Ex Parte Keung

Patent Trial and Appeal Board

Jun 20, 2013

12190454 (P.T.A.B. Jun. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/190,454 08/12/2008 Jay K. Keung 2007EM250/2 8852
23455 7590 06/20/2013
EXXONMOBIL CHEMICAL COMPANY
5200 BAYWAY DRIVE
P.O. BOX 2149
BAYTOWN, TX 77522-2149
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
06/20/2013 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 AND TRIAL APPEAL BOARD
____________

Ex parte JAY K. KEUNG

____________

Appeal 2012-000227
Application 12/190,454
Technology Center 1700
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
DONNA M. PRAISS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000227
Application 12/190,454

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 4. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s invention is directed to a multi-layered white opaque film.
App. Br. 7. Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A multi-layered white opaque film, comprising:

at least two skin layers each comprising one or more propylene
homopolymers;

at least two tie layers comprising about 30 wt% of one or more
hydrocarbon resins having a softening point less than 165°C; and

a core layer comprising a blend of one or more propylene
homopolymers, and a cavitating agent comprising calcium carbonate,

wherein the tie layer comprises the one or more hydrocarbon resins in
an amount sufficient to lower the water vapor transmission rate (WVTR), as
measured by ASTM F1249, of the film by at least 10% and wherein the
density of the film is less than 0.50 g/cm3 and wherein the WVTR of the
film is about 5.0 gm2/day/25 µm or less

wherein the multi-layered white opaque film has a thickness of about
10 microns or more.

The Examiner relied on the following references in rejecting the
appealed subject matter:
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Application 12/190,454

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Brew1 US 5,667,902 Sep. 16, 1997
Klosiewicz US 6,087,446 Jul. 11, 2000
Kuo US 2004/0170854 A1 Sep. 2, 2004
Pellingra US 2005/0238874 A1 Oct. 27, 2005
Kong US 2006/0024518 A1 Feb. 2, 2006

Appellant, App. Br. 6, 7-8, requests review of the following
rejection from the Examiner’s final office action:
1. Claims 1 and 4 stand rejected under 35 U.S.C. 103(a) as unpatentable
over Pellingra, Kong and either Kuo or Klosiewicz.
OPINION
The dispositive issue for this rejection is: Did the Examiner err in
determining that the combination of Pellingra, Kong and either Kuo or
Klosiewicz would have led one skilled in the art to a multi-layered white
opaque film comprising about 30 wt% of one or more hydrocarbon resins
and having a density of less than 0.50 g/cm3 and a water vapor transmission
rate (WVTR) of about 5.0 gm2/day/25 µm or less as required by the subject
matter of independent claim 1?2
After thorough review of the respective positions provided by
Appellant and the Examiner, we answer in the negative and AFFIRM for the
reasons presented by the Examiner and add the following.
The Examiner found that Pellingra discloses a multilayer film
structure similar to the claimed invention including skin layers, tie layers

1 A discussion of Brew is unnecessary for disposition of the present appeal.
The Examiner relied upon this reference for the first time in the Answer as a
supplemental teaching in support of the primary reference to Pellingra.
2 We will limit our discussion to independent claim 1. Appellant has not
argued the dependent claim separately. Accordingly, claims not argued
separately will stand or fall together with independent claim 1.
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Application 12/190,454

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comprising hydrocarbon resins and a core layer comprising calcium
carbonate as the cavitating agent. Ans. 5-6; Pellingra ¶¶ [0034], [0055],
[0056]. The Examiner also found that Pellingra does not disclose the
claimed density of the film, amount of hydrocarbon resins in the tie layer,
and water vapor transmission rate. Ans. 6-7. The Examiner found that
Kong teaches a multilayer film having the claimed density of less than 0.5
g/cm3 (0.2-0.45 g/cm3) using a calcium carbonate cavitating agent to
produce a film with improved mechanical strength. Id.; Kong Abstract, ¶
[0006], [0046]. The Examiner further found that Kuo and Klosiewicz teach
it was known to incorporate hydrocarbon resins in a tie layer of a film3 in
amounts that meet the claimed amount of about 30% to provide enhanced
mechanical and optical properties. Ans. 7-8; Kuo ¶¶ [0004], [0028], [0036];
Klosiewicz col. 1, ll. 15-16; col. 2, ll. 40-45. The Examiner additionally
found that the layer compositions of both Kuo and Klosiewicz would
intrinsically have the claimed water vapor transmission rate of about 5
gm2/day/25 micrometer or less because their respective compositions
comprise hydrocarbon resins amounts encompassed by the claimed amount
of about 30%. Ans. 7-8. With respect to the density of the film, the
Examiner concluded that it would have been obvious to one skilled in the art
to modify the film of Pellingra to have a density of less than 0.5 g/cm3 in
view of the teachings of Kong to improve the film’s mechanical strength.
Ans. 8-9. The Examiner further concluded that it would have been obvious
to one skilled in the art to modify the film of Pellingra by incorporating

