Ex Parte Gillie

Board of Patent Appeals and Interferences

Sep 11, 2007

10803360 (B.P.A.I. Sep. 11, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES KEVIN GILLIE
____________

Appeal 2007-3551
Application 10/803,360
Technology Center 1700
____________

Decided: September 11, 2007
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-24. Claims 25-48 have been withdrawn from
examination by the Examiner and, therefore, are not involved in this appeal.
We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2007-3551
Application 10/803,360

We REVERSE and REMAND.
I. BACKGROUND
The invention relates to a printable, coated, biaxially oriented film.
Claim 1 is illustrative:
1. A printable, coated, biaxially oriented film, comprising:

(a) a polymeric base film having a predominant polymer, and a first
and a second side, said predominant polymer being polypropylene;
and

(b) a urethane coating on said first side, said coating having been
applied to said base film between a machine direction orientation and
a transverse direction orientation of a two step tentering operation.

The Examiner relies on the following prior art references to show
unpatentability:
Posey US 4,525,419 Jun. 25, 1985
Kinoshita US 5,824,394 Oct. 20, 1998

Specifically, the Examiner rejects claim 1-24 under 35 U.S.C.
§ 103(a) as being unpatentable over Kinoshita in view of Posey.

II. DISCUSSION
The issue on appeal arising from the contentions of Appellant and the
Examiner is: Has the Examiner properly established a prima facie case of
obviousness within the meaning of 35 U.S.C. § 103(a)? We answer this
question in the negative.
Kinoshita is directed to a biaxially oriented laminated polyester film
with improved adhesiveness (col. 2, ll. 24-26). To accomplish the improved
adhesiveness, Kinoshita coats the polyester film with an acrylic- or urethane-
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Application 10/803,360

based adhesive (col. 2, ll. 33-43). Kinoshita explains that, in prior art
polyester films having undercoat layers, there was a problem of poor
adhesion between the undercoat layer and the polyester base film due to
poor compatibility (col. 1, l. 19 to col. 2, l. 15). Kinoshita solves the
adhesion problem “by use of a polyester film having a specific
construction.” (col. 2, ll. 17-21). Specifically Kinoshita selects a specific co-
extrusion laminated multilayer polyester film with a layer contacting the
coating (the A layer) having specific crystalline properties (col. 2, ll. 33-43).
The Examiner recognizes that the Kinoshita polyester film contacting
the coating does not contain polypropylene as claimed. It is the position of
the Examiner that Posey discloses a printable laminate where the oriented
base film may be made of polyester or polypropylene, those compositions
thus being equivalent, and, therefore, it would have been obvious to one of
ordinary skill in the art at the time the invention was made to have employed
the polypropylene film, as taught by Posey, as the base film in Kinoshita
(Answer 4).
The evidence does not support the position of the Examiner. This is
because Kinoshita teaches the use of a polyester base layer with specific
properties so that it is compatible with the urethane or acrylic coating to be
applied, and the Examiner has not established that one of ordinary skill in
the art would understand the polypropylene of Posey as having the necessary
properties for obtaining the desired adhesion to the acrylic or urethane
coating. The base layer of Posey is coated with a chemically different
coating, i.e., a copolyester primer coating. Equivalency of the two polymer
compositions is not established.
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Appeal 2007-3551
Application 10/803,360

The examiner bears the initial burden of presenting a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). This burden has not been met in this case.
Issues for Further Consideration
Prior to an allowance, we direct the Examiner to U.S. Patent
6,217,687 B1, a patent to Shibata et al. issued April 17, 2001. The Examiner
should analyze whether the appealed claims are patentable over Shibata
alone or in combination with other prior art.
Shibata describes treating a surface of a film by “subjecting the film
surface to successive oxidation and coating treatments and stretching said
coated film, followed by second oxidation and coating treatments, to thereby
obtain a treated film which has satisfactory ink transferability and adhesion
thereto and long-term stability and shows excellent printability.” (col. 1, ll.
7-14). The treated thermoplastic resin of the film may be a polypropylene
resin (col. 4, ll. 47-67 and especially col. 4, ll. 52 and 61-67). The treated
thermoplastic resin film may be a stretched film (col. 6, ll. 30-32), and,
specifically, may be a uniaxially stretched polyolefin resin film (col. 6, ll.
61-67).1 The applied coating may be a urethane coating (col. 7, ll. 66-67).
The stretching occurring after coating may be a transverse-direction
stretching (col. 12, ll. 36-37). The object is to provide a thermoplastic film
having antistatic properties and water resistance that allows satisfactory
transfer and adhesion of ultraviolet-curing inks to its surface even after
storage in high-temperature, high-humidity atmosphere (col. 2, ll. 52-56).

1 Polypropylene is a type of polyolefin.
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Application 10/803,360

In summary, Shibata suggests forming a printable, coated, biaxially
oriented film having a polypropylene base film coated with a urethane
coating, the urethane coating applied after a uniaxial stretching step, but
before a transverse stretching step as required by claim 1.
We remand to the Examiner to allow the Examiner to consider the
patentability of the claims of record in view of Shibata and any other prior
art that is relevant.
III. CONCLUSION
In summary, we determine that the Examiner has not properly
established a prima facie case of obviousness within the meaning of
35 U.S.C § 103(a) over Kinoshita in view of Posey. We further determine
that new evidence, namely Shibata, calls into question the patentability of
the claims.
IV. DECISION
The decision of the Examiner is reversed and the Application
remanded to the Examiner to allow consideration of new evidence (U.S.
Patent 6,217,687 B1 issued to Shibata et al.).
We hereby remand this application to the Examiner, via the Office of
a Director of the Technology Center involved, for appropriate action in view
of the above comments.
This application, by virtue of its “special” status, requires immediate
action.

REVERSED and REMANDED

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Appeal 2007-3551
Application 10/803,360

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