Ex Parte Speer et al

Patent Trial and Appeal Board

Jan 26, 2017

13776805 (P.T.A.B. Jan. 26, 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.
13/776,805 02/26/2013 Drew V Speer D-43779-04 1345
28236 7590
LAW DEPARTMENT
SEALED AIR CORPORATION
2415 Cascade Pointe Boulevard
Charlotte, NC 28208
EXAMINER
WOOD, ELLEN SUZANNE
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
01/30/2017 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):
brandie. sullivan @ sealedair. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DREW V. SPEER, CYNTHIA L. EBNER, and
MICHAEL D. GRAH
Appeal 2015-006870
Application 13/776,805
Technology Center 1700
Before TERRY J. OWENS, N. WHITNEY WILSON, and MICHAEL G.
McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 31, 33, 35, 37, and 39-42 of
Application 13/776,805 under 35 U.S.C. § 103(a) as obvious. Final Act.
(August 1, 2014). Appellants1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 Cryovac, Inc. is identified as the real party in interest. Appeal Br. 2.
Appeal 2015-006870
Application 13/776,805
BACKGROUND
The present application, titled “Method of Removing Sulfur Odors
from Packages,” generally relates to a bag made of a multilayer film which
may be useful in food packaging. The subject application teaches that the
multilayer film may include a layer comprising an oxygen barrier and a layer
comprising a sulfur scavenger. Spec. 7—9.
Claims 31 and 39 are representative of the pending claims and are
reproduced below:
31. A heat shrinkable bag comprising a coextruded
multilayer film comprising:
a) a layer comprising an oxygen barrier; and
b) a layer comprising a sulfur scavenger;
wherein the bag has a free shrink of at least 8% in either or both
of the longitudinal and transverse directions;
wherein the oxygen barrier comprises a material having an
oxygen permeability of less than 500 cm3 O2 / m2 • day •
atmosphere, tested at 1 mil thick and at 25 °C according to
ASTM D3985; and
wherein the sulfur scavenger comprises a material selected from
the group consisting of
i) copper metal, copper foil, or copper powder, where
the copper is in the zero valence state;
ii) hydrotalcite, or alumina treated with copper in the
ionic or zero valence state;
iii) zinc acetate, zinc oxide, zinc stearate, or zinc
ionomer;
iv) iron oxide;
v) copper (II) oxide;
vi) magnesium oxide;
vii) calcium oxide;
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Application 13/776,805
viii) alumina; and
ix) ceria.
39. A heat shrinkable bag comprising a coextruded
multilayer film comprising:
a) a layer comprising an oxygen barrier; and
b) a layer comprising a sulfur scavenger;
wherein the bag has a free shrink of at least 8% in either or both
of the longitudinal and transverse directions;
wherein the oxygen barrier comprises a material having an
oxygen permeability of less than 500 cm3 O2 / m2 • day •
atmosphere, tested at 1 mil thick and at 25 °C according to
ASTM D3985; and
wherein the sulfur scavenger comprises a blend of:
i) magnesium oxide,
ii) zinc oxide, and
iii) zeolite.
Appeal Br. 6—7 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejection:
Claims 31, 33, 35, 37, and 39-42 are rejected under 35 U.S.C.
§ 103(a) as obvious over Blinka (US 6,458,438 B2, iss. Oct. 1, 2002)
(hereinafter “Blinka”) in view of Tepper (US 2003/0078552 Al, pub. Apr.
24, 2003) (hereinafter “Tepper”). Final Act. 2.
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Application 13/776,805
DISCUSSION
Appellants allege three grounds of error in the present rejection. First,
they assert that the combination of Blinka and Tepper does not teach the
“coextruded multilayer film” limitation. Appeal Br. 3^4. Second, they
contend that there is no reason for a person of ordinary skill in the art to
combine the metal oxides of Tepper with the packages of Blinka. Id. at 4—5.
Third, in regard to claim 39 and the claims depending therefrom, they argue
that the Examiner provides no persuasive reason to choose the particular
claimed compounds of the many that Tepper teaches. Id. at 5.
Coextruded Multilayer Film
In regard to their first argument, that the cited references don’t teach
the claimed “coextruded multilayer film comprising ... a layer comprising a
sulfur scavenger,” Appellants assert that Tepper does not teach a coextruded
layer comprising a sulfur scavenger. Id. at 3^4. Rather, Appellants assert,
the combination proposed by the Examiner yields the film of Blinka to
which a sulfur scavenger is applied by some process other than coextrusion.
Id.
This argument requires construction of the term “coextruded
multilayer film comprising ... a layer comprising a sulfur scavenger.” The
Examiner determines that the term “coextruded” is a process limitation that
should not be considered in determining patentability. Answer 6—7. The
Examiner further determines that the claim term “comprising” is open-
ended, thus, the claim does not specify “the relationship in which the layer
and the sulfur scavenger are adhered.” Id. at 7. That is, even if the claim
requires that the “layer” be coextruded, it does not require that the sulfur
scavenger must be coextruded. In support of the latter determination, the
Examiner notes that one of the sulfur scavengers listed in the Markush group
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Application 13/776,805
is copper foil. Id. The Examiner finds that “copper foils would not be
extruded but would instead be laminated.” Id.
With regard to the Examiner’s determination regarding the copper
foil, Appellants “readily agree[ ] that copper foils are typically laminated to
