Ex Parte Kim et al

Patent Trials and Appeals Board

Jun 11, 2019

13582058 - (D) (P.T.A.B. Jun. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/582,058 09/27/2012
32692 7590 06/13/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Michael H. Kim
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.
66256US004 5622
EXAMINER
JOHNSON, NANCY ROSENBERG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
06/13/2019 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 MICHAEL H. KIM and CHARLIE C. HO
Appeal 2018-006556
Application 13/582,058
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-7, 9-12, and 14-20.3
We AFFIRM.
1 This Decision includes citations to the following documents: Specification filed
Aug. 31, 2012 ("Spec."); Final Office Action dated December 9, 2016 ("Final");
Appeal Brief filed January 31, 2018 ("Br."); and Examiner's Answer dated April 4,
2018 ("Ans.").
2 The Appellants identify 3M Company, and its affiliate 3M Innovative Properties
Company, as the real parties in interest. Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2018-006556
Application 13/582,058
The invention relates to translucent, adhesive-backed films for protecting
surfaces that have relatively rough textures. Spec. ,i 1. Claim 1 is representative of
the claims on appeal, and is reproduced below.
1. A translucent surface protection film having opposite major
surfaces and comprising a polymeric layer backed by an adhesive
layer comprising an adhesive material defining one of said major
surfaces, with the other of said major surfaces having a surface texture
that exhibits a 60 degree Gloss Level of less than or equal to about 15,
said adhesive comprising a pressure sensitive adhesive, and said
adhesive having rheological properties that allow said adhesive to
achieve a wet out of at least about 70%, when said adhesive layer is
applied onto a rough surface having a surface roughness with a peak
count of at least 400 peaks/meter, an average surface roughness (Ra)
in the range of from not being smooth to less than about 13 µm, a
peak to valley height (Rt) in the range of from greater than zero to less
than about 200 µm,
wherein the major surface defined by said adhesive layer is not
a microstructured surface that allows fluid egress from behind said
polymer layer, the rheological properties exhibited by said adhesive
include a Loss Tangent Delta value of (a) greater than or equal to
about 0.65, when measured by a dynamic shear modulus at 1
radian/sec and 23 degrees C, (b) greater than or equal to about 0.40,
when measured by a dynamic shear modulus at 0.1 radian/sec and 23
degrees C, or a combination of both (a) and (b ), and a stress relaxation
ratio, according to the equation: G'(b)/G'(t1), of ( c) less than or equal
to about 0.1, when bis 500 seconds and t1 is 0.1 seconds, (d) less than
or equal to 0.25, when bis 500 seconds and t1 is 1.0 seconds, or ( e) a
combination of both (c) and (d).
The Examiner maintains the following grounds of rejection on appeal (see
Ans. 3; Final 2-14):
1. claims 1-3, 6, 7, 9-12, and 14-20 under 35 U.S.C. § l 12(b) or
35 U.S.C. § 112, second paragraph (pre-AIA), as indefinite;
2
Appeal 2018-006556
Application 13/582,058
2. claims 1-7, 9-12, and 14-20 under 35 U.S.C. § l 12(a) or 35 U.S.C.
§ 112, first paragraph (pre-AIA), as failing to comply with the written description
requirement;
3. claims 1-7 under 35 U.S.C. § 103(a) as unpatentable over Zeik et al.
(US 2008/0081142 Al, pub. April 3, 2008) in view of Mikami et al. (US
2006/0188704 Al, pub. August 24, 2006) and Smith et al. (US 2011/0028583 Al,
pub. February 3, 2011);
4. claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over Zeik in
view of Mikami, Smith, and Tomino (US 2009/0239060 Al, pub. September 24,
2009);
5. claims 11, 12, and 14-18 under 35 U.S.C. § 103(a) as unpatentable
over Zeik in view of Mikami, Smith, and Schneider (US 2009/0304971 Al, pub.
December 10, 2009); and
6. claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over Zeik
in view of Mikami, Smith, Schneider, and Tomino.
Rejection under 35 U.S. C. § 112, indefiniteness
The Examiner determined the term "smooth" in the claim 1 and claim 11
phrase "an average surface roughness (Ra) in the range of from not being smooth
to less than about 13 µm" is a relative term that renders the claims indefinite. Final
4. The Examiner contended "[i]t is not clear at what Ra value a surface is
considered 'smooth."' Id.
