Ex Parte Roussos

Patent Trial and Appeal Board

Nov 3, 2017

13948305 (P.T.A.B. Nov. 3, 2017)

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.
13/948,305 07/23/2013 George Roussos FLX-1001-CON 4170
42419 7590 11/03/2017
PAULEY ERICKSON & KOTTIS
2800 WEST HIGGINS ROAD
SUITE 365
HOFFMAN ESTATES, IL 60169
EXAMINER
KRUER, KEVIN R
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
11/03/2017 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 GEORGE ROUSSOS
____________

Appeal 2016-005524
Application 13/948,3051
Technology Center 3600
____________

Before LINDA E. HORNER, JEFFREY B. ROBERTSON, and
ERIC C. JESCHKE, Administrative Patent Judges.

HORNER, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
George Roussos (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision rejecting claims 26‒33 and 37‒44.
Final Office Action (July 2, 2015) [hereinafter “Final Act.”]. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies Flexopack S.A. Plastics Industry of Koropi, Greece as
the real party in interest. Appeal Brief 1 (November 19, 2015) [hereinafter
“Appeal Br.”].
Appeal 2016-005524
Application 13/948,305

2
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter “relates to multilayer heat
shrinkable films” such as “films for use in packaging or foods such as meat,
poultry and the like.” Spec. 1.2 Claims 26 and 37 are independent.
Claim 26 is illustrative of the subject matter on appeal and is reproduced
below.
26. A multilayer film, comprising:
a) an outer layer comprising styrene-butadiene block
copolymer;
b) a first tie layer adjacent the outer layer comprising
ethylene-vinyl acetate;
c) a gas barrier layer adjacent the first tie layer comprising
polyvinylidene chloride;
d) a second tie layer adjacent the gas barrier layer
comprising ethylene vinyl acetate; and
e) a sealing layer adjacent the second tie layer selected
from the group consisting of metallocene-catalyzed ethylene-
alpha olefin copolymers alone or combined with additional
ethylene-alpha olefin copolymers and not including ethylene-
vinyl acetate, wherein the metallocene-catalyzed ethylene-alpha
olefin copolymer has a density less than about 0.905 grams/cm3
and the additional ethylene-alpha olefin copolymer is not an
ethylene-propylene copolymer;
f) wherein the film is heat shrinkable and shrinks at
temperatures of about 90°C.
Appeal Br. 7, Claims Appendix.

2 In this Decision, “Spec.” refers to the clean copy of the Substitute
Specification filed on September 30, 2013.
Appeal 2016-005524
Application 13/948,305

3
EVIDENCE
The Examiner’s decision relies upon the following evidence:
Wolf et al. [hereinafter
“Wolf”]
US 6,406,763 B1 June 18, 2002
Tatarka et al.
[hereinafter “Tatarka”]
US 6,777,046 B1 Aug. 17, 2004
Kallio et al. [hereinafter
“Kallio”]
US 7,018,710 B2 Mar. 28, 2006
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 26‒31 and 37‒42 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Tatarka and Wolf.
2. Claims 32, 33, 43, and 44 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Tatarka, Wolf, and Kallio.
ANALYSIS
The Examiner finds that Tatarka discloses the sealing layer as recited
in independent claims 26 and 37.3 Final Act. 2‒3. In particular, the
Examiner finds that “[t]he heat sealable layer [of Tatarka] further comprises
a third polymer which is not EVA or ethylene-propylene copolymer.” Id. at
3 (citing Tatarka, col. 12, lines 45+). The Examiner further explains that
“the Markush groups of claims 26 and 37 preclude any polymer that is not
an ethylene-alpha olefin polymer” and “the broadest reasonable
interpretation of the term ‘ethylene-alpha olefin copolymers’ includes the

3 Independent claim 37 is directed to a bag comprising a sealed multilayer
film that comprises a sealing layer identical to the sealing layer recited in
independent claim 26. Appeal Br. 8‒9, Claims Appendix.
Appeal 2016-005524
Application 13/948,305

4
third polymers disclosed in Tatarka.” Examiner’s Answer 6 (April 6, 2016)
[hereinafter “Ans.”]. In support of this interpretation, the Examiner cites to
five patent documents4 that include a copolymer of ethylene and a vinyl
ester, acrylic acid, methacrylic acid, or an alkyl acrylate as an ethylene-alpha
olefin copolymer. Id. at 6‒7.
Appellant argues that none of the polymers disclosed in Tatarka as the
third polymer is an ethylene-alpha olefin copolymer, and, as such, Tatarka’s
third polymer does not fall within the scope of the claimed “sealing layer.”
Appeal Br. 4. Specifically, Appellant contends that “[a]lpha-olefins do not
include acrylic acid, methacrylic acid, alkyl acrylates or the like, which do
not have the olefin-defining formula CxH2x.” Reply Br. 2; id. at 4 (citing a
Google search for the definition of “alpha olefin,” attached as Exhibit A).
We first address the procedural issue raised by the Examiner’s belated
citation to new Evidence in the Examiner’s Answer.5 Our rules provide that
“[f]or purposes of the examiner’s answer, any rejection that relies upon any
Evidence not relied upon in the Office action from which the appeal is taken
(as modified by an advisory action) shall be designated by the primary
examiner as a new ground of rejection.” 37 C.F.R. § 41.39(a)(2). The rules
exclude dictionaries from the definition of “Evidence.” 37 C.F.R. § 41.30.

4 The Examiner cites to U.S. Patent No. 6,034,162 (claims 2 and 14); U.S.
Patent No. 6,436,557 B1 (claim 2); U.S. Patent Application Publication No.
2012/0128906 A1 (claim 16); U.S. Patent Application Publication No.
2009/0117454 A1 ¶¶ 24, 26); and U.S. Patent Application Publication No.
2012/0205151 A1 (¶ 29).
5 It is undisputed that the five patent documents cited by the Examiner for
the first time in the Examiner’s Answer were not relied upon by the
Examiner previously in this application.
Appeal 2016-005524
Application 13/948,305

5
Thus, for purposes of claim interpretation, an examiner may include
citations to dictionaries that were not relied upon the Office action from
which the appeal was taken. An examiner cannot, however, newly cite to
patent documents not relied upon previously without designating the Answer
as including a new ground of rejection. The meaning of “relied upon” is not
confined to use of new Evidence in combination with the prior art used to
reject the claims in a new ground of rejection. The meaning of “relied upon”
broadly includes any Evidence submitted by the Examiner for the purpose of
proving the existence of an alleged fact. Thus, the Examiner “relied upon”
these five new patent documents because the Examiner provided the
documents to the Board for the purpose of proving how the term “ethylene-
alpha olefin copolymer” is understood in the art. The Examiner failed to
comply with the Office’s rules by failing to designate the Answer as
containing a new ground of rejection.
As provided for in 37 C.F.R. § 41.40, Appellant could have petitioned
under 37 C.F.R. § 1.181 to have the undesignated new ground properly
designated, in order to avail itself of the ability to reopen prosecution.
Appellant chose, however, to continue with the present appeal and filed a
Reply Brief addressing the new Evidence. Appellant’s response included
the submission of various definitions of the disputed term, at least some of
which come from dictionaries and are thus permitted under our rules. As
such, so as not to unnecessarily delay resolution of the appeal and because
Appellant affirmatively indicated its desire to proceed with the appeal by
filing a Reply Brief that addresses the new Evidence, we turn to the merits of
the appeal.
Appeal 2016-005524
Application 13/948,305

