Ex Parte Vogel et al

Board of Patent Appeals and Interferences

Jun 28, 2010

09833452 (B.P.A.I. Jun. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RANDALL ALLEN VOGEL, I HWA LEE, SUMITA SANJEEVI
RANGANATHAN, and LORI J. PIKE,

Appellants.
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Appeal 2009-013616
Application 09/833,452
Technology Center 1700
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Decided: June 28, 2010
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Before SALLY GARDNER LANE, RICHARD TORCZON, and SALLY C.
MEDLEY, Administrative Patent Judges.

LANE, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
The appeal, under 35 U.S.C. § 134(a), is from a Final Rejection of
Appellants’ claims 1, 3, 6, 43, 54, 55, 57-60, 66-72, 83, and 84. Claims 2, 4,
5, 7-42, 44-53, 56, 61-65 and 73-82 were cancelled by Appellants. (See
Amendment transmitted July 13, 2007, pp. 3-5). We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part and enter a new grounds of rejection.
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Appellants’ specification is directed to multilayer sheets that can be
used for surfacing parts, such as automotive, appliance and general aviation
parts. (Spec. p. 5, ll. 6-10). Appellants’ claims are not limited to these uses,
though. (See App. Br. 20-21, Claims App’x).
The Examiner relied on the following U.S. patents:
Flieger 5,789,048 August 4, 1998 (“Flieger”)
Smith 6,319,438 November 20, 2001 (“Smith”)

The Examiner also relied on Japanese application JP 04345828A (JP ‘828”).
The Examiner rejected Appellants’ claims 1, 3, 6, 43, 54, 55, 57-60,
66-68, 83, and 84 under 35 U.S.C. § 103(a) over Flieger.
The Examiner rejected Appellants’ claims 1, 3, 6, 43, 54, 55, 57-60,
66-68, 83, and 84 under 35 U.S.C. § 103(a) over JP ‘828.
The Examiner rejected claims 69-72 under 35 U.S.C. § 102(e) over
Smith.
Appellants’ claim 1 recites1:
A multilayer film or sheet comprising:
a.) a first co-extruded polymeric layer consisting
essentially of an ionomer and a first additive; and
b.) a second co-extruded polymeric layer consisting of an
ionomer and a second additive;
wherein the film or sheet is a thermoformable film or
sheet having a thickness in the range of from about 8 mils to
about 60 mils;
the first co-extruded polymeric layer is surface layer,
the second co-extruded layer is in contact with said first
co-extruded polymeric layer, and
the first or second additive is one or more UV stabilizer,
UV absorber, antioxidant, thermal stabilizer, anti-stat additive,

1 Clam 1 has been modified to include indentations. See 37 C.F.R. § 1.75(i).
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processing aid, fiber glass, mineral filler, anti-slip agent,
plasticizer, nucleating agent, pigment, dye, flake, or mixtures
thereof.

(Reply Br. 20, Claims App’x).

II. REJECTIONS UNDER 35 U.S.C. § 103(a) OVER FLIEGER
Findings of Fact
1. Flieger teaches a package made of multiple layers of extruded
polymeric film, preferably ionomers of extruded polymers. (Flieger col. 1,
l. 62, through col. 2, l. 3).
2. Flieger teaches that a layer of the bag can be black to provide
for ultraviolet light protection and that another layer can be tacky to allow
for minimal slippage when stacked on top of other bags. (Flieger col. 3, ll.
1-5).
3. Flieger teaches that the thickness of the layers of a bag can vary
depending on the size and weight of the package, but that a typical bag holds
25 kg and has layers 70-125 microns thick. (Flieger col. 2, ll. 61-67).
Issue
Does Flieger render obvious a multi-layer film with a thickness “in
the range of from about 8 mils to about 60 mils,” as claimed?
Analysis
Like the claimed multilayer film, Flieger teaches multiple polymeric
layers of extruded ionomer arranged to form a package (FF2 1; Flieger col. 1,
l. 62, through col. 2, l. 3) and including additives as claimed (FF 2, Flieger

2 “FF” indicates Finding of Fact.
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col. 3, ll. 1-5). Appellants argue that Flieger does not teach films or sheets
that have the claimed thickness. (App. Br. 17). Flieger teaches layers that
are 70-1253 microns thick. (FF 3; Flieger col. 2, ll. 61-67).
Flieger teaches that the thickness of the layers can be varied
depending of the size and weight of the package, providing 70-125 microns
as a typical thickness. (FF 3; Flieger col. 2, ll. 61-67). Even though Flieger
discusses keeping the amount of polymer to a minimum in the final
packaged product (see App. Br. 17; Flieger col. 3, ll. 9-11), it expressly
teaches that the film thickness can be varied to accommodate packages of
different sizes and weights. One skilled in the art would have had a reason
to choose a greater thickness than the “typical” bag exemplified in Flieger
when wishing to accommodate a package of a greater weight or size.
Appellants do not argue that the claimed range produces unexpectedly good
results for its disclosed utility. “[D]iscovery of an optimum value of a result
effective variable in a known process is ordinarily within the skill of the art.”
In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Accordingly, the Examiner did not err in rejecting claim 1 as being
obvious over Flieger.4

