Ex Parte Grah et al

Patent Trial and Appeal Board

Jan 14, 2013

11142044 (P.T.A.B. Jan. 14, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/142,044 06/01/2005 Michael Grah D-43825-01 7554
7590 01/15/2013
Sealed Air Corporation
P.O. Box 464
Duncan, SC 29334
EXAMINER
BUTLER, PATRICK NEAL
ART UNIT PAPER NUMBER
1742
MAIL DATE DELIVERY MODE
01/15/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL GRAH, DREW SPEER,
and MARVIN R. HAVENS
____________________

Appeal 2011-011793
Application 11/142,044
Technology Center 1700
____________________

Before FRED E. McKELVEY, RICHARD E. SCHAFER and
DEBORAH KATZ, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

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Statement of the case
Cryovac, Inc. (“applicant”), the real party in interest (Corrected Brief 1
received 6 December 2010, page 2), seeks review under 35 U.S.C. § 134(a) of a 2
final rejection dated 15 January 2010. 3
The application has been published as U.S. Patent Application Publication 4
2006/0275564 A1. 5
In support of prior art rejections, the Examiner relies on the following 6
evidence. 7
Dunn et al.
“Dunn”
U.S. Patent 4,871,559 03 Oct. 1989
Ushirogouchi et al.
“Ushirogouchi”
U.S. Patent 5,691,101 25 Nov. 1997
Bakker et al.
“Bakker”
U.S. Patent 5,993,942 30 Nov. 1999
Owensby U.S. Patent 6,188,043 B1 13 Feb. 2001
Okuda et al.
“Okuda”
U.S. Patent 6,270,866 B1 07 Aug. 2001
Noel et al.
“Noel”
U.S. Patent 6,355,287 B2 12 Mar. 2002
Lavin et al.
“Lavin”
U.S. Patent 6,426,134 B1 30 July 2002

Mish et al.
Merriam-Webster’s
Collegiate Dictionary,
page 819 (10th ed.)

Copyright 1999

Applicant does not contest the prior art status of the evidence relied upon by 8
the Examiner. 9
We refer to the following additional evidence. 10

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Shah 1 U.S. Patent 4,726,984 23 Feb. 1988
Shah 2 U.S. Patent 4,755,419 5 July 1988

We have jurisdiction under 35 U.S.C. § 134(a). 1
The invention 2
Background 3
Prior art activating of the shrink characteristic of a heat-shrinkable film 4
has been accomplished by exposing the film to heat by immersing the film in a 5
hot-water bath or conveying the film through a hot-air tunnel. Specification, 6
page 1:8-10 7
According to applicant, such exposure may result in undesirable heating of a 8
product (e.g., a food product) that is enclosed within a package comprising the 9
shrink film. Specification, page 1:10-11. 10
Further according to applicant, such exposure may also require extensive 11
hot-water bath or heat tunnel equipment. Specification, page 1:11-12. 12
Process of the invention 13
Applicant’s invention is said to address the aforementioned problems. One 14
embodiment of the present invention is directed to a method of activating the 15
shrink characteristic of a film. 16
In a first step, a film is provided that comprises (1) one or more 17
thermoplastic polymers and (2) at least about 0.01 weight % of photothermic 18
material based on the weight of the film. 19

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In a second step, the film is exposed to an amount of non-ionizing 1
radiation effective for the photothermic material to generate heat to cause 2
(1) shrinking the film and/or (2) increasing the tension in the film. 3
Specification, page 1:15-22; page 2:5-11. 4
The film 5
The film can be any film with heat shrink characteristics, including 6
one or more thermoplastic polymers, for example, one or more of (1) polyolefins 7
(e.g., polyethylene, polypropylene), (2) ethylene/vinyl alcohol copolymers, 8
(3) ionomers, (4) vinyl plastics (e.g., polyvinyl chloride, polyvinylidene chloride), 9
(5) polyamide, and (6) polyester. Specification, page 2:14-17. 10
The “photothermic” material 11
The film comprises at least about 0.01 wt % of a photothermic material. 12
Specification, page 15:5-6. 13
The Specification states the following with respect to the photothermic 14
material (page 15:6 to page 16:2) [matter in brackets and italics added]: 15
A “photothermic material” as used herein is a material that [1] is 16
capable of absorbing non-ionizing radiation having a wavelength of 17
from about 200 nm to about 700 nm, and [2] as a result of the 18
absorption, undergoing a radiationless photophysical process that 19
results in the excited electron states reverting to ground state with the 20
generation of heat energy. 21
* * * 22

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The photothermic material may be capable of absorbing non-1
ionizing radiation having a wavelength of [from] at least about . . . 2
200 . . . [to about] 700 nm. 3
The photothermic material may be inorganic or organic. Specification, 4
page 16:3-4. 5
The photothermic material may comprise a blend of inorganic and organic 6
photothermic materials. Specification, page 16:4-5. 7
The photothermic material may be in the form of photothermic particles. 8
Specification, page 16:6. 9
1. Inorganic photothermic materials 10
The photothermic material may comprise one or more inorganic 11
photothermic materials. Specification, page 16:20-21. 12
Exemplary inorganic photothermic materials include (1) titanium dioxide 13
(TiO2), (2) zinc oxide (ZnO), (3) iron oxide (Fe2O3, Fe3O4), (4) tin oxide (SnO2), 14
(5) zinc sulfide (ZnS), (6) gallium nitride (GaN), (7) gallium disulfide (GaS2), 15
(8) cuprous chloride (CuCl), (9) copper aluminum disulfide (CuAlS2), (10) silicon-16
carbide (SiC), and (11) semiconducting fullerenes. Specification, page 16:28 to 17
page 17:1. 18
2. Organic photothermic materials 19
The photothermic material may comprise organic photothermic material. 20
Specification, page 17:14-15 21
An “organic photothermic material” means a photothermic material that is 22
an organic chemistry carbon-containing compound (e.g., an organometallic 23
material). 24

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The photothermic material may comprise known UV-absorber organic 1
photothermic material. Specification, page 17:29 to page 18:2. 2
An exemplary organic photothermic material would be a benzophenone UV 3
absorber. Specification, page 18:3-12. 4
3. Photothermic Particles 5
The photothermic material may have a particle configuration, in the form of 6
discrete, amassed units of the material that is larger than a single atom or molecule 7
of the material. Specification, page 18:29 to page 19:1 8
4. Photothermic Material in the Film 9
The photothermic material may be dispersed in the film such that the 10
material does not display a particle configuration within the film. For example, an 11
organic photothermic material may not display a particle configuration if it is in 12
solution in the polymer medium of the film. 13
Radiation devices 14
Useful equipment said to be suitable for providing various types of non-15
ionizing radiation energy are known to those of skill in the art. For example, the 16
radiation energy may be provided by (1) a photoflash, (2) a flashlamp (e.g., pulsed, 17
gas-filled flashlamps), (3) arc lamps, (4) excimer lamps, (5) spark-gap discharge 18
apparatus, and (6) solid state devices such as UV LED (Light Emitting Diodes). 19
Specification, page 33:8-12. 20
Radiation energy may be provided by a pulsed lamp system such as those 21
available from (1) Xenon Corp. (Woburn, Mass.) (e.g., model RC-740, dual lamp 22
and model RC-747 pulsating xenon light) and (2) Maxwell Laboratories, Inc. (e.g., 23

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Flashblast Model FB-100 pulsed light system), and (3) those described in 1
U.S. Patent 5,034,235 and U.S. Patent 6,449,923. Specification, page 33:13-16. 2
Claims on appeal 3
Claims 1-45 and 49-50 are on appeal. Brief, page 2; Answer, page 2. 4
Claim 1, which we reproduce from page 13 of the Claims Appendix of the 5
Brief, reads [matter in brackets added; principal limitations in issue in italics]: 6
Claim 1: A method of activating the shrink characteristic of a 7
film comprising the steps of: 8
[Step 1] providing a film comprising; 9
[1] one or more thermoplastic polymers; and 10
[2] at least about 0.01 weight % of photothermic material 11
based on the weight of the film; and 12
[Step 2] exposing the film to an effective amount of non-13
ionizing radiation having wavelengths of from about 200 nm to 14
700 nm for the photothermic material to generate heat to cause an 15
effect selected from one or more of: 16
[1] shrinking the film by at least about 5% in at least one 17
direction; and 18
[2] increasing the tension in the film by at least about 50 19
pounds per square inch in at least one direction. 20
Other claims are discussed later in this opinion. 21

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Prior art 1
Bakker 2
Bakker relates to a device which may be used to seal food or drink into 3
open-topped containers. Col. 1:11-15. 4
One aspect of the Bakker device is to provide an energy efficient way of 5
sealing open-topped containers which avoids any substantial build-up of heat. Use 6
of an intermittent source of radiant energy is described. Energy is directed onto an 7
energy absorber located at the specific place where heat is required. Col. 1:57-64. 8
Bakker explains its invention as providing: 9
A packaging film which shrinks to form at least a part of a 10
package when exposed to heat, said packaging film comprising: 11
a thin film substrate of the type that contracts when heated and 12
which is substantially transparent to radiant energy; 13
a susceptor material carried by the substrate, said susceptor 14
material being sufficiently opaque to radiant energy to absorb and 15
transfer to said substrate sufficient heat energy to cause said film to 16
shrink upon said packaging film being exposed to a source of radiant 17
energy, 18
wherein exposure to said source of radiant energy causes the 19
film packaging to preferentially shrink in a predetermined manner. 20
Bakker, col. 1:65 to col. 2:10 (italics added). 21
Bakker Fig. 1 is reproduced below. 22

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1
Bakker Fig. 1 depicts a perspective view of a 2
device for practicing the Bakker invention 3
Bakker Fig. 1 shows a housing 10 for heat shrinking a thin film onto an 4
open-topped container 12. The housing 10 includes an opening 14 to allow 5
placement of container 12 within housing 10. In the embodiment of Fig. 1, 6
placement of container 12 within opening 14 is accomplished manually, illustrated 7
by a hand 16. Col. 2:60-65. 8
Bakker Fig. 5 is reproduced below. 9

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1
Bakker Fig. 5 2
Fig. 5 depicts a cross-sectional view of an embodiment of the 3
Bakker heat-sealing shown in Bakker Fig. 1. 4
Container 12 is shown in opening 14. Shown on the right-hand side is a roll 5
22 of thin plastic film on axle 24. Film 26 passes over roller 28 across the top of 6
container 12 across second roller 30 and onto a take-up axle 32. Shown at 34 is a 7
rewind motor. Rewind motor 34 can rotate pickup axle 32 in the direction of 8
arrow 36 which will advance film 26 across the top of container 12 and cause the 9
roll 22 of film 26 to rotate in the direction of arrow 38. Col. 2:66 to col. 3:11. 10
Film 26 is preferably bi-axially oriented. Good results for lidding containers 11
are said to have been achieved with a 75-gauge polyvinyl chloride (PVC) film. 12
Other films, such as (1) copolymers, (2) polyolefins and (3) the like may also be 13

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appropriate. The film, to be most useful, must be food grade contact-approved by 1
the appropriate regulatory authorities. Col. 3:14-21. 2
Bakker Fig. 6 is reproduced below. 3
4
Bakker Fig. 6 5
Fig. 6 depicts a view similar to Fig. 5 with 6
container 12 in a raised position 7
In Fig. 6, container 12 has been raised in the direction of arrow 100. Raising 8
container 12 has the effect of pushing film 26 upwardly into engagement with the 9
knife heated film cutter blade 94 (Fig. 5). As a result, a cut portion of the film 10
shown as 102 is draped across the top 13 of container 12. Further upward 11
movement causes the movement of first radiant energy source 68 about the pivot 12
point 86 until first radiant energy source 68 is closely adjacent to a draped over 13
edge of cut portion 102 shown as 103. Contact is then made at a limit switch, 14
which energizes motor 99 (Fig. 4, not reproduced). Upon energizing of motor 99, 15

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belt 80 revolves causing rotating arms 84 to revolve rotating first radiant energy 1
source 68 about the periphery of top 13 of container 12. Simultaneously with the 2
energizing of motor 99 and rotation of first radiant energy source 68, first radiant 3
energy source 68 is energized to cause radiant energy to be directed towards 4
dangling edge 103 of cut portion 102 of film 26. Col. 4:66 to col. 5:21. 5
After a predetermined length of time, first radiant energy source 68 is de-energized 6
and second radiant energy source 70 is energized. Second radiant energy source 7
70 energy is directed onto energy absorbing body 76 (Fig. 5) transferring heat and 8
causing a shrinking of the top portion across container 12 of cut portion 102. 9
Thereafter, the sealed container 12 can be lowered and removed from housing 10 10
(Fig. 1). Col. 5:33-40. 11
According to Bakker, it was found that preferred radiant energy sources are 12
Tungsten Halogen Lamps. About 70% of the energy produced by these lamps is 13
said to be in the preferred wavelength range of the infrared (750 millimicrons and 14
beyond). Col. 5:52-55. 15
Preferred shrink film substrate will have shrink characteristics suitable for 16
the given packaging objectives. Some of shrink characteristics include the degree 17
and orientation of the shrink and whether the shrink is to occur in both or only in 18
one direction. Most common commercially available shrink film substrates are 19
said to be substantially transparent meaning that light, infrared radiation and other 20
forms of radiant energy pass through the substrate with very little, if any, 21
absorption. Substantially transparent means that at least 75% and preferably more 22
than 90% of radiant energy passes through the film. However, according to 23
Bakker such transparency has led, in the past, to the need for a heat bearing 24

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medium to physically contact the film to provide sufficient heat transfer to 1
cause the desired shrink. Bakker found that by modifying the absorption 2
properties of the substrate film to radiant energy, improved results can be 3
obtained. Col. 8 28-44. 4
A key characteristic of a susceptor material is that it absorbs radiant energy, 5
thereby creating localized heat upon being exposed to a source of radiant energy. 6
The susceptor material is printable, such as printer ink, and includes at least one 7
radiant energy absorbing component such as (1) carbon black, (2) graphite, (3) iron 8
oxide or (4) other energy absorbing material. According to Bakker, those skilled 9
in the art will appreciate that while some preferred and specific energy absorbing 10
materials have been listed for the susceptor material, other material will also be 11
suitable. The energy absorption rate of the applied susceptor material should be 12
sufficient such that upon the material being exposed to radiant energy, the heat 13
generated will cause a desired amount of shrink in the shrink film substrate in a 14
predetermined acceptable amount of time. Col. 8:45-61. 15
In a preferred embodiment of the invention, the susceptor material is printed 16
onto the film substrate, which then becomes the susceptor material carrier, i.e., 17
film. In another alternate embodiment the susceptor material is physically mixed 18
into the film substrate and absorbs the radiant energy from within the film. This 19
latter approach is less preferred though since the susceptor material is said to 20
change the characteristics of the shrink film, such as flexibility, degree of shrink 21
and the like. Col. 9:1-8. 22
For the purpose of the Bakker invention, radiant energy has a specific 23
meaning. Bakker says that the terms “radiant heat,” “radiant energy” and “infrared 24

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heat” have been used occasionally to loosely describe different methods of 1
applying heat to a shrink film. Until the Bakker invention, indirect application of 2
heat was all that was available. By indirect, Bakker means that heating is with a 3
separate medium such as water or air, which then is caused to impinge upon the 4
shrink film, thereby transferring heat to the shrink film through physical contact. 5
Why is heat needed? Because shrink films are generally transparent to radiant 6
energy, and thus can absorb very little energy directly. Col. 9:9-21. 7
According to Bakker, radiant energy means energy which may be 8
transmitted through air and then absorbed to produce heat at or on the film. In a 9
preferred embodiment the radiant energy is infrared radiation. Infrared radiation 10
is said to be much more efficient in transferring heat energy directly to where it is 11
needed, i.e., the film which shrinks when heated, as it avoids the necessity of using 12
any other medium such as hot water or air as in the past to carry the heat to the 13
film. Thus, radiant energy in this context means any form of radiant energy that is 14
transmissible through a medium such as air, without being substantially absorbed 15
thereby. Col. 9:22-32. 16
Level of skill in the art 17
Bakker discusses what one having ordinary skill in the art would need to 18
consider. 19
Use of carbon black 20
Carbon black is said to provide reasonable results when combined in a 21
susceptor layer to absorb the radiant energy. In particular, carbon black responds 22
readily to the radiant energy output of a tungsten halogen bulb which emits energy 23
primarily in the visible and near infrared spectrum. Carbon black is additionally a 24

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standard pigment in printing inks and is used extensively to adjust the value of 1
colours in the ink field. This combined ability of being able to blend with existing 2
printing inks, and being able to absorb radiant energy such as infrared radiation, 3
makes it suitable for Bakker’s purpose. Bakker, col. 9:36-45. 4
Process variables 5
Based on Bakker, one skilled in the art would have appreciated the following 6
(col. 11:46-61) (italics added): 7
There are three main variables in the present invention. The 8
first is the amount of radiant energy being emitted from the source of 9
radiant energy. The second is the degree of absorption achieved, 10
either by the susceptor material, or the susceptor material in 11
combination with a barrier layer or other layers. The third is the 12
temperature required to cause the thin film substrate to shrink. It will 13
be appreciated that each of these variables can be changed, and 14
compensated for to some degree by the others. A thicker more highly 15
absorbent susceptor layer may achieve desired shrinking, but require a 16
less powerful radiant energy source. A higher shrink temperature may 17
require a more powerful radiant energy source or a more absortive 18
susceptor layer. However, it can now be understood that each of these 19
variables can be set at levels which achieve an acceptable shrink 20
within a desired time. 21
Other information known to those skilled in the art 22
A heat-shrinkable film shrinks upon application of heat while the film is in 23
an unrestrained state. Specification, page 25:26-27. 24

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Useful equipment and methods for providing various types of non-ionizing 1
radiation energy are known to those having ordinary skill in the art. Specification, 2
page 33:8-9. 3
Analysis 4
Claim 1 5
Differences between Claim 1 and Bakker 6
The Examiner found that Bakker differs from the subject matter of Claim 1 7
in that Bakker does not explicitly describe the amount of shrinking or the amount 8
of tension increase. Final Rejection, pages 3-4; Answer, pages 4-5. 9
Applicant maintains that there is another difference. Bakker is said to not 10
describe the use of radiation having wavelengths of from about 200 nm to 700 nm. 11
Brief, page 4. 12
Wavelength “difference” 13
Claim 1 requires the use of radiation having wavelengths of from about 200 14
nm to 700 nm. 15
An initial matter is: What does applicant mean by “having”? First meaning: 16
Is the wavelength limited to just 200-700 nm? Second meaning: Or, can the 17
wavelength include wavelengths in addition to wavelengths of 200-700 nm? 18
The term “having” does not create a presumption that the body of the claim 19
is open; rather the claim must be examined in its full context to determine whether 20
“having” limits the claims to its recited elements. Crystal Semiconductor Corp. v. 21
Tritech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). 22
According to applicant: “[t]he effective amount of non-ionizing radiation . . . may 23
comprise, consist of, or consist essentially of non-ionizing radiation having 24

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wavelengths of at most about, and/or at least about, any of the following: 200 . . . 1
and 700 nm.” Specification, page 30:15-16 (italics added). The language in the 2
Specification appears to have been written to provide a written description basis 3
for a possible amendment to “consisting essentially of” or “consisting” and/or “at 4
most about” or “at least about”. Applicant never made the amendment. Cf. Univ. 5
of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1573 (Fed. Cir. 1997) (the word “having” 6
in the claim “A DNA transfer vector comprising an inserted cDNA having a 7
[DNA] sequence coding for human [PI] . . .” still permitted inclusion of other 8
moieties). 9
Applicant indicates that a Model RC-747 radiation device is suitable for use 10
in the invention. Specification, page 38:27. According to applicant, the 11
manufacturer reports that Model RC-747 has the following relative irradiance 12
distribution (Specification, page 39:1-2): 13

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A wave length range of 200-300 nm is in the UV range. A wave length range of 1
800-1000 nm is in the infrared range. See the electromagnetic spectrum set out 2
below. 3
Given applicant’s Specification, we hold that “having” in this case is 4
essentially the same as “comprising”. 5
Bakker expresses a preference for use of a Tungsten Halogen Lamp which 6
according to Bakker produces about 70% of its energy in the infrared wavelength 7
range equal to or greater than 750 millimicrons (750 µm = 750 nm). Col. 5:51-55. 8
Since 70% of the wavelength is ≥ 750 nm, 30% of the wavelength is < 750 nm. 9
The wavelength immediately < 750 nm is visible light as shown in the 10
electromagnetic spectrum reproduced from Wikipedia and set out below. 11

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1
Depicted is a copy of an electromagnetic spectrum 2
downloaded from Wikipedia on 24 December 2012: 3
http://en.wikipedia.org/wiki/File:electromagnetic-Spectrum.png 4
It thus becomes readily apparent that the Tungsten Halogen Lamp described 5
by Bakker (col. 5:52) emits some radiant energy in the visible light range and 6
therefore within applicant’s range of 200-700 nm. See col. 9:38-40 describing a 7
tungsten halogen bulb which emits energy primarily in the visible and near infrared 8

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spectrum. The subject matter of Claim 1 does not distinguish from Bakker based 1
on the 200-700 nm limitation.1 2
Shrink and tension limitations 3
We agree with the Examiner that the degree of shrinkage and the degree of 4
tension are result oriented variables. Bakker describes a “desired shrinking” and 5
offers means for obtaining the “desired shrinking.” Col. 11:46-62. See also 6
col. 11:31-45 discussing a need to balance the film and the susceptor material 7
(which means the same thing as applicants’ “photothermic material). 8
Applicant has not demonstrated that one skilled in the art would not have 9
been able to determine an appropriate shrinkage or tension or that Bakker does not 10
achieve the shrinkage or tension recited in Claim 1. Given that Bakker and 11
applicant are using the same ingredients and process steps, the burden was on 12
applicant to show that a difference exits. In re Woodruff, 919 F.2d 1575, 1578 13
(Fed. Cir. 1990) (where the difference between the claimed invention and the prior 14
art is some range or other variable within the claims, the applicant must show that 15
the particular range is critical, generally by showing that the claimed range 16
achieves unexpected results relative to the prior art range; as a general rule, merely 17
discovering and claiming a new benefit of an old process cannot render the process 18
again patentable). 19

1 We do not agree with the Examiner’s analysis rounding 750 (explicitly
described by Bakker) to 700. Final Rejection, page 4, Answer, pages 17-18. Dunn
confirms that it is known in the art that radiation apparatus exists which will emit
wavelengths in the 270 to 2600 nm range. Dunn, col. 9:49. The Model RC-747
apparatus which applicant says is useful in practicing its invention is said to emit in
the 200-1000 nm range. Specification, page 33:1-2 (see table reproduced above).

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Reasonable expectation of success 1
Applicant maintains that the prior art would not suggest success to one 2
skilled in the art. Brief, pages 5-7. We disagree. Applicant and Bakker are doing 3
essentially the same thing to get the same result (shrinkage of film). On this 4
record, we have no reason to doubt that Bakker fails to achieve the result it says it 5
gets. 6
Decision on Claim 1 7
The decision of the Examiner rejecting Claim 1 over the prior art is affirmed. 8
Applicant groups Claims 2-9, 11-12, 14-20, 22, 24-29, 38 and 40-45 with 9
Claim 1. Brief, page 7. Accordingly, these claims fall with Claim 1. 10
Additional observation 11
Independent method Claim 44 (as well as dependent Claim 45) do not call 12
for the use of a radiation in the 200-700 nm range. Accordingly, these two claims 13
would be unpatentable under § 103 even if Claim 1 was determined to be 14
patentable due to the 200-700 nm limitation. 15
Claim 10 16
Applicant separately argues Claim 10. Brief, page 8. 17
Claim 10 requires that “the photothermic material is in solution with the” 18
thermoplastic polymer. 19
The Examiner found that Bakker describes mixing or incorporating the 20
susceptor material (i.e., photothermic material) into a film—the film being a 21
thermoplastic polymer film. Answer, page 8 (referring to Bakker, col. 7:28-34; 22
col. 8:45-61 and col. 9:1-8). 23

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Applicant’s response is that “in solution” should be interpreted to mean “that 1
the photothermic material does not display a particle configuration in the polymer 2
… film.” Brief, page 9. In support of its position, applicant calls attention to a 3
discussion of particle configuration at page 18:29 to page 19:1 of the Specification 4
(italics added): “The photothermic material may have a particle configuration, 5
that is, the . . . material may be in the form of discrete, amassed units of the 6
material that are larger than a single atom or molecule of the material.” Applicant 7
then contrasts the “particle configuration” with photothermic materials that do “not 8
display a particle configuration within the film.” Specification, page 20:19-20. 9
Applicant goes on to say that “an organic photothermic material may not display 10
a particle configuration if it is in solution in the polymer . . . of the film.” Id. at 11
page 20:20-21 (italics added). 12
The Examiner found that applicant did not define “in solution” in the 13
Specification. Answer, page 20. Rather, the Examiner found that applicant is 14
attempting to insert a limitation in the Specification into Claim 10. Id. 15
Applicant’s rebuttal is that it has used “solution” in its normal physical 16
chemistry sense and therefore no limitation from the Specification has been 17
imported into Claim 10. 18
Based on the discussion of particle configuration and solution in the 19
Specification, we agree with applicant that “in solution” in this case means that the 20
photothermic material is mixed in the polymer in a non-particle configuration. 21
Bakker describes the use of carbon black, graphite, iron oxide or other 22
energy absorbing material. Col. 8:52-53. Carbon black, graphite and iron oxide 23
probably would be photothermic materials having a particle configuration when 24

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mixed in the thermoplastic polymer. However, organic compounds are known 1
which also have photothermic properties, or in Bakker’s words are susceptor 2
materials. 3
For example, Okuda describes the use of UV absorbers which are added 4
to thermoplastic resin films for imparting UV absorbing properties. Okuda, 5
col. 6:10-22. Some of the UV absorbers described by Okuda, e.g., 2-hydroxy-4-6
methoxy benzophenone (col. 6:16) are materials which applicant describes as 7
photothermic materials (Specification, page 18:4). 8
One skilled in the art would have recognized that the Okuda UV absorbers 9
are “other energy absorbing materials” described by Bakker. The UV absorbers 10
when mixed with the thermoplastic resin would be “in solution” within the 11
meaning of Claim 10. 12
The record suggests that applicant is using a known compound (UV 13
absorbers of Okuda) for their known purpose (imparting UV absorbing properties) 14
in an otherwise known method (that described by Bakker) which requires the 15
presence of an energy absorbing susceptor material. 16
On the record before us, Claim 10 is unpatentable under § 103. 17
Claim 13 18
Applicant separately argues Claim 13. Brief, page 9. 19
Claim 13 calls for a further step of non-radiation heating the film between 20
Steps 1 and 2 of Claim 1 so that the temperature of the film at the start of the 21
exposing step is 5 ºF below the shrink initiation temperature. 22
The subject matter of Claim 13 is discussed in the Specification at 23
page 30:3-14: 24

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The temperature of the film at the start of the non-ionizing 1
radiation exposure step may be below the shrink initiation temperature 2
of the film, that is, below the minimum temperature at which the 3
shrink characteristic of the film is activated. The temperature of the 4
film at the start of the non-ionizing radiation exposure step may be 5
below the shrink initiation temperature of the film by . . . 5 . . . ºF . . . . 6
To achieve these temperatures, the film may be heated or cooled 7
before the start of the non-ionizing radiation exposure step; for 8
example, the film may be heated other than by radiation exposure. 9
Such heating or cooling may occur, for example, by conduction or 10
forced-convection, such as in a water bath or air tunnel. 11
The Specification does not explain any significant benefit achieved by non-12
ionizing heating of the film. Applicant concedes that heating in a hot-water bath or 13
heat tunnel equipment is known. Specification, page 1:8-12. Bakker also 14
mentions use of prior art heating. Bakker, col. 1:46-49. 15
Claim 13 is interesting from the point of view that it seems to claim subject 16
matter with deficiencies which both Bakker and applicant seek to overcome. What 17
is apparent on the record is that (1) using hot air to accomplish heating of a film 18
and (2) using non-ionizing radiation to accomplish heating of a film are known. In 19
using a combination of known sealing means, one (pre-heating) to go part way and 20
the other (radiation) to complete sealing, applicant is using known means—without 21
any significant disclosed advantage. One skilled in the art should be free to use 22
either technique or a combination of those techniques to accomplish sealing. The 23

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use of a combination of the techniques is nothing more than the use of known 1
techniques to accomplish a known and expected result. 2
On this record, Claim 13 is unpatentable under § 103. 3
Claim 21 4
Applicant separately argues Claim 21. Brief, page 10. 5
Claim 21 further limits Claim 1 in that it calls for making a film having an 6
average transparency of at least 80% after exposing Step 2 of Claim 1. 7
According to applicant, Bakker does not describe the claimed transparency. 8
The Examiner found that Bakker reveals that transparency is a result 9
oriented variable. Answer, page 21; Bakker, col. 12:23-29. 10
Applicant maintains that the Examiner’s reliance on Bakker’s transparent 11
area 305 (see Figs. 15 and 18 not reproduced) does not meet the 80% transparency 12
requirement of Claim 21. 13
We tend to agree with applicant, but view the discussion concerning element 14
305 as missing the point. The Examiner also refers to a Bakker discussion of 15
commonly available transparent films. Col. 8:28-44. 16
Applicant cannot deny that transparency is a consideration in the packaging 17
of food products. See, e.g., Owensby (a patent owned by applicant Cryovac, Inc.), 18
col. 3:40-60, discussing a preference to food packaging films having a haze of less 19
than about 20%, most preferably less than about 5%. Based on our reading of 20
Owensby, we find that one skilled in the art would have known which 21
thermoplastic film to use to obtain a particular transparency. And, one skilled 22
in the art would have known that the transparency is needed in the commercial 23

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product if for no other reason than to permit a purchaser to see the food within the 1
food package. 2
We also observe that applicant has not established that the Bakker products 3
lack the post-irradiation claimed transparency. 4
On the record before us, Claim 21 is unpatentable under § 103. 5
Claim 23 6
Applicant separately argues Claim 23. Brief, pages 10-11. 7
Claim 23 requires that the thermoplastic polymer be 60% of either 8
(1) ethylene/vinyl alcohol copolymer and/or (2) vinylidene chloride polymer. 9
The Examiner cites to Bakker, col. 8:11-13 and col. 10:19-25 describing the 10
use of a PVC (polyvinyl chloride) polymer. Answer, page 10. 11
Applicant maintains that Bakker does not describe the use of either polymer. 12
In particular, applicant maintains that a PVC polymer is not a vinylidene chloride 13
polymer. We agree. PVC has the repeating unit: 14
H 15
│ 16
─CH2─C─ 17
│ 18
Cl 19
whereas vinyldiene chloride has the repeating unit: 20

