Ex Parte Getschel et al

Patent Trial and Appeal Board

Dec 15, 2016

14363132 (P.T.A.B. Dec. 15, 2016)

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.
14/363,132 06/05/2014 Joel A. Getschel 68118US004 1076
32692 7590 12/19/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
BELL, WILLIAM P
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
12/19/2016 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 3M INNOVATIVE PROPERTIES COMPANY
Appeal 2016-008120
Application 14/363,132
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER L. OGDEN, and
DEBRA L. DENNETT, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2016-008120
Application 14/363,132
Appellant1 requests reconsideration of our Decision2 affirming the
Examiner’s rejections of claims 1, 2, 4—9, and 11—22 under pre-AIA 35 U.S.C.
§ 103(a). Request for Rehearing (“Req. Reh’g.” or “Request”) filed Dec. 2, 2016.
Appellant argues that, in determining the claimed invention would have been
obvious over the combined teachings of Haverty et al. (US 2008/0254307 Al, pub.
Oct. 16, 2008 (“Haverty”)) and Longo et al. (US 2010/0003378 Al, pub. Jan. 7,
2010 (“Longo”)), we improperly focused on the teachings of Longo and failed to
give adequate weight to the teachings of Haverty. See Req. Reh’g 2. In our
Decision, we found Longo teaches that the “[bjonding of [a] thermoplastic film
with [a] foamed polyester sheet can be carried out by any technique conventionally
used in the art, including: . . . in-line lamination” (Longo 158). Dec. 6. Based on
this disclosure in Longo, which was not relied upon explicitly by the Examiner in
the final Office Action or the Answer, we were not persuaded by Appellant’s
argument that the Examiner erred in finding the ordinary artisan reasonably would
have expected that an oriented polyester film and a low density polyester foam
could be laminated successfully using Haverty’s continuous (in-line) lamination
device (see Haverty Lig. 1). See Dec. 5—6; see also Examiner’s Answer Mailed
July 15, 2016 (“Ans.”),3.3
1 The real party in interest was identified in the Appeal Brief as “3M Company
(formerly known as Minnesota Mining and Manufacturing Company) of St. Paul,
Minnesota and its affiliate 3M Innovative Properties Company of St. Paul,
Minnesota.” Appeal Brief filed Jan. 25, 2016 (“App. Br.”), 3.
2 DECISION ON APPEAL (“Dec.” or “Decision”) mailed October 31, 2016
(denominating the affirmed rejections as NEW GROUNDS OF REJECTION
pursuant to 37 C.F.R. § 41.50(b)).
3We note that the new arguments advanced by Appellant in this Request are
permitted because they are made in response to a new ground of rejection in the
Decision. 37 C.F.R. § 41.52(a)(3).
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Application 14/363,132
Appellant contends Longo provides a generic list of both oriented and non-
oriented thermoplastic film materials that are suitable for bonding to a low density,
foamed polyester resin sheet. Req. Reh’g 3 (citing Longo 1 56). Appellant further
contends Longo lists several different techniques that can be used for bonding
these materials, but provides no direction as to which technique(s) would be
suitable in the specific case of bonding an oriented polyester film to a foamed
substrate. Id. Appellant argues Longo does not describe any examples of
laminating an oriented polyester film to a low density polyester resin sheet, and
that the ordinary artisan would have understood that “Longo’s preferred
combination (| 58) is to bond amorphous (rather than oriented) polyester films to
substrates by coextrusion (rather than by in-line lamination).” Id. at 3. Appellant
contends “[a]n ordinary artisan would . . . reasonably expect that Longo never
actually experimentally explored the specific combination of bonding an oriented,
polyester film to a substrate by in-line lamination and that Longo thus never
encountered the problem of film shrinkage so copiously documented by Haverty.”
Id.
Appellant argues that, in contrast to Longo, Haverty provides “voluminous,
detailed discussion of the issues that arise when attempting to bond an oriented
polyester film to a substrate by in-line lamination.” Id. Appellant thus contends
that when considering whether Haverty’s in-line lamination technique could be
used to bond an oriented polyester film to a low-density polyester foam, the
ordinary artisan would have given greater weight to Haverty’s teaching that a very
high lamination pressure is required to prevent shrinkage of the oriented polyester
film. Id. According to Appellant, “based on the disclosures of Haverty along with
an artisan’s background knowledge of the crush strength of low-density polyester
foam,” one of ordinary skill in the art would have had “no expectation that
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Application 14/363,132
Haverty’s process could be operated at a pressure low enough to allow a low
density polyester foam to survive but high enough to prevent unacceptable
shrinking of the oriented polyester film.” Id. at 4.
