10965380 (B.P.A.I. Sep. 16, 2010)

Ex Parte Hartman et al

Board of Patent Appeals and InterferencesSep 16, 2010

10965380 (B.P.A.I. Sep. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte WILLIAM G. HARTMAN and CHAN U. KO ______________ Appeal 2009-013040 Application 10/965,380 Technology Center 1700 _______________ Before CHARLES F. WARREN, PETER F. KRATZ, and LINDA M. GAUDETTE, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL1 Applicants appeal to the Board from the decision of the Primary Examiner finally rejecting claims 16-18, 20-22, 24, 25, 27-31, and 48 in the Office Action mailed October 19, 2007. 35 U.S.C. §§ 6 and 134(a) (2002); 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013040 Application 10/965,380 37 C.F.R. § 41.31(a) (2007). We reverse the decision of the Primary Examiner. Claim 16 illustrates Appellants’ invention of an adhesive labelstock, and is representative of the claims on appeal: 16. An adhesive labelstock comprising: (A) a polymer film substrate comprising a terpolymer prepared from a mixture comprising (i) an olefin, (ii) at least one copolymerizable comonomer comprising ethylenically unsaturated organic acids or esters, vinyl esters of saturated carboxylic acids, and mixtures of two or more thereof, and (iii) carbon monoxide, wherein the polymer film substrate has a moisture vapor transmission rate that permits sufficient moisture to enter the film substrate to generate acceptable levels of chlorine dioxide and said substrate has a first surface and a second surface, and (B) an adhesive layer underlying the second surface of the substrate, wherein the substrate, or the adhesive layer, or both the substrate and the adhesive layer contain an antimicrobial composition which comprises at least one metal chlorite and at least one hydrophilic material capable of reacting with the metal chlorite when exposed to water. Appellants request review of the ground of rejection of claims 16-18, 20-22, 24, 25, 27-31, and 48 under 35 U.S.C. 35 U.S.C. § 112, first paragraph, enablement requirement, advanced on appeal by the Examiner. App. Br. 4; Ans. 3. 2 Opinion We agree with Appellants that the Examiner erred in determining that the claimed adhesive labelstock encompassed by representative claim 16 was not enabled “for how to provide the required porosity for the adhesive layer” when the antimicrobial is present in the terpolymer film substrate and 2 The Examiner’s response to the Reply Brief mailed April 16, 2008, was withdrawn in the Communication mailed July 10, 2009. 2 Appeal 2009-013040 Application 10/965,380 the adhesive layer underlying the second surface of the terpolymer film substrate as claimed. Ans. 3; App. Br. 4-5; Reply Br. 2-4. We agree with Appellants that contrary to the Examiner’s contentions, the plain language of claim 16 specifies that the terpolymer film layer has a moisture vapor transmission rate (MVTR) that is sufficient to permit sufficient moisture to enter the terpolymer film substrate to generate acceptable levels of chlorine dioxide when the specified antimicrobial composition is exposed to the moisture, regardless of whether the antimicrobial composition is contained in the terpolymer film substrate, the adhesive layer underlying the terpolymer film substrate, or both. Spec., e.g., 15:31 to 16:10. Thus, there is no limitation in claim 16 which requires that the adhesive layer coated on the terpolymer film substrate must exhibit a MVTR for moisture activation of the antimicrobial composition in the adhesive layer, and indeed, we find no written description in this respect in the Specification. On this record, the Examiner has not contended that, as described in the Specification, the disclosed MVTR range of the terpolymer film substrate is insufficient to provide sufficient moisture to activate the antimicrobial composition in the adhesive layer when the adhesive labelstock is adhesively attached to a substrate. Accordingly, the Examiner has not carried the burden of establishing that, based on the record as a whole, the assertions as to the scope of objective enablement set forth in the Specification are in doubt, and thus would not have enabled one of ordinary skill in this art to practice the claimed invention encompassed by claim 1 without undue experimentation as required by § 112, the first paragraph, enablement requirement. See, e.g., 3 Appeal 2009-013040 Application 10/965,380 In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988); In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971). Accordingly, in the absence of an established case of nonenablement, we reverse the ground of rejection of claims 16-18, 20-22, 24, 25, 27-31, and 48 under 35 U.S.C. 35 U.S.C. § 112, the first paragraph, enablement requirement. The Primary Examiner’s decision is reversed. REVERSED Ssl AVERY DENNISON CORPORATION AMANDA WITTINE 8080 NORTON PARKWAY 22-D MENTOR, OH 44060 4