The Appellants contend Specification paragraphs 1 and 2 convey a clear
definition of the term "smooth" by describing smooth surfaces as those of painted
automobile parts. Br. 8. The Appellants cite two publications as evidence that the
ordinary artisan would understand that a finished automobile coating has a glass-
3
Appeal 2018-006556
Application 13/582,058
like or mirror finish, and note that one of the publications describes the Ra values
for a finished automobile coating as being in the range of 0.04 µm-0.09 µm. Id.
The USPTO is justified in using a lower threshold showing of
ambiguity to support a [determination] of indefiniteness under 35
U.S.C. § 112, second paragraph, because the applicant has an
opportunity and a duty to amend the claims during prosecution to
more clearly and precisely define the metes and bounds of the claimed
invention and to more clearly and precisely put the public on notice of
the scope of the patent.
Ex parte Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008) (precedential).
We agree with the Examiner that the meaning of "smooth" is unclear and,
therefore, renders the claims indefinite for the reasons explained on pages 5-6 of
the Answer. The Specification discloses that "exterior painted surfaces of most
automobile bodies are very smooth and exhibit high gloss levels." Spec. ,-J 2
( emphasis added). The Examiner agrees that one of the publications cited by the
Appellants "gives a range for the Ra of automobile coatings of 0.04 microns to
0.09 microns." Ans. 6. It is unclear, however, whether this range defines only a
very smooth surface or also a smooth surface. In other words, we agree with the
Examiner that the ordinary artisan would not be able to determine at what Ra value
a surface meets the claim limitation of "not being smooth" ( claims 1, 11 ).
The Examiner also determined claim 11 is rendered indefinite by the
wherein clause: "wherein said adhesive layer is adhesively bonded to said substrate
such that said adhesive achieves a we[t] out of at least about 70% on at least a
portion of said rough surface covered by said surface protection film" ( claim 11 ).
Final 4. The Examiner contends this claim language "suggests that the adhesive
covers the rough surface and ... at least 70% wet out is required on only a portion
of the surface it covers." Ans. 6. The Examiner notes that the Appellants disagree
with this interpretation and contend the argued limitation should be construed as
4
Appeal 2018-006556
Application 13/582,058
meaning the adhesive may cover only a portion of the rough surface, but at least
70% wet out is required on the entire portion of the surface covered by the
adhesive. Id.; see Br. 9.
A claim is indefinite under 35 U.S.C. § 112 when it contains words or
phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir.
2014) ("Indefiniteness, as a subset of claim construction, is a question of
law .... ").
The Appellants cite Specification paragraphs 29 and 31 in support of their
interpretation of the claim 11 wherein clause. Br. 7, 9. Specification paragraph 29
discloses that "adhesive layer 18 is adhesively bonded to the substrate 22 such that
the surface protection film 10 covers at least a portion, most (i.e., greater than
50%) or all of the rough surface 20." Specification paragraph 31 discloses that
"[t]he adhesive material for the adhesive layer 18 is formulated, using conventional
techniques ... so as to exhibit rheological properties that allow the adhesive to
achieve a wet out of at least about 70%."
Having reviewed the claim language in light of the Specification, we agree
with the Examiner that the meaning of the wherein clause of claim 11 is unclear.
From Specification paragraph 29, one of ordinary skill in the art would understand
that the adhesive layer need not cover the entire rough surface. However, we do
not agree with the Appellants that one of ordinary skill in the art necessarily would
understand Specification paragraph 31 as referring to the entire portion of the
adhesive material covering the substrate. Rather, we agree with the Examiner that
it is unclear whether the scope of claim 11 encompasses a structure wherein a
portion (some percentage greater than 0%) of the adhesive layer covering the
substrate achieves a wet out of at least about 70%, or only encompasses a structure
5
Appeal 2018-006556
Application 13/582,058
wherein all of the adhesive layer ( 100%) must achieve a wet out of at least about
70%.
In sum, we agree with the Examiner that the term "smooth" in claim 1 and
claim 11 renders indefinite these claims, and their dependent claims 2, 3, 6, 7, 9,
10, 12, and 14-20. We also agree with the Examiner that the claim 11 phrase
"wherein said adhesive layer is adhesively bonded to said substrate such that said
adhesive achieves a we[t] out of at least about 70% on at least a portion of said
rough surface covered by said surface protection film" renders indefinite claim 11
and its dependent claims 12 and 14-20. Therefore, we sustain the rejection of
claims 1-3, 6, 7, 9-12, and 14-20 under 35 U.S.C. § l 12(b) or 35 U.S.C. § 112,
second paragraph (pre-AIA), as indefinite.
Rejection under 35 U.S. C. § 112, lack of written description support
The Examiner found the following claim recitations lack written description
support: (1) "the major surface defined by said adhesive layer not being a
microstructured surface allowing for fluid egress from behind said polymer layer"
( claims 1 and 11 ), and (2) "wherein said adhesive layer is adhesively bonded to
said substrate such that said adhesive achieves a we[t] out of at least about 70% on
at least a portion of said rough surface covered by said surface protection film"
( claim 11 ).
As to limitation (1 ), the Examiner found the "Specification contains no
reference to this limitation or to any structure of the surface of the adhesive layer."
Final 3. The Appellants argue "the use of microstructures to allow fluid egress
from behind the polymer layer was well known at the time of th[ e] invention." Br.
6 (citing US 6,524,675, iss. February 25, 2003). The Appellants argue that a person
of ordinary skill in the art would understand from the absence of any disclosure in
6
Appeal 2018-006556
Application 13/582,058
the Drawings and Specification that such microstructures are not present in the
inventive surface protection film. Id.
"Negative clairn limitations are adequately supported when the specification
describes a reason to exclude the relevant limitation." Santarus, Inc. v. Par
Phann., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). For example, a description of
alteniative features in the specification provides a reason to exclude a limitation.
lnphi Corp. v. Netlist, inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015}
Limitation ( 1) was not in the original claims. See Claims filed Aug. 31,
2012. The Appellants have not refuted the Exarniner's finding that the
"Specification does not disclose any stn1cture at all for the surface of the adhesive
layer so there is neither a positive recitation nor negative one." Ans. 4. Nor have
the AppeIIants identified evidentiary support for their contention that the ordinary
artisan would understand the absence of any description of microstructures in the
Specification as a disclosure that the adhesive layer is not a microstructured
surface. In other words, the Appellants have not shown that the Specification and
Drawings provide a reason to exclude an adhesive layer comprising a
microstructured surface that allows fluid egress from behind the polymer layer.
As to limitation (2), the Examiner contends claim 11 encompasses an
adhesive layer that achieves a wet out of at least 70% on only a portion of the
surface covered by the adhesive layer, "which means on other portions [ of the
surface covered by the adhesive layer] the amount of wet out could be less than
70%." Ans. 5. The Examiner contends "[t]here is no support for portions of the
surface covered by the adhesive having a wet out of less than 70%." Id.
As discussed above in connection with the indefiniteness rejection, the
Appellants contend limitation (2) should be construed as meaning the adhesive
may cover only a portion of the rough surface, but at least 70% wet out is required
7
Appeal 2018-006556
Application 13/582,058
on the entire portion of the surface covered by the adhesive. Br. 7. The Appellants
contend written description support is provided in Specification paragraphs 29 and
31.
In our analysis of the indefiniteness rejection, we determined it was unclear
whether the scope of claim 11 encompasses a structure wherein only a portion
(some percentage greater than 0%) of the adhesive layer covering the substrate
achieves a wet out of at least about 70%, or encompasses a structure wherein all of
the adhesive layer (100%) must achieve a wet out of at least about 70%. Because
we agree with the Examiner that, as drafted, claim 11 is reasonably interpreted as
encompassing an adhesive layer wherein only a portion of the adhesive layer
covering the substrate achieves a wet out of at least about 70%, we also agree with
the Examiner that claim 11 lacks written description support. See supra p. 5 ("[W]e
do not agree with the Appellants that one of ordinary skill in the art necessarily
would understand Specification paragraph 31 as referring to the entire portion of
the adhesive material covering the substrate [ as achieving a wet out of at least
about 70%].").
In sum, we agree with the Examiner that the phrase "the major surface
defined by said adhesive layer not being a microstructured surface allowing for
fluid egress from behind said polymer layer" in claim 1 and claim 11 lacks written
description support. We also agree with the Examiner that the claim 11 phrase
"wherein said adhesive layer is adhesively bonded to said substrate such that said
adhesive achieves a we[t] out of at least about 70% on at least a portion of said
rough surface covered by said surface protection film" lacks written description
support. Therefore, we sustain the rejection of claims 1-3, 6, 7, 9-12, and 14-20
under 35 U.S.C. § l 12(a) or 35 U.S.C. § 112, first paragraph (pre-AIA), as failing
to comply with the written description requirement.