We have considered Appellant’s arguments, but are not convinced of error
in our Decision.
Haverty describes a continuous lamination technique for bonding an
“oriented semi-crystalline thermoplastic, such polyethylene terephthalate
(PET), . . . polypropylene (PP)” (Haverty 1 18), “polybutylene terephthalate (PBT),
or other like materials” {id. 1 50) to a secondary material (id. H 18, 53).
According to Haverty,
[ojrientation (or ‘molecular orientation’) generally refers to the
alignment of molecules within a particular piece of plastic material.
As the molecules are aligned, the orientation arid crystalline structure
of the polymer chains within the piece of plastic increases. The degree
of the orientation and crystallization dictates the strength of the
plastic.
Id. 17.
Haverty discloses that, for purposes of forming a rigid unitary member
(Abstract), PET is a preferred material because “[t]he strength of oriented PET
makes it particularly well-suited for applications requiring high-strength, resilient
materials.” Id. H 50-51. According to Haverty, “PET must be significantly
stretched to obtain optimal polymer chain alignment arid resulting strength, and
tremendous force must be used to orient the material.” Id. 151. Haverty describes
the general processing conditions used for the continuous lamination of a “sheet of
oriented thermoplastic” to the same or another material. See H 52—66. Haverty
also describes several specific processing conditions required when the sheet of
oriented thermoplastic is PET. See id. 158 (“The temperature of each heater can
be varied, and the temperature depends on the material being combined. For
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Application 14/363,132
instance, PET has a melting point of approximately 500° F.), f 63 (“While a
varying range of pressures may be used to combine the layers 101 a-c, a pressure Pi
of between about 5-75 psi is preferable for PET layers with thicknesses of
approximately 0.040 inch.”). Haverty discloses applying a pressure Pi to the
laminate to bond the layers. Id. 1 63. Haverty discloses that “[w]hen oriented
thermoplastic is heated, it tends to contract and shrink” {id. 1 57) and, therefore,
applying a pressure P2 that “is much greater than Pi” “should be used to restrict the
movement and shrinking of the layers” during a subsequent heating stage (id. |
65). Haverty discloses that preventing shrinkage “helps retain the degree of
orientation of the polymer chains within the surfaces of the layers and members,
and thus preserves the strength benefits within the material.” Id. Haverty discloses
that “the value of P2 will vary as a function of the material used for the oriented
layers . . ., the speed of the material through the lamination device . . . , and the
temperatures generated by the heaters.” Id.
Based on the foregoing disclosure in Haverty, we find that Haverty is
concerned primarily with forming laminates comprising “[cjertain forms of. . .
thermoplastics,” i.e., “semi-crystalline thermoplastic sheets,” in particular, semi­
crystalline PET, and that Haverty focuses on the process conditions needed to
successfully laminate these particular materials. See id. ]Hf 51—52. Haverty clearly
teaches, however, that the continuous lamination device of Figure 1 may be used
with “virtually any thermoplastic material.” Id. | 50. As indicated in our Decision
(see Dec. 6), the Examiner’s rejection was based on a finding that the ordinary
artisan would have used Haverty’s continuous lamination device/method to form
one of the laminates described in Longo, e.g., a low-density polyester foam and an
oriented polyester film. See Final Act. 3. Longo discloses laminates comprising a
low-density polyester foam layer (Longo 154) and a “thermoplastic film [that]
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Application 14/363,132
may be selected from a wide variety of oriented and non-oriented films of homo-
polymers, co-polymers, and mixtures thereof!,] . . . including] polyesters” (id.
| 56). Longo does not describe the crystallinity of the material used for the
thermoplastic film (see id.), but discloses that the polyester sheet used for the foam
layer has low crystallinity (id. 143).
