Ex Parte SchiffmanDownload PDFPatent Trial and Appeal BoardMay 7, 201814057489 (P.T.A.B. May. 7, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/057,489 10/18/2013 33072 7590 05/09/2018 KAGAN BINDER, PLLC SUITE 200, MAPLE ISLAND BUILDING 221 MAIN STREET NORTH STILLWATER, MN 55082 FIRST NAMED INVENTOR Jurgen Schiffman 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 ATTORNEY DOCKET NO. CONFIRMATION NO. KNW0003/US/2 9167 EXAMINER YAGER, JAMES C ART UNIT PAPER NUMBER 1782 NOTIFICATION DATE DELIVERY MODE 05/09/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): docketing@kaganbinder.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JURGEN SCHIFFMAN Appeal2017-007479 Application 14/057 ,489 Technology Center 1700 Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and JANEE. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 request our review under 35 U.S.C. § 134(a) of the Examiner's decision to finally reject claims 1--4, 7, 10, 11, and 20-23. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellants are the applicants, inventor Jurgen Schiffman, and Kuhne Anlagenbau GmbH, which, according to the Appeal Brief, are the real parties in interest. Appeal Brief filed December 19, 2016 ("App. Br."), 3. 2 Appellants cancelled claims 24--32 in an Amendment filed August 16, 2016, and the Examiner indicated in an Advisory Action issued August 25, 2016, that the Amendment would be entered. Appeal2017-007479 Application 14/057 ,489 STATEMENT OF THE CASE Appellants claim a multilayer food casing or food film having the shape of a sheet or tube. App. Br. 5---6. Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A multilayer food casing or food film having the shape of a sheet or a tube which is produced by the nozzle blast-drawing process and biaxially oriented by the triple-bubble process comprises the following layer structure including at least nine layers that are counted from the outside to the inside, wherein: a first layer from the outside contains PET as a layer component, a second layer contains an adhesion promoter as a layer component, a third layer contains an ionomer as a layer component, a fourth layer contains an adhesion promoter as a layer component, a fifth layer contains polyamide as a layer component, a sixth layer contains EVOH as a layer component, a seventh layer contains polyamide as a layer component, an eighth layer contains an adhesion promoter as a layer component, and a ninth layer contains a polyolefin as a layer component. App. Br. 20 (Claims Appendix). The Examiner sets forth the following rejections in the Final Office Action entered May 16, 2016 ("Final Act."), and maintains the rejections in the Examiner's Answer entered February 14, 2017 ("Ans."): I. Claims 1, 2, 7, 11, 20, 22, and 23 under 35 U.S.C. § 103(a) as unpatentable over Buelow (US 2004/0173491 Al; published September 9, 2004) in view of Wolf (US 6,406,763 Bl; issued June 18, 2002); II. Claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Buelow in view of Wolf; III. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over 2 Appeal2017-007479 Application 14/057 ,489 Buelow in view of Wolf and Bekele (US 5,491,009; issued February 13, 1996); and IV. Claim 21under35 U.S.C. § 103(a) as unpatentable over Buelow in view of Wolf and Bekele. DISCUSSION Upon consideration of the evidence relied upon in this appeal and each of Appellants' contentions, we affirm the Examiner's rejections of claims 1--4, 7, 10, 11, and 20-23 under 35 U.S.C. § 103(a) for the reasons set forth in the Final Office Action, the Answer, and below. Rejection I Appellants argue claims 1, 2, 7, 11, 20, 22, and 23 as a group. App. Br. 7-17. Therefore, we select claim 1 as representative, and decide the appeal as to claims 1, 2, 7, 11, 20, 22, and 23 based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv). Buelow discloses a tube-shaped biaxially-oriented multilayer structure used to package food products. i-fi-f 15, 50. Buelow discloses that the multilayer structure can have an outer layer that includes ionomers (third layer), and can include two polyamide layers (fifth and seventh layers) separated by an oxygen barrier layer formed ofEVOH (sixth layer). i-fi-141, 4 7, 48, 68; Fig. 1. Buelow discloses that the multilayer structure can further include a polyolefin heat-sealant layer (ninth layer). i-fi-1 50, 51. Buelow discloses that tie layers can be disposed adjacent to and between other layers of the multilayer structure to adhere or bond the layers (fourth and eighth layers). i170. Buelow discloses that the multilayer structure most preferably has seven layers, but can include more than seven layers. i1 61. Buelow 3 Appeal2017-007479 Application 14/057 ,489 discloses a particular seven-layer structure having an outer layer that provides rigidity and strength (third layer), a first tie layer next to the outer layer (fourth, adhesion promoter layer), a first polyamide layer next to the first tie layer (fifth layer), an oxygen barrier layer