Ex Parte Dietz

Board of Patent Appeals and Interferences

Nov 13, 2006

09591584 (B.P.A.I. Nov. 13, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PETER T. DIETZ
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Appeal 2006-2318
Application 09/591,584
Technology Center 1700
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Decided: November 13, 2006
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Before GARRIS, WARREN, and WALTZ, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Primary Examiner’s final
rejection of claims 1 through 15, 17 through 22, 31 through 33, 35, 38, 39,
41 and 42. The Examiner has indicated that the remaining claims in this
application are either allowed (claims 24-27, 34, and 40) or objected to as
allowable but depending on a previously rejected base claim (claims 16, 23,
30, 36, and 37) (Br. 1). We have jurisdiction pursuant to 35 U.S.C. § 134.
Appeal 2006-2318
Application 09/591,584

According to Appellant, the invention is directed to a laminate
attached to window glass to provide a vehicular or architectural glazing
element which has reduced spall and lacerative consequences on impact
fracture of the window glass (Br. 2-3). Independent claim 1 is illustrative of
the invention and is reproduced below:
1. A laminate attached to window glass suitable for use in a
vehicular or architectural glazing element which has reduced spall and
lacerative consequences on impact fracture of the window glass; said
laminate comprising:

(a) a first lamina comprised of visible light transmissive
flexible nonadhesive polymeric material having a first major surface
and an opposite second major surface;

(b) a scratch-resistant layer over said first major surface to
provide an exposed surface to the laminate;

(c) at least one additional lamina comprised of visible light
transmissive flexible nonadhesive polymeric material;

(d) a sufficient number of layers of in situ visible light
transmissive pressure sensitive adhesive layers to bond said laminae
together with the scratch-resistant layer exposed; and

(e) a layer of in situ visible light transmissive ambient
temperature attachable pressure sensitive adhesive to bond said
laminate to window glass, wherein the total thickness of the laminate
exceeds about 5 mils and the laminate exhibits a light transmittance.

The Examiner has relied upon the following references as evidence of
obviousness:
Murphy US 4,157,417 Jun. 05, 1979
Hutchinson US 5,118,540 Jun. 02, 1992
Bilkadi US 5,677,050 Oct. 14, 1997
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Yang US 6,013,722 Jan. 11, 2000
Tanaka US 6,033,785 Mar. 07, 2000
The following rejections are before this merits panel for review in this
appeal:
(1) claims 1-5, 7-9, 11, 13, 17-21, 31-33, 38, 39, and 41 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Hutchinson in view
of Murphy (Answer 3);1
(2) claim 10 stands rejected under § 103(a) over Hutchinson in view
of Murphy and Tanaka (Answer 5);
(3) claim 6 stands rejected under § 103(a) over Hutchinson in view of
Murphy and Bilkadi (Answer 6);
(4) claims 14, 15, 22, and 35 stand rejected under § 103(a) over
Hutchinson in view of Murphy and Yang (id.); and
(5) claims 12 and 42 stand rejected under § 103(a) over Hutchinson in
view of Murphy and Bilkadi (Answer 7).2
Based on the totality of the record, including due consideration of the
Decision in the first appeal in this application (Appeal No. 2005-0244, with
the Decision entered Jan. 28, 2005, hereafter the “prior Decision”),
Appellant’s arguments, the Specification, claims, and the prior art of record,
we AFFIRM all rejections on appeal essentially for the reasons stated in the

1 We refer to and cite from the Answer dated Jan. 23, 2006. However, this
rejection has been corrected by the Examiner to include claim 41 (see the
Supplemental Examiner’s Answer dated Feb. 23, 2006). We note that claim
40 has been allowed, and therefore was mistakenly included in this rejection
as set forth in the Final Office Action dated June 22, 2005, page 2, and the
Brief, page 5.
2 This rejection has been corrected by the Examiner to include claim 42 (see
the Supplemental Examiner’s Answer dated Feb. 23, 2006).
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Answer, the Decision in Appeal No. 2005-0244, as well as those reasons set
forth below.
OPINION
A. The Rejection over Hutchinson and Murphy
The Examiner finds that Hutchinson discloses a reflective film
mounted on a substrate having the following layers: a protective
fluorocarbon film, a first layer of pressure sensitive adhesive (hereafter
PSA), a silver layer, a biaxially oriented polyethylene terephthalate
(hereafter PET), a second layer of a PSA, another layer of a biaxially
oriented PET, a third layer of PSA and a support structure (Answer 3; prior
Decision, page 4). The Examiner further finds the claimed laminate
thickness would have been suggested by Examples 5, 7, and 8 of Hutchinson
(Answer 3-4). The Examiner finds that the thin silver film taught by
Hutchinson does not necessarily cause the laminate to be completely non-
transmissive to visible light but rather reduces the visible light transmittance
of the laminate (Answer 4). Since the Examiner construes the claims as
“unspecific about the percentage of visible light transmission,” the Examiner
finds that Hutchinson “reads on” the claim limitation that the laminate
exhibits “a light transmittance” (id.; see claim 1 on appeal, last line).3
The Examiner recognizes that Hutchinson does not specifically
disclose that the reflective film is attached to window glass as required by
the claims on appeal (Answer 4). The Examiner finds that Murphy teaches a
similar reflective film attached to window glass to reduce the heat and glare