other substrates.” Reply 2. Despite such agreement, Appellants argue that
the requirement that the film be coextruded is unambiguous; consequently,
"[i]f a copper foil is not coextrudable, by definition it does not fall within the
scope of the independent claims." Reply 2.
During examination, claim terms must be given their broadest
reasonable construction consistent with the Specification. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). The
claim’s inclusion of “copper foil” in the Markush group suggests that the
sulfur scavenging moiety need not be coextruded. Further, we note that
claim 37, which depends from claim 31, requires an oxygen barrier selected
from a group including “metal foil,” “metallized foil,” and “alumina coated
webs,” none of which are typically extruded. Accordingly, we construe
“coextruded multilayer film comprising ... a layer comprising a sulfur
scavenger,” not to require that the compound imparting sulfur scavenging
functionality be coextruded.
In view of such determination, and the undisputed finding that Blinka
teaches “a multilayer film with layers,” Blinka 6:54, Appellants have failed
to identity a reversible error in the Examiner’s finding that the cited
references teach a multilayer film as claimed.
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Application 13/776,805
Combination of the Package of Blinka with the
Metal Oxides of Tepper
For their second argument, Appellants contend that there is no reason
for a person of ordinary skill in the art to combine the metal oxides of
Tepper with the packages of Blinka. The Examiner finds that Blinka and
Tepper are both directed toward the use of odor-controlling compounds in
packaging materials. Final Act. 3. The Examiner finds a reason to combine
as follows:
Thus, it would have been obvious to one of ordinary
skill in the art at the time of the invention to utilize
a metal oxide, such as those described in Tepper, for
the silica compound of Blinka, because the metal
oxides of Tepper provide[ ] odor controlling
properties to the odor-controlling composition, thus
producing a container that has improved control of
malodors [ ].
Id.
Appellants assert that the Examiner proposes a substitution of the
metal oxides of Tepper for the silica of Blinka and argues there is no
justification for such a substitution. Appeal Br. 4—5. In the Answer, the
Examiner notes that Blinka teaches a combination of scavenging systems
incorporated into one or more layers of the film. Answer 8. Further, the
Examiner finds that Tepper teaches that aluminum and zinc oxides can be
used to control odors of, inter alia, compounds with a polar thiol (sulfur
containing) group. Id. at 7. The Examiner then concludes “it would have
been obvious to one of ordinary skill in the art at the time of the invention to
look to the art of odor-controlling compositions for additional scavenging
materials.” Id. at 8.
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Application 13/776,805
Appellants’ allegation of error focuses on the hypothetical substitution
of the metal oxides of Tepper for the silica of Blinka. Appeal Br. 4—5. This
is not the appropriate inquiry. Rather, “[i]n determining whether
obviousness is established by combining the teachings of the prior art, the
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art.” In re GPACInc., 57 F.3d 1573, 1581
(Fed. Cir. 1995) (internal quotations omitted). Here, the Examiner finds that
one of skill in the art would have known that the oxygen barrier of Blinka
could be combined with the sulfur-scavenging compounds of Tepper in
order to reduce odors. Appellants have failed to identify a reversible error in
such finding.
Claim 39
Appellants’ third argument concerns claim 39 and its dependents.
Claim 39 is similar to claim 31 but requires that the sulfur scavenger
comprise a blend of magnesium oxide, zinc oxide, and zeolite. Appeal Br. 7
(Claims App.). Appellants do not dispute that Blinka teaches a layer that
comprises a zeolite. Blinka 6:54—56 (indicating that layer 12 of Figure 2
“comprises a zeolite”); Final Act. 3. Nor do they dispute that Tepper
teaches magnesium oxide and zinc oxide. Appeal Br. 5; Tepper | 54 (also
disclosing use of “[s]ome zeolites”). These compounds are all known for
use in food packaging to control odors. Blinka 4:59-61; Tepper | 54.
Appellants assert that “[n]o objective guideposts are presented in the
Office Action to explain why the skilled artisan would selectively pick out
magnesium oxide and zinc oxide from this extensive list.” Appeal Br. 5.
This argument lacks foundation in law.
“That the [prior art reference] discloses a multitude of effective
combinations does not render any particular formulation less obvious. This
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is especially true because the claimed composition is used for the identical
purpose taught by the prior art.” Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989). Further, we note that Tepper teaches that “it
is preferable to use a combination of components in the odor-controlling
compositions.” Tepper 151. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). Here, there is no assertion that the claimed blend yields
surprising results.
Accordingly, we do not find error in the Examiner’s finding that it
would have been obvious to a person of ordinary skill in the art to use a
blend of the claimed compounds for their known use.
CONCLUSION
The rejection of claims 31, 33, 35, 37, and 39-42 as obvious over
Blinka in view of Tepper 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).
AFFIRMED
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