Ex Parte Knoerzer et al

Patent Trial and Appeal Board

Jun 14, 2016

13277974 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/277,974 10/20/2011
110933 7590 06/15/2016
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
FIRST NAMED INVENTOR
Anthony Robert KNOERZER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CFLAY.00556 5021
EXAMINER
CHEN,VNIAN
ART UNIT PAPER NUMBER
1787
MAILDATE DELIVERY MODE
06/15/2016 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 TRIAL AND APPEAL BOARD
Ex parte ANTHONY ROBERT KNOERZER,
KENNETH SCOTT LA VERDURE, and TODD MICHAEL FAYNE 1
Appeal2014-007902
Application 13/277,974
Technology Center 1700
Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's decision rejecting as obvious claims 1, 3, 7, 8, 10, 11, 13, 14, 16,
and 17. We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
BACKGROUND
Appellants' claimed invention relates to a multi-layer paper-based
packaging material in which at least one surface of the paper is smooth and
1 Frito-Lay North America is identified as the Real Party in Interest. Appeal
Brief filed February 13, 2014 ("App. Br."), 2.
Appeal2014-007902
Application 13/277,974
then a barrier layer is applied. Spec. Abstract. Independent claim 1 is
directed to multi-layer packaging film. Independent claim 11 is directed to a
method of making the multi-layer packaging film.
Claim 1 is illustrative and is reproduced below.
1. A multi-layer packaging film comprising a paper layer
having at least one surface smoothed by a filler layer, wherein
said filler is chosen from the group consisting of kaolinite, talc,
mica, mordenite, vermiculite, titanium dioxide and calcium
carbonate, an optional primer layer on said at least one
smoothed surface, a barrier layer on said at least one smoothed
surface or said optional primer layer, wherein said barrier layer
comprises a thickness and said paper layer comprises a surface
roughness when measured without said filler layer, wherein
said surface roughness when measured without said filler layer
is greater than said barrier layer thickness, further wherein said
paper layer comprises a surface roughness when measured with
said filler layer, wherein said surface roughness when measured
with said filler layer is less than said barrier layer thickness, and
an optional heat seal layer on said barrier layer.
App. Br. 12 (Claims Appendix).
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
I. Claims 1, 3, 11, 13, 14, and 16 over DE '5302 in view of
Beeman3 and Ranger4 or Miekka. 5
2 Schiller et al. (DE 195 23 530 C 1, published September 26, 1996). The
Examiner relies on the English translation of record. Appellants do not
dispute the propriety of the translation or the reference's status as prior art.
3 Beeman (US 3,477,970, issued November 11, 1969).
4 Ranger (US 4,647,332, issued March 3, 1987).
5 Miekka et al. (US 5,155,604, issued October 13, 1992).
2
Appeal2014-007902
Application 13/277,974
IL Claims 1, 3, 11, 13, 14, 16, and 1 7 over Bergerioux6 in
view of Beeman, Chicarella, 7 Korowicki, 8 and Ranger or
Miekka.
III. Claims 7 and 10 over Bergerioux in view of Beeman,
Chicarella, Korowicki, and Ranger or Miekka as applied
to claim 1 in Rejection II and further in view of Wnuk. 9
IV. Claim 8 over Bergerioux in view of Beeman, Chicarella,
Korowicki, and Ranger or Miekka as applied to claim 1 in
Rejection II and further in view of Reighard. 10
V. Claims 16 and 1 7 over Bergerioux in view of Beeman,
Chicarella, Korowicki, and Ranger or Miekka as applied
to claim 1 in Rejection II and further in view of Adur. 11
DISCUSSION12
Appellants proffer arguments as to Rejections I and II grounded on
limitations common to both independent claims 1 and 11. App. Br. 6-9.
Appellants rely on the dependency of claims subject to Rejections III-V
from either independent claim 1 or 11. App. Br. 9-10. Upon consideration
of the evidence and opposing contentions of Appellants and the Examiner,
we are not persuaded of reversible error for the reasons set forth in the
Examiner's Answer. We add the following for emphasis.