next to the first polyamide layer (sixth layer), a second polyamide layer next to the oxygen barrier layer (seventh layer), a second tie layer next to the second polyamide layer (eighth, adhesion promoter layer), and a heat-sealant layer next to the second tie layer (ninth layer). i-fi-168-70; Fig. 1. The Examiner finds that Buelow thus discloses a multilayer structure having layers corresponding to the third through ninth layers recited in claim 1, but finds that Buelow' s multilayer structure does not include a first layer from the outside containing PET and a second layer next to the PET layer containing an adhesion promoter, and the Examiner relies on Wolf for suggesting these features. Final Act. 3--4. Wolf discloses a multiple layer film for packaging food products that includes an outer abuse layer and a tie layer directly adhered to the internal surface of the outer abuse layer, which bonds the outer abuse layer to an adjacent inner layer. Col. 1, 11. 6-9; col. 3, 11. 38-50; col. 9, 11. 37-39, 64-- 66. Wolf discloses that the outer abuse layer may consist essentially of a polyester, such as PET, and provides resistance to environmental stresses such as abrasion, as well as resistance to heat applied during heat sealing, helping to prevent bum-through. Col. 5, 11. 25-32, 62---66; col. 6, 11. 12-13, 3 5-3 7. Wolf discloses that the outer abuse layer also imparts desired gloss, clarity, and haze characteristics to the multiple layer film. Col. 5, 11. 41--47; col. 6, 11. 35-37. 4 Appeal2017-007479 Application 14/057 ,489 The Examiner determines that one of ordinary skill in the art would have been led at the time of Appellants' invention to incorporate an outer abuse layer and associated tie layer as disclosed in Wolf into the multilayer structure disclosed in Buelow to provide "protection against environmental stresses, heat-resistant properties to prevent 'bum-through' during heat sealing and also good appearance characteristics and good adhesion." Final Act. 5. Appellants argue that Buelow discloses a strong, puncture-resistant, heat-sealable, and heat-resistant film, and teaches the advantages of using fewer materials in the film. App. Br. 8-9. Appellants contend that based on these disclosures, one of ordinary skill in the art would not have seen a need to modify Buelow's film to prevent bum through during heat sealing by adding more layers to the film because this property is "theoretically" already provided by Buelow's heat-resistant film. App. Br. 12-13. Appellants argue that Wolf also notes the disadvantages of including "too many layers," and Appellants contend that combining "the films of Buelow and Wolf ... would go against the teaching in both references by adding an additional layer." App. Br. 9-10, 12-13. However, although Buelow does disclose that the multilayer structure described in the reference includes a heat-sealant layer that allows the film to be heat-sealed to itself or to another film (i-f 39), the Examiner's rationale for modifying Buelow's multilayer structure to include an outer PET abuse layer as disclosed in Wolf is not based solely on the abuse layer's prevention of bum-through during heat sealing. Rather, as the Examiner also correctly finds, Wolf discloses that the outer abuse layer provides resistance to environmental stresses such as abrasion, and imparts desired gloss, clarity, 5 Appeal2017-007479 Application 14/057 ,489 and haze characteristics to a multiple layer film. Final Act. 4--5; Wolf col. 5, 11. 41--47, col. 6, 11. 35-37. In view of these disclosures, one of ordinary skill in the art would have been led to modify Buelow's multilayer structure to include an outer PET abuse layer bonded to the ionomer layer of Buelow's structure by a tie layer (adhesion promoter) as disclosed in Wolf in order to realize the numerous advantageous properties imparted by the abuse layer, including resistance to environmental stresses such as abrasion, and desired gloss, clarity, and haze characteristics. Furthermore, as discussed above, although Buelow discloses that the multilayer structure described in the reference most preferably has seven layers, and indicates that thinner structures contribute to cost efficiencies, Buelow nonetheless explicitly teaches that the structure can include more than seven layers. And although the portion of Wolf cited by Appellants for a teaching of the disadvantages of including too many layers discloses that an internal layer of polyamide or polyester "increases the cost of the film," Wolf explicitly teaches that the multiple layer film described in the reference can include 3 to 20 layers. Col. 6, 11. 61---62; col. 10, 11. 15-16. One of ordinary skill in the art would have recognized that adding an outer PET abuse layer and an adjacent tie layer as disclosed in Wolf to Buelow's multilayer structure would have both advantages and disadvantages. However, any disadvantages would not negate Wolfs explicit disclosure that an outer PET abuse layer imparts numerous advantages, thus providing a reason to add such a layer and an adjacent tie layer to Buelow's structure despite potential reduced cost efficiencies. Allied Erecting & Dismantling Co., Inc. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) ("Although modification of the movable 6 Appeal2017-007479 Application 14/057 ,489 blades may impede the quick change functionality disclosed by Caterpillar, '[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine"' (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)); Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another"). Appellants argue that Wolf teaches away from incorporating polyamide layers into a PET-containing food packaging film as described in the reference, teaching that preferred embodiments of the film are substantially free of polyamide. App. Br. 9, 14. Appellants contend that introducing a PET layer into Buelow's multilayer structure would therefore change the principle of operation/objective of Wolfs invention. App. Br. 14. However, we note initially that modifying Buelow's multilayer structure as proposed by the Examiner to include an outer PET layer and adjacent tie layer as disclosed in Wolf would not change the principle of operation/objective of Wolf's invention as Appellants assert, because Wolfs film is not being modified in the proposed combination. Wolf discloses that if the outer abuse layer of the multiple layer film described in the reference includes polyester, then the weight of polyamide in each of the inner layers of the film is less than the weight of polyester in the outer abuse layer, and preferably the total weight of polyamide in the inner layers is less than the weight of polyester in the outer abuse layer. Col. 7 Appeal2017-007479 Application 14/057 ,489 6, 1. 64---col. 7, 1. 8. Wolf discloses that more preferably the inner layers are substantially free of polyamide, and even more preferably, the multiple layer film is substantially free of polyamide. Col. 7, 11. 8-11. Although Wolf thus expresses a preference for excluding polyamide from a multiple layer film as described in the reference having an outer polyester (PET) layer, Wolf nonetheless explicitly teaches that polyamide may be included in inner layers of the film, as long as the weight of polyamide in each of the inner layers is less than the weight of polyester (PET) in the outer abuse layer. Contrary to Appellants' arguments, such disclosures do not teach away from including an outer PET layer in a polyamide-containing food packaging film as disclosed in Buelow. In re Zhang, 654 Fed. Appx. 488, 490 (Fed. Cir. 2016) ("While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention"); Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1376 (Fed. Cir. 2013) (Disclosures in a reference that might be read to teach away from combining two references did not overcome "the express teachings" of the reference suggesting combinability); In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (In assessing whether prior art teaches away, that "better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes"). Appellants argue that one of ordinary skill in the art would not have added additional layers to Buelow's multilayer structure because doing so would destroy the advantages disclosed in Buelow of using less materials, 8 Appeal2017-007479 Application 14/057 ,489 and would thus change the principle of operation of Buelow's multilayer structure. App. Br. 13-14. However, as discussed above, although Buelow discloses that thinner structures contribute to cost efficiencies, one of ordinary skill in the art would nonetheless have recognized that adding an outer PET abuse layer and an adjacent tie layer to Buelow's multiple layer structure as disclosed in Wolf would provide numerous advantages, including resistance to environmental stresses such as abrasion, and desired gloss, clarity, and haze characteristics. These advantages would have led one of ordinary skill in the art to add such layers to Buelow's multilayer structure despite potential reduced cost efficiencies. Contrary to Appellants' arguments, the additional layers of PET in combination with Buelow's polyamide layers would not change the principle of operation of Buelow's multilayer structure because the modified structure would still operate (or function) as packaging for food products. Appellants argue that Buelow does not describe or teach an internal ionomer layer between a central three-layer EVOH oxygen barrier layer portion and an outer PET layer. App. Br. 9. Appellants further assert that "Wolf does not describe or teach use of an internal ionomer layer in the construction described therein." App. Br. 10. However, Appellants' arguments are improperly based on Buelow and Wolf individually, and do not take into consideration what the combined disclosures of these references would have suggested to one of ordinary skill in the art at the time of Appellants' invention. As discussed above, Wolf's disclosure of the advantages of an outer PET abuse layer in a multilayer film for packaging food products would have led one of ordinary skill in the art 9 Appeal2017-007479 Application 14/057 ,489 to include such a layer, and an adjacent tie layer as also disclosed in Wolf, in Buelow's multilayer structure used to package food products to realize the advantageous properties imparted by the abuse layer. The resulting modified structure would include an internal ionomer layer between a central three-layer EVOH oxygen barrier layer portion and an outer PET layer, as recited in claim 1. Appellants argue that the art of preparing "multi-layer films of the nature of the articles described in the present claims" is complex and unpredictable, and is not a simple matter of adding or exchanging materials at will. App. Br. 10. Appellants contend that due to this complexity, and the unpredictable effect of combinations of various potential layers on multilayer films, one of ordinary skill in the art would not have expected at the time of their invention that any added or exchanged material would automatically work to yield predictable results. App. Br. 12-13. Appellants assert that one of ordinary skill in the art would therefore not have had a reasonable expectation of success for a final product when simply attempting combinations of various layers. Id. In support of these arguments, Appellants rely on the Declarations ofUwe Kohl and Josef Schief, which were submitted to the Patent and Trademark Office on April 18, 2016. The Kohl Declaration indicates that mismatching of materials used to form various layers of biaxially-oriented multilayer films can result in product failure by any of several modes of failure. i-fi-f l 0, 13. The Kohl Declaration further states that the "skilled person in this art is aware of this situation, and therefore would not expect that one could simply add another 10 Appeal2017-007479 Application 14/057 ,489 layer with a reasonable expectation of success before attempting a new combination of materials in a multi-layer construction." i-f 13. The Schief Declaration states that "knowledgeable potential customers" have numerous misconceptions about the properties of oriented films that lead them to expect that certain film materials are not suitable for biaxially-oriented multilayer films for food applications. i-fi-1 11-13. The Schief Declaration further states that the potential customers find the films surprising in view of their understanding before being provided with information to educate them about their misconceptions. i-f 13. However, although the Kohl Declaration states that mismatching of materials used to form various layers of biaxially-oriented multilayer films can result in product failure, the Kohl Declaration provides no indication that mismatching would occur between an outer PET layer and adjacent tie layer as disclosed in Wolf and the layers of Buelow's multilayer structure. And although the Kohl Declaration also states generally that one of ordinary skill in the art would not have expected that one could simply add another layer to a multilayer film with a reasonable expectation of success, the Declaration does not provide any objective evidence corroborating this conclusory opinion. Nor does the Declaration specifically address whether one of ordinary skill in the art would have reasonably expected that an outer PET layer and adjacent tie layer as disclosed in Wolf could be successfully added to Buelow's multilayer structure. It follows that we give the conclusory opinion provided in the Kohl Declaration little weight. 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts or data "is entitled to little or no weight"); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("[W]hat the 11 Appeal2017-007479 Application 14/057 ,489 Board consistently did was accord little weight to broad conclusory statements that it determined were unsupported by corroborating references. It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate"); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations"). We also accord the Schief Declaration little to no weight because it is not based on the asserted views of a person of ordinary skill in the art, and instead discusses "knowledgeable potential customers." As discussed above, Buelow discloses a seven-layer structure including an ionomer layer that provides strength, two polyamide layers that also impart strength, an oxygen barrier layer, a heat-sealant layer, and two tie layers that adhere adjacent layers. i-fi-1 41, 46. As also discussed above, Buelow explicitly discloses that the multilayer structure can include more than seven layers. i1 61. Wolf discloses a similar multilayer film that can contain 3 to 20 layers, including an outer PET abuse layer, a heat seal layer, a core layer that enhances the film's strength, one or more barrier layers that exclude gases or vapors, and one or more tie layers that improve the adherence of adjacent layers. Col. 3, 11. 