Lora Lee. Spangler et al.Download PDFPatent Trials and Appeals BoardDec 2, 201913069121 - (D) (P.T.A.B. Dec. 2, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 13/069,121 03/22/2011 Lora Lee Spangler 85558US02 9527 66024 7590 12/02/2019 EASTMAN CHEMICAL COMPANY 200 SOUTH WILCOX DRIVE KINGSPORT, TN 37660-5147 EXAMINER GUO, TONG ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 12/02/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): jlmcglothlin@eastman.com rlwhite@eastman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LORA LEE SPANGLER, VINCENT YACOVONE, ARISTOTELIS KARAGLANNIS, GARY MATIS, PRATAPKUMAR NAGARAJAN, ANDREW NEIL SMITH, WITOLD SZYDLOWSKI, RICHARD F. URBAN, and WENLAI FENG Appeal 2018-005162 Application 13/069,121 Technology Center 1700 ____________ Before WESLEY B. DERRICK, JEFFREY R. SNAY, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the Examiner’s decision to reject claims 1, 2, 4–8, 20, 24, 25, and 27. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Eastman Chemical Company. Appeal Br. 3. Appeal 2018-005162 Application 13/069,121 2 CLAIMED SUBJECT MATTER The present application generally relates to polymer interlayers for multiple layer glass panels. Specification filed March 22, 2011 (“Spec.”) ¶ 2. Polymer interlayers are used in applications such as architectural windows and in the windows of motor vehicles and airplanes. Id. ¶ 3. Known problems in the assembly of multiple layer glass panels with polymer interlayers include the presence of gas pockets and bubbles after manufacturing. Id. ¶¶ 4, 7. Another known problem is “blocking” – the tendency of polymer interlayers to stick to each other. Id. ¶ 4. Blocking may make it difficult to separate the interlayer sheets into individual pieces without deforming or stretching the sheet. Id. It is known in the art to emboss a polymer interlayer on one or both sides in order to facilitate de- airing and to prevent blocking. Id. ¶ 8. In prior embossing processes, the polymer interlayer sheet is cooled prior to embossing in order to prevent it from sticking to the embossing rollers. Id. ¶ 9. The polymer interlayer is subject to several cooling steps prior to embossing. Id. These additional steps may increase the cost and space necessary to emboss the polymer interlayer. Id. The Specification teaches that, conventionally, if both sides were to be embossed, the embossing was performed in separate successive steps. Id. ¶ 11; see also id., Figure 2. The Specification teaches, in contrast to conventional processes, a process where the polymer interlayer sheet is embossed in a step after leaving the extruder die at an elevated temperature (it is embossed while Appeal 2018-005162 Application 13/069,121 3 it is still a melt). No cooling step is required or utilized to lower the temperature between the steps of extrusion from the extrusion die and embossing. Rather, the polymer melt sheet (as opposed to the cooled and set polymer interlayer sheet) is embossed in a single embossing stage in which the polymer melt sheet is fed from the extrusion die into a single set of two embossing rollers (which in some embodiments are made of steel) directly out of the extrusion die, and both sides of the polymer melt sheet are simultaneously embossed. Spec. ¶ 51. The Specification teaches that the described process will produce a polymer interlayer sheet with higher embossed surface retention, higher permanence values, improved roll blocking, and reduced mottle. Id. ¶ 65. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. An embossed polymer interlayer sheet comprising poly(vinyl acetal), the embossed polymer interlayer sheet comprising: a first side; a second side opposing the first side; and an embossed surface on both sides, wherein the embossed polymer interlayer sheet has a surface roughness RZ of 10 to 90 microns on the embossed surface, wherein the embossed polymer interlayer sheet has a permanence of greater than 95% when tested at 100°C for five minutes, and wherein the embossed polymer interlayer sheet has an embossed surface retention of greater than 70% when tested at 140°C for five minutes. Appeal Br. 22 (Claims App’x). Appeal 2018-005162 Application 13/069,121 4 REFERENCES The Examiner relies upon the following prior art: Name Reference Date Hahn US 2,817,618 Dec. 24, 1957 Hopfe US 6,093,471 July 25, 2000 REJECTION The Examiner maintains the following rejection: Claims 1, 2, 4–8, 20, 24, 25, and 272 are rejected under 35 U.S.C. § 103(a) (pre-AIA) as unpatentable over Hopfe in view of Hahn. Final Action dated May 24, 2017 (“Final Act.”) 2–8. DISCUSSION The Examiner rejects claims 1, 2, 4–8, 20, 24, 25, and 27 as obvious over Hopfe in view of Hahn. Id. The Examiner finds that Hopfe teaches a multilayer polymer interlayer sheet comprising vinyl acetal that is embossed on both sides and has the claimed surface roughness. Id. at 2–3. Hopfe teaches an exemplary process as follows: Thirty mil (0.76 mm) thick PVB sheet . . . is fed at 55° F. (13° C.) at 20 fpm (6.1 meters per min.) to an embossing station as shown in FIG.1 of the ʼ103 patent. The station comprises a metal embossing roll rotatably engaging a cooperating rubber- faced backup roll and forming a nip between the two through which the sheet is passed to form, by displacing the plastic of the sheet, a pattern in the sheet surface which is the complementarily shaped negative of a pattern in the peripheral surface of the embossing roll. . . . Embossing roll surface temperature is 2 Claims 3, 23, and 26 were withdrawn by amendment dated March 14, 2017. Appeal 2018-005162 Application 13/069,121 5 regulated at 500° F. (260° C.) by circulating an appropriate heating medium beneath its surface. A conventional vacuum roll downstream of the embossing nip pulls the embossed sheet off the embossing roll surface. With one side embossed as just described, the sheet is then passed through the nip again with the unembossed side against the embossing roll in the manner generally described in the '103 patent. Hopfe 6:38–66. The Examiner finds that the secondary reference, Hahn, discloses a process wherein a molten thermoplastic sheet is embossed by direct embossing prior to being bonded to a metal laminate. Final Act. 3. The Examiner finds that Hahn “discloses the thermoplastic sheet is embossed at a temperature from 300F to about 400F, then is cooled after the embossing.” Id. at 3–4. An excerpt of the single figure of Han is reproduced below. Hahn, unnumbered figure (excerpted). Hahn teaches that “[p]referably, the thermoplastic resin sheet is substantially uniformly heated to a temperature of about 330° F. to about 380° F. but lower than the decomposition point of the resin, and physically surface finished before the temperature thereof has fallen below about 300° F.” Id. at 3:17–22. Hahn further teaches that “[i]t will be appreciated that the embossing or other surface finishing step is Appeal 2018-005162 Application 13/069,121 6 carried out at a temperature such that the material is characterized by sufficient viscosity to retain the embossed pattern.” Id. at 3:25–29. Hahn further teaches that “[a]ll of the various thermoplastic resins may be employed in the practice of this invention.” Id. at 4:3–4. The Examiner determines that one of skill in the art would have had reason to “modify the process to manufacture the interlayer of Hopfe by the method taught by Hahn such that the molten interlayer would be embossed under the process of direct embossing right after extruding die, and the embossed film is cooled after embossing step.” Final Act. 4. The Examiner further determines that such process will yield “a more uniform, sharply definitive, highly wear resistant embossed surface that can be preserved to the optimum degree and will not fade or distort.” Id. The Examiner additionally determines that an interlayer sheet made in keeping with the hypothetical combination “would have the interlayer structure that permanence of greater than 95% when tested at 100C for five minutes and property of ‘where the embossed polymer interlayer sheet has an embossed surface retention of greater than 70% when tested at 140C for five minutes.’” Id. Appellant argues that the rejection is in error on several bases. Appeal Br. 10–21. First, Appellant argues that the Examiner’s hypothetical combination would not have had the claimed combination of embossed surface retention and permanence. Id. at 11–14, 18; see id. at 13 (“neither the sheet of Hopfe nor the sheet of Hahn, alone or in combination, have the claimed properties.”). Appellant states “the Examiner seems to be assuming that the process is being claimed and then arguing that the combination of Appeal 2018-005162 Application 13/069,121 7 references discloses the process, and as a result, the product. Appellants respectfully disagree.” This does not show error in the Examiner’s determination. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. See In re Ludtke, supra. Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (emphasis added); see also In re Gately, 69 Fed. Appx. 993, 995–996 (Fed. Cir. 2003). Here, the Examiner has determined that one of ordinary skill in the art would have had reason to subject the composition of Hopfe to the process of Hahn and has further determined that the product produced by such process would have the claimed properties. Final Act. 4. Appellant has not shown substantive error in such determination, or that the Examiner reversibly errs in relying on such reasoning. Appellant further argues that Hahn does not teach embossed surface retention as claimed. Appeal Br. 14–15. Appellant argues that Hahn states that where “the thermoplastic sheet and the sheet metal laminate are laminated together, if the temperature of the preheated metal sheet ‘is not substantially lower than the temperature at which the thermoplastic resin lamina[t]e was surface finished, the surface finished pattern in the Appeal 2018-005162 Application 13/069,121 8 thermoplastic sheet may fade in the laminating step.’” Id. (citing Hahn 3:73–4:2). In the Answer, the Examiner determines that the foregoing provision describes “an unsatisfying manufacturing condition” and that the passage considered as a whole indicates that “a successful product is desired to have a pattern that is not fading.” Answer 19. Accordingly, Hahn does not teach that the described fading is desirable. The Examiner further finds that the references are cited only as teaching the polymer sheet which is formed prior to lamination to the metal sheet of Hahn. Id. We find the foregoing persuasive and determine that Appellant has not shown error in this regard. Appellant further argues that the cited references fail to teach the process steps of claim 8. Appeal Br. 14. Claim 8 is a product-by-process claim. Id. at 23–24 (Claims App.). “[W]hen considering the patentability of product claims that contain process limitations, claim scope is generally based on the product itself, not the process. If the process limitation connotes specific structure and may be considered a structural limitation, however, that structure should be considered.” In re Nordt Dev. Co., LLC, 881 F.3d 1371, 1374 (Fed. Cir. 2018) (internal citations omitted). Here, Appellant has not argued that the claimed process steps connote specific structure. As a result, patentability is evaluated “based on the product itself.” Accordingly, Appellant has not shown error with regard to the claimed process steps of claim 8. Appellant further argues that the cited references do not teach the “multiple polymer layers” of claim 20. Appeal Br. 14, 17, 18. The Examiner finds that Figure 5 of Hopfe discloses an embossed multilayer polymer sheet. The Examiner determines that Figure 5 therefore “teaches Appeal 2018-005162 Application 13/069,121 9 stacking the sheet and also inserting it between sheets of safety glass.” Answer 15–16. Figure 5 of Hopfe is reproduced below. Figure 5 depicts two PVB sheets stacked on top of one another. Hopfe teaches that “[w]hen sections of inherently sticky plasticized PVB sheet 10 having angularly arranged ridges 12 of the regular surface pattern described above and the flattened V-shaped peak configuration illustrated in FIGS. 1 and 2 are stacked on top of each other as illustrated with two sheets in FIGS. 5 and 6, stack sticking is reduced.” Hopfe 3:55–60. Hopfe further teaches that due to the effect of the ridges 12 “the force to peelably separate the top sheet 10 in the stack from the next lower sheet is less than about 80 gms. per cm. of sheet length, preferably less than 40 gms./cm.” Id. at 3:62–65. Appellant argues that the Examiner cites to a “description of the stack sticking test and has erroneously equated this to an embossed multilayer interlayer sheet when it is instead just a stack of polymer sheets that have been stacked together in order to test a certain property (i.e., stack sticking).” Appeal Br. 14. Appellant is correct that the cited portions and figure of Appeal 2018-005162 Application 13/069,121 10 Hopfe relate to mitigation of stack sticking (referred to as “blocking” in the Specification, see, e.g., Spec. ¶ 46). This, however, does not show error in the rejection. Appellant seems to argue that the two stacked layers of Hopfe are not “an embossed multilayer interlayer sheet,” but does not point out any element of the body of the claim not taught by Hopfe. Giving claim 20 its broadest reasonable interpretation, such claim has not been shown to exclude the structure of Figure 5 of Hopfe. Appellant further argues that Hahn does not “disclose or recognize the need to emboss both sides of the sheet.” Appeal Br. 15. The Examiner, however, relies on Hopfe rather than Hahn as teaching “an embossed surface on both sides.” Final Act. 3. The Examiner further determines that “[i]t would have been obvious for [a] person to modify the method of Hopfe to incorporate what is taught by Hahn which is direct embossing, not changing from double side embossing of Hopfe to single side embossing taught by Hahn.” Answer 19. Appellant has not shown error in such determination. Appellant additionally argues that the Examiner has not shown an adequate basis to modify Hopfe with the teachings of Hahn and the rejection is predicated upon hindsight. Appeal Br. 15–16. Appellant asserts that “[n]either Hopfe nor Hahn presented a problem that required making the proposed combination or substitution.” Id. at 16. Appellant further asserts that “Hahn is directed to a different problem altogether (that is, Hahn is directed to making PVC resin-metal laminates that have good bonding and providing a good surface finish).” Id. The problem to which Han is directed does not control the instant analysis. The Supreme Court has offered guidance in this regard as follows: Appeal 2018-005162 Application 13/069,121 11 In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls . . . . The first error of the Court of Appeals in this case was . . . holding that courts and patent examiners should look only to the problem the patentee was trying to solve. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20 (2007). Further, “the best defense against hindsight-based obviousness analysis is the rigorous application of the requirement for a showing of a teaching or motivation to combine the prior art references.” Ecolochem, Inc. v. S. California Edison Co., 227 F.3d 1361, 1371 (Fed. Cir. 2000). Appellant has not shown error in the Examiner’s stated reason to combine to prevail on this basis. Appellant further argues that Hahn lacks “disclosure to lead one to select PVB when reading the entire disclosure of Hahn for what it fairly teaches.” Appeal Br. 17. In response, the Examiner determines that “Hahn discloses various thermoplastic resin[s] maybe employed in the practice of the invention including vinyl acetate (PVA), vinyl butyral and etc. Even if PVC is used as (preferred) sample, other thermoplastic film such as PVA still would be applicable in Hahn.” Answer 23. Hahn teaches “[a]ll of the various thermoplastic resins may be employed in the practice of this invention. Specifically, materials including the various polymers or copolymers of vinyl acetate, vinyl chloride, vinylidene chloride, vinyl butyral . . . and the like materials can be employed. Polyvinyl chloride is the preferred homopolymer.” Hahn 4:3– 11. We consider Hahn for all that it teaches, not just its preferred embodiments. See In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“all Appeal 2018-005162 Application 13/069,121 12 disclosure of the prior art, including unpreferred embodiments, must be considered”). Hahn teaches that polyvinyl butyral, as well as other thermoplastic resins, “may be employed in the practice of this invention.” Accordingly, Appellant has not shown error on this basis. Appellant additionally argues that Hopfe teaches to emboss the interlayer in separate steps. Appeal Br. 17. As a consequence, one may not infer that the embossed surface that would have been produced by the Examiner’s hypothetical process has the same properties as the surface of the claimed interlayer sheet which is taught to be embossed on both sides in a single step. In the Answer, the Examiner determines that one of skill in the art would have used the direct embossing process of Hahn on both sides of the interlayer. Answer 19–20. Further, none of the claims explicitly require the recited properties (surface roughness, permanence, and surface retention) on both sides of the interlayer. Independent claims 1 and 20 require that the interlayer sheet “has” such properties. Independent claim 8 requires an interlayer sheet “with” the claimed properties. Giving the claims their broadest reasonable interpretation, we cannot construe the claims to require that the claimed properties be exhibited on both sides of the interlayer sheet. Appellant further argues that a person of ordinary skill in the art would not have had reason to combine the teachings of Hahn and Hopfe. Appeal Br. 18–19. Appellant cites to the Examiner’s determination that Hahn provides a reason to use its process where it teaches to “produce an embossed thermoplastic sheet which has a uniform, sharply definitive, highly wear resistant, physical surface finishes, wherein the physical surface finishes or the embossed surface can be preserved to the optimum degree Appeal 2018-005162 Application 13/069,121 13 and will not fade or distort.” Id. at 18 (citing Final Act. 13). Appellant argues that such determination is in error because “Hahn is not concerned with properties like stack sticking or having a specific surface pattern and surface roughness (as in Hopfe), surface retention, or mottle.” Id. This is not indicative of error in the stated reason to combine. As above, neither the particular motivation of the patent applicant nor the problem addressed by the prior art determines whether there is a reason to combine the teachings of the prior art. A “motivation to combine may be found explicitly or implicitly in . . . the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013). Here, the Examiner determines that one of skill in the art would find it desirable to have the properties taught by Hahn in an interlayer sheet. Accordingly, Appellant has not shown error in this regard. Appellant argues that the rejections of dependent claims 2, 4–7, 24, 25, and 27 should be reversed in view of the arguments described above. Appeal Br. 20–21. As we have not found such arguments to be persuasive, we determine that Appellant has not shown error in the rejection of these claims. Appellant further includes brief, unsupported statements that claims 2, 5, 6, and 7 include additional elements not taught by the cited prior art. Id. at 21. These statements are insufficient to present an issue for review. See 37 CFR § 41.37(c)(1)(iv) (“the brief shall contain . . . . The arguments of appellant with respect to each ground of rejection, and the basis therefor, with citations of the statutes, regulations, authorities, and parts of the Record Appeal 2018-005162 Application 13/069,121 14 relied on. The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant.”). CONCLUSION The Examiner’s rejection of claims 1, 2, 4–8, 20, 24, 25, and 27 as obvious over Hopfe in view of Hahn is affirmed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–8, 20, 24, 25, 27 103(a) Hopfe, Hahn 1, 2, 4–8, 20, 24, 25, 27 Overall Outcome 1, 2, 4–8, 20, 24, 25, 27 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation