Ex Parte Hino et al

Board of Patent Appeals and Interferences

Jul 28, 2011

10477917 (B.P.A.I. Jul. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TOMOHARU HINO and
TORU OHARA
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Appeal 2010-005189
Application 10/477,917
Technology Center 1700
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Before LINDA M. GAUDETTE, MARK NAGUMO and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3-9, 11-16, 18, and 20-25. Claims 10
and 19, the other claims pending in this application, stand withdrawn from
consideration by the Examiner. We have jurisdiction pursuant to 35 U.S.C.
§ 6.
We REVERSE.

STATEMENT OF THE CASE
The subject matter on appeal is directed to a biodegradable plastic
film. Claim 1 is illustrative:
1. A biodegradable plastic film comprising at least one
surface formed with a printed region, wherein said plastic film
further comprises non-printed sub-regions distributed rather
evenly within said printed region formed on said plastic film,
and all said non-printed sub-regions occupy 10 - 20% of said
printed region;
wherein said non-printed sub-regions comprise a
plurality of individual non-printed sub-regions each of which is
enclosed within printing ink defining said printed region and is
dimensioned to be in a range of 15 - 30 µm in two directions
orthogonal to each other.
The Examiner maintains1 the following rejections:
1) Claims 11 and 16 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement;
2) Claims 23-25 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement;

1 The Examiner has withdrawn the § 112, second paragraph rejection set
forth in the Final Office Action mailed August 6, 2008. (See Ans. 3).
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3) Claims 1, 3-9, 11-16, 18, and 20-25 under 35 U.S.C. § 103(a) as
unpatentable over Khemani (US 7,297,394 B2, issued Nov. 20, 2007);
4) Claims 11 and 16 under 35 U.S.C. § 103(a) as unpatentable over
Khemani and Casto (US 2,311,156, issued Feb. 16, 1943); and
5) Claims 11, 16, and 20-25 under 35 U.S.C. § 103(a) as unpatentable
over Khemani and further in view of Casto or Masaro (US 2005/0215662
A1, published Sep. 29, 2005).

REJECTION (1)
ISSUE
Did the Examiner reversibly err in finding that the later claimed
limitation2 “non-biodegradable [ink]” recited in claims 11 and 16 was not
described in the originally filed disclosure within the meaning of 35 U.S.C. §
112, first paragraph? We decide this issue in the affirmative.

PRINCIPLES OF LAW
As stated in Ariad Pharms., Inc. v. Eli Lilly and Co.,
the test for sufficiency [of the written description] is whether
the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date. . . . The term
“possession,” however, has never been very enlightening. It
implies that as long as one can produce records documenting a
written description of a claimed invention, one can show
possession. But the hallmark of written description is
disclosure. Thus, “possession as shown in the disclosure” is a
more complete formulation. Yet whatever the specific
articulation, the test requires an objective inquiry into the four
corners of the specification from the perspective of a person of

2 This claim limitation was added via an amendment filed on May 5, 2008.
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ordinary skill in the art. Based on that inquiry, the specification
must describe an invention understandable to that skilled artisan
and show that the inventor actually invented the invention
claimed.
598 F. 3d 1336, 1351 (Fed. Cir. 2010).
The claimed invention does not have to be described in ipsis verbis in
order to satisfy the description requirement of § 112. In re Wright, 866 F.2d
422, 424 (Fed. Cir. 1989).
FACTUAL FINDINGS
1. The Specification discloses that in the case of a conventional printed
biodegradable plastic film, the printing ink layer may hinder the
biodegrading effect so that degradation of the film may be impeded or
retarded. Spec. 1.
2. The Specification discloses that unless the printing ink is
biodegradable, the biodegrading effect rarely acts upon the film
through the printing ink. Spec.at 5.
3. The Specification discloses that Appellants’ invention is directed to a
biodegradable film having a printed region where the biodegradation
of the film below the printed region is not hindered or retarded by the
presence of printing ink. Id. at 7, ll. 1-6. The Specification discloses
positioning non-printed sub-regions 7 within the printed region 5 such
that microorganisms can biodegrade the film 2 not only in the non-
printed sub-regions 7 but also below the printed region 5. Id. at 5 and
6; Fig. 2.
4. Based on factual findings 1 to 3, the Specification discloses that either
biodegradable or non-biodegradable ink may be used with the
biodegradable film. Appellants’ non-printed sub-regions 7 permit the
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use of non-biodegradable ink by allowing the microorganisms to
degrade the biodegradable plastic beneath the ink.

