Ex Parte Middleton et al

Patent Trial and Appeal BoardMar 19, 2018

12846159 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/846, 159 07/29/2010 26158 7590 03/21/2018 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 FIRST NAMED INVENTOR Scott W. Middleton 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 ATTORNEY DOCKET NO. CONFIRMATION NO. R029 15661.1 1413 EXAMINER NGUYEN, HUNG D ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 03/21/2018 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): IPDocketing@wbd-us.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT W. MIDDLETON, TIMOTHY H. BOHRER, JEFFREY T. SLOAT, WILLIAM GILPATRICK, and MARK SINCLAIR Appeal2017-002745 Application 12/846, 159 1 Technology Center 3700 Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and ERIC C. JESCHKE, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the rejection of claims 1--42 and 44--46. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part. 1 According to the Appeal Brief, Graphic Packaging International, Inc., is the Real Party in Interest. Appeal Br. 1. Appeal2017-002745 Application 12/846, 159 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A microwave energy interactive structure for use in heating, browning, and/or crisping a surface of an adjacent food item, the structure compnsmg: a polymer film having a birefringence (nz-nx) of less than about 0.15, wherein nz is the refractive index of the polymer film in the machine direction and nx is the refractive index of the polymer film in the thickness direction; and a layer of microwave energy interactive material on the polymer film, the layer of microwave energy interactive material being operative for converting at least a portion of impinging microwave energy into thermal energy for heating, browning, and/ or crisping the surface of the food item. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Condo Oya Merrill Ouderkirk Nevitt Ford Diehl US 2002/0039235 Al Apr. 4, 2002 US 2004/0004760 Al Jan. 8, 2004 US 2005/0019530 Al Jan. 27, 2005 US 2006/0193577 Al Aug. 31, 2006 US 2006/0232863 Al Oct. 19, 2006 US 2007 /0246460 Al Oct. 25, 2007 US 2010/0290117 Al Nov. 18, 2010 REJECTIONS I. Claims 1-3, 7-11, 16-18, 41, and 44 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ford and Condo. II. Claims 4--6 and 42 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ford, Condo, and Merrill. III. Claims 12-15 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ford, Condo, and Diehl. 2 Appeal2017-002745 Application 12/846, 159 IV. Claims 19, 20, 22, 26, 27, 32-34, and 46 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ford and Nevitt. V. Claim 21 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ford, Nevitt, and Ouderkirk. VI. Claims 23-25 and 35-39 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ford, Nevitt, and Oya. 2 VII. Claims 28-31, 40, 3 and 45 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ford, Nevitt, and Diehl. DISCUSSION Rejection 1: Obviousness of Claims 1-3, 7-11, 16-18, 41, and 44 Based on Ford and Condo The Examiner finds that Ford and Condo disclose or suggest all of the limitations of claim 1. See Non-Final Act. 3. In particular, the Examiner finds that Condo "discloses a polymer film (10) having a birefringence (nz- nx) for less than about 0.15, wherein nz is the refractive index of the polymer film in the machine direction" and "nx is the refractive index of the polymer film in the thickness direction." Id. (citation omitted). The Examiner reasons that it would have been obvious "to utilize in Ford et al., a polymer film having a birefringence (nz-nx) for less than about 0.15 ... as taught by 2 Although the Non-Final Action sets forth separate statements of the ground of rejection for claims 23-35 and 35-39, the ground of rejection for these claims is the same. See Non-Final Act. 10, 11-12. Accordingly, we address them together. 3 Although the Non-Final Action provides a separate statement of the ground of rejection for claim 40, it is rejected based on the same ground as claimed 23-25 and 45. See id. at 11, 13. Accordingly, we address these claims together. 3 Appeal2017-002745 Application 12/846, 159 Condo et al., for the purpose of providing strong polymer film (shrink force) and good energy reflection." Id. Appellants contend that "combining the teachings of Condo et al. with those of Ford et al. would not have le []d to the claimed invention." Appeal Br. 25. (Emphasis omitted). In support of this contention, Appellants explain that "the nomenclature of Condo et al. differs from that of the present application" and provide a table indicating the differences in nomenclature. Appellants further explain that because of this difference in nomenclature "[t]he 'birefringence' that Condo et al. is concerned with is 'in-plane birefringence'," whereas "the present application is concerned with birefringence defined as (nz-nx), where nz is the refractive index of the polymer film in the machine direction and nx is the refractive index of the polymer film in the thickness direction." Id. at 25, 26. (Emphasis omitted). Appellants note that this latter birefringence "could be referred to as 'out-of- plane birefringence."' Id. at 26. With this background in mind, Appellants assert that although "the presently claimed birefringence values could have been calculated from the data provided in the examples of Condo ... one of ordinary skill in the art would have had no reason to do so." Appeal Br. 26-27. Appellants argue that: even if one of ordinary skill in the art would have somehow been motivated to calculate such values, since Condo et al. teaches viable films having out-of-plane birefringence values (nx-nz) that are both inside and outside of the presently claimed ranges, one of ordinary skill in the art would not have read Condo et al. and attached any particular significance to films having any particular birefringence value. Id. (citing Bohrer Dec. i-f 8). (Emphasis omitted). 4 Appeal2017-002745 Application 12/846, 159 The Examiner does not respond to this argument by explaining why one skilled in the art would have been motivated to perform the necessary calculations, or why the results of such calculations would be readily apparent to one skilled in the art. Moreover, the Examiner does not explain why one skilled in the art would have selected a birefringence of less than about 0.15 when, to the extent that Condo teaches the claimed birefringence value (i.e., out-of-plane birefringence), Condo teaches as many birefringence values outside of this range as within it. Thus, the Examiner's reasoning lacks rational underpinning. For this reason, we do not sustain the Examiner's decision rejecting claim 1, and claims 2, 3, 7-11, and 16-18 which depend therefrom, as unpatentable over Ford and Condo. The Examiner's rejection of claim 41 suffers from the same deficiency. Accordingly, we do not sustain the Examiner's decision rejecting claim 41, and its dependent claim 44, for the same reasons. Rejections II and III: Obviousness of Claims 4-6 and 42 Based on Ford, Condo, and Merrill Claims 12-15 Based on Ford, Condo, and Diehl The Examiner's reasoning in Rejections II and III suffers from the same deficiency as the reasoning relied upon in Rejection I discussed supra. Accordingly, we do not sustain the Examiner's decisions rejecting claims 4-- 6 and 42 as unpatentable over Ford, Condo, and Merrill and claims 12-15 as unpatentable over Ford, Condo, and Diehl. 5 Appeal2017-002745 Application 12/846, 159 Rejection IV: Obviousness of Claims 19, 20, 22, 26, 27, 32-34, and 36 Based on Ford and Nevitt Claims 19. 20, 26, 27, and 32-34 Appellants argue claims 19, 20, 26, 27, and 32-34 together. See Appeal Br. 33-34;4 see also Reply Br. 1-5 (arguing all of the rejections and references together). We select claim 19 as the illustrative claim, and claims 20, 26, 27, 32-34, and 46 stand or fall with claim 19. See 37 C.F.R. Â§ 41.37(c)(l)(iv). The Examiner finds that Ford and Nevitt disclose or suggest all of the limitations of claim 19. See Non-Final Act. 6-7. In particular, the Examiner finds that Nevitt: discloses a polymer film having at least one polymer film layer (B), wherein the polymer film has a refractive index (nz) of less than 1.64 (Par. 64), wherein nz is the refractive index of the polymer film in the machine direction, and wherein each polymer film layer of the polymer film has a thickness of greater than 0.5 microns. Id. at 7 (citation omitted). Appellants assert that Nevitt is non-analogous art. See Appeal Br. 33. In support of this assertion, Appellants note that Nevitt "makes no mention of using its reflective optical body as a base layer for a susceptor film, or being able to predict or adjust food heating, browning, and/or crisping behavior by adjusting the birefringence of a polymer film, as contemplated by the present invention." Id. "Two separate tests define the scope of analogous prior art." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). These tests are "(1) whether 4 Although claims 22 and 46 are included in this group, they are argued separately. See Appeal Br. 44--45. 6 Appeal2017-002745 Application 12/846, 159 the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." Id. The Examiner finds that Ford and Nevitt "are related to the same technical field, using the polymer film." Ans. 16. 5 In response to this finding, Appellants contend that Nevitt is "so outside the field of knowledge of a person of ordinary skill in the microwave art as to fail to provide any teachings upon which a modification of the base reference can be supported." Reply Br. 1-2. In support of this contention, Appellants note that Ford is classified by the USPTO in class 219, subclass 703, whereas Nevitt is classified in class 359, subclass 586. Id. at 2-3. Appellants further argue that neither Ford nor Nevitt provide support for the proposed modification. See id. at 2. As an initial matter, we note that in determining whether or not prior art is in the same field of endeavor, the question is whether or not the reference is "within the field of the inventor's endeavor." The question is not whether the prior art references are in the same field of endeavor. Thus, Appellants' comparison of Ford's field of endeavor to Nevitt's field of endeavor is not dispositive. According to Appellants' Specification, the instant invention "is directed generally to a polymer film (or film) for use as a base film or substrate in a susceptor film, a method of making such a polymer film, and a susceptor film including the polymer film." Spec. 5:13-15. Nevitt decribes 5 The Answer refers to Condo rather than Nevitt; however, as this statement is at the end of the Examiner's discussion of Nevitt, we understand the reference to Condo to be a typographical error. 7 Appeal2017-002745 Application 12/846, 159 its field of endeavor as "reflective optical bodies including but not limited to films, sheets, and plates, particularly those used in visible light applications such as liquid crystal display (LCD) devices and other electronic display devices, as well as to methods of making and using such optical bodies." Nevitt i-f 1. Although Nevitt indicates that it is particularly directed to LCD and other electronic display devices, Nevitt does not limit its teachings to that field. See id. Rather, Nevitt explicitly states that its field of endeavor includes films. Thus, Nevitt is within Appellants' field of endeavor and qualifies as prior art under the first prong of the test for analogous art discussed supra. Appellants further contend that there is no motivation to combine Nevitt with Ford. See Appeal Br. 33. In support of this contention, Appellants argue that Nevitt "does not provide any indication that its films could be used as base layers for susceptor films, and does not provide any suggestion controlling the thickness of the layers of its multilayer film would have any impact on the microwave heating, browning, and /or crisping behavior of the film" and concludes that one of ordinary skill in the art "would have had no expectation that the films disclosed by Nevitt et al. could be successfully used to form susceptor structures for use in the Ford et al. microwave heating construct." Id. at 34. However, we are not aware of any requirement that the references relied upon in support of a rejection suggest the proposed modification. Rather, this argument is foreclosed by KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), in which the Court rejected the rigid requirement of a teaching or suggestion or motivation to combine known elements in order to show obviousness. KSR, 550 U.S. at 415. The Court noted that an obviousness analysis "need not seek out precise teachings directed to the 8 Appeal2017-002745 Application 12/846, 159 specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418. Moreover, the Examiner provides reasoning in support of the proposed modification. See Non-Final Act. 7. Appellants do not adequately explain why the Examiner's reasoning is flawed or why there would be no reasonable expectation of success. Accordingly, Appellants do not apprise us of error. In addition, Appellants contend that the motivation provided by the Examiner is not supported by the references themselves. See Appeal Br. 34. However, as discussed supra, we are not aware of a requirement that the references suggest the proposed modification. For these reasons, we sustain the Examiner's decision rejecting claim 19, and claims 20, 26, 27, and 32-34, which fall therewith, as unpatentable over Ford and Nevitt. Claim 22 Claim 22 requires a polymer film having uniaxially oriented polyethylene terephthalate. Appeal Br. 49 (Claims App.). Noting that "[t]he cited portion of Nevitt et al. (para. [0064]) provides the refractive indexes for the 'B' coPEN layers of an 'A' /'B' stack of polymer layers" and that Nevitt "states that '[t]hese values are representative of a PEN/coPEN system with uniaxial stretch," Appellants argue that "[ s ]ince PEN is polyethylene naphthalate, not polyethylene terephthalate, as recited in claim 22, the cited portion of Nevitt et al. is insufficient to reject claim 22." Appeal Br. 44--45. Responding to this argument, the Examiner directs our attention to paragraph 106 of Nevitt, which states that Polyethylene