3 The Examiner found that 125 microns is approximately 5 mils. (Ans. 15).
4 Appellants also argue that Flieger is not prior art, relying on the Rule 131
Declarations of inventor Lori J. Pike, which assert a date of invention before
August 4, 1998. (App. Br. 18). Flieger was issued on August 4, 1998, more
than one year before the filing date of Appellants’ provisional application
60/197,275, filed April 14, 2000, to which Appellants claim the benefit of
priority. Thus, Flieger is prior art under 35 U.S.C. § 102(b). It is well
settled that 102(b) prior art cannot be antedated. In re Foster, 343 F.2d, 980,
989 (CCPA 1965).
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Appellants argue that Flieger does not teach the elements recited in
dependent claims 6, 43, 57-60, 66-68, and 835 (App. Br. 18-19). Appellants
recite the elements of these claims but do not explain why the Examiner
erred in finding the elements to be taught or obvious. Since the Appellants
have not provided any specific arguments regarding these elements and
instead have merely pointed out what the claims recite, we do not consider
these claims to be separately argued. 37 CFR 41.37(c)(vii). Thus, the
Examiner did not err in making these rejections.

III. REJECTIONS UNDER 35 U.S.C. § 103(a) OVER JP ‘828
The Examiner rejected claims 1, 3, 6, 43, 54, 55, 57-60, 66-68, 83,
and 84 under 35 U.S.C. § 103(a) over JP ‘828. Because we affirm the
Examiner’s rejection of the same claims as being obvious over Flieger, we
need not and do not reach the issue of whether the rejection over JP ‘828
was proper.

IV. REJECTIONS UNDER 35 U.S.C. § 102(e) OVER SMITH
Findings of Fact
4. Appellants’ claim 69 recites: “The multilayer film or sheet of
claim 1 wherein the first co-extruded polymeric layer has a Distinctness of
Image (DOI) of at least 80 and a gloss that exceeds 60% at a 20 degree
angle.” (App. Br. 21, Claims App’x).

5 Appellants also argued that the elements of claims 69-72 and 82 are not
taught in Flieger (App. Br. 18), but claims 69-72 were not rejected over
Flieger and claim 82 was cancelled by Appellants. Thus, we find these
arguments to be superfluous and do not address them.
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5. Smith teaches extruded automotive trim that can be made of
several optional layers. (Smith abstract).
6. Smith provides an exemplary embodiment of a multilayer sheet,
with a pigmented and/or metallized layer, a clear coat layer, a tie layer, and a
protective layer. (Smith abstract, col. 9, ll. 51-56, and Figs. 11(e) and (f)).
7. Smith teaches that the layers are extruded into a sheet and
thermoformed to the needed shape. (Smith col. 7, l. 52- col. 8, l. 5).
8. Smith teaches that the pigmented and UV resistant layers can
be made of ionomer resins (Smith col. 15, ll. 17-25).
9. Smith teaches that the finished surface of the multilayer sheet
can have a DOI of at least about 60 units, on a scale of 100 max. DOI, and a
gloss reading of at least about 60-65 at an angle of 20oC. (Smith col. 19,
ll. 46-65).
Issues
Does Smith teach a multilayer film or sheet with a first co-extruded
polymeric layer has a DOI of at least 80?
Does Smith teach a multilayer film or sheet with layers having flow
properties that are matched, allowing the layers to flow to the full width of
the die?
Analysis and New Grounds of Rejection
Appellants argue that Smith is not available as prior art because
Declarations by named inventor Lori J. Pike were submitted under 37 CFR
§ 1.131 to show a date of invention before the issue date of Smith. (App.
Br. 4-5). Ms. Pike declares that she made runs of coextruded, two layer
films comprising an ionomer and additives before August 4, 1998. (Rule
131 Declaration of Lori J. Pike executed July 9, 2007). Ms. Pike declares
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that the two layers have a gloss that exceeds 60% at an angle of 20oC, but
the Declarations do not include information about the DOI of the layers.
(Id.). According to the Examiner, even though the Declarations are
sufficient to antedate Smith for independent claim 1, which lacks a
limitation on DOI, they are insufficient to antedate Smith because they fail
to support the DOI recited in claims 69-72. (Ans. 7). Thus, the Examiner
withdrew the rejection under 35 U.S.C. § 102(e) of claim 1, and other
dependent claims, on the basis of Smith, but maintained the rejection of
dependent claims 69-72 over Smith.
Appellants argue that the Examiner is wrong in assuming that “if a
base claim reciting limitation A is not rejected, a dependent claim reciting
extra limitations A+B can be rejected.” (Reply Br. 1). But, “the mere fact
that an inventor may have invented the combination, A, B, and C, for
example, before a patentee does not in itself prove that he has also invented
the combination A, B, C, and D at the same time . . . .” In re Tanczyn, 347
F.2d 830, 832 (CCPA 1965). While Appellants argue that a Rule 131
Declaration is sufficient without showing all the limitations of each claim it
is being used to support, “antedating affidavits must contain facts showing a
completion of ‘the invention’ commensurate with the extent the invention is
shown in the reference, whether or not it be a showing of the identical
disclosure of the reference.” In re Clarke, 356 F.2d 987, 992 (C.C.P.A.
1966). Furthermore, “for the purpose of antedating [a reference] under Rule
131, it is sufficient that appellant has shown a reduction to practice of his
basic invention, which showing will also suffice as to claims differing
therefrom only in details which are obvious one of ordinary skill in the art.”
In re Spiller, 500 F.2d 1170, 1178 (CCPA 1974).
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Appellants do not argue or show that the DOI range recited in claims
69-72 is obvious over the multilayer film or sheet recited in their claim 1.6
Absent a showing that the additional limitations of claims 69-72 are obvious
over the reduction to practice provided in the Rule 131 Declarations, the
Declarations are insufficient to antedate Smith for claims 69-72.
Turning to the teachings of Smith, Appellants argue that Smith
teaches only pigment additives and so cannot anticipate the film or sheet
recited in claims 70-72 because they require a “clear” layer. Claims 70-72
ultimately depend on claim 6, which, in turn, depends from claim 1 and
requires: “wherein said first co-extruded polymeric layer is clear and said
second co-extruded polymeric layer comprises the polymer and an additive
selected from pigment, dye, flake, or mixtures thereof.” (App. Br. 7-8; see
App. Br. 20-21, Claims App’x (emphasis added)). Appellants do not point
to, and we do not find, a definition of the term “clear” in the specification.
Because claim 1, from which claim 6 depends includes pigments in the list
of additives that can be added to the layers of the claimed multilayer film or
sheet, we are not persuaded that a layer including pigment cannot also be a
“clear” layer (that is, not opaque) within the scope of Appellants’ claims 70-
72. Thus, the Examiner did not err in rejecting claims 70-72 because Smith
does not teach a clear layer as claimed.
Appellants also argue that Smith teaches a multilayer sheet with a
DOI of at least 60 units (FF 9; Smith Col. 19, ll. 58-64), but does not specify
a DOI of “at least 80” as claimed. (App. Br. 8-9). Ranges taught in the prior

