3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Nov 13, 2020

2020000287 (P.T.A.B. Nov. 13, 2020)

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.
15/131,283 04/18/2016 William W. Merrill 56702US029 8341
32692 7590 11/13/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
CHAPEL, DEREK S
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
11/13/2020 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM W. MERRILL, JEFFERY N. JACKSON, ANDREW
T. RUFF, JOHN A. WHEATLEY, and DENNIS L. KRUEGER
Appeal 2020-000287
Application 15/131,283
Technology Center 2800
Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

The Appellant2 appeals under 35 U.S.C. § 134(a), from the
Examiner’s decision finally rejecting claim 1.3

1 This Decision includes citations to the following documents: Specification
filed April 18, 2016, as amended (“Spec.”); Final Office Action dated Dec.
20, 2018 (“Final Act.”); Appeal Brief filed May 15, 2019 (“Appeal Br.”);
Examiner’s Answer dated Aug. 19, 2019 (“Ans.”); and Reply Brief filed
Oct. 18, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real parties in interest as 3M
Company and 3M Innovative Properties Company. Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2020-000287
Application 15/131,283

2

We REVERSE.
CLAIMED SUBJECT MATTER
The invention relates to an apparatus for making transversely drawn
films with substantially uniaxial character. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A stretcher for processing a film, the stretcher
comprising:
means for grasping edge portions of a film;
means for conveying the film in a machine direction; and
means for moving the opposing grasped edge portions
along diverging, substantially parabolic paths to form a
stretched film.
Appeal Br. 7 (Claims App.).
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Kwack US 4,862,564 Sept. 5, 1989
Weber US 6,531,230 B1 Mar. 11, 2003

REJECTION
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kwack in view of Weber.
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OPINION
The Examiner found that Kwack discloses a stretcher as recited in
claim 1 except that Kwack’s means for4 moving is not configured to move a
film’s opposing grasped edge portions along diverging, substantially
parabolic paths. See Final Act. 8. The Examiner found that Weber discloses
a stretched film having a quadratic cross section (id.), which the Examiner
interprets as “substantially parabolic” (Ans. 6). The Examiner determined
that the ordinary artisan would have modified Kwack’s film stretching path
shape “to include the teachings of Weber so that the stretch path has a
substantially parabolic pat[]h shape, for the purpose of stretching the film in
a desired manner to achieve desired optical and physical film
characteristics.” Final Act. 8. The Examiner additionally found that the
ordinary artisan would have modified Kwack’s curvilinear stretch path to
form a substantially parabolic stretch path as a matter of routine optimization
“for the purpose of having a constant stretch rate all along a stretch zone to
achieve desired optical and physical characteristics in the stretched film.” Id.
at 9.
The Appellant disputes the Examiner’s finding that Weber discloses
or suggests stretching a film to form a quadratic (or parabolic) cross section.
Appeal Br. 3. The Appellant argues that Weber’s description of a quadratic
cross-sectional area pertains to extruded resin fluid streams exiting a

4 The Examiner interpreted the claim 1 “means for” language in accordance
with 35 U.S.C. § 112, sixth paragraph. See Final Act. 3–5. The Appellant
does not disagree with the Examiner’s interpretations. See generally Appeal
Br. 3–5.
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Application 15/131,283

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multiplier that have not yet been cast into films. Id. The Appellant’s
argument is supported by Weber’s disclosure. See, e.g., Weber 32:43–54.
In response, the Examiner argues that Weber’s disclosure nevertheless
is relevant to Kwack’s film stretching system because Weber controls the
flow channel shape “to provide control of the expansion/widening and
thickness (i.e. the cross sectional shape) of the film layers.” Ans. 6 (citing
Weber 30:1–13). In the relied-upon disclosure, Weber teaches that a “type of
multiplier useful for producing high quality multilayer optical films in
accordance with the present invention utilizes asymmetric expansion of the
flow stream to correct for differences in volumetric flow rates.” Weber
30:1–4. According to Weber, “[t]his type of multiplier allows for a
prescribed ratio of layer thicknesses to be obtained in the composite stream,
without introducing thickness variations or interfacial disturbances in the
layers of the composite stream.” Id. at 30:10–13 (emphasis added).
We are persuaded that the Examiner has not explained sufficiently
why Weber’s description of the fluid profile in the multiplier would have
suggested modifying the profile used in Kwack’s apparatus to stretch a film
cast from the stream. See Reply Br. 2 (“[T]he shape of the fluid profile in the
multiplier obviously has nothing to do with the stretch profile in the
tenter . . . .). Moreover, we note that the Examiner has not identified, nor do
we find, a teaching in Weber that using the fluid path’s profile as the film-
stretching profile would provide any benefit to the film. See generally
Weber 38:25–48:57 (discussing film formation and stretching); see also id.
at 33:2–7 (“[T]he layer thickness distribution and uniformity needs of the
optical films made in accordance with the method and apparatus of the
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present invention can frequently be better and more economically met by the
use of multipliers which do not maintain rectangularity of cross-section in
the flow channels used to re-stack the split streams.” (emphasis added)).
The Appellant further argues that the Examiner has not provided any
evidence or reasoning to support a finding that “one of ordinary skill in the
art would have had any reasonable expectation that changing the exponential
stretch path of Kwack to a substantially parabolic stretch path would have
resulted in any improved optical or physical characteristics of the resulting
film.” Appeal Br. 5. The Examiner contends that because Kwack discloses
that an appropriate curvilinear stretch profile can be chosen “through trial
and error or by computer, it would have been obvious to one of ordinary
skill in the art at the time the invention was made to modify the film
stretching path shape to be substantially parabolic (e.g. quadratic).” Ans. 6.
Kwack discloses that “[t]he exponentially widening profile [of the
stretching path], in accordance with Equation I, may be calculated by trial
and error methods for a given line speed . . . . Such methods are perfectly
adaptable to be carried out by a computer.” Kwack 4:49–53. The Appellant
has argued persuasively that this disclosure is insufficient to support a
finding that achieving a substantially parabolic profile would have been a
matter of routine optimization or that it would have been obvious to try a
substantially parabolic profile in Kwack’s film-stretching apparatus. See
Reply Br. 2–3. At most, Kwack suggests optimizing the explicitly-disclosed,
exponentially-widening profile, but does not suggest optimizing to achieve
an entirely different profile, and the Examiner has not identified a finite
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number of predictable profiles or direction in the prior art to select a
parabolic path.
CONCLUSION
For the above reasons, we are persuaded of reversible error in the
Examiner’s conclusion of obviousness. Accordingly, we do not sustain the
rejection of claim 1.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1 103(a) Kwack, Weber 1

REVERSED