SK SARAN AMERICAS LLCDownload PDFPatent Trials and Appeals BoardJan 8, 20212020001931 (P.T.A.B. Jan. 8, 2021) Copy Citation 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. 14/432,950 04/01/2015 Douglas E. Beyer 5038-1807578 3586 28289 7590 01/08/2021 THE WEBB LAW FIRM, P.C. ONE GATEWAY CENTER 420 FT. DUQUESNE BLVD, SUITE 1200 PITTSBURGH, PA 15222 EXAMINER SHOSHO, CALLIE E ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 01/08/2021 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): patents@webblaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DOUGLAS E. BEYER and STEVEN R. JENKINS ____________ Appeal 2020-001931 Application 14/432,950 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 6, and 12–18 of Application 14/432,950. Final Act. 1 (Mar. 26, 2019). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we affirm. 1 The word “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies SK Saran Americas LLC, as the real party in interest. Appeal Br. 3. Appeal 2020-001931 Application 14/432,950 2 I. BACKGROUND The ’950 Application describes vinylidene chloride-based polymers, which are used in packaging films for oxygen-sensitive materials, such as food products. Spec. ¶¶ 1, 2. According to the ’950 Application, conventional vinylidene chloride resins crystallize rapidly, which causes breaks and tears during post-extrusion procedures. Id. ¶ 3. The ’950 Application describes films made from vinylidene chloride resins, which are said to exhibit improved processability and permeable barrier properties suitable for specialty food packaging. Id. ¶¶ 4, 5. Claim 1 is representative of the ’950 Application’s claims and is reproduced below from the Appeal Brief’s Claims Appendix. 1. A composition comprising: (A) a vinylidene chloride/methyl acrylate interpolymer having from 7.5 wt% to 9.0 wt% methyl acrylate mer units in the interpolymer; (B) from 7 wt% to 10 wt% of an epoxy plasticizer that is epoxidized soybean oil based on total weight of the composition; and (C) from 2 wt% to less than 4 wt% of an acrylate polymer based on total weight of the composition, the acrylate polymer consisting of an interpolymer of methyl methacrylate, butyl methacrylate, and butyl acrylate; wherein (D) the composition has a crystallization time greater than 75 minutes to crystallization at 35°C measured with a differential scanning calorimeter; and (E) the composition has an oxygen transmission rate of 1.5 to 9.0 cc-mil/100in2-atm-day as measured in accordance with ASTM D 3985. Appeal Br. Claims App. 17 (emphasis added). Appeal 2020-001931 Application 14/432,950 3 II. REJECTIONS On appeal, the Examiner maintains the following rejections under 35 U.S.C. § 103(a): 1. Claims 1, 6, and 12–18 as unpatentable over Bekele,2 as evidenced by Chaudhary.3 Final Act. 3. 2. Claim 18 as unpatentable over the combination of Bekele and Beyer.4 Final Act. 7. Appellant argues for reversal of the rejections at issue based upon the limitations in claim 1. Appeal Br. 6–16. We, therefore, select claim 1 as representative of the claims subject to these grounds of rejections and limit our discussion to this claim. 37 C.F.R. § 41.37(c)(1)(iv). III. DISCUSSION A. Rejection of claims 1, 6, and 12–18 over Bekele, as evidenced by Chaudhary In rejecting claim 1, the Examiner found that Bekele’s layer in a polymeric film describes each of the claimed compounds in amounts that overlap or are encompassed by the requisite ranges. Final Act. 3–4. The Examiner found that Bekele is silent regarding the required crystallization times and oxygen transmission rate. Id. at 3. The Examiner, however, found 2 US 2003/0099813 A1, published May 29, 2003. 3 B. I. Chaudhary, B. D. Nguyen, and A. Zamanskiy, Dialkyl furan-2,5- dicarboxylates, epoxidized fatty acid esters and their mixtures as bio-based plasticizers for poly(vinylchloride), J. Appl. Polym. Sci. 132 (2015) 42382. 4 US 2009/0123678 A1, published May 14, 2009. Appeal 2020-001931 Application 14/432,950 4 that Bekele’s composition “would intrinsically have the substantially identical crystallization time [range] and oxygen transmission rate as measured in accordance with ASTM D 3985, as presently claimed.” Id. at 4 (citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977); MPEP § 2112.01(I)). Appellant argues that the Examiner has failed to establish a prima facie case of obviousness. Appeal Br. 6. Specifically, Appellant contends that the rejection of claim 1 should be reversed because: (1) Bekele only exemplifies pharmaceutical blister packs having low oxygen transmission rates (id. at 7), (2) Bekele fails to render obvious “the selected combination of ranges of components specified in the present claims” (id. at 13), (3) Bekele would not have motivated the ordinarily skilled artisan “to arrive at a composition having an oxygen transmission rate (“OTR”) of 1.5 to 9.0 cc- mil/100in2-atm-day,” as claimed (id.), and (4) the Declaration of Dr. Duyoun Ka under 37 C.F.R. § 1.132 (“Ka Declaration”) avers that “Bekele teaches away from a film having higher OTR.” Id. at 13 (citing Ka Decl. ¶ 4). We are not persuaded by these arguments. First, argument (1) ignores Bekele’s broader disclosure while focusing on the prior art’s working examples. See Appeal Br. 7; but see Answer 10–11. In an obviousness inquiry, the fact that a specific embodiment is taught to be preferred is not controlling, because all disclosures of the prior art, including non-preferred embodiments, must be considered. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (citing In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). In other words, even if Bekele’s working examples are considered to be preferred embodiments, these examples do not support claim 1’s nonobviousness. Appeal 2020-001931 Application 14/432,950 5 Second, Appellant’s argument (2) does not show that the Examiner reversibly erred in finding that Bekele’s layer describes each of the claimed compounds in amounts that overlap or are encompassed by the requisite ranges. Final Act. 3–4; see also Answer 20. This is sufficient to create a prima facie case of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art). Third, argument (3) is not persuasive. The Examiner’s findings are reasonable that Bekele’s layer, including the amounts and the types of (A) a vinylidene chloride/methyl acrylate interpolymer, (B) an epoxy plasticizer, and (C) an acrylate polymer, would have possessed the claimed OTR properties. See Final Act 4; Answer 11–12. Therefore, the burden is on Appellant to provide evidence or reasoning sufficient to rebut the findings. See Best, 562 F.2d at 1255 (“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of [the] claimed product.”). Fourth, Appellant’s assertion that Bekele teaches away from a film possessing higher OTR is not convincing. The teachings of a reference that arguably teaches away from a claimed feature must be weighed alongside the teachings of a cited reference that teaches the propriety of employing that feature. Para-Ordnance Mfg., Inc. v. SGS Imps. Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995). For a reference to “teach away,” it must criticize, discredit, or otherwise Appeal 2020-001931 Application 14/432,950 6 discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In this case, Appellant’s Brief and relied-upon Ka Declaration do not direct our attention to any teaching in Bekele that criticizes, discredits, or discourages the OTR property recited in claim 1. Appellant asserts in connection with argument (4) that the high OTR recited in claim 1 results from the presence of epoxidized soybean oil in large amounts, which inhibits crystallization of vinylidene chloride resin. Appeal Br. 9. Although Bekele discloses that a low OTR rate in exemplified pharmaceutical blister packs is desirable, Bekele explicitly discloses that the epoxidized soybean oil “stabilizer can comprise . . . 7, 8, 9, or 10 parts by weight of the vinylidene chloride composition,” which overlaps the claimed range. Bekele ¶ 91; see Peterson, 315 F.3d at 1329. Because the applied prior art does not teach away from the subject matter recited in claim 1, Appellant can only overcome the Examiner’s prima facie case by showing that there are new and unexpected results relative to the closest prior art. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (citing In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)). Here, Appellant argues that the Ka Declaration demonstrates that the claimed composition possesses an unexpectedly slow crystallization rate. Appeal Br. 9–13. Appeal 2020-001931 Application 14/432,950 7 The Examiner, however, concluded that Appellant’s relied-upon data was not commensurate in scope with claim 1 because it only shows using specific amounts of a vinylidene chloride/methyl acrylate interpolymer having specific weight % of methyl acrylate mer units in the interpolymer (i.e., 8.5 wt% MA and 9 wt% MA) . . . while the present claim broadly encompasses any amounts of vinylidene chloride/methyl acrylate interpolymer having greater than 7.5 wt% to 9.0 wt% methyl acrylate mer units in the interpolymer. Answer 14. We agree with the Examiner (id.) that “there is no data of using the amount of methyl acrylate mer units in the vinylidene chloride/methyl acrylate interpolymer at the lower end” recited in claim 1. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (Unexpected results must be “commensurate in scope with the degree of protection sought by the” claims on appeal.). Appellant argues that there is evidence in the record showing “OTR data for 7.7%, as well as 8.5%[,] and Dr. Ka’s opinion for 9% MA, almost the entire claimed range of vinylidene chloride/methyl acrylate interpolymer having from 7.7 wt% to 9.0 wt% methyl acrylate mer units in the interpolymer.” Appeal Br. 10–11 (emphasis added). Even assuming these amounts span “the entire claimed range” (id.), Appellant has not provided any evidence showing the criticality of the claimed parameters. As the Federal Circuit has explained, an applicant may overcome a prima facie case of obviousness by establishing ‘that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’ That same standard applies when, as here, the applicant seeks to optimize certain variables by selecting narrow ranges from broader ranges disclosed in the Appeal 2020-001931 Application 14/432,950 8 prior art. Moreover, the applicant’s showing of unexpected results must be commensurate in scope with the claimed range. Peterson, 315 F.3d at 1330; see also Bekele Abstract. On this record, Appellant has made no such showing. In view of the foregoing, we determine that the Examiner did not reversibly err in rejecting claim 1 as unpatentable over Bekele, as evidenced by Chaudhary. Accordingly, we also affirm the rejection of claims 6 and 12– 18, which depend from claim 1. B. Rejection of claim 18 over Bekele and Beyer Appellant argues that the alternative rejection of claim 18 as unpatentable over the combination of Bekele and Beyer should be reversed for the reasons set forth in arguing for reversal of the rejection over Bekele, as evidenced by Chaudhary. See, e.g., Appeal Br. 14 (“Bekele does not disclose or suggest the selected combination of ranges of components specified in the present claims, and one of ordinary skill in the art would not be motivated by Bekele to arrive at a composition having an . . . OTR . . . of 1.5 to 9.0 cc-mil/100in2-atm-day such as is presently claimed.”). For the reasons set forth above, we have affirmed the rejection of independent claim 1 as unpatentable over Bekele, as evidenced by Chaudhary. We, therefore, also affirm the alternative rejection of claim 18 as unpatentable over the combination of Bekele and Beyer. IV. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6, 12–18 103(a) Bekele, Chaudhary 1, 6, 12–18 Appeal 2020-001931 Application 14/432,950 9 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 18 103(a) Bekele, Beyer 18 Overall Outcome 1, 6, 12–18 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 Copy with citationCopy as parenthetical citation