Ex Parte Hicks et al

Patent Trial and Appeal Board

Feb 3, 2015

11833942 (P.T.A.B. Feb. 3, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THOMAS HICKS and MICHAEL JOHN KYNE

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Appeal 2013-001564
Application 11/833,942
Technology Center 1700
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Before CHUNG K. PAK, ROMULO H. DELMENDO,
and JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1 through 21. We have jurisdiction under 35 U.S.C.
§ 6(b).
The claims are directed to a method for making a window film for
attaching to a window. App. Br. 4. Claims 1 and 16 illustrate the subject
matter on appeal and is reproduced below:

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1. A method for making a window film for attaching
to a window, comprising:

creating a pattern on a screen for printing;

spreading a first layer of clear or translucent resin over
and through the screen onto a polymeric film forming a pattern
of multiple individual bumps corresponding with the pattern on
the screen, wherein a plurality of the bumps form a repeated
printed sub-pattern over substantial portions of the polymeric
film, wherein at least some of the bumps in the repeated printed
subpattern are unevenly spaced apart from each other by
uncovered asymmetrical flat areas of the polymeric film, the
bumps are configured to provide privacy by distorting light
passing through the window film when the window film is
attached to the window; and

applying an ornamentation layer over the polymeric film
to form at least a portion of an ornamental pattern over a
substantial portion of the polymeric film.

16. A method for making a window covering
comprising:
forming a pattern of different shapes on a screen;
applying a first clear or translucent resin material onto a
polymeric film through the pattern of the different shapes on
the screen to print a discontinuous systematic ordered and
repeating patterned layer of discrete different shaped bumps on
a top surface of the polymeric film that primarily allows light to
pass through the film but in an uneven, non-uniform, and
nondiffusing manner that distort viewed images, wherein a
plurality of the different shaped bumps are grouped to form a
variety of different asymmetrical shapes that are aligned in
different asymmetrical orientations with respect to each other,
wherein the asymmetrical shapes formed by the groups of the
different shaped bumps are unevenly and asymmetrically
spaced apart from each other by asymmetrically shaped flat
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areas on the polymeric film that are not covered by the
patterned layer; and
applying an ornamentation layer over the polymeric film
to form at least a portion of an ornamental pattern over a
substantial portion of the polymeric film.
The Examiner relied on the following references in rejecting the
appealed subject matter:
McCarthy US 2,013,472 Sep. 3, 1935
Oberwager US 3,815,263 Jun. 11, 1974
Kuroda US 3,931,425 Jan. 6, 1976
Dickinson US 4,960,671 Oct. 2, 1990
Kashima US 5,735,590 Apr. 7, 1998
De Bastiani US 6,136,127 Oct. 24, 2000
Fong US 6,280,063 B1 Aug. 28, 2001

Appellants (App. Br. 6) request review of the following rejections
from the Examiner’s Final Office Action:1
I. Claims 1 and 8–21 rejected under 35 U.S.C. § 103(a) as
unpatentable over Kuroda, Fong and Kashima.
II. Claims 2–4 and 8–21 rejected under 35 U.S.C. § 103(a) as
unpatentable over Kuroda, Fong, Kashima and McCarthy.
III. Claims 5 and 6 rejected under 35 U.S.C. § 103(a) as
unpatentable over Kuroda, Fong, Kashima and Dickinson.
IV. Claim 7 rejected under 35 U.S.C. § 103(a) as unpatentable over
Kuroda, Fong, Kashima and De Bastiani.
V. Claims 8–21 rejected under 35 U.S.C. § 103(a) as unpatentable
over Kuroda, Fong, Kashima and Oberwager.

1 The Examiner withdrew the separate rejections of the appealed claims
under 35 USC 103(a) based on each of Levy and Torkington as primary
references. Ans.4–5. Accordingly, these rejections are not before us for
review.
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OPINION

The dispositive issue on appeal is: Did the Examiner err in
determining that the combined teachings of Kuroda, Fong and Kashima
would have led one skilled in the art to a method of making a window film
or covering comprising the step of screen printing a pattern of multiple
individual bumps over a substantial portion of a polymeric film as required
by the subject matter of independent claims 1 and 16?2
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s prior art rejections for the
reasons presented by the Examiner.
Appellants’ invention is directed to a method of making a window
covering comprising a substrate having a raised surface and a layer placed
on top of the raised surface. Claims 1, 16. Appellants provide the raised
surface by screen printing bumps on one of the surfaces of the polymeric
film. Id.
Kuroda teaches a method of making a window film 1 comprising the
steps of creating a pattern on a polymeric film 8 by embossing a raised
surface to provide a pebbly effect on a polymeric film 8 and applying a
decorative layer 7 over the embossed surface. Kuroda Fig. 2, col. 1, ll. 53–

2 For Rejections I, Appellants present arguments only for independent claims
1 and 16 and do not separately argue dependent claims 8–15 and 17–21. See
Appeal Brief, generally. Accordingly, we limit our discussion to
independent claims 1 and 16. Dependent claims 8–15 and 17–21 stand or
fall together with their respective independent claim. In addition, Appellants
present no arguments with respect to Rejections II–V, which rely on
additional secondary references to address additional claim limitations. See
Appeal Brief, generally. Therefore, our discussion of Rejection I also
applies to Rejections II–V.
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64, col. 2, ll. 31–58, col. 3, ll. 31–35. Kuroda also teaches providing a
different roughening effect. Kuroda col. 2, ll. 49–50. Fong discloses
another technique for creating a raised surface on a polymeric film by
providing protrusions as bumps to a surface of a polymeric film. Fong col.
1, ll. 15–21; col. 2, ll. 30–34. Fong discloses that the bumps can be made
integral with the polymer substrate or by applying the bumps on the polymer
substrate as a separate layer 14 comprising elements 18, such as plastic
beads. Fong Figures 1 and 2; col. 1, ll. 34–37, col. 3, ll. 50–60. Kashima
recognizes screen printing as a technique for providing a raised surface in
the form of dots or stripes on a substrate layer 1 using resin beads. Kashima
col. 5, ll. 16–20, 57–65. From these teachings in the prior art, the Examiner
determined that it would have been obvious to form a raised surface on
Kuroda’s polymer 8 using known alternative techniques, such as Kashima’s
disclosed screen printing, prior to covering the polymer layer 8 with a layer
7. Final Act. 4.
Appellants argue Kashima's screen printing is distinctly different from
the claimed invention because the material is screen-printed in dots on one
major surface of the light conducting plate. App. Br. 9; Kashima col. 4, ll.
14–22. Thus, Appellants argue that there is no disclosure in Kashima of
“creating a pattern on a screen for printing” and “spreading a first layer of
clear or translucent resin over and through the screen onto a polymeric film
forming a pattern of multiple individual bumps corresponding with the
pattern on the screen,” as required by the subject matter of the independent
claims 1 and 16. App. Br. 9–10.
We are unpersuaded by these arguments and agree with the
Examiner’s obviousness determination. Final Act. 2–4. As noted by the
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Examiner and above, Fong and Kashima disclose alternative techniques for
providing a raised surface on a film. Final Act. 3; Fong Figures 1 and 2; col.
1, ll. 34–37, col. 3, ll. 50–60; Kashima col. 5, ll. 16–20, 57–65. The
Examiner reasoned that it would have been obvious for one skilled in the art
to use known techniques for raising surfaces on a film, such as the one
disclosed by Kashima, as an alternative to the embossing technique of
Kuroda. Final Act. 4. That is, the Examiner determined that one of
ordinary skill in the art would have employed the known surface raising
technique of Kashima, in lieu of the known technique of Kuroda for
providing a raised surface on a film, with a reasonable expectation of
successfully providing a raised surface on the polymeric film 8 of Kuroda.
Id. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007); see also In
re Fout, 675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to substitute
one equivalent for another need not be present to render such substitution
obvious.”); In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) (“Because
the applicants merely substituted one element known in the art for a known
equivalent, this court affirms [the rejection for obviousness].”). Moreover,
as also noted by the Examiner, Appellants acknowledge that multi-layer
screen printing is commonly known to create a textured window film. Ans.
14; Spec. 7–8. Thus, Appellants have not adequately explained why one
skilled in the art would not have substituted Kuroda’s technique with
Kashima’s to arrive at the claimed subject matter. In this regard, we note
that Appellants have not disputed the Examiner’s finding that Kashima
teaches “that light-diffusing materials may be screen-printed” and the
Examiner’s official notice that “it is common knowledge that the process of
screen printing implies creating a pattern on a screen for printing, and
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spreading a first layer of resin over and through the screen onto a substrate
forming a pattern of the resin corresponding with the pattern on the
screen[.]” (Compare Non-final Act. 123, Final Act. 3–4 and Ans.. 14 with
App. Br. 9–16.).
Appellants argue there is no disclosure in any of the references of the
repeated sub-pattern recited in claim 1 or the grouping of the different
shaped bumps as recited in independent claim 16. App. Br. 13–14.
We are also unpersuaded by this argument and agree with the
Examiner’s determination that one skilled in the art would have been
capable of providing Kuroda’s pebbly effect using Kashima’s screen
printing method. Final Act. 4; see In re Sovish, 769 F.2d 738, 743 (Fed. Cir.
1985) (skill is presumed on the part of one of ordinary skill in the art); In re
Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Moreover, Appellants have not
adequately distinguished their claimed pattern from Kuroda’s pebbly pattern.
Appellants additionally argue Kashima's ability to print paint or ink
on a film is distinctly different than the recited ”spreading a first layer of
clear or translucent resin over and through the screen onto a polymeric film”
as the claim recites. App. Br. 9–10.
We are also unpersuaded by this argument. The Examiner found
Kashima discloses screen printing. Ans. 14; Kashima col. 5, ll. 57–65.
Given that Appellants disclose screen printing process is commonly known
for creating textured window films (Spec. 7) , Appellants have not
adequately explained how the screen printing of Kashima differs from
Appellants’ screen printing. Appellants have not adequately explained why

3 We refer to the Examiner’s Non-final Action of June 17, 2011.
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one skilled in the art would not have been capable of using Kashima’s
method to screen print Kuroda’s pebbly pattern.
Appellants further argue Fong teaches away from the claimed pattern
because Fong’s pattern is integrated with a monolithic article instead of a
separately applied and, thus, cannot be formed with Kashima’s method.
App. Br. 10; Fong, Figure 2; col. 3, ll. 49-60.
This argument is also unpersuasive. As noted by the Examiner, Fong
discloses the protrusions of the surface of layer 14 may also be in a separate
resin layer and formed as bumps from the resin itself. Final Act. 3; Fong
col. 1, ll. 39–43; col. 2, ll. 42–46.
Accordingly, we affirm the Examiner’s prior art rejections of claims
1–21 for the reasons presented by the Examiner and given above.

ORDER
The Examiner’s prior art rejections of claims 1–21 under 35 U.S.C.
§ 103(a) are affirmed.

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).

AFFIRMED

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