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Cl 1
│ 2
─CH2─C─ 3
│ 4
Cl 5
A description of PVC is not a description of a vinylidene chloride polymer. 6
Nevertheless, what is readily apparent on the record is that ethylene/vinyl 7
alcohol copolymer resins mentioned in Claim 23 are known to be useful for 8
making films used in packaging food. See, e.g., (1) Shah 1, col. 2:53-54 and 9
(2) Shah 2, col. 3:23-24, both cited on page 12 of applicant’s Specification. 10
One skilled in the art would have known that an ethylene/vinyl alcohol 11
polymer fits well within the “and the like” mentioned by Bakker. Col. 3:19. 12
Applicant is using a known film for its known purpose (the purpose 13
described by Bakker). 14
On the record before us, Claim 23 is unpatentable under § 103. 15
Claims 30-32 16
Applicant separately argues Claim 30 and Claim 31. Brief, pages 11-12. 17
Claim 30 calls for the use of a photothermic material which “comprises 18
organic photothermic material.” 19
Claim 31 calls for a photothermic material which “comprises organic . . . 20
material selected from . . . benzophenone UV absorber . . . .” 21
Addressing Claim 30 and relying on a dictionary definition (see Mish), the 22
Examiner found that Bakker’s description of carbon black was a description of an 23
organic compound. Answer, pages 21-22. Applicant maintains that carbon black 24
is not an organic compound. Brief, page 11. 25

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We find it unnecessary to resolve the factual issue of whether carbon black 1
is organic or inorganic. 2
Rather, Claim 30 is not patentable for the same reasons that Claim 10 is 3
unpatentable. In our view, it would have been obvious for a person having 4
ordinary skill in the art to have included in the Bakker films an organic UV 5
stabilizer. In addition, Claim 30 does not exclude the presence of inorganic 6
materials. The claim only requires that the photothermic material “comprises” 7
organic materials, which means of course, that inorganic material may also be 8
present. The claim does not say “consists of organic . . . material.” Thus, Claim 9
30 covers a process of irradiating a film having both carbon black, an organic 10
material and a thermoplastic polymer. To the extent that applicant would maintain 11
that the reason for a use of a UV stabilizer in the Bakker film is different than the 12
reason applicant uses an “organic material”, we note that the fact that one skilled in 13
the art would have had a reason different from the applicant for performing a 14
claimed process does not defeat a § 103 rejection. KSR Int’l Co. v. Teleflex Inc., 15
550 U.S. 398, 419 (2007). What matters is the objective reach of the claim and in 16
our view one skilled in the art based on the record before us should be free to 17
practice the claimed process even if for a reason which differs from that of 18
applicant. 19
Claim 32 is not argued separately from Claim 30 and is unpatentable for the 20
reason given with respect to Claim 30. 21
Claim 31 depends from Claim 30 and mentions specific organic compounds. 22
The subject matter of Claim 31 is also unpatentable for the same reasons that 23

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Claims 10 and 30 are unpatentable. We hold that it would have been obvious to 1
have included a prior art UV stabilizer in the Bakker films. 2
On the record before us, Claims 30-32 are unpatentable under § 103. 3
New rejection 4
Claims 44-45 do not comply with the fourth paragraph of § 112. 5
Claims 44-45 are broader in that they do not call for the 200-700 nm 6
wavelength and are narrower in that they call for enclosing a package (a feature 7
manifestly described by Bakker). 8
Claims 44-45 therefore do not narrow Claim 1 and therefore are 9
unpatentable under the fourth paragraph of § 112. 10
Decision 11
Upon consideration of the appeal, and for the reasons given herein, it is 12
ORDERED that the decision of the Examiner rejecting all the claims 13
on appeal as being unpatentable under § 103 over the prior art is affirmed. 14
FURTHER ORDERED that since (1) we have entered a § 112, 15
fourth paragraph rejection, and (2) rationale differs from the rationale of the 16
Examiner, our affirmance is designated as a new rejection. 37 CFR § 41.50(b). 17
FURTHER ORDERED that our decision is not a final agency 18
action. 19
FURTHER ORDERED that within two (2) months from the date of 20
our decision, appellant may further prosecute the application on appeal by 21
exercising on of the two following options: 22
Option 1: Request that prosecution be reopened by submitting 23
an amendment or evidence or both. 37 CFR § 41.50(b)(1). 24

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Option 2: Request rehearing on the record presently before the 1
Board. 37 CFR § 41.50(b)(2). 2
FURTHER ORDERED that no time period for taking any 3
subsequent action in connection with this appeal may be extended under 37 CFR 4
§ 1.136(a)(1)(iv). 5
AFFIRMED 6
New rejection: 37 CFR § 41.50(b) 7
8
9
bar 10