Ex Parte Paiva et al

Patent Trial and Appeal Board

Dec 27, 2016

11576961 (P.T.A.B. Dec. 27, 2016)

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.
11/576,961 04/10/2007 Adriana Paiva 60133US005 7927
32692 7590 12/29/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
KOKKINOS, NICHOLAS C
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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 ADRIANA PAIVA, JEFFREY T. ANDERSON, ROY WONG,
SUSAN K. YARMEY, MARK A. STROBEL, JOEL A. GETSCHEL,
ALBERT I. EVERAERTS, GREGORY F. KING, JOHN T. BRADY,
DUANE D. FANSLER, KANTA KUMAR, JEFFREY D. MALMER,
MARIO A. PEREZ, DEBORAH A. STROBEL, WENDY L. THOMPSON,
MICHAEL C. PALAZZOTTO, STEFAN H. GRYSKA, SHARON WANG,
MIKHAIL L. PEKUROVSKY, MARK F. ELLIS,
EDWARD G. STEWART, ROBERT M. JENNINGS,
GERALD R.A. HOFMANN, KELLY J. GIBBENS,
GEZAHEGN D. DAMTE, and JIE YANG
Appeal 2015-008161
Application 11/576,961
Technology Center 1700
Before BRADLEY R, GARRIS, BEVERLY A. FRANKLIN, and
N. WHITNEY WILSON, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 81—101. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
Appeal 2015-008161
Application 11/576,961
STATEMENT OF THE CASE
Claim 81 is illustrative of Appellants’ subject matter on appeal and is
set forth below (with text in bold for emphasis):
81. A protective floor film for protecting a top surface of a floor,
the protective floor film comprising:
a stretchable base film layer comprising a polymeric resin, wherein
the base film layer has a thickness in a range of 1 to 10 mils; and
a wear layer disposed on at least a portion of the base film layer,
wherein the wear layer comprises surface modified silica particles having a
mean diameter in the range from 1 to 200 nanometers;
wherein the protective floor film is configured to retain 60%—85%
of an initial gloss value at a 60° incident angle after 1,590 cycles of a
Sand Traffic Test.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Pricone et al. US 5,213,872 May 25, 1993
(“Pricone”)
Huang et al. US 5,939,182 Aug. 17, 1999
(“Huang”)
Christian et al. US 6,200,666 B1 Mar. 13, 2001
(“Christian”)
Janssen et al. US 6,461,709 B1 Oct. 8, 2002
(“Janssen”)
THE REJECTIONS
1. Claims 81—89, 98, and 100 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Huang in view of Christian.
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Application 11/576,961
2. Claims 90-97 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Huang in view of Christian, and further in view of
Janssen.
3. Claim 99 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Huang in view of Christian, and further in view of Pricone
for the reasons set forth in the 16 October 2013 Non-Final Office Action.
4. Claim 101 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Huang in view of Christian.
ANALYSIS
The dispositive issue in this case is claim interpretation pertaining to
“a protective floor film”, including emphasis given to the other claim
language of claim 81 (as shown in bold, supra). It is the Examiner’s
position that this recitation is part of the preamble that need not be
considered a limitation. Final Act. 6. Appellants dispute the Examiner’s
claim interpretation. Appeal Br. 6. Reply Br. 2—3.
We agree with Appellants, for the reasons presented by Appellants in
the record, that the Examiner has improperly dismissed the preamble
limitation “a protective floor film” in claim 81 as no more than an intended
use. Reply Br. 2—3. In so dismissing, the Examiner has not considered the
claim preamble in question in the context of the entire claim, the
Specification and one of ordinary skill in the art. See Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“If the claim
preamble, when read in the context of the entire claim, recites limitations of
the claim, or, if the claim preamble is ‘necessary to give life, meaning, and
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Application 11/576,961
vitality’ to the claim, then the claim preamble should be construed as if in
the balance of the claim.”); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1977)(The terms in a claim are given the broadest reasonable interpretation
consistent with the Specification as they would be interpreted by one of
ordinary skill in the art.); Corning Glass Works v. Sumitomo Elec. U.S., Inc.,
868 F.2d 1251, 1257 (Fed. Cir. 1989)(“The effect preamble language should
be given can be resolved only on review of the entirety of the patent to gain
an understanding of what the inventors actually invented and intended to
encompass by the claim.”). When, as here, the preamble limitation “a
protective floor film” in claim 1 is correctly interpreted in the context of the
entire claim and the Specification as it would have been interpreted by one
of ordinary skill in the art, it necessarily or intrinsically requires at least
structures and/or properties (e.g., sizes, shapes, and hardness) that make the
film suitable as a protective floor film. On this record, the Examiner has not
adequately shown that the hydrophilic polymeric article of Huang has
structures and properties capable of being used as a protective floor film for
the reasons presented by Appellants in the record. The intended use
doctrine1 does not give the Examiner an unfettered license to effectively
1 The intended use doctrine, according to our reviewing in Pitney
Bowes, Inc., 182 F.3d at 1305 (emphasis added), can arise in the
following situation:
[T]he body of the claim fully and intrinsically sets forth the
complete invention, including all of its limitations, and the
preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example,
the purpose or intended use of the invention, then the preamble
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Application 11/576,961
delete an explicit limitation from the claims on appeal in order to avoid the
burden of accounting for every limitation recited in the claims.
In view of the above, we reverse Rejection 1. Because the Examiner
does not rely upon the other applied references to cure the stated deficiencies
involved in Rejection 1, we also reverse Rejections 2—\.
DECISION
Each rejection is reversed.
ORDER
REVERSED
is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation.
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