Ex Parte Knoerzer et al

Patent Trial and Appeal BoardJul 6, 2015

12716033 (P.T.A.B. Jul. 6, 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. 12/716,033 03/02/2010 Anthony Robert Knoerzer CFLAY.00520 9941 110933 7590 07/06/2015 Carstens & Cahoon, LLP PO Box 802334 Dallas, TX 75380 EXAMINER AUGHENBAUGH, WALTER ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 07/06/2015 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 ANTHONY ROBERT KNOERZER, KENNETH SCOTT LAVERDURE, ELDRIDGE M. MOUNT III, and BRAD DEWAYNE RODGERS1 ____________ Appeal 2013-008524 Application 12/716,033 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, WESLEY B. DERRICK, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s rejections of claims 1 and 15 under 35 U.S.C. § 102(b) as anticipated by O’Brien (US 5,631,066, issued May 20, 1997) and of claims 1, 9, and 16 under 35 U.S.C. § 103(a) as unpatentable over Melican et al. (US 1 Frito-Lay North America, Inc. is identified as the real party in interest. App. Br. 2. Appeal 2013-008524 Application 12/716,033 2 2003/0193104 A1, published Oct. 16, 2003 (hereinafter “Melican”)). We have jurisdiction under 35 U.S.C. § 6. We AFFIRM-IN-PART. Appellants claim a composite for use on a product side of a multi- layer packaging film comprising a bio-based layer (e.g., PLA (i.e., polylactic acid)), an adhesion layer (e.g., PGA (i.e., polyglycolic acid)) having deposited thereon a metal, metal oxide, and/or metalloid oxide (sole independent claim 1). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A composite for use on a product side of a multi-layer packaging film, said composite comprising a bio-based layer selected from PLA, wherein said PLA has a glass transition temperature and is insoluble in water at temperatures below said glass transition temperature, PHA, and mixtures thereof and an adhesion layer having a metal, metal oxide, metalloid oxide, or combinations thereof deposited on said adhesion layer, wherein said adhesion layer comprises polyamides or PGA. The § 102 Rejection The Examiner finds that “Sample 1 of [O’Brien’s] Example 4 corresponds to the claimed composite, where the bio-based layer comprises PLA, and the adhesion layer is PGA” (Final Action 3). Further, the Examiner finds that the metal layer deposited on O’Brien’s PGA layer is Appeal 2013-008524 Application 12/716,033 3 located between the PLA layer and the PGA layer (Ans. 8) and determines that the language of claim 1 encompasses such a location (id. at 6). Appellants disagree with the Examiner’s claim interpretation arguing that “[t]he only way for the three recited layers to form a ‘composite’ as claimed, is for the bio-based layer to be on the opposite side of the metal/oid/oxide layer, which as claimed is deposited on the adhesion layer” (App. Br. 6). According to Appellants, “[t]he Examiner’s interpretation of claim 1 is unreasonably broad, and not supported at all by the specification originally submitted by Appellants” (id.). Appellants’ argument is not persuasive. We find nothing and Appellants point to nothing in the claim 1 language which expressly requires the adhesion layer to be located between the bio-based layer and the metal/oid/oxide layer. While the claim requires all three layers be present in the composite, it only defines the structural relationship between the adhesion layer and the metal/oid/oxide layer. Moreover, Appellants’ Figure 4 disclosure contradicts their above contention that the Examiner’s claim 1 interpretation is unreasonably broad and not supported by their Specification. Specifically, the Figure 4 disclosure teaches a composite structure which, like O’Brien’s composite structure, includes a metal barrier layer 412 located between adhesion layer 410 and bio-based layer 418 (see, e.g., Spec. ¶ 30). Appeal 2013-008524 Application 12/716,033 4 For these reasons and because Appellants do not separately argue dependent claim 15, we sustain the § 102 rejection of claims 1 and 15 as anticipated by O’Brien. The § 103 Rejection The Examiner finds that Melican discloses a composite comprising a PHA foam component/layer and a PGA reinforcing component/layer having a biocompatible metal deposited thereon (Final Action 4). The Examiner concludes that, in light of Melican’s teachings, it would have been obvious “to have formed a composite that has each of the claimed structural and compositional limitations” (id.). Appellants correctly point out that Melican is directed to a biocompatible tissue implant produced via a mold operation and argue that Melican is non-analogous art because it is not within the field of their endeavor nor reasonably pertinent to the problem with which they were concerned (App. Br. 7). Appellants also argue that the biocompatible metal particles of Melican are mixed with the polymer solution which forms the foam component and are not deposited on any PGA layer as required by claim 1 (id. at 8). The Examiner considers Appellants’ non-analogous art argument to be unpersuasive because “the claim language requires a ‘composite . . .’ [and] [t]he implant of Melican et al. is a composite” (Ans. 11). As for Appeal 2013-008524 Application 12/716,033 5 Appellants’ argument that the metal particles of Melican are not deposited on a PGA layer, the Examiner states that Melican’s step of adding the polymer solution with metal particles to a mold which contains a PGA reinforcing component “is clearly a step in which the metal particles are deposited on the mesh-like reinforcing component” (id. at 12). We agree with Appellants that Melican is not analogous art. The Examiner’s opposing view apparently is based on the proposition that the inventions of Melican and claim 1 are in the same field of endeavor because they are both directed to composites. However, such a proposition so broadly characterizes the field of Appellants’ endeavor as to render meaningless this aspect of the test for non-analogous art. Here, the Examiner has failed to “correctly set the field of the invention by consulting the structure and function of the claimed invention as perceived by one of ordinary skill in the art.” In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004). We also agree with Appellants that the Examiner has not established that Melican deposits metal on a PGA layer as required by claim 1. The Examiner provides no support for the above statement that Melican’s metal particles are deposited on the PGA reinforcing component. For all we know based on the record before us, these particles are fully suspended in the foam component and therefore are not even capable of depositing on the PGA reinforcing component. To the extent the Examiner believes such fully suspended particles somehow satisfy the claim 1 requirement of being “deposited on” a PGA layer, we observe that the Examiner has not provided the claim interpretation analysis required to support such a belief. Appeal 2013-008524 Application 12/716,033 6 Therefore, we do not sustain the § 103 rejection of claims 1, 9, and 16. The decision of the Examiner is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART cdc