Massimo Pignatelli et al.

Patent Trials and Appeals Board

Dec 23, 2019

13144211 - (D) (P.T.A.B. Dec. 23, 2019)

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.
13/144,211 09/15/2011 Massimo Pignatelli Jindal-315 3668
146433 7590 12/23/2019
Rao DeBoer Osterrieder, PLLC
1334 Brittmoore Road
Suite 2401
Houston, TX 77043
EXAMINER
KRUER, KEVIN R
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
12/23/2019 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 MASSIMO PIGNATELLI and STEPHANE PIRE
Appeal 2019-001171
Application 13/144,211
Technology Center 3600
Before DANIEL S. SONG, STEFAN STAICOVICI, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8, 10–13, and 15–21.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Jindal Films
Americas LLC. Br. 3.
2 Claims 9 and 14 are cancelled. Br. 14–15 (Claims App.).
Appeal 2019-001171
Application 13/144,211
2
CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to a method of producing film
structures that have ethylene vinyl alcohol polymer (“EVOH”) and
fluoropolymer in a skin layer, wherein the method uses plasma treatment
followed by metallization. Spec. ¶ 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. A process of making multilayer polymer film, comprising:
(a) co-extruding a film substrate having a core layer
comprising polyolefin and a skin layer comprising EVOH and at
least 1 wppm of fluoropolymer, wherein the fluoropolymer is
molten for the co-extruding with the EVOH;
(b) orienting, subsequent to the co-extruding, the film
substrate in at least one of a machine direction and a transverse
direction;
(c) treating, subsequent to the orienting, said skin layer
with plasma; and
(d) metallizing, subsequent to the treating, said film
substrate with one or more metals,
whereby, the multilayer polymer film produced by the
process has water vapor and oxygen transmission rates lower
than the co-extruded, oriented, metallized multilayer polymer
film with the fluoropolymer but without the treating.
Br. 13 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Appeal 2019-001171
Application 13/144,211
3
Name Reference Date
Gold US 4,434,259 Feb. 28, 1984
Priester US 5,707,569 Jan. 13, 1998
Touhsaent US 5,827,615 Oct. 27, 1998
Blemberg US 6,500,514 B1 Dec. 31, 2002
Peet US 6,632,383 B1 Oct. 14, 2003
Korowicki US 2006/0159860 A1 July 20, 2006
Amos US 7,375,157 B2 May 20, 2008

EVIDENCE
The evidence relied upon by Appellant is:
Name Reference Date
Dupont Teflon® Finishes in
the Chemical
Processing Industry
NA

REJECTIONS
I. Claims 1–8, 10–13, 15, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Touhsaent, Peet, and Korowicki.3
II. Claims 16–18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Touhsaent, Peet, Korowicki, and Amos.
III. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Touhsaent, Peet, Korowicki, and Blemberg.

