Ex Parte Wong et al

Board of Patent Appeals and Interferences

Feb 29, 2008

10899568 (B.P.A.I. Feb. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHIU PING WONG, THOMAS P. HANSCHEN,
ANTHONY B. FERGUSON, WILLIAM W. MERRILL,
FRED J. ROSKA, and JEFFERY N. JACKSON
__________

Appeal 2008-1549
Application 10/899,568
Technology Center 1700
____________

Decided: February 29, 2008
____________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-21. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
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Application 10/899,568

We AFFIRM.

INTRODUCTION
Appellants disclose simultaneously biaxially stretched films having
uniform properties and thicknesses (Spec. 1:10-13; 21:21-22).
Claim 1 is illustrative:
1. A simultaneously biaxially stretched polypropylene film
having:
a. a first stretch direction and a second stretch direction;
b. a tensile elongation to break in the first stretch direction
of at least 110%;
c. a tensile volumetric energy to break in the first stretch
direction of at least 18,000 in-lb/in3; and
d. a variability in film thickness along the first stretch
direction, as measured by the standard deviation relative to the
average, of less than 10%.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Schaffhausen 3,144,430 Aug. 11, 1964
Blum 4,070,523 Jan. 24, 1978

The rejections as presented by the Examiner are as follows:
1. Claims 1-20 are rejected under 35 U.S.C. § 102(b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as being obvious over
Schaffhausen.
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2. Claim 21 is rejected under 35 U.S.C. § 103(a) as being obvious over
Schaffhausen in view of Blum.

OPINION
35 U.S.C. § 102(b) REJECTION OVER SCHAFFHAUSEN
CLAIM 1
Appellants argue that Schaffhausen fails to anticipate the claimed
tensile elongation to break and the tensile volumetric energy to break (Br. 3).
Specifically, Appellants argue that Schaffhausen’s Example I discloses a
maximum tensile elongation to break of 82%, whereas Example III discloses
a tensile elongation to break of 70%, both of which are substantially below
the claimed “at least 110%” tensile elongation to break (Br. 3). Appellants
further argue that Schaffhausen’s Example II has an ideal tensile volumetric
energy to break of 17,640 in-lb/in3, which is below the claimed “at least
18,000 in-lb/in3” (Br. 3).1
We cannot sustain the Examiner’s § 102(b) rejection over
Schaffhausen.
“[R]ejections under 35 U.S.C. § 102 are proper only when the claimed
subject matter is identically disclosed or described ‘in the prior art.’” In re
Arkley, 455 F.2d 586, 587 (CCPA 1972).
The Examiner has not shown that the subject matter is identically
disclosed or described in Schaffhausen. Rather, as Appellants argue,
Examples I, II, and III, the only examples provided by Schaffhausen,
demonstrate either the claimed tensile elongation to break value (i.e.,

1 Appellants calculated the tensile volumetric energy to break value on page
3 of Brief. The Examiner has not disputed the Appellants’ calculation.
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Application 10/899,568

Example II at 140%), or the claimed tensile volumetric energy to break
(Example I at 24,500 psi at 82% elongation), but not both of the claimed
properties within a single example. Shaffhausen’s Example III has neither
the claimed tensile elongation to break nor the tensile volumetric energy to
break.
From the foregoing, Schaffhausen fails to identically disclose the
claimed simultaneously biaxially stretched polypropylene film so as to
anticipate the claimed invention. We cannot sustain the Examiner’s §
102(b) rejection of claims 1-20 over Schaffhausen.

35 U.S.C. § 103 REJECTION OVER SCHAFFHAUSEN
As with the § 102 rejection, Appellants argue that Schaffhausen does
not disclose the claimed tensile elongation to break or the tensile volumetric
energy to break values (Br. 4-5). Appellants additionally argue that there is
no indication (i.e., suggestion or motivation) of how Schaffhausen’s process
can be used to either increase the tensile elongation to break value or the
tensile volumetric energy to break value to those values claimed by
Appellants (Br. 4).
We have considered all of Appellants’ arguments and are unpersuaded
for the reasons below.
Schaffhausen discloses that it is well known in the art to orient
isotactic polypropylene to increase its tensile strength and improve other
physical properties (Schaffhausen, col. 1, ll. 28-30). Schaffhausen discloses
simultaneously biaxially stretching a polypropylene film (Schaffhausen, col.
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3, ll. 15-24). Schaffhausen’s Example I uses a stretch ratio of 4.5:12 and
produces a product having high tensile strengths (i.e., 18,000 or 24,500 psi)
but lower tensile elongation to break values (i.e., 60% or 82%), thus yielding
a maximum tensile volumetric energy to break value of 20,090 in-lb/in3
(Schaffhausen Example I).3 Schaffhausen’s Example II uses a stretch ratio
of 4.45:1 with the result of a moderate tensile strength and higher elongation
to break yielding a volumetric energy to break value of 17,640 in-lb/in3
(Schaffhausen, Example II). Schaffhausen indicates that reducing the degree
of orientation (i.e., controlling the amount of stretching) affects the tensile
strength (Schaffhausen, col. 3, ll. 50-54).
Where the general conditions of a claim are disclosed in the prior art,
it is not inventive to discover the optimum or workable ranges by routine
experimentation. In re Aller, 220 F.2d 454, 456 (CCPA 1955). Only result
effective variables may be optimized. In re Antonie, 559 F.2d 618, 620
(CCPA 1977).

