Ex Parte Branch et alDownload PDFPatent Trial and Appeal BoardNov 8, 201713954199 (P.T.A.B. Nov. 8, 2017) Copy Citation 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. wil-61633 6502 EXAMINER POWERS, LAURA C ART UNIT PAPER NUMBER 1785 MAIL DATE DELIVERY MODE 13/954,199 07/30/2013 21884 7590 11/09/2017 WELSH FLAXMAN & GITLER LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 Joe E. Branch 11/09/2017 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 JOE E. BRANCH, ERIC W. KENDALL, ROBERT R. KREBS, JOHN P. McSPEDON, JANET STEPAN, and JOEL L. WILLIAMS Appeal 2017-001595 Application 13/954,199 Technology Center 1700 Before JEFFREY T. SMITH, DONNA M. PRAISS, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING In accordance with 37 C.F.R. § 41.52, Appellants timely filed a Request for Rehearing (“Req.”) of our Decision, mailed August 17, 2017 (“Dec.”), affirming the Examiner’s rejections of claims 1, 2, and 5—10 as unpatentable under 35 U.S.C. § 103(a). For the reasons given below, Appellants’ arguments raised in the Request fail to establish that we misapprehended or overlooked any point that would justify a different outcome. See 37 C.F.R. § 41.52(a)(1). Appellants contend that the Board incorrectly determined that the claims on appeal do not require two top coat layers. Req. 2. In our Appeal 2017-001595 Application 13/954,199 Decision, we observed that “claim 1 does not expressly limit the recited top coat to two layers,” such that the claim does not preclude a third “intervening synthetic material layer.” Dec. 5. Thus, Appellants’ contention that we interpreted the claim as not requiring at least two top coat layers is incorrect. Appellants in the Request repeat the arguments from the Brief concerning Kawabata’s failure to disclose a two-layer top coat. These arguments remain unpersuasive of error because they fail to address the combined teachings of the prior art as relied upon in the ground of rejection. Req. 2—3. Appellants’ repeated arguments also are insufficient to establish that we misapprehended or overlooked any point raised in the Appeal Brief. As set forth in the Decision (Dec. 3—4), the Examiner’s rejection of claim 1 is premised on the Examiner’s findings that Schacht discloses a coat layer that includes a gluing layer, a synthetic material layer, and a UV curable finishing layer, and that Dong and Kawabata teach materials suitable for such gluing and finishing layers, respectively. Accordingly, Appellants’ argument concerning Kawabata’s non-disclosure of a two-layer top coat remains unpersuasive of error because it fails to address the combined teachings of the prior art as relied upon in the ground of rejection. The Examiner has identified prior art that establishes multiple layers are applied above a substrate for the purpose of providing a durable top coat. (See Schacht and Dong). These layers are arranged such that the underlying decorative layer is viewable through the top coat layers. Accordingly, one of ordinary skill in this art routinely following the combined teachings of the references as cited by the Examiner would have reasonably arrived at the claimed printed laminate wherein the decorative under layer is viewable 2 Appeal 2017-001595 Application 13/954,199 through the applied top coat layers. A person of ordinary skill in the art would have recognized that the applied adhesive layer should have the requisite clarity to allow viewing of the decorative layer. See, e.g., KSR Int 7 Co. v. Teleflex Inc., 127 S. Ct. 550 US 417, 418 (2007) (“[Analysis [of whether the subject matter of a claim would have been obvious] need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”); In re Translogic Tech. Inc., 504 F.3d 1249, 1260 (Fed. Cir. 2007) (“[A] flexible approach to the [teaching, suggestion, or motivation to combine] test prevents hindsight and focuses on evidence before the time of invention without unduly constraining the breadth of knowledge available to one of ordinary skill in the art during the obviousness analysis.” (citations omitted)); In re Kahn, 441 F.3d 977, 985-88 (Fed. Cir. 2006); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (“Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.’”); see also In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.” (citations omitted)). 3 Appeal 2017-001595 Application 13/954,199 Appellants again dispute the Examiner’s finding that one skilled in the art, in light of Dong and Schacht, would have had a reason to select clear polyurethane as Schacht’s glue layer. Req. 4. Appellants also reiterate their argument that the application of heat and pressure taught by Dong would have been incompatible with curing techniques taught by Schacht. Id. at 5— 7. Appellants further reiterate their general disagreement with the Examiner’s finding that coat weight for top coat layers in Schacht, as modified in light of Dong and Kawabata, would have been recognized as a result-effective variable, and that optimization as such would have yielded values within the ranges recited in claims 9 and 10. These arguments were presented in the Appeal Brief and found unpersuasive of reversible error for the reasons set forth in the Decision. See App. Br. 9—12; Dec. 4—6. Appellants’ restatement of essentially the same arguments in the Request neither identifies nor establishes any point in the appeal that we misapprehended or overlooked. DECISION For the foregoing reasons, we deny Appellants’ request to modify our Decision affirming the Examiner’s rejections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED 4 Copy with citationCopy as parenthetical citation