Ex Parte Bourcier et al

Patent Trial and Appeal Board

May 30, 2017

14026715 (P.T.A.B. May. 30, 2017)

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.
14/026,715 09/13/2013 David Paul Bourcier 85546US04 9483
66024 7590 06/01/2017
EASTMAN CHEMICAL COMPANY
200 SOUTH WILCOX DRIVE
KINGSPORT, TN 37660-5147
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
jlmcglothlin@eastman.com
rl white @eastman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID PAUL BOURCIER,
JOHN JOSEPH D’ERRICO, JEAN-PIERRE ETIENNE,
GARY MATIS, and JUN LU
Appeal 2016-005499
Application 14/026,715
Technology Center 1700
Before TERRY J. OWENS, PETER F. KRATZ, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1—35. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a polymer interlayer and a multiple layer glass
panel comprising the interlayer. Claim 1 is illustrative:
1. A polymer interlayer consisting of three polymer layers:
a first polymer layer comprising a plasticized
thermoplastic polymer with a lower plasticizer content;
a second polymer layer comprising a plasticized
thermoplastic polymer with a higher plasticizer content; and,
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Application 14/026,715
a third polymer layer comprising a plasticized
thermoplastic polymer with a lower plasticizer content;
wherein said second polymer layer is disposed between
said first polymer layer and said third polymer layer;
wherein the lower plasticizer content of the first polymer
layer differs from the higher plasticizer content in the second
polymer layer by at least 20 phr by weight, and
wherein both surfaces of said polymer interlayer have a
Rsm value of less than 800 microns that has been imparted by
melt fracture.
The References
Hopfe US 5,595,818 Jan. 21, 1997
Klafka US 6,451,435 B1 Sept. 17, 2002
Bourcier (Bourcier ’114) US 2003/0148114 A1 Aug. 7, 2003
Lu US 2006/0210782 A1 Sept. 21,2006
Bourcier (Bourcier ’813) US 8,529,813 B2 Sept. 10,2013
Bourcier (Bourcier ’595) US 9,114,595 B2 Aug. 25,2015
Miyai EP 0 710 545 A1 May 8, 1996
The Rejections
The claims stand rejected as follows: claims 1—4, 6—22 and 33—35
under 35 U.S.C. § 102(b) over Miyai, claim 5 under 35 U.S.C. § 103 over
Miyai in view of Klafka or Bourcier ’114, claims 1—35 under
35 U.S.C. § 103 over Lu in view of Hopfe, and claims 1—22 and 33—35 on
the ground of nonstatutory obviousness-type double patenting over
claims 1—27 of Bourcier ’595, and over claims 1—4 of Bourcier ’813.
OPINION
We reverse the rejection under 35 U.S.C. § 102(b), affirm the
rejections under 35 U.S.C. § 103 and affirm the obviousness-type double
patenting rejections.
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Rejection under 35 U.S.C. § 102(b)
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
We need address only the independent claims (1, 11, and 17). Those
claims require a polymer interlayer having a Rsm value of less than
800 microns imparted by melt fracture.
Miyai discloses a multilayer polyvinyl butyral “interlayer film for
laminated glass and laminated glass using it which prevent blocking between
the interlayer films, have superior workability and deaeration and do not
cause optical distortion” (p. 3,11. 3—5, 27—29). At least one side of the
interlayer film has minute embossments with a roughness of 20—
50 micrometers (p. 3,11. 10-15).
The Examiner points out that “imparted by melt fracture” is a
product-by-process limitation (Ans. 3 4) and concludes that “absent
evidence of criticality regarding the presently claimed process and given that
Miyai meets the requirements of the claimed product, Miyai clearly meet[s]
the requirements of present claim 1” (Ans. 4).
The Examiner has the initial burden of establishing a prima facie case
of anticipation by providing evidence or reasoning which indicates that the
Appellants’ product and that of the prior art are identical or substantially
identical. See In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985); In re Best,
562 F.2d 1252, 1255 (CCPA 1977). When the Examiner has provided such
evidence or reasoning, the burden shifts to Appellants to provide evidence
that the prior art product does not necessarily or inherently possess the
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relied-upon characteristics of the Appellants’ claimed product. See In re
Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); Best, 562 F.2d at 1255; In re
Fessmann, 489 F.2d 742, 745 (CCPA 1974).
Miyai’s roughness is obtained by embossing and is “the height of the
embossment from the bottom to the top” (p. 3,11. 51—52), whereas the
Appellants’ Rsm value is obtained by melt fracture and “is a measure of the
distance between peaks in the topography of the surface of a polymer layer”
(Spec. 113). The Examiner’s mere assertion that “Miyai meets the
requirements of the claimed product” (Ans. 4) does not provide the required
evidence or reasoning which indicates that the Appellants’ product and that
of the prior art are identical or substantially identical.
Accordingly, we reverse the rejection under 35 U.S.C. § 102(b).
Rejections under 35 U.S.C. § 103
Rejection of claim 5 under 35 U.S.C. §103 over
Miyai in view ofKlafka or Bourcier ’114
Klafka discloses an embossed multilayer polyvinyl butyral interlayer
film (col. 2,11. 11—13) wherein “[t]he form of the embossment created on the
surface of the sheeting consists of multitudes of discontinuous unoriented
minute indentations and protuberances (random form)” (col. 4,11. 13—15)
and the “embossment is really melt fracture pattern and not a mechanical
embossment with rolls” (col. 4,11. 19—20). The measures of the surface
roughness provided by the melt fracture include “Sm, the average spacing
between peaks” (col. 4,11. 38—39). Klafka indicates that embossing adds
complexity to the extrusion process (col. 4,11. 31—35) and that combining
multiple thin layers in a controlled winding operation produces an
interlocked multilayer film wherein the melt fracture surface pattern
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provides proper de-airing in the glass lamination process (col. 4,11. 21—30,
49-53).1
Bourcier ’114 subjects an assembly of glass and a polyvinyl butyral
interlayer “to a short term tacking pressure sufficient to remove excess
interlayer-glass interfacial air, cause the layers to adhere to each other, and
to seal the edges to prevent air re-entry” (| 30).2 The interlayer’s “surface
topology may be effected by various techniques such as embossing, melt
fracture, and the like” (127).
The Appellants assert that “there is no motivation to change the
method by which Miyai forms the surface roughness since the embossing of
Miyai is intended to facilitate de-airing” (App. Br. 17).
Klafka indicates that melt fracture enables de-airing of a multiple-
thin-layer polyvinyl butyral interlayer (col. 4,11. 20—30, 49—53), and
Bourcier ’114 indicates that embossing or melt fracture enables removal of
excess interlayer-glass interfacial air (|| 27, 30). Hence, in view of Klafka
or Bourcier ’114, one or ordinary skill in the art, through no more than
ordinary creativity, would have enabled Miyai’s de-airing using either
1 Klafka states that “[t]he term ‘interlocking’ means the bonding between the
two or more layers of plasticized PVB [polyvinyl butyral] sheeting is
sufficient to permit uniform unwinding of the composite, ease of cutting and
positioning on the glass but not so intimate bonding that air cannot be easily
eliminated by methods typically used in the laminated glass industry”
(col. 4,1. 66-col. 5,1. 4).
2 Bourcier ’114 states that “[a]s used herein, short term tacking pressure
application describes pressure on a pre-press assembly for a time sufficient
to de-air and tack the interlayer to the glass without necessarily causing
permanent flow of the interlayer or forcing complete dissolution of air into
the interlayer as is encountered using an autoclave” (1 32).
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Miyai’s embossing or the melt fracture disclosed by Klafka or
Bourcier ’114. See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton”). In making an obviousness determination one “can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR, 550 U.S. at 418.
The Appellants argue that neither Klafka nor Bourcier ’114 would
have motivated one of ordinary skill in the art to use melt fracture to enable
Miyai’s de-airing because “Klafka is specifically concerned with a method
of providing an interlocked composite interlayer having layers comprising
the same composition by a specific process” (App. Br. 17) and
“Bourcier [’114] is directed to a glass lamination process at low pressure,
and actually directs one away from an interlayer having a surface imparted
by melt fracture” (id.).
Both Klafka and Bourcier ’114 would have motivated one of ordinary
skill in the art to use melt fracture to achieve Miyai’s de-airing because both
indicate that melt fracture is an alternative to embossing to enable de-airing
(Klafka, col. 4,11. 13—30; Bourcier ’114, || 27, 30).
The Appellants assert that “[n]one of the references, Miyai, Klafka or
Bourcier [’114], alone or in combination, recognize a need to reduce or
eliminate optical distortion caused by embossing a multiple layer interlayer
while also providing the desired sound insulation properties” (App. Br. 17).
To establish a prima facie case of obviousness, references need not be
combined for the purpose of solving the problem solved by the Appellants.
See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 91A
F.2d 1309, 1312 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688, 693 (Fed. Cir.
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1990) (en banc); In reLintner, 458 F.2d 1013, 1016 (CCPA 1972). One of
ordinary skill in the art would have combined the references for the purpose
of providing melt fracture as an alternative to embossing to enable de-airing
as discussed above.
Rejection of claims 1—35 under 35 U.S.C. § 103
over Lu in view of Hopfe
The Appellants argue the claims as a group (App. Br. 19—24). We
therefore limit our discussion to one claim, i.e., claim 1. Claims 2—35 stand
or fall with that claim. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Lu discloses a three-layer polyvinyl butyral interlayer wherein the
middle layer has a higher plasticizer content than the outer layers (Tffl 27,
45). The interlayer’s surfaces are textured to facilitate de-airing during
lamination processes (156).
