Ex Parte Vadhar et al

Board of Patent Appeals and Interferences

Jun 30, 2010

10051584 (B.P.A.I. Jun. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PARIMAL VADHAR, SEAN BRADY, MICHAEL ROSINSKI,
JEFF WOMACK, and JOSEPH OWENSBY
____________

Appeal 2009-010189
Application 10/051,584
Technology Center 1700
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Before EDWARD C. KIMLIN, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 23 and 25-29, which are the only claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

I. BACKGROUND
Appeal 2009-010189
Application 10/051,584

The invention relates to a microwaveable vacuum skin package which
may be used in food packaging. Independent claim 23 is illustrative
(emphasis added):
23. A microwaveable vacuum skin package comprising:
a) a support member having an upper surface and a lower
surface;
b) a bottom web having an upper surface and a lower
surface, the lower surface of the bottom web being
adhered to the upper surface of the support member;
c) a food product disposed on the upper surface of the
bottom web; and
d) a top web disposed on the food product;

wherein the top web of the vacuum skin package is draped over the
food product, by a vacuum skin packaging process, such that the
top web substantially conforms to the shape of the food product
and a vacuum skin package is thereby produced;

wherein the top web of the vacuum skin package is sealed at its
lower surface to the upper surface of the bottom web to form a seal
at a location outside the periphery of the food product;

wherein the top of the vacuum skin package comprises a sealant
layer comprising an ethylene/alpha olefin copolymer; and

wherein the bottom web of the vacuum skin package comprises a
sealant layer consisting essentially of a blend of
i) between 60% and 90%, by weight of the sealant layer,
of ethylene/vinyl acetate copolymer, and
ii) between 10% and 40%, by weight of the sealant layer,
of propylene homopolymer or propylene/ethylene
copolymer.

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Appeal 2009-010189
Application 10/051,584

Claims 23 and 25-28 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Pockat (US 5,023,121) as evidenced by Genske (US
5,407,751).
Claim 29 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pockat, as evidenced by Genske, further in view of Shibata (US
4,429,079).
With respect to the first rejection, Appellants’ arguments focus on
independent claims 23 (Br. 10-12). Accordingly, we address Appellant's
arguments regarding the rejection with respect to claim 23 only. See 37
C.F.R. § 41.37(c)(1)(vii).
With respect to the second rejection, Appellants provide no new
argument for this rejection and instead refer to the arguments made
regarding claim 23 in the § 102 rejection (Br. 12). Therefore, the § 103
rejection of claim 29 stands or falls with our decision regarding the rejection
of independent claim 23.
ISSUE ON APPEAL
Has the Examiner erred in determining that claim 23 is anticipated by
Pockat; specifically, does Appellants’ use of “consisting essentially of” in
claim 23 excludes the polybutene component that is included in Pockat’s
sealant layer 26?
For the reasons that follow, we answer this question in the negative.
OPINION
Findings of Fact
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own. We add the following factual finding for emphasis:
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Appeal 2009-010189
Application 10/051,584

Appellants’ Specification does not contain an explicit definition of
what is included or excluded by the term “consisting essentially of” with
respect to the bottom web sealant layer. The two components listed in
Appellants’ claim 23 for the sealant layer of the bottom web may total as
little as 70 % by weight of the sealant layer, thus leaving a substantial
portion (i.e., 30 wt. %) of the sealant layer components potentially
unspecified.
Principles of Law
It is well settled that the transition term “consisting essentially of,”
when used with compositions, means that other ingredients in any amounts
may be included in the scope of the composition as long as these ingredients
do not materially affect the basic and novel characteristics of the
composition. See PPG Indus., Inc. v. Guardian Indus. Corp., 156 F.3d
1351, 1354 (Fed. Cir. 1998). Appellants have the burden of establishing
what is excluded by “consisting essentially of,” especially when the
specification clearly indicates that other components may be present as well.
See In re Herz, 537 F.2d 549, 551-52 (CCPA 1976).
It is well established that argument by counsel cannot take the place of
evidence. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997).
Analysis
Appellants do not dispute that Pockat describes all the elements listed
in claim 23 (Br. generally). Rather, Appellants’ sole contention is that the
use of “consisting essentially of” in claim 23 excludes the polybutene
component that is included in Pockat’s bottom sealant layer 26 (Br. 10).
With regard to the transition term “consisting essentially of” required
for the bottom web sealant layer of claim 23 on appeal, we determine that
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Appeal 2009-010189
Application 10/051,584

Appellants have not shown that this term excludes the polybutene
component disclosed by Pockat. To the contrary, 30% of this sealant layer
may be components that are not specified in Appellants’ claim. Appellants
admit that the amount of polybutene in Pockat’s sealant layer 26 may be as
little as about 6% (Br. 12). Therefore, Appellants’ argument is not well
taken. See In re Herz, 537 F.2d at 551-52.
As aptly noted by the Examiner, Appellants do not present any
evidence that the use of polybutene will have a material impact on the basic
and novel characteristics of the sealant layer (Ans. 5). Appellants have not
shown that the scope of the polybutene component taught in the sealant layer
26 of Pockat, either in amount or type, would have a material impact on the
basic and novel characteristics of their invention. See PPG, 156 F.3d at
1354. Appellants’ mere conclusion that “any significant amount of
polybutene in the sealant layer can be reasonably expected to materially
affect the basic and novel characteristics [of] applicant’s invention” (Br. 12)
is insufficient. Appellants have provided no persuasive data, scientific
evidence or reasoning as to why the prior art polybutene component would
have a material impact on the basic and novel characteristics of their
invention.
We again emphasize that it is Appellant's burden to establish that an
ingredient included in a prior art composition is excluded from the claims by
“consisting essentially of” language. See In re Herz, 537 F.2d at 551-52.
Appellants have not presented the requisite evidence to satisfy this burden
for the foregoing reasons and those stated in the Answer.
Therefore, we affirm the Examiner’s § 102 rejection of claims 23, and
25-28, as well as the § 103 rejection of claim 29.
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Appeal 2009-010189
Application 10/051,584

ORDER
The decision of the Examiner 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).

AFFIRMED

tc

Mark B. Quatt
Cryovac, Inc.
P.O. Box 464
Duncan, SC 29334
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