ANALYSIS AND CONCLUSION
REJECTION (1)
The Examiner finds that while the Specification discloses that ink
hinders or retards the biodegradation of a film, the Specification does not
provide written descriptive support for the later claimed limitation “non-
biodegradable [ink].” (Ans.3 3, 4, and 10). We disagree.
Factual findings 1 through 4 establish that Appellants describe using
non-print areas 7 in biodegradable or non-biodegradable ink to permit
microorganisms to reach the plastic beneath the ink and degrade it. The
Specification discloses that “unless” the ink is biodegradable the
biodegrading effect does not reach the underlying plastic (FF 2). This
disclosure in the context of the entire Specification indicates that Appellants’
use of non-print areas 7 are meant to treat non-biodegradable (as described
in the background of the invention) and biodegradable inks.
Though the Specification may not use the term “non-biodegradable
ink”, this fact alone does not establish lack of descriptive support.
Appellants’ disclosure need not have ipsis verbis support for the non-
degradable ink disclosure to satisfy the first paragraph of §112. Wright, 866
F.2d at 424.

Accordingly, we reverse rejection (1).

3 We refer to the Answer mailed on November 30, 2009.
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REJECTION (2)
The Examiner finds that the Specification does not provide written
descriptive support for the claimed biodegrading rate of the areas of the film
covered by the ink4 as required by claims 23-25. (Ans. 3, 4, and 10). We
disagree.
As correctly pointed out by Appellants (App. Br. 11), the
Specification discloses that the area of the film 2 covered with the printing
ink 10 may be biodegraded at a rate substantially the same as the rate at
which the non-printed sub-regions 7 are biodegraded. (Spec. 6).
Accordingly, we agree with Appellants that the Specification provides
written descriptive support for the claimed biodegrading rate of the areas of
the film covered by the ink limitation required by claims 23-25.
Accordingly, we reverse rejection (2).

REJECTION (3)
ISSUE
Did the Examiner reversibly err in determining that Khemani would
have suggested a biodegradable plastic film comprising the printed region
having individual non-printed sub-regions each of which is enclosed within
the printing ink defining the printed region as required by claims 1 and 12
within the meaning of § 103? We decide this issue in the affirmative.

PRINCIPLE OF LAW
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning

4 This claim limitation was added via an amendment on May 5, 2008.
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with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS AND CONCLUSION
Appellants argue that the Examiner has failed to provide a reason why
one of ordinary skill would have modified Khemani to have the ink pattern
required by claims 1 and 12. (App. Br. 14). We agree.
Khemani teaches a biodegradable polymer film (corresponding to the
claimed biodegradable plastic film feature) having an ink (corresponding to
claimed printed region feature) adhering to the surface of the film.
(Khemani, col. 1, ll. 7-16; and col. 3, ll. 35-45; and col. 7, ll. 30-37).
Khemani, however, does not disclose that its ink forms the ink pattern
required by claims 1 and 12.
While the Examiner alleges (Ans. 4) that it would have been obvious
to one of ordinary skill in the art to employ the printed region required by
claims 1 and 12 as a matter of design choice, the Examiner’s statement is
merely an unsupported conclusory statement. Contrary to the Examiner’s
“design choice” rationale, the printed region pattern provides a functional
relationship with the underlying plastic film in that the non-printed regions
permit the underlying plastic film to degrade more easily as argued by
Appellants (App. Br. 15). The Examiner simply fails to provide any credible
reason5 for modifying Khemani to arrive at the claimed invention.

5 The Examiner provides additional rationales on pages 11-12 of the
Answer, however, the Examiner merely lists these rationales based on case
law without any genuine explanation of why the facts of the cases that
provide the particular rationales relied upon by the Examiner are applicable
to this application (Ans. 11-13).
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Accordingly, we reverse the Examiner’s rejection (3).

REJECTIONS (4) AND (5)
The Examiner relies on the same factual findings and determinations
discussed above with regard to rejections (4) and (5). The Examiner does
not provide any additional findings or explanation regarding how the
additional references of Casto or Masaro would have satisfied the disputed
claim feature. (Ans. 5-7).
Therefore, for the reasons stated above, we reverse the Examiner’s
rejections (4) and (5).

ORDER
The Examiner’s decision is reversed.

REVERSED
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