Hopfe discloses a “PVB sheet having a rough surface wherein
crosslinked PVB is responsible for generating roughness” (col. 1,11. 43 45).
“The sheet is prepared using systems known to those skilled in the art, e.g.,
by extrusion through a conventional sheeting die, preferably having
surface-cooled die lips to fine tune the roughness” (col. 5,11. 44-47).
Exemplified average distances (Sm) between profile irregularities are 402
and 332 microns (col. 6,11. 15—16; col. 7,11. 63—67).
The Appellants assert that “[o]ne skilled in the art understands the
meaning of melt fracture or the melt fracture phenomenon, which is
controlled by the processing parameters, and which does not include adding
stiff, crosslinked particles to the melt to make a heterogeneous mixture
where the stiff particles are used to control the surface, as disclosed by
Hopfe” (App. Br. 21).
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The Examiner finds that Hopfe’s extrusion through a sheeting die
having surface-cooled die lips to fine tune the roughness (col. 5,11. 44-47) is
similar to melt fracture (Ans. 13). Because the Appellants do not
specifically challenge that finding, we accept it as fact. See In re Kunzmann,
326 F.2d 424, 425 n.3 (CCPA 1964).
The Appellants assert that “even if the method of Hopfe could be
considered ‘melt fracture’, one skilled in the art would not consider the
method which is used to control the surface of the single layer interlayer of
Hopfe (i.e., by providing crosslinked particles to form surface roughness) to
try to provide an improved surface having specific roughness having specific
surface roughness characteristics and roughness values, as claimed by
Appellants” (App. Br. 21).
That argument is deficient in that the Appellants are attacking Hopfe
individually when the rejection is based on a combination of references. See
In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young, 403 F.2d 754,
757—58 (CCPA 1968). Hopfe’s interlayer’s surface roughness provided by
including crosslinked polyvinyl butyral particles in a polyvinyl butyral
formulation to be extruded is fine tuned by carrying out the extrusion using
an extruder having surface-cooled die lips which, the Appellants have not
effectively disputed, causes melt fracture (col. 1,1. 65 — col. 2,1. 6; col. 5,
11. 44-47). Thus, Hopfe indicates that either crosslinked polyvinyl butyral
particles or extrusion using an extruder having surface-cooled die lips would
be suitable for providing Fu’s surface texturing (| 56). Hopfe also indicates
that roughening having an average distance between profile irregularities
(Sm, which corresponds to the Appellants’ Rsm) of 332 and 402 microns
(col. 7,11. 63—67) is suitable for an interlayer film’s surface. Because the
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surfaces in Lu’s three-layer polyvinyl butyral interlayer that are roughened
are the exterior surfaces (1 56), one of ordinary skill in the art would have
considered Hopfe’s disclosure regarding roughening single-layer interlayer
film surfaces, which are exterior surfaces, to be applicable to Lu’s multilayer
interlayer film.
The Appellants assert that “[n] either of the references cited by the
Examiner, Lu or Hopfe, recognizes a need to reduce or eliminate optical
distortion (such as mottle) caused by embossing a multiple layer interlayer”
(App. Br. 22).
That assertion is not well taken for the reason given above regarding
the rejection over Miyai in view of Klafka or Bourcier ’114.
The Appellants assert that “the issue in Lu is the mottle caused by the
roughness or method of controlling the roughness that is the problem” (App.
Br. 22) and that combining Lu and Hopfe would not solve that problem
(App. Br. 22—23).
The Appellants do not point to support for that assertion in Lu. That
reference indicates that the issue is reduction of sound transmission through
a multilayer glass panel (Tflf 4—5).
Lor the above reasons we are not persuaded of reversible error in the
rejections under 35 U.S.C. § 103.
Obviousness-type double patenting rejections
The Appellants state that “[i]n this Appeal Brief, Appellants are not
arguing the merits of the non-statutory double patenting rejections”
(App. Br. 11). Accordingly, we summarily affirm those rejections.
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DECISION/ORDER
The rejection of claims 1—4, 6—22, and 33—35 under
35 U.S.C. § 102(b) over Miyai is reversed. The rejections of claim 5 under
35 U.S.C. § 103 over Miyai in view of Klafka or Bourcier ’114, claims 1—35
under 35 U.S.C. § 103 over Lu in view of Hopfe, and claims 1—22 and 33—
35 on the ground of nonstatutory obviousness-type double patenting over
claims 1—27 of Bourcier ’595, and over claims 1—4 of Bourcier ’813 are
affirmed.
It is ordered that the Examiner’s decision is affirmed.
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
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