Ex Parte Kim

Board of Patent Appeals and Interferences

Sep 29, 2008

10022184 (B.P.A.I. Sep. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YANG-PIOUNG KIM
____________

Appeal 2008-3277
Application 10/022,184
Technology Center 1700
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Decided: September 29, 2008
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Before CHUNG K. PAK, PETER F. KRATZ, and
ROMULO H. DELMENDO, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 11 and 12, all of the claims pending in
the above-identified application. We have jurisdiction pursuant to 35 U.S.C.
§ 6.
STATEMENT OF THE CASE
The subject matter on appeal is directed to a light protecting sheet and
a method of making the same (Spec. 1). Further details of the appealed
subject matter are recited in claims 11 and 12 reproduced below:
Appeal 2008-3277
Application 10/022,184

11. A method of manufacturing a light protecting sheet
comprising:

applying a two-component adhesive of white color directly onto
one side of an aluminum-deposited polyethylene terephthalate film;

overlaying a transparent polyethylene terephthalate film on the
adhesive;

spreading white ink over an opposite side of the aluminum-
deposited polyethylene terephthalate film; and

coating a hot melt layer directly onto the white ink spread over
said opposite side.

12. A light protecting sheet comprising:

an aluminum-deposited polyethylene terephthalate film;

a transparent polyethylene terephthalate film coated onto one
side of the aluminum-deposited polyethylene terephthalate film via a
two-component adhesive without any layer therebetween, wherein
said two-component adhesive is mixed with a white pigment to fix
said transparent polyethylene terephthalate film onto the aluminum-
deposited polyethylene terephthalate film;

a white ink layer coated on an opposite side of the aluminum
deposited polyethylene terephthalate film; and

a hot melt layer directly covering the white ink layer without any
layer therebetween.

As evidence of unpatentability of the claimed subject matter, the
Examiner has relied upon the following references:
Murphy US 4,483,712 Nov. 20, 1984
Whyzmuzis US 5,523,335 Jun. 4, 1996
Hein III (Hein) US 5,542,529 Aug. 6, 1996
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Miyamoto US 5,656,701 Aug. 12, 1997

The Examiner has finally rejected claims 11 and 12 under 35 U.S.C.
§ 103(a) as unpatentable over the combined disclosures of Hein and either
Whyzmuzis, Murphy or Miyamoto.
The Appellant appeals from the Examiner’s decision finally rejecting
the claims on appeal under 35 U.S.C. § 103(a).

RELEVANT FACTUAL FINDINGS (FF)
1. Hein teaches a high barrier packaging material comprising a
transparent polyethylene terephthalate (PET) heat seal layer, an opaque or
transparent ink layer, an aluminum metallized polyethylene terephthalate
(PET) layer, an opaque or transparent ink layer and polyethylene
terephthalate (PET) hot seal layer in a sequence (col. 7, l. 19 to col. 8, l. 19,
together with col. 5, ll. 1-7).
2. Hein teaches that the ink layer may be printed over the entire surface
of the top aluminum metallized surface (barrier material) and may provide
various colors, including yellow transparent ink, to yield a variety of gloss or
satin-like metallic finishes on the aluminum metallized surface (barrier
material) (col. 8, ll. 30-39).
3. Whysmuzis teaches a printing ink useful for a wide variety of
substrates, including plastic packaging materials made of polyethylene
terephthalate, contains a resin binder, a pigment and a solvent (col. 1, ll.
6-22).
4. Whysmuzis teaches forming a laminate by applying heat-activated
adhesive on an ink layer (inclusive of an ink containing a white pigment)
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Application 10/022,184

which is printed on a substrate, prior to applying another substrate over the
printed ink (col. 10, ll. 46-56).
5. Miyamoto teaches using particularly modified polyurethane resins as
binders for aqueous ink compositions or as aqueous adhesive agents for film
lamination (col. 1, ll. 5-14).
6. Miyamoto teaches (col. 1, ll. 43-48) that:
Since the various aspects of ink performance depend
primarily upon the performance of binder resins, solvent
based laminating using polyurethane resins as binders
have heretofore been used extensively; those inks exhibit
not only strong adhesion to various kinds of films but
also good adaptablity for laminating.

7. Miyamoto teaches that its printing ink has, inter alia, a pigment and a
particularly modified polyurethane resin binder (col. 9, ll. 13-19).
8. Murphy teaches that a laminating ink is an ink which is printed on a
plastic film which is subsequently laminated to another substrate, usually
another plastic film, with the ink being sandwiched between the two
substrates (col. 1, ll. 4-9).
9. Murphy teaches that “the ink must form an excellent bond between
the two substrates because otherwise they would delaminate . . . must also,
of course, have excellent printability on the plastic film” (col. 1, ll. 13-16).
10. Murphy teaches an ink having excellent printability on plastic films
and excellent bond strength when used as a laminating ink comprising,
among other things, a particular binder and a colorant.

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Application 10/022,184

PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary consideration (e.g., the
problem solved). Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
“[A]nalysis [of whether the subject matter of a claim is 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.” KSR Int’l v.
Teleflex Inc., 127 S. Ct. 1727, 1741 (2007); see also DyStar Textilfarben
GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361
(Fed. Cir. 2006)(“The motivation need not be found in the references sought
to be combined, but may be found in any number of sources, including
common knowledge, the prior art as a whole, or the nature of the problem
itself.”); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969)(“Having
established that this knowledge was in the art, the examiner could then
properly rely, as put forth by the solicitor, on a conclusion of obviousness
‘from common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference.’”).

ANALYSIS AND ISSUE
Appellant does not dispute the Examiner’s finding that Hein teaches a
transparent PET heat seal layer/ a first opaque ink layer/an aluminum-
deposited PET layer/a second opaque ink layer/a transparent PET heat seal
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Application 10/022,184

layer corresponding to the claimed hot melt layer. (Compare Ans. 3 with Br.
4-12; see also FF 1). Nor does Appellant dispute the Examiner’s
determination that it would have been obvious to employ various color inks,
inclusive white color ink, in forming the first and second opaque ink layer of
Hein. (Compare Ans. 4 with Br. 4-12; see also FF 2). Rather, Appellant
contends that Hein alone, or together with either Whyzmuzis, Murphy or
Miyamoto, would not have suggested the claimed two component (colorant
and binder) adhesive layer between the transparent PET heat seal layer and
the aluminum deposited PET layer (Br. 4-12). On the other hand, the
Examiner states that Hein’s first ink layer, which necessarily contains a
binder (adhesive) and a pigment (or colorant), located between the
transparent PET heat seal layer and the aluminum deposited PET layer,
meets the claimed colored adhesive layer (Ans. 3-4). In support of this
position, the Examiner refers to the disclosure of Whyzmuzis, Murphy or
Miyamoto (Ans. 3-10).
Therefore, the central question in this case is: Is Hein’s laminating
ink embraced by the claimed colored adhesive? On this record, we answer
this question in the affirmative.
Although Hein does not specifically mention the components of its
ink layer, Whysmuzis, Murphy, and Miyamoto all teach that ink
compositions used for printing on a plastic packaging or laminating films,
such as polyethylene terephthalate films, contain a binder (adhesive
component) and a colorant (e.g., pigments) (FF 3 and 5-10). Miyamoto, for
example, teaches employing the same binder to make an adhesive and an ink
to increase their adhesive strength (FF 5-6). It is desirable that the binders of
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Application 10/022,184

the laminating ink, such as those taught by Hein, like adhesives, must
provide sufficient bond or adhesive strength to avoid delamination (FF 5-6
and 9-10). The laminating inks, unlike adhesives, contain pigments, in
addition to the binders (adhesive components) to promote not only adhesion,
but also printability. In other words, Hein’s laminating ink, as explained by
either Whyzmuzis, Murphy or Miyamoto, is embraced by the claimed
colored adhesive layer containing an adhesive component (binder) and a
white pigment or white colorant.
Even if the claimed colored adhesive does not embrace Hein’s ink, the
outcome of this decision would not be altered. As indicated supra,
Whyzmuzis teaches that heat-activated adhesives can be used, together with
a partially or fully printed ink, inclusive of a whit pigment containing ink, to
improve lamination (FF 4). Thus, we determine that one of ordinary skill in
the art would have been led to employ heat-activated adhesives, together
with a white pigment ink, as suggested by Whyzmuzis, in forming Hein’s
laminated high barrier package material, motivated by a reasonable
expectation of successfully further strengthening the lamination between the
PET hot seal layer (provides heat for activating heat-activated adhesives)
and the aluminum deposited PET layer.
Accordingly, based on the totality of record, including due
consideration of Appellant's arguments, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness
within the meaning of 35 U.S.C. § 103(a).

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Application 10/022,184

ORDER
The decision of the Examiner is 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).
AFFIRMED

cam

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