6 Bergerioux (US 5,506,036, issued April 9, 1996).
7 Chicarella et al. (US 2009/0022919 Al, published January 22, 2009).
8 Korowicki (US 2006/0159860 Al, published 20, 2006).
9 Wnuk et al. (US 5,939,467, issued August 17, 1999).
10 Reighard et al. (US 2004/0185287 Al, published September 23, 2004).
11 Adur et al. (US 6,358,576 Bl, issued March 19, 2002).
12 We refer to the Final Office Action ("Final Act.") mailed October 22,
2013, the Appeal Brief filed February 13, 2014, the Examiner's Answer
("Ans.") mailed May 7, 2014, and the Reply Brief ("Reply Br.") filed July 7,
2014.
3
Appeal2014-007902
Application 13/277,974
Rejection I
The Examiner relies on DE '530 for its disclosure of a multilayer
packaging material comprising, in order; a paper substrate, a smoothing
layer (i.e., filler layer), a primer coating layer, and an optional heat seal
layer. Ans. 2. The smoothing layer comprising polyethylene reduces the
relatively high roughness of the paper surface allowing application of a thin
barrier layer, typically comprising aluminum or aluminum oxide and of a
thickness less than 100 nanometers. Ans. 3 (citing DE '530 5, 7-9, 11-14,
16, and 17, Fig. 1 of original).
The Examiner relies on Beeman for its disclosure that it was well
known to incorporate fillers, including kaolin, calcium carbonate, titanium
dioxide, in smoothing coats for paper surfaces to reduce roughness and non-
uniformity of the paper surface as well as to improve optical properties,
including opacity and whiteness. Ans. 3 (citing Beeman col. 1, col. 2, 11. 16-
31; col. 4, 11. 3 8--45). In particular, Beeman discloses use of "[p ]igmented
papercoating compositions ... to reduce the roughness and non-uniformity
of the paper surface." Beeman col. 1, 11. 24-29.
The Examiner relies on Ranger and Miekka in the alternative for their
disclosure of typical surface roughness of paper substrates used in multilayer
packaging laminates. Ans. 3 (citing Ranger col. 2, 11. 21-33; col. 3, 11. 47-
61; Miekka col. 7, 11. 1-9). The roughness of the paper substrates are greater
than the thickness of the barrier layer in DE '530.
The Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time of the invention to make the multilayer
packaging material of DE '530 using commercially available paper stock
with conventional ranges of surface roughness (Ranger or Miekka),
4
Appeal2014-007902
Application 13/277,974
incorporating effective amounts of known inorganic fillers in the smoothing
layer to adjust surface roughness, uniformity, and visual appearance
(Beeman), and to adjust the thickness and composition of the smoothing coat
and the size of particles in the smoothing coat "to minimize the roughness of
the smoothing coat surface as much as economically feasible ... in order to
avoid pinholes and/or other defects which negatively affect barrier properties
in the barrier layers." Ans. 3--4; see also Ans. 10-12. The Examiner
determines that minimizing the roughness of the smoothing coat would have
led one of ordinary skill to a roughness comparable to or less than the
thickness of the barrier layer, and thus to meet the limitations as to
roughness of the paper layer and filler layer. Ans. 4, 10-12. The Examiner
determines de facto that the degree of smoothing is a result effective variable
and determines that to arrive at a sufficiently smooth filled layer would have
required no more than routine experimentation. Ans. 11; see also Final Act.
3. The Examiner further determines that Appellants have not provided any
probative evidence of criticality or unexpected results as to the requirement
that the recited filler layer has a roughness less than the thickness of the
barrier coating. Ans. 12.
Appellants proffer a number of arguments, however, we find them
unpersuasive for reasons well expressed by the Examiner in the Answer and
for additional reasons also detailed below.
Appellants' primary argument is that the cited prior art fails to teach
or suggest the relationship between the surface roughness of the paper and
the thickness of the barrier level leading to use of a smoothing layer to
reduce the surface roughness from greater than to less than the thickness of
the barrier layer. App. Br. 6, 8. The argument is without persuasive merit,
5
Appeal2014-007902
Application 13/277,974
however, because it fails to squarely address the Examiner's findings and
rationale grounded on minimizing roughness by use of a smoothing coat to
avoid pinholes and/or other defects in a barrier layer and how doing so
would have led one of ordinary skill in the art to the instant multilayer
packaging material. Ans. 10-12, 18-19.