3 The Examiner relies on Priester as evidence the fluoropolymer disclosed by
Peet (hexafluoropropylene) “is known to be molten or fluid at the processing
[temperature] of polyolefins” and on Gold as evidence “that metallized films
applied to smooth (e.g. uniformly gauged) films are known in the art to
exhibit improved gloss properties compared to metallized layers applied to
rough surfaces.” Final Act. 3; see also Ans. 4. Appellant does not contest
these findings. See Br. 7–11.
Appeal 2019-001171
Application 13/144,211
4
OPINION
Rejection I–Touhsaent, Peet, and Korowicki
Appellant argues for the patentability of the claims subject to the first
ground of rejection, i.e., claims 1–8, 10–13, 15, 19, and 20, as a group. Br.
7–11. We select claim 1 as representative of the group, and claims 2–8, 10–
13, 15, 19, and 20 stand or fall with claim 1.
The Examiner finds that Touhsaent discloses many of the steps recited
in claim 1, including treating a skin layer that includes EVOH, but does not
disclose (i) that the skin layer includes fluoropolymer and (ii) that the
treatment comprises plasma treatment. Final Act. 2–3.
Addressing the first of these deficiencies, the Examiner finds that Peet
discloses that “the addition of a fluoropolymer provides a more uniform
distribution of polymer flow through a die.” Id. at 2 (citing Peet, Abstract).
Based on this finding, the Examiner reasons that it would have been obvious
to a person of ordinary skill in the art to incorporate fluoropolymer in the
EVOH layer of Touhsaent “to ease processing and obtain a more uniformly
gauged film.” Id. at 3.
Addressing the second deficiency, the Examiner finds that Korowicki
discloses “a method of improving the OTR [oxygen transmission rate] and
WVTR [water vapor transmission rate] of a metallized film wherein a film is
subjected to plasma treatment in a metallization chamber.” Id. (citing
Korowicki ¶¶ 11, 17). The Examiner determines that it would have been
obvious to a person of ordinary skill in the art “to utilize the plasma
treatment method of Korowicki on the films of Touhsaent in order to
improve the OTR properties of the film.” Id.
Appeal 2019-001171
Application 13/144,211
5
Peet
Appellant argues that Peet’s reason for using fluoropolymer is
different from Appellant’s reason. Br. 8. Appellant also argues that Peet
teaches providing fluoropolymer only on the inside of a film, not on a skin
layer (the outermost layer). Id. Based on these contentions, Appellant
asserts “a person of ordinary skill would not look to Peet as analogous art
due to the varied usage of fluoropolymer in the film structure and the
different purpose achieved by the present invention relative to Peet.” Id.
Appellant also refers to Dupont as evidence that “an ordinarily skilled
artisan knows that adding fluoropolymer deteriorates oxygen transmission
rate (‘OTR’) and water[-]vapor transmission rate (‘WVTR’) and that
correction is had by increasing film thickness.”4 Br. 9. Based on the
disclosure in Dupont, Appellant argues, “[i]f anything, an ordinarily skilled
artisan would think that Touhsaent in view of Peet would mean adding
fluoropolymer to the core as a processing aid has a side effect of decreasing
the film’s barrier properties, something that Appellant does not claim.” Id.
In response, the Examiner states that, even assuming for the sake of
argument that Peet’s reason for adding fluoropolymer is different from
Appellant’s, the Examiner’s stated reason for modifying the film of
Touhsaent to incorporate fluoropolymer as taught by Peet (improved gauge
uniformity) is supported by rational underpinnings. Ans. 7. In other words,
according to the Examiner, the fact that Appellant’s reason and the
Examiner’s reason for adding fluoropolymer are different does not identify
error in the Examiner’s rejection. In any event, the Examiner also finds that
“both Peet and Appellant add fluoropolymer to an EVOH composition in an

4 Appellant does not cite to any particular part of Dupont.
Appeal 2019-001171
Application 13/144,211
6
attempt to reduce surface imperfections resulting during processing through
a die.” Id. (citing Peet, Abstract).
As for Appellant’s contention that Peet discloses fluoropolymer in an
inside layer, but not on a skin layer, the Examiner finds that “Peet teaches
the fluoropolymer is added at least to the base layer,” which, according to
the Examiner, means that Peet may provide fluoropolymer in other layers,
such as a skin layer, as well. Ans. 8 (emphasis added).
Regarding Appellant’s allegation that a person of ordinary skill in the
art would think “adding fluoropolymer to the core as a processing aid has a
side effect of decreasing the film’s barrier properties,” (Br. 9), the Examiner
reiterates that Korowicki is relied upon to teach applying plasma to improve
the barrier properties of the skin layer. Ans. 9. According to the Examiner,
Appellant’s comparison of the barrier properties a film that contains
fluoropolymer to the barrier properties of a film that does not contain
fluoropolymer does not address the rejection because Peet is relied on to
teach the addition of fluoropolymer for purposes of improved uniformity
(not improved barrier properties), and Korowicki is relied upon to teach
improved barrier properties resulting from plasma treatment of the skin
layer.
Additionally, despite the Examiner’s reliance on Peet to disclose
fluoropolymer in a skin layer, the Examiner states, “Touhsaent does teach a
five-layer embodiment wherein a fluoropolymer is added to the EVOH layer
to avoid dye build up (col 11, lines l+).” Id. at 7 (emphasis added). Thus,
the Examiner finds that Touhsaent discloses fluoropolymer in its skin layer.5

