Ex Parte Wilde et alDownload PDFBoard of Patent Appeals and InterferencesAug 29, 201111194498 (B.P.A.I. Aug. 29, 2011) Copy Citation 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. App App achie figur omit direc addi resul comb teach that col. side bridg The poly (id. a 11 W fire-r refer eal 2010-0 lication 11 In partic ving fire- es] “as an ted). Kow tion than t tives into t t, in Wilde ination, a ings of K the photog 5, ll. 60-67 of the first ing 8-9, la Kowalsk {K laminate s vinylfluori t ll. 63-64 ilde specu etardant f ences may 04437 /194,498 ular, Wild retardancy entirely se alski’s me he method he emboss ’s view, K nd there w elley with raph or pr ) is, or sug film layer st sentenc i Figure 3 owalski F hown in F de 21 (Ko ), a foil/po lates that, eature, “th have mad e argues th via the us parate lay thod, Wild suggested ing resin l owalski in ould have those of K int inner la gests, an ” as requi e; emphas is reprodu igure 3 sh igure 3 com walski col lyvinylflu if Kowalsk e Examine e more se 5 at Kowals e of a laye er of mate e argues, by Kelle ayer. (Id. effect tea been no m owalski.11 mination ink layer th red by clai is omitted ced below ows a fire prises a p . 5, ll. 65-6 oride lami i did not t r’s conclu nse.” (Id.) ki teaches r of alumi rial.” (Id. is in a com y of introd at para. br ches away otivation (Id.) Mo layer 22 in at “is app ms 13 and .) : retardant l rotective 7), a phot nate 15/14 each a sep sion to com a method num foil [ at 8, emph pletely di ucing fire idging 12- from the to combin reover, W Figure 3 lied direct 23. (Br. p aminate} clear outer ograph or (id. at ll. arate layer bine thes of 15, in the asis fferent -retardant 13.) As a e the ilde denie (Kowalski ly to one ara. layer of print 22 26-27; as the e two s , 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. Copy with citationCopy as parenthetical citation