SK SARAN AMERICAS LLC

Patent Trials and Appeals Board

Jan 8, 2021

2020001931 (P.T.A.B. Jan. 8, 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.
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.
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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).
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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.
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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.
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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
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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.
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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
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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
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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