Nils Toft et al.

Patent Trials and Appeals Board

Mar 14, 2022

2020006462 (P.T.A.B. Mar. 14, 2022)

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. 13/382,490 01/05/2012 Nils Toft 1027651-000650 6712 21839 7590 03/14/2022 BUCHANAN, INGERSOLL & ROONEY PC 1737 KING STREET SUITE 500 ALEXANDRIA, VA 22314-2727 EXAMINER LOWREY, DANIEL D ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 03/14/2022 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NILS TOFT, MAGNUS WIJK, MAGNUS RÁBE, and EVA EHRENBERG Appeal 2020-006462 Application 13/382,490 Technology Center 1700 Before DONNA M. PRAISS, JENNIFER R. GUPTA, and SHELDON M. MCGEE, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 1 In this Decision, we refer to the Specification filed January 5, 2012 (“Spec.”); the Final Office Action dated May 15, 2019 (“Final Act.”); the Appeal Brief filed January 15, 2020 (“Appeal Br.”); the Claims Appendix to the Appeal Brief filed January 15, 2020 (“Claims App.”); and the Examiner’s Answer dated April 30, 2020 (“Ans.”). Appeal 2020-006462 Application 13/382,490 2 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-3, 6-11, 19-23, and 25-34. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The present invention relates to a packaging laminate for induction heat sealing into packages for liquid food or beverage. Spec. 1, ll. 6-7. An embodiment of a packaging laminate according to Appellant’s invention is depicted in Appellant’s Fig. 1b, reproduced below with annotations to identify the layers of Appellant’s non-foil packaging laminate. Fig. 1b above is an embodiment of Appellant’s packaging laminate with annotations identifying first paper layer 11, induction sealing durable layer 13 on the inner side of first paper layer 11, metal deposition coating layer 12 deposited on induction sealing durable layer 13, inner liquid tight heat sealable layer 14 applied on the inner side of metal layer 12, and outer 2 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Tetra Laval Holdings & Finance S.A. Appeal Br. 2. Appeal 2020-006462 Application 13/382,490 3 liquid tight heat sealable layer 15 applied on the outer side of paper layer 11.3 Spec. 25, ll. 12-29. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A non-foil packaging laminate for induction heat sealing into packages for liquid food or beverage, the non-foil packaging laminate comprising at least one, first layer of paper or other cellulose-based material [11], which first layer of paper or other cellulose- based material possesses an inner side and is pre-coated with an induction sealing durable coating layer [13] so that the induction sealing durable coating layer is in direct contact with the inner side of the first layer of paper or other cellulose-based material to form a pre-coated first paper layer, an induction heat susceptible metal layer [12], the induction heat susceptible metal layer being deposited by vapour deposition directly on the pre-coated first paper layer so that the induction heat susceptible metal layer is directly deposited on the induction sealing durable coating layer, and at least one layer of liquid-tight, heat sealable thermoplastic polymer material applied onto an inner side of the induction heat susceptible metal layer [14], the induction heat susceptible metal layer causing heating and melting of the heat sealable thermoplastic polymer material to induce heat sealing in the heat sealable thermoplastic polymer material when the induction heat susceptible metal layer is subjected to a magnetic field during a heat sealing operation, 3 Claim 1 does not require an outer liquid tight heat sealable layer 15 applied to the outside of paper layer 11 as depicted in Fig. 1B shown above. Appeal 2020-006462 Application 13/382,490 4 the induction sealing durable coating layer providing a smooth receiving surface for the induction heat susceptible metal layer and supporting the induction heat susceptible metal layer during the heat sealing operation, the induction sealing durable coating layer being formed from a composition mainly comprising a polymer selected from the group consisting of PVOH, water dispersible EVOH or starch, and the liquid-tight, heat sealable thermoplastic polymer material being polyethylene. Claims App. 1 (indentation, paragraphing, bracketed numbers from Appellant’s Figure 