As to Appellants' argument in the Reply Brief that the Specification
includes evidence of criticality or unexpected results (Reply Br. 2, citing
Spec. ii 13), it is our opinion that the argument is untimely and we deem it
waived as Appellants fail to show good cause for why it should be
considered (37 C.F.R. § 41.4l(b)(2) (2012)). Appellants had the opportunity
to argue criticality or unexpected when rebutting the prima facie case of
obvious the Examiner set forth in the Final Office Action. Final Act. 3.
Appellants fail to adequately explain why no such argument was made in the
Appeal Brief, particularly where a portion of the Specification cited in
support in the Reply Brief is cited in the Appeal Brief in the argument that
the cited prior art does not disclose or suggest the relationships between
roughness and thickness of the barrier layer. App. Br. 6 (citing Spec. ii 13).
Appellants' further arguments are directed to various proffered
reasons why the combination of references relied on by the Examiner was
improper. App. Br. 6-8. Appellants' arguments fail to address the relied on
combination of teachings as set forth by the Examiner where the rejection
was not grounded on literal incorporation of the coating and barrier layers of
Beeman and either Ranger or Miekka into the multilayer packaging material
of DE '530, but rather for these references teaching the relevant use of
inorganic fillers and of what is typical for roughness of uncoated paper
substrates. Ans. 3.
6
Appeal2014-007902
Application 13/277,974
Appellants' arguments that DE '530 teaches away from combination
with Ranger because DE '530 teaches cross-linking is important for
successful application of a barrier layer (App. Br. 7, citing In re Gordon, 733
F.2d 900 (Fed. Cir. 1984)) and because DE '530 states "that its structure is
made 'without using an aluminum foil"' (App. Br. 7; Reply Br. 1-2) are
without persuasive merit. As highlighted by the Examiner (Ans. 12-13),
there is no evidence of a teaching away, particularly where Ranger is merely
silent as to cross-linking of the polymer in the coating layer and both
DE '530 and Ranger teach using barrier layers comprising metal, including
those made without using a metal foil (compare DE '530 11-12, describing
inorganic barrier layers comprising aluminum applied by vacuum coating, to
Ranger col. 1, 11. 7-13, describing modifying a substrate by lamination with
"metallised ... plastic[] ... or by transfer matallisation [sic]"). "Under the
proper legal standard, a reference will teach away when it suggests that the
developments flowing from its disclosures are unlikely to produce the
objective of the applicant's invention." Syntex (U.S.A.) LLC v. Apotex, Inc.,
407 F.3d 1371, 1380 (Fed. Cir. 2005). On this record, we do not find
sufficient support for the existence of any teaching away. See, e.g., DyStar
Textilfarben GmbH & Co. Deutsch/and KG v. C.H. Patrick Co., 464 F.3d
1356, 1364 (Fed. Cir. 2006) ("We will not read into a reference a teaching
away from a process where no such language exists.").
Appellants' arguments that the Examiner erred in turning to Beeman's
disclosed use of inorganic pigments or to prepare material for printing
because DE '530 is unconcerned with printing and the metal barrier layer
would obscure the pigment (App. Br. 8) are unpersuasive because they fail
to address the relied on teaching of Beeman that their use reduces the
7
Appeal2014-007902
Application 13/277,974
roughness and non-uniformity of the paper surface. Further, Appellants'
arguments fail to address that optically transparent barrier layers comprising
aluminum oxide are disclosed. Ans. 16 (citing DE '530 13). Likewise, we
find without persuasive merit Appellants' arguments as to the Beeman's
failure to disclose the surface roughness before or after application of the
pigments. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (The
obviousness analysis "can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ" in overcoming
difficulties in combining the teachings of the cited references.). "A person
of ordinary skill is also a person of ordinary creativity, not an automaton."
Id. at 421.
Having considered the record, we do not find Appellants' arguments
persuasive of reversible error and, accordingly, will affirm the Examiner's
rejection of claims 1, 3, 11, 13, 14, and 16overDE '530inviewofBeeman
and Ranger or Miekka.
Rejection II
The Examiner relies on Bergerioux for its disclosure of a multilayer
packaging material comprising, in order; a paper substrate, a smoothing
layer (i.e., filler layer), an optional adhesive layer, a barrier layer, and an
optional thermoplastic layer primer coating layer, and an optional heat seal
layer. Ans. 4-5. The smoothing layer comprises polyethylene and reduces
the roughness of the paper surface and allows for application of a thin barrier
layer. Ans. 5 (citing Bergerioux Fig. 2, col. 1, 11. 35-50, col. 2, 1. 50 to col.
3, 1. 27; col. 5, 11. 20-56, 66-67).
The Examiner relies on Chicarella, inter alia, for its disclosure that it
was known to use thin inorganic layers and/or polymeric barrier layers
8
Appeal2014-007902
Application 13/277,974
instead of metal foils in high barrier laminates and that the inorganic barrier
layers were typically between 5 and 100 nanometers in thickness and
typically comprised aluminum, aluminum oxide, or silicon oxide. Ans. 6.
The Examiner relies on Korowicki for its disclosure that use of known
thin barrier layer systems was conventional. Ans. 6.
The Examiner relies on Ranger, Beeman, and Miekka in the same
manner as in Rejection I.
The Examiner similarly concludes, as in Rejection I, that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to make the multilayer packaging material of Bergerioux using
commercially available paper stock with conventional ranges of surface
roughness (Ranger or Miekka), incorporating effective amounts of known
inorganic fillers in the smoothing coat to adjust surface roughness,
uniformity, and visual appearance (Beeman) and to adjust the smoothing
coat "to minimize the roughness of the smoothing coat surface as much as
economically feasible ... in order to avoid pinholes and/or other defects
which negatively affect barrier properties in the barrier layers." Ans. 6-7.
The Examiner further concludes that it would have been obvious to one of
ordinary skill in the art to use lightweight high barrier inorganic and/or
polymeric barrier layer technology (Chicarella) instead of Bergerioux's
barrier layer as it was known the lightweight higher barrier could be used in
packaging laminates (Korowicki) and doing so would "reduce weight or
material costs, facilitate recycling and/or improve durability and/or
resistance to flexing." Ans. 6-7.
Appellants argue Bergerioux-like DE '530-fails to provide any
details as to surface roughness before or after application of the smoothing
9
Appeal2014-007902
Application 13/277,974
layer (a thermoplastic resin) and that the combination of Beeman, Ranger,
and Miekka with Chicarella-having a maximum barrier layer thickness of
100 nm-are improper for the same reasons the combination of these
references were improper with DE '530-having a maximum barrier layer
thickness of 100 nm. App. Br. 9.
Appellants' arguments are unpersuasive of reversible error.
As explained by the Examiner, there is no persuasive merit to the
argument Bergerioux fails to disclose the recited paper surface roughness
values because the argument fails to squarely address the basis of the
rejection. Ans. 19-20. The Appellants' attack against Bergerioux
individually fails to take account of teachings from the secondary references.
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references."); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (The test for
obviousness "is what the combined teachings of the references would have
suggested to those of ordinary skill in the art."). Further, it wholly fails to
squarely address the basis of the rejection grounded on one of ordinary skill
in the art using routine experimentation to arrive at desirable post-smoothing
coat paper roughness. Ans. 20.
As explained by the Examiner, Appellants' arguments against the
combination of Beeman, Ranger, and Miekka with Chicarella are
unpersuasive for the same reasons the arguments were unpersuasive with
respect to DE '530. Ans. 20-21. Further, as highlighted by the Examiner,
because the inorganic barriers with nanometer-scale thicknesses and
polymeric barrier materials disclosed by Chicarella can be fully or partially
10
Appeal2014-007902
Application 13/277,974
transparent, one of ordinary skill in the art would have been motivated to
incorporate a pigment as disclosed in Beeman in an underlying smoothing
coat to obtain specific visual or aesthetic effects. Ans. 21.
Having considered the record, we do not find Appellants' arguments
persuasive of reversible error and, accordingly, will affirm the Examiner's
rejection of claims 1, 3, 11, 13, 14, 16, and 17 over Bergerioux in view of
Beeman, Chicarella, Korowicki, and Ranger or Miekka.
Rejections 111-V
Appellants do not proffer separate arguments as to the patentability of
claims 7 and 10 (Rejection III), claim 8 (Rejection IV), and claims 16 and 17
(Rejection V), but instead rely on the dependency of claims 7, 8, and 10
from independent claim 1 and the dependency of claims 16 and 1 7 from
independent claim 11. App. Br. 9-10.
It follows, therefore, we also affirm the rejection of these claims.
CONCLUSION
The rejection of claims 1, 3, 7, 8, 10, 11, 13, 14, 16, and 17under
35 U.S.C. § 103 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l).
AFFIRMED
11