Ex Parte Savic

Board of Patent Appeals and Interferences

Jan 9, 2008

09946960 (B.P.A.I. Jan. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ZORAN SAVIC
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Appeal 2007-3371
Application 09/946,960
Technology Center 1700
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Decided: January 9, 2007
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Before CHARLES F. WARREN, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 2-4, 6, 8, 10, and
15-18, the only claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
An oral hearing was held on December 20, 2007.
We affirm the Examiner’s decision to reject claims 2 and 6 and
reverse the Examiner’s decision to reject claims 3, 4, 8, 10, and 15-18.
The invention relates to a multilayer tubular film for use in packaging
food products. (App. Br. 2). In films of this type, it is generally necessary
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Application 09/946,960

to vary the composition of the inner polymer layer depending on the specific
food product type being packaged. (App. Br. 3). Appellant has discovered a
specific formulation for the middle polymer layer which allows for a wide
variation of the inner polymer layer composition while consistently
exhibiting good adhesion to the inner polymer layer. (App. Br. 4).
Claim 16 is illustrative of the invention and is reproduced below:
16. A multilayer seamless tubular film comprising
- an outer polymer layer in which the polymer comprises 70 to 100%
by weight of aliphatic or partially aromatic polyamides or copolyamides or
blends thereof, and 0 to 30% by weight of other polymers,
- a middle polymer layer which consists essentially of 50 to 80% by
weight of ethylene-methyl acrylate copolymers, wherein the methyl acrylate
content is 5 to 30% by weight, and 20 to 50% by weight of ethylene-maleic
anhydride copolymers, which contain 0.15 to 5% by weight of maleic
anhydride units, and
- an inner polymer layer in which the polymer comprises 40 to 100%
by weight of aliphatic or partially aromatic polyamides or copolyamides or
blends thereof, 0 to 60% by weight of carboxyl-containing ethylene
copolymers or their salts and 0 to 20% by weight of other polymers, the total
amount of which gives 100% by weight.

The Examiner relies on the following prior art references to show
unpatentability:
Vicik 5,549,943 Aug. 27, 1996
Beckwith et al. 99/33653 Jul. 8, 1999
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The Examiner made the following rejections:
1. Claims 3, 4, 8, 10, and 15-18 under 35 U.S.C. § 102(b) as
anticipated by Vicik.
2. Claims 2 and 6 under 35 U.S.C. § 103 as unpatentable over Vicik
in view of Beckwith.
Appellant contends that the Examiner failed to establish a prima facie
showing of anticipation as to claims 3, 4, 8, 10, and 15-18, because “one
must pick and choose from among many different copolymers as well as
from among many different monomer percentage choices for any given
copolymer, in order to arrive at the specific composition defined by the
claims on appeal.” (Reply Br. 2).
We agree with Appellant. The Examiner has simply not demonstrated
that Vicik describes the middle layer of the claimed multilayer tube with
sufficient specificity to anticipate the claims within the meaning of 35
U.S.C. § 102(b). Therefore, we do not sustain the Examiner’s rejection of
claims 3, 4, 8, 10, and 15-18 under 35 U.S.C. § 102(b) as anticipated by
Vicik. See In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“[F]or the instant
rejection under 35 U.S.C. 102(e) to have been proper, the . . . reference must
clearly and unequivocally disclose the claimed compound or direct those
skilled in the art to the compound without any need for picking, choosing,
and combining various disclosures not directly related to each other by the
teachings of the cited reference. Such picking and choosing may be entirely
proper in the making of a 103, obviousness rejection, where the applicant
must be afforded an opportunity to rebut with objective evidence any
inference of obviousness which may arise from the similarity of the subject
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matter which he claims to the prior art, but it has no place in the making of a
102, anticipation rejection.”).
Turning to the rejection of claims 2 and 6 under 35 U.S.C. § 103 as
unpatentable over Vicik in view of Beckwith. The Examiner relies on
Beckwith for a disclosure of a multilayer thermoset film for enclosing food
products as recited in claim 2. The Examiner also relies on Beckwith for a
teaching of a thermoset multilayer film with an outer layer having a
composition similar to that of appealed claim 6. The Examiner maintains
that although Beckwith does not disclose the identical outer layer of claim 6,
it would have been a matter of routine optimization to achieve the claimed
outer layer in order to obtain the desired characteristics, as taught by
Beckwith. (Ans. 8).
Appellant argues that Vicik fails to disclose, either expressly or
inherently, a multilayer film having the claimed middle layer. Appellant
maintains that Vicik discloses a large group of suitable compounds for use in
the claimed middle layer and that neither the teachings of Beckwith nor
Vicik would direct one of ordinary skill in the art to select the specific
components of the claimed middle layer from among this large group. (App.
Br. 18-19). More specifically, Appellant argues that neither Vicik nor
Beckwith provide motivation to select the specific components of the
claimed middle layer, because neither reference is concerned with improving
adhesion of a middle layer to different inner polymer layers to allow for
variation of the inner polymer layer depending on a specific food product.
(App. Br. 19-20). Appellant further argues that Beckwith does not
“expressly teach the subject matter (specifically claimed co-polyamide) of
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claims 2 and 6 . . . [and any] ‘optimization’ would involve impermissible
hindsight.” (App. Br. 18).
Contrary to Appellant’s contention, we find that the Examiner
properly identified a teaching in Vicik of each of the claimed middle layer
components and provided a well-reasoned basis for combining them to
achieve Appellant’s claimed multilayer tubular film (Ans. 3-4). As
acknowledged by Appellant, anticipation and obviousness are based on
different analyses. Thus, even though we concluded that the Examiner
failed to identify a teaching of the claimed middle layer within the meaning
35 U.S.C. § 102(b), the Examiner’s findings of equivalence and overlapping
ranges in Vicik provide an appropriate basis for the Examiner’s
determination that it would have been obvious to one of ordinary skill in the
art to have selected the claimed middle layer components from among
Vicik’s list of suitable compounds. Vicik clearly teaches that any of the
components disclosed therein, including the copolymers specified for the
middle layer in claim 16, are useful in the disclosed multilayer film. See,
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“That the ‘813 patent discloses a multitude of effective combinations does
not render any particular formulation less obvious. This is especially true
because the claimed composition is used for the identical purpose. [Citations
omitted.]”).
The Examiner, relying on Beckwith’s teaching that selection of the
amount of the components depends on the desired characteristics of the
component blend, also provided a well reasoned basis for his determination
that it would have been obvious to have selected the outer layer components
recited in claim 6. (Ans. 7-8). Appellant has not refuted the Examiner’s
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findings with respect to Beckwith. See, In re Boesch, 617 F.2d 272, 275-76,
(CCPA 1980) (the prior art would have suggested the experimentation
necessary to achieve the claimed compositions as discovery of an optimum
value of a result effective variable in a known process is ordinarily within
the skill of the art); In re Aller, 220 F.2d 454, 456-58 (CCPA 1955) (it is not
inventive to discover by routine experimentation optimum or workable
ranges for general conditions disclosed in the prior art); see also, KSR Int’l
Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1741 (2007)( An obviousness analysis
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”); In re Kahn, 441 F.3d 977, 985-88
(Fed. Cir. 2006); In re Thrift, 298 F.3d 1357, 1365 (Fed. Cir. 2002) (when a
second reference identifies the benefits of adding a feature to the primary
reference, an obviousness rejection is proper). Accordingly, we find that the
Examiner established a prima facie showing of obviousness as to claims 2
and 6.
A prima facie case of obviousness may be rebutted by evidence of
unexpected results or a showing that the prior art teaches away from the
claimed invention in any material respect. In re Geisler, 116 F.3d 1465,
1469-70 (Fed. Cir. 1997). Appellant relies on an Experimental Report
provided in the Evidence Appendix to the Brief as evidence of the
advantageous properties of the claimed invention. (App. Br. 20-21).
Appellant’s Experimental Report includes “certain test data achieved with
the invention” (App. Br. 20). We do not find this evidence persuasive in
establishing non-obviousness because it is impossible for us to evaluate
whether Appellant’s data is “unexpected.” Appellant has not provided a
basis for comparison of the claimed invention with the prior art, e.g., test
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data associated with the closest prior art multilayer tubular films or
multilayer tubular films having compositions which fall outside Appellant’s
claimed ranges. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972)
(burden of analyzing and explaining data to support an argument of
unexpected results rests on the party asserting it).
In view of the foregoing, we find that a preponderance of the evidence
weighs in favor of the Examiner’s conclusion of obviousness as to claims 2
and 6.
ORDER
The Examiner’s decision rejecting claims 3, 4, 8, 10, and 15-18 under
35 U.S.C. § 102(b) as anticipated by Vicik is reversed.
The Examiner’s decision rejecting claims 2 and 6 under 35 U.S.C. §
103 as unpatentable over Vicik in view of Beckwith 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)(i)(iv).
AFFIRMED-IN-PART

tc

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