Ex Parte Jud et al

Board of Patent Appeals and Interferences

May 31, 2006

09505713 (B.P.A.I. May. 31, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILFRIED JUD and HANS-RUDOLF NAGELI
____________

Appeal No. 2006-1061
Application No. 09/505,713
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HEARD: May 09, 2006
____________

Before KRATZ, TIMM and JEFFREY T. SMITH, Administrative Patent Judges.
JEFFREY T. SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal the decision of the Examiner finally rejecting
claims 38 to 53, all of the pending claims. We have jurisdiction under
35 U.S.C. §134.1

1 In rendering this decision, we have considered Appellants’ arguments
presented in the Brief, filed February 2, 2004.
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CITED PRIOR ART
As evidence of unpatentability, the Examiner relies on the following
references:
Breitler et al. (Breitler) 5,589,275 Dec. 31, 1996
Muggli2 5,968,663 Oct. 19, 1999
Ullmann’s Encyclopedia of Industrial Chemistry, 1998 VCH, vol. A11, pp. 85,
86, 93, 105 and 108-108. (Ullmann)
The Examiner entered the following rejections:
(I). Claims 38-43 stand rejected under 35 U.S.C. § 102 (b) as anticipated
by Breitler. (Answer, pp. 3-4).
(II). Claims 38-53 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Breitler and Ullmann. (Answer,
pp. 4-6).
We have carefully reviewed the claims, specification and applied
prior art, including all of the arguments advanced by both the Examiner
and Appellants in support of their respective positions. This review leads us
to conclude that the Examiner’s § 102 rejection is not well founded
however, the § 103 rejection is well founded. Our reasons follow.
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Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellants concerning the above-noted rejections, we
refer to the Answer and the Brief.
We initially note that Appellants assert that for purposes of appeal
the claims are grouped as follows: (I) 38-45 and 47-50, (II) 46, (III) 51, (IV) 52
and 53. We will consider these groups of claims separately to the extent
that Appellants have argued them. Any claims not properly separately
argued will stand or fall with the selected representative claim. See 37 CFR
§ 1.192(c)(7)(2003)(now 37 CFR § 41.37(c)(1)(vii), effective Sept. 13, 2004;
69 Fed. Reg. 49960 (Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sept. 7,
2004)); and In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed.
Cir. 2002).
OPINION

2. The Examiner as rebuttal evidence to Appellants’ arguments cited this
reference. The reference has not been included in the statement of the rejection.
Appellants’ invention relates to a sterilizible composite film containing a
barrier layer that is impermeable to water vapor and gases comprising a metal
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foil and on both sides of the barrier layer at least one functional layer. Claim
38, which is representative of the claimed invention, appears below:
38. A sterilizable composite film containing a barrier layer
that is impermeable to water vapor and gases comprising a metal
foil and on both sides of the barrier layer at least one functional
layer, the composite film having a layer structure containing one
on top of the other in the following sequence:
(a) a first functional layer containing a plastic film that is a
polyester, a polyamide, or a polyolefin, or an extrusion layer of a
polyolefin, or one or more lacquer layers, or print and lacquer
layers, or print layers;
(b) a metal foil having a thickness of 5 to 100 pm; and
(c) a second functional layer containing a plastic layer that
is a layer comprising a coextrusion-coated, a coextruded, and/or
an extrusion-laminated film having a sequence of a first
polypropylene layer, a polyamide layer, and a second
polypropylene layer, said first polypropylene is directly bonded to
metal foil (b) or is bonded to metal foil (b) by means of a bonding
agent layer or a laminate adhesive layer, and, optionally, a primer
layer is on at least one surface of metal foil (b).

The Examiner rejected claims 38-43 as anticipated by Breitler. Claim 38
is directed to a sterilizable composite film containing a barrier layer that is
impermeable to water vapor and gases comprising a metal foil and on both
sides of the barrier layer at least one functional layer. The composite film has
a layer structure containing layers one on top of the other in a specific
sequence.
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We agree with Appellants that the Examiner has not established a
prima facie case of anticipation with respect to the subject matter of the
rejected claims. (Brief, p. 6). The Examiner acknowledges in the discussion of
the § 103 rejection that there must be some selection from the teachings of
Breitler to arrive at the claimed invention. (See Answer, p. 5). As such, Breitler
does not anticipate the claimed subject matter because it does not provide
a disclosure sufficiently specific to direct one skilled in the art to the claimed
combination without any need for picking and choosing. See In re Arkley,
455 F.2d 586, 589, 172 USPQ 524, 527 (CCPA 1972). Accordingly we determine
that the Examiner has not established a prima facie case of anticipation with
respect to the subject matter of claims 38-43.
However, our determination that the disclosure of Breitler does not
anticipate the subject matter of the claims does not preclude a finding that
the disclosure of Breitler would have rendered the subject matter of the
claims on appeal prima facie obvious under 35 U.S.C. § 103 (a). See Arkley,
supra.
Claims 38-53 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Breitler in view of Ullmann. We affirm the rejection
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essentially for the reasons presented by the Examiner and add the following
primarily for emphasis.
We note that Appellants’ representative in the Hearing on May 9, 2006,
indicated that the appeal as to the subject matter of claim 51 is withdrawn.
Thus, we summarily affirm the Examiner’s § 103 rejection of claim 51.
We now turn to the rejection of the remaining claims.
The Examiner found that Breitler teaches a composite film containing a
metal foil, preferably aluminum, with plastic films on both sides thereof.
According to the Examiner, Breitler teaches the general layer structure as
instantly claimed with layer thickness within or comprising the instantly
claimed ranges. Breitler teaches utilizing optional adhesive, bonding and/or
primer layers to bond plastic layers to each other and/or to the metal foil.
The Examiner asserts that “[t]hough Breitler et al discloses all of the layers,
layer materials and layer thickness as instantly claimed, Breitler et al does not
specifically limit the invention to the specific composite film combination as
instantly claimed, however, it would have been obvious to one having
ordinary skill in the art at the time of the invention to utilize any of the
structures disclosed by Breitler et al selecting from the disclosed materials
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taught by Breitler et al based on the desired film properties for a particular
end use.” (Answer, p. 5). The Examiner determined that through routine
experimentation it would have been obvious to a person of ordinary skill in art
to determine the optimum thickness of the individual layers because layer
thickness is a result-effective variable affecting the barrier, mechanical,
adhesion and sealing properties of the resulting composite. (Answer, p. 5).
Further, the Examiner determined, citing the Ullmann reference, that
utilization of an appropriate laminating method, such as extrusion laminating,
lamination coating, coextrusion or laminating via adhesives would have
been obvious to a person having ordinary skill in the art. (Answer, p. 5).
The major point of disagreement between Appellants and the
Examiner is the description of the subject matter of Breitler in column 4.
Appellants argue that:
The Examiner has incorrectly contended that column 4 of
Breitler et al. discloses appellants' second functional layer (c).
The disclosure in column 4 of Breitler et at., when taken in
context with the entire disclosure of such patent, refers to a
sealable layer on one or both sides of its composite material (and
not to a sealable layer on both sides of a polyamide layer of said
composite material). Appellants have presented below an
analysis of column 4 and its meaning in the context of the whole
disclosure of Breitler et al. and the wording in such column.
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Appellants have also presented court and Board decisions on it
being in error to take portions of a prior art reference out of
context. Further, appellants have presented quotations from
documents from the prosecution/examination of Breitler et al. to
support appellants' position. [Brief, p. 5].

Appellants further argue, Brief page 13, that “[a]ll references to sealing
layers in such text [of column 4] are exclusively to sealing layers, located on
the outer surfaces of the composite material, i.e. on the outer surface of the
plastic layers of the composite material.”
Appellants' argument is not persuasive. Breitler provides an extensive
discussion of the various layers that form the described composite material.
(See columns 2-7). Regarding the plastic layer, Breitler discloses:
The plastic layers may include e.g. monofilms or monolayers
and composites of two or more films or layers of plastics such as
polyamides, polyamide mixtures or mixed, block, grafted or
copolyamides. [Column 3, lines19-22] . . . .
The plastic layers on both sides of the metal layer, in
particular the polyamide-based thermoplastics may additionally,
and independent of each other, be provided with an outer lying
sealable layer and/or a barrier layer of thermoplastics. [Column
4, lines, 9-13] . . . .
A single or double-sided sealable composite is obtained by
single or double-sided coextrusion of the plastic layers with e.g. a
polypropylene/polyethylene copolymer.
In that connection it is useful for the plastic layers to contain
or comprise of a polyamide-based thermoplastic and at least one
a polyamide-based thermoplastic to feature a sealing layer on at
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least one side i.e. each layer of polyamide-based thermoplastic
may be covered with a sealable layer on one or both sides,
independent of the other layers. [Column 4, lines 36-45].
(Emphasis added)
Breitler teaches a person of ordinary skill in the art, from the above
cited portions of the disclosure, inter alia, that the plastic (polyamide) layer
may be composites of two or more layers and that the sealing of the plastic
layer on one or both sides is independent of the other layers. As such, a
person of ordinary skill in the art would have reasonably expect that both
sides of the plastic layer described by Breitler could have been encased by
sealing layers. "For obviousness under ' 103, all that is required is a reasonable
expectation of success." In re O'Farrell, 853 F.2d 894, 904, 7 USPQ2d 1673,
1681 (Fed. Cir. 1988). This is especially true in the present case because
Breitler, like the present application, adheres the materials of the sealing layer
to the metal foil layer. (See column 5). Consequently, a person of ordinary
skill in the art would have recognized that if the sealing layers were applied
to both sides of the polyamide layer the (encased) plastic layer would have
been suitable for bonding to the metal layer.
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Appellants have presented the declaration of Breitler to discuss the
descriptions appearing in column 4 of the cited U.S. Patent No. 5,589,275
(Breitler). The declarant states
Such text [column 4, lines 9-13] is not discussing the plastic
layers by themselves but only as components in the structure of
the basic composite material. The use of the phrase “outer lying
sealable layer” refers only to the outside surfaces of the basic
composite material (i.e., the outside surface of each of the
plastic layers). The words “outer lying” refer only to the side of
each of the plastic layers away from the metal foil.” (Paragraph
6)
Such text [column 4, lines 36-45] only discusses the basic
composite material, placement of a sealable layer on the outer
or outside surface of at least one of the plastic layers in the basic
composite method. Such text does not refer to one or both of
[the] sides of a plastic layer (in the composite material) having a
sealable layer thereon—such is not part of the invention
described in U.S. Patent No. 5,589,275. (Paragraph 7).

