Ex Parte DEL BARRIO PÉREZ et alDownload PDFPatent Trials and Appeals BoardMay 24, 201913212266 - (D) (P.T.A.B. May. 24, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/212,266 08/18/2011 Javier DEL BARRIO PEREZ 140 7590 05/29/2019 LADAS & PARRY LLP 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. U 018458-7 5916 EXAMINER 1040 A venue of the Americas BLADES, JOHN A NEW YORK, NY 10018-3738 ART UNIT PAPER NUMBER 1746 NOTIFICATION DATE DELIVERY MODE 05/29/2019 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): nyuspatactions@ladas.com nymail@ladas.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAVIER DEL BARRIO PEREZ and MANUEL LOPEZ QUESADA Appeal2018-004869 Application 13/212,266 Technology Center 1700 Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and MERRELL C. CASHION, JR., Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant (Derpriosa Film, S.L., who is also identified as the real party in interest (App. Br. 1)) appeals under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1--4, 17, and 18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The Invention The claims are directed to a graphic support lamination film. Claim 1 is illustrative: 1. A film for the lamination of graphic supports comprising a substrate or nucleus of plastic film (1) of bi-oriented polypropylene manufactured by extrusion with a thickness Appeal2018-004869 Application 13/212,266 comprised of between 10 and 40 µm, having a coating formed by application of a water-based aliphatic polyurethane dispersion having a milky white appearance (2) wherein the coating, when dry, has a thickness of between 0.2 and 5 µm, has a soft touch, contains between 30% and 100% of polyurethane solids, depending on the degree of soft touch required, a gloss value of less than 5% at 60° and, when laminated on a graphic support comprising colors, constitutes a highly transparent film through which the colors are viewable. Schriver Oscar The References us 5,952,106 US 2010/0035026 Al The Rejections Sept. 14, 1999 Feb. 11, 2010 The claims stand rejected under 35 U.S.C. § I03(a) as follows: claims 1-3, 17, and 18 over Oscar, and claim 4 over Oscar in view of Schriver. OPINION We affirm the rejections. The Appellant argues the claims as a group (App. Br. 3-11). We, therefore, limit our discussion to one claim, i.e., claim 1, which is the sole independent claim. Claims 2--4, 1 7, and 18 stand or fall with that claim. See 37 C.F.R. § 4I.37(c)(l)(iv) (2012). Oscar discloses "matte substrates comprising water based coating compositions and base substrates" (i13). The base substrate can be polypropylene having a thickness of about 0.02 mil to about 25 mil (about 0.5 µm to about 635 µm) (i129). The water based coating composition preferably is a water based aliphatic polyurethane dispersion which can be the Appellant's only disclosed water based aliphatic polyurethane 2 Appeal2018-004869 Application 13/212,266 dispersion, i.e., NEOREZ® R-1010 (Oscar ,r,r 16, 17; Spec. 2:10-11) and has a typical application amount of less than or equal to about 2.25 dry pounds per about 3,000 square feet of base substrate (i126). The matte substrate has a soft touch feel and a 60Q gloss which can be less than or equal to about 1, lays flat with no curl (i1i132, 37), and "can be used as an over laminate applied to book covers, magazine covers, folder covers and the like" (i1 15). 1 The Appellant asserts that "Oscar teaches a genus of substrates that 'may be any type of substrate material generally used for coated substrates' (Oscar at paragraph [0029])" (App. Br. 6), and "Oscar teaches a range of substrate thickness of 0.2 to 25 mil (0.5 to 635 microns). This genus of possible substrate thicknesses is substantially broader than the claimed range of 10 to 40 microns" (id.). Oscar discloses that the base substrate can be polypropylene and can have a thickness of about 0.02 mil to about 25 mil (about 0.5 µm to about 635 µm) (i129). Oscar, therefore, would have led one of ordinary skill in the art, through no more than ordinary creativity, to use a polypropylene substrate having a thickness anywhere within the disclosed range, including a thickness between 10 and 40 µm. See KSR Int 'l 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. 1 The Appellant's lamination film can be used for "lamination of book covers, cartons, boxes, bags, posters, impermeable corrugated cardboard, gift wrapping paper, catalogues, printing jobs and printed matter in general" (Spec. 1: 14--16). 3 Appeal2018-004869 Application 13/212,266 The Appellant points out that Oscar's "coating may be 'a polyurethane dispersion, an acrylic dispersion, a blend of polyurethane dispersion and acrylic dispersion, a copolymerized reaction product of a polyurethane dispersion and an acrylic dispersion and the like and combinations thereof' (Oscar at paragraph [0036])" (App. Br. 6). Oscar's coating composition can be NEOREZ® R-1010 (Oscar ,r,r 16, 17), which is the same coating composition used by the Appellant (Spec. 2:10-11). The Appellant argues, in reliance upon the Fourth Supplemental Declaration Under 37 C.F.R. § 1.132 by Oscar Ruiz Vega, that "there is nothing in the cited references that would show or suggest any recognition that either the selection of the claimed substrate or the selection of the claimed substrate thicknesses would have any effect on the chromaticity of any color when viewed through the claimed film" (App. Br. 7), and "in the absence of anything in the prior art to show any recognition that the selection of the claimed substrate and substrate thickness could have any effect on the chromaticity of color viewed through the film, the evidence of record must be considered to be unexpected" (App. Br. 8). In the Declaration, Vega states that [ u ]nder no circumstances would I have imagined that the chromaticity of a surface could be increased merely by coating it with some type of plastic film, as I have never heard this mentioned in my technical field, nor have I read or seen this possibility suggested in the technical journals available to me (Deel. p. 3). That statement is unavailing to the Appellant in view of the disclosure in the Second Supplemental Declaration Under 3 7 C.F .R. § 1.13 2 by Javier Del Barrio (p. 2): 4 Appeal2018-004869 Application 13/212,266 Lamination has long been one of the most popular and cost-effective methods to protect printed material. If a laminate is applied to the printed surface, photos and images appear to have "more contrast" and have better sharpness. . . . [T]he term "more contrast" ... has its technical explanation in many of the attributes that define the colors in the different color space methods. In the CIEL* a *b * space, the Chroma value ( c *) is the attribute that clears up this feeling that is perceived by the human eye. The Appellant argues that in the absence of anything in the prior art to show or suggest that selection of a BOPP [biaxially oriented polypropylene] substrate thickness within the claimed range would have an effect on the chromaticity of colors viewed through the substrate, one of skill in the art would not have known that this variable could be optimized by selection of a BOPP substrate within the claimed range of thickness (Reply Br. 4). The lower limit of Appellant's BOPP thickness range, i.e., 10 µm, is the minimum thickness for adequately protecting media to which the BOPP film is applied (Supplemental Declaration Under 37 C.F.R. § 1.132, ,r 8). Because the media covered by Oscar's matte substrate include book covers which are among the media covered by the Appellant's laminate film (Oscar ,r 15; Spec. 1:10-12), the minimum thicknesses of Oscar's polypropylene base substrate appear to include the Appellant's 10 µm minimum BOPP substrate thickness. Thicknesses above that minimum include 40 µm or less. The Appellant's BOPP substrate's thickness is limited by processability and negative impact of haze when the thickness exceeds 40 µm (Supplemental Declaration Under 37 C.F.R. § 1.132, ,r 8). Because Oscar's and the 5 Appeal2018-004869 Application 13/212,266 Appellant's films are polypropylene and can be applied to the same print media, i.e., book covers, the maximum thicknesses of Oscar's polypropylene base substrate limited by haze likewise appear to include 40 µm. The Appellant asserts that the claimed lamination film shows unexpected results (App. Br. 8), but the Appellant does not provide the required side-by-side comparison, commensurate in scope with the claims, of the claimed invention with the closest prior art and explain why the results would have been unexpected by one of ordinary skill in the art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). For the above reasons we are not persuaded of reversible error in the rejections. DECISION The rejections under 35 U.S.C. § 103(a) of claims 1-3, 17, and 18 over Oscar, and claim 4 over Oscar in view of Schriver are affirmed. 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 6 Copy with citationCopy as parenthetical citation