Ex Parte Nomura et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201813720853 (P.T.A.B. Feb. 28, 2018) Copy Citation 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. 13/720,853 12/19/2012 Hiroki NOMURA 11-0373KS-US 1097 21254 7590 03/01/2018 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER KRUER, KEVIN R ART UNIT PAPER NUMBER 3649 MAIL DATE DELIVERY MODE 03/01/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte HIROKI NOMURA and KENICHI SUDOU ________________ Appeal 2016-003363 Application 13/720,853 Technology Center 3600 ________________ Before STEVEN D.A. McCARTHY, ERIC C. JESCHKE and BRENT M. DOUGAL, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 The Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s 2 decision2 finally rejecting claims 1, 4, 6–11 and 20 under pre-AIA 35 U.S.C. 3 § 103(a) as being unpatentable over Mikami (JP P2010-208607A, publ. 4 Sept. 24, 2010);3 Moriyama (US 2001/0009725 A1, publ. July 26, 2001);5 1 The Appellant identifies the real party in interest as Kasai Kogyo Co., Ltd. 2 The appeal is from a Final Office Action, mailed April 8, 2015; and an Advisory Action, dated June 26, 2015. 3 As used in this opinion, citations to “Mikami” will be to a mechanical English-language translation obtained on February 5, 2018 from the Japan Platform for Patent Information, operated by the Japanese Patent Office. A copy of the translation may be found in the Official File of this appeal. Appeal 2016-003363 Application 13/720,853 2 and Nagayama (JP P2008-62930A, publ. Mar. 21, 2008) (“Nissan”).4 (See 1 Final Office Action, mailed April 8, 2015 (“Final Act.”), at 2). Claims 2, 3, 2 5 and 12–19 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). 3 We REVERSE. 4 The appealed claims are directed to a laminated material that may be 5 mounted on the inside of a motor vehicle door or on the underside of the 6 roof of a motor vehicle. (See Spec. 1). The material is intended to block 7 airflow from the vehicle interior toward the body; and to reflect infrared 8 (“IR”) radiation from the exterior that might contribute to heating of the 9 vehicle. (See Spec. 4). 10 Claim 1 is the sole independent claim on appeal. It recites, with 11 italics added: 12 1. An interior material for a vehicle, comprising: 13 a base material layer; 14 a first reinforcement layer disposed on a surface of a 15 vehicle interior side of the base material layer; 16 a second reinforcement layer disposed on a surface of a 17 vehicle body side of the base material layer; 18 a skin layer disposed on a surface of the opposite side of 19 the first reinforcement layer viewed from the base material layer; 20 a backside layer disposed on a surface of the opposite side 21 of the second reinforcement layer viewed from the base material 22 layer; 23 4 As used in this opinion, citations to “Nissan” will be to an English- language translation prepared by Schreiber Translation, Inc., dated February 2015. A copy of the translation may be found in the Official File of this appeal. The reference will be referred to as “Nissan” to maintain consistency of nomenclature between the prosecution and appeal. Appeal 2016-003363 Application 13/720,853 3 wherein the backside layer comprises a resin film and a 1 metal deposition film deposited on the resin film, the metal 2 deposition film is directly adhered via a moisture-curable 3 adhesive to the second reinforcement layer. 4 The Appellants correctly point out that the references fail to teach the 5 italicized limitation. (See “Appellants’ Brief on Appeal,” dated August 25, 6 2015, at 14 & 15). Mikami describes a sun shade panel for a sunroof of an 7 automobile. As depicted in Figure 2 of Mikami, the sun shade panel 10 has 8 a laminated structure including a pair of base material layers 11, 12. A glass 9 fiber reinforcing layer 13 is sandwiched between the two base material 10 layers 11, 12. First and second glass fiber reinforcing layers 14, 15 are 11 disposed on the two surfaces of the base material layers 11, 12 opposite 12 those surfaces embracing the reinforcing layer 13. A skin layer 16 is 13 laminated to the surface of the first glass reinforcing layer 14 intended to 14 face the interior of the automobile. A backside layer 17 is laminated to the 15 surface of the second glass reinforcing layer 15 intended to face the opening 16 1a and the glass member 2. (See Mikami, para. 30 & Fig. 2). Mikami does 17 not describe the backside layer 17 as having either a metal deposition film or 18 an IR-reflecting function. 19 Figure 5 of Moriyama depicts an upholstery 43 including a substrate 20 body 44 attached to the roof panel 42 of an automobile. An IR-reflecting 21 layer 45, which may consist of metal vapor deposited onto a plastic 22 substrate, is positioned between the roof panel 42 and the substrate body 44. 23 (See Moriyama, paras. 110 & 117). Moriyama teaches that the IR-reflecting 24 layer 45 intercepts the thermal energy of sunlight incident on the roof panel 25 42 to prevent heat transfer to the upholstery 43. (See Moriyama, para. 111). 26 Nevertheless, Moriyama’s teaching to position an IR-reflecting layer 45 27 Appeal 2016-003363 Application 13/720,853 4 between the roof panel 42 and the upholstery 43 is a poor teaching to 1 provide the backside layer; that is, the layer of a plurality of layers 2 positioned between sunroof and an interior upholstery closest to the sunroof, 3 with an IR-reflecting function.5 4 Nissan describes an interior material, such as a ceiling material, for a 5 motor vehicle. (See Nissan, paras. 30 & 33). As depicted in Figures 2 and 6 3, such a material may include a base layer or substrate 2; a design layer or 7 skin layer 3; and a cushioning layer 4. Sandwiched between the base layer 2 8 and the cushioning layer 4 is a layer 1 possessing an IR-reflecting function. 9 (See Nissan, para. 37). 10 The layer 1 possessing the IR-reflecting function is not the outermost 11 or backside layer of the material. In fact, Nissan teaches that: 12 Specifically, because the layer having an infrared radiation 13 reflecting function is provided so that it is not in direct contact 14 with any member serving as a heat source and is maintained at a 15 prescribed distance from the outer body panels of an automotive 16 5 In fact, Figure 1 of Moriyama depicts a coated plate including a substrate 1 having a thin plate 2 possessing an IR-reflecting function laminated to one side of the substrate. A primer coating layer 3, an intermediate coating layer 4 and a top coating layer 5 are coated onto the other side of the substrate 1. (See Moriyama, para. 57). The coated plate is positioned such that the top coating layer 5 faces incident sunlight. (See Moriyama, para. 57). Moriyama teaches that the thermal energy of the sunlight transmits through the coating layers 5, 4, 3 and the substrate 1, but is intercepted by the thin plate 2 to prevent the transfer of the energy to upholstery that may be disposed adjacent to the thin plate. (See Moriyama, paras. 58, 62 & 127). In other words, the thin plate 2 having the IR- reflecting function in the embodiment depicted in Figure 1 of Moriyama is positioned opposite the outermost layer of the coated plate. This embodiment undermines any suggestion that Moriyama teaches positioning a layer with IR-reflecting function as the outermost or backside layer. Appeal 2016-003363 Application 13/720,853 5 vehicle, it is able to reflect infrared and other infrared radiation 1 more effectively. 2 (Nissan, para. 20). Elsewhere, Nissan criticizes a prior art interior material 3 because: 4 the aforementioned interior material does not adequately provide 5 the effect of reducing the temperature of the passenger 6 compartment of an automotive vehicle [due] to problems such as 7 (1) the inability to take full advantage of the reflective function 8 due to the fact that the reflective layer is used in close proximity 9 to or in contact with the automotive vehicle body, and (2) the 10 transmission of heat from the automotive vehicle body. 11 (Nissan, para. 4). Nissan explicitly says that “an infrared radiation reflecting 12 function may be imparted to the other layers as well [that is, layers other 13 than the ventilation layer 1], with the exception of the Outermost Layer, 14 using the same materials and methods.” (Nissan, para. 55 (italics added for 15 emphasis)). Nissan provides experimental results justifying this teaching. 16 (See generally Nissan, paras. 74–84 (compare Reference Examples 1 and 2, 17 with Reference Example 4)). 18 These passages would have had the effect of discouraging one of 19 ordinary skill in the art from providing the outermost or backside layer of an 20 interior material with an IR-reflecting function. Therefore, they teach away 21 from the limitation “wherein the backside layer comprises a resin film and a 22 metal deposition film deposited on the resin film.” 23 On pages 7 and 8 of the Examiner’s Answer, mailed January 12, 24 2016, the Examiner points out that Nissan teaches: 25 While it suffices for a ventilation layer to include at least one 26 such reflective film having an infrared radiation reflecting 27 function, it is also desirable to form multiple layers thereof. By 28 providing multiple reflective layers, it is possible to enhance, in 29 Appeal 2016-003363 Application 13/720,853 6 geometric progression, the attenuation of the entry of heat and 1 achieve a higher infrared radiation effect. 2 (Nissan, para. 55). While it is true that Nissan taught forming “multiple 3 reflective layers,” apparently either within one layer or distributed between 4 different layers, Nissan expressly excepted the outermost layer of the 5 material from this teaching. (See id.) Nissan’s teaching to form “multiple 6 reflective layers” does not persuade us that an interior material for a vehicle 7 in which “the backside layer comprise[d] a resin film and a metal deposition 8 film deposited on the resin film” would have been obvious. 9 We do not sustain the rejection of claims 1, 4, 6–11 and 20 under 10 § 103(a) as being unpatentable over Mikami, Moriyama and Nissan. 11 Because our decision is based on arguments adduced by the Appellants in 12 response to the rejection of claim 1, we need not consider the Appellants’ 13 separate arguments directed at claim 4. 14 15 DECISION 16 We REVERSE the Examiner’s decision rejecting claims 1, 4, 6–11 17 and 20. 18 19 REVERSED 20 21 Copy with citationCopy as parenthetical citation