Ex Parte Franke et al

Board of Patent Appeals and Interferences

Apr 23, 2008

10276811 (B.P.A.I. Apr. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARSTEN FRANKE and
THOMAS HERTLEIN

____________

Appeal 2008-0320
Application 10/276,811
Technology Center 1700
____________

Decided: April 23, 2008
____________

Before CHUNG K. PAK, THOMAS A. WALTZ, and JEFFREY T. SMITH,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 and 3 through 21, all of the claims
pending in the above-identified application. We have jurisdiction pursuant
to 35 U.S.C. § 6.
We AFFIRM.
Appeal 2008-0320
Application 10/276,811

STATEMENT OF THE CASE
The subject matter on appeal is directed to a laminate comprising first
and second polymeric layers, with the first polymer layer containing at least
one polyolefin, inclusive of, inter alia, an isotactic polypropylene (Spec. 3
and 7). The first polymeric layer is simultaneously biaxially stretched and
partially relaxed to provide a high dimensional stability (Spec. 3, 12 and 14).
The laminate exhibits “a variation of the laminate shrinkage in CD [cross or
transverse direction] over a length of at least 100 m in machine direction of
less than about 0.6%...” upon heat-bonding or extruding the second polymer
layer on the dimensionally stable first polymer layer (Spec. 3 and 14-15 and
claim 1). According to pages 14 and 15 of the Specification:
[T] he present invention exhibits a high dimensional stability
and, in particular, a low variation of shrinkage in CD [cross
direction]. Although the present inventors do not wish to be
bond [sic., bound] by such theory, it is believed that this is due
to the high dimensional stability of the first polymer layer
which survives exposure to heat and optionally pressure when
applying the second polymer layer.
Further details of the appealed subject matter are recited in representative
claim 1 reproduced below:
1. Laminate comprising a first polymer layer and a second
polymer layer wherein the first polymer layer comprises at least one
polyolefin and is simultaneously biaxially stretched to a peak first
direction stretch parameter and, independently of the peak first
direction stretch parameter, to a peak second direction stretch
parameter, partially relaxed to the final first direction stretch
parameter and independently of the final first direction stretch
parameter, to the final second direction stretch parameter, and the
2
Appeal 2008-0320
Application 10/276,811

second polymer layer is extruded upon or heat-bonded to the first
polymer layer, said laminate exhibiting a variation of the laminate
shrinkage in cross direction over a length of at least 100 m in machine
direction of less than about 0.6%.
The Examiner has relied upon the following prior art references:
Gerwig US 5,409,657 Apr. 25, 1995
Hoshino US 5,529,879 Jun. 25, 1996
Gardner US 5,885,501 Mar. 23, 1999
Wong US 6,358,457 B1 Mar. 19, 2002
Romanko US 6,484,371 B1 Nov. 26, 2002
Tachauer US 2003/0070391 A1 Apr. 17, 2003

The Examiner has rejected the claims on appeal based on the above
prior art references as follows:
1) Claims 1, 3 through 12, and 18 through 20 under 35 U.S.C. §
103(a) as unpatentable over the combined disclosures of Wong, Gardner,
Hoshino and Gerwig;
2) Claims 1 and 3 through 21 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Romanko, Wong, Gardner,
Hoshino and Gerwig; and
3) Claims 1, 3 through 6, 8 through 16, 18, 19, and 21 under 35
U.S.C. § 103(a) as unpatentable over the combined disclosures of Tachauer,
Wong, Gardner, Hoshino, and Gerwig.
The Appellants appeal from the Examiner’s decision rejecting the
claims on appeal under 35 U.S.C. § 103(a).1

1 In each of the Examiner’s three grounds of rejection, Appellants do
not separately argue the individual claims on appeal. Therefore, for
purposes of this appeal, we limit our discussion to independent claim 1,
3
Appeal 2008-0320
Application 10/276,811

RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUES, AND
ANALYSIS
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). “[A]nalysis [of whether the subject matter of a
claim would have been obvious] need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co., v. Teleflex, Inc., 127 S. Ct. 1727, 1740-
41 (2007); see also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006) (“The motivation need not
be found in the references sought to be combined, but may be found in any
number of sources, including common knowledge, the prior art as a whole, or
the nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390 (CCPA
1969) (“Having established that this knowledge was in the art, the examiner
could then properly rely, as put forth by the solicitor, on a conclusion of
obviousness ‘from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion in a particular
reference.’”); In re Hoeschele, 406 F.2d 1403, 1406-07 (CCPA 1969) (“[I]t is
proper to take into account not only specific teachings of the references but
which is common to all three rejections, consistent with 37 C.F.R. § 41.37(c)
(1)(vii) (2005).

