Ex Parte 7163727 et al

Patent Trial and Appeal BoardNov 29, 2012

90009788 (P.T.A.B. Nov. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 90/009,788 09/01/2010 7163727 REEX-11680 1060 25227 7590 11/30/2012 MORRISON & FOERSTER LLP 1650 TYSONS BOULEVARD SUITE 400 MCLEAN, VA 22102 EXAMINER JOHNSON, JERRY D ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 11/30/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRAIL AND APPEALS BOARD ____________________ Ex parte TORAY PLASTICS (AMERICA), INC., Patent Owner and Appellant ____________________ Appeal 2012-009975 Reexamination control 90/009,788 Patent 7,163,727 Technology Center 3900 ____________________ Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and RAE LYNN P. GUEST, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF CASE Toray Plastics (America), Inc. (hereinafter “Appellant”), the real party in interest1 of Patent 7,163,727 B2, issued January 16, 2007, to Su et al. (hereinafter the ‘“727 patent”), appeals under 35 U.S.C. §§ 134(b) and 306 from the 1 See Appellant’s Appeal Brief filed November 22, 2011 (hereinafter “App. Br.”) at 1. Appeal 2012-009975 Reexamination control 90/009,788 Patent 7,163,727 2 Examiner’s decision to reject claims 1-40 and 442 (Final Office Action, mailed April 28, 2011, pages 4-9). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. Oral arguments were heard on October 17, 2012. A transcript of the oral argument will be made of record in due course. We AFFIRM. This reexamination proceeding arose from a third-party request for ex parte reexamination filed by Martin P. Hoffman of the law firm Hoffman, Wasson and Gitler (Request for Ex Parte Reexamination, filed September 1, 2010). The ‘727 patent relates to a film comprising a polyolefin layer and an epoxy- amine, namely a polyetheramine, layer (‘727 patent, col. 1, ll. 6-21 and col. 2, ll. 25-27). Representative claim 1 on appeal reads as follows (with underlining showing added text relative to the original patent claims): 1. A laminate film comprising a thermoplastic polyetheramine resin-containing layer on a first polyolefin resin- containing layer having a functional group, wherein the laminate film has substantially zero percent peel-off. (Claims App’x, App. Br. 12.) II. THE REJECTIONS The Examiner rejects claims 1-6, 9, 20-25, 27, 35, and 37-40 under 35 U.S.C. § 103(a) as unpatentable over Beckerdite3 in view of EP ‘0394. The 2 Claims 41-43 of the ‘727 patent are not subject to reexamination. 3 US 6,589,621 B1, issued July 8, 2003, to John M. Beckerdite et al. (hereinafter “Beckerdite”). Appeal 2012-009975 Reexamination control 90/009,788 Patent 7,163,727 3 Examiner further rejects claims 7, 8, 10-19, 26, 28-34, 36, and 44 under 35 U.S.C. §103(a) as unpatentable over Beckerdite in view of EP ‘039 and further in view of additional prior art.5 The Examiner finds that Beckerdite teaches a laminate film comprising a thermoplastic polyetheramine barrier layer and a polyolefin layer. The polyetheramine is a “melt-stable” thermoplastic polymer. The films and laminate structures can be formed by conventional extrusion techniques, solvent spraying or solution casting. (Ans. 6-7) (see Beckerdite, col. 1, ll. 56-58, col. 5, ll. 28-57, and col. 6, ll. 1-10). The Examiner acknowledges that Beckerdite does not teach that the polyolefin layer comprises a functional group (Ans. 7). The Examiner further finds that EP ‘039 teaches surface treating a polyolefin layer to increase surface tension via flame-treating, corona-treating and the like, to promote better adhesion of the polyolefin material to a thermoset polyetheramine barrier layer (Ans. 8) (see EP ‘039, p. 3, ll. 51-54, p. 5, l. 56 to p. 6, l. 1, and p. 9, ll. 26-32). The Examiner concludes that: It would have been obvious to one of ordinary skill in the art at the time the invention was made to form a laminate film as taught by Beckerdite wherein the surface tension of the coated layer has been increased by, for example, flame-treating, corona-treating and the like, in order to promote better adhesion between the barrier layer and the coated layer as taught by EP ‘039. 4 EP 0 327 039 A2, published September 8, 1989, in the name of PPG Industries, Inc. (hereinafter “EP ‘039”). 5 Appellant’s arguments do not reach the Exmainer’s application of the additional prior art to the remaining dependent claims, but rather focuses on the Examiner’s reliance on Beckerdite and EP ‘039. Accordingly, we discuss the additional prior art no further. Appeal 2012-009975 Reexamination control 90/009,788 Patent 7,163,727 4 (Ans. 8.) Appellants have not separately argued any particular claim on appeal, including claims separately rejected. Accordingly, all the appealed claims stand or fall together with claim 1. We note that Appellant relies on the testimony provided by the Chang declaration.6 III. ISSUES ON APPEAL The issues on appeal are: (1) Does the evidence support Appellant’s view that the Examiner erred in determining that one of ordinary skill in the art would have modified the laminate film of Beckerdite to include discharge treating the polyolefin substrate to produce functional groups as taught by EP ‘039? (2) Does the evidence demonstrate that the improved adhesion between a polyolefin and a thermoplastic polyetheramine achieved by Appellant would have been unexpected to the skilled artisan having the teachings of improved adhesion between a polyolefin and a thermoset polyetheramine taught by EP ‘039? We answer both of these questions in the negative. IV. ANALYSIS We adopt the Examiner’s findings in the Answer as our own and add additional findings of fact appearing below for emphasis. Appellant’s arguments are largely