terephthalate "may also be used as first polymers in some applications." Nevitt i-f 106. However, it is unclear ifNevitt's "B" layers correspond to the "first 9 Appeal2017-002745 Application 12/846, 159 polymers" referenced in this paragraph. Rather, it would appear that the reference to "first polymers" refers to the "A" layers. Thus, Appellants' argument is convincing. For this reason, we do not sustain the Examiner's decision rejecting claim 22 as unpatentable over Ford and Nevitt. Claim 46 Claim 46 requires a polymer film having a non-zero birefringence. See Appeal Br. 51 (Claims App.). Appellants contend that the birefringence disclosed in Nevitt's paragraph 64 is zero. See id. at 45. The Examiner admits that the birefringence disclosed in this paragraph is zero. See Ans. 3 7. Thus, Appellants' argument is convincing. We do not sustain the Examiner's decision rejecting claim 46 as unpatentable over Ford and Nevitt. Rejection V: Obviousness of Claim 21 Based on Ford, Nevitt, and Ouderkirk Claim 21 requires a polymer film comprising amorphous polyethylene terephthalate and a refractive index (nz) of less than about 1.59. Appeal Br. 49 (Claims App.). The Examiner determines that Ford and Nevitt neither disclose nor suggest these limitations. Non-Final Act. 9. The Examiner finds that Ouderkirk teaches both. Id. at 9--10. Appellants contend that Ouderkirk is non-analogous art. Appeal Br. 35. Noting that Ouderkirk "discloses reflective polarizing polymer optical films that comprise polymer fibers disposed in a polymer matrix," Appellants argue that such disclosure "would not have commended itself to an inventor solving the problem of heating, browning, and/or crisping microwave foods, and is therefore, non-analogous art." Id. (citations 10 Appeal2017-002745 Application 12/846, 159 omitted). Appellants further direct our attention to the Declaration of Timothy H. Bohrer, one of the named inventors. See id. However, as discussed supra, there are two tests for analogous art. See In re Klein, 647 F.3d at 1348. Appellants' and Declarant Bohrer's arguments are directed solely to the second test. See Appeal Br. 35; see also Bohrer Dec. i-f 7. As admitted by Appellants in the statement quoted supra, Ouderkirk (like the instant invention) is directed to polymer films. See, e.g., Ouderkirk i-f 2. Thus, Ouderkirk is in Appellants' field of endeavor and qualifies as analogous art under the first test. Appellants further contend that there is no motivation to combine Ford, Nevitt, and Ouderkirk and that there would not be a reasonable expectation of success because Ouderkirk "makes no mention of using its polarizing optical film as a base layer for a susceptor film, or being able to predict or adjust food heating, browning, and/or crisping behavior by adjusting the refractive index of a polymer film." Appeal Br. 35. However, as discussed supra, we are unaware of any requirement that the references relied upon to reject claims under 35 U.S.C. Â§ 103(a) have the same objectives as the claimed invention. Rather, it is not necessary for the prior art to serve the same purpose as that disclosed in Appellants' Specification in order to support the conclusion that the claimed subject matter would have been obvious. See KSR, 550 U.S. at 419 ("In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the [Appellants] controls."); see also In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). Moreover, Appellants do not adequately explain why the Examiner's reasoning is flawed or why there would be no expectation of success. Thus, Appellants do not apprise us of error. 11 Appeal2017-002745 Application 12/846, 159 In addition, Appellants contend that the motivation provided by the Examiner is not supported by the references themselves. See Appeal Br. 36. However, as discussed supra, we are not aware of a requirement that the references suggest the proposed modification. For these reasons, we sustain the Examiner's decision rejecting claim 21 as unpatentable over Ford, Nevitt, and Ouderkirk. Rejections VI and VII Obviousness of Claims 35-39 Based on Ford, Nevitt, and Oya Obviousness of Claims 40 Based on Ford, Nevitt, Oya, and Diehl Appellants' arguments with respect to Oya and Diehl are similar to Appellants' arguments pertaining to Nevitt and Ouderkirk. Compare Appeal Br. 33-36, with id. at 36-42. These arguments are unconvincing for the reasons discussed supra. We sustain the Examiner's decisions rejecting claims 35-39 as unpatentable over Ford, Nevitt, and Oya and claim 40 as unpatentable over Ford, Nevitt, Oya, and Diehl. DECISION The Examiner's rejections of claims 1-18, 22, 41, 42, 44, and 46 are REVERSED. The Examiner's rejections of claims 19-21 and 23--40, and 45 are AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 12