Ex Parte Tsumagari et al

Patent Trials and Appeals Board

Mar 27, 2019

13517196 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/517,196 06/19/2012
23460 7590 03/29/2019
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Yumi Tsumagari
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.
710584 8893
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
03/29/2019 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUMI TSUMAGARI, YOJI TAKA TSU, KYOKO
INAGAKI, TAKESHI OKA WA, YOSHIHARU MORIHARA,
and SYUUSEI MATSUDA
Appeal2018-004878
Application 13/517,196
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
BRIAND. RANGE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant (Toyo Boseki Kabushiki Kaisha) appeals under
35 U.S.C. § 134(a) from the Examiner's rejection of claims 1, 2, and 4--13.
We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The claims are to a gas-barrier multilayer film. Claim 1 is illustrative:
I. A gas-barrier multilayer film, wherein
(A) a first inorganic thin film layer, (C) a gas-barrier
resin composition layer, and (D) a second inorganic thin film
layer are stacked in this order with or without intervention of
other layers on at least one surface of a plastic film,
Appeal2018-004878
Application 13/517,196
the gas-barrier resin composition layer (C) is formed
from a gas-barrier resin composition comprising (a) a
gas-barrier resin consisting of an ethylene-vinyl alcohol
copolymer, (b) an inorganic layered compound, and ( c) at least
one additive selected from coupling agents and crosslinking
agents, and the content of the inorganic layered compound (b)
in the gas-barrier resin composition is from 0.1 % by mass to
7.0% by mass based on 100% by mass in total of the gas-barrier
resin (a), the inorganic layered compound (b), and the
additive ( c ), and
the first inorganic thin film layer (A) and/or the second
inorganic thin film layer (D) is a silicon oxide/aluminum oxide
two-component inorganic oxide thin film, wherein the content
of aluminum oxide is 20% by mass to 75% by mass.
Sakaya
Uchida
Tanaka
Fukugami
Matsui
Izeki (abstract)
The References
us 5,942,298
US 6,569,533 Bl
US 2005/0214530 Al
US 2009/0181244 Al
US 2010/0015431 Al
JP 2000-6342 A
The Rejections
Aug. 24, 1999
May 27, 2003
Sept. 29, 2005
July 16, 2009
Jan. 21, 2010
Jan. 11, 2000
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
claims 1, 2, 4, and 6 over Fukugami in view of Uchida and Izeki, claim 5
over Fukugami in view of Uchida, Izeki, and Sakaya, claims 7-10, 12,
and 13 over Fukugami in view of Uchida, Izeki, and Matsui, and claim 11
over Fukugami in view of Uchida, Izeki, and Tanaka.
OPINION
We reverse the rejections. We need address only the sole independent
claim, i.e. , claim 1.
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Appeal2018-004878
Application 13/517,196
Fukugami discloses a laminate made by a process wherein "a
substrate of a plastic film provided on one side thereof with a deposited layer
may be subjected, on the side thereof not provided with the deposited layer,
to pretreatment by plasma treatment followed by directly extrusion-
laminating a thermoplastic resin on the surface treated by the pretreatment"
(i1i1 17, 46). The deposited layer can be an inorganic oxide layer and a gas
barrier film (i1 44). To impart gas barrier properties to the substrate (21 ), a
silicon oxide/aluminum oxide inorganic oxide-deposited layer (22) having a
gas barrier coating (23) which is plasma- or corona discharge-pretreated on
its surface opposite to the inorganic oxide deposited layer (22) can be
positioned between the substrate (21) and the thermoplastic resin layer (24)
such that the thermoplastic resin layer (24) is formed on the gas barrier
coating (23)'s plasma- or corona discharge-pretreated surface (23a) (i1i169,
71; Fig. 5). The gas barrier coating layer (23) can contain an ethylene-vinyl
alcohol copolymer and an inorganic compound (i1i175, 77).
The Examiner interprets Fukugami's disclosure that "[o]n the opposite
surface or the side to the side provided with a thermoplastic resin layer of
the substrate .... [t]his surface may be ... provided with an inorganic
oxide-deposited layer. . . . a deposited layer may be disposed to form a
substrate as a gas battier film" (i1 44) as meaning that the deposited inorganic
oxide-deposited layer and gas barrier film can be on the thermoplastic resin
layer (24) such that the thermoplastic resin layer (24) is between that
inorganic oxide-deposited layer/ gas barrier film and the inorganic
oxide-deposited layer (22)/gas barrier coating layer (23) on the
substrate (21) (Fig. 5) (Ans. 2).
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Appeal2018-004878
Application 13/517,196
Fukugami's inorganic oxide-deposited layer/gas barrier film "on the
side to the side provided with a thermoplastic resin layer" (i1 44) appears to
be the inorganic oxide-deposited layer (22)/gas barrier coating layer (23) on
the substrate (21) (Fig. 5). Fukugami discloses that an inorganic oxide-
deposited layer/ gas barrier film also can be formed on the side of the
substrate (21) opposite to the thermoplastic resin layer (24) (i1 44 ).
Fukugami, however, does not disclose that an inorganic oxide-deposited
layer/gas barrier film can be formed on the thermoplastic resin layer (24).
Uchida discloses a polyurethane resin which can contain a silane
coupling agent and a layered inorganic compound, can be used with an
ethylene-vinyl alcohol copolymer, and has gas barrier properties ( col. 2,
11. 43--47; col. 2, 1. 67 - col. 3, 1. 2; col. 8, 11. 46-54). "T]he silane coupling
agent is effective for improving the adhesion of the gas barrier polyurethane
resin to a base material" ( col. 8, 11. 58-60). "[T]he layered inorganic
compounds are effective for improving the gas barrier properties of the
polyurethane resin" (col. 9, 11. 45--47).
The Examiner finds that "Uchida's motivation for using layered
inorganic compounds can be used to improve gas barrier properties when
combined with Fukugami would be in context with the gas barrier resin such
as EVOH" (Ans. 19), and "[b]oth Fukugami and Uchida are analogous art
and are directed towards the gas barrier film and both EVOH and
polyurethane are gas barrier resins" (id.). The Examiner concludes that it
would have been prima facie obvious to one of ordinary skill in the art to
include Uchida's silane coupling agent and inorganic layered compound in
Fukugami's gas barrier layer to improve the gas barrier properties (Ans. 5).
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Appeal2018-004878
Application 13/517,196
As indicated above, Uchida discloses that the silane coupling agent
and layered inorganic compound improve, respectively, the adhesion and gas
barrier properties of the polyurethane resin. The Examiner does not
establish that one of ordinary skill in the art would have considered Uchida's
silane coupling agent and layered inorganic compound to have those effects
on gas barrier layers generally or Fukugami's gas barrier coating layer (23)'s
ethylene-vinyl alcohol copolymer specifically.
Thus, the Examiner has not set forth a factual basis sufficient to
support a conclusion of obviousness of the Appellant's claimed film. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art."). Accordingly, we reverse the rejections.
DECISION
The rejections under 35 U.S.C. § 103(a) of claims 1, 2, 4, and 6 over
Fukugami in view of Uchida and Izeki, claim 5 over Fukugami in view of
Uchida, Izeki, and Sakaya, claims 7-10, 12, and 13 over Fukugami in view
of Uchida, Izeki, and Matsui, and claim 11 over Fukugami in view of
Uchida, Izeki, and Tanaka are reversed.
The Examiner's decision is reversed.
REVERSED
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