Ex Parte Hütt

Patent Trial and Appeal Board

Aug 31, 2017

13575768 (P.T.A.B. Aug. 31, 2017)

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.
13/575,768 07/27/2012 Detlef Hiitt 074004-0186-US (286049) 9530
123223 7590 09/05/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
PLESZCZYNS KA, JOANNA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
DB RIPDocket @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte DETLEF HUTT1
Appeal 2016-007080
Application 13/575,768
Technology Center 1700
Before JEFFERY T. SMITH, BEVERLY A. FRANKLIN, and
WESLEY B. DERRICK, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 15, 17, 18, 21-24, and 31—35. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 15 is illustrative of Appellant’s subject matter on appeal and is
set forth below:
15. A transparent, multiplayer, biaxially oriented polyolefin film
comprising a base layer and at least one matt outer layer, wherein the outer
cover layer consists essentially of two incompatible polymers and has a
1 Appellant identifies the real party in interest as Treofan Germany GmbH &
Co. KG. Appeal Br. 2.
Appeal 2016-007080
Application 13/575,768
surface roughness of at least 2.0 pm with a cut-off of 25 pm, wherein the
matt outer cover layer contains a polydialkyl siloxane with a viscosity from
150,000 to 400,000 mm2/s and the surface of this matt outer cover layer has
undergone corona surface treatment and wherein the surface tension of the
surface of the outer cover layer is 37 to 50 mN/m after corona treatment and
the mixture of incompatible polymers consists essentially of a propylene
polymer and polyethylene polymer which is an MDPE.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Murschall et al. US 5,364,704 Nov. 15, 1994
(hereafter “Murschall ’704)
Murschall et al. US 5,474,820 Dec. 12, 1995
(hereafter “Murschall ’820)
Cretekos et al. US 6,472,077 B1 Oct. 29, 2002
(hereafter “Cretekos”)
Ambroise US 2004/0023052 Al Feb. 5, 2004
THE REJECTIONS
1. Claims 15, 17, 18, 21, 22, 24, and 31—352 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Murschall ’820 in
view of Murschall ’704 and Ambroise.
2. Claim 23 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Murschall ’820 in view of Murschall ’704 and Ambroise,
and further in view of Cretekos.
2 Claim 36 is no longer pending following cancellation by amendment after
final.
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Appeal 2016-007080
Application 13/575,768
ANALYSIS
Claim 15 is indefinite (as well as its dependent claims 17, 18, 21-24,
and 31—35). Page 4 of the Specification describes a base layer and at least
one matt outer cover layer, wherein this outer cover layer “contains a
polydialkyl siloxane” indicating that the matt outer cover layer and outer
cover layer are one and the same. This raises issues because the claim
recites both that the outer cover layer consists essentially of two
incompatible polymers that are identified, and that this layer includes
polydialkyl siloxane, which is not one of the identified two incompatible
polymers. PPG Indus, v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed.
Cir. 1998) (“By using the term ‘consisting essentially of,’ the drafter signals
that the invention necessarily includes the listed ingredients and is open to
unlisted ingredients that do not materially affect the basic and novel
properties of the invention.”). Further, the Specification identifies “the
named incompatible polymers and the polydialkyl siloxane [as] essential for
the purposes of the invention.” Spec. 11,11. 12-13 (emphasis added).
As such, the metes and bounds of these claims are unclear and
indefinite to the extent that it is impossible to ascertain the propriety of the
grounds of rejection of these claims. See In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970); In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).
Where claims do not particularly point out and distinctly claim the
invention as required by the second paragraph of 35 U.S.C. § 112, a § 103
rejection of the claims can be reversed as impermissibly involving
speculative assumptions as to the meaning of the claims. Steele, F.2d at
862-63. Because claims 15, 17, 18, 21, 22, 23, 24, and 31—35 fail to
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Appeal 2016-007080
Application 13/575,768
particularly point out and distinctly claim Appellants’ invention as required
by the second paragraph of 35 U.S.C. § 112, the § 103 rejection of these
claims necessarily involves speculative assumptions as to the meaning of the
claims. Under these circumstances, we must reverse each of the § 103
rejections.
However, we emphasize that our reversal of these rejections is
because the claims are indefinite; hence, a decision has not been made based
on the technical merits of the obviousness rejection respecting these claims.
We introduce a new ground of rejection of claims 15, 17, 18, 21-24,
and 31—35 under the second paragraph of 35 U.S.C. § 112 for failing to
particularly point out and distinctly claim the subject matter which
Appellants regard as their invention; hence, we reject these claims as
running afoul of the requirements of the second paragraph of 35 U.S.C.
§ 112(37 C.F.R. § 41.50(b)).
DECISION/ORDER
The decision of the Examiner to reject the claims is reversed. We
enter a new ground of rejection pursuant to our authority under 37 C.F.R.
§ 41.50(b) of claims 15, 17, 18, 21-24, and 31—35 under 35 U.S.C.
§112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the
following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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Appeal 2016-007080
Application 13/575,768
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is made which,
in the opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
REVERSED; NEW GROUND OF REJECTION PURSUANT TO 37
C.F.R. $ 41.50(b)
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