3 We note that claims which recite that the laminate has a light transmittance
of at least about 75% have been allowed by the Examiner (e.g., see claim
24).
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Application 09/591,584

of solar radiation (id.). From these findings, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time of
Appellants’ invention to employ the reflective film of Hutchinson with a
support structure of window glass to reduce heat and glare from solar
radiation, as taught by Murphy (id.).
Appellant notes that claims 1 and 9 were amended after the first
appeal to differentiate over Hutchinson, namely to recite that the window
glass is suitable for use or as a part of a vehicular or architectural glazing
element while Hutchinson has no need for a window glass support since
solar radiation is not intended to pass through the reference structure (Br. 6-
7). Appellant argues that it is improper for the Examiner to ignore the
limitation in claims 1 and 12 that the laminate is “suitable for use in a
vehicular or architectural glazing element” (Reply Br. 3, 6). Appellant also
argues that the Examiner has ignored the positive recitations in claims 9, 41
and 42 of “[a] vehicular or architectural glazing element” (Reply Br. 2-3).
Appellant’s arguments are not persuasive. We determine that the
Examiner has not ignored the limitations of the claims (Answer 9-10). As
correctly noted by Appellant and the Examiner, the only difference between
claim 1 on appeal and claim 1 in the prior Decision (Appeal No. 2005-0244)
is the limitation that the laminate is “suitable for use in a vehicular or
architectural glazing element” (Br. 7; Answer 9). The determination of the
effect of preamble language is but a part of the broader task of claim
construction. See Bell Communications Research, Inc. v. Vitalink
Communications Corp., 55 F.3d 615, 621, 34 USPQ2d 1816, 1820 (Fed. Cir.
1995). Language in a claim preamble acts as a claim limitation only when
such language serves to “give meaning to a claim and properly define the
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invention,” not when the preamble merely states a purpose or intended use
of the invention. In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673
(Fed. Cir. 1994). “[W]here a patentee defines a structurally complete
invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention, the preamble is not a claim limitation.” Rowe
v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997). Here
we determine that the body of claim 1 defines a structurally complete
laminate, and the preamble language only serves to state the intended use of
the laminate. Therefore we construe claim 1 on appeal as being the same or
identical scope of claim 1 in Appeal No. 2005-0244, and adopt the findings
and conclusions of law regarding claim 1 as noted in the prior Decision in
Appeal No. 2005-0244.
We agree with Appellant that claim 9 recites a “vehicular or
architectural glazing element” (Br. 7). However, claim 9 merely recites the
same laminate and window glass substrate as claim 1 on appeal, and
Appellant has not pointed out, in the Specification, any additional elements
or components that would be present in a vehicular or architectural glazing
element. Furthermore, Appellant has not pointed to any prior art or
established that one of ordinary skill in this art would have recognized that
additional components would be present in such glazing elements. See In re
Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997)
(“[T]he PTO applies to the verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.”).
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Therefore we determine that the introductory language of claim 9 on appeal
does not patentably distinguish over the laminate of Hutchinson as modified
by Murphy.
Appellant argues that there is no mention in Hutchinson that a thin
layer of silver is characterized by the presence of a spectral window through
which visible light passes (Br. 9; Reply Br. 7). Although Appellant admits
that Hutchinson teaches that some ultraviolet (UV) light passes through the
thin film of silver (Reply Br. 5), Appellant argues that the Hutchinson film
functions to reflect visible light in addition to infrared (IR) and UV light
while Murphy functions to transmit light while reducing glare (Br. 9, 11;
Reply Br. 7). Appellant argues that, contrary to our prior Decision at page 6,
Murphy does not provide any disclosure, teaching, or suggestion that would
have motivated one of ordinary skill in the art to combine it with Hutchinson
(Br. 10). Appellant also disagrees with our prior Decision as to any
conclusion that presumes that radiation passes completely through the metal
layer of Hutchinson (Reply Br. 10).
Appellant’s arguments are not persuasive. Appellant’s argument that
Hutchinson fails to disclose that visible light passes through the thin layer of
silver is not commensurate with the scope with the claims. For example,
claim 1 on appeal merely requires that the laminate “exhibits a light
transmittance” (claim 1 on appeal, last line). This claim does not specify
any amount of light transmitted or that the light is restricted to “visible”
light. See In re Morris, supra. Appellant admits that Hutchinson discloses
that some UV light passes through the thin film of silver (Reply Br. 5; see
Hutchinson 8: 60-64). Furthermore, Hutchinson teaches that some visible
light passes through pure silver films (Hutchinson 1:50-59). With regard to
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Appellant’s argument regarding the opposing functions of Hutchinson and
Murphy, and thus the motivation for combining these references, this
argument has been adequately discussed in our prior Decision in Appeal No.
2005-0244, and we refer to and adopt the reasoning and remarks from our
prior Decision (pages 6-7).
In view of our claim construction discussed above, as well as the
reasons stated in the Answer and our prior Decision in Appeal No. 2005-
0244, we determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence. Based on the totality of the
record, including due consideration of Appellant’s arguments, we determine
that the preponderance of evidence weighs most heavily in favor of
obviousness within the meaning of § 103(a). Therefore we affirm the
rejection of claims 1-5, 7-9, 11, 13, 17-21, 31-33, 38, 39, and 41 under
§ 103(a) over Hutchinson in view of Murphy.
B. The Remaining Rejections
In each of the remaining rejections, the Examiner applies Hutchinson
in view of Murphy, as discussed above, with the additional citation of
Tanaka against claim 10, Bilkadi against claims 6, 12, and 42, and Yang
against claims 14, 15, 22, and 35 (Answer 5-7). We adopt the Examiner’s
findings of fact and conclusions of law from the Answer and as discussed
above.
With regard to the rejection of claim 6, Appellant argues that Bilkadi
does not suggest the claimed laminate (Br. 11). This argument is not well
taken since Bilkadi has been applied for its teaching of the advantages of
using a ceramer coating in combination with a polyacrylic adhesive (Answer
6). We note that Appellant does not dispute this finding.
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With regard to the rejection of claim 12, Appellant argues that there is
no suggestion or motivation to replace the temporary premask film of
Hutchinson with the permanent cured ceramer layer of Bilkadi (Br. 12).
This argument is not well taken since, as correctly stated by the Examiner
(Answer 12), the rejection does not propose replacing the premask of
Hutchinson with the ceramer of Bilkadi.4
With regard to the rejection of claims 14, 15, 22, and 35, Appellant
argues that Yang fails to provide any motivation or suggestion for the
proposed combination, nor does Yang disclose the claimed laminate with a
percent haze less than or equal to about 2.0% (Br. 12-13). These arguments
are the same arguments made in the prior Appeal, and we adopt our remarks
from pages 9-10 of our prior Decision in Appeal No. 2005-0244.
For the foregoing reasons and those stated in the Answer and our prior
Decision, we determine that the Examiner has established a prima facie case
of obviousness in view of the reference evidence in the above rejections.
Based on the totality of the record, including due consideration of
Appellant’s arguments, we determine that the preponderance of evidence
weighs most heavily in favor of obviousness within the meaning of § 103(a).
Accordingly, we affirm the rejections as set forth above.
C. Summary
The rejection of claims 1-5, 7-9, 11, 13, 17-21, 31-33, 38, 39, and 41
under § 103(a) over Hutchinson in view of Murphy is affirmed. The
rejection of claim 10 under § 103(a) over Hutchinson in view of Murphy and
Tanaka is affirmed. The rejection of claim 6 under § 103(a) over

4 We note that claim 12 on appeal does not require that the laminate exhibit
any light transmittance.
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Hutchinson in view of Murphy and Bilkadi is affirmed. The rejection of
claims 14, 15, 22, and 35 under § 103(a) over Hutchinson in view of Murphy
and Yang is affirmed. The rejection of claims 12 and 42 under § 103(a) over
Hutchinson in view of Murphy and Bilkadi is affirmed.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).
AFFIRMED

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HAROLD C. KNECHT III
OFFICE OF INTELLECTUAL PROPERTY COUNSEL
3M INNOVATIVE PROPERTIES COMPANY
P.O. BOX 33427
ST. PAUL, MN 55133
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