5 In the Final Office Action, the Examiner found that Touhsaent does not
disclose fluoropolymer in its “composition.” Final Act. 2. In the Answer,
Appeal 2019-001171
Application 13/144,211
7
The Examiner has the better position with respect to the proposed
combination of the teachings of Touhsaent and Peet.
First, we agree with the Examiner that it is not necessary for the
Examiner’s reason to modify Touhsaent to include fluoropolymer be the
same as the reason disclosed in Appellant’s Specification. “[N]either the
particular motivation nor the avowed purpose of the [Appellant] controls” in
an obviousness analysis. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007). The Examiner’s rationale for modifying the EVOH layer in
Touhsaent to include fluoropolymer for the purpose of easing processing and
improving gauge uniformity is supported by the explicit disclosure in Peet.
Peet, Abstract, 1:35–46. We also agree with the Examiner that the benefit
disclosed in Peet, namely, to “provide[] a more uniform distribution of
polymer flow through a die,” is not unlike the benefit Appellant discloses
related to the addition of fluoropolymer. “Fluoropolymer may be added to
the skin layer as processing aid to allow trim recycling and/or improve the
metal appearance in the metallization by reducing die lines and scratches.”
Spec. ¶ 4.
Next, we agree with the Examiner that Peet discloses incorporating
fluoropolymer into more than just the base layer of a film. “At least the base
layer of the coextruded polymeric film contains a fluoropolymer.” Peet,
Abstract (emphasis added). “The fluoropolymer may be added to at least
the base layer. Preferably, the fluoropolymer is included in the base layer.”
Id. 3:41–42 (emphasis added). Thus, Peet suggests, if not discloses, adding
fluoropolymer to a skin layer. In any event, even if Peet did not discuss

the Examiner does not explain why, in view of the finding that Touhsaent
discloses this material, the rejection need rely on Peet. See Ans. 7–10.
Appeal 2019-001171
Application 13/144,211
8
adding fluoropolymer to layers aside from the base layer, the Examiner’s
reasoning for including fluoropolymer in the skin layer of Touhsaent still
applies. Specifically, the Examiner’s reasoning that the addition of
fluoropolymer would improve the uniformity of Touhsaent’s EVOH layer
(“in order to ease processing and obtain a more uniformly gauged film”)
does not rely on any disclosure in Peet of adding fluoropolymer to a skin
layer. Final Act. 3. Thus, Appellant’s argument that Peet discloses adding
fluoropolymer to a base layer (rather than a skin layer) does not address the
Examiner’s statement of the rejection of claim 1.
Finally, regarding Appellant’s discussion of Dupont and the possible
effect of degrading6 a film’s barrier properties by adding fluoropolymer (Br.
9), we agree with the Examiner that the rejection relies on Peet to teach the
addition of fluoropolymer based on the benefits it provides during
processing (e.g., ease of processing and enhanced gauge uniformity), not for
benefits related to improved barrier properties. See Final Act. 3. As
discussed above, the Examiner’s proposed combination of the teachings of
Touhsaent and Peet is supported by rational underpinnings. The rejection of
claim 1 relies on Korowicki and its disclosure of plasma processing to

6 To the extent Appellant relies on Dupont to teach away from the addition
of fluoropolymer to the skin layer in Touhsaent, we agree with the
Examiner’s finding (Ans. 7) that Touhsaent already discloses a
fluoropolymer added to an EVOH skin layer. Specifically, Example 2 of
Touhsaent (hereinafter “Example 2”) discloses “a surface skin layer of a
polymer blend of about 99 wt. % of a copolymer . . . about 52 mol % of
vinyl alcohol (EVOH) and about 1 wt. % of a fluoropolymer . . . to prevent
melt disturbance from dye build up.” Touhsaent 11:7–11 (emphasis added).
See also Peet 2:46–48 (“U.S. Pat. No. 5,827,615 to Touhsaent, et al.
discloses a metallized film substrate in which about 1 wt % of a
fluoropolymer is used in a surface skin layer.”).
Appeal 2019-001171
Application 13/144,211
9
address the requirement in claim 1 that the film have water vapor and
oxygen transmission rates lower than the same film with fluoropolymer, but
without plasma treating. See id. Appellant provides no specific citation to
any part of Dupont indicating that a person of ordinary skill in the art would
have been led away from the use of fluoropolymer, in the film of Touhsaent,
as proposed by the Examiner. Indeed, rather than support Appellant’s
argument, Dupont appears to support the use of fluoropolymer and to
address how to remedy its permeation-related deficiencies, without
commenting on its use in thin films used for food packages (such as
disclosed by Touhsaent). “This technical bulleting . . . deals with the effects
of permeation in the context of the harsh chemical environment to which
coated parts are exposed (and not, for example, to the common thin plastic
wraps used in the food packaging industry).” Dupont 1, col. 1, ll. 11–17.
“Fluoropolymers have outstanding chemical resistance. When integrated
into a well-designed and properly applied coating system, Teflon® coatings
from DuPont provide a superior alternative to any of the competitive
coatings . . . These new coatings clearly demonstrate that the effects of
permeation can be managed.” Id. at 11, col. 1, ll. 14–21 (emphasis added).
Korowicki
Appellant argues “Korowicki provides no teaching or suggestion to
more than cure the detrimental effects to barrier transmission rates wrought
by processing aids, e.g., a fluoropolymer, as is the case in Appellant’s
claimed invention.” Br. 9. Appellant also contends “results, such as those
shown in [Appellant’s] Table 1, are counter-intuitive and unexpected, and,
for that reason, also overcome obviousness.” Id. at 10; see also Spec. ¶ 46
(including what, although unlabeled, appears to be “Table 1” because it is
the only table in Appellant’s Specification). Appellant further contends
Appeal 2019-001171
Application 13/144,211
10
[b]eyond surface cleaning, however, fluoropolymer is still in
[Korowicki’s] film, and Korowicki’s plasma-treating does not
teach anything about the bulk character of Appellant’s dissimilar
EVOH/fluoropolymer blend, much less “whereby, the multilayer
polymer film produced by the process has water vapor and
oxygen transmission rates lower than the co-extruded, oriented,
metallized multilayer polymer film with the fluoropolymer but
without the treating.”
Id.
In response, the Examiner finds that the teachings of Korowicki
regarding plasma treatment are presented as being generally applicable to all
films, and Appellant provides no object evidence or technical argument
suggesting why Korowicki’s teachings would not be applicable to
fluoropolymer containing films or why one of ordinary skill in the art would
not have had a reasonable expectation of success when applying
Korowicki’s general teachings to a fluoropolymer containing film. Ans. 9–
10.
The Examiner has the better position on this point. Korowicki
discloses “[a] plasma treated metallized plastic film is provided with
super high barrier properties at substantially low cost.” Korowicki, Abstract.
Korowicki teaches that polymer films suitable for metallization can be
treated to enhance moisture and gas barrier properties. Id. ¶¶ 5, 11, 16–17.
Korowicki explains that such treatments include corona,7 flame, chemical,
and plasma treatments, and Korowicki’s disclosure focuses on plasma
treatment performed inside a metallization apparatus. Id. Thus, a
preponderance of the evidence supports the Examiner’s finding that

7 Touhsaent discloses treating skin layers with corona discharge. Touhsaent
11:25–26.
Appeal 2019-001171
Application 13/144,211
11
Korowicki teaches the general application of plasma treatment to films
containing polymers to enhance moisture and gas barrier properties. The
teachings of Korowicki undermine Appellant’s assertion (Br. 9–10 (citing
Table 1)) that it was counterintuitive that plasma treatment of fluoropolymer
would result in reduced water vapor and oxygen transmission. Rather,
Korowicki explicitly discloses that plasma treatment reduces water vapor
and oxygen transmission. Korowicki ¶¶ 11, 16–17, 37–39. Thus,
Appellant’s Table 1 merely discloses, in numerical format, the same
improvement disclosed by Korowicki, i.e., an improvement in barrier
properties as a result of plasma treatment. Further, we agree with the
Examiner that a person of ordinary skill in the art would have had a
reasonable expectation of success in applying Korowicki’s general teaching
to films containing fluoropolymers, which are a type of polymer. In this
regard, Appellant provides no explanation as to why Korowicki’s method,
which is disclosed as applying to various polymers, would not be expected
to work in a similar manner with fluoropolymer.
We have considered all of Appellant’s arguments in support of the
patentability of claim 1, but find them unavailing. Accordingly, we sustain
the rejection of claim 1. Claims 2–8, 10–13, 15, 19, and 20 fall with claim
1.
Rejections II and III— Touhsaent, Peet, Korowicki, Amos, and Blemberg
Appellant does not make arguments for the patentability of claims 16–
18 and 21 aside from those discussed above regarding claim 1. See Br. 7–
11. Accordingly, for the same reasons, we sustain the rejection of claims
16–18 and 21 (Rejections II and III).

Appeal 2019-001171
Application 13/144,211
12

CONCLUSION
The Examiner’s rejections are affirmed.

DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–8, 10–13,
15, 19, 20
103(a) Touhsaent, Peet,
Korowicki
1–8, 10–
13, 15, 19,
20

16–18 103(a) Touhsaent, Peet,
Korowicki, Amos
16–18
21 103(a) Touhsaent, Peet,
Korowicki, Blemberg
21

Overall
Outcome
1–8, 10–
13, 15–21

TIME PERIOD FOR RESPONSE
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