1b, and emphasis highlighting the disputed limitations added). Independent claim 11 is directed to a non-foil packaging laminate and independent claim 26 is directed to a packaging laminate; both claims 11 and 26 require a laminate with a similar layered arrangement as in independent claim 1, i.e., a laminate comprising: a first layer of paper or other cellulose-based material [11], an induction sealing durable coating layer in direct contact with an inner side of the first layer [13], an induction heat susceptible metal layer deposited on the induction sealing durable coating layer [12], and at least one layer of liquid-tight, heat sealable thermoplastic polymer material [14] applied onto an inner side of the induction susceptible metal layer, the liquid-tight, heat sealable thermoplastic polymer material being polyethylene. Claims App. 3-4, 5-6. Claim 11 also requires the induction sealing durable coating layer “being formed from a composition mainly comprising a polymer selected Appeal 2020-006462 Application 13/382,490 5 from the group consisting of polyvinyl alcohol, water dispersible ethylene vinyl alcohol, polyvinylidenechloride, water dispersible polyamide, polysaccharide, polysaccharide derivatives, starch, starch derivatives and combinations of two or more thereof.” Id. at 4. REJECTIONS The Examiner maintains the following rejections on appeal (Ans. 3; Final Act. 2-15): Rejection I: Claims 1-3, 6-11, 19-23, and 25-34 under 35 U.S.C. § 112, second paragraph, as indefinite; Rejection II: Claims 1-3,4 6-11, 19-23, 25-28, and 31-34 under 35 U.S.C. § 103(a) as unpatentable over DE ’1935 in view of Wuest;6 Rejection III: Claims 29 and 30 under 35 U.S.C. § 103(a) as unpatentable over DE ’193 in view of Wuest and Lu;7 Rejection IV: Claims 29 and 30 under 35 U.S.C. § 103(a) as unpatentable over DE ’193, Wuest, and WO ’255;8 4 Although the Examiner includes claim 4 in the statement of rejection (Final Act. 3), Appellant canceled claim 4 in the Amendment and Reply filed January 22, 2019. Thus, for clarity we omit claim 4 from the statement of rejection. 5 DE 44 45 193 A1, published July 6, 1995. We refer to the English translation of record of DE ’193 cited by the Examiner. 6 Wuest et al., US 2009/0110888 A1, published April 30, 2009. 7 Lu, US 2009/0098395 A1, published April 16, 2009. 8 Toft et al., WO 2009/112255 A1, published September 17, 2009. Appeal 2020-006462 Application 13/382,490 6 Rejection V: Claims 1-3,9 8, 9, 20-22, and 26-28 under 35 U.S.C. § 103(a) as unpatentable over Lacy10 and Wuest; Rejection VI: Claims 6, 29, and 30 under 35 U.S.C. § 103(a) as unpatentable over Lacy, Wuest, and Lu; and Rejection VII: Claims 6, 29, and 30 under 35 U.S.C. § 103(a) as unpatentable over Lacy, Wuest, and WO ’255. DISCUSSION Rejection I - Indefiniteness The Examiner finds that because the term “smooth” in claims 1, 11, and 26 is not defined by the claim and the Specification does not provide a standard for ascertaining the requisite degree, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Final Act. 2. A claim is indefinite under 35 U.S.C. § 112 when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (“Indefiniteness, as a subset of claim construction, is a question of law . . . .”). Appellant argues that the discussion near the bottom of page five of the Specification explains that the induction sealing coating layer provides a “smooth” receiving surface in that “the induction sealing durable coating layer provides a surface that is well suited for receiving and supporting the metal vapour deposition coating compared to the prior art.” Appeal Br. 12. Appellant further argues that one of the named inventors, Magnus Rábe, 9 Although the Examiner identifies the rejection as applicable to claim 4, because Appellant canceled claim 4 (see supra note 4), we omit it from the statement of rejection. 