Ex Parte Rodick

Board of Patent Appeals and Interferences

Jun 29, 2007

11127887 (B.P.A.I. Jun. 29, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONALD G. RODICK
____________

Appeal 2007-1906
Application 11/127,887
Technology Center 1700
____________

Decided: June 29, 2007
____________

Before CHUNG K, PAK, PETER F. KRATZ, and JEFFREY T. SMITH,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Examiner’s final rejection of claims 1-4, 6-
8, 10, 15-18, 20-22, and 24-32, the only claims that remain pending in this
application. We have jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2007-1906
Application 11/127,887

Appellant presents an invention directed to a polymeric film that is
conformable and useable as a facestock (Specification 4:2-6). The facestock
is disclosed as being capable of accepting a holographic layer. Id. The
facestock is such that the resulting holographic image suffers little cracking
or flaking when employed as part of a label. Id. Claims 1 and 26, which are
directed to a machine direction oriented polymeric film are illustrative and
reproduced below:
1. A machine direction oriented only monolayer film
comprising

(A) at least one proplylene copolymer having a melt
flow rate of at least about 4 g/10 min., and

(B) at least one polyethylene,

wherein the film has been oriented by stretching in the machine
direction at a stretch ratio of about 2:1 to about 9:1 and then heat set
or annealed to provide dimensional stability.

26. A machine direction only oriented multilayer film
comprising

(A) a base layer having an upper surface and a lower
surface, and comprising polyethylene, a propylene homopolymer, a
propylene copolymer, or a blend of a propylene homopolymer and a
propylene copolymer, and

(B) a first skin layer comprising a blend of

(B-1) at least one propylene homopolymer or
propylene copolymer, and

(B-2) at least one polyethylene wherein said skin
layer overlies the upper surface of the base layer, and

2
Appeal 2007-1906
Application 11/127,887

(C) a second skin layer having an upper surface and a
lower surface wherein the upper surface of the second skin layer
underlies the lower surface of the base layer, and the second skin layer
comprises a blend of a polyethylene and a propylene homopolymer or
copolymer, and the multilayer film has been oriented in the machine
direction at a stretch ratio of from about 2:1 to about 9:1 and then heat
set or annealed to provide dimensional stability.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Freedman US 6,461,706 B1 Oct. 8, 2002

Claims 1-4, 6-8, 10, 15-18, 20-22, and 24-32 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Freedman. We affirm.
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997);
accord Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047, 34 USPQ2d
1565, 1567 (Fed. Cir. 1995). However, anticipation by a prior art reference
does not require that the reference recognize either the inventive concept of
the claimed subject matter or the inherent properties that may be possessed
by the prior art reference. See Verdegaal Bros., Inc. v. Union Oil Co.,
814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S.
827 (1987).
Anticipation under this section is a factual determination. See In re
Baxter Travenol Labs., 952 F.2d 388, 390, 21 USPQ2d 1281, 1283 (Fed.
Cir. 1991) (citing In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567
(Fed. Cir. 1990).
Claims 1-4, 6-8 and 10 are argued as a group and claims 15-18, 20-22,
and 24-34 are argued together as another group. We select claims 1 and 26
3
Appeal 2007-1906
Application 11/127,887

as the representative claims on which we shall decide this appeal as to these
respective groupings of rejected claims.
Claims 1-4, 6-8 and 10
Representative claim 1 requires a machine direction oriented
monolayer film comprising a propylene copolymer having a specified melt
flow rate and at least one polyethylene, which can be an ethylene copolymer.
The propylene copolymer ingredient can be a propylene-ethylene
copolymer. The film is recited as possessing a specified stretch ratio and is
recited as possessing some dimensional stability as a result of heat setting or
annealing.
The base or core layer of Freedman can be made individually at least
as an intermediate product film (col. 8, ll. 34-41 and 56-58). Appellant does
not challenge with any particularity the Examiner’s determination that
Freedman discloses a polymeric machine direction oriented monolayer film
having a stretch ratio and dimensional stability within the scope of
representative claim 1 (see the Answer at 3 and 4 and the Brief in its
entirety). Rather, Appellant contends that Freedman does not disclose that
the propylene copolymers in the core layer film thereof can include an
ethylene copolymer. The Examiner contends otherwise.
Thus, the principal issue raised in this appeal with respect to the
Examiner’s anticipation rejection of representative claim 1 is: has Appellant
identified reversible error in this rejection by asserting that Freedman does
not disclose that its core layer can include an ethylene copolymer? We
answer this question in the negative and affirm the Examiner’s anticipation
rejection of representative claim 1 and the rejected claims grouped
therewith.
4
Appeal 2007-1906
Application 11/127,887

The Examiner has essentially found that Freedman describes that the
core layer can include a blend of one or more propylene copolymers and a
propylene homopolymer, wherein the propylene copolymer blend includes
ethylene as a co-monomer in one of the propylene copolymers and another
higher alpha olefin monomer in another propylene copolymer; hence
describing an embodiment that representative claim 1 reads on and is
anticipated by (Final Office Action 3; Answer 3, 5, and 6; Freedman, col. 3,
ll. 48-50; col. 4, ll. 21-31 and 34-39, and Table II).1
Appellant does not dispute that their claimed polyethylene component
is inclusive of a copolymer of ethylene, including and ethylene/propylene
copolymer. Rather, Appellant maintains that the propylene and ethylene
copolymer of Freedman is not an ethylene copolymer, as required to meet
the polyethylene component (B) of representative claim 1. In this regard,
Appellant argues that:
Freedman (as well as Appellant) has defined propylene
copolymers as generally comprising copolymers of propylene
and up to about 40% by weight of at least one alpha-olefin
selected from ethylene and alpha olefins containing from 4 to
about 8 carbon atoms. (Column 4, lines 20-25). Freedman
refers to these copolymers which contain a major amount of
propylene as being "propylene copolymers", not "ethylene
copolymers".

1 See In re Schaumann, 572 F.2d 312, 316-17, 197 USPQ 5, 9 (CCPA 1978)
(prior art preferred genus which disclosed limited species, inclusive of
claimed species, constituted description of the claimed species within the
meaning of 35 U.S.C. §102(b)); In re Petering, 301 F.2d 676, 681,
133 USPQ 275, 280 (CCPA 1962) (prior art genus containing only 20
compounds inherently anticipated a claimed species within the genus
because "one skilled in [the] art would . . . envisage each member" of the
genus).
5
Appeal 2007-1906
Application 11/127,887

There is no teaching or suggestion in Freedman that the
term "propylene copolymers" as used therein includes the
copolymers known in the art as "ethylene copolymers." In fact,
it should be clear from a reading of the entire Freedman
specification that the term "propylene copolymers does not
include ethylene copolymers". For example, Freedman teaches
that the first skin layer consists essentially of at least one
polyolefin having a density of about 0.940 g/cm2 or less, and
such polyethylenes generally are referred to in the art as low
density or medium density polyethylenes. Column 5, lines 43-
48. Low density polyethylenes, such as linear low density
polyethylene (LLDPE) are known in the art to be copolymers of
ethylene and a lesser amount of an alpha olefin containing from
3 to 20 carbon atoms. See, for example, Encyclopedia of
Polymer of Science and Technology, Volume 2, pages 441-442,
John Wiley & Sons, Inc. 2003, Attachment A, and the patents
cited by Freedman in column 5, lines 54-55 which describe
processes for preparing low density polyethylenes which are
ethylene copolymers. Accordingly, Freedman makes a clear
distinction between "propylene copolymers" and low density
polyethylenes.
Since the Examiner has not cited any authority in support
of his position that the propylene copolymers as described by
Free[d]man would include ethylene copolymers, the rejection of
claims 1-4, 6-8 and 10 should be reversed. These claims are
novel and are not obvious over Freedman.

(Br. 7 and 8).

In other words, Appellant is of the view that the claimed polyethylene
component includes only ethylene/propylene copolymers that require more
ethylene than propylene content whereas the propylene/ethylene copolymer
of Freedman is a copolymer that can include only a lesser amount of
ethylene than propylene. We disagree with this contention.
It is axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation consistent
6
Appeal 2007-1906
Application 11/127,887

with the specification, and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.
In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
Moreover, limitations are not to be read into the claims from the
specification. In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057,
1059 (Fed. Cir. 1993) citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989).
Here, Appellant provides in the Specification, under a Detailed
Description of a Preferred Embodiment heading, a description of propylene
copolymers that may be used in the base layer as being copolymers that
“generally comprise . . . up to about 40% by weight of at least one alpha-
olefin selected from ethylene and alpha-olefins containing from 4 to about 8
carbon atoms” (Specification 8). Also, the Specification provides that the
polyethylene component of the film “may comprise a polyethylene, such as
low density, linear low density, high density, very high density polyethylene
as well as ethylene copolymers” (Specification 10).
Clearly, these statements make it clear by the permissive term “may”
that they are not limiting definitions for the claim terms “propylene
copolymer” and “polyethylene” or “ethylene copolymer” for the disclosed
preferred embodiment much less narrow definitions that must be applied to
the claim terms in giving the appealed claims their broadest reasonable
construction as they would be understood by one of ordinary skill in the art.
Indeed, the Specification proclaims that:
While the invention has been explained in relation to its
preferred embodiments, it is to be understood that various
modifications thereof will become apparent to those skilled in
the art upon reading the specification. Therefore, it is to be
understood that the invention disclosed herein is intended to
7
Appeal 2007-1906
Application 11/127,887

cover such modifications as fall within the scope of the
appended claims.

(Specification 29).