8
Appeal 2018-006556
Application 13/582,058
Rejections under 35 U.S.C. § 103(a)
Although we determined the term "smooth" in claim 1 and claim 11 renders
these claims indefinite, as further discussed below, for purposes of our analysis of
the prior art rejections we interpret the claim 1 and claim 11 phrase "an average
surface roughness (Ra) in the range of from not being smooth to less than about 13
µm" as encompassing surfaces described in Zeik and Mikami as being rough. See
infra 9-10. As to our determination that claim 11 is rendered indefinite by the
phrase "wherein said adhesive layer is adhesively bonded to said substrate such
that said adhesive achieves a we[t] out of at least about 70% on at least a portion of
said rough surface covered by said surface protection film," a conditional
interpretation of this phrase is unnecessary to our consideration of the prior art
rejections of claim 11 and its dependent claims, because the arguments made by
the Appellants and the Examiner are not based on their respective interpretations.
See infra 13-15.
Claims 1-7, 9, and 10
The Examiner found Zeik discloses the invention as recited in independent
claim 1 with the exception of the rheological properties of the adhesive. Final 5-6.
The Examiner found one of ordinary skill in the art would have utilized an
adhesive having rheological properties that (1) allow the adhesive to achieve a wet
out of at least about 70% based on Mikami's disclosure, and (2) a Loss Tangent
Delta value of greater than 0.8 as taught by Smith. Id. at 6-7.
The Appellants acknowledge that Mikami discloses achieving a wet out of
85%, but contend this disclosure pertains to an adhesive layer applied to only a
smooth surface such as glass or other optically clear substrates. Br. 10-11. The
Appellants further argue that although Mikami discloses a variety of substrates, the
Examiner has not identified evidence to support a finding that any of these
9
Appeal 2018-006556
Application 13/582,058
substrates has the surface roughness characteristics recited in the claims. Id. at 12-
13. The Appellants' arguments are not persuasive for the reasons explained by the
Examiner on pages 7-10 of the Answer.
As noted by the Examiner, claim 1 does not positively recite a substrate, but
merely requires that the adhesive possess properties that render it capable of
bonding to a substrate having a specified surface roughness. Ans. 7. The Examiner
found Zeik discloses a dry color laminate comprising a dry color layer and a
pressure-sensitive adhesive layer (Zeik Abstract). Final 5-6. The dry color
laminate may be "applied to architectural surfaces such as interior and exterior
walls of buildings, building fixtures or appliances, furniture, and the like." Zeik ,i
23. Zeik discloses that the laminate should conform to visible rugosities in the
surface to which it is applied. Id. ,i,i 136-137.
Mikami discloses "an adhesive-backed article having an adhesive with a
microstructured surface bonded to a compliant film." Mikami ,i 2. According to
Mikami, "[t]he adhesive-backed article sufficiently bonds to a substrate as
indicated by a wet out value of at least 85%." Id. ,i 8. Mikami discloses that "[i]t is
important to match a specific pressure sensitive adhesive to a substrate in order to
achieve the desired level of adhesion. Examples of suitable substrates include
glass, metal, plastic, wood, and ceramic substrates, and painted surfaces of these
substrates." Id. ,i 70.
The above-cited disclosure in Zeik and Mikami supports the Examiner's
findings that the ordinary artisan would have utilized an adhesive capable of
achieving a wet out value within the claimed range as the adhesive layer in Zeik's
laminate based on Mikami' s disclosure that an adhesive that achieves a wet out
value of at least 85% provides sufficient bonding of a film to the same type of
surfaces to which Zeik's laminate is applied. See Ans. 8. The Appellants' argument
10
Appeal 2018-006556
Application 13/582,058
that the 85% wettability achieved in Mikami's examples, wherein the substrate is a
smooth surface, could not be achieved using the same adhesives on a rough
substrate is not persuasive of reversible error in the Examiner's rejection. Mikami
clearly teaches the ordinary artisan to select an adhesive that will achieve the
desired wet out value on the substrate to which the film is bonded. See Mikami
,-J 70 supra; Ans. 9.
The Examiner has fully addressed the Appellants' argument that Mikami
fails to disclose the surface roughness characteristics recited in the claims. See
Ans. 9-10. We add that because Mikami discloses the same types of substrates
described in the Specification as having rough surfaces (compare Mikami ,-J 70
("metal, plastic, wood, ... and painted surfaces of these substrates"), with Spec.