10 Lacy, US 3,480,464, issued November 25, 1969. Appeal 2020-006462 Application 13/382,490 7 submitted a Declaration under 37 C.F.R. § 1.132 executed June 23, 2016 (“Mr. Rábe’s Declaration”), explaining that pre-coating the non-smooth surface of the cellulose-based material layer (paper layer) provides “a smooth receiving surface that supports the vapor deposited metal layer in a way that produces the desired bond, particularly during [] subsequent heat sealing.” Id. Although page five of Appellant’s Specification and Mr. Rábe’s Declaration discuss that the induction sealing durable coating layer provides a “smooth” receiving surface for the induction heat susceptible layer, Appellant does not explain how the Specification or Mr. Rábe’s Declaration provides any standard for ascertaining how to determine whether a surface would be “smooth” for the purposes of this invention. See In re Packard, 751 F.3d at 1313 (Fed. Cir. 2014) (“Given the role of the applicant in the process, it is a reasonable implementation of the examination responsibility, as applied to § 112(b), for the USPTO, upon providing the applicant a well- grounded identification of clarity problems to demand persuasive responses on pain of rejection.”). On the record before us, the Examiner has established a prima facie case for the § 112, second paragraph, rejection, and Appellant has failed to identify reversible error in this rejection. Thus, we sustain the Examiner’s rejection of claims 1-3, 6-11, 19-23, and 25-34 as indefinite. Although we sustain the Examiner’s rejection of claims 1-3, 6-11, 19-23, and 25-34 as indefinite, we need not speculate about the meaning of the indefinite language to consider the merits of the rejections under 35 U.S.C. § 103(a) discussed below. Appeal 2020-006462 Application 13/382,490 8 Rejections II-IV - Obviousness Rejections over DE ’193 and Wuest alone or further in view of Lu or WO ’255 The dispositive issue regarding these rejections is whether the Examiner reversibly erred in finding that the combination of DE ’193 and Wuest teaches or suggests a laminate as in independent claims 1, 11, and 26-a laminate that includes a first layer of paper possessing an inner side that is pre-coated with an induction sealing durable coating layer, an induction heat susceptible metal layer directly deposited on the induction sealing durable coating layer, and a layer of liquid-tight, heat sealable thermoplastic polymer material applied onto an inner side of the induction heat susceptible metal layer, the liquid tight, heat sealable thermoplastic polymer material being polyethylene.11 The Examiner finds, inter alia, that DE ’193 teaches a packaging material that includes a paper/cardboard substrate, a first, barrier layer deposited on the paper substrate (corresponding to the claimed “induction sealing durable coating layer”), a metal layer deposited on the first layer (corresponding to the claimed “induction heat susceptible metal layer”), and a cover layer of a film-forming polymer deposited on the metal layer (corresponding to the claimed “liquid-tight, heat sealable thermoplastic polymer material”). Final Act. 3 (citing DE ’193, 3-4, ll. 19-19). The Examiner finds that DE ’193 teaches that both the first layer and cover layer contain one or more copolymers or graft copolymers of ethylene. Id. The Examiner finds that the recitation in the claims of the specific properties of the layers, for example, “induction sealing durable,” is merely 11 The Examiner does not rely on Lu or WO ’255 for teaching the claimed laminate’s layered arrangement. See Final Act. 8-10. Appeal 2020-006462 Application 13/382,490 9 an intended use. Final Act. 3. The Examiner finds that because DE ’193’s structure is capable of performing the intended use, its film forming layer is an “induction sealing durable” layer. Id. Appellant argues that DE ’193 fails to disclose a laminate that includes a paper layer that is pre-coated with an induction sealing durable layer and a polyethylene liquid-tight, heat sealable layer as claimed. Appeal Br. 16. Appellant’s arguments identify reversible error in the Examiner’s rejections. Induction Sealing Durable Coating Layer Appellant’s Specification describes that the induction sealing durable coating layer is formed from “a composition mainly comprising a polymer selected from the group consisting of polyvinyl alcohol (PVOH), water dispersible ethylene vinyl alcohol (EVOH), polyvinylidenechloride (PVDC), water dispersible polyamide (PA), water dispersible polyester, polysaccharide, polysaccharide derivatives, including starch and starch derivatives, and combinations of two or more thereof.” Spec. 6, ll. 9-15. Claim 11 tracks the disclosure on page six of Appellant’s Specification and requires that the induction sealing durable coating layer is formed