Philip Ashman

Patent Trials and Appeals Board

Nov 23, 2021

2021003360 (P.T.A.B. Nov. 23, 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.
12/598,465 07/08/2010 Philip Colin Ashman 25383.21 1535
34313 7590 11/23/2021
ORRICK, HERRINGTON & SUTCLIFFE LLP
IP PROSECUTION DEPARTMENT
2050 Main Street, Suite 1100
IRVINE, CA 92614
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
11/23/2021 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):
IPPROSECUTION@ORRICK.COM
vsantos@orrick.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIP COLIN ASHMAN

Appeal 2021-003360
Application 12/598,465
Technology Center 1700
____________

Before JEFFREY T. SMITH, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

REN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 32–46, 54, 55, 57, 61, and 62.1 We
have jurisdiction under 35 U.S.C. § 6(b). An Oral hearing was held on
September 28, 2021.
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Albéa UK Limited and related
entity Albéa Services S.A.S., both of which are part of the privately owned
Albéa Group, are the real parties in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Claim 32, reproduced below, is illustrative of the claimed subject
matter:
32. A collapsible tube container comprising:
a side-wall being formed from a multi-layer polymeric
material produced as a blown film with no subsequent
lamination step, the side-wall having a longitudinal joint, and
wherein the multi-layer polymeric material has a
thickness of between 150 and 350 microns.
Appeal Br. 11 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner are:

Name Reference Date
Blatz US 4,952,628 Aug. 28, 1990
Horan US 6,383,589 B1 May 7, 2002
Labbe US 2007/0026174 Al Feb. 1, 2007
Pasbrig US 2008/0311327 Al Dec. 18, 2008

REJECTIONS

Claims Rejected 35 U.S.C. § Reference(s)/Basis
32–35, 40, 45, 46, 54, 55, 57 103(a) Horan
36, 37, 39, 41, 42 103(a) Horan, Labbe
38 103(a) Horan, Pasbrig
43, 44, 61, 62 103(a) Horan, Blatz

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OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 U.S.P.Q.2d 1072 at *4 (BPAI Feb. 26, 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011)) (“[I]t has long been the Board’s practice to require an applicant
to identify the alleged error in the examiner’s rejections.”). After having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that reversible error has been identified,
and we affirm the Examiner’s 35 U.S.C. § 103 rejections for the reasons
expressed in the Final Office Action (mailed Aug. 27, 2020, hereinafter
“Final Act.”) and the Answer (mailed March 23, 2021, hereinafter “Ans.”).
We add the following primarily for emphasis.

Claim 322
Appellant argues that the Examiner reversibly erred because “blown
films are structurally different from films produced using other methods
known in the art in that the layers making up the film possess a ‘similar’ or
‘balanced molecular orientation across’ the layers.” Appeal Br. 4 (citing
Declaration by Mr. Paul Waller ¶¶ 13–34) (hereinafter “Decl.” or “Waller
Declaration” or “Delcaration”). This argument is unpersuasive because it
does not address the prior art reference Horan and the Examiner’s fact

2 Appellant does not argue any claim from any rejection presented for
review on appeal separate from the other. See Appeal Br. 2–10. We select
independent claim 32 as representative of the subject matter claimed and
limit our discussion to this claim. Accordingly, claims 33–46, 54, 55, 57,
61, and 62 stand or fall with claim 32. See id.; see also 37 C.F.R. §
41.37(c)(1)(iv).
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finding based on Horan in support of the rejection. See Final Act. 2–3 (citing
various portions of Horan in support of the teaching).
Appellant next argues that “the vast majority of Horan relates to sheet
coextruded (and not blown) films” which is used to produce the film in
Horan. Appeal Br. 4 (citing Horan 10:33–38, 14:46–48). Appellant’s
argument is unpersuasive again because it does not identify reversible error
in the Examiner’s fact findings. The Examiner acknowledges that Horan
discloses a multilayer film “coextruded by any coextrusion process” without
specifically disclosing that “the material having the disclosed thickness is
produced as a blown film.” Final Act. 2–3 (citing various portions of Horan
including 14:60–62). The Examiner, however, cites Horan 17:46–49 for the
teaching that “a multi-layer polymeric material produced as a blown film
with no subsequent lamination step” as recited is known in the art. Id.
Appellant indeed acknowledges that Horan states that blown film is
known in the art. Appeal Br. 5 (“This single, isolated passage is the only
place in Horan where a [‘]blown film[’] is even reference[d].”). Appellant,
however, argues that the Examiner reversibly erred in his fact finding
because the Waller Declaration states that a skilled artisan would not have
interpreted this particular passage “as teaching that Horan’s entire film could
be produced as a blown film.” Id. (citing Decl. ¶¶ 78–82).
Appellant’s argument is unpersuasive first and foremost because it is
incommensurate in scope with the claim language. Claim 32 is a product
claim reciting “a side-wall being formed from a multi-layer polymeric
material produced as a blown film with no subsequent lamination step.” The
plain language of the claim does not require the entire film to be produced as
a blown film as Appellant argues. Moreover, “the patentability of a claim to
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a product does not rest merely on a difference in the method by which that
product is made. Rather, it is the product itself which must be new and
unobvious.” In re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969) (emphasis
in original). “[T]he patentability of apparatus or composition claims depends
on the claimed structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).
Consistent with Horan’s teaching that blown film multilayer
polymeric material is known in the art, the Specification discloses: “Blown
film technology and manufacturing equipment is well known in the art.
Brampton Engineering of Ontario, Canada (www.be-ca.com), for example,
manufacture blown film systems suitable for use in the manufacture of
blown film multi-layer polymeric material used in the present invention.”
Spec. 10:8–11. The Examiner’s finding that the recited “side-wall being
formed from a multi-layer polymeric material produced as a blown film with
no subsequent lamination step” is known in the art is therefore supported by
the record. See id; Final Act. 3, Ans. 9.
Mr. Waller’s statements that Horan’s teaching “does not appear to
contemplate a layered structure produced in a single step as a blown film as
the ‘465 application’s claims require” and is not “stating that its entire
multilayer structure can be produced as a blown film” do not identify
reversible error in the Examiner’s findings for the same reasons we give
above when discussing similar issues. Decl. ¶¶ 81, 82. We further note that
we decline to disturb the Examiner’s fact finding based on an observation of
which the declarant does not appear to be entirely certain about, that is the
record lacks factual evidence and a technical reason to support Mr. Waller’s
observation and/or opinion..
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Appellant argues that a skilled artisan “would have considered it
virtually impossible to produce Horan’s multilayer film in a single step as a
blown film with no subsequent lamination.” Appeal Br. 6 (citing Decl. ¶¶
83–105). Mr. Waller states that “one of ordinary skill in the art as of May
2007 would have considered it impossible, or at the very least unduly
difficult, to make a multilayered blown film using the teachings of Horan”
and that the skilled artisan “would have understood that one’s ability to
produce a multilayer film as a blown film is limited.” Decl. ¶¶ 83, 86.
Appellant’s argument as well the statements in the Declaration are
unpersuasive again because they are incommensurate in scope with the
claim language which does not require the product to be produced in a single
step but only recites that “a side-wall being formed from a multi-layer
polymeric material produced as a blown film with no subsequent lamination
step.” As stated supra, the patentability of product claim 32 “depends on the
claimed structure” rather than other attributes such as the method of
production. See Catalina, 289 F.3d at 809; see also Pilkington, 411 F.2d at
1348 (holding that “the patentability of a claim to a product does not rest
merely on a difference in the method by which that product is made. Rather,
it is the product itself which must be new and unobvious”).
Appellant’s arguments and the Declaration related to the production
method of Horan’s film of a particular composition using calcium carbonate
do not structurally distinguish the claimed invention from the prior art and,
thus, do not identify reversible error in the Examiner’s findings. See Appeal
Br. 6 (citing Decl. ¶¶ 87–89 and arguing that “Horan’s multilayer film is
simply too thick and too heavy (given its inclusion of large amounts of
calcium carbonate) to be produced as a blown film.”). Appellant’s argument
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as well as Mr. Waller’s statement in the Declaration that additional prior art
references show that a skilled artisan “would have no reason whatsoever to
attempt to produce Horan’s film as a blown film” is unpersuasive also
because Appellant has not established that the claimed invention and the
prior art are structurally distinguished from each other. See Appeal Br. 7
(citing Decl. ¶¶ 90–104). Hence, no reversible error has been identified in
the Examiner’s findings. These arguments and the Declaration are
unpersuasive also because they are incommensurate in scope with the claim
which does not exclude the multilayer film to be produced using calcium
carbonate.
In addition to Horan’s teaching that the recited film thickness is
known, changes in dimension or size that do not alter function are ordinarily
obvious variations. In re Rice, 341 F.2d 309 (CCPA 1965) (Holding that
Examiner properly found that claimed dimensional relationship between
collection chamber and walls of main air chamber “does not produce any
different effect or result.”); see also Gardner v. TEC Sys., Inc., 725 F.2d
1338 (Fed. Cir. 1984) (holding that where the only difference between the
prior art and the claims was a recitation of relative dimensions of the
claimed device and a device having the claimed relative dimensions would
not perform differently than the prior art device, the claimed device was not
patentably distinct from the prior art device); In re Rose, 220 F.2d 459, 463
(CCPA 1955) (Holding that “the size of the article under consideration . . . is
not ordinarily a matter of invention.”); In re Rinehart, 531 F.2d 1048, 1053
(CCPA 1976) (holding that mere scaling up of a prior art process capable of
being scaled up, if such were the case, would not establish patentability in a
claim to an old process so scaled). Appellant’s argument that Horan does not
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specifically disclose a “multi-layer polymeric material ha[ving] a thickness
of between 150 and 350 microns” as recited is unpersuasive for this
additional reason.
Appellant next argues that the Examiner reversibly erred in finding
the Waller Declaration unpersuasive. Appeal Br. 8. Specifically, the
Examiner finds that although the Waller Declaration states certain references
provide 20% of calcium carbonate may be incorporated into a blown film,
such evidence does not patentably distinguish the prior art “because the
documents cited in the declaration do not state a specific amount of calcium
carbonate that cannot be exceeded [which] will provide a film that is too
weak for any use.” Final Act. 6. As we analyzed supra, Appellant’s
arguments and theDeclaration showing that producing a prior art film using
a particular amount of calcium carbonate as a blown film is “unduly
difficult” are unpersuasive because they are incommensurate in scope with
the claim language and do not structurally distinguish the claimed invention
from the prior art. Decl. ¶ 83.
Appellant’s argument that the Examiner has not addressed the
evidence that “the minimum film thickness and calcium carbonate loading
levels mentioned by Horan (10 mils, or 254 μm, with 30% calcium
carbonate) exceed the maximum thicknesses and calcium carbonate loading
levels in blown films that have been successfully produced (about 25–50
μm, with less than 20–25% calcium carbonate)” does not identify reversible
error in the Examiner’s fact findings. Appeal Br. 9. As noted supra, claim 32
does not require a particular amount of any composition (whether calcium
carbonate or otherwise) and Appellant’s arguments are therefore
incommensurate in scope with the claim language. The production method,
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i.e., blown film technology, by which the multilayer film is manufactured,
does not structurally distinguish the claimed invention from the prior art. See
In re Pilkington, 411 F.2d at 1348 (“[T]he patentability of a claim to a
product does not rest merely on a difference in the method by which that
product is made. Rather, it is the product itself which must be new and
unobvious.”).
Appellant lastly argues that the Examiner has not specifically
addressed each reference discussed in the Declaration. Appeal Br. 9.
Appellant argues that the totality of these references collectively “explain[s]
the technical hurdles that would prevent Horan's heavy, thick, calcium
carbonate containing film from being produced as a blown film” and shows
that “it would be virtually impossible to produce Horan’s multilayer film in
a single step as a blown film.” Id. We are not persuaded that the Examiner
reversibly erred here for the reasons provided supra, that is, the arguments
(1) relate to the production method of a multilayer blown film which is
known in the art as evidenced in the Specification and do not structurally
distinguish the claimed invention from the prior art, and (2) are
incommensurate in scope with the claim language which does not require the
recited multilayer film to be produced in a single step, nor does it require a
specific amount of a particular composition such as calcium carbonate in the
production of the blown film.
CONCLUSION
The Examiner’s rejections are affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
32–35, 40,
45, 46, 54,
55, 57
103(a) Horan 32–35, 40,
45, 46, 54,
55, 57

36, 37, 39,
41, 42
103(a) Horan, Labbe 36, 37, 39,
41, 42

38 103(a) Horan, Pasbrig 38
43, 44, 61,
62
103(a) Horan, Blatz 43, 44, 61,
62

Overall
Outcome
32–46, 54,
55, 57, 61,
62

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