Ex Parte Tsukada et al

Board of Patent Appeals and Interferences

Jun 27, 2007

10943944 (B.P.A.I. Jun. 27, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TETSURO TSUKADA and TOMOMI TAKAHASHI
____________

Appeal 2007-14851
Application 10/943,944
Technology Center 1700
____________

Decided: June 27, 2007
____________

Before PETER F. KRATZ, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 13, 14, and 19-26. Claims 1-12
and 15-18 have been withdrawn from consideration. We have jurisdiction
pursuant to 35 U.S.C. § 6.

1 An oral hearing was held on June 6, 2007.

Appeal 2007-1485
Application 10/943,944

According to Appellants, the invention is directed to a wide
fluororesin film having a width of from 1 to 150 m having at least two sheets
of film made from a fluororesin. The fluororesin film has utility as a
covering material for agricultural uses (Specification 5-9).2 Claim 13 is
representative of the invention and is reproduced below:
13. A wide fluororesin film having a width of from 1 to 150 m, having at
least two sheets of films made from a fluororesin, bonded by repeating
a bonding method at least once, wherein the bonding method
comprises disposing said at least two sheets of films so that their
edges overlap each other, thereby forming an overlapping portion,
wherein said overlapping portion includes and is wider than a central
part thereof, press-bonding said central part of said overlapping
portion under heating at a temperature within a range of from lower
by 5°C to higher by 20°C than the melting point of the fluororesin,
and then press-bonding the entire area of said overlapping portion at a
temperature within a range of from lower by 30°C to lower by more
than 5°C, than the melting point, to weld the two sheets of films.

The Examiner has relied on the following prior art references as
evidence of unpatentability:
Jarvis US 2002/0172792 Nov. 21, 2002
Higuchi US 6,512,064 B2 Jan. 28, 2003
Lankhof US 6,706,946 B1 Mar. 16, 2004
Yamanaka3 US 6,878,400 B1 Apr. 12, 2005
Inaba4 US 6,893,729 B2 May 17,
2005

The Examiner entered the following grounds of rejection:

2 We refer to and cite from Appellants’ Appeal Brief dated July 24, 2006 and
the Reply Brief dated October 19, 2006.
3 The application for this patent was filed on November 13, 2001.
4 The application for this patent was filed on November 1, 2002.
2

Appeal 2007-1485
Application 10/943,944

Claims 13-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Higuchi (Answer 4).
Claims 13-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Yamanaka (Answer 4-5).
Claims 13-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Jarvis in combination with Inaba (Answer 5-6).
Claims 13-14 and 19-26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jarvis in combination with Inaba and Lankof (Answer 6-
8).
Principles of Law
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966). “[A]nalysis [of whether the subject matter of a claim is obvious]
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396
(2007), quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336-37
(Fed. Cir. 2006). The analysis supporting obviousness, however, should be
made explicit and should “identify a reason that would have prompted a
person of ordinary skill in the art to combine the elements” in the manner
claimed. KSR, 127 S.Ct. at 1731, 82 USPQ2d at 1389.
3

Appeal 2007-1485
Application 10/943,944

It has long been held that “‘[i]f the product in a product- by- process
claim is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.’” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312,
1317, 78 USPQ2d 1097, 1101 (Fed. Cir. 2006)(quoting In re Thorpe, 777
F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985)).
OPINION
(A) The rejections over Higuchi and Yamanaka.
Claims 13-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Higuchi and Yamanaka individually. 5
The Examiner contends that both Higuchi and Yamanaka teach a wide
fluororesin film useful as an agricultural covering having at least two
fluororesin film sheets bonded to one another. The Examiner recognized
that neither Higuchi nor Yamanaka disclosed the described fluororesin film
had a width of from 1-150 m as required by the claimed invention. The
Examiner concluded that forming a fluororesin film with a width of from 1-
150 m would have been obvious to a person of ordinary skill in the art
(Answer 4-5).
Appellants contend that the fluororesin film structure of Higuchi and
Yamanaka is not substantially similar to the present invention because the
described layers are coextensive with each other rather than overlapping at
the edges (Br. 6-7).

