Ex Parte Castillo et alDownload PDFPatent Trial and Appeal BoardNov 9, 201711541762 (P.T.A.B. Nov. 9, 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. 11/541,762 10/02/2006 Wilfred L. Castillo MJE00053NP 3983 145003 7590 Osprey IP, pile 320 Seven Springs Way Suite 250 Brentwood, TN 37027 EXAMINER KRUER, KEVIN R ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 11/14/2017 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): docket @ osprey ip .com info @ ospreyip. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILFRED L. CASTILLO, GRACE N. MERCADO, JOHNNY D. LEE JR., MILING C. FONG, and CALIXTO Y. LAUREANO Appeal 2015-005050 Application 11/541,762 Technology Center 3600 Before EDWARD A. BROWN, GEORGE R. HOSKINS, and LEE L. STEPINA, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Wilfred L. Castillo et al. (“Appellants”)1 appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1,3,4, 6—12, 25, and 30-32 in this application. The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 The Appeal Brief identifies Mead Johnson Nutrition Company as the real party in interest. Br. 3. Appeal 2015-005050 Application 11/541,762 CLAIMED SUBJECT MATTER Claims 1 and 25 are independent. Claim 1 illustrates the claimed subject matter on appeal: 1. A method for preparing a laminate comprising: a) providing an inner aluminum foil layer, a paper layer, and an outer aluminum foil layer; b) providing an inner adhesive layer between the inner aluminum foil layer and the paper layer, wherein the inner adhesive layer comprises an adhesive selected from the group consisting of polyurethane, polyvinyl acetate, and an acrylic-type adhesive; c) laminating the inner foil layer, the inner adhesive layer, and the paper layer; d) curing the inner adhesive layer by heating the inner foil layer, the inner adhesive layer and the paper layer by use of an oven; e) providing an outer adhesive layer between the paper layer and the outer aluminum foil layer, wherein the outer adhesive layer comprises an adhesive selected from the group consisting of polyurethane, polyvinyl acetate, and an acrylic-type adhesive; f) laminating the inner aluminum foil layer, the inner adhesive layer, the paper layer, the outer adhesive layer and the outer aluminum foil layer; and g) curing the outer adhesive layer by use of an oven. Br. 21 (Claims App.). REJECTIONS ON APPEAL Claims 1, 3, 4, 6—12, 25, and 30-32 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kawahara (JP 2001-179886 A, pub. July 3, 2001), Brooks (US 2,073,780, iss. Mar. 16, 1937), and Adler (US 4,087,300, iss. May 2, 1978). 2 Appeal 2015-005050 Application 11/541,762 Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kawahara, Brooks, Adler, and Reynolds (US 2,529,884, iss. Nov. 14, 1950). ANALYSIS A. §103 Obviousness over Kawahara, Brooks, and Adler (Claims 1, 3, 4, 6—12, 25, and 30—32) Claims 1, 3, 4, and 6—12 In rejecting independent claim 1, the Examiner finds Kawahara teaches2 a method for preparing a laminate, with the laminate comprising inner and outer aluminum layers bonded to opposite sides of a middle paper layer via respective adhesive layers. Non-Final Act. 3. The Examiner determines Kawahara does not disclose either (a) curing the adhesive layers by heating the laminate in an oven after lamination, or (b) laminating the outer aluminum layer subsequent to laminating the inner aluminum layer, as claimed.3 Id. The Examiner finds Brooks discloses adhering a foil layer to a paper layer by passing the layers into a “drying oven.” Id. The Examiner determines it would have been obvious to make Kawahara’s laminate by 2 An English language translation of Kawahara was entered into the record on September 27, 2010. 3 The Examiner and Appellants both construe claim 1 to require the curing step (d) to be performed prior in time to steps (e)-(g). See, e.g., Non-Final Act. 3 (determining Kawahara and Brooks do not disclose lamination of the “second foil. . . subsequent to the application of the first foil”) (emphasis added); Ans. 6, 7; Br. 12 (stating “the first curing step” is performed “before the outer layer(s) of the laminate are applied”) (emphasis added). We, therefore, apply that same claim construction of claim 1 in our decision. 