Ex Parte Chisaka et al

Patent Trial and Appeal Board

Feb 15, 2019

13847179 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/847, 179 03/19/2013
32692 7590 02/20/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Hajime Chisaka
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.
61921US01 l 3011
EXAMINER
VAZQUEZ, ELAINE M
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAJIME CHISAKA and MAMORU KANNO
Appeal2017-003178
Application 13/847,179
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and BRIAND. RANGE,
Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 1-20, which constitute all the claims
1 In explaining our Decision, we refer to the Specification filed March 19,
2013 ("Spec."); Final Office Action dated September 21, 2015 ("Final
Act."); Appeal Brief filed August 22, 2016 ("Appeal Br."); Examiner's
Answer dated November 3, 2016 ("Ans."); and Reply Brief filed December
29, 2016 ("Reply Br."). We apply our own page numbering to Appellant's
unnumbered Appeal Brief.
2 Appellant is 3M Innovative Properties Company. Bib Data Sheet 1. The
Appeal Brief identifies 3M Company and 3M Innovative Properties
Company as the real parties in interest. Appeal Br. 3.
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Application 13/84 7, 179
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
An oral hearing was held on February 6, 2019. 3
We REVERSE.
The Claimed Invention
Appellant's disclosure relates to a thermally moldable decorative
sheet, a method of preparing the same, and a molded part having the
decorative sheet. Spec. 1; Abstract. Claim 1 is illustrative of the claimed
subject matter on appeal and is reproduced below from the Claims Appendix
to the Appeal Brief:
1. A decorative sheet comprising:
a transparent resin film having a first main surface and
a second main surface;
a transparent resin layer on the first main surf ace of
the transparent resin film, with the transparent resin layer
containing first beads;
a pattern printed layer embedded into the transparent
resin layer, with the pattern printed layer containing second
beads; and
a colored base film on the second main surface of the
transparent resin film;
wherein the second beads are colored, the first beads
are different from the second beads in content, color and/or
particle size, and a pattern is formed by the contrast between
the transparent resin layer and the pattern printed layer and
further wherein the decorative sheet, including the pattern
printed layer, is thermally moldable.
Appeal Br. 16 (key disputed claim language italicized and bolded).
3 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
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The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Bordener
Atake
Mamoru
Takahiro
US 2006/0251864 Al
EP 0985525 Al
JP2001260299
JP2005193484 (A)
The Rejections
Nov. 9, 2006
Mar. 15, 2000
Sept. 25, 2001
July 21, 2005
On appeal, the Examiner maintains (Ans. 2) the following rejections:
1. Claims 1-9 and 11-20 are rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Mamoru4 in view ofBordener
and Atake ("Rejection 1 "). Ans. 2.
2. Claim IO is rejected underpre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Mamoru in view of Bordener, Atake, and Takahiro
("Rejection 2"). Ans. 8.
OPINION
Reiection 1
The Examiner determines that the combination of Mamoru, Bordener,
and Atake teaches or suggests a decorative sheet satisfying all of the
limitations of claim 1 and, thus, concludes that the combination renders the
claim obvious. Ans. 2-5 (citing Mamoru, Abstract, Fig. 4, ,r,r 11, 15-17, 20;
Bordener, Abstract, Fig. IB, ,r,r 26, 27, 30, 32; Atake, Abstract, ,r 30).
4 For both Rejections 1 and 2, the Examiner refers and cites to the English
machine translation of the Mamoru reference. Ans. 2, 8.
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Regarding the recitation "a transparent resin layer on the first main
surface of the transparent resin film, with the transparent resin layer
containing first beads," the Examiner relies on the combination of Mamoru
and Bordener for suggesting this claim limitation. Ans. 2-3. The Examiner
concludes that
[i]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to include a transparent
resin layer on the first main surface of the transparent resin
film, with the transparent resin layer containing first beads in
Mamoru as taught by Bordener in order to enhance the
perception of visual depth ... so as to convey to a viewer a
perception simulative of natural materials, such as wood.
Id. at 3--4.
Regarding the recitation "a pattern printed layer embedded into the
transparent resin layer," the Examiner also relies on the combination of
Mamoru and Bordener and concludes that
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to have the pattern printed
layer of Mamoru being embedded into the transparent resin
layer taught by Bordener instead of being embedded in the
transparent resin film so that the pattern in the pattern printed
layer would not be obstructed by the beads contained in the
transparent resin layer ... so that the pattern was given its full
effect.
Id. at 4.
Appellant argues that the Examiner's rejection should be reversed
because the Examiner's proposed combination of Mamoru, Bordener, and
Atake is "unreasonable." Appeal Br. 7; see also Reply Br. 2. In particular,
Appellant argues that one of ordinary skill in the art would not have had
reason to modify Mamoru's resin film to include Bordener's transparent
resin layer containing beads on the first main surface because doing so
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would obscure the pattern of Mamoru, which is expressly intended to be
exposed at the surface of the decorative sheet. Appeal Br. 7 ( citing Mamoru
,r 9, Fig. 4). See also Mamoru ,r 8 (disclosing that "an object of the present
invention is to provide the woody face sheet which has the appearance near
native wood and also has tactile feeling near native wood").
Appellant also argues that one of ordinary skill in the art would not
have had reason to embed the pattern printed layer of Mamoru into the
transparent resin layer of Bordener, and the Examiner has not identified
sufficient evidence in the record or adequately explained why one of
ordinary skill would have made such modification. Appeal Br. 7-8; see also
Reply Br. 2-3.
The weight of the evidence supports Appellant's arguments. The
Examiner has not established by a preponderance of the evidence that one of
ordinary skill in the art would have had reason to combine the teachings of
the cited art to arrive at Appellant's claimed invention. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992) (holding that the examiner bears the initial
burden of establishing a prima facie case of obviousness).
The Examiner does not direct us to persuasive evidence or provide an
adequate technical explanation explaining why one of ordinary skill would
have modified Mamoru's resin film 45 to include Bordener's secondary
layer 5 containing beads (filler granules 6) on the first main surface.
Although paragraph 30 of the Bordener mentions that inorganic granular
particulate materials may "convey[] to a viewer a perception simulative of
natural materials" and "enhance[] the perception of visual depth" in
Bordener's laminate structure, a preponderance of the evidence in the
present record does not establish that viewer perception would have been
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enhanced or in any way affected in Mamoru's decorative sheet structure,
which differs from Bordener's structure.
The Examiner's assertion that one of ordinary skill would have
considered the proposed modification a "desirable enhancement taught by
Bordener for the Mamoru film" (Ans. 10) is conclusory and, without more,
insufficient to sustain the Examiner's rejection. In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (holding that rejections "cannot be sustained by mere
conclusory statements").
Moreover, as Appellant correctly points out (Appeal Br. 7-8), because
Mamoru's sheet already displays a pattern intended to be exposed at the
surface of the sheet (see Mamoru ,r,r 8-9, Fig. 4), modifying the sheet's
surface layer to include a layer containing filler granules would obstruct the
wood grain pattern of Mamoru, especially given the size and dispersion of
the filler granules within the layer. See Bordener ,r 31 ("The granular
particulate 6 is dispersed homogeneously throughout the secondary layer or
forms a density gradient within the secondary layer orthogonal or parallel to
a secondary layer planar surface."), id. ,r 31 ( disclosing that "a slurry of 3-
45% by weight granular particulate is applied in concert with the secondary
layer resin"). The Examiner's proposed modification would also seem to
negatively affect the surface of Mamoru's sheet having a "tactile feeling
near native wood" (Mamoru ,r 8), which is an attribute Mamoru teaches is
desired for its sheet.
The Examiner also does not identify evidence or provide reasoning
sufficient to support a conclusion that it would have been obvious to one of
ordinary skill in the art to have embedded Mamoru's pattern printed layer 44
into Bordener's transparent resin layer 5, as would be required to arrive at
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the claimed invention. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (requiring "reasoning with some rational underpinning to support the
legal conclusion of obviousness") ( quoting In re Kahn, 441 F .3d at 988). In
particular, the Examiner does not persuasively respond to Appellant's
argument that one of ordinary skill would have had no reason to modify both
Mamoru's patterned printed layer 44 and Bordener's transparent resin layer
5 in the manner claimed. For example, the Examiner does not direct us to
any teaching or suggestion in the prior art regarding the technical feasibility
of both Mamoru's patterned printed layer 44 and Bordener's transparent
resin layer 5 being modified, as claimed; or why one of ordinary skill in the
art would have had a reasonable expectation of success in making such
modifications.
The Examiner's assertion that "it would have been obvious to one of
ordinary skill in the art to not obscure the pattern printed layer and therefore
would have embedded the pattern printed layer in the transparent resin layer
taught by Bordener instead of the transparent resin film" (Ans. 10) is
conclusory and, without more, insufficient to sustain the Examiner's
rejection. Kahn, 441 F.3d at 988.
We, therefore, cannot sustain the Examiner's rejection of claim 1.
Because claims 2-9 and 11-20 depend from claim 1, we also cannot sustain
the Examiner's rejection of these claims.
Accordingly, we reverse the Examiner's rejection of claims 1-9 and
11-20 under U.S.C. § 103(a) as obvious over the combination ofMamoru,
Bordener, and Atake.
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Reiection 2
The foregoing deficiencies in the Examiner's analysis and conclusion
regarding Rejection 1 and the combination ofMamoru, Bordener, and Atake
are not remedied by the Examiner's findings regarding the additional
reference or combination of references cited in support of the second ground
of rejection (Rejection 2, stated above).
Accordingly, for principally the same reasons discussed above in
reversing the Examiner's Rejection 1, we also reverse the Examiner's
Rejection 2.
DECISION/ORDER
The Examiner's rejections of claims 1-10 are reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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