Ex Parte Julien et al

Patent Trial and Appeal BoardMar 27, 2015

11298610 (P.T.A.B. Mar. 27, 2015)

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. 11/298,610 12/12/2005 Jean-Marie Julien 16403-00237-US 6669 30678 7590 03/30/2015 NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP (DC OFFICE) 1875 EYE STREET, N.W. SUITE 1100 WASHINGTON, DC 20006 EXAMINER WOOD, ELLEN SUZANNE ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 03/30/2015 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 TRIAL AND APPEAL BOARD ____________ Ex parte JEAN-MARIE JULIEN and VINCENT DE LA FORCADE ____________ Appeal 2013-005304 Application 11/298,610 Technology Center 1700 ____________ Before PETER F. KRATZ, JEFFREY T. SMITH, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 9–41. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the Real Party in Interest is L’Oréal S.A. App. Br. 2. Appeal 2013-005304 Application 11/298,610 2 STATEMENT OF THE CASE The claimed subject matter relates to a packaging device for a cosmetic composition, such as hair dye. App. Br. 10 (Claims Appendix); Spec. Title. Claim 1 is representative of the subject matter on appeal and is set forth below: 1. A packaging device comprising: i) at least one flexible sheet delimiting at least in part a housing, the said flexible sheet forming a multilayer complex comprising: a) at least one metal layer; b) at least one layer of at least one bonding agent, wherein the at least one bonding agent is a copolymer of ethylene and of acrylic acid, wherein the at least one bonding agent comprises from 7% to 19%, by weight of the acrylic acid; and c) at least one layer of a non-metallic material bonded to the at least one metal layer via the at least one bonding agent; and ii) at least one cosmetic composition positioned inside the housing. App. Br. 10. PROCEDURAL ISSUE A review of the prosecution history reveals Watanabe et al. (JP 2003- 116632, Apr. 22, 2003) was first cited in a Non-Final Rejection dated April 16, 2008. The Examiner attached to this office action a Notice of References Cited (Form 892) that did not include Watanabe (JP 2003- 116632); rather, the cited reference was Sasaki et al. (JP 2003-081285, Appeal 2013-005304 Application 11/298,610 3 Mar. 19, 2003). Also attached to this office action was an English machine translation of JP 2003-081285. The Non-Final Rejection dated April 16, 2008 included in the statement of the rejection citations to paragraph numbers corresponding to the translation of JP 2003-081285 that was included with the office action. Appellants’ response to the April 16, 2008 Non-Final Rejection indicates that they understood the Examiner’s reference to Watanabe as a reference to the English translation that was provided with the office action. See October 9, 2008 Amendment and Reply to Office Action 11 n.1 (noting that the Examiner identifies the reference by the second-listed inventor, “Watanabe,” whereas Sasaki is the first-listed inventor). However, Appellant also identified the incorrect document number (JP 2003-116632). The Examiner and Appellants have continued to incorrectly cite JP 2003-116632 throughout the prosecution including in the Answer and Appeal Brief. The present record does not include an English translation of JP 2003-116632. It is apparent that the reference presented for appeal is JP 2003-081285. Since the Examiner and Appellants have consistently identified this reference as “Watanabe” (the second-listed inventor), we do likewise. References herein are to the English machine translation of JP 2003-081285 made of record April 16, 2008. PRIOR ART The prior art relied upon by the Examiner in rejecting the claims on appeal is: Marzolf US 3,908,070 Sep. 23, 1975 De Laforcade US 6,736,169 B2 May 18, 2004 Gueret US 6,945,402 B1 Sep. 20, 2005 Appeal 2013-005304 Application 11/298,610 4 Watanabe2 JP 2003-081285 March 19, 2003 THE REJECTIONS 1. Claims 1, 9–32, 35, and 37–41 are rejected under 35 U.S.C. § 103(a) as unpatentable over Watanabe in view of Marzolf. Ans. 2–6. 2. Claims 33 and 34 are rejected under 35 U.S.C. § 103(a) as unpatentable over Watanabe in view of Marzolf and further in view of Gueret. Id. at 6–7. 3. Claim 36 is rejected under 35 U.S.C. § 103(a) as unpatentable over Watanabe in view of Marzolf and further in view of De Laforcade. Id. at 7– 8. ANALYSIS Appellants’ arguments are directed to independent claim 1 only. The dependent claims, including separately rejected dependent claims 33, 34, and 36, are not separately argued. App. Br. 4–9. As a consequence, all appealed stand or fall together, and we confine our discussion to claim 1. The Examiner finds that Watanabe discloses a packaging device comprising all elements of claim 1, including an adhesive layer that bonds at least one metal layer to at least one layer of a non-metallic material. Ans. 3 (citing Watanabe Drawing 3, ¶¶ 3, 24, 25 (Example 2)). However, the Examiner finds that Watanabe does not disclose that the adhesive comprises a copolymer of ethylene and acrylic acid, where the copolymer comprises 2 References herein are to the English machine translation made of record April 16, 2008. Appeal 2013-005304 Application 11/298,610 5 from 7% to 19% by weight of acrylic acid. Id. The Examiner finds that Marzolf discloses a multilayered thermoplastic packaging material having an adhesive layer that comprises a copolymer of ethylene and acrylic acid, where the copolymer comprises 3–30 weight percent acrylic acid, which overlaps the claimed range. Id. (citing Marzolf 1:12–28, 4:30–37, Example 1). The Examiner concludes that it would have been obvious to use Marzolf’s adhesive composition in the packaging structure of Watanabe because Marzolf’s composition provides adequate bond strength that is required for multilayer structures. Id. at 3–4 (citing Marzolf 4:42–45). Appellants argue that Marzolf is not properly combinable with Watanabe, that Marzolf is