6
A Markush group is a list of specified alternatives of a group,
typically expressed in the form: a member selected from the group
consisting of A, B, and C. Abbott Labs. v. Baxter Pharm. Prods., Inc., 334
F.3d 1274, 1280 (Fed. Cir. 2003). As indicated by the use of “consisting
of,” a claim incorporating a Markush group is “closed.” Id. at 1280.
Independent claims 26 and 37 employ a Markush group to define the
claimed “sealing layer” as being a layer “selected from the group consisting
of metallocene-catalyzed ethylene-alpha olefin copolymers alone or
combined with additional ethylene-alpha olefin copolymers.” Thus, this
claim language excludes from the scope of the claimed sealing layer any
material that is not an ethylene-alpha olefin copolymer.
We interpret “ethylene-alpha olefin copolymer” in light of Appellant’s
Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appellant’s Specification defines this phrase by reference to example
materials:
As used herein the phrase “ethylene alpha-olefin
copolymer” refers to such heterogeneous materials as linear low
density polyethylene (LLDPE), linear medium density
polyethylene (LMDPE) and very low and ultra low density
polyethylene (VLDPE and ULDPE), as well as homogeneous
polymers such as TAFMER™ supplied by Mitsui Petrochemical
corporation and metallocene catalyzed polymers such as Exact
materials supplied by Exxon. Other ethylene alpha olefin
copolymers such as the long chain branched homogeneous alpha
olefin copolymers available from Dow Chemical Company,
known as Affinity resins, are also included in the present
invention. Homogeneous ethylene alpha olefin copolymers with
a density less than about 0.905 are generally called plastomers.
Spec. 4. Notably, Appellant’s Specification also contains separate
definitions for the phrases “ethylene vinyl acetate” or “EVA” and “ethylene
Appeal 2016-005524
Application 13/948,305

7
methyl acrylate” or “EMA.” Id. at 5. The definition of “ethylene-alpha
olefin copolymer” provided in Appellant’s Specification does not list EVA
or EMA as examples. Id. at 4. In light of the description provided in
Appellant’s Specification, we agree with Appellant that the Specification
uses the term “ethylene alpha-olefin copolymer” in keeping with its ordinary
meaning of a copolymer of ethylene with another alpha-olefin of the family
of alkenes with a chemical formula CxH2x. Reply Br. 2‒4. In support of a
broader interpretation, the Examiner cites to other patents that use the term
“ethylene alpha-olefin copolymer” in a manner inconsistent with its
conventional meaning. Ans. 6‒7. We are not convinced by these patents to
adopt a broader definition of the term in this instance, in which it is clear
from Appellant’s Specification that a broader unconventional definition was
not intended.
Tatarka’s third polymer, which comprises a copolymer of ethylene
and a vinyl ester, acrylic acid, methacrylic acid, or an alkyl acrylate, is not
an ethylene alpha-olefin copolymer as claimed. In fact, Tatarka
distinguishes between copolymers of ethylene and at least one alpha olefin
and copolymers of ethylene and a vinyl ester, acrylic acid, methacrylic acid
or an alkyl acrylate. Specifically, Tatarka discloses “[v]arious copolymers
of ethylene and at least one alpha olefin are employed in the film of the
invention” and describes that “[s]uitable alpha olefins include C3 to C10
alpha-olefins such as propene, butene-1, pentene-1, hexene-1,
methylpentene-1, octene-1, decene-1 and combinations thereof.” Tatarka,
col. 10, ll. 52‒53, 57‒60. Tatarka does not include acrylic acid, methacrylic
acid or an alkyl acrylate in the list of suitable alpha olefins. Notably, in the
Appeal 2016-005524
Application 13/948,305

8
discussion of its preferred embodiment, Tatarka distinguishes the first and
second polymers from the third polymer. Tatarka characterizes only the first
and second polymer as ethylene-alpha olefin copolymers, disclosing that
“[t]wo of the required polymers of the preferred inventive blend are ethylene
α-olefin copolymers and one is an ethylene copolymer with a vinyl ester[,]
acrylic acid, methacrylic acid or an alkyl acrylate.” Tatarka, col. 11, ll. 12‒
13, 18‒21.
Thus, the Examiner erred in finding that Tatarka discloses the sealing
layer as recited in claims 26 and 37. The Examiner does not rely on Wolf to
cure this deficiency. Final Act. 3. For this reason, we do not sustain the
rejection of independent claims 26 and 37, and their dependent claims 27‒31
and 38‒42, as unpatentable over Tatarka and Wolf. The Examiner also does
not rely on Kallio to cure the deficiency in Tatarka. Final Act. 5.
Accordingly, we likewise do not sustain the rejection of claims 32, 33, 43,
and 44 as unpatentable over Tatarka, Wolf, and Kallio.
DECISION
The decision of the Examiner rejecting claims 26‒33 and 37‒44 is
reversed.

REVERSED