 67,
70, 205 USPQ 594, 597 (CCPA 1980); In re Best, 562 F.2d 1252, 1255-56, 195
USPQ 430, 433-34 (CCPA 1977). Furthermore, the discovery of a new property even
when that property is unobvious from the prior art, cannot impart patentability to claims
directed to a known composition. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990). Based upon the above findings of fact and analysis, we conclude
Appeal No. 2001-2132
Application No. 08/985,443
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that the Shigemoto reference of record is satisfies the requirement of 10 to 100 Gurley of
the claimed subject matter.
As to the terms, “die-cuttable and matrix strippable” inasmuch as Shigemoto teaches
the requisite structure based upon the same core layer and a skin layer, it would be
expected that the multilayer film of Shigemoto would share the same physical
characteristics as that of the claimed subject matter. As stated above, it is well settled that
the mere recitation of a newly discovered function or property inherently possessed by
compositions known in the prior art, does not cause a claim drawn to these compositions
to distinguish over the prior art. Rather, the burden of proof shifts to the appellant to
prove that the subject matter shown to be in the prior art does not necessarily possess the
characteristic, i.e., “die-cuttable and matrix-strippable” of the claimed product. In re Best,
562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977); In re Skoner 517
F.2d 947, 950-51, 186 USPQ 80, 82-83 (CCPA 1975).
Finally we affirm the rejection both on the grounds of anticipation and obviousness
inasmuch as Shigemoto of record discloses particular values anticipatory of the claimed
subject matter for the density of the polyethylene and the thickness of each of the core
layer and matrix layer. Our determination of anticipation is based on the unique merits of
each case. In the instant case, we conclude that the teachings of Shigemoto anticipate
values within the range required by the claimed invention. Hence, Shigemoto anticipates
the claimed subject matter.
Appeal No. 2001-2132
Application No. 08/985,443
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As to the rejection under Section 103, it is well settled that the ultimate obviousness
is lack of novelty. The claims cannot have been anticipated and not have been obvious.
In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982).
DECISION
The rejection of claims 54, 55, 59, 61, 65, 73, 76, 79, 80, 82 and 83 under
35 U.S.C. § 102(b) as being anticipated by Shigemoto is affirmed.
The rejection of claims 54 through 57, 59, 61, 64 through 69, 70, 73 through
76, 79, 80, 82, 83 and 86 under 35 U.S.C. § 103(a) as being unpatentable over
Shigemoto is affirmed.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).

AFFIRMED

)
BRADLEY R. GARRIS )
Administrative Patent Judge ) BOARD OF PATENT
) APPEALS
) AND
) INTERFERENCES
Appeal No. 2001-2132
Application No. 08/985,443
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)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
Appeal No. 2001-2132
Application No. 08/985,443
9
WARREN, Administrative Patent Judge, Concurring:
I concur with the result reached by this panel.

)
) BOARD OF PATENT
) APPEALS
CHARLES F. WARREN ) AND
Administrative Patent Judge ) INTERFERENCES

PL/CFW:hh
Appeal No. 2001-2132
Application No. 08/985,443
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ARMAND P. BOISSELLE, ESQ.
RENNER, OTTO, BOISSELLE & SKLAR, P.L.L.
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