Ex parte Zobel

Board of Patent Appeals and Interferences

Sep 18, 2000

08257431 (B.P.A.I. Sep. 18, 2000)

On July 31, 2000, the appellant waived the oral hearing1
(see Paper No. 34) scheduled for September 13, 2000.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL G. R. ZOBEL
____________
Appeal No. 1996-4035
Application No. 08/257,431
____________
ON BRIEF1
____________
Before STAAB, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-10 and 13-25, which are all of the
claims pending in this application.
We AFFIRM-IN-PART.
Appeal No. 1996-4035 Page 2
Application No. 08/257,431
Appeal No. 1996-4035 Page 3
Application No. 08/257,431
On November 10, 1998, Application No. 08/041,190 issued2
as U.S. Patent No. 5,832,699.
U.S. Patent No. 3,471,597 issued October 7, 1969.3
U.S. Patent No. 4,876,146 issued October 24, 1989.4
European Patent Application 0 155 035 published5
September 18, 1985. The examiner and the appellant have
referred to this reference by the applicant's name rather than
the inventor's name. We will do likewise.
BACKGROUND
The appellant's invention relates to a polymeric film for
the storage or packaging of plant material. A copy of the
claims under appeal is set forth in the appendix to the
appellant's brief.
Claims 22-25 stand provisionally rejected under the
judicially created doctrine of obviousness-type double
patenting over claims 2-3, 5, 6 and 9-12 of copending
Application No. 08/041,190.2
Claims 1, 4-10 and 13-25 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Schirmer in view of Isaka et3
al. (Isaka) and Wavin .4 5
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Application No. 08/257,431
U.S. Patent No. 3,085,608 issued April 16, 1963.6
Claims 2 and 3 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Schirmer in view of Isaka and Wavin as
set forth above, and further in view of Mathues and the6
appellant's admission on page 5, line 10 of the specification.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 29,
mailed May 30, 1996) and the supplemental answer (Paper No.
32, mailed September 4, 1996) for the examiner's complete
reasoning in support of the rejections, and to the brief
(Paper No. 27, filed April 1, 1996) and reply brief (Paper No.
30, filed July 30, 1996) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art, and to the respective
Appeal No. 1996-4035 Page 5
Application No. 08/257,431
positions articulated by the appellant and the examiner. As a
consequence of our review, we make the determinations which
follow.
The obviousness-type double patenting rejection
We sustain the provisional rejection of claims 22-25
under the judicially created doctrine of obviousness-type
double patenting over claims 2-3, 5, 6 and 9-12 of copending
Application No. 08/041,190.
The appellant's only argument as to the merits of this
rejection is that this rejection is moot in this appeal since
the rejection is provisional and no claims have been allowed
(brief, p. 3). The appellant then states that they "will take
appropriate action once there is an indication of allowable
subject matter in one of the applications."
We do not agree with the appellant that this rejection is
moot for the following reasons. First, a predecessor of our
reviewing court expressed its approval of a provisional
Appeal No. 1996-4035 Page 6
Application No. 08/257,431
rejection in the context of an obviousness-type double
patenting rejection. In re Wetterau, 356 F.2d 556, 148 USPQ
499 (CCPA 1966). As explained in Wetterau, the provisional
nature of this type of rejection means that if a patent did
not issue on the related application, the provisional
rejection would evaporate. The court noted in the
obviousness-type double patenting context of that case that
certain benefits inured to applicant and the PTO through use
of such a provisional procedure, i.e., by making applicant
aware at the earliest possible time of the existence of a
double patenting issue, applicant has an opportunity to elect
which application to let issue, while prosecution in the PTO
is hastened. Second, as to the appellant's argument that no
claim has been allowed, we refer to Ex parte Karol, 8 USPQ2d
1771 (Bd. Pat. App. & Int. 1988) as to the propriety of
imposing a provisional obviousness-type double patenting
rejection based upon an application lacking allowed claims.
Lastly, we note that on November 10, 1998, Application No.
08/041,190 issued as U.S. Patent No. 5,832,699.
Appeal No. 1996-4035 Page 7
Application No. 08/257,431
For the reasons set forth above, the decision of the
examiner to provisionally reject claims 22-25 under the
judicially created doctrine of obviousness-type double
patenting is affirmed.
The obviousness rejections
We will not sustain the rejection of claims 1-10 and 13-