4
Appeal 2008-0320
Application 10/276,811

also the inferences which one skilled in the art would reasonably be expected
to draw therefrom . . . .”).
Here, Appellants do not dispute the Examiner’s findings that:

Wong discloses a biaxially tenter-stretched film as claimed by applicant.
Note Wong, abstract, col. 2, lines 5-43, col. 5, lines 10-22, col.10, line 58-
col. 12, line 53. The film preferably comprises polypropylene, including
copolymer comprising at least 90% propylene monomer unit by weight (col.
8, lines 47-53). The film is suited for use as a backing layer for an adhesive
tape (col. 7, line 61-col. 8, line 9). Said backing layer may comprise a
bilayer, trilayer, or multilayer film wherein one of the layers is the inventive
biaxially stretched film (col. 8, lines 6-9). The polymeric adhesive is coated
onto one surface of the biaxially stretched film by methods including hot-
melt coating (i.e., extrusion) or lamination under heat (col. 14, lines 39-50).
Suitable adhesives are pressure sensitive adhesives, including polyolefin
adhesives (col. 14, lines 50-67). The tapes may be rolled in stock rolls
wherein a release coating is coated onto the back side of the adhesive tape in
order to facilitate unwinding (col. 14, lines 34-39). Compare Ans. 4 with
Br. in its entirety.

Nor do Appellants dispute the Examiner’s findings at pages 7 through 11 of
the Answer that both Romanko and Tachauer disclose employing a biaxially
stretched or a simultaneously biaxially stretched polyolefin polymer layer,
including the one taught by Wong, in forming their mechanical fasteners via
laminating it to a base polymeric layer with a hook or laminating it as a base
layer of the membrane via adhesives or heat bonding (see also Romanko, col.
13, ll. 11-52, col. 12, ll, 36-51, and col. 9, ll.27-35 and Tachauer, paras. 0006,
0011, 0089, and 0092).
Appellants only contend that one of ordinary skill in the art would not
have been led to partially relax the biaxially stretched polyolefin film taught
by Wong in both machine and transverse directions and would not have
5
Appeal 2008-0320
Application 10/276,811

expected to obtain the claimed laminate shrinkage property. See App. Br. 5-
8 and Reply Br. 2-4. The Examiner disagrees. See Ans. 12-15.
The dispositive question is, therefore, whether a person having
ordinary skill in the art would have been led to partially relax the biaxially
stretched polyolefin film taught by Wong in both machine and transverse
(cross) directions in forming a backing layer for the laminate taught or
suggested by Wong, Romanko and/or Tachauer, with a reasonable expectation
of successfully obtaining a laminate having the claimed thermal shrinkage
property within the meaning of 35 U.S.C. § 103. On this record, we answer
this question in the affirmative.
As indicated supra, there is no dispute that Wong teaches a polymeric
film simultaneously biaxially stretched to the claimed stretch parameters in
machine and transverse directions to provide a backing film. Wong teaches
that the simultaneously biaxially stretched polymer film may be made from a
thermoplastic polymer selected from, inter alia, polyester, polyolefin,
polyethylene, or isotactic polypropylene (col. 8, ll. 30-50). According to
column 1, lines 35-40, of Wang, biaxially stretching a polymeric film to a
desired parameter in a controlled manner is known to “regulate the resistance,
tensile strength, modulus of elasticity, shrinkage, and flatness of biaxially
drawn film….” (emphasis added). (See also col. 12, l. 40 to col. 14, l. 4).
Although Wong does not mention partially relaxing its biaxially stretched
thermoplastic film, such as a simultaneously biaxially stretched polyolefin or
polypropylene film, in machine and transverse directions, the Examiner
correctly finds at pages 4, 12 and 13 of the Answer that Gardner teaches
relaxing a simultaneously biaxially stretched thermoplastic film in the
6
Appeal 2008-0320
Application 10/276,811

machine and transverse directions advantageously provides a film having
tailored levels of machine (MD) and transverse (TD) thermal shrinkages,
namely “low” machine and transverse thermal shrinkages (see abstract, col. 1,
ll. 60-67, and col. 2, ll. 52-56). We find that Gardner goes on to teach (col. 4,
ll. 17-23) that:
The TD and MD relaxation can be introduced simultaneously or
sequentially. The amounts of MD and TD relaxation to which
the film is subjected and the temperature at which the film is
relaxed control the thermal shrinkage or dimensional stability
of the thermoplastic film.

