Ex Parte Abele et al

Board of Patent Appeals and Interferences

Jul 5, 2011

11350172 (B.P.A.I. Jul. 5, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte WOLFGANG P. ABELE, BRIAN CARVILL, MICHAEL D.
HEALY, KWAN HONGLADAROM, and MICHAEL M. LAURIN
________________

Appeal 2010-002829
Application 11/350,172
Technology Center 1700
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Before CHARLES F. WARREN, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision1 finally rejecting claims 1-12 and 14-20 under 35 U.S.C. §103(a) as
unpatentable over Coyle (US 5,455,105, issued Oct. 3, 1995) in view of
Kindinger (GB 2,277,479 A, published Nov. 2, 1994).2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 Final Office Action mailed Dec. 4, 2008 (“Final”).
2 Amended Appeal Brief filed Jul. 2, 2009 (“Br.”).
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The invention relates to “composite films comprising polycarbonates
having a protective layer laminated thereto” (Spec. [0002]) which can be
used, for example, in applications “wherein a pattern is applied to the
transparent [polycarbonate] film, cured to form a stable pattern, and the
patterned film is subsequently applied to a smooth surface such as metal,
painted surfaces, or glass” (Spec. [0004]). Curing of the pattern involves
subjecting the polycarbonate film coated with the printed pattern to heat
and/or ultraviolet (UV) radiation to effect crosslinking of the ink. (Id.)
According to the Specification, the curing operation can have a negative
effect on the adhesion of previously applied protective layers, resulting in
delamination, film distortion, etc. (Id.) The invention is, therefore, directed
to providing “a removable protective layer for polycarbonate film substrates
. . . . [wherein] adhesion properties of the protective layer [] retain a useful
value after repeated exposure to heat and/or UV radiation from subsequent
manufacturing processes, while allowing for facile removal of the protective
layer.” (Spec. [0005].) According to Appellants, they “have unexpectedly
observed that when the protective layer comprises an adhesion modified
polyolefin, adhesion between a protective layer and a coating layer, and thus
a polycarbonate layer on which the coating layer is disposed, remains
suitable for use during and after exposure to heat and/or UV radiation.”
(Br. 4 (citing Spec. [0092]).)
Appellants’ arguments are directed to limitations common to
independent claims 1, 15, and 16. (See Br. 4.) Independent claims 1 and 16
are reproduced below from the Claims Appendix to the Appeal Brief:
1. A composite film comprising

a protective layer comprising an adhesion-modified polyolefin film;
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Application 11/350,172

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a coating layer comprising the reaction product of

a crosslinkable compound,

an initiator, and

a binder; and

a polycarbonate layer;

wherein the coating layer is disposed between the protective layer and
the polycarbonate layer, and wherein the peel strength between the
protective layer and the polycarbonate layer, as measured both before and
after thermal treatment or a combination of thermal and UV treatment of the
composite film, is about 1 to about 20 centi-Newtons per centimeter
measured using 180° angle peel measured at a peel rate of 25.4 cm/min,

wherein the thermal treatment comprises exposure to about 90°C for
greater than or equal to about 4 minutes.

16. A method of forming a composite film comprising

curing a coating composition comprising a crosslinkable compound,
an initiator, and a binder, wherein the coating composition is disposed
between a protective film comprising an adhesion modified polyolefin, and a
polycarbonate film,

wherein the composite film has a peel strength between the protective
layer and the coating layer, as measured both before and after thermal
treatment or a combination of thermal and UV treatment of the composite
film, of about 1 to about 20 centi-Newtons per centimeter measured using
180° angle peel pull at a peel rate of 25.4 cm/min

wherein the thermal treatment comprises exposure to about 90°C for
greater than or equal to about 4 minutes.
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Appellants do not dispute the Examiner’s findings (Final 2; (Ans.3 3))
that Coyle discloses Appellants’ claimed coating and polycarbonate layers
and Kindinger discloses Appellants’ claimed protective layer. (See Br. 5
(“Coyle and its compositions are referenced as exemplary compositions in
the instant Specification.”); Compare Br. 5 (“Kindinger discloses a
protective film comprising a carrier layer of one or more layers of
polyolefin, and an adhesive layer of an ethylene-vinyl ester copolymer with
2-20 wt% of vinyl ester.”) with Spec. [0067].) Rather, Appellants’
arguments on appeal raise the following two issues for our consideration:
1. Did the Examiner fail to properly establish motivation to combine
the teachings of Coyle and Kindinger?
2. Did the Examiner fail to give proper weight to Appellants’
evidence of unexpected results in reaching the conclusion of obviousness?
We answer both of these question in the negative for the reasons fully
explained in the Examiner’s Response to Argument (Ans. 5-8), which we
expand upon below.
Coyle “relates to a method for producing acrylic coated polycarbonate
articles; and, more particularly, relates to an improved method for providing
protective, ultraviolet radiation cured coating on the surface of a
polycarbonate substrate.” (Col. 1, ll. 11-15.) An object of the invention is to
produce “coated polycarbonate articles having high levels of adhesion
between the cured coating and the polycarbonate substrate.” (Col. 1, ll. 44-
47.)
Kindinger “relates to a self-adhesive multilayer surface protection
film based on polyolefins which may be used for protecting the surfaces of

3 Examiner’s Answer mailed Oct. 1, 2009.
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plastics sheets during storage and transportation, or during further
processing or thermal shaping of such sheets.” (P. 1, ll. 1-5.) “The surface
protection film[] . . . may be used in particular to protect sheets of acrylic
glass and polycarbonate, particularly with a view to thermal forming thereof,
during which the surface protection films may remain on the sheets of
plastics.” (P. 6, last para.)
To render an invention obvious, the prior art does not have to address
the same problem addressed by a patent applicant. See KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007); In re Dillon, 919 F.2d 688, 693
(Fed. Cir. 1990).
In order for a showing of “unexpected results” to be
probative evidence of non-obviousness, it falls upon the
applicant to at least establish: (1) that there actually is a
difference between the results obtained through the claimed
invention and those of the prior art, . . . and (2) that the
difference actually obtained would not have been expected
by one skilled in the art at the time of invention.

In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citations omitted).
Appellants contend the “Examiner has not provided any suggestion or
incentive that would have led one skilled in the art to the combination of
Coyle and Kindinger, with the expectation of obtaining the results found by
the Applicants.” (Br. 7.) This argument is not persuasive in establishing
error in the Examiner’s proposed motivation to combine the references. See
KSR, 550 U.S. at 420 and Dillon, 919 F.2d at 693. Rather, we find the
above citations to Coyle and Kindinger support the Examiner’s position that
“an artisan of ordinary skill would [have been motivated to] add Kindinger's
protective film to Coyle's multilayer article to protect it.” (Ans. 6.)
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Appellants argue the ordinary artisan would not expect “that
combining the particular elements of Coyle and Kindinger would produce a
film that has the claimed and unexpected adhesive properties in Claims 1, 15
and 16.” (Br. 9.) Appellants’ Specification provides comparison test results
for polyethylene films without adhesion modifying monomer and
polyethylene films with adhesion modifying monomers. (Spec. 43-47; see
Br. 8.) However, “Appellant[s have] not provided any data to show that the
combination of Coyle and Kindinger would result in a structure having
different properties than those of the present invention” (Ans. 8), i.e., a
structure which does not include an adhesion-modified polyolefin film as
claimed. Thus, Appellants have failed to provide a comparison between the
claimed invention and the closest prior art. Indeed, Appellants have not
even argued that the Examiner’s proposed modification of Coyle’s
polycarbonate article to include Kindinger's multilayer film (Final 2; Ans. 3)
would not result in a composite film comprising protective, coating, and
polycarbonate layers as claimed. (See Br. 5 quoted supra p. 4; Br. 9
(summarizing Appellants’ position).) Because the examples in the
Specification fail to establish a difference between the properties of the
claimed composite film and a composite film obtained by the Examiner’s
proposed combination of Coyle and Kindinger, we do not view the examples
as probative evidence of nonobviousness. See Freeman, 474 F.2d at 1324.
In sum, Appellants have failed to persuade us that the Examiner did
not establish proper motivation to combine Coyle and Kindinger, and did not
give proper weight to the evidence of unexpected results. Therefore, we
affirm the rejection of claims 1-12 and 14-20 under 35 U.S.C. §103(a) as
unpatentable over Coyle in view of Kindinger.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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