Moreover, the referred to selection from the Encyclopedia of Polymer
Science and Technology (Br. Appendix B) directed to linear low density
polyethylene does not serve to prove that Appellant’s use of the claim term
“polyethylene” would have been construed by one of ordinary skill in the art
as excluding copolymers of propylene and ethylene, as disclosed by
Freedman for use in the base (core) film layer.
From our perspective, the Examiner has properly construed the
pending claims by giving them their broadest reasonable construction as
they would be understood by one of ordinary skill in the art. The Examiner
has correctly found that the claim term polyethylene is inclusive of ethylene
copolymers, as evidenced by dependent claim 8. Furthermore, the Examiner
has correctly determined that an ethylene copolymer, as claimed, is inclusive
of copolymers of ethylene with other monomers, such as propylene, without
any constraints on the relative amounts of the monomers employed therein.
Contrarily, Appellant has not persuasively explained why copolymers
containing propylene and ethylene of the applied reference would not have
been reasonably construed as ethylene copolymers within the scope of
representative claim 1 (see dependent claim 8). Thus, Appellant has not
identified any reversible error in the Examiner’s anticipation rejection of
representative claim 1 and the rejected claims grouped therewith.

8
Appeal 2007-1906
Application 11/127,887

Claims 15-18, 20-22, and 24-34
Representative claim 26 requires a multilayer film including a base
layer and two skin layers. One skin layer overlies the upper surface of the
base layer and the other skin layer underlies the lower surface of the base
layer. Each of the skin layers comprises a blend of a polyethylene with at
least one propylene polymer (either homopolymer or copolymer).
The Examiner has found that Freedman describes a machine direction
oriented multilayer film including a core (base) layer and two tie (skin)
layers (Answer 3, 6, and 7). The Examiner has found that the base layer of
Freedman comprising a blend of polypropylene homopolymer and
copolymer (Answer 3). Also, the Examiner has determined that the tie layer
of Freedman is part of the skin layer and comprises a blend of a
polyethylene and polypropylene, including propylene homopolymer
(Answer 3).
Appellant does not dispute that the multilayer film of Freedman has
been oriented in the machine direction with a stretch ratio and includes a
base layer as claimed. Nor does Appellant contend that Freedman’s film
does not possess dimensional stability imparted thereto by heat or annealing.
Nor does Appellant contend that the tie layer of Freedman does not include a
polypropylene homopolymer and polyethylene. Rather, Appellant contends
that the tie layer of Freedman is not part of the skin layer. Thus, it is
contended that Freedman does not disclose a multilayer film with skin layers
comprised of polyethylene and a propylene homopolymer, as required by
representative claim 26.
Thus, the main issue raised in this appeal with respect to the
Examiner’s anticipation rejection of representative claim 26 is: has
9
Appeal 2007-1906
Application 11/127,887

Appellant identified reversible error in this rejection by asserting that
Freedman does not disclose skin layers comprised of a blend of polyethylene
and polypropylene homopolymer? We answer this question in the negative
and affirm the Examiner’s anticipation rejection of representative claim 26
and the rejected claims grouped therewith.
Representative claim 26 employs the transition term “comprising” in
reciting the base layer, first skin layer, and second skin layer as being parts
of the multilayer film. The transition term “comprising” leaves the claim
open to the inclusion of other elements or materials. See In re Baxter,
656 F.2d 679, 686, 210 USPQ 795, 802 (CCPA 1981). Thus, representative
claim 26 is open to the presence of other layers in the multilayer film,
including the presence of other skin layers.
Freedman discloses tie layers (36 and 37, Fig. 3) on opposite outside
surfaces of base layer (32, Fig. 3). Freedman discloses that blends of
propylene homopolymer and polyethylene are utilized in the tie layer (col. 7,
ll. 30-37). Because the tie layers of Freedman are located outside of the base
layer (over and under the base layer), the Examiner has reasonably found
that the tie layers of Freedman correspond to the first and second skin layers
of representative claim 26 (Answer 3, 6 and 7). While Freedman also
discloses, first and second skin layers (34 and 36, Fig. 3) that are located
outside of the tie layers, these outer skin layers do not take away from
Freedman’s disclosure of the tie layers, which are, in effect, inner skin layers
that tie the outer skin layers (34 and 36) to the base layer (32).
Appellant’s argument that the tie layers of Freedman are separate or
distinct from the skin layers thereof and could not be considered as the here
claimed skin layers is not persuasive. This is because representative claim
10
Appeal 2007-1906
Application 11/127,887

26 does not preclude the presence of other skin layers that are located
outside of the recited first and second skin layers in light of the open
transitional term “comprising” that is employed therein. See In re Self,
671 F.2d 1344, 1350-1351, 213 USPQ 1, 7 (CCPA 1982).
Accordingly, Appellant has not established reversible error in the
Examiner’s anticipation rejection of representative claim 26 and the rejected
claims that are grouped therewith.
It follows that we will sustain the Examiner’s anticipation rejection.
OTHER ISSUE
Prior to final disposition of this application, the Examiner should take
appropriate action with respect to the Information Disclosure Statement filed
June 06, 2007.
CONCLUSION
The Examiner’s decision to reject claims 1-4, 6-8, 10, 15-18, 20-22,
and 24-32 under 35 U.S.C. § 102(e) as being anticipated by Freedman is
affirmed.
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)(iv) (2006).

AFFIRMED

tf/ls
11
Appeal 2007-1906
Application 11/127,887

Armand P. Boisselle
Renner, Otto, Boisselle & Sklar, LLP
Nineteenth Floor
1621 Euclid Avenue
Cleveland, OH 44115
12