6 If Appellants were to show that the additional limitations were obvious
over those recited in claim 1, then it would follow that claims 69-72 also
would have been obvious over Flieger.
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art that are broader than and fully encompass a claimed range have been
found insufficient to anticipate the claimed range. See Atofina v. Great
Lakes Chem. Corp, 441 F.3d 991, 999 (Fed. Cir. 2006). We are not
persuaded that those of skill in the art would consider the broader range of at
least 60 to have sufficient specificity to anticipate the narrower range
claimed. Thus, Smith does not anticipate the multilayer films or sheets
recited in claims 69-72.
Though Smith does not anticipate the range of DOI claimed, Smith
presents a prima facie case for the obviousness of the claimed range because
the range in Smith overlaps the claimed range. In re Geisler, 116 F.3d 1465,
1469-71 (Fed. Cir. 1997) (holding that a reference teaching a thickness of
not less than about 100 Angstroms renders obvious a claimed range of 50 to
100 Angstroms). Accordingly, we enter a new grounds of rejection for
claims 69-72 under 35 U.S.C. § 103(a) over Smith.
In addition, under this new grounds of rejection, even if layers of the
films produced by co-extrusion in Smith are not inherently “matched,” as the
Examiner finds (see Ans. 4 and 10), those of skill in the art would have had
reason to match them to more easily form the layered sheet. Thus, this
limitation of claims 71 and 72 would have been obvious over Smith.

V. ORDER
Upon consideration of the record and for the reasons given,
the rejection of claims 1, 3, 6, 43, 54, 55, 57-60, 66-68, 83, and 84
under 35 U.S.C. § 103(a) over Flieger is AFFIRMED; and
the rejection of claims 69-72 under 35 U.S.C. § 102(e) over Smith is
REVERSED.
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We decline to reach a decision in the rejection of claims 1, 3, 6, 43,
54, 55, 57-60, 66-68, 83, and 84 under 35 U.S.C. § 103(a) over JP ‘828.
A new grounds of rejection is entered holding claims 69-72 under 35
U.S.C. § 103(a) over Smith.
Within two (2) months from the date of our decision appellant may
further prosecute the application on appeal by exercise one of the two
following options:
1. Request that prosecution be reopened by submitting an amendment
or evidence or both. 37 CFR § 41.50(b)(1) (2008).
2. Request rehearing on the record presently before the Board.
37 CFR § 41.50(b)(2) (2008).
FURTHER ORDERED that 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) (2008).
AFFIRMED-IN-PART;
NEW GROUND OF REJECTION; 37 C.F.R. § 41.50(D)

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