Ex Parte IGARASHI et al

Patent Trial and Appeal Board

Apr 27, 2016

12635889 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/635,889 12/11/2009
23460 7590 04/29/2016
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Takeshi IGARASHI
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
705685 1196
EXAMINER
SHAH,SAMIR
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
04/29/2016 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKESHI IGARASHI,
TOSHITAKA SUZUKI, YUKI SAITOU, IKKO HANAKI,
MASAHIRO KONDO, and YOSHIKUNI HIRANO
Appeal2014-007470
Application 12/635,889
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 8, and 18-23. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 The real party in interest is the Nitto Denko Corporation. App. Br. 1.
Appeal2014-007470
Application 12/635,889
Claims 1 and 23 are illustrative of the claimed subject matter
(emphasis added):
1. A paint film-protecting sheet in roll form comprising a
pressure-sensitive adhesive sheet wound in a lengthwise
direction with the adhesive sheet comprising a substrate in
continuous sheet form and a pressure-sensitive adhesive layer
disposed on the substrate, wherein
the substrate is an extruded sheet comprising polyethylene
resin or polypropylene resin as a primary resin component,
a surface of the substrate on a pressure-sensitive adhesive
layer side thereof is composed of a material containing at least
20% by mass of an ethylene component,
the pressure-sensitive adhesive layer is formed of a non-
crosslinking polyisobutylene-based pressure-sensitive adhesive,
and
the paint film-protecting sheet, after being unwound from
the roll, has a percent shrinkage, in the lengthwise direction, of
1.2% or less than 1.2% when heated at 80°C for 1 hour.
23. A paint film-protecting sheet in roll form comprising a
pressure-sensitive adhesive sheet wound in a lengthwise
direction with the adhesive sheet consisting essentially of a
substrate in continuous sheet form and a pressure-sensitive
adhesive layer disposed on the substrate,
wherein
the substrate consists only of an extruded sheet comprising
polyethylene resin or polypropylene resin as a primary resin
component,
a surface of the substrate on a pressure-sensitive adhesive
layer side thereof is composed of a material containing at least
20% by mass of an ethylene component, and
the paint film-protecting sheet, after being unwound from
the roll, has a percent shrinkage, in the lengthwise direction, of
1.2% or less than 1.2% when heated at 80 °C for 1 hour.
(App. Br. 18, 21; Claims App.)
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Appeal2014-007470
Application 12/635,889
The Examiner maintains the following rejections:
(a) claim 18 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter of "blend ratio";
(b) claim 2 is rejected under 35 U.S.C. § 112, fourth paragraph, as
being of improper dependent form for failing to further limit the subject
matter of claim 1 ;
(c) claims 1, 20, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Inoue et al. (U.S. 2003/0190463 Al, published Oct. 9,
2003) (hereinafter "Inoue") in view of Schumann et al. (U.S. 2002/0114939
Al, published Aug. 22, 2002) (hereinafter "Schumann");
(d) claims 2, 8, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Inoue in view of Schumann, and further in view of
Sipinen et al. (U.S. Patent No. 4,769,283, issued Sept. 6, 1988) (hereinafter
"Sipinen");
(e) claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Inoue in view of Schumann, and further in view of Larter et al. (U.S. Patent
No. 6,689,857 Bl, issued Feb. 10, 2004) (hereinafter "Larter"); and
(f) claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Inoue in view of Schumann, and further in view of
Nakamura et al. (U.S. 2002/0091197 Al, published July 11, 2002)
(hereinafter "Nakamura") and evidence in Suzuki et al. (U.S. 2010/0151233
Al, published June 17, 2010).
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Appeal2014-007470
Application 12/635,889
ANALYSIS
Rejection (a) under 35 USC§ 112, i-f 2
Section 112, i-f 2, requires "that a patent's claims, viewed in light of
the specification ... inform those skilled in the art about the scope of the
invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120, 2129 (2014). The Examiner has rejected claim 18
under 35 U.S.C. § 112, i-f 2 on the grounds that "[i]t is not clear whether the
blend ratio is based on weight blend ratio or mole blend ratio." (Non-Final
Act. 8-9).
Upon consideration of the Examiner's findings, the evidence on this
record and the arguments advanced by Appellants, the preponderance of
evidence weighs in favor of a conclusion that the claims comply with the
requirement to particularly point out and distinctly claim the subject matter.
In particular, Appellants' arguments are persuasive that the skilled artisan
would clearly understand claim 18 because the Specification refers to a
weight percent blend ratio (App. Br. 4, citing Spec. i-f 46; Table 1 ). Thus, we
find that a person of ordinary skill in the art would understand that the
claims, which recite the limitation "blend ratio," is based on weight blend
ratio.
Accordingly, we reverse the rejection of claim 18 under 35 U.S.C.
§ 112, ,-r 2.
Rejection (b) under 35 USC§ 112, f 4
The Examiner finds that the claims are improperly dependent because
"claim 1 recites surface of the substrate composed of a material containing at
least 20% by mass of an ethylene component, i.e.[,] 20% to 100%, while
claim 2 recites substrate contains an ethylene component in an amount of not
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Appeal2014-007470
Application 12/635,889
greater than 50% by mass, i.e.[,] 0 to 50%" (Ans. 3--4). Therefore,
according to the Examiner, claim 2 fails to further limit claim 1 because
"claim 2 with respect to the substrate is contradictory or unclear relative to
the elements of claim 1"2 (Ans. 4).
We disagree with the Examiner's determination that claim 2 is
improperly dependent under Section 112 i-f 4, which requires, inter alia, that
a dependent claim further limit the claim from which it depends.
In this instance, claim 2 specifically recites that it depends from claim
1 ("The protective sheet according to claim 1 .... ")and recites an additional
structural limitation ("wherein the substrate contains an ethylene component
in an amount of not greater than 50% by mass of the substrate" (emphasis
added)). Appellants' arguments are persuasive that the amount of ethylene
in claim 2 is in reference to the substrate as a whole and not to a surface
thereof, as recited in claim 1 (App. Br. 4). The Specification, furthermore,
discloses multilayer substrate coextrusion processes, which thereby provides
different amounts of ethylene in the surface of the substrate as compared to
the substrate as a whole (see Spec. i-fi-127, 28, 46). Claim 2, therefore, further
limits the invention recited in claim 1 in compliance with the requirements
of Section 112 i-f 4.
Accordingly, we reverse the rejection of claim 2 under 35 U.S.C.
§ 112, ,-r 4.
2 We note that the Examiner's grounds for this rejection appear to be
governed under Section 112 i-f 2, as being indefinite for failing to particularly
point out and distinctly claim the subject matter. Nevertheless, we find no
lack of clarity or contradiction of claim 2 relative to claim 1 for the reasons
stated above.
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Appeal2014-007470
Application 12/635,889
Rejections (c)-(j) under 35 US.C. § 103(a)
After review of the respective positions provided by Appellants and
the Examiner, we conclude that the preponderance of the evidence supports
Appellants' position that the Examiner has not presented a prima facie case
of obviousness in this case for substantially the reasons set forth by
Appellants in the Briefs. Accordingly, we reverse the Examiner's§ 103
rejections of all the claims on appeal.
We add the following primarily for emphasis.
Independent claims 1and23
All of the § 103 rejections rely upon the combination of Inoue and
Schumann as evidence of obviousness. We agree with Appellants that a
proper interpretation of the appealed claims is that claims 1 and 23 exclude
substrates that are not an extruded sheet comprising polyethylene resin or
polypropylene resin as a primary resin component (Reply Br. 6 ("No
additional layers forming part of the substrate, such as a non-woven sheet,
are encompassed by the claims")). The plain meaning of "the substrate
consists only of an extruded sheet" as recited in claim 23 precludes the
addition of any other form of substrate layer(s). The Specification also
provides that preferred substrates of the present invention are limited to
single layered extrusions or multilayered coextrusions of resin sheets (Spec.
i-fi-125, 31, and 46). When read in light of the Specification, we agree with
Appellants that the recitation of "the substrate is an extruded sheet" in claim
1 is equivalent to "the substrate consists only of an extruded sheet" as recited
in claim 23 (e.g., Reply Br. 5, 6). Therefore, the claimed substrate in each
independent claim, properly construed, precludes any substrate that is not
extruded.
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Appeal2014-007470
Application 12/635,889
Furthermore, Appellants persuasively argue that a person of ordinary
skill in the art would not glean from Inoue' s disclosure that only the polymer
film layer is the substrate because Inoue refers to the support as comprised
of both the non-woven fabric and the polymer film (see Inoue, Fig. 2).
Therefore, a preponderance of the evidence supports Appellants'
position that the Examiner has taken an unreasonably broad interpretation of
the claimed substrate. Accordingly, we reverse the rejection of claims 1 and
23 under 35 U.S.C. § 103(a).
Dependent claims 2, 8, and 18-22
The Examiner does not rely upon any of the other references to cure
Inoue's deficiency. Thus, we reverse the rejections of dependent claims 2,
8, and 18-22.
We do not sustain the Examiner's rejections.
CONCLUSION
The Examiner's§§ 112 and 103 rejections of all the claims on appeal
are reversed.
REVERSED
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