The statements of the declarant are not persuasive of patentability.
The declarant did not indicate that the description of Breitler was not
suggestive of treating each layer of the composite independent of other
layers. A person of ordinary skill in the art would have reasonably interpreted
the description of Breitler as suggesting that the plastic (polyamide) layer was
formed from composites of two or more layers. A person of ordinary skill in
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the art would have also reasonably interpreted that the description of Breitler
suggested that the plastic (polyamide) layer contained sealing layers on
both sides, independent of the other layers in the composite material.3 It is
well settled that a prior art reference is relevant for all that it teaches to those
of ordinary skill in the art. See In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d
1780, 1782 (Fed. Cir. 1992). The intention of the patentee not to include
specific subject matter in the described patent does not detract from the
suggestive teachings therein.
The Examiner cited the Ullmann reference for teaching that the
formation of plastic multilayer films by the process of extrusion laminating,
lamination coating, coextrusion and laminating with adhesives were known.
(Answer, p. 5). Breitler discloses the processes such as those described in
Ullmann are suitable for forming composite materials used in packaging.
(Column 6, lines 21-24). Thus, Appellants’ arguments that there is no
motivation to combine Breitler and Ullmann, Brief pages 27, 32 and 33, are
not persuasive.

3. We note that Appellants’ interpretation of the description of Breitler as having a
sealing layer on the outside surfaces of the basic composite material is also consistent with
the description of the reference.
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Appellants, Brief page 35, questions whether the Muggli reference is
part of the § 103 rejection. The Muggli reference has not been included in
the statement of the rejection by the Examiner. The Examiner relied on this
reference as rebuttal evidence to Appellants’ arguments. (Answer, p. 9).
Appellants argue that, because the Examiner has not addressed on
the record the level of skill in the art, the § 103 rejection is fatally defective.
(Brief, p. 36). “While it is always preferable for the factfinder below to specify
the level of skill it has found to apply to the invention at issue, the absence of
specific findings on the level of skill in the art does not give rise to reversible
error ‘where the prior art itself reflects an appropriate level and a need for
testimony is not shown.’” Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59
USPQ2d 1795, 1797 (Fed. Cir. 2001), (quoting Litton Indus. Prods., Inc. v. Solid
State Sys. Corp., 755 F.2d 158, 163, 225 USPQ 34, 38 (Fed. Cir. 1985).
Appellants have not explained, and it is not apparent, why the applied prior
art does not reflect an appropriate level of skill in the art.
For the above reasons and those expressed by the Examiner, we
determine that the Examiner has established a prima facie case of
obviousness with respect to the subject matter of claims 38-45 and 47-50.
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Regarding claims 46, 52 and 53, Appellants argue that Breitler does not
disclose or suggest a polypropylene layer between the metal foil and the
polyamide layer. (Brief, pp. 37-40). This is essentially the same argument
presented in the discussion of claim 38. As stated above, Breitler is suggestive
of a composite material comprising a sealing layer on both sides of the
plastic (polyamide) layer. Breitler discloses the sealing layer can be formed
from polypropylene. (Column 4, lines 21-35). Thus, we affirm the rejection of
claims 46, 52 and 53.
After considering all the evidence, with due consideration to the
Appellants’ arguments and evidence, we determine that the Examiner has
established a prima facie case of obviousness with respect to the subject
matter of claims 38-53, which has not been sufficiently rebutted by
Appellants.
CONCLUSION
The rejection of claims 38-43 under 35 U.S.C. § 102 (b) as unpatentable
over Breitler is reversed. The rejection of claims 38-53 under 35 U.S.C. § 103 (a)
as unpatentable over Breitler and Ullmann is affirmed.
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TIME FOR TAKING ACTION
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(iv)(effective Sep. 13, 2004; 69
Fed. Reg. 49960 (Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sep. 7, 2004)).

AFFIRMED

)
)
PETER F. KRATZ )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )

JTS/sld
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