based on the premise that the Beckerdite melt-stable polyetheramine formulation was designed for extruded polyetheramine 6 The Declaration under 37 C.F.R. § 1.132 of Keunsuk P. Chang, dated May 24, 2006, and entered into the record on November 22, 2011 (hereinafter “Chang Declaration” or “Chang Decl.”). Appeal 2012-009975 Reexamination control 90/009,788 Patent 7,163,727 5 layers, particularly polyetheramine layers co-extruded with a polyolefin layer, a process in which no functional group additions are necessary for good adhesion and which cannot be applied by known methods due to the molten condition of the materials applied during extrusion (App. Br. 5-8). We agree with the Examiner that Appellant’s arguments are unpersuasive because Beckerdite is not limited to co-extrusion of the composition to form films. The Examiner’s rejection relies on the alternative conventional processes for forming a film from the composition disclosed by Beckerdite, namely extrusion coating, solvent spraying, and solution casting (see Ans. 7 and 13; Beckerdite, col. 5, ll. 28-32). Appellant contends that these alternative processes are only a “generic list of methods of forming laminates” that lack details, are for layers other than the polyetheramine layer, and that solvent spraying and solution casting are “counter to the whole purpose of Beckerdite – to produce melt stable polyetheramines” (App. Br. 8; Reply Br. 3). The evidence does not support Appellant’s contention that Beckerdite’s teaching of film forming methods other than co-extrusion is not relevant to the polyetheramine film. Beckerdite is directed to modified polyetheramine compositions that do not undergo crosslinking when films are fabricated at elevated temperatures (Beckerdite, col. 1, ll. 5-19). The section of Beckerdite relied upon by the Examiner states that “[f]ilms and laminate structures can be formed from the composition of the present invention” using alternative processes, such as solvent spraying (Beckerdite, col. 5, ll. 28-32). Since the “composition of the present invention” in Beckerdite is the polyetheramine composition, the skilled artisan would expect that the polyetheramine composition can be formed into a Appeal 2012-009975 Reexamination control 90/009,788 Patent 7,163,727 6 film using any of the methods expressly disclosed as suitable for that purpose. In addition, a skilled artisan would not require a detailed description of such “conventional,” techniques to form a polyetheramine film from the composition disclosed in Beckerdite. Moreover, Beckerdite also describes a solvent-based composition (Beckerdite, col. 4, l. 57 to col. 5, l. 7), as might be used in a solvent spraying or solution casting techniques. Appellant further contends that the skilled artisan would not look to improving adhesion of a thermosetting film, as taught by EP ‘039, to improve the adhesion of thermoplastic films, as taught by Beckerdite (App. Br. 9). Appellant presents evidence of distinctions between a thermoplastic polyetheramine and a thermosetting polyetheramine, particularly the need to cure thermosetting films and the fact that thermoplastic films, but not thermosetting films, can be melted and extruded (id.). However, Appellant’s evidence does not show a difference in adhesion between the two types of polyetheramine layers and polyolefin or that the noted distinctions materially impact adhesion. Thus, Appellant’s evidence is not persuasive that there would be no expected improvement in adhesion between a treated polyolefin layer and thermoplastic polyetheramine, as pointed out by the Examiner (Ans. 14). EP ‘039 teaches that surface treatments increase surface tension to promote better adhesion to a polyolefin layer (EP ‘039, p. 9, ll. 26-32). It is reasonable for one of ordinary skill in the art to expect the treatment would also increase polyolefin film adhesion to thermoplastic polyetheramine films using the same surface tension property when they are formed into a film. The resulting increase in film adhesion would be the predictable use of a known prior art method Appeal 2012-009975 Reexamination control 90/009,788 Patent 7,163,727 7 according to its established function to increase surface tension and adhesion of polyolefin films. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (The question to be asked is “whether the improvement is more than the predictable use of prior art elements according to their established functions.”). Based on these teachings, it does not follow that “there would be no motivation or stated need to apply this treatment to the completely different thermoplastic material described in Beckerdite,” as argued by Appellant. Appellant further contends that the Chang Declaration details the unexpectedly better adhesion a polyetheramine resin-containing layer to a treated surface of a polyolefin substrate when compared to no surface treatment (App. Br. 5). However, the Chang Declaration fails to explain why the improvement would have been unexpected in light of the statements of known increased surface tension and improved adhesion with treated polyolefin surfaces of EP ‘039. The weight of the evidence taken as a whole supports the Examiner’s conclusion of obviousness. V. CONCLUSION On the record before us, we affirm the rejections maintained by the Examiner. VI. TIME PERIOD FOR RESPONSE Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED Appeal 2012-009975 Reexamination control 90/009,788 Patent 7,163,727 8 FOR PATENT OWNER: MORRISON & FOERSTER LLP 1650 TYSONS BOULEVARD SUITE 400 MCLEAN, VA 22102 FOR THIRD-PARTY REQUESTER: MARTIN P. HOFFMAN, ESQ. C/O STEIN MCEWEN LLP 1400 EYE STREET, NW SUITE 300 WASHINGTON, DC 20005 cu