Appellants have not argued persuasively that it was erroneous or
unreasonable for the Examiner to find that the ordinary artisan would have
recognized that the high pressure P2 used by Haverty to restrict the movement and
shrinking of a semi-crystalline, oriented thermoplastic sheet (such as semi­
crystalline, oriented PET) would not be required when laminating a low-density
polyester foam and an oriented polyester film as described in Longo, given
Longo’s explicit teaching that in-line lamination techniques can be used. In other
words, we are not persuaded that the ordinary artisan would have focused more
heavily on Haverty’s disclosure in considering whether to laminate the materials
described in Longo, since Appellant has not shown that the same high pressure P2
would be required when laminating materials that are not semi-crystalline, oriented
PET, or other semi-crystalline oriented thermoplastics.
We also have considered, but are not persuaded by Appellant’s argument
that Longo provides no direction to use in-line lamination in the specific case of
bonding an oriented polyester film to a foamed substrate. Req. Reh’g 3. As an
initial matter, we note that Appellant’s argument is not commensurate in scope
with claim 1, because claim 1 does not require an oriented polyester film.4
4 Appellant’s arguments in the Appeal Brief were directed solely to limitations in
claim 1, i.e., Appellant did not present separate arguments in support of
patentability of any dependent claims. See App. Br. 5—11.
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Application 14/363,132
Claim 1 recites a method of forming a polyester laminate comprising a “first
polyester substrate” and a “second polyester substrate,” “wherein the first polyester
substrate and/or the second polyester substrate comprises a polyester foam with a
density of less than 0.2 g/cc.” App. Br. 13 (Claims App’x). The Specification
defines “polyester laminate” as “a multilayer structure comprising at least two
layers of polyester material (e.g., polyester films and/or cellular polyester
materials) that are bonded to each other. Specification filed June 5, 2014
(“Spec.”), 2:18—19. The Specification defines “polyester” as “any material in
which at least about 70 % by weight of the material is a homopolymer and/or
copolymer (e.g., synthetic homopolymer or copolymer) having ester linkages, as
may be formed e.g. by condensation polymerization methods.” Id. at 7:14—16.
The Specification discloses that “[i]n some embodiments a polyester substrate may
be thermoformable, meaning that it is made of a thermoplastic material that can be
heated to a softening temperature at or above which it can be formed to a shape,
and can then be cooled to maintain the structure in the formed shape.” Id. at 9:25—
27; see also id. at 11:25—26. The Specification further discloses that
[i]n some embodiments, a polyester substrate to be bonded . . . may be
a polyester film substrate that comprises at least one oriented
polyester film. By ‘oriented’ polyester film is meant polyester film
that has been subjected at least to a uniaxial orienting process
optionally followed by heat-setting. ... In some embodiments, the
oriented polyester film is a biaxially-oriented polyester film.
Id. at 10:19-26. The Specification discloses that “[i]n various embodiments, the
biaxially oriented polyester film may comprise a % crystallinity of at least about
10, 20, 30, 40, or 50 %.” Id. at 10:32-33.
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Application 14/363,132
The above-cited disclosure in the Specification supports a conclusion that
claim 1, given its broadest reasonable construction, is not limited to a laminate
comprising an oriented film, or a film having a particular degree of crystallinity.5
Turning now to the merits of Appellant’s argument that Longo provides no
direction to select the particular substrate materials recited in claim 1 and an in-line
lamination technique, we find that although Longo discloses that the thermoplastic
film may be selected from a wide variety of materials, Longo specifically identifies
polyesters as the first material in a very limited list of exemplary materials. See
Longo 1 56. Similarly, although Longo states that any conventional technique can
be used to bond the thermoplastic film to a foamed sheet, Longo specifically cites
in-line lamination in a limited list of exemplary techniques. Id. | 58. Longo’s
preferred laminate, comprising “a thermoplastic film of amorphous polyester with
[a] foamed polyester sheet” {id. 1 58), falls within the scope of claim 1, which, as
discussed above, does not require an oriented film or particular degree of
crystallinity. Although Longo describes coextrusion of these materials as
preferred, Appellant has not identified, nor do we find, a teaching away from using
in-line lamination. See In re Gurley 27 F.3d 551, 553 (Fed. Cir. 1994) (“A
reference may be said to teach away when a person of ordinary skill, upon reading
the reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was taken by
the applicant.”).
5 In fact, the only claims that require an oriented polyester substrate are dependent
claims 9 and 19. App. Br. 15—16 (Claims App’x).
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Application 14/363,132
In conclusion, based on the foregoing, we have granted Appellant’s Request
to the extent that we have reconsidered our Decision, but we deny Appellant’s
request to make any change therein.
DENIED
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