from “a composition mainly comprising a polymer selected from the group consisting of polyvinyl alcohol, water dispersible ethylene vinyl alcohol, polyvinylidenechloride, water dispersible polyamide, polysaccharide, polysaccharide derivatives, starch, starch derivatives and combinations of two or more thereof.” Claims App. 4. Claim 1 requires that the induction sealing durable coating layer is formed from “a composition mainly comprising a polymer selected from the group consisting of PVOH, Appeal 2020-006462 Application 13/382,490 10 water dispersible EVOH or starch.” Id. at 1. Claim 26 does not require that the induction sealing durable coating layer is formed of any particular polymer composition. Id. at 5-6. DE ’193 teaches that its film-forming polymer layer, which the Examiner finds corresponds to the claimed “induction sealing durable coating layer”, contains as the “main” component, one or more copolymers or graft copolymers of ethylene and α,β-ethylenically unsaturated bonds and monomers containing carboxyl groups, or carboxylated styrene-acrylate copolymers or carboxylated or non-carboxylated acrylate polymers or mixtures thereof. DE ’193, 4, ll. 3-7, 13-20. DE ’193 teaches that the “main” component of the film-forming polymers means that the layer contains 70-100 wt%, preferably 90-100 wt% of the copolymer of ethylene and comonomers with α,β-ethylenically unsaturated bonds and carboxyl groups and/or carboxylated styrene/acrylate copolymer and/or carboxylated or non-carboxylated acrylate polymers. Id. at 4, ll. 22-5, ll. 4. Together with the “main” component, DE ’193 teaches that the film-forming polymer layers can include additional polymers/copolymers, such as polyvinyl alcohol. DE ’193, 9, ll. 6-8, 14-16. DE ’193, however, does not teach or suggest that DE ’193’s film forming polymer layers are formed mainly of polyvinyl alcohol or one of the other polymers recited in claims 1 and 11. Because DE ’193’s film forming layers are not formed mainly of the polymers recited in claims 1 and 11,12 the Examiner has not established a 12 The polymers recited in claim 11 are the same polymers listed in Appellant’s Specification as examples of polymers that form the “induction sealing durable coating layer.” Spec. 6, ll. 9-15. Appeal 2020-006462 Application 13/382,490 11 reasonable basis for finding that DE ’193’s film forming layer is capable of functioning as an “induction sealing durable coating layer” as claimed. The Examiner also finds that Wuest teaches an “induction sealing durable coating layer” as claimed. Final Act. 4. The Examiner finds that Wuest teaches a packaging web including a base layer with a vapor deposited metal layer. Id. (citing Wuest ¶ 45). The Examiner finds that Wuest teaches that the possible base layer materials include polyethylene, polyesters, and ethylene/vinyl alcohol copolymers (EVOH). Id. (citing Wuest ¶ 44). The Examiner determines that it would have been obvious to a person having ordinary skill in the art to use EVOH polymers in the first layer and cover layer of DE ’193 “to gain the benefit of improved oxygen barrier, water vapor barrier, and/or sealing properties” as taught by Wuest. Id. (citing Wuest ¶ 5). As Appellant argues, Wuest teaches a flexible packaging web exhibiting improved oxygen barrier, water vapor barrier and/or sealing properties, but, contrary to the Examiner’s finding, Wuest does not attribute those improved properties to the use of EVOH. Appeal Br. 23. Thus, the Examiner reversibly erred in finding that one of ordinary skill in the art would have had a reason to use EVOH as a polymer material in DE ’193’s film forming layers based on Wuest. Liquid-Tight, Heat Sealable Thermoplastic Polymer Material The laminate of claims 1, 11, and 26 requires the liquid-tight, heat sealable thermoplastic polymer material is polyethylene. Claims App. 1, 3- 4, 5-6. As discussed above, DE ’193 teaches that its film-forming polymer layer, which the Examiner finds corresponds to the claimed “liquid-tight, Appeal 2020-006462 Application 13/382,490 12 heat sealable thermoplastic polymer material,” contains as the “main” component, one or more copolymers or graft copolymers of ethylene and α,β-ethylenically unsaturated bonds and monomers containing carboxyl groups, or carboxylated styrene-acrylate copolymers or carboxylated or