Ex Parte Jonza et al

Patent Trial and Appeal Board

Nov 15, 2017

14363123 (P.T.A.B. Nov. 15, 2017)

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.
14/363,123 06/05/2014 James M. Jonza 68117US004 4161
32692 7590 11/17/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
ZHANG, MICHAEL N
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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 JAMES M. JONZA, DUANE D. FANSLER,
JOEL A. GETSCHEL, IBRAHIM S. GUNES, JEFFREY P. KALISH,
MATTHEW J. SCHMID, MARK A. STROBEL, and CHAD R. WOLD
Appeal 2017-001492
Application 14/363,123
Technology Center 1700
Before DONNA M. PRAISS, WESLEY B. DERRICK, and
DEBRA L. DENNETT, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants2 appeal under 35U.S.C. § 134 from the Examiner’s
decision finally rejecting under 35 U.S.C. § 103 claims 1—4, 8, 11-20, and
22-24 over Hayashi3 in view of Longo,4 and of claims 5-7, 9, 10, and 21 in
1 Appellants identify Appeal No. 2016-008120 (Application No. 14/363,132)
as a related proceeding. Supplemental Reply Brief filed November 8, 2016.
2 3M Company and its affiliate 3M Innovative Properties Company are
identified as the real party in interest. App. Br. 3.
3 Hayashi et al., US 5,000,991, issued March 19, 1991.
4 Longo et al., US 2010/0003378 Al, published January 7, 2010.
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Application 14/363,123
further view of additional cited references. Final Office Action issued
December 3, 2015 (“Final Act.”), 5-8. We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM.
THE INVENTION
The subject matter of the claims on appeal relates to a monolithic
multilayer article including a thermoformable cellular polyester core layer.
Specification filed June 5, 2014 (“Spec.”), Abstract.
Claim 1—the sole independent claim—is representative.
1. A thermoformable monolithic multilayer article
comprising:
a thermoformable cellular polyester core layer with a
thickness of at least 10 mm;
a first polyester skin layer that comprises a dense,
uniaxially-oriented or biaxially-oriented polyester film with a
thickness of at least 200 microns and that is on a first major side
of the polyester core layer;
and,
a second polyester skin layer that comprises a dense,
uniaxially-oriented or biaxially-oriented polyester film with a
thickness of at least 200 microns and that is on a second major
side of the polyester core,
wherein the core layer and the first skin layer are
self-bonded to each other and wherein the core layer and
the second skin layer are self-bonded to each other.
Appeal Brief filed April 1, 2016 (“App. Br.”), 11 (Claims Appendix).
Dependent claim 4 further recites that “the first and second skin layers
each consist of a biaxially-oriented polyester film.”
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DISCUSSION5
Appellants argue the claims as a group on the basis of independent
claim 1, adding separate argument only as to claim 4. App. Br. 2-7.
Because the Examiner’s ground of rejection as to claim 1 relies on the
obviousness of biaxially oriented polyester films as the first and second skin
layers, as detailed below, all claims stand or fall together on the basis of the
propriety of the rejection of independent claim 1.
Having reviewed the grounds of rejection as set forth by the
Examiner, Appellants’ arguments, and the Examiner’s response, we are
unpersuaded that the Examiner erred reversibly in determining that the
claimed subject matter is unpatentable as obvious over the cited prior art.
We add the following.
As relied on by the Examiner, Hayashi teaches a moldable article
comprising a polyethylene terephthalate core and two non-foamed (dense)
polyester skin layers, each formed on a major side of the core layer. Ans. 2
(citing Hayashi, Abstract, col. 4,11. 46-51, col. 10,11. 9-10). The Examiner
further finds Hayashi teaches that the foam and films are self-bonded
together and can be melt bonded together. Ans. 2 (citing Hayashi col. 10,
11. 15-38). As to the thickness of the polyester skin layers, the Examiner
relies on Hayashi’s teaching that “the skin layers can range from 10 to 500
microns thick.” Ans. 2 (citing Hayashi col. 10,11. 9-10). As to the thickness
of the thermoformable cellular polyester core, the Examiner relies on
Hayashi’s teaching that the “thickness of the foam sheet is thicker than the
5 We refer to the Specification, the Final Office Action, the Appeal Brief, the
Examiner’s Answer dated September 23, 2016 (“Ans.”), and the Reply Brief
filed November 3, 2016 (“Reply Br.”).
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skin layers and is 2 to 500 times thicker than a non-foam layer” to arrive at a
range of foam core thicknesses that encompasses the recited thickness of at
least 10 mm. Ans. 2 (citing Hayashi col. 10,11. 12-14). The Examiner’s
position, supported by the record cited in this appeal, is that the
encompassing thickness ranges of the polyester skins and cellular polyester
core taught by Hayashi render the claimed thicknesses prima facie obvious.
Ans. 2.
The Examiner also finds that Longo similarly teaches a moldable
article comprising polyester foam to which polyester skin layers can be
applied. Ans. 3 (citing Longo, Abstract, 54, 56). The Examiner further
finds Longo teaches these films can be oriented films, and that biaxially
orienting polyester films improve mechanical and thermal resistance of the
polyester film. Ans. 3 (citing Longo 54, 56, 65).
The Examiner concludes that one of ordinary skill in the art, armed
with the knowledge of Hayashi and Longo, would have found it obvious at
the time of the invention to have used a biaxially oriented polyester film on
both sides of a moldable article comprising a polyester foam layer to obtain
the benefit of the improved mechanical and thermal resistance. Ans. 3.
Appellants generally contend that the Examiner erred in finding
(1) that the cited prior art teaches or suggests that the moldable article with
polyester skin layers can have a foam sheet thickness of more than 5 mm
and (2) that Longo teaches or suggests using biaxially oriented polyester
skin layer in thermoformable multilayer composite. See generally App. Br.;
Reply Br.
Appellants contend that “the cited references guide the ordinary
artisan away from a multilayer article with a cellular core layer of [a
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thickness of at least 10 mm because] . . . Hayashi states . . . [that] the
thickness of the foam sheet core is ‘generally not more than 5 mm’” (App.
Br. 5 (citing Hayashi col. 10,11. 7-9, 11-13)) and that “Longo is limited to a
maximum foam thickness of 5 mm” (App. Br. 6 (citing Longo ^ 46)).
Appellants argue the Examiner’s basis for the thickness of the foam sheet “is
overridden by Hayashi’s direct teaching that the foam sheet itself should not
be more than 5 mm in thickness” (App. Br. 5; see also App. Br. 7; Reply Br.
5) and that “[a]n ordinary artisan would not believe that the term ‘generally’
would extend the disclosed value to a value that is twice the stated upper
limit” (id. at 7). Appellants further argue that the artisan of ordinary skill
would not seek to use a foam sheet thickness as thick as that claimed due to
increased flexural stiffness and difficulties with processing using rollers.
App. Br. 6; see also Reply Br. 4-5 (contending the necessary facts and
principles required to support Appellants’ arguments were well known in the
art).
Appellants also argue that the Examiner’s reasoning is faulty as a
matter of logic because, taken to its extreme, taking the highest value of film
thickness and the highest ratio of foam to film thickness leads to a maximum
foam thickness of 250 mm, which would be illogical considering that
Hayashi seeks to use the foam sheeting to make heat-resistant food
containers, an issue raised for the first time in Appellants’ Reply Brief. See
generally App. Br.; Reply Br. 2-3 (citing Hayashi, Abstract, col. 1,11. 20-
22, col. 2,11. 50-54, col. 9,11. 62-67, col. 11,11. 1-8). In further support of
the argument that the Examiner’s reasoning is illogical, Appellants point to
the correspondence of the thickness of 5 mm to the highest foam/film ratio
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(500) multiplied by the thickness of the thinnest film (10 microns), also first
raised in the Reply Brief. See generally App. Br.; Reply Br. 3.
On this record, we are not persuaded of reversible error because,
contrary to Appellants’ arguments, Hayashi’s disclosure is not limited to an
article with polyester skin layers having a foam sheet thickness of no more
than 5 mm. As is manifest in the plain language of the expression “generally
not more than 5 mm” (Hayashi col. 10,11. 12-13), the foam sheet thickness
is not limited to 5 mm or less, even if that is preferred. “[I]n a section 103
inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’” Merck & Co. Inc. v. Biocraft Labs.
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) {quoting In re Lamberti, 545 F.2d
747, 750 (CCPA 1976)). Likewise, it is manifest that the disclosed range of
thicknesses for non-foam layers of “10 to 500 microns” and that “[i]t is
preferred that the thickness of the foam sheet layer is 2 to 500 times that of
the non-foam layer” (Hayashi col. 10,11. 9-14) constitutes disclosure of a
foam sheet layer of thicknesses between 20 and 250,000 microns.
We have considered Appellants’ further arguments that difficulties
due to flexural stiffness and difficulties with processing due to rollers, but
find them unpersuasive on this record in light of the disclosure of alternative
methods of processing in both Hayashi and Longo, as noted by the Examiner
(Ans. 8), and in the absence of evidence both that difficulties would be
expected, and that such difficulties, whatever they might be, would not have
been overcome by the routine exercise of ordinary skill. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument. . . cannot take the
place of evidence.”).
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As to Appellants’ arguments grounded on the intended use of
Hayashi’s product and the cited correspondence between disclosed ratios
and the thickness of 5 mm, on this record, we determine there is no good
cause for why they could not have been raised in the Appeal Brief, as they
address positions taken by the Examiner not only in the Answer, but also in
the Final Office Action. See, e.g., Final Act. 2. We deem these arguments
waived for purposes of the present appeal. 37 C.F.R. § 41.41(b)(2);
cf McBride v. MerrellDow andPharms., Inc., 800 F.2d 1208, 1211 (D.C.
Cir. 1986) (internal citations omitted) (“Considering an argument advanced
for the first time in a reply brief... is not only unfair to appellee but also
entails the risk of an improvident or ill-advised opinion on the legal issue
tendered.”).
Even if these arguments had been properly raised, however, they
would not have persuaded us of reversible error because, contrary to
Appellants’ position, the cited portions of Hayashi do not limit it to
providing articles for only one intended purpose. Merck v. Biocraft, 874
F.2d at 807. Fikewise, we find no such limitation to a particular purpose, or
to a particular upper limit for thickness, in claim 1 or 4. In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998) (“The invention disclosed in Hiniker’s
written description may be outstanding in its field, but the name of the game
is the claim.”).
It further follows that we find no support for any teaching away in the
preferred embodiments of Hayashi and Fongo having a foam sheet layer of
5 mm (or less) because these teachings do not reasonably lead the skilled
artisan away from the invention. DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006)
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(“We will not read into a reference a teaching away from a process where no
such language exists.”). “A reference does not teach away ... if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004)).
In contending that the Examiner erred in finding Longo teaches or
suggests using biaxially oriented polyester skin layers in a thermoformable
multilayer composite, Appellants further contend that paragraph 56 of
Longo “only mentions oriented films in general and does not mention
biaxially oriented films” and that the mention of biaxially oriented films in
paragraphs 65 and 66 “concern attaching a film to an already-thermoformed
article.” App. Br. 9. Appellants argue, accordingly, that the failure to
specifically mention biaxially oriented films as suitable for skins of the
thermoformable foam layer would lead the ordinary artisan to believe they
must not be suitable, and that this understanding is confirmed by the further
“mention (in paragraph 0058) that thermoplastic films of amorphous
polyester are preferred for use as skins of a thermoformable foam layer.”
App. Br. 9.
On this record, we are unpersuaded of reversible error. As properly
applied, “the [obviousness] analysis 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 would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007); see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is
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proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.”). In this case, the Examiner’s findings are
supported by Longo’s teachings to use polyester film on both sides of a
foamed polyester core (Longo ^ 54), that the films can be oriented (Longo
^ 56), and that an oriented polyester film can be biaxially oriented and that
this improves mechanical and/or thermal resistance (Longo ^ 65). On this
basis, as expressed by the Examiner in, inter alia, the stated second reason
on page 10 of the Answer, we affirm this ground of rejection. We are not
persuaded by Appellants that the disclosure in paragraph 65 of Longo
relating to biaxial orienting polyester film is limited to a different polyester
film than those in preceding paragraphs 54 and 56 for the reasons articulated
by the Examiner. Ans. 10.
Appellants’ contention that an ordinary artisan would draw from the
omission of the particular type of oriented film—biaxially oriented film—
that such must be unsuitable for use as the film bonded to the foamed
polyester core, is also unpersuasive because it is unsupported attorney
argument. Pearson, 494 F.2d at 1405. Likewise, we find the preference for
amorphous film in paragraph 58 of Longo no sound basis to find it teaches
away. DyStar Textilfarben, 464 F.3d at 1364.
On balance, the evidence of record weighs most heavily in favor of
the Examiner’s conclusion of obviousness of claim 1. For the reasons
discussed above, claims 2-24 fall with claim 1.
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DECISION
The Examiner’s rejections of the claims under 35 U.S.C. § 103(a) are
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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