Given the above teachings2, we concur with the Examiner that one of
ordinary skill in the art would have been led to optimally relax the
simultaneously biaxially stretched thermoplastic films (polyolefin and
polypropylene films) taught by Wang and use the resulting dimensionally
stable polyolefin or polypropylene film having low thermal shrinkage
properties in the TD (cross) and MD directions as a base or backing layer of
the laminate taught or suggested by Wang, Romanko, and/or Tachauer, with a
reasonable expectation of obtaining a laminate having good dimensional
stability, including the same or similar thermal shrinkage property as the base
layer. One of ordinary skill in the art would have reasonably expected that
due to the dimensionally stable biaxially stretched and relaxed base layer, an

2 Both Hoshino and Gerwig are at best cumulative since they teach the
importance of relaxing a biaxially stretched polyester film in machine and
transverse directions.
7
Appeal 2008-0320
Application 10/276,811

overlapping layer directly bonded to the base layer will retain the same or
similar dimension as the base layer so long as it is not delaminated. 3
Appellants contend (App. Br. 6) that:
Nowhere does the art teach a laminate of a biax[i]ally oriented
and tempered polyolefin film that has a subsequently applied
polymer layer which results in a highly dimensionally stable
film laminate. The unexpected nature of these results can be
seen in the examples and counterexamples in the application as
filed. By applying the second layer the invention example S-
BOPP films had an average MD shrinkage that decreased by an
order of magnitude with a variation in the cross direction
shrinkage well below that of standard BOPP films (note,
comparative example 2).

However, Appellants have not demonstrated that the claimed invention
imparts unexpected results. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
The examples referred to by Appellants only show that the dimensional
stability of a laminate is expectedly dependent on the dimensional stability of
a base layer and that the dimensionally stable base layer can be produced by
the application of appropriate relaxation and stretching in accordance with the
teachings of Wong and Gardner. In re Skoner, 517 F.2d 947, 950 (CCPA
1975) (“Expected beneficial results are evidence of obviousness of a claimed
invention just as unexpected beneficial results are evidence of
unboviousness.”). Indeed, Appellants do not aver anywhere in the

3 In addition, Romanko, for example, teaches laminating one or more layers
of simultaneously biaxially oriented polypropylene to a base layer with
hooks via adhesive or heat bonding to impart to the resulting laminate “high
strength…and high tensile modulus…” ( Romanko, col. 13, ll. 36-42 and
col. 9, ll. 28-35).
8
Appeal 2008-0320
Application 10/276,811

Specification that the alleged improvements are unexpected. In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997).
Accordingly, based on the factual findings set forth above and in the
Answer, we concur with the Examiner that the preponderance of evidence
weighs most heavily in favor of obviousness within the meaning of 35 U.S.C.
§ 103(a).
CONCLUSION
In view of the foregoing, we affirm the Examiner’s decision rejecting:
1) Claims 1, 3 through 12, and 18 through 20 under 35 U.S.C. §
103(a) as unpatentable over the combined disclosures of Wong, Gardner,
Hoshino and Gerwig;
2) Claims 1 and 3 through 21 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Romanko, Wong, Gardner,
Hoshino and Gerwig; and
3) Claims 1, 3 through 6, 8 through 16, 18, 19, and 21 under 35
U.S.C. § 103(a) as unpatentable over the combined disclosures of Tachauer,
Wong, Gardner, Hoshino, and Gerwig.

ORDER
The decision of the Examiner is affirmed.

9
Appeal 2008-0320
Application 10/276,811

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

tf/ls

3M INNOVATIVE PROPERTIES COMPANY
P.O. BOX 33427
ST. PAUL, MN 55133-3427

10