non- carboxylated acrylate polymers or mixtures thereof. DE ’193, 4, ll. 3-7, 13- 20. DE ’193, however, does not teach or suggest that its film-forming polymer layer is comprised of polyethylene. In fact, DE ’193 teaches that ethylene homopolymers are not used as an additional polymer or copolymer in its film-forming layer. DE ’193, 9, ll. 12-14. The Examiner does not rely on Lu or WO ’255 to cure the deficiencies of DE ’193 and Wuest discussed above. Final Act. 8-10. Because Appellant has identified a reversible error in the Examiner’s rejection, we do not sustain the § 103 rejection of claims 1-4, 6-11, 19-23, and 25-34 over DE ’193 and Wuest, alone or further in view of Lu or WO ’255. Rejections V-VII - Obviousness Rejections over Lacy and Wuest alone or further in view of Lu or WO ’255 As with Rejections II-IV, the dispositive issue regarding Rejections V-VII is whether the Examiner reversibly erred in finding that the combination of Lacy and Wuest teaches or suggests a laminate as in independent claims 1, 11, and 26-a laminate that includes a first layer of paper possessing an inner side that is pre-coated with an induction sealing durable coating layer, an induction heat susceptible metal layer directly deposited on the induction sealing durable coating layer, and a layer of liquid-tight, heat sealable thermoplastic polymer material applied onto an Appeal 2020-006462 Application 13/382,490 13 inner side of the induction heat susceptible metal layer, the liquid tight, heat sealable thermoplastic polymer material being polyethylene. The Examiner finds that Lacy teaches a laminate material for packaging a liquid, such as a package for a food with excellent barrier properties made by heat sealing that includes, in order, a paper substrate layer, a second olefin polymer layer, a third thin metal layer deposited on the second olefin polymer layer, and a fourth olefin polymer layer formed on the metal layer that may be an innermost layer and heat sealable. Final Act. 10 (citing Lacy 2:5-7, 6:58-63). The Examiner finds that the recitation in the claims of the specific properties of the layers, for example, “induction sealing durable,” is merely an intended use. Final Act. 10. The Examiner finds that because Lacy’s structure is capable of performing the intended use, its film forming layer is an “induction sealing durable” layer. Id. at 11. As Appellant persuasively argues, Lacy fails to teach or suggest an induction sealing durable coating layer formed from a composition mainly comprising a polymer as claimed. Appeal Br. 38. As with Rejections II-IV, the Examiner takes the position that it would have been obvious to modify Lacy’s second olefin polymer layer to include EVOH as taught by Wuest. Final Act. 11. The Examiner’s reasoning, however, suffers from the same deficiencies as discussed above with respect to the combination of DE ’193 and Wuest. Because Lacy’s second olefin polymer layer is not formed mainly of the polymers recited in claims 1 and 11, the Examiner has not established a reasonable basis for finding that Lacy’s second olefin polymer layer is capable of functioning as an induction sealing durable coating layer as claimed. Appeal 2020-006462 Application 13/382,490 14 The Examiner does not rely on Lu or WO ’255 to cure the deficiencies of Lacy and Wuest. Id. at 13-15. Because Appellant has identified reversible error in the Examiner’s rejection, we do not sustain the § 103 rejection of claims 1-3, 6, 8, 9, 20-22, and 26-30 over Lacy and Wuest, alone or further in combination with Lu or WO ’255. CONCLUSION The Examiner’s rejection of claims 1-3, 6-11, 19-23, and 25-34 under 35 U.S.C. § 112, second paragraph, is affirmed. We reverse the Examiner’s rejections under 35 U.S.C. § 103(a). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 6-11, 19-23, 25- 34 112 Indefiniteness 1-3, 6-11, 19-23, 25- 34 1-3, 6-11, 19-23, 25- 28, 31-34 103(a) DE ’193, Wuest 1-3, 6-11, 19-23, 25- 28, 31-34 29, 30 103(a) DE ’193, Wuest, Lu 29, 30 29, 30 103(a) DE ’193, Wuest, WO ’255 29, 30 1-3, 8, 9, 20-22, 26- 28 103(a) Lacy, Wuest 1-3, 8, 9, 20-22, 26- 28 6, 29, 30 103(a) Lacy, Wuest, Lu 6, 29, 30 6, 29, 30 103(a) Lacy, Wuest, WO ’255 6, 29, 30 Appeal 2020-006462 Application 13/382,490 15 Overall Outcome 1-3, 6-11, 19-23, 25- 34 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED