Ex Parte Knoerzer et al

Patent Trial and Appeal Board

Jul 6, 2015

12716033 (P.T.A.B. Jul. 6, 2015)

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.
12/716,033 03/02/2010 Anthony Robert Knoerzer CFLAY.00520 9941
110933 7590 07/06/2015
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
EXAMINER
AUGHENBAUGH, WALTER
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
07/06/2015 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 LAVERDURE, ELDRIDGE M. MOUNT III,
and BRAD DEWAYNE RODGERS1
____________

Appeal 2013-008524
Application 12/716,033
Technology Center 1700
____________
Before BRADLEY R. GARRIS, WESLEY B. DERRICK, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections of claims 1 and 15 under 35 U.S.C. § 102(b) as anticipated by
O’Brien (US 5,631,066, issued May 20, 1997) and of claims 1, 9, and 16
under 35 U.S.C. § 103(a) as unpatentable over Melican et al. (US

1 Frito-Lay North America, Inc. is identified as the real party in interest.
App. Br. 2.
Appeal 2013-008524
Application 12/716,033
2
2003/0193104 A1, published Oct. 16, 2003 (hereinafter “Melican”)). We
have jurisdiction under 35 U.S.C. § 6.

We AFFIRM-IN-PART.

Appellants claim a composite for use on a product side of a multi-
layer packaging film comprising a bio-based layer (e.g., PLA (i.e., polylactic
acid)), an adhesion layer (e.g., PGA (i.e., polyglycolic acid)) having
deposited thereon a metal, metal oxide, and/or metalloid oxide (sole
independent claim 1).

A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A composite for use on a product side of a multi-layer packaging
film, said composite comprising a bio-based layer selected from PLA,
wherein said PLA has a glass transition temperature and is insoluble in water
at temperatures below said glass transition temperature, PHA, and mixtures
thereof and an adhesion layer having a metal, metal oxide, metalloid oxide,
or combinations thereof deposited on said adhesion layer, wherein said
adhesion layer comprises polyamides or PGA.

The § 102 Rejection

The Examiner finds that “Sample 1 of [O’Brien’s] Example 4
corresponds to the claimed composite, where the bio-based layer comprises
PLA, and the adhesion layer is PGA” (Final Action 3). Further, the
Examiner finds that the metal layer deposited on O’Brien’s PGA layer is
Appeal 2013-008524
Application 12/716,033
3
located between the PLA layer and the PGA layer (Ans. 8) and determines
that the language of claim 1 encompasses such a location (id. at 6).

Appellants disagree with the Examiner’s claim interpretation arguing
that “[t]he only way for the three recited layers to form a ‘composite’ as
claimed, is for the bio-based layer to be on the opposite side of the
metal/oid/oxide layer, which as claimed is deposited on the adhesion layer”
(App. Br. 6). According to Appellants, “[t]he Examiner’s interpretation of
claim 1 is unreasonably broad, and not supported at all by the specification
originally submitted by Appellants” (id.).

Appellants’ argument is not persuasive. We find nothing and
Appellants point to nothing in the claim 1 language which expressly requires
the adhesion layer to be located between the bio-based layer and the
metal/oid/oxide layer. While the claim requires all three layers be present in
the composite, it only defines the structural relationship between the
adhesion layer and the metal/oid/oxide layer. Moreover, Appellants’ Figure
4 disclosure contradicts their above contention that the Examiner’s claim 1
interpretation is unreasonably broad and not supported by their
Specification. Specifically, the Figure 4 disclosure teaches a composite
structure which, like O’Brien’s composite structure, includes a metal barrier
layer 412 located between adhesion layer 410 and bio-based layer 418 (see,
e.g., Spec. ¶ 30).

Appeal 2013-008524
Application 12/716,033
4
For these reasons and because Appellants do not separately argue
dependent claim 15, we sustain the § 102 rejection of claims 1 and 15 as
anticipated by O’Brien.

The § 103 Rejection

The Examiner finds that Melican discloses a composite comprising a
PHA foam component/layer and a PGA reinforcing component/layer having
a biocompatible metal deposited thereon (Final Action 4). The Examiner
concludes that, in light of Melican’s teachings, it would have been obvious
“to have formed a composite that has each of the claimed structural and
compositional limitations” (id.).

Appellants correctly point out that Melican is directed to a
biocompatible tissue implant produced via a mold operation and argue that
Melican is non-analogous art because it is not within the field of their
endeavor nor reasonably pertinent to the problem with which they were
concerned (App. Br. 7). Appellants also argue that the biocompatible metal
particles of Melican are mixed with the polymer solution which forms the
foam component and are not deposited on any PGA layer as required by
claim 1 (id. at 8).

The Examiner considers Appellants’ non-analogous art argument to
be unpersuasive because “the claim language requires a ‘composite . . .’
[and] [t]he implant of Melican et al. is a composite” (Ans. 11). As for
Appeal 2013-008524
Application 12/716,033
5
Appellants’ argument that the metal particles of Melican are not deposited
on a PGA layer, the Examiner states that Melican’s step of adding the
polymer solution with metal particles to a mold which contains a PGA
reinforcing component “is clearly a step in which the metal particles are
deposited on the mesh-like reinforcing component” (id. at 12).

We agree with Appellants that Melican is not analogous art. The
Examiner’s opposing view apparently is based on the proposition that the
inventions of Melican and claim 1 are in the same field of endeavor because
they are both directed to composites. However, such a proposition so
broadly characterizes the field of Appellants’ endeavor as to render
meaningless this aspect of the test for non-analogous art. Here, the
Examiner has failed to “correctly set the field of the invention by consulting
the structure and function of the claimed invention as perceived by one of
ordinary skill in the art.” In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004).

We also agree with Appellants that the Examiner has not established
that Melican deposits metal on a PGA layer as required by claim 1. The
Examiner provides no support for the above statement that Melican’s metal
particles are deposited on the PGA reinforcing component. For all we know
based on the record before us, these particles are fully suspended in the foam
component and therefore are not even capable of depositing on the PGA
reinforcing component. To the extent the Examiner believes such fully
suspended particles somehow satisfy the claim 1 requirement of being
“deposited on” a PGA layer, we observe that the Examiner has not provided
the claim interpretation analysis required to support such a belief.
Appeal 2013-008524
Application 12/716,033
6

Therefore, we do not sustain the § 103 rejection of claims 1, 9, and 16.

The decision of the Examiner is affirmed-in-part.

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-IN-PART
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