25 under 35 U.S.C. § 103.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). In rejecting claims
under
35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). A prima facie case of obviousness is established by
presenting evidence that the reference teachings would appear
to be sufficient for one of ordinary skill in the relevant art
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Application No. 08/257,431
Claims 2-10 and 13-25 incorporate all the limitations of7
claim 1 by referring back to claim 1.
to make the modifications necessary to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 9 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
With this as background, we turn to the examiner's
rejection of claim 1. 7
Claim 1 recites a polymeric film for the storage or
packaging of plant material, the film having from 10 to 1000
perforations per square meter therein, wherein the
perforations have a mean diameter of 20 to 100 microns, the
film having a water vapor permeability of not more than 800 g
m day and an oxygen permeability of not more than 200000 cm-2 -1 3
m day atmosphere , both permeabilities being measured at-2 -1 -1
25°C with a relative humidity of 75 percent.
The examiner's rationale for the rejection of claim 1
(answer, p. 4) is that (1) Schirmer teaches a plastic film
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Application No. 08/257,431
with a "myriad of tiny holes" used to package items like
vegetables which must "breath" when packaged; (2) Isaka
teaches olefin films for packaging plants having
permeabilities within the claimed ranges; and (3) Wavin
teaches that the gas flux through perforations may be
calculated. From these teachings the examiner then concludes
that it would have been obvious to one of ordinary skill in
the art to size the tiny holes of Schirmer to produce the
permeabilities of Isaka in order to preserve packaged
vegetables with average respiration rates because of the
teachings of Wavin and Isaka.
The appellant argues that a prima facie case of
obviousness from the combined teachings of the applied prior
art has not been established. We agree. It is our opinion
that the combined teachings of the prior art relied upon by
the examiner, would not have suggested the claimed micron
sized perforations required by the claims on appeal. That is,
the claimed limitation that the polymeric film has from 10 to
1000 perforations per square meter therein and the
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Application No. 08/257,431
In fact, the examiner never determined that these8
claimed limitations would have been obvious at the time the
invention was made to a person having ordinary skill in the
art.
perforations have a mean diameter of 20 to 100 microns is not
taught or suggested by the applied prior art. In that8
regard, while Wavin does teach a polymeric film having
perforations with a mean diameter of 50 to 100 microns, Wavin
teaches that such perforations are provided at greater than
1000 perforations per square meter. It is our opinion that
the examiner has not established the obviousness of a
polymeric film having from 10 to 1000 perforations per square
meter therein and the perforations having a mean diameter of
20 to 100 microns.
In summary, we see no motivation in the applied prior art
of why one skilled in the art would have modified the device
of Schirmer to make the modifications necessary to arrive at
the claimed invention. Thus, the examiner has failed to meet
the initial burden of presenting a prima facie case of
Appeal No. 1996-4035 Page 11
Application No. 08/257,431
Note In re Rijckaert, supra; In re Lintner, supra; and9
In re Fine, supra.
obviousness. Thus, we cannot sustain the examiner's9
rejection of appealed independent claim 1 and claims 4-10 and
13-25 which refere back to claim 1.
We have also reviewed the prior art applied in the
rejection of claims 2 and 3 but find nothing therein which
makes up for the deficiencies of Schirmer, Isaka and Wavin
discussed above with respect to claim 1. Accordingly, we
cannot sustain the examiner's rejection of appealed claims 2
and 3 under 35 U.S.C.
§ 103.
CONCLUSION
To summarize, the decision of the examiner to
provisionally reject claims 22-25 under the judicially created
doctrine of obviousness-type double patenting is affirmed; the
decision of the examiner to reject claims 1-10 and 13-25 under
35 U.S.C.
§ 103 is reversed.
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Application No. 08/257,431
No time period for taking any subsequent action in
connection with this appeal May be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1996-4035 Page 13
Application No. 08/257,431
RICHARD E. FICHTER
BACON & THOMAS
625 SLATERS LANE - FOURTH FLOOR
ALEXANDRIA, VA 22314
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Application No. 08/257,431
JVN/dl