Ex Parte Buhring

Patent Trial and Appeal Board

May 3, 2016

12206277 (P.T.A.B. May. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/206,277 09/08/2008
24131 7590 05/05/2016
LERNER GREENBERG STEMER LLP
PO BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
Jurgen Buhring
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CON-206-032 8553
EXAMINER
KHATRI, PRASHANT J
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
05/05/2016 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):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WRGEN BURRING
Appeal2014-000660
Application 12/206,277
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 9-11 and 14--19. Claims 1 and 3-7 are also pending but have been
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Representative claim 19 is reproduced below from the Claims Appendix of
the Appeal Brief dated June 26, 2013 ("App. Br."). The limitations at issue are
italicized.
19. A thermoplastic film, comprising:
Appeal2014-000660
Application 12/206,277
crosslinked polymeric materials having a three-dimensionally
structured, embossed surface;
the crosslinked polymeric materials including first regions and
second regions, said first regions being subjected to higher degrees of
drawing in a subsequent shape-imparting processing step than said
second regions;
said crosslinked polymeric materials being formed by
subjecting a film to electron beam crosslinking for crosslinking said
first regions differently from said second regions, such that said first
regions have degrees of cross linking higher than neighboring second
regions and said first regions have a greater strength than neighboring
second regions;
said film having a gel content, said first regions having a gel
content of at least 30%, and a difference in said gel content between
said first regions of said film having a high degree of cross linking and
said second regions of said film having a low degree of cross linking
being from 10 to 60%; and
said film formed from a thermoplastic elastomer.
App. Br. 18-19 (emphasis added).
The Appellant describes the benefit of the claimed difference in gel content
between neighboring regions of a film having a high degree of crosslinking and a
low degree of crosslinking as follows:
In an advantageous development, the difference in the gel
content between regions of the film which have a high degree of
crosslinking and a low degree of crosslinking is from 10 to 60%,
preferably from 20 to 50%. As a result, sufficient uniformity of the
elongations of the material is achieved even in the case of strongly
deformed components, such as, for example, in the case of covers for
the transmission tunnel of a car.
Spec. i-f 35 (emphasis added).
The claims on appeal stand rejected as follows:
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Application 12/206,277
(1) claims 16 and 17 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter
which the inventor regards as the invention;
(2) claims 9-11 and 14-19 under 35 U.S.C. § 103(a) as unpatentable over
Buhring et al. 1 in view of Sato et al.,2 Bobeth et al.,3 or Shima et al., 4 and further in
view of Lazar et al.; 5 and
(3) claims 9-11 and 14-19 under 35 U.S.C. § 103(a) as unpatentable over
Buhring in view of Sato, Bo beth, or Shima, and further in view of Hawley's
Condensed Chemical Dictionary. 6
B. DISCUSSION
1. Rejection (1)
Claim 16 depends from claim 19 and recites, in relevant part, "wherein said
regions subjected to higher degrees of drawing." App. Br. 17 (emphasis added).
The Examiner concludes that the phrase "said regions" lacks antecedent basis and
requests that the Appellant amends "said regions" to read "said first regions." Ans.
2.7
Claim 17 depends from claim 19 and recites, in relevant part, "a difference
in said gel content between said regions." App. Br. 18 (emphasis added). The
Examiner concludes that the phrase "said regions" lacks antecedent basis and
1 US 2005/0173047 Al, published August 11, 2005 ("Buhring").
2 US 4,828,947, issued May 9, 1989 ("Sato").
3 US 4,457,817, issued July 3, 1984 ("Bobeth").
4 US 4,407 ,881, issued October 4, 1983 ("Shima").
5 M. Lazar et al., "Crosslinking of Polyolefins" (1989) ("Lazar").
6 Hawley's Condensed Chemical Dictionary 346 (15th ed. 2007).
7 Examiner's Answer dated July 31, 2013.
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Application 12/206,277
requests that the Appellant amends "said regions" to read "said first and second
regions." Ans. 2.
The Appellant indicates that "one of ordinary skill in the art would have no
difficulty in ascertaining the antecedent basis of the referenced regions." App. Br.
4. Nonetheless, the Appellant "has no objection to incorporating the suggested
changes." App. Br. 4.
The Examiner correctly concludes that the phrase "said regions" in claims
16 and 17 lacks antecedent basis. Therefore, the§ 112, second paragraph,
rejection of claims 16 and 1 7 is sustained.
2. Rejections (2) and (3)
The Examiner finds Buhring discloses a thermoplastic film comprising
crosslinked polymeric materials having a three-dimensionally structured, embossed
surface formed of a thermoplastic elastomer. The Examiner finds Buhring does
not disclose that individual regions of the film are crosslinked differently as recited
~ __ _ 1 _ ~ __ _ 1 r\ A. __ _ _, I
Ill crn1m l y. Ans. _,, 0.
The Examiner finds Sato discloses crosslinking individual regions of a film
differently to create different color regions. Similarly, the Examiner finds Bobeth
discloses crosslinking individual regions of a film differently to create "a desired
appearance/texture and color" and Shima discloses crosslinking individual regions
of a film differently to create "a desired appearance/texture." Ans. 3, 6.
The Examiner concludes:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to form the crosslinked polymeric materials
by crosslinking individual regions of the film differently in Buhring's
film as taught by Sato, Bobeth or Shima in order to insure the desired
appearance/texture and/or color. Thus, creating first and second
regions, such that the first regions have degrees of crosslinking higher
than neighboring second regions.
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Application 12/206,277
Ans. 5; see also Ans. 6.
The Appellant argues:
Appellant's claims not only require, among other things, first regions
having higher degrees of crosslinking than neighboring second
regions, but also a difference in the gel content between the first
regions (i.e., having a gel content of at least 30%) and second regions
of lower crosslinking be from 10 to 60%. The foregoing limitations,
among others, are not taught or suggested by the combined prior art
cited in the Office Action.
App. Br. 5, 10 (emphasis omitted).
In response to the Appellant's argument, the Examiner finds Lazar teaches
that the amount of crosslinking (i.e., gel content) affects the strength and
elongation of the resulting material. Ans. 5, 10. Similarly, the Examiner finds
Hawley's Condensed Chemistry Dictionary discloses that cross-linking "has the
effect of increasing strength" as well as affecting several other properties. Ans. 9.
The Examiner concludes that "it would have been obvious to one of ordinary skill
in the art to produce the presently claimed gel content difference in order to
produce the desired decorative or textured effects" and the desired degree of
strength. Ans. 10.
We find the evidence of record establishes that crosslinking is a result-
effective variable (e.g., affecting the strength of a material). The Examiner,
however, has failed to show that a difference in properties, such as strength,
corresponding to the claimed difference in gel content would have been desirable
in neighboring regions of Buhring's film. For this reason, the Examiner has failed
to show that the claimed difference in gel content would have been obvious to one
of ordinary skill in the art based on the record before us.
The§ 103(a) rejections of claims 9-11 and 14--19 are not sustained.
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Application 12/206,277
C. DECISION
The Examiner's decision to reject claims 16 and 17 under 35 U.S.C. § 112,
second paragraph, is affirmed.
The Examiner's decision to reject claims 9-11 and 14-19 under 35 U.S.C.
§ 103(a) as unpatentable over Buhring in view of Sato, Bobeth, or Shima, and
further in view of Lazar is reversed.
The Examiner's decision to reject claims 9-11 and 14-19 under 35 U.S.C.
§ 103(a) as unpatentable over Buhring in view of Sato, Bobeth, or Shima, and
further in view of Hawley's Condensed Chemical Dictionary is reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
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