Ex Parte Wolf et al

Board of Patent Appeals and Interferences

Nov 17, 2006

09843990 (B.P.A.I. Nov. 17, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN T. WOLF,
RAM K. RAMESH AND
GEORGE D. WOFFORD
____________

Appeal 2006-2805
Application 09/843,990
Technology Center 3700
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Decided: November 17, 2006
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Before KIMLIN, TIMM, and GAUDETTE, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 21-23 and 25-33.
Claim 21 is illustrative:

Appeal 2006-2805
Application 09/843,990

21. A process for packaging a product, comprising the steps of:

(A) placing a first product into a flexible, heat-shrinkable bag, the bag
having an open top, whereby a first bagged product having excess bag length
results, and wherein the bag comprises a multilayer film comprising:

(1) a first layer, which is an inside bag layer, and which
comprises polyolefin;

(2) a second layer comprising at least one member selected
from the group consisting of polyolefin, polystyrene, and
polyurethane;

(3) a third layer comprising a polyamide having a melting point
of 160ºC and below; and

(4) a fourth layer, which is an outside bag layer, the fourth
layer comprising polyester; and

wherein the bag is produced by sealing the first layer to itself,
whereby the first layer is an inside bag layer and the fourth layer is an
outside bag layer;

(B) repeating the placing step with a second product and a second
bag, whereby a second bagged product results;

(C) stacking at least the first and second bagged products so that the
excess bag length of each of the bagged products are on top of one another
within a sealing distance of a means for heat-sealing;

(D) heat-sealing the inside layer of first bag to itself in the region
between the open end of the first bag and the product, and the inside layer of
the second bag to itself in the region between the open end of the second bag
and the product, so that the first product is completely sealed within the first
bag and the second product is completely sealed with the second bag, the
sealing being carried out at a temperature so that the resulting packaged
products can be freely separated from one another without layer
delamination.
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Appeal 2006-2805
Application 09/843,990

In addition to the admitted prior art represented by Nishimoto (US
5,446,549), the Examiner relies upon the following references as evidence of
obviousness:
Gill US 3,919,033 Nov. 11, 1975
Oberle US 4,469,742 Sep. 4, 1984
Appellants' claimed invention is directed to a process for packaging a
product in a flexible, heat-shrinkable bag. The bag comprises a multi-layer
film comprising a first layer of polyolefin, which is an inside bag layer, a
second polymeric layer, a third layer comprising a polyamide having a
melting point of 160ºC and below, and a fourth outside bag layer comprising
a polyester. According to Appellants' Specification, they "have discovered
that we can produce a film having an outer polyester layer and an inner layer
of polyamide having a melting point within the temperature range of 160ºC
and below, while obtaining a film of relatively uniform thickness, relatively
uniform dimensions, and with a relatively uniform load on the extruder"
(page 2 of Specification, last paragraph). The Specification contrasts the
inner polyamide layer of the present invention with the inner polyamide
layer of the admitted prior art disclosed in Nishimoto. The Specification
relates that the film of the present invention has a lower melting polyamide
than the polyamide of Nishimoto, exhibits improved heat-shrinkability over
the film of the Nishimoto patent "in that it can be oriented at a lower
temperature, thereby providing our film with the ability to shrink at a lower
temperature [which] is most advantageous in the packaging of heat-sensitive
products, such as food products, especially fresh meat products, which an be
scorched or otherwise discolored by exposure to heat utilized to shrink the
film tightly against the meat" (page 3 of Specification, first paragraph).
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Appeal 2006-2805
Application 09/843,990

Appealed claims 21-23, 25-27, and 29-33 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the admitted prior art
(Nishimoto) in view of Gill. Claim 28 stands rejected under 35 U.S.C. § 103
as being unpatentable over the stated combination of references further in
view of Oberle.
We have carefully reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we find ourselves in agreement
with Appellants that the Examiner has failed to establish a prima facie case
of obviousness for the claimed subject matter. Accordingly, we will not
sustain the Examiner's rejections.
There is no dispute that Nishimoto discloses the claimed process for
packaging a product with the exception of not disclosing the claimed third
layer of a polyamide having a melting point of 160ºC and below. As
stressed by Appellants, Nishimoto teaches an "intermediate layer of a
polyamide having a melting point of higher than 160ºC. and lower than
210ºC." (col. 2, ll. 29-31), and the reference further explains that "[i]n order
to facilitate the stretching of a laminate of the polyamide and the polyester,
an aliphatic polyamide having a melting point of more than 160ºC. and
lower than 210ºC. is preferably used" (sentenced bridging columns 2 and 3).
In addition, Appellants point to comparative examples in Nishimoto to
demonstrate that polyamides having a melting point outside the disclosed
range of 160ºC-210ºC produce unfavorable results. Significantly, Nishimoto
provides no teaching that one may utilize a polyamide having a melting
point outside the disclosed range and achieve acceptable results.

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Appeal 2006-2805
Application 09/843,990

To remedy the deficiency of the admitted prior art, the Examiner
relies upon Gill for teaching a polyamide having a melting point within the
claimed range "for the purpose of producing a strong bond" (see Office
Action mailed May 6, 2004, page 3). According to the Examiner, it would
have been obvious for one of ordinary skill in the art to practice the process
of the admitted prior art by using the known polyamide disclosed by Gill in
order to create a strong bond.
We agree with Appellants that the problem of modifying the admitted
prior art in accordance with Gill is at least two-fold. First, the admitted prior
art provides a strong teaching away from utilizing an inner polyamide layer
having a melting point of 160ºC and below. Secondly, Gill is not directed to
a process for packaging a product with a flexible, heat-shrinkable bag but,
rather, is directed to bonding fabrics using a fusible adhesive comprising a
polyamide. Consequently, we do not find that one of ordinary skill in the art
would have been motivated to proceed against the expressed teachings of the
admitted prior art in selecting a polyamide for the inner layer that is taught
by Gill for use in a different process. While the Examiner restates
Appellants' argument at page 5 of the Answer, the Examiner offers no more
in rebuttal than "the motivation comes from the references themselves and it
is not repugnant for the teachings to come from a reference which may
appear to be non-analogous" (second paragraph). This falls far short of the
requisite analyses pertaining to why one of ordinary skill in the art would
have ignored the specific teachings of the admitted prior art in selecting the
polyamide of the inner layer. Although the Examiner goes on to explain that
the use of a lower melting polymer is always desirable in order to save
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Appeal 2006-2805
Application 09/843,990

money on production, the Examiner's basic premise that the admitted prior
art and Gill are "concerned with the same technology" it fundamentally
flawed (page 6 of Answer, first paragraph). Simply put, we do not agree that
the heat-sealing packaging of the admitted prior art involves the same
technology as the bonding of fabrics disclosed by Gill.
The Examiner's further citation of Oberle for the features of claim 28
does not resolve the deficiency in the combination of the admitted prior art
and Gill discussed above.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner's rejections.
REVERSED

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