Ex Parte Mussig et al

Board of Patent Appeals and Interferences

Mar 4, 2008

10317684 (B.P.A.I. Mar. 4, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BERNHARD MUSSIG
and GERT SCHMEER
____________

Appeal 2007-4315
Application 10/317,684
Technology Center 1700
____________

Decided: March 4, 2008
____________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 22-46. We have jurisdiction under 35 U.S.C. §
6(b).
We REVERSE.

Appeal 2007-4315
Application 10/317,684

I. BACKGROUND
The invention relates to a backing film and a process for producing
the backing film. The backing film includes at least two intermeshed
coextruded layers of different composition. The interface between the two
layers has a nonlinear course in cross section. Claim 22 is illustrative of the
subject matter on appeal:
22. A backing film which comprises at least two intermeshed
coextruded layers of different composition, whose interface has a nonlinear
course in cross section, which continues laminarly in the machine direction,
wherein said backing film has been oriented in the machine direction and
has plane-parallel outer faces.

Appellants request review of the sole rejection maintained by the
Examiner, namely, the rejection of claims 22-46 under 35 U.S.C. § 103(a)
over Engelmann et al. (US 5.093,187 issued Mar. 3, 1992) in view of Reid,
Jr. et al. (US 5,810,406 issued Sep. 22, 1998).

II. DISCUSSION
According to the Examiner, Englemann describes a tear strip
including coextruded layers (Ans. 3). The layers do not intermesh such that
they have a non-linear course in cross section so the Examiner turns to Reid
which teaches mechanical bonding coextruded layers within a trim strip
using intermeshing lugs and recesses (Ans. 3-4). According to the
Examiner, “one of ordinary skill, motivated by an expectation of improving
the mechanical connecting properties of the two coextruded layers in the
manner shown in [Reid,] would join and intermesh together the two layers of
[Englemann] and thereby form the claimed genus of backing films.” (Ans.
4).
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Application 10/317,684

Appellants contend that the evidence cited by the Examiner does not
support the Examiner’s conclusion of obviousness because there is no
suggestion arising from knowledge within the prior art to use lugs and
recesses, as taught by Reid for use in a trim strip, in the coextruded layers of
a tear strip.
The issue on appeal arising from the contentions of Appellants and the
Examiner is: Would one of ordinary skill in the art have found it obvious to
incorporate the lugs and recesses used in Reid’s trim strip into the tear strip
of Englemann?
A preponderance of the evidence of record supports the following
Findings of Facts (FF):
1. Englemann is directed to tear strips used, for instance, for tearing
open cardboard articles (Englemann, col. 1, ll. 11-20). The tear strip
includes a base layer and a toughened layer (Englemann, col. 2, ll. 48-
54). The two layers are chemically similar, the difference being the
toughened layer contains more toughening additive than the base layer
(see, e.g., col. 3, ll. 6-22).
2. Tear strips are thin, on the order of 50-150 µm, and narrow, on the
order of 2-8 mm (Englemann, col. 5, ll. 37-40; see also col. 1, ll. 20-
27). Moreover, those of ordinary skill in the art desire to produce tear
strips with the smallest possible thickness for cost reasons
(Englemann, col. 2, ll. 29-34).
3. Reid is directed to moldings such as trim strips attached by way of a
tape backing to automotive vehicles (Reid, col. 1, ll. 6-7 and 13-23).
The trim strips are manufactured by coextruding an outer decorative
layer of thermoplastic or rubber and an inner backing layer of a
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Appeal 2007-4315
Application 10/317,684

foamed material such that a strong attachment between the layers is
accomplished (Reid, col. 1, ll. 6-12).
4. An automotive trim strip is a larger profile molding than a tear strip
(see, e.g., Reid, Figs. 1 and 2).
5. In automotive trim strips, delamination or separation between layers is
a problem, and adhesive between the layers is conventionally used to
prevent delamination (Reid, col. 1, ll. 37-41). Reid replaces the
conventionally used adhesive with mechanical means of bonding,
namely, lugs 28 and recesses 30 (Reid, col. 1, ll. 12-18 and 44-48; col.
2, ll. 61-67).
A claimed invention is unpatentable if the differences between it and
the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the pertinent art. 35 U.S.C. § 103(a)(2000). The examiner bears the
initial burden of presenting a prima facie case of obviousness. In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
Applying the preceding legal principles to the Factual Findings in the
record of this appeal, we determine that the Examiner has not established a
prima facie case of obviousness.
Automotive trim strips are larger profile moldings than the 50-150 µm
tear strips of Englemann (FF 2-4). In automotive trims strips, delamination
of the outer decorative layer from the foam backing is a problem (FF 5).
The tear strip of Englemann is made from layers of chemically similar
materials (FF 1). There is no evidence that delamination is a problem for
such chemically similar layers. Given the disparate product profiles and
design considerations in the two disparate products, the evidence falls short
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Application 10/317,684

of supporting a conclusion that one of ordinary skill in the art would have
combined the lugs and recesses of Reid with the tear strip of Englemann.

III. CONCLUSION
The evidence fails to support the rejection of claims 22-46 under 35
U.S.C. § 103(a) over Engelmann in view of Reid.

IV. DECISION
The decision of the Examiner is reversed.

REVERSED

PL initials:
sld

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