3 We note that the Examiner relied particularly on Kuo to establish that a tie
layer can comprise the claimed amount of hydrocarbon resins. Ans. 7, 14;
Kuo ¶ [0028].
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about 30% of hydrocarbon resins in the tie layers of Pellingra in view of the
teachings of Kuo and Klosiewicz to improve the processing of the film and
improve strength, stiffness, shrinkage and barrier properties of the film.
Ans. 8.
Appellant argues that the Examiner benefitted from impermissible
hindsight in relying on the teachings of Pellingra because Pellingra provides
no guidance in the examples for a skilled artisan to select the materials and
amounts as claimed to arrive to the subject matter of independent claim 1.
Appeal Brief 14-16.
We are unpersuaded by Appellant’s argument. Appellant has not
argued the rejection before us for review. As noted by the Examiner,
Pellingra discloses tie layers comprising hydrocarbon resins. Ans. 5. The
Examiner then relied on the references Kuo and Klosiewicz to teach that it
was known to incorporate hydrocarbon resins in a tie layer of a film in an
amount that encompasses the claimed amount of about 30% to provide
enhanced mechanical and optical properties. Ans. 7-8; Kuo ¶¶ [0004],
[0028], [0036]; Klosiewicz col. 1, ll. 15-16; col. 2, ll. 40-45. Appellant has
not adequately explained why one skilled in the art would not have modified
the tie layer in Pellingra’s film to incorporate about 30% of hydrocarbon
resins in view of the teachings of Kuo and Klosiewicz.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.

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In re Keller, 642 F.2d 413, 425 (CCPA 1981). Thus, Appellant’s argument
does not adequately address the Examiner’s reasoning for combining the
prior art. Appellant has not adequately disputed the Examiner’s findings on
Pellingra in light of the secondary references.
While Appellant argues that Pellingra provides no examples to guide
one skilled in the art to the claimed invention, in a determination of
obviousness, a reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art. See Merck &
Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”)(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); In
re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
Appellant additionally argues that Kong does not teach hydrocarbon
resins in any layer, much less a tie layer. App. Br. 18. We are unpersuaded
because Appellant’s argument does not consider the Examiner’s reasoning
for combining the prior art. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) The Examiner relied on Kong as disclosing multi-layer films having a
density of less than 0.5 g/cm3. Ans. 6-7. Appellant has not adequately
explained why one skilled in the art would not have modified Pellingra’s
film in view of the teachings of Kong to arrive to a film with a density of
less than 0.5 g/cm3.
Appellant further argues that Kuo does not teach the claimed amount
of hydrocarbon in the tie layer. App. Br. 18. We agree with the Examiner
that Kuo’s disclosure of a multi-layered film comprising layers of the same
composition would have suggested to one skilled in the art a tie layer
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comprising the claimed amount of hydrocarbon resins. Ans. 14; Kuo ¶
[0028]. Appellant has not adequately disputed this finding by the Examiner.
Appellant also argues that Klosiewicz does not teach the claimed
hydrocarbon amount in the film because the 30-60% amount of hydrocarbon
resins in the master batch would be diluted to a lesser amount by the time the
film is formed. App. Br. 19. Appellant additionally argues that Klosiewicz
teaches away from the claimed invention and the proposed Pellingra
modification because the reference discloses that levels of hydrocarbon
resins above 5% have negative effects on film properties. Id.
We are also unpersuaded by these arguments and agree with the
Examiner’s findings. Ans. 14-15. As noted by the Examiner (id. at 15),
Klosiewicz does not teach that adding hydrocarbon resins at levels higher
than 5% result in negative effects. Klosiewicz col. 2, l. 66 to col. 3, l. 7.
Instead, Klosiewicz provides a cautionary statement as to the addition of
high levels of hydrocarbon resins without specifying what constitutes high
levels. Id. Appellant has not adequately explained why one skilled in the art
would not have modified the tie layer composition of Pellingra in view of
the teachings of Klosiewicz to include the claimed amount of hydrocarbon
resins.
Appellant further argues that the showing in Table 2 of the
Specification provides evidence of unexpected success, namely, that
placement of the hydrocarbon resins in the tie layer results in improvements
in light transmittance, modulus, and Gurley stiffness. Id. at 19-20.
It is well settled that Appellant has the burden of showing unexpected
results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak,
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455 F.2d 1077, 1080 (CCPA 1972). Such burden requires Appellant to
proffer factual evidence that actually shows unexpected results relative to
the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991), and that is reasonably commensurate in scope with the
protection sought by claim 1 on appeal, In re Grasselli, 713 F.2d 731, 743
(Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re
Hyson, 453 F.2d 764, 786 (CCPA 1972). The extent of the showing relied
upon by Appellant must reasonably support the entire scope of the claims at
issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). We are
unpersuaded by Appellant’s evidence and agree with the Examiner’s
determination that the showing is not persuasive of patentability. Ans. 16.
Moreover, the evidence in Table 2 relied on by Appellant is not
commensurate in scope with the subject matter of independent claim 1,
which requires films having a thickness of about 10 microns or more.4 The
evidence in Table 2 addresses only films of 0.7 mils in thickness. Spec. 24.
Appellant has not adequately explained why the film having this thickness is
representative of the entire range of thicknesses claimed.
Accordingly, we affirm the Examiner’s rejection of claims 1 and 4
under 35 U.S.C. § 103(a) as unpatentable over Pellingra, Kong, Kuo and
Klosiewicz for the reasons given above and presented by the Examiner.
ORDER
The rejection of claims 1 and 4 under 35 U.S.C. 103(a) as being
unpatentable over Pellingra, Kong and either Kuo or Klosiewicz is affirmed.

4 The Examiner relied on Pellingra to meet the limitation of a film having
the claimed thickness range. Ans. 6.
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Application 12/190,454

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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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