non-analogous art, that Marzolf leads away from the claimed invention, that the rejection lacks a showing of predictable results, that the cited art lacks the necessary direction or incentive, and that the rejection is based on hindsight. App. Br. 4–8; Reply Br. 2–4. We are not persuaded that Appellants identify reversible error and find that a preponderance of the evidence supports unpatentability of the appealed claims over the applied prior art. We adopt the Examiner’s findings of fact, conclusions of law, and rebuttals to Appellants’ arguments, as expressed in the Answer. We add the following for emphasis. First, Appellants argue that Marzolf is not concerned with providing a bonding agent for joining metal and a non-metal layers, but is instead concerned with joining polyolefin and nylon layers, and the cited art would not have led one of ordinary skill in the art to select an ethylene-acrylic acid copolymer containing 7–19 wt.% acrylic acid for bonding metal and non- metal layers. App. Br. 4, 6; Reply Br. 2. The Examiner, however, finds that Watanabe teaches the use of an ethylene-acrylic acid copolymer as a Appeal 2013-005304 Application 11/298,610 6 bonding agent for joining metal and a non-metal layers and relies on Marzolf to teach the content of acrylic acid in the bonding agent. Ans. 10. We determine that the Examiner’s findings are supported by the teachings of Watanabe and Marzolf. Watanabe teaches an adhesion resin layer 14 for bonding a metallic barrier layer 12, e.g., aluminum foil, to a non-metallic thermoplastic film layer 13. Watanabe Drawing 1, ¶¶ 4, 15, 18. According to Watanabe, the adhesion resin layer 14 can be a copolymer of ethylene and unsaturated carboxylic acid, such as a copolymer of ethylene and methacrylic acid (EMAA). Watanabe ¶¶ 18, 25 (Example 2). Marzolf teaches copolymers of ethylene and monocarboxylic acids, such as acrylic acid or methyacrylic acid, as a component of an adhesive composition for bonding a barrier layer to a polyolefin layer on one side and to a nylon layer on the other side to form a packaging material. Marzolf 2:5–12, 3:61–4:46. These teachings of Watanabe and Marzolf are sufficient to support the Examiner’s conclusion that it would have been obvious to use a bonding agent comprising a copolymer of ethylene and acrylic acid, as taught by Marzolf, as a bonding agent for joining metallic and non-metallic layers, as taught by Watanabe. Appellants do not challenge the Examiner’s conclusion that the claimed range of acrylic acid content would have been obvious in view of Marzolf’s teaching of an overlapping range. Ans. 3. Second, Appellants argue that Marzolf leads away from the claimed invention by teaching that an adhesive that is suitable for use with one type of substrate is not necessarily suitable for another type of substrate. App. Br. 5 (citing Marzolf 3:63–4:4, 4:28–30); Reply Br. 2. As noted by Appellants, Marzolf discloses: “adhesive compositions which are compatible with the olefin outer layer and the barrier layer generally are not Appeal 2013-005304 Application 11/298,610 7 compatible with the nylon layer” and “adhesive compositions which are compatible with the nylon layer or the polyolefin layer may not be compatible with the barrier layer.” Marzolf 3:63–4:2. We do not agree, however, that this teaching would have led one of ordinary skill in the art away from using an ethylene-acrylic acid copolymer as a bonding agent for joining metallic and non-metallic layers, the obviousness of which is supported by Watanabe and Marzolf, as discussed above. Third, Appellants argue that Marzolf teaches that sufficient bond strength is achieved by a combination of two different adhesive layers, not an ethylene-acrylic acid copolymer. App. Br. 6 (citing Marzolf 3:60–67, 4:7–46, 5:40–60). We agree with the Examiner, however, that Marzolf teaches an adhesive layer comprising a composition of two different copolymers, not two different adhesive layers. Ans. 11 (citing Marzolf 4:1– 46). As discussed above, one of the two copolymers is ethylene-acrylic acid. Marzolf 4:30–36. We further agree with the Examiner, Ans. 11–12, that Marzolf’s disclosed adhesive layer is not outside the scope of Appellants’ claim 1, which recites: “. . . a multilayer complex comprising: . . . (b) at least one layer of at least one bonding agent . . ..” The transitional word, “comprising,” and the words “at least” permit the presence of additional bonding agents other than an ethylene-acrylic acid copolymer. Finally, Appellants argue that neither Watanabe nor Marzolf is concerned with the problem addressed by the invention, namely delamination between a metal layer and a plastic layer caused by contact with alkaline and/or oxidizing agents found in hair dye. App. Br. 6–7; Reply Br. 3–4. Appellants’ argument is not supported by Watanabe, which discloses a package for stably holding a hair dye component containing a Appeal 2013-005304 Application 11/298,610 8 color or ammonia. Watanabe ¶¶ 3, 4. Watanabe expressly addresses the problem of delamination between a metallic foil and a thermoplastic resin film resulting from contact with the hair dye component. Id. ¶¶ 5, 13, 14, 28. As discussed above, Watanabe’s solution is an adhesion resin layer between the metallic foil and the thermoplastic resin film. Id. ¶¶ 15, 18, 25 (Example 2). According to Watanabe, Examples 1–3 having an adhesion resin layer showed no delamination between the aluminum foil and the thermoplastic resin film, and Comparative Examples 1–3, with no adhesion layer, showed delamination. Watanabe ¶¶ 25–27. Accordingly, on this record, we are not persuaded that Appellants’ arguments and evidence are sufficient to outweigh the evidence of obviousness based on Watanabe and Marzolf. CONCLUSION OF LAW AND DECISION The decision of the Examiner rejecting claims 1 and 9–41 is affirmed. 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). AFFIRMED tc