Ex Parte Morris

Board of Patent Appeals and Interferences

Sep 28, 2011

11098228 (B.P.A.I. Sep. 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 BARRY ALAN MORRIS
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Appeal 2010-005863
Application 11/098,228
Technology Center 1700
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Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
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A. Introduction1
Barry Alan Morris (“Morris”) timely appeals under
35 U.S.C. § 134(a) from the final rejection2 of claims 1, 9, 12, 15, 21, 22, 25,
and 26.3 We have jurisdiction. 35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to multilayer laminates of foils,
such as aluminum foil, in which a polar ethylene copolymer is said to
provide good adhesion between the metal foil and relatively nonpolar
thermoplastic polymer layers. (Spec. 3, ll. 25-29.) The laminates are said to
be useful for packaging materials and for forming pouches that can be heat
sealed. (Id. at 13, ll. 2-19.)
Representative Claim 1 reads:
1. A multilayer structure comprising or produced from
a first layer, a second layer, a third layer, and optionally a
fourth layer wherein
the first layer comprises foil;

1 Application 11/098,228, Composition Comprising Ethylene Copolymer,
4 April 2005, claiming the benefit of a provisional application
filed 13 April 2004. The real party in interest is listed as E.I. du Pont de
Nemours and Co. (Appeal Brief, filed 8 May 2009 (“Br.”), 1.)
2 Office action mailed 12 December 2008 (cited as “FR”).
3 Finally rejected claims 2-6, 8, 11-14, 16-20, 24, 27, and 28 have not been
appealed and are not before us. Morris argues that claims 2 and 6, and the
remaining claims that depend from claims 2 and 6, are indefinite because
they do not further limit claim 1. More particularly, they require that the
second layer “comprise” a polyolefin and the ethylene methyl acrylate
copolymer, or a polyester, whereas claim 1 limits the second layer to an
ethylene methyl acrylate copolymer. (Br. 2.) Remaining copending
claims 29-35 have been withdrawn by the Examiner (FR1; Br. 1) and are not
before us.
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the second layer is an ethylene/methyl acrylate
copolymer;
the third layer comprises polyolefin or polyester;
the optional fourth layer comprises or is produced from
paper, polyester, polyamide, polyethylene vinyl alcohol,
polyethylene vinyl acetate, ethylene/acrylic acid
copolymer or ionomer thereof, polyvinylidene chloride,
anhydride-modified ethylene homopolymer, anhydride-
modified ethylene copolymer, or combinations of two or
more thereof; and
the second layer is in contact with the first layer.
(Claims App., Br. 10; paragraphing and emphasis added.)
The Examiner maintains the following grounds of rejection:4
A. Claims 1 and 9 stand rejected under 35 U.S.C. § 102(b) in view
of Van Loon.5
B. Claims 12, 15, 21, 22, 25, and 26 stand rejected under
35 U.S.C. § 103(a) in view of Van Loon.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Morris argues that the Examiner has misinterpreted the nature of the
second layer as including blends of ethylene/methyl acrylate copolymers
with other polymers. (Br. 4-5.) Thus, Morris argues, the Examiner’s
reliance on the disclosure of such a blend as meeting the requirements of the

4 Examiner’s Answer mailed 3 September 2009 (“Ans.”); we cite only those
claims that remain before us.
5 Achiel Jos Van Loon, Heat Sealable Films, U.S. Patent 6,503,637 B1
(7 January 2003).
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second layer being in contact with a foil layer is erroneous. Moreover, in
Morris’s words, “Van Loon does not disclose that any film or sheet structure
that is a foil layer in contact with an EMA layer, which in turn is in contact
with a thermoplastic layer.” (Br. 6.)
The limitation that “the second layer is an ethylene/methyl acrylate
copolymer” (emphasis added) is a closed definition that limits the second
layer to the recited copolymer. The Examiner’s reliance (Ans. 3-4; Ans. 4-5;
and Ans. 5-6) on the teachings of Van Loon, which discloses films
comprising a blend of i) a homopolymer of ethylene, ii) a homopolymer of
propylene of a copolymer of propylene and certain specified olefins, and iii)
a polymer (that can be ethylene/ methyl acrylate copolymer) produced by a
high pressure free radical process, to meet the second layer, is therefore
fatally flawed. We therefore REVERSE the rejection of claims 1 and 9 for
anticipation.
Because the Examiner does not direct our attention to any disclosure
in Van Loon that cures this deficiency, we also REVERSE the rejection of
the remaining claims as obvious in view of Van Loon.
Review of the Brief and of the Examiner’s Answer indicates that two
further comments are in order.6

6 Review of the case as a whole also reveals that claims 16-28 all depend
from claim 15, and also refer to another claim, but not in the alternative. In
particular, appealed claim 21 recites a further dependence on claim 9 (which
depends from claim 1 and which requires that the ethylene/methyl acrylate
copolymer is prepared in a tubular reactor), and claim 22 recites a further
dependence on claim 12 (which requires the presence of the fourth layer,
which is optional in claims 1 and 9, from which claim 12 depends).
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First, the recitations, without more, of labels such as “first layer,”
“second layer,” etc., do not require any particular order or contact between
layers. Limitations may not be read from the specification into the claims.
Thus, in claim 1, although the “first layer” must be in contact with the
“second layer,” there is no requirement that the second layer be in contact
with the third layer. Indeed, the existence of claim 2, which requires that the
second layer be in contact with the third layer, implies that claim 1, from
which claim 2 depends, must admit of other orders, in which the second
layer is in contact with the fourth layer, or with no other layer at all.
Otherwise, the further limitation would be meaningless.
Second, the term “tubular reactor” recited in claim 9 refers to the
reactor in which the ethylene/methyl acrylate copolymer is prepared from
the monomers, as argued by Morris and as supported by Exhibits B and C in
the Evidence Appendix attached to the Brief. The term does not refer to a
reactor or device in which the already synthesized copolymer may be shaped
into a tubular form prior to slitting into a flat film, such as the one referred to
by Van Loon. (Van Loon col. 5, ll. 27-30.) Thus, the Examiner’s rejection

Claims 25 and 26, which depend, respectively, from claims 21 and 22, are
also affected in this way.
These claims are arguably not in compliance with 37 C.F.R. § 1.75(c)
(2011), second sentence, which reads, “[a]ny dependent claim which refers
to more than one other claim (“multiple dependent claim”) shall refer to
such other claims in the alternative only.”) Although the claims are not
“multiply dependent” in that they do not seek to incorporate all the
limitations of the claims they cite, a more conventional form of these claims
may be desirable. We leave this issue to the discretion of the Examiner and
Morris.
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of claim 9 is based on a further misapprehension of the meaning of the claim
and the teachings of the prior art.
C. Order
We REVERSE the rejection of claims 1 and 9 under
35 U.S.C. § 102(b) in view of Van Loon.
We REVERSE the rejection of claims 12, 15, 21, 22, 25, and 26 under
35 U.S.C. § 103(a) in view of Van Loon.
REVERSED
sld