Ex Parte SUMI

Patent Trials and Appeals Board

May 28, 2019

14760576 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/760,576 07/13/2015 Yuichiro SUMI
23413 7590 05/30/2019
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
SOB0032US 1087
EXAMINER
NGUYEN, VU ANH
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUICHIRO SUMI 1
Appeal2018-003991
Application 14/760,576
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3, 5, and 6. 2 We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
1 The Appellant is the Applicant, TBM Co., Ltd., which is also identified as
the real party in interest. See Br. 2.
2 The Final Office Action dated April 13, 2017, rejects claims 1---6. In a
Response After Final Action, the Appellant amended claim 1 to recite the
contact angle that previously had been recited by claim 4, and the Appellant
cancelled claim 4. See Response After Final Action dated July 13, 2017.
The Examiner entered the claim amendment for purposes of appeal but
maintained the rejection for reasons set forth in the Final Action. See
Advisory Action dated July 26, 2017.
Appeal2018-003991
Application 14/760,576
BACKGROUND
The subject matter on appeal relates to thin monolayer films,
associated laminate films, and associated methods of manufacturing. E.g.,
Spec. ,r 1; Claims 1, 5, 6. Claim 1 is reproduced below from page 8 (Claims
Appendix) of the Appeal Brief:
1. A thin monolayer film comprising a thermoplastic resin and an
inorganic substance powder at a weight ratio of 18:82 to 50:50,
wherein the thin monolayer film has a specific gravity of 0.60
or more and 1.40 or less and
a water absorptiveness as measured by a Cobb method in
accordance with JIS P 8140 of 0.0 g/m2· 120 sec. or more and
11.0 g/m2· 120 sec. or less,
wherein a contact angle of water on the surface of the thin
mono layer film is 40 degrees or more and 90 degrees or less.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
1. Claims 1, 2, 5, and 6 over Sumi (WO 2012/165311 Al, published
Dec. 6, 2012), 3 Ohbayashi (US 6,432,550 Bl, issued Aug. 13, 2002), and
Maeda (JP 2003-320744 A, published November 11, 2003)4;
2. Claim 3 over Sumi, Ohbayashi, Maeda, and Watanabe (US
7,255,918 B2, issued Aug. 14, 2007).
3 The Examiner relies on US 2014/0100328 Al, published Apr. 10, 2014, as
an English translation of WO 2012/165311 Al. See Ans. 2. The Appellant
does not object.
4 The Examiner relies on the machine translation of record. See Ans. 2. The
Appellant does not object.
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Application 14/760,576
ANALYSIS
The Appellant argues the claims as a group. See Br. 2-6. We select
claim 1 as representative, and the remaining claims will stand or fall with
claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner's rejection of
claim 1. Accordingly, we affirm the Examiner's rejections for reasons set
forth below, in the Final Action, and in the Examiner's Answer. See
generally Final Act. 2---6; Ans. 2-7.
The Examiner finds that Sumi discloses a thin monolayer film
comprising each element of claim 1 except that Sumi does not expressly
disclose (1) the water absorptiveness of its film or (2) the contact angle of
water on the surface of its film. Ans. 2--4.
As to water absorptiveness, the Examiner finds that Sumi teaches that
its film has "excellent water resistance and should be used as printing
paper." Id. at 3. The Examiner finds that Ohbayashi discloses printing
paper with a preferred water absorptiveness of "not more than 5 g/m2," and a
most preferred water absorptiveness of O g/m2. Id. The Examiner
determines that "it would have been obvious to a POSIT A to have achieved
a low water absorptivity in the thin film sheet taught by Sumi et al. simply
by varying the relative proportions of the thermoplastic polyolefin resin and
the inorganic powder within the boundary set forth in Sumi et al." Id. at 4.
As to contact angle, the Examiner finds that Maeda discloses a
printing paper comprising "a paper core coated on a surface with an ink-
receiving layer, wherein the paper core has a water contact angle of 80° or
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less." Id. The Examiner finds that Maeda teaches that "[t]he water contact
angle of the paper core before being coated with the ink-receiving layer is
20-80° in order to facilitate good adhesion of the receiving layer to the
paper core/base/support/substrate." Id. (internal citations omitted). The
Examiner determines that it would have been obvious "to have modified the
thin film sheet taught by Sumi et al. by rendering the surface(s) of the film
hydrophilic, with a water contact angle of 20-80°, so as to improve the
compatibility/adhesion of the surface with ink-receiving layer." Id.
In view of those findings, the Examiner concludes that the subject
matter of claim 1 would have been obvious to a person of ordinary skill in
the art. Id. at 2--4.
The Appellant first argues that a person of ordinary skill in the art
would not have incorporated Maeda's contact angle into Sumi "because the
sheet of Sumi already has printability." Br. 3--4.
That argument is not persuasive. Sumi does not specifically disclose a
contact angle, and Maeda discloses appropriate contact angles for similar
printing applications. The Examiner is simply proposing the use of a known
suitable contact angle (that of Maeda) in a similar printing application (that
of Sumi). Cf KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007)
("The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.").
Moreover, and as the Examiner explains in the Answer, "the fact that the
thin film sheet disclosed by Sumi has good printing suitability does not serve
to deter one skilled in the art from making further improvements." Ans. 6;
see also In re Ethicon, Inc., 844 F .3 d 1344, 13 51 (Fed. Cir. 2017) ("The
normal desire of artisans to improve upon what is already generally known
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Application 14/760,576
can provide the motivation to optimize variables .... "). The Appellant does
not file a Reply Brief to challenge the Examiner's determination that Sumi
could be further improved by combination with Maeda. On this record, the
Appellant's argument that "Sumi already has printability" is not persuasive
of reversible error in the rejection.
The Appellant also argues a person of ordinary skill in the art would
not have combined Sumi and Maeda because Maeda allegedly concerns
"conventional methods" that Sumi allegedly criticizes. Br. 4.
That argument is not persuasive. The Examiner is not proposing the
use of Maeda's allegedly conventional methods or laminate films. The
Examiner is proposing the use of a known suitable contact angle (Maeda's)
in a similar printing application (Sumi's). The Appellant identifies no
portion of either Maeda or Sumi that might have dissuaded a person of
ordinary skill in the art from using the contact angle disclosed by Maeda in
the printing applications of Sumi. See id.
The Appellant also argues that the claimed invention "results in
significant advantages over conventional devices." See id. Even assuming
that the Appellant's results are superior to the results of the prior art, or
otherwise result in advantages, "any superior property must be unexpected to
be considered as evidence of non-obviousness." See Pfizer, Inc. v. Apotex,
Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (emphasis in original). The
Appellant has not alleged or identified evidence that any advantage achieved
by the claimed subject matter would have been unexpected to a person of
ordinary skill in the art.
Finally, the Appellant argues that Maeda is nonanalogous art. Br. 5-
6. Art is analogous to the claimed invention if (1) the art is "from the same
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field of endeavor, regardless of the problem addressed," or (2) the art is
"reasonably pertinent to the particular problem with which the inventor is
involved." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). "The
Supreme Court's decision in KSR International Co. v. Teleflex, Inc. directs
us to construe the scope of analogous art broadly .... " Wyers v. Master
Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010) (internal citation omitted).
The Appellant argues that the field of endeavor of the present
application is "thin films formed of a resin and inorganic powder substance,"
while Maeda "relates to laminated paper-based substrates." Br. 5-6. The
Appellant further argues that the problem faced by the present inventor "was
to develop a thin-film material that would allow functional chemicals to
adhere efficiently while maintaining a low cost," while "Maeda is directed to
ensuring high quality appearance and luster on recording media for a
photoprinting process." Id. at 6.
Those arguments are not persuasive. Consistent with Wyers'
instruction to "construe the scope of analogous art broadly," an appropriate
identification of the relevant field of endeavor is thin films for use in, e.g.,
printing applications. The Appellant's Specification expressly discloses
printing and printing paper as an application for the disclosed subject matter.
Spec. ,r 57 ("Examples of layers formed by the process material include, but
are not limited to, an ink receiving layer, anti-static layer, a metal layer, a
printing coloring layer, and an adhesive layer, etc."). The Specification also
gives a specific example in which the disclosed subject matter is used as an
inkjet receiving layer. E.g., id. ,r 87 et seq. The Specification states: "[A]s
inkjet paper, color development of ink and the like was excellent and
comparable to conventional inkjet paper in which pulp is used." Id. ,r 90.
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Even if the field of endeavor may broadly be characterized as asserted by the
Appellant, the field encompasses or overlaps fields expressly described by
the Specification, such as papers, substrates, and film coatings for inkjet
printing. Maeda concerns substrates and films for inkjet printing. See Br.
5-6; see also, e.g., Maeda at Abstract ( describing a "coating film"). On this
record, we are not persuaded that Maeda is not from the same field of
endeavor as the Appellant's disclosure.
Even if Maeda were from a different field of endeavor, in developing,
e.g., inkjet receiving layers for inkjet papers, see Spec. ,r,r 87, 90, one aspect
of the problem with which the inventor of the application on appeal was
involved was identifying and selecting suitable materials, and properties of
those materials, for inkjet printing applications. A reference such as Maeda
that is concerned with inkjet printing and the development of papers and
materials for inkjet printing "logically would have commended itself' to the
inventor's attention, In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992), and
therefore qualifies as analogous art under the "reasonably pertinent" prong
of Bigio. See Bigio, 381 F.3d at 1325.
On this record, we are not persuaded that Maeda is "too remote to be
treated as prior art." See Clay, 966 F.2d at 658.
In summary, we have carefully considered the Appellant's arguments,
but we are not persuaded of reversible error in the Examiner's rejection of
claim 1.
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Application 14/760,576
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-3, 5, and 6.
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
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