Ex Parte Wang

Board of Patent Appeals and Interferences

Sep 26, 2007

10371754 (B.P.A.I. Sep. 26, 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is not binding precedent of the Board.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 HUA WANG
____________

Appeal 2007-4147
Application 10/371,754
Technology Center 1700
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Decided: September 26, 2007
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Before CHARLES F. WARREN, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-14 and 18-26. 1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative:

1 The Examiner has indicated that the subject matter of claims 16 and 17 has
been allowed. (Answer 6).
Appeal 2007-4147
Application 10/371,754

1. A multilayer article comprising (i) a coating layer comprising a
block copolyestercarbonate comprising structural units derived from a
1,3- dihydroxybenzene and an aromatic dicarboxylic acid, (ii) a second
layer comprising a polymer comprising carbonate structural units, (iii) an
adhesive layer comprising an aliphatic thermoplastic polyurethane film
and (iv) a substrate layer, wherein the coating layer is in contiguous
contact with the second layer, and the adhesive layer is in contiguous
contact with the second layer and the substrate layer.

The Examiner relies upon the following references:
Brunelle US 6,306,507 B1 Oct. 23, 2001
Sieloff US 5,103,336 Apr. 7, 1992

The Examiner made the following rejections:
Claims 1-14, and 18-26 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Brunelle and Sieloff. 2
Claims 1-14, and 18-26 stand provisionally rejected under the
judicially created doctrine of obviousness-type double patenting as
unpatentable over claims 22, 28-44, 53, 58, 59, and 63-72 of U.S. Patent
Application No. 10/210,746.3
The 35 U.S.C. § 103 Rejection
Based on the contentions of the Examiner and the Appellant, the issue
before us is: Has the Examiner made accurate and sufficient factual findings
such that it is reasonable to conclude that one of ordinary skill in the art

2 Appellant has argued the patentability of the claimed invention together.
We will limit our discussion to claim 1.
3 The Examiner and the Appellant has indicated that the rejection is over
claims 22, 28-40-44, 53, 58-59, 63-72 of Application No. 10/210,746. We
interpret this to include the claims 22, 28-44, 58, 59, and 63-72 of
Application No. 10/210,746.
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Appeal 2007-4147
Application 10/371,754

would have been motivated to utilize a blend of ethylene-bis stearamide wax
and calcium stearate in the weight ratio of ethylene-bis stearamide wax to
calcium stearate wax is from about 20:80 to about 80:20 within the meaning
of 35 U.S.C. § 103? We answer this question in the affirmative.
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. 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 would have
been 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, 1336-337 (Fed. Cir. 2006)). See DyStar Textilfarben GmbH
& Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361, 80
USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need not be found in
the references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ
545, 549 (CCPA 1969)(“Having established that this knowledge was in the
art, the examiner could then properly rely, as put forth by the solicitor, on a
conclusion of obviousness ‘from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion
in a particular reference.’”); In re Hoeschele, 406 F.2d 1403, 1406-407, 160
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Appeal 2007-4147
Application 10/371,754

USPQ 809, 811-12 (CCPA 1969) (“[I]t is proper to take into account not
only specific teachings of the references but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom . . .”). 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 relevant field to combine the elements” in the manner claimed.
KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1396.
Appellant’s principal argument is that
obviousness is not based upon what an artisan could do or what an
artisan may try, but is based upon what an artisan would be
motivated to do with an expectation of success. In other words,
merely because Sieloff has used polyurethane resin in an adhesive
layer to bond polycarbonate to polyethylene-terephthalate is not a
teaching or motivation to use a polyurethane resin to bond a
polycarbonate to a layer comprising a block copolyestercarbonate.
There is not [sic. no] motivation or expectation that the adhesive
layer will bond these different layers. (Br. 6).

We do not find Appellant’s argument persuasive. Brunelle differs
from the claimed invention because the reference does not teach the type of
adhesive used in the adhesive layer. Sieloff teaches a multilayer structure
having a polyurethane resin adhesive layer made from polyester or polyether
polyols and polyisocyanates such as methylenebis (phenyl isocyanate) (see
col. 3, ll. 7-45). The materials of the layers joined by the adhesive of Sieloff
are similar to the materials that form the layers of Brunelle. For example,
Sieloff discloses the adhesive layer bonds a polycarbonate layer to the light
valve layer composed of polyethylene-terephthalate (see col. 2, ll. 4-28).
Therefore, one of ordinary skill in the art would have reasonably expected
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Appeal 2007-4147
Application 10/371,754

that the polyurethane adhesive of Sieloff would have been suitable for use as
the adhesive layer in the multilayer article Brunelle.
We note that Appellant has not relied upon evidence of unexpected
results in response to the Examiner’s obviousness rejections. In conclusion,
based on the foregoing and the reasons well stated by the Examiner, the
Examiner’s decision rejecting the appealed claims 1-14, and 18-26 is
affirmed.

The Double Patenting Rejection
Claims 1-14, and 18-26 stand provisionally rejected under the
judicially created doctrine of obviousness-type double patenting as
unpatentable over claims 22, 28-44, 53, 58, 59, and 63-72 of U.S. Patent
Application No. 10/210,746. We summarily affirm the ground of rejection
under the judicially created doctrine of obviousness-type-double patenting
advanced by the Examiner because Appellant has not addressed this ground
in the Brief (Br. in entirety). See Manual of Patent Examining Procedure §
1205.02 (8th ed., Rev. 5, August 2006). We affirm.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(i)(iv).
AFFIRMED

tc/ls

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