Ex Parte Plourde et al

Patent Trial and Appeal Board

Dec 29, 2016

12851673 (P.T.A.B. Dec. 29, 2016)

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.
121981-00297 2187
EXAMINER
BELL, WILLIAM P
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
12/851,673 08/06/2010 Eric PLOURDE
12/29/201651468 7590
McCarter & English LLP
ACCOUNT: ILLINOIS TOOL WORKS INC.
245 Park Avenue
NEW YORK, NY 10167
12/29/2016 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 ERIC PLOURDE, KEVIN P. OLECHOWSKI,
and DAVID J. ANZINI
Appeal 2015-004732
Application 12/851,673
Technology Center 1700
Before DONNA M. PRAISS, N. WHITNEY WILSON, and
JULIA HEANEY, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
1 This decision makes reference to the Specification filed Aug. 6, 2010
(“Spec.”), the Final Office Action mailed June 5, 2014 (“Final Act.”), the
Appeal Brief filed Nov. 5, 2014 (“Br.”), and the Examiner’s Answer mailed
Jan. 23,2015 (“Ans.”).
Appeal 2015-004732
Application 12/851,673
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1, 3—10, and 12—19. We have jurisdiction under 35 U.S.C. § 6.
The subject matter of this appeal relates to “the attaching of a
polyethylene zipper profile, or other polyethylene component, to a polylactic
acid (PLA) film or other substrate.” Spec. 12. Claim 1 is illustrative
(disputed element italicized):
1. A process, including the steps of,
providing a surface of polylactic acid material;
providing at least a portion of the surface of polylactic acid
material with an area of functionalized polyolefin including a
component selected from the group consisting of epoxy and
acrylic acid;
heat sealing a polyethylene component to the area of
polyolefin.
The Examiner maintains, and Appellants2 appeal, the rejection of
claims 1, 3—10, and 12—19 under 35 U.S.C. § 112, first paragraph, for lack of
written description, and under 35 U.S.C. § 103(a) as unpatentable over
Curie,3 Thomas,4 Silvis,5 Tilman,6 and secondary references. Appellants
argue the subject matter common to claims 1,17, and 19 and rely on those
same arguments for dependent claims 3—10 and 12—19. Br. 5—8. In
accordance with 37 C.F.R. § 41.37(c)(l)(iv), and based upon the lack of
substantive arguments directed to the subsidiary rejections, claims 3—10 and
2 Appellants identity the real party in interest as Illinois Tool Works Inc.
Br. 2.
3 Curie et al., US 2008/0085066 Al, published Apr. 10, 2008 (“Curie”).
4 Thomas et al., US 2005/0220374 Al, published Oct. 6, 2005 (“Thomas”).
5 Silvis et al., US 2010/0143651 Al, June 10, 2010 (“Silvis”).
6 Tilman et al., US 4,822,539, issued Apr. 18, 1989 (“Tilman”).
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Appeal 2015-004732
Application 12/851,673
12—19 will stand or fall together with independent claim 1 from which they
depend.
OPINION
The dispositive issues for the prior art rejection are:
1. Did the Examiner err in finding that the term “acrylate” does not
inherently meant that an ethylene/acrylate copolymer includes
acrylic acid?
2. Did the Examiner err in finding that Silvis teaches the use of a tie
layer between substrates of polyethylene and polylactic acid
wherein the tie layer comprises a functionalized polyolefin
including an epoxy or an acrylic acid component?
After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm the stated rejections.
It is the Examiner’s position that the Specification does not provide
written description support for the claimed functionalized polyolefin
including a component selected from the group consisting of epoxy and
acrylic acid. Final Act. 2—3. It is also the Examiner’s position that Curie,
Thomas, Silvis, and Tilman, alone or together with secondary references,
suggest the subject matter of claims 1, 3—10, and 12—19 for the reasons
stated on pages 3—12 of the Final Action.
In the Appeal Brief, Appellants argue that “the present disclosure uses
virtually verbatim language from the ‘Dupont Packaging —Bynel® Resins’
reference ... as would be known or accessible to one skilled in the art.” Br.
5. Appellants also contend that “there is nothing in the cited paragraph of
the Thomas [reference] which would disclose or suggest ‘functionalized
polyolefin including a component selected from the group consisting of
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Appeal 2015-004732
Application 12/851,673
epoxy and acrylic acid’ as recited in independent Claims 1,10 and 19.” Id.
at 6. The Appellants further assert that “the cited paragraph of the Silvis
reference does not disclose the specific claimed functionalized polyolefins or
the use of ‘heat sealing.’” Id.
The Examiner responds that there is no dispute that “the specification,
as amended, discloses functionalized polyolefins,” however, “[t]here is no
disclosure of a functionalized polyolefin including an acrylic acid
component.” Ans. 2—3. The Examiner further responds that “the amended
specification supports an ethylene/acrylate copolymer, but the term
‘acrylate’ does not inherently mean that the resin includes acrylic acid.” Id.
at 3. The Examiner notes that the Appeal Brief does not address paragraphs
188—189 of Silvis which discloses functionalized polyolefins modified by
epoxidation and including acrylic acid, therefore Silvis does disclose a tie
layer comprising a functionalized polyolefin including an epoxy and an
acrylic acid component. Id. at 3^4.
We are not convinced that the Examiner erroneously finds the
Specification lacks written description support for a functionalized
polyolefin including an acrylic acid component and that the method of claim
1 is disclosed in the cited prior art for the reasons stated by the Examiner in
the Final Action and Answer. Ans. 2-4; Final Act. 2—A. We add the
following primarily for emphasis.
Appellants’ arguments are not persuasive for a number of reasons.
First, the Examiner agrees that the Specification as amended discloses
functionalized polyolefins and an ethylene/acrylate copolymer, but finds that
the term “acrylate” does not inherently mean that the resin includes acrylic
acid. Ans. 2—3. Appellants have not disputed this finding. Second, the
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Appeal 2015-004732
Application 12/851,673
Examiner’s finding that Silvis discloses functionalized polyolefins modified
by epoxidation and including acrylic acid is supported by the record. Silvis
H 188—189. Third, the Examiner does not rely upon Silvis for teaching the
heat sealing step required by claim 1 as argued by Appellants. Br. 6; Final
Act. 5. We note that Appellants do not dispute the Examiner’s findings with
respect to Tilman that “attaching the polyethylene zipper component by
extrusion . . . teaches a method of heat sealing the polyethylene component
onto the area of polyolefin.” Final Act. 5. In addition, heat sealing is
disclosed in Curie and Thomas. Curie claims 4, 6; Thomas 191. Moreover,
Silvis discloses that “[a]ny processes that combine co-extrusion, extrusion
lamination, adhesive lamination, and/or foam casting or extrusion can be
used to create these laminated structures . . . .” Silvis 1346.
For the foregoing reasons, we affirm all of the Examiner’s rejections
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v).
AFFIRMED
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