,-J 29 ("wood, metal ... or plastic ... often painted [surfaces]")), the Examiner had
a reasonable basis for finding that Mikami's substrates would possess the surface
roughness characteristics recited in the claims. Thus, the burden was shifted to the
Appellants to show the contrary. In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004)
("[W]hen the prior art evidence reasonably allows the PTO to conclude that a
claimed feature is present in the prior art, the evidence 'compels such a conclusion
if the applicant produces no evidence or argument to rebut it."' ( quoting In re
Spada, 911 F.2d 705, 708 n.3 (Fed. Cir. 1990))); see also In re Kubin, 561 F.3d
1351, 1357 (Fed. Cir. 2009) ("Even ifno prior art of record explicitly discusses the
... [limitation], [Appellants'] application itself instructs that [the limitation] is not
an additional requirement imposed by the claims on the [ claimed invention], but
rather a property necessarily present in [ the claimed invention].").
As noted by the Examiner (Ans. 10), the Specification defines "stress
relaxation" as a measure of "how quickly a polymer can relieve stress under
constant strain" and is considered a rheological property or viscoelastic property of
11
Appeal 2018-006556
Application 13/582,058
the adhesive that is directly related to shear modulus (Spec. ,i 33). The Examiner
found none of the references explicitly disclose a stress relaxation ratio. Final 7.
The Examiner found, however, that Smith discloses that to facilitate application of
a pressure sensitive adhesive to a substrate, the adhesive composition should
possess excellent wet out, improved stiffness, temperature resistance, minimum
elastic modulus, and minimum shear adhesion failure. Id. The Examiner found one
of ordinary skill in the art would have designed the adhesive of Zeik, as modified
by Mikami, with the properties described in Smith to improve flowability of the
adhesive, thereby increasing its ability to bond to a substrate surface due to higher
contact area. Id. The Examiner found the properties described in Smith directly
affect stress relaxation ratio and, therefore, the combination of Zeik, Mikami, and
Smith would have resulted in an adhesive having a stress relaxation ratio as
claimed. Id.
The Appellants argue that "[ w ]hile Smith may make mention of some
viscoelastic characteristics that are relevant to stress relaxation, Smith does not, in
the least, correlate or even hint at a reason to consider the stress relaxation ratio let
alone the specific stress relaxation ratio under specific surface roughness
conditions as presently claimed." Br. 13. This argument is not persuasive for the
reasons explained on pages 10-11 of the Answer.
Smith discloses adhesive compositions for easy application and improved
durability. Smith at [54]. Smith discloses that
the ease of application of an acrylic pressure-sensitive adhesive relates
to the ability of the adhesive to flow or conform to a given substrate
with only minimal external force being applied. The greater an
adhesive's ability to flow and/or reflow over a surface, the greater its
ability to bond to the surface due to higher contact area.
Id. ,i 2. Smith discloses that "the adhesion process can be followed easily by using
viscoelastic and dynamic mechanical rheological measurements, as the formation
12
Appeal 2018-006556
Application 13/582,058
of bonds between adhesive and substrate and the flow of an adhesive onto a
substrate is reflected in the change of viscoelastic properties." Id. ,i 3. Smith
discloses that
[ w ]ith dynamic mechanical analysis, a sinusoidal force or stress is
applied to an adhesive sample and the resulting sinusoidal
deformation or strain is monitored. The sample strain response lags
behind the input stress wave with respect to time and this lag is known
as the phase angle, 8 .... The storage modulus, G', represents the
ability of the adhesive to store energy and it is related to the stiffness
of the material. The loss modulus, G" represents the heat dissipated by
the adhesive as a result of the material's given molecular motions and
this reflects the flow characteristics of the composition. The ratio of
the loss and storage moduli provides another useful quantity called tan
8 (tan delta), where tan 8 =G"/G'. Tan 8 is associated with the
viscoelasticity of the adhesive .... Accordingly, the ability of the
adhesive to flow at a given temperature will be reflected by its storage
and loss moduli and tan 8 values.
Id. Smith discloses that the inventive adhesive "composition exhibits excellent wet
out characteristics as reflected in a tan delta value of at least 0.5, preferably greater
than 0.5, more preferabl[y] greater than 0.8 as measured at 20° C" (id. at [57]) and
improved stiffness and temperature resistance (id. ,i 5). Thus, Smith clearly
discloses the importance of good wet out characteristics to achieve good bonding,
that excellent wet out characteristics are reflected in a tan 8 value that is preferably
greater than 0.8, that tan 8 is equal to the ratio of the loss and storage moduli, and
that phase angle 8 is a measure of the lag in strain response behind an input stress
wave applied to an adhesive with respect to time. Id. ,i,i 2, 3, 7. In other words, the
Examiner had a reasonable basis for finding one of ordinary skill in the art would
have designed the adhesive of Zeik, as modified by Mikami, with the properties
described in Smith to improve flowability of the adhesive, and, because "stress
relaxation" is a measure of "how quickly a polymer can relieve stress under
constant strain" (Spec. ,i 33), that the resultant adhesive would necessarily possess
13
Appeal 2018-006556
Application 13/582,058
a stress relaxation ratio as claimed. The Appellants have not provided persuasive
argument or evidence to refute the Examiner's findings. See Kubin, 561 F.3d at
1357; Crish, 393 F.3d at 1259.
