General Mills, Inc.

Patent Trials and Appeals Board

Nov 1, 2021

2020005991 (P.T.A.B. Nov. 1, 2021)

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.
15/765,630 04/03/2018 Randal J Monforton 8088US02 9973
106306 7590 11/01/2021
DIEDERIKS & WHITELAW, PLC
4196 Merchant Plaza, #815
Woodbridge, VA 22192
EXAMINER
SANDERSON, LEE E
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
11/01/2021 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):
gmi.mail@dwpatentlaw.com
mail@dwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDAL J. MONFORTON, MYCHAL BARRETT BROSCH,
ADAM C. FEIGUM, RAMIN HEYDARPOUR, KENNETH LIN, and
GEORGE A. TUSZKIEWICZ
Appeal 2020-005991
Application 15/765,630
Technology Center 1700
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–21. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as “General Mill, Inc”. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter (emphasis added to highlight key disputed limitations):
1. An article comprising:
a foodstuff; and
a package containing the foodstuff, the package including
a multilayer moisture barrier having a first outer layer, a
second outer layer, and at least one inner layer between the first
and second outer layers,
wherein the at least one inner layer comprises desiccant
particles having a size of less than 100 nanometers dispersed in
a polymeric matrix of the inner layer, wherein the polymeric
matrix defines a plurality of cavities, and wherein at least some
of the cavities have one or more of the desiccant particles in
communication therewith,
wherein the at least one inner layer is an oriented layer, and
the inner layer is configured to maintain a desired range of
moisture content within the package.

Independent claims 20 and 21 are likewise directed to an article
similar to that of claim 1 (Claims App. 24).

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kaimoto US 2016/0030918 A1 Feb. 4, 2016
Lockhart US 2012/0308789 A1 Dec. 6, 2012
Koyama US 5,153,038 Oct. 6, 1992
Aoyama US 4,814,124 A1 Mar. 21, 1989

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REJECTIONS
Claims 1, 3–14, and 17–20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Lockhart. Final Act. 3.
Claim 21 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combined prior art of Lockhart and Aoyama. Final Act. 6.
Claims 1, 3–18, and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined prior art of Koyama and Kaimoto. Final
Act. 7.
OPINION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions as set forth in the Appeal Brief and the
Reply Brief, we determine that Appellant has not identified reversible error
in the Examiner’s rejections (See generally Ans.). In re Jung, 637 F.3d
1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice
of requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejection for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
The § 103 Rejections based on Lockhart
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
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thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant’s arguments mainly focus on the language that requires “at
least some of the cavities to have one or more desiccant particles in
communication therewith” (claim 1; see similar language in claim 21) and
the functional language that the inner layer is “configured to maintain a
desired range of moisture content” in the package (claims 1 and 20).
Appellant argues that (1) the Examiner’s position that at least some cavities
of Lockhart would have desiccant particle(s) lacks evidentiary support and is
not inherent (Appeal Br. 9, 12), (2) the Lockhart bag is not configured to
maintain a desired range of moisture as recited in claims 1 and 20 (Appeal
Br. 8–11), and (3) that there is no apparent reason to modify Lockhart with
Aoyama to obtain “surfactant particles” with desiccant particles “associated
therewith” as required by claim 21 (Appeal Br. 13–14). These arguments
are reiterated in the Reply Brief.
These arguments are not persuasive of reversible error in the
Examiner’s rejection for reasons given by the Examiner (Ans. 12–19).
Appellant’s contention that the Examiner’s position is improper
because the Examiner “needs absolute proof” that at least some of the
desiccant particles will remain in the cavities in the manner recited in claims
1 and 20 appears misdirected, since it has been held that when the Examiner
establishes a reasonable basis that the products or processes claimed by the
applicant and disclosed or suggested by the prior art appear to be the same or
substantially similar, the burden is properly shifted to the applicant to show
that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
Best, 562 F.2d 1252, 1254–56 (CCPA 1977).
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Contrary to Appellant’s argument, a preponderance of the evidence
supports the Examiner’s determination that the above noted structural
feature/property does not appear to be a mere possibility, but rather it
appears this property would indeed necessarily occur once desiccant
particles as exemplified in Lockhart (e.g., calcium carbonate, talc, chalk) are
added to a layer and stretched in a film as disclosed by Lockhart that is
appropriate for the same purpose as disclosed and claimed by Appellant
(Lockhart ¶ 102).2 See, PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals,
Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (“[I]n order to rely on
inherency to establish the existence of a claim limitation in the prior art in an
obviousness analysis—the limitation at issue necessarily must be present, or
the natural result of the combination of elements explicitly disclosed by the
prior art.”); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“In
particular, the statement [in In re Wright] that a prima facie obviousness
rejection is not supported if no reference shows or suggests the newly-
discovered properties and results of a claimed structure is not the law”; a
prima facie case of obviousness does not require both structural similarity
and a suggestion in or expectation from the prior art that the claimed
compound or product will have the same or a similar usefulness as the
applicants newly discovered compound; exactly what amounts to a prima
facie case varies from case to case).3 Cf. also, In re Papesch, 315 F.2d 381,

2 While it is not necessary to rely upon the Brill and Mount III articles
proffered by the Examiner, Appellant does not refute this evidence (Ans.
13–14; Reply Br. 2–3).
3 See also, Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff’d mem.,
795 F.2d 1017 (Fed. Cir. 1986) (the recognition of another advantage
flowing naturally from following the suggestion of the prior art cannot be
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391 (CCPA 1963) (“From the standpoint of patent law, a compound and all
of its properties are inseparable; they are one and the same thing.”).
Likewise, it is well established that when there is a reason to conclude
that the structure of the prior art is capable of performing the claimed
function (that is, maintaining “a desired degree of moisture content”), the
burden shifts to the applicant to show that the claimed function patentably
distinguishes the claimed structure from the prior art structure. See, e.g., In
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). The Examiner’s
position regarding the inner layer being “configured to maintain a desired
degree of moisture content within the package” was premised on the food
packing film of Lockhart being structurally the same as that claimed and
thus it is reasonable to shift the burden to Appellant to show that Lockhart’s
film does not “maintain a desired degree of moisture content within the
package” (Ans. generally). Notably, the Examiner also correctly points out
the extreme breadth of this language, which encompasses maintaining any
degree of moisture content for even a short period of time (Ans. 16).
Furthermore, attorney’s arguments in a brief cannot take the place of
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Appellant has also not shown error in the Examiner’s determination
that one of ordinary skill in the art would have, using no more than ordinary
creativity, used a dessicant free inner layer of Lockhart’s multilayer film
with desiccant particles as recited in claim 20 (Appeal Br. 11-12; Ans. 18).
Appellant has also not shown error in the Examiner’s determination
that one of ordinary skill in the art would have, using no more than ordinary

the basis for patentability when the difference would otherwise have been
obvious).
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creativity, used two inner layers of Lockhart’s multilayer film with desiccant
particles as recited in claims 6 and 7 (Appeal Br. 10; Ans. 17).
With respect to claim 21, Appellant’s argument that there is no reason
to modify Lockhart with the surfactant of Aoyama is not persuasive, as the
Appellant has not provided any persuasive reasoning or credible evidence to
refute the Examiner’s determination that one of ordinary skill would have
used such a surfactant on the inorganic particles of Lockhart to improve their
dispersibility in the polymer film (e.g., Ans. 18).
Finally, Appellant’s arguments do not take into account the applied
prior art as a whole and the inferences one of ordinary skill in the art would
have made therefrom. These arguments are not sufficient to overcome the
Examiner’s position that one of ordinary skill, using no more than ordinary
creativity, would have used both a desiccant free layer as well as a desiccant
layer in a foodstuff packaging flexible multilayer film as recited in
independent claim 20. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 416 (As the
Supreme Court has noted, “[t]he combination of familiar elements [or steps]
according to known methods is likely to be obvious when it does no more
than yield predictable results.”). Appellant has not come forward with
adequate evidence that the Examiner erred in characterizing Lockhart or in
concluding that the claimed combination of familiar elements for known
purposes would have been obvious. Ball Aerosol & Specialty Container, Inc.
v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (Under the flexible
inquiry set forth by the Supreme Court, the PTO must take account of the
“inferences and creative steps,” or even routine steps, that an ordinary
artisan would employ).
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Appellant does not present any further arguments towards any other
dependent claims in the § 103 rejection based on Lockhart.
The § 103 Rejection based on Koyama and Kaimoto
To the extent that many of Appellant’s arguments regarding desiccant
particles in voids and maintaining desired moisture are repeated for this
rejection, we refer to the discussion above. While we appreciate that unlike
Lockhart, Koyama is silent as to the formation of voids, it is still incumbent
upon Appellant to refute the Examiner’s reasonable position that the use of
desiccant particles in a stretched polymeric film as described in
Koyama/Kaimoto will inherently result in “some” cavities having one or
more desiccant particles therein. Similarly, Appellant has not shown error by
providing sufficient technical reasoning or evidence to contradict the
Examiner’s reasonable determination that the desiccant film layer of
Koyama/Kaimoto will maintain desired moisture as recited in claims 1 and
20. Appellant’s argument that there is no reason to use a dessicant free layer
as set out in claim 20 is also not persuasive (Appeal Br. 20), given that
multi-layer films for food packaging are well known as exemplified in the
applied prior art, and no more than ordinary creativity would be needed to
determine various appropriate alternative ordering of layers.
Likewise, the Examiner has aptly pointed out that Appellant fails to
squarely address the Examiner’s reason to combine these references (Ans.
19).
Contrary to Appellant’s contentions (Appeal Br. 17), a preponderance
of the evidence also supports the Examiner’s position regarding metal free
layers as recited in dependent claims 12 and 13, since Koyama discloses
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metal free alternatives for its oxygen scavenger component (Ans. 20;
Koyama col. 6, ll. 21-25).
Accordingly, the Examiner’s § 103 rejection based on Koyama and
Kaimoto is affirmed.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–14,
17–20
103 Lockhart 1, 3–14,
17–20

21 103 Lockhart, Aoyama 21
1, 3–18, 20 103 Koyama, Kaimoto 1, 3–18, 20
Overall
Outcome
1, 3–21

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED