Ex Parte Johnson et alDownload PDFBoard of Patent Appeals and InterferencesFeb 20, 200908421055 (B.P.A.I. Feb. 20, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MICHAEL A. JOHNSON, CLAYTON A. GEORGE, PEGGY S. WILLETT and SCOTT R. MEYER ____________ Appeal 2008-4952 Application 08/421,055 Technology Center 1700 ____________ Decided:1 February 24, 2009 ____________ Before CHUNG K. PAK, PETER F. KRATZ, and MARK NAGUMO, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 6 through 13, 16 through 24, 26 through 29, and 31 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-4952 Application 08/421,055 through 37, all of the claims pending in the above-identified application. We have jurisdiction under 35 U.S.C. §6. We REVERSE for the reasons expressed in the Appeal Brief, the Reply Brief, and below. Statement of the Case The subject matter on appeal is directed to “a method of using a melt- flowable sheet material to provide protective and aesthetic features to a surface” (Spec. 1, ll. 10-12). This method, as recited in independent claims 6, 28, and 29 on appeal, requires expressly or impliedly that the melt- flowable composition on the sheet material be in contact with the surface of a step joint or a surface of a vehicle body. Details of the appealed subject matter are recited in representative claim 6 reproduced below: 6. A method for modifying a surface of a step joint in a vehicle body comprising the steps of: (a) placing a sheet material on the surface of the step joint, said sheet material comprising (i) a lower melt-flowable layer comprising a melt-flowable composition, the melt-flowable layer having a thickness in the range of at least about 0.05 mm up to about 25 mm, and (ii) a dimensionally stable film for controlling the melt-flow behavior of said melt-flowable composition, said film having a surface topography and being sufficiently dimensionally stable so as not to melt and flow or exhibit wrinkling when heated to a melt sealing temperature of the melt-flowable composition and subsequently cooled, said sheet material being placed on the surface of the step joint such that said melt-flowable composition contacts said surface of the step joint; (b) heating the sheet material to a melt sealing temperature sufficient to cause said melt-flowable composition to (1) melt, flow and level out over surface imperfections or fill gaps in the step joint, as well as (2) adhere and form a bond to the step joint; and (c) allowing the sheet material and the step joint to cool while substantially retaining said surface topography of said film, wherein the melt-flowable layer is thick enough to provide sufficient material to flow and seal the step joint, the sheet material remains adhered to 2 Appeal 2008-4952 Application 08/421,055 the step joint, and topographical or protective features are imparted to the step joint by the sheet material. As evidence of unpatentability of the claimed subject matter, the Examiner has proffered the following prior art references: Sato JP 58-217516 A Dec. 17, 1983 Schappert US 4,822,683 Apr. 18, 1989 Matsui JP 01-152049 A Jun. 14, 1989 Leatherman ‘679 US 4,877,679 Oct. 31, 1989 Leatherman ‘779 US 4,892,779 Jan. 9, 1990 Manser US 4,920,182 Apr. 24, 1990 Johnson EP 0 384 598 A1 Aug. 29, 1990 Masaaki JP 03-273975 A Dec. 5, 1991 The Examiner has rejected the claims on appeal as follows: 1) Claims 6, 8, 16, 17, 19 through 24, and 34 under 35 U.S.C. § 102(b) as anticipated by the disclosure of Masaaki; 2) Claims 6, 8, 12, 13, 16, 17, 19 through 24, and 34 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Masaaki; 3) Claims 7, 9, and 28 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Masaaki, Schappert, and Manser; 4) Claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Masaaki, Leatherman ‘679, and Leatherman ‘779; 5) Claims 18, 29, 31, 36, and 37 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Masaaki, Manser, and Sato; 6) Claim 32 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Masaaki and Johnson; 7) Claims 26, 27, and 33 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Masaaki and Matsui; and 3 Appeal 2008-4952 Application 08/421,055 8) Claim 35 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Masaaki, Schappert, Manser and Matsui. ISSUE The Examiner’s anticipation and obviousness determinations are based on findings that Masaaki teaches or would have suggested particularly placing and sufficiently heating a lower melt-flowable composition on a dimensionally stable film to melt and flow the melt-flowable composition to cover and adhere to a surface or a step joint of a vehicle body as recited in claims 6, 28, and 29. (See Ans. 3-23). Thus, the dispositive question raised is: Has the Examiner demonstrated that Masaaki teaches or would have suggested sufficiently heating a particularly placed lower melt-flowable composition on a dimensionally stable film to melt and flow the melt- flowable composition to cover and adhere to a surface or a step joint of a vehicle body or substrate as recited in claims 6, 28, and 29? CONCLUSION OF LAW On this record, we determine that the Examiner has not demonstrated that Masaaki teaches or would have suggested sufficiently heating a particularly placed lower melt-flowable composition on a dimensionally stable film to melt and flow the melt-flowable composition to cover and adhere to a surface or a step joint of a vehicle body or substrate as recited in claims 6, 28, and 29. 4 Appeal 2008-4952 Application 08/421,055 FINDINGS OF FACT 1) Masaaki teaches employing a tape having a first layer of hot melt film (4a) having a thickness of about 30-100 micrometers and a second layer of thermosetting viscous resin (4b) corresponding to the claimed dimensionally stable film on the joint of vehicle body plates to prevent rust (Compare Masaaki, Abstract and p. 2 with Spec. 4). 2) Masaaki teaches applying the tape such that the second layer of thermosetting viscous resin (4b), not the hot melt film (4a), contacts a ED coating film on the joint of vehicle plates or the joint itself (p. 6, together with Figs. 1-5). 3) Masaaki teaches an optional backing treatment to soften the tape which is hardened upon reaching its ordinary temperature (p. 8). 4) According to the Examiner (Ans. 3), “the tape softens (but does not melt) during baking but hardens after cooling to ordinary temperature (translation p. 8)….” 5) Masaaki is silent as to placing, melting, and flowing the hot melt film (4a) of its tape directly on the joint or surface of vehicle plates to cover and adhere to the joint or surface of the same, while preventing its thermosetting viscous resin from melting and flowing or wrinkling (See Masaaki generally). 6) The Examiner relies on Schappert, Manser, Leatherman ‘679, Leatherman ‘779, Sato, Johnson, and Matsui as evidence for limitations recited in various dependent claims (Ans. 6-13). 5 Appeal 2008-4952 Application 08/421,055 PRINCIPLES OF LAW Under 35 U.S.C. § 102(b), anticipation is established only if “each and every element as set forth in the claim is found, either expressly or inherently, described in a single prior art reference.” Verdegall Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). As stated in our reviewing court in In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999): To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference…..” Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268…(Fed. Cir. 1991). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. at 1269…(quoting In re Oelrich, 666 F.2d 578, 581…(C.C.P.A. 1981)). See also MEHL/Biophile Intern. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (inherency may not be established by mere probabilities or possibilities). According to KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41 (2007): [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…. Nevertheless, "rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of 6 Appeal 2008-4952 Application 08/421,055 obviousness." KSR at 1741-42, quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Analysis As indicated supra, Masaaki is silent as to placing, melting, and flowing the hot melt film (4a) of its tape directly on the joint or surface of vehicle plates to cover and adhere to the joint or surface of the same. The Examiner has not demonstrated that Masaaki places its hot melt film (4a) in contact with the joint or surface of vehicle plates or inherently or necessarily melts the hot melt film to flow, cover and adhere to the joint or surface of vehicle plates as required by the claims on appeal. Nor has the Examiner sufficiently articulated why one of ordinary skill in the art would have been led to place its hot melt film (4a) in contact with the joint or surface of vehicle plates or melt and flow the hot melt film to cover and adhere to the joint or surface of the same contrary to the teachings of Masaaki. The Examiner has not relied on the teachings of the remaining references to cure this inadequacy. For the reasons set forth above and in the Appeal Brief and the Reply Brief, we determine that the Examiner has failed to carry the burden of establishing a prima facie case of unpatentability within the meaning of 35 U.S.C. §§ 102(b) and 103(a). ORDER The decision of the Examiner is reversed. REVERSED 7 Appeal 2008-4952 Application 08/421,055 tc 3M INNOVATIVE PROPERTIES COMPANY P.O. BOX 33427 ST. PAUL, MN 55133-3427 8 Copy with citationCopy as parenthetical citation