Ex Parte Wilde et al

Board of Patent Appeals and Interferences

Aug 29, 2011

11194498 (B.P.A.I. Aug. 29, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/194,498 08/01/2005 J. Christopher Wilde 7784-000845 8946
65961 7590 08/30/2011
HARNESS DICKEY & PIERCE, PLC
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
HIGGINS, GERARD T
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
08/30/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte J. CHRISTOPHER WILDE,
Brian J. Wimer, and Kris E. Langkow
________________

Appeal 2010-004437
Application 11/194,498
Technology Center 1700
________________

Before BEVELY A. FRANKLIN, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004437
Application 11/194,498

2
A. Introduction1
J. Christopher Wilde, Brian J. Wimer, and Kris E. Langkow (“Wilde”)
timely appeal under 35 U.S.C. § 134(a) from the final rejection2 of
claims 13-20, 22, and 23, which are all of the pending claims. We have
jurisdiction over the appealed rejections. 35 U.S.C. § 6(b). We REVERSE.
The subject matter on appeal relates to methods of making decorative,
fireworthy laminates that may be applied, for example, to the interior
surfaces in the passenger compartments of aircraft. The laminates have two
components. The first component is a film layer having an ink layer
disposed directly on one side of the film layer. The second component is a
second film layer having an embossing resin layer on one side, and the other
side of the second film layer can be directly coupled to the surface to be
covered. The process comprises contacting the embossing resin layer of the
second film layer directly to the ink layer of the first film layer and
consolidating the resulting laminate structure.

1 Application 11/194,498, Method and Apparatus for Forming a Fireworthy
Laminate, filed 1 August 2005, claiming the benefit of two provisional
applications, both filed 8 June 2005. The specification is referred to as
the “498 Specification,” and is cited as “Spec.” The real party in interest is
listed as The Boeing Company. (Resubmitted Appeal Brief,
filed 15 October 2009 (“Br.”), 2.)
2 Office action mailed 27 January 2009 (“Final Rejection”; cited as “FR”).
Appeal 2010-004437
Application 11/194,498

3
Representative Claim 13 reads:
13. A method of manufacturing a decorative laminate for
improving the fire worthiness of a structure on a mobile
platform, the method comprising:
providing a first laminate component including a first
film layer with an ink layer disposed directly on one side
thereof;
providing a second laminate component including a
second film layer with an embossing resin layer disposed
on one side thereof,
the embossing resin layer including embossing
resin that is fire retardant; and
consolidating the laminate components with the
embossing resin layer directly contacting the ink layer
and the second film layer so that the second film layer is
directly coupled to the structure.
(Amendment filed 17 December 20083; emphasis added.)
The Examiner maintains the following grounds of rejection:4
A. Claims 13-20 stand rejected under 35 U.S.C. §112(2).
B. Claims 13, 14, 16, 22, and 23 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Kowalski5 and Kelley.6
C. Claim 15 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Kowalski, Kelley, and Levenda.7

3 Claim 13 as reproduced in the Claims Appendix to the Brief, is inaccurate
for the reasons given infra at 4.
4 Examiner’s Answer mailed 5 November 2009 (“Ans.”).
5 Joseph C. Kowalski et al., Flexible, Fire-Resistant, Decorative Laminates
and Methods of Manufacture Thereof, U.S. Patent 4,693,926 (1987).
6 Ronald J. Kelley, Adhesive Compositions and Methods and Articles of
Manufacture Comprising Same, U.S. Patent 5,942,330 (1999).
Appeal 2010-004437
Application 11/194,498

4
D. Claims 18-20 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Kowalski, Kelley, and Wiley.8
E. Claim 17 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Kowalski, Kelley, and Ellison.9
B. The Arguments and Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we observe that Wilde has not appealed the rejection under
35 U.S.C. § 112(2). Rather, Wilde filed an amendment of claim 13 with the
Brief on Appeal filed 29 June 2009, changing the word “is” in the next-to-
last line, supra, to —may be—, as suggested by the Examiner (FR 2.) The
Examiner, however, refused to enter the amendment.10 Wilde has not
petitioned the decision of the Examiner. We have no jurisdiction over
procedural aspects of the Examination. Thus, as the Examiner noted
(Ans. 3), the rejection for indefiniteness is not before us.
With respect to the rejections over prior art, Wilde offers substantive
arguments only against the Examiner’s reliance on Kowalski and Kelley.
(Br. 7-10; 11-13.) The remainder of Wilde’s arguments (id. at 10-11) are
essentially cumulative. Accordingly, all claims stand or fall with claim 13.

7 John L. Levenda, U.S. Patent Application Publication 2002/0182957 A1
(5 December 2002).
8 John W. Wiley et al., U.S. Patent 4,409,280 (1983).
9 Thomas M. Ellison, U.S. Patent 5,536,539 (1996).
10 Advisory Action mailed 17 August 2009; Ans. 2, citing
37 C.F.R. §41.33(b), which limits conditions under which an amendment
may be filed on or after the date on which the Brief is filed.
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Appeal 2010-004437
Application 11/194,498

6
col. 4, ll. 14-68), and an adhesive layer 12, covered by a release base
lamination 11 (id. at col. 4, ll. 38-40).
The Examiner maintains that it would have been obvious to substitute
one method of making a lamination fire resistant for another. (Ans. 6-7.)
Moreover, according to the Examiner, it would have been obvious to remove
the foil layer 15, once the embossing layer containing fire retardant
chemicals taught by Kelley was used. (Id. at 7.) As for the requirement that
the embossing resin be in direct contact with the ink layer, “[t]he Examiner
takes the position that a photograph, print, or the like would necessarily
contain inks, and therefore the embossing resin film 16 is in direct contact
with the ink layer 22.” (Id. at 5, referring to Kowalski Figure 3.)
C. Discussion
Notwithstanding the generally open language used in claim 13
(“comprising,” “including”), the laminate components are subject to rather
limiting constraints by the recited relations between the components. Thus,
the ink layer must be disposed directly on one side of the first film layer that
comprises the first laminate component. Moreover, the embossing resin
layer of the second laminate component must contact the ink layer directly,
and the other side of the second film layer must be directly coupled to the
mobile platform structure. As a result, as the Examiner realized, the foil
layer taught by Kowalski is excluded by the appealed claims.
The foil layer, however, is an integral part of the invention described
by Kowalski, which is designed to meet or exceed the standards of Federal
Aviation Administration Regulation FAR 25. (Kowalski col. 3, ll. 3-30;
Appeal 2010-004437
Application 11/194,498

7
39-54; col. 1, ll. 30-37 describes one such regulation.) The quantum of
evidence necessary to establish the equivalence of one structure to another
feature increases with the number and magnitudes of differences between
the structures and compositions of the features. In the present case, the
Examiner has not directed our attention to credible evidence in the record
that the fire retardant additives described by Kelley would have been
recognized as providing a fire retardant laminate having the characteristics
required by Kowalski, which go well beyond generic fire retardancy.
Moreover, the Examiner’s argument that a photograph or print would
necessarily contain inks is both unsubstantiated and demonstrably false. We
presume the Examiner meant that an image comprising inks would have
been obvious in view of the teaching of a photograph or print. The difficulty
is that even if a photograph or a print comprising Kowalski’s inner
lamination layer 22 did contain ink on its front surface,12 that ink would not
be in contact with both the first film layer of the first laminate component
and with the embossing resin layer of the second laminate composite. On
the other hand, if the front surface of the photograph or print were in contact
with the embossing resin layer, it would be oriented away from the observer,
and would face the underlying substrate. Thus, this argument also fails to
support the Examiner’s conclusion of obviousness.13

12 We presume the Examiner meant to say that it would have been obvious to
provide a photograph or print having ink on the surface.
13 One might speculate that the Examiner meant to say that it would have
been obvious to provide an inked image directly on the polyvinylfluoride
outer layer 21, rather than providing the image on a separate laminate
layer 22. Conclusions of obviousness must, however, be supported by
Appeal 2010-004437
Application 11/194,498

8
The Examiner has relied on the remaining references as evidence of
the obviousness of additional features recited in the dependent claims, and
has not cured the deficiencies of Kowalski and Kelley. We therefore
conclude that the rejections over the prior art must be reversed.
C. Order
We REVERSE the rejection of claims 13, 14, 16, 22, and 23 under
35 U.S.C. § 103(a) in view of the combined teachings of Kowalski and
Kelley.
We REVERSE the rejection of claim 15 under 35 U.S.C. § 103(a) in
view of the combined teachings of Kowalski, Kelley, and Levenda.
We REVERSE the rejection of claims 18-20 under 35 U.S.C. § 103(a)
in view of the combined teachings of Kowalski, Kelley, and Wiley.
We REVERSE the rejection of claim 17 under 35 U.S.C. § 103(a) in
view of the combined teachings of Kowalski, Kelley, and Ellison.
REVERSED
bar

evidence of record, and the Examiner has not directed our attention to such
evidence. If the Examiner intended to take “Official Notice” of supporting
facts, it became incumbent on the Examiner to come forward with
supporting evidence when the Notice was challenged, as here. In any event,
we decline to seek out evidence and make arguments for either the Examiner
or Appellants, as our primary function is review, not examination de novo.