The Appellants do not present separate arguments in support of patentability
of dependent claims 2-7. See Br. 10-15. As to the separate rejection of claims 9
and 10, the Appellants merely argue that Tomino fails to cure the deficiencies in
the Examiner's combination of Zeik, Mikami, and Smith. See id. at 15.
Accordingly, we sustain the rejections of claims 1-7, 9, and 10 under 35 U.S.C.
§ 103(a).
Claims 11, 12, and 14-20
In general, independent claim 11 differs from independent claim 1 in that, in
addition to a translucent surface protection film (i.e., the invention recited in claim
1 ), it further requires a substrate having a rough surface to which the adhesive layer
of the translucent surface protection film is bonded. See Appeal Br. 20-21 (Claims
Appendix). Unlike claim 1, claim 11 does not require that the adhesive exhibit a
specific stress relaxation ratio. See id. The Examiner relied on Zeik, Mikami, and
Smith for a teaching of the translucent surface protection film, as discussed in
connection with the rejection of claim 1, and relied on Schneider for a teaching of
a substrate as recited in claim 11. Final 9-12. The Examiner found Schneider
discloses a temporary graphic film that may be applied to a rough, outdoor surface
having a texture with an Ra of 5 to 200 microns and an Rz (i.e., the average
maximum height of the substrate surface profile) of 15 to 300 microns. Id. at 11.
The Examiner found Schneider discloses the graphic film comprises a polymeric
layer, a printable layer, and a layer of pressure sensitive adhesive. Id. The
Examiner determined the ordinary artisan at the time of the invention would have
understood that Schneider's substrate was among the types of substrates that was
14
Appeal 2018-006556
Application 13/582,058
suitable for use with the film of Zeik as modified by Mikami and Smith. Id. at 11-
12.
As to the translucent surface protection film, the Appellants argue Schneider
fails to cure the deficiencies in the teachings of Zeik, Mikami, and Smith. Br. 16.
This argument is not persuasive for the reasons discussed in connection with the
rejection of claim 1. The Appellants also argue one of ordinary skill in the art
would not have used the translucent surface protection film of Zeik, as modified by
Mikami and Smith, because Schneider requires a fracturable film, which is not
contemplated by Zeik, Mikami, or Smith. Id. at 17.
This argument is not persuasive for the reasons explained by the Examiner
on page 12 of the Answer. As found by the Examiner, Schneider does not require a
fracturable film. Schneider at [57].
The Appellants do not present separate arguments in support of patentability
of dependent claims 12 and 14-18. See Br. 15-1 7. As to the separate rejection of
claims 19 and 20, the Appellants argue that Tomino fails to cure the deficiencies in
the Examiner's combination of Zeik, Mikami, and Smith. See id. at 1 7.
Accordingly, we sustain the rejections of claims 11, 12, and 14-20 under 35 U.S.C.
§ 103(a).
CONCLUSION
In sum, for the reasons stated in the Final Office Action, the Answer, and
above, we sustain all grounds of rejection.
Claims
Re·ectea
1-7 9-,
12,and
14-20
§ 112, lack of
written description
support
ORDER
15
1-7,9-12,and
14-20
Appeal 2018-006556
Application 13/582,058
Claims
R.e·ectea
1-3, 6, 7, § 112,
9-12, and indefiniteness
14-20
1-7
9 and 10
11, 12,
and 14-
18
§ 103(a)
§ 103(a)
§ 103(a)
19 and 20 § 103(a)
Outcome
Zeik, Mikami, and
Smith
Zeik, Mikami,
Smith, and
Tomino
Zeik, Mikami,
Smith, and
Schneider
1-3,6, 7,9-
12, and 14-20
1-7
9 and 10
11, 12,and
14-18
Zeik, Mikami, 19 and 2 0
Smith, Schneider,
and T omino
1-7,9-12,and
14-20
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv).
AFFIRMED
16