53-55; col. 5, 11. 25-29; col. 8, 11. 11-14, 54--57; col. 9, 11. 36-38; col. 10, 11. 15-16. Given the similarity between the layers of Buelow's multilayer structure and corresponding layers in Wolfs multilayer film, one of ordinary skill in the art reasonably would have expected that an outer PET layer and an adjacent tie layer as disclosed in Wolf could be successfully added to Buelow's multilayer structure to provide resistance to environmental stresses 12 Appeal2017-007479 Application 14/057 ,489 such as abrasion, and impart desired gloss, clarity, and haze characteristics to the multilayer structure, as disclosed in Wolf. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) ("'[o]bviousness does not require absolute predictability of success ... all that is required is a reasonable expectation of success"') (emphasis omitted, citing In re 0 'Farrell, 853 F .2d 894, 903-04 (Fed. Cir. 1988)). Appellants and the Declarant do not identify any teaching in Buelow or Wolf, or any other persuasive evidence or reasoning, demonstrating otherwise. Appellants argue that the experimental results set forth in two Technical Report References submitted to the Patent and Trademark Office on April 18, 2016, demonstrate that the claimed multilayer food casing can be produced, and is a stable film suitable for packaging foods that provides excellent performance properties, which was "surprisingly achieved despite the challenges expected in this field." App. Br. 14--15. The burden of analyzing and explaining evidence to support an assertion of non-obviousness rests with Appellants. In re Klosak, 455 F .2d 1077, 1080 (CCPA 1972). Appellants' arguments do not persuasively explain how the limited data provided in the Technical Report References, which were generated from only two films, are sufficient to show that the full scope of the multilayer food casings or food films covered by claim 1 would provide unexpected results relative to the multilayer structure of the closest prior art-Buelow. App. Br. 14--15; see In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) ("If an applicant demonstrates that an embodiment has an unexpected result and provides an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner, this will generally establish that the evidence is 13 Appeal2017-007479 Application 14/057 ,489 commensurate with scope of the claims."); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims"). Appellants do not direct us to any other persuasive evidence or averment evincing that the results would have been unexpected by one of ordinary skill in the art at the time of the invention. See App. Br. 14--15. Appellants' arguments to that effect cannot take the place of objective evidence. App. Br. 14--15; In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Greenfield, 571F.2d1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). It follows that Appellants do not meet their burden of demonstrating that the multilayer food casing or food film of claim 1 provides unexpected results. Considering the totality of the evidence relied upon in this appeal, 3 a preponderance of the evidence weighs in favor of the Examiner's conclusion of obviousness. We accordingly sustain the Examiner's rejection of claims 1, 2, 7, 11, 20, 22, and 23 under 35 U.S.C. § 103(a). Rejection II Although Appellants set forth separate arguments for claims 3 and 4, which Appellants argue together, Appellants' arguments are not substantively distinct from the arguments that Appellants provide for 3 We do not consider the arguments that Appellants present for the first time at pages 2 and 4 of their Reply Brief because Appellants do not show good cause for raising these arguments in their Reply Brief. 37 C.F.R. § 41.37( c )(1 )(iv); 37 C.F.R. § 41.41 (b )(2) (arguments raised for the first time in the Reply Brief that could have been raised in the Appeal Brief will not be considered by the Board unless good cause is shown). 14 Appeal2017-007479 Application 14/057 ,489 Rejection I (claim 1 ). App. Br. 17. Because we are unpersuaded of reversible error in the Examiner's rejection of claim 1 for the reasons discussed above, Appellants' position as to claims 3 and 4 is also without merit. We accordingly sustain the Examiner's rejection of claims 3 and 4 under 35 U.S.C. § 103(a). Rejections III and IV To address these rejections, Appellants rely on the arguments made for Rejection I (discussed above), and argue that Bekele fails to cure the deficiencies of Buelow and Wolf. App. Br. 17-18. Because we are unpersuaded of reversible error in the Examiner's rejection of claim 1 for the reasons discussed above, Appellants' position as to these rejections is also without merit. We accordingly sustain the Examiner's rejection of claims 10 and 21under35 U.S.C. § 103(a). DECISION We affirm the Examiner's rejections of claims 1--4, 7, 10, 11, and 20-23 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). AFFIRMED 15 Copy with citationCopy as parenthetical citation