Ex Parte Havens et al

Board of Patent Appeals and Interferences

Jul 20, 2011

11016835 (B.P.A.I. Jul. 20, 2011)

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.
11/016,835 12/21/2004 Marvin Russell Havens D-43661-01 7303
7590 07/20/2011
Howard Troffkin
7808 Ivymount Terrace
Potomac, MD 20854
EXAMINER
GODENSCHWAGER, PETER F
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
07/20/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARVIN RUSSELL HAVENS and DREW VE SPEER
____________________

Appeal 2010-010730
Application 11/016,835
Technology Center 1700
____________________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-19. The rejections are as follows:
Appeal 2010-010730
Application 11/016,835

2
A. Claims 1, 2, 4, 6, and 8-19 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Matthews (US 6,254,803 B1; issued Jul. 3, 2001) in
view of Tung (US 2003/0027912 A1; pub. Feb. 6, 2003);1
B. Claims 1, 3 and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Matthews in view of Tai (US 2003/0018114 A1; pub. Jan.
23, 2003); and
C. Claims 1 and 5 under 35 U.S.C. § 103(a) as unpatentable over
Matthews.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the decision of the Examiner for the reasons set forth in the
Answer and add the following primarily for emphasis.
II. DISCUSSION
Appellants’ claims are directed to a packaging material including a
layer comprising an oxygen scavenger composition (see, e.g., claim 1). The
oxygen scavenger composition includes a transition metal salt, compound or
complex and a blend of polymers (id.). Claim 1 encompasses blends of a
polymer PA with any one or a mixture of polymers PB-PD (id.).
Matthews, the primary reference used by the Examiner to reject the
claims, is discussed at length in Appellants’ Specification (Spec. 5:13 to
7:9). Matthews describes a packaging material including a transition metal
compound and cycloalkenyl polymers within the scope of the claimed first
polymer (PA) (Matthews, col. 9, ll. 50-54). In fact, Appellants characterize

1 The Examiner lists two rejections over the combination of Matthews and
Tung, because the Examiner relies upon the same prior art evidence in both;
we list the rejections as one.
Appeal 2010-010730
Application 11/016,835

3
their invention as a blend including the composition of Matthews (Spec.
5:13 to 7:9).
Matthews discloses that the composition can be used in a wide range
of packaging materials including single and multilayer films (Matthews, col.
10, ll. 39-52). Matthews suggests blending the composition with other
polymeric oxygen scavenging polymers or with one or more diluent
polymers known to be useful for forming packaging film materials and
which often can render the resultant film more flexible and/or processable
(Matthews, col. 10, ll. 52-57).
With respect to the vinyl acetate/ethylene copolymer of claims 1 and
5, Matthews states that ethylene copolymers such as ethylene/vinyl acetate
copolymer are, among others, suitable diluent polymers (Matthews, col. 10,
ll. 57-67). This group of copolymers either encompasses or is substantially
related to the claimed vinyl acetate/ethylene copolymer having 50 wt% of
mer units derived from vinyl acetate (see, e.g., claim 1 (PD polymer) and
claim 5).
Appellants state that conventional ethylene/vinyl acetate copolymers
are known to have low vinyl acetate content (Br. 30). However, as pointed
out by the Examiner, Appellants do not provide evidence to support that
statement (Ans. 15). On the other hand, while Matthews does not specify
that those ethylene/vinyl acetate copolymers having more than 50 wt%
vinylacetate units would be useful as the diluent polymer, the Examiner
finds, and Appellants do not dispute, that those of ordinary skill in the art
would have selected the ratio of ethylene to vinyl acetate units to optimize
the flexibility and/or processability of the composition. Matthews
Appeal 2010-010730
Application 11/016,835

4
specifically selects the diluent polymer to provide flexibility and/or
processability.
Tung and Tai also describe packaging films including an oxygen
scavenging transition metal (Tung, ¶¶ [0005] and [0029]; Tai, ¶¶ [0001],
[0010]). Tung adds the transition metal oxygen scavenger to a range of
polymers including polyesters of PB type (Ans. 5; Tung, ¶¶ [0017-19]) and
ethylene vinyl acetate copolymers (PD type) (Ans. 8; Tung, ¶ [0016]). Tai
describes adding a transition metal oxygen scavenger to a resin composition
including a gas barrier resin (A), a thermoplastic resin (B), and a
compatibilizer (C), which the Examiner finds can be a polycaprolactone of
PC type (Ans. 7; Tai ¶¶ [0008], [0108] and [0111]).
The Examiner finds that polymers PB-PD were known in the art for use
in oxygen scavenging compositions, and concludes that it would have been
obvious to one of ordinary skill in the art to use those known polymers in the
composition of Matthews for their known functions (Ans. 5-9). The
Examiner specifically discusses each determination of a reason or suggestion
to make the combination, and cites to evidence for support (id.).
For all the rejections, Appellants argue that the teachings of the
references are not properly combinable and the references teach away from
the combination. Therefore, the main issue on appeal is: Does the evidence
as a whole support the Examiner’s determination that there was a reason for
incorporating polymers PB-PD into the composition of Matthews?
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Appeal 2010-010730
Application 11/016,835

5
The weight of the evidence of record supports the Examiner’s finding
that it was known in the art to incorporate a wide range of diluent polymers
and additional oxygen scavenging polymers into oxygen scavenging
compositions such as those taught by Matthews including the PB-PD types
claimed. The references relied upon the by the Examiner provide specific
reasons for incorporating the additional polymers. Moreover, generally, it
would have been obvious to incorporate the known polymers for their
known properties in order to obtain those properties in the blend.
The evidence as a whole supports the Examiner’s determination that
there were reasons for incorporating polymers PB-PD into the composition of
Matthews.
With regard to Appellants’ further argument directed to the rejection
of claims 1, 2, 6, and 8-19 over Matthews in view of Tung, that the claimed
limitations relating to specific Tg and Tm ranges are not taught or suggested
by the references (Br. 22), the Tg and Tm would have been within the claimed
ranges once the ordinary artisan selected the diluent polymers to obtain a
processable blend for forming the film.
With regard to the rejection of claims 1 and 5 over Matthews alone,
Appellants state that they “have found that the present combination of
specific polymers yields an oxygen scavenger composition capable of
providing active scavenging properties under both ambient and refrigerated
conditions.” (Br. 30.) Appellants then state that “[f]urther, Appellants have
made comparative showing in the subject application (See Examples I, II,
and VI of the application).” (Id.) Then Appellants argue that “an artisan
Appeal 2010-010730
Application 11/016,835

6
would not be led by the teachings of Matthews et al to use the specific
copolymer of present Claim 5.” (Id.)
As discussed above, the Examiner has provided unrebutted evidence
that the claimed vinyl acetate/ethylene copolymer was known in the art and
that the prior art provides reasons for including such as a diluent polymer in
the blend. This evidence supports a conclusion of obviousness.
To the extent that Appellants are arguing that their combination
provides an unexpected result, we agree with the Examiner’s response (Ans.
15). Moreover, the Specification does not even state that the result is
unexpected. An appellant must establish that the property would have been
viewed as unexpected by one of ordinary skill in the art in order to establish
non-obviousness. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed.
Cir. 2007) (“[A]ny superior property must be unexpected to be considered as
evidence of non-obviousness.”).
III. CONCLUSION
On the record before us, we sustain the rejections maintained by the
Examiner.
IV. DECISION
The decision of the Examiner is affirmed.

Appeal 2010-010730
Application 11/016,835

7
V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
cam