3 Appeal 2015-005050 Application 11/541,762 utilizing Brooks’ method of oven “drying,” thereby “curing” the adhesive as claimed, because the Brooks method “is disclosed to be useful for adhesively laminating a foil to paper.” Id. The Examiner finds Adler discloses a method of forming metal foil layers on both surfaces of a paper substrate layer, in which “the foils may be applied to the substrate sequentially by repeating the same lamination process.” Id. at 3^4 (citing Adler, Abstract, 5:10—18, 5:49-50). The Examiner determines it would have been obvious to make Kawahara’s laminate by applying Kawahara’s outer aluminum layer subsequent to applying Kawahara’s inner aluminum layer, with both application steps employing the adhesive-curing method of Brooks. Id. at 4; Ans. 7. The stated motivation is that “Adler teaches such subsequent application of a second foil utilizing the same method utilized to laminate the first foil is a known method of making a foil/paper/foil laminate.” Non-Final Act. 4; see also Ans. 8—9 (referring back to Non-Final Office Action as providing the motivation to combine Kawahara, Brooks, and Adler). Appellants argue “a skilled artisan would find no motivation to combine” Kawahara, Brooks, and Adler to reach the invention of claim 1, and the Examiner’s stated motivations rely on insufficient “circular reasoning” which is merely conclusory. Br. 14—16. Appellants contend the Examiner fails to explain why one “would have modified” Kawahara as proposed, and “[t]he mere fact that a reference can be modified” to reach a claimed invention is not sufficient to support obviousness. Id. at 16—17. We determine the Examiner’s rejection does not provide a rational underpinning, supported by a preponderance of the evidence, sufficient to support the legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 4 Appeal 2015-005050 Application 11/541,762 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). There are two reasons for this determination. First, the Examiner relies on Brooks to establish the obviousness of claim 1 step (d), “curing the inner adhesive layer by heating the inner foil layer, the inner adhesive layer and the paper layer by use of an oven.'” Br. 21 (Claims App.) (emphases added); Non-Final Act. 3 (citing Brooks “page 2, lines 63+”). Appellants’ Specification states: As used herein, the terms “cure”, “cured”, or “curing” can refer to any process that hardens a polymer material through the cross- linking of polymer chains .... In a particular embodiment, ovens may be employed to cure the layers. Spec. 128 (emphasis added). The cited disclosure of Brooks, by contrast, states: “In the oven 34 the adhesive [between foil and paper] is rendered tacky and is brought to a condition in which the foil coated paper can be re-rolled into its final form for shipment.” Brooks, pg. 2, col. 1, line 63 to col. 2, line 2. The tackiness described in Brooks would appear to result from the oven heat softening the adhesive, rather than the oven heat hardening the adhesive thereby “curing” it as defined in Appellants’ Specification. The Examiner’s rejection thus does not sufficiently establish a correspondence between the disclosure of Brooks and the curing step recited in claim 1. Second, the Examiner relies on Adler as disclosing the application of two metal foil layers “sequentially by repeating the same lamination process.” Non-Final Act. 3^4 (emphases added) (citing Adler, 5:10—18). This is an over-simplification of the Adler disclosure. Adler illustrates in Figure 1 a first step in which metal layer 1 is adhered to one surface of paper layer 2 with adhesive 7, and a succeeding separate step in which metal layer 11 is adhered to the opposite surface of paper layer 2 with adhesive 27. 5 Appeal 2015-005050 Application 11/541,762 Adler, 7:31—44, 5:38—51. Adler describes that process as “preliminarily” bonding metal layers 1 and 11 to paper layer 2, achieved in part by heating rolls 4 and 14 during the lamination to provide heat and pressure for the bonding. Id. at 2:65—3:20, 7:31 44. According to Adler, the preliminary bonding is followed by winding the resultant laminate 16 around a mandrel and placing it into an autoclave (i.e., an oven) to be “heated under pressure ... to complete the cure of any uncured or partially cured resin present,” particularly adhesive layers 7 and 27. Id. at 3:21—40, 7:45—60, Figs. 1—3. Thus, while Adler’s preliminary bonding of metal layers 1 and 11 to paper layer 2 sequentially repeats the same process, the Examiner overlooks that Adler’s complete bonding process employs a final oven heating step that is applied after both metal layers 1 and 11 are preliminarily bonded to paper layer 2. This is important because, as discussed above, claim 1 requires curing step (d) to be performed prior in time to steps (e)-(g). In other words, claim 1 specifies two separate curing steps (d) and (g), and requires both curing steps to be performed “by use of an oven.” Br. 21 (Claims App.). Adler, by contrast, discloses a single oven heating step, which is applied only after both metal layers have already been preliminary bonded (sequentially) to the paper layer. The Examiner’s rejection does not explain sufficiently why a person of ordinary skill in the art, when applying Adler’s teachings to Kawahara and Brooks, would have modified the Adler process to apply oven curing in two separate steps, one for adhesive layer 7 and metal layer 1, and another for adhesive layer 27 and metal layer 11. For the foregoing reasons, we do not sustain the rejection of claim 1 as unpatentable over Kawahara, Brooks, and Adler. The Examiner’s 6 Appeal 2015-005050 Application 11/541,762 additional consideration of claims 3, 4, and 6—12, each of which depends from claim 1, does not cure the noted deficiency as to claim 1. See Non-Final Act. 2-4. We, therefore, likewise do not sustain the rejection of those claims as unpatentable over Kawahara, Brooks, and Adler. Claims 25 and 30—32 Independent claim 25 specifies a curing step (c) for the inner adhesive layer, which is identical to the first curing step (d) of claim 1. Br. 21, 23 (Claims App.). However, unlike claim 1, claim 25 does not recite a second curing step for the outer adhesive layer. Id. at 23. Instead, step (e) of claim 25 specifies that all five layers are “laminat[ed] ... by extrusion lamination.” Id. (emphasis added). The Examiner’s rejection of claim 25 overlooks the “extrusion lamination” limitation. See Non-Final Act. 4—5. In particular, there are no findings to support that any one of Kawahara, Brooks, or Adler discloses extrusion lamination. See id. We note, nonetheless, that Kawahara states: “Although there is no restriction in particular as a manufacturing method of the layered product concerning this invention, the method offorming an adhesives layer by an extrusion lamination, for example, and pasting a core material and a metallic foil together, etc. are efficient.” Kawahara 110 (emphasis added). However, the Examiner has not provided any reasoning in support of establishing the obviousness offirstly oven-curing an inner adhesive layer between a paper layer and an inner metal layer, and then secondly using extrusion lamination to laminate an outer adhesive layer and an outer metal layer on the opposite side of the paper layer, as recited in claim 25. To the extent the Examiner intended to rely on Adler’s teaching of applying two metal foil layers “sequentially by repeating the same 7 Appeal 2015-005050 Application 11/541,762 lamination process” in this regard (Non-Final Act. 3—4), we note Appellants’ Specification appears to differentiate between “adhesive lamination” (claim 25 steps (b)-(c)) and “extrusion lamination” (claim 25 step (e)). Spec. 1 6. For the foregoing reasons, we do not sustain the rejection of claim 25 as unpatentable over Kawahara, Brooks, and Adler. The Examiner’s additional consideration of claims 30—32, each of which depends from claim 25, does not cure the noted deficiency as to claim 25. See Non-Final Act. 4—5. We, therefore, likewise do not sustain the rejection of those claims as unpatentable over Kawahara, Brooks, and Adler. B. §103 Obviousness over Kawahara, Brooks, Adler, and Reynolds (Claims 3 and 4) The Examiner’s additional consideration of dependent claims 3 and 4, and of Reynolds, does not cure the deficiency of Kawahara, Brooks, and Adler in relation to claim 1, discussed above. See Non-Final Act. 5. We, therefore, do not sustain the rejection of claims 3 and 4 as unpatentable over Kawahara, Brooks, Adler, and Reynolds. DECISION The decision of the Examiner to reject claims 1,3,4, 6—12, 25, and 30-32 is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation