Ex Parte TEUTSCH et al

Patent Trials and Appeals Board

Aug 18, 2017

13104877 - (D) (P.T.A.B. Aug. 18, 2017)

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.
13/104,877 05/10/2011 Erich Otto TEUTSCH 11PLAS0057-US-NP 2104
23413 7590 08/22/2017
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street PIZIALI, ANDREW T
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
08/22/2017 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 ERICH OTTO TEUTSCH and CRAIG MILNE
Applicant: SABIC GLOBAL TECHNOLOGIES B.V.
Appeal 2015-008099
Application 13/104,877
Technology Center 1700
Before JEFFERY T. SMITH, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1—5 and 7—16. We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal is generally directed to a hot melt
adhesive film that comprises a polycarbonate copolymer comprising reacted
resorcinol, siloxane, and bisphenol-A; and a laminated article comprising
Appeal 2015-008099
Application 13/104,877
such a film of hot melt adhesive bonded between at least two substrates.
App. Br. 2-3.
Claims 1 and 16 illustrate the subject matter on appeal and are
reproduced below:
1. A laminated article comprising a plurality of laminae; the
article comprising:
a plurality of laminae in the form of substrates, and at
least one laminae in the form of a film of hot melt adhesive
bonded between at least two of the plurality of substrates,
wherein the hot melt adhesive film comprises a polycarbonate
copolymer comprising reacted resorcinol, siloxane, and
bisphenol-A.
16. A hot melt adhesive film comprising a polycarbonate
copolymer comprising reacted resorcinol, siloxane, bisphenol-
A.
App. Br. 9, 11 (Claims Appendix).
The Examiner sets forth the following rejections in the Final Office
Action entered October 27, 2014 (“Final Act.”), and maintains the rejections
in the Answer entered July 27, 2015 (“Ans.”):
I. Claim 16 under 35 U.S.C. § 102(e) as anticipated by Sanner et
al. (US 8,017,699 Bl, issued September 13, 2011) in view of Appellant’s
disclosure;
II. Claims 1, 4, 7, 8, 10, 11, and 16 under 35 U.S.C. § 102(b) as
anticipated by, or alternatively, under 35 U.S.C. § 103(a) as unpatentable
over, Brunelle et al. (US 6,861,482 B2, issued March 1, 2005);
III. Claims 2, 4, 5, and 9 under 35 U.S.C. § 103(a) as unpatentable
over Brunelle in view of Hill et al. (US 4,910,078, issued March 20, 1990);
and
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IV. Claims 3 and 11—15 under 35 U.S.C. § 103(a) as unpatentable
over Brunelle in view of Reber (US 4,604,329, issued August 5, 1986).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of claim
16 under 35 U.S.C. § 102(e) (Rejection I), and rejections of claims 1—5 and
7—16 under 35 U.S.C. 103(a) (Rejections II—IV), for the reasons set forth in
the Final Action, the Answer, and below.
Rejection I
Sanner discloses melt-processable compositions comprising a
resorcinol-based aryl polyester carbonate copolymer, and Sanner discloses
that the compositions can be processed by film extrusion. Col 3,11. 6—11;
col. 6,11. 26—30; col. 7,11. 27—30. Sanner exemplifies a particular resorcinol
polyester carbonate siloxane copolymer, referred to as “Lexan FST.” Col. 9,
11. 33—43 (Table 1). Appellant’s Specification discloses that FEXAN FST is
a hot-melt adhesive. Spec. 3^4 and the Examples. The Examiner finds that
Sanner describes a film formed from FEXAN FST, and the Examiner
therefore concludes that Sanner anticipates or renders obvious claim 16.
Final Act. 3; Ans. 9—10.
Appellant argues that Sanner discloses FEXAN FST in the form of
fines (i.e., very small particles), and does not disclose FEXAN FST in the
form of a hot melt film. App. Br. 3^4; Reply Br. 2—3. Appellant asserts that
Sanner thus lacks any disclosure of reacted resorcinol, siloxane and
bisphenol-A in the form of a film. Id.
However, although Table 1 of Sanner does describe FEXAN FST in
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the form of fines, Table 1 merely describes the raw materials used in
Sanner’s experimental examples. Sanner col. 8,11. 64—65. Contrary to
Appellant’s arguments, as set forth above, Sanner explicitly discloses
compositions comprising a resorcinol-based aryl polyester carbonate
siloxane copolymer, and discloses that the compositions are melt
processable and can be extruded into a film. Col 3,11. 6—11; col. 6,11. 26—
30; col. 7,11. 27—30. Appellant’s arguments do not establish that
modifications to LEXAN FST would be necessary in order for LEXAN FST
to have hot-melt adhesive properties.
Appellant further argues that Sanner does not disclose that LEXAN
FST has utility as an adhesive. App. Br. 4. Appellant argues that this defect
in Sanner cannot be remedied by resort to Appellant’s disclosure because
Appellant’s disclosure “forms no part of the prior art,” and thus cannot be
used against Appellant. Id.
However, it is well-established that where a reference is silent about
an inherent characteristic of something disclosed in the reference, “such gap
in the reference may be filled with recourse to extrinsic evidence,” that
“make[s] clear that the missing descriptive matter is necessarily present in
the thing described in the reference.” Continental Can Co. USA v. Monsanto
Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991).
Appellant’s Specification indicates that when LEXAN® FST is
extruded into a film it functions as an adhesive. Spec. 9,11. 7—8; 10,11. 1—2.
Appellant’s Specification further indicates that LEXAN® FST was well-
known in the art at the time of Appellant’s invention, citing numerous
patents and patent applications that disclose LEXAN® FST. Spec. 4,11. 21—
25. Therefore, the Examiner does not improperly apply Appellant’s
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Specification as prior art against the subject matter of claim 16, but instead
properly relies on Appellant’s Specification as extrinsic evidence to establish
that LEXAN FST inherently functions as a hot-melt adhesive, regardless of
whether the art recognized this property of LEXAN® FST at the time of
Appellant’s invention. Atlas Powder Col. V. IRECO, Inc., 190 F.3d 1342,
1349 (Fed. Cir. 1999) (as long as there is evidence of record establishing
inherency, failure of those skilled in the art to contemporaneously recognize
an inherent property or function of a prior art composition does not preclude
a finding of anticipation); Schering Corp. v. Geneva Pharms., 339 F.3d
1373, 1377 (Fed. Cir.2003) (rejecting the contention that inherent
anticipation requires recognition in the prior art).
In addition, regardless of the disclosure in Appellant’s Specification
that LEXAN® FST functions as a hot melt adhesive, a sufficient factual basis
exists for finding that the extruded film of a resorcinol-based aryl polyester
carbonate siloxane copolymer disclosed in Sanner inherently functions as a
hot melt adhesive because it appears to have the same structure as the
adhesive copolymer film recited in claim 16. In re Papesch, 315 F.2d 381,
391 (CCPA 1963) (“a compound and all of its properties are inseparable”);
In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) (explaining that a chemical
composition and its properties are inseparable.). Therefore, the burden shifts
to Appellant to show otherwise. In re Best, 562 F.2d 1252, 1255 (CCPA
1977). (“Where ... the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”) On this record, Appellant does not meet this burden
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because Appellant’s arguments do not establish that the extruded film of a
resorcinol-based aryl polyester carbonate siloxane copolymer described in
Sanner would not function as a hot melt adhesive. Consequently,
Appellant’s arguments are unpersuasive of reversible error.
We accordingly sustain the Examiner’s rejection of claim 16 under 35
U.S.C. § 102(e).
Rejection II
Appellant argues claims 1, 4, 7, 8, 10, 11, and 16 as a group on the
basis of limitations in claim 1. App. Br. 4—5. We accordingly decide the
appeal as to claims 1, 4, 7, 8, 10, 11, and 16 based on claim 1 alone. 37
C.F.R. § 41.37(c)(l)(iv).
Brunelle discloses a coating material used in multilayer articles that
comprises a resorcinol phthalate-co-bisphenol A- polycarbonate copolymer
into which a siloxane oligomer is incorporated. Col. 11,11. 26—33; col. 30,
11. 49—59. Brunelle discloses thermoforming the coating material into a film
layer, and adhering the film layer onto the surface of a second (substrate)
layer in a hot press. Col. 31,11. 1—3; 34,11. 22—36. Brunelle discloses
multilayer articles that include a substrate layer, a coating layer of the
copolymer material, and an overlayer positioned over the copolymer coating
layer that provides abrasion or scratch resistance. Col. 31,11. 1—3, 12—14.
Brunelle discloses that in such multilayer articles, the substrate layer,
copolymer coating layer, and overlayer are “in contiguous superposed
contact with one another.” Col. 31,11. 14—17.
The Examiner finds that the substrate, copolymer coating layer, and
overlayer disclosed in Brunelle correspond to laminae as recited in claim 1,
and finds that the overlayer disclosed in Brunelle corresponds to a second
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substrate. Final Act. 3—A\ Ans. 11. The Examiner finds that Brunelle
therefore discloses or would have suggested one laminae bonded to two
other laminae as recited in claim 1 because although Brunelle does not
explicitly disclose bonding the copolymer coating layer to the overlayer,
“common sense dictates that it must be bonded otherwise it would fail to
provide scratch or abrasion resistance.” Ans. 11.
Appellant argues that Brunelle discloses that the copolymer layer is a
coating, rather than a laminae.1 App. Br. 5; Reply Br. 4. Appellant contends
that the invention “is directed to a laminated article made up of a plurality of
laiminae, not coatings.” Id. Appellant further asserts that “a coating is
liquid or molten in form, unlike the solid adhesive film of the claimed
invention.” Id.
The evaluation of a claim with respect to prior art begins with
determining the meaning of the claims. We give claim terms their broadest
reasonable interpretation consistent with the Specification as the terms
would be interpreted by one of ordinary skill in the art. In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During prosecution
of patent applications, “the PTO must give claims their broadest reasonable
construction consistent with the specification. . . . Therefore, we look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation.”).
Because Appellant does not direct us to a definition of “laminae” in
1 Appellant’s additional arguments directed to an adhesive interlayer
disclosed in Brunelle (App. Br. 4—5) are unpersuasive of reversible error in
the Examiner’s rejection because the Examiner does not rely on this
disclosure in Brunelle. Final Act. 3—A.
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the Specification, and because we do not find any such definition,2 we
interpret this term according to its plain meaning, consistent with the
disclosures in Appellant’s Specification. Straight Path IP Group, Inc. v.
Sipnet EUS.R.O. (Fed. Cir. 2015-1212, Nov. 25, 2015) (“When claim
language has as plain a meaning on an issue as the language does here ... it
is particularly difficult to conclude that the specification reasonably supports
a different meaning.”); see also In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) (the words of a claim must be given their plain meaning unless the
plain meaning is inconsistent with the specification.).
The ordinary and plain meaning of “laminae” is a thin layer or coat
lying over another3, which is consistent with the disclosure in Appellant’s
Specification of a “laminated” article prepared by interleafmg sheets of
ULTEM® foam with extruded FST film. Spec. 5,11. 3—10. Accordingly,
under a broadest reasonable interpretation consistent with Appellant’s
Specification, the “laminae” recited in claim 1 refer to layers or coatings that
lie over other layers or coatings. Consequently, contrary to Appellant’s
arguments, the copolymer material thermoformed into a film coating layer
disclosed in Brunelle, which adheres to a second layer, corresponds to a
lamina (laminae) of a film of hot melt adhesive as recited in claim 1. In
addition, the substrate and overlayers of the multilayer article disclosed in
Brunelle also correspond to laminae as recited in claim 1. Therefore, the
multilayer article disclosed in Brunelle that includes a substrate layer, a
coating layer of the copolymer material, and an overlayer positioned over
2 Appellant’s Specification does not use the plural term “laminae” or the
singular “lamina.”
3 See, e.g., http://www.dictionary.com/browse/laminae, accessed August 10,
2017.
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the copolymer coating layer, corresponds to the laminated article recited in
claim 1.
With respect to Appellant’s argument that a coating is liquid or
molten, unlike “the solid adhesive film” of Appellant’s claimed invention,
claim 1 does not recite that the film of hot melt adhesive is “solid,” and
Appellant does not direct us to any definition or limiting description in
Appellant’s Specification that requires the film of hot melt adhesive recited
in claim 1 to be solid. App. Br. 5. Appellant’s argument therefore lacks
persuasive merit because it is directed to subject matter that is not recited in
claim 1. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[Appellant’s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.”).
Appellant further argues that Brunelle does not disclose a hot melt
adhesive film comprising a reacted resorcinol, siloxane, and bisphenol-A.
App. Br. 5.
However, as discussed above, Brunelle explicitly discloses a coating
material comprising a resorcinol phthalate-co-bisphenol A- polycarbonate
copolymer into which a siloxane oligomer is incorporated, and Brunell
discloses thermoforming (hot-melting) such a coating material into a film
layer, and adhering the film layer onto the surface of a second (substrate)
layer in a hot press. Col. 11,11. 26—33; col. 30,11. 49-59; col. 31,11. 1—3; 34,
11. 22—36. Therefore, Appellant’s arguments are contrary to the explicit
disclosures in Brunelle, and are consequently unpersuasive of reversible
error.
We accordingly sustain the Examiner’s rejection of claims 1, 4, 7, 8,
10, 11, and 16 under 35 U.S.C. § 103(a) as unpatentable over Brunelle.
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We need not reach the merits of the Examiner’s alternative rejection
of claims 1, 4, 7, 8, 10, 11, and 16 under 35 U.S.C. § 102(b). Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (holding that obviousness
rejections need not be reached upon affirming a rejection of all claims as
anticipated); In re Basell Poliolefine, 547 F.3d 1371, 1379 (Fed. Cir. 2008)
(“Having concluded that the Board properly affirmed the rejection of claims
1—52 of the ‘687 patent based on obviousness-type double patenting in view
of the ‘987 patent, we need not address the remaining issues raised by Basell
regarding the §§ 102(b) and 103(a) rejections, as well as the additional
double patenting rejections. Accordingly, the Board’s decision is
affirmed.”); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (having decided a single dispositive issue, the ITC was not required to
review other matters decided by the presiding officer).
Rejections III and IV
To address these rejections, Appellant relies on the arguments made
for Rejection II (discussed above), and argues that the additional references
applied in these rejections fail to cure the deficiencies of Brunelle. App. Br.
5—6. Because we are unpersuaded of reversible error in the Examiner’s
rejection of claim 1 for the reasons discussed above, Appellant’s position as
to these rejections is also without merit. We accordingly sustain the
Examiner’s rejections of claims 2—5, 9, and 11—15 under 35 U.S.C. § 103(a).
DECISION
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm Examiner’s rejection of claim 16 under 35 U.S.C. §
102(e) and rejections of claims 1—5 and 7—16 under 35 U.S.C. 103(a).
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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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