2 As explained in Appellants’ Specification, the stretch ratio is the ratio of a
linear dimension of a given portion of the stretched film to the linear
dimension of the same portion prior to stretching (Spec. 7-8). Accordingly,
Schaffhausen’s disclosure that a 2 inch by 2 inch film is stretched to a 9 inch
by 9 inch film yields a stretch ratio of 9:2, which simplifies to 4.5:1.
3 Appellants indicate that tensile volumetric strength is related to tensile
strength as the area under the plot of tensile strength versus elongation (Br.
3). According to Appellants, the tensile volumetric energy for an ideal case
is calculated by multiplying the fractional elongation by the tensile strength.
For example, Appellants calculate that Schaffhausen’s film in Example II
has a tensile volumetric energy to break of 17,640 in-lb/in3 or the tensile
strength (i.e., 12,600 psi) multiplied by the fractional elongation (i.e., 1.4).
Similarly, Schaffhausen’s Example I has a maximum volumetric energy to
break of 20,090 in-lb/in3 (24,500 psi multiplied by .82).
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In the present case, Schaffhausen’s disclosures noted above clearly
indicate that molecular orientation (i.e., biaxial stretching) is a result-
effective variable (Schaffhausen, col. 1, ll. 30-35). Schaffhausen
demonstrates that the stretch ratio (i.e., the amount of biaxial stretching)
affects the tensile strength and the tensile elongation to break value of the
material (Schaffhausen, Examples I and II and See, Footnote 3).
Therefore, contrary to Appellants’ argument that Schaffhausen fails to
disclose the claimed tensile elongation to break or tensile volumetric energy
to break, we agree with the Examiner (Ans. 3 and 5) that it would have been
obvious to optimize the degree of biaxial stretching to achieve “workable
ranges” of the tensile elongation to break and tensile volumetric energy to
break values as claimed by Appellants in view of Schaffhausen’s recognition
that the amount of biaxial stretching is result-effective variable. Antonie,
559 F.2d at 620.
Moreover, Appellants’ argument that Schaffhausen does not indicate
how to change the process to increase the tensile elongation to break or the
tensile volumetric energy is without persuasive merit. Schaffhausen’s
recognition of the amount of biaxial stretching as a result-effective variable
clearly indicates how to change the process to affect the tensile elongation
properties of the material: either increase or decrease the amount of biaxial
stretching. Furthermore, as admitted by Appellants, the tensile volumetric
energy to break is a related to the tensile elongation to break and tensile
strength of the film. See, supra, p. 5, fn.3. Accordingly, affecting the tensile
elongation to break and tensile strength of the film by manipulating the
amount of biaxial stretching (i.e., a result-effective variable) would
inherently affect the tensile volumetric energy to break, such that one of
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ordinary skill in the art would have optimized both of the properties when
optimizing the amount of biaxial stretching accordingly. Antonie, 559 F.2d
at 620.
For the above reasons, we sustain the Examiner’s § 103 rejection of
claims 1-20 over Schaffhausen.

CLAIM 21
Appellants do not separately argue the § 103 rejection of dependent
claim 21 over Schaffhausen in view of Blum. Rather, Appellants indicate
that dependent claim 21 is patentable for the same reasons that claim 1 was
argued to be patentable. However, we are unpersuaded by Appellants’
arguments regarding claim 1. Accordingly, we sustain the Examiner’s § 103
rejection of claim 21 over Schaffhausen in view of Blum.
DECISION
We do not sustain the Examiner’s § 102(b) rejection of claims 1-20
Schaffhausen.
We sustain the Examiner’s § 103 rejection of claims 1-20 over
Schaffhausen.
We sustain the Examiner’s § 103 rejection of claim 21 over
Schaffhausen in view of Blum.
The Examiner’s decision 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)(iv).

AFFIRMED

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Appeal 2008-1549
Application 10/899,568

3M INNOVATIVE PROPERTIES COMPANY
P.O. BOX 33427
ST. PAUL, MN 55133-3427
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