5 Appellants have not presented separate arguments for claim 14 (See Brief
6-7). We select claim 13 as representative of the claims on appeal and will
limit our discussion to claim 13.
4

Appeal 2007-1485
Application 10/943,944

Accordingly, the issues presented on the record for these rejections in
this appeal are as follows: (1) Do Higuchi and Yamanaka each disclose,
teach, or suggest a wide fluororesin film useful as an agricultural covering?;
and (2) Has the Examiner presented an explicit reason for manufacturing a
wide fluororesin film having a width of from 1-150 m?
We determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence, which prima facie case has
not been adequately rebutted by Appellants’ arguments. Therefore, we
AFFIRM the rejections as presented in this appeal essentially for the reasons
stated in the Answer, as well as those reasons set forth below
The Examiner found that both Higuchi and Yamanaka teach a wide
fluororesin film useful as an agricultural covering having at least two
fluororesin film sheets bonded to one another. The Examiner recognized
that neither Higuchi nor Yamanaka disclosed the described fluororesin film
had a width of from 1-150 m as required by the claimed invention. The
Examiner concluded that forming a fluororesin film with a width of from 1-
150 m would have been obvious to a person of ordinary skill in the art
(Answer 4-5).
Appellants have not contested that it would have been obvious to a
person of ordinary skill in the art to form a fluororesin film having a width
of from 1-150 m as required by the claimed invention. Rather, Appellants
argue that the layers of the films of Higuchi and Yamanaka are coextensive
with each other rather than overlapping at the edges.
Appellants’ arguments are not persuasive because the subject matter
of claim 13 does not preclude the layers from being formed coextensive with
5

Appeal 2007-1485
Application 10/943,944

one another. Appellants have failed to explain why the language of claim 13
should be construed so as to require the layers to have portions that are
uncovered by one another. In particular, the explicit language of the claims
does not appear to include this limitation and Appellants have not directed
us to any language in the Specification which supports their proposed claim
construction. As such, we affirm the rejection of the claims for the reasons
presented by the Examiner.
Notwithstanding our above determinations, we find that the
description of the prior art appearing in the present Specification discloses
that it was known to persons of ordinary skill in the art to create a wide film
formed from a fluororesin comprising overlapping portions. The
Specification discloses that the wide film was known to have been used for a
covering material for agricultural use (Specification 1). The Specification
discloses that to create a wide film for a covering material films are bonded
to one another (Specification 1). The Specification further discloses that it
was known “[a]s a bonding method, it is common to employ a bonding
method in which edges of two sheets of films are overlapped, and the
overlapping portion is welded by press bonding under heating”
(Specification 1).

(B) The rejection over Jarvis in combination with Inaba.
6

Appeal 2007-1485
Application 10/943,944

Claims 13-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Jarvis in combination with Inaba . 6
The Examiner contends that Jarvis teaches a wide film useful as an
agricultural covering. The Examiner recognized that Jarvis did not disclose
the film to be formed from a fluororesin material. The Examiner contends
that Inaba describes film structures comprising fluororesin materials that
have chemical resistant properties. The Examiner contends that it would
have been obvious to a person of ordinary skill in the art to utilize
fluororesin materials as the wide film structure of Jarvis (Answer 5-6).
Appellants contend that the combination of Jarvis and Inaba does not
disclose or suggest the presently claimed invention (Br. 8-9).
Accordingly, the issues presented on the record for this rejection are
as follows: (1) does Jarvis disclose, teach, or suggest a wide film useful as
an agricultural covering?; and (2) has the Examiner presented an explicit
reason for manufacturing the wide film of Jarvis with fluororesin materials?
We determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence, which prima facie case has
not been adequately rebutted by Appellants’ arguments. Therefore, we
AFFIRM the rejection as presented in this appeal essentially for the reasons
stated in the Answer, as well as those reasons set forth below.
The Examiner found that Jarvis teaches a wide film useful as an
agricultural covering having at least two film sheets bonded to one another.
Jarvis discloses the film is useful as barrier material (Paragraph 0060). The

6 For this rejection, Appellants have not presented separate arguments for
claim 14 (See Br. 8-9). We select claim 13 as representative of the claims
on appeal and will limit our discussion to claim 13.
7

Appeal 2007-1485
Application 10/943,944

Examiner also recognized that Jarvis discloses the film material should have
chemical resistant properties (Answer 5). The Examiner found that Inaba
describes fluororesin film materials have chemical resistant properties. In
addition to chemical resistant properties, Inaba discloses fluorine-containing
ethylenic polymers have heat resistant properties, and have a low
permeability against solvents and fuels (col. 1, ll. 31-34). The Examiner
concluded that forming the wide film material of Jarvis utilizing a
fluororesin material would have been obvious to a person of ordinary skill in
the art (Answer 5-6).
Jarvis describes a method of joining two or more substrates with a
thermoplastic tape through the use of adhesive and physical bonding with
the substrates. Jarvis discloses that the formed seam has excellent tensile
strength and barrier properties (Paragraph 0020). Jarvis discloses a wide
variety of materials are suitable for use as the substrate and the thermoplastic
tape (Paragraphs 0022-0023). Jarvis discloses that the substrates to be
joined are placed in communication with the tape structure where heat and
pressure are applied to seal the materials to form a seam (Paragraph 0031).
Appellants have not contested that it would have been obvious to a
person of ordinary skill in the art to form a fluororesin film having a width
of from 1-150 m as required by the claimed invention. Rather, Appellants
argue that the combination of Jarvis and Inaba does not disclose or suggest
the presently claimed invention because there is no thermoplastic between
the respective fluororesin sheets and the present invention requires press
bonding at the overlapping edges (Br. 8).
8

Appeal 2007-1485
Application 10/943,944

Appellants’ arguments are not persuasive. The subject matter of
claim 13 specifies that it has least two film sheets. This does not preclude
the use of an additional thermoplastic sheet. Furthermore, as disclosed in
the present Specification, a person of ordinary skill in the art would have
recognized that fluororesin films are suitable for bonding under heat and
pressure (Specification 1-2). Jarvis discloses that the substrates to be joined
are placed in communication with the tape structure where heat and pressure
are applied to seal the materials.

(C) The rejection over Jarvis in combination with Inaba and Lankof.
Claims 13-14 and 19-26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jarvis in combination with Inaba and Lankof.7
Regarding claims 19 and 20, Appellants argue that none of the applied
prior art discloses or suggests the claimed subject matter (Br. 10).
Appellants’ argument is not persuasive because it does not address the
Examiner's basis of rejecting the claims. Specifically, Appellants have not
addressed why the Lankof reference would not have suggested to a person of
ordinary skill in the art the suitability of using a hydrophilic layer on a
fluororesin film as proposed by the Examiner.
Regarding claims 23-26, Appellants’ arguments are not persuasive.
The present record establishes that a person of ordinary skill in the art
recognizes that film sheets can be bound together to form a wide sheet (See

7 We have already addressed the limitations of claims 13 and 14 in our
discussion of the previous rejection.
9

Appeal 2007-1485
Application 10/943,944

Specification 1). Appellants’ arguments have not addressed why the width
of the overlapping portion specified in the claims are separately patentable
and would not have been obvious to a person of ordinary skill in the art.
For the foregoing reasons and those stated in the Answer, we affirm
all grounds of rejection presented in this appeal.

ORDER
The Examiner's rejections of claims 13-14 and 19-26 under 35 U.S.C.
§ 103(a) are affirmed

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).
AFFIRMED

sld/ls

OBLON, SPIVAK, MCCLELLAND,
MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314
10