SABIC GLOBAL TECHNOLOGIES B.V.

Patent Trials and Appeals Board

May 1, 2020

15111234 - (D) (P.T.A.B. May. 1, 2020)

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.
15/111,234 07/13/2016 Wei Feng 12PLAS0157-US-PCT 7103
140646 7590 05/01/2020
Cantor Colburn - SABIC General
20 Church Street
22nd Floor
Hartford, CT 06103-3207
EXAMINER
SHOSHO, CALLIE E
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
USPTOPatentMail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WEI FENG and GEERT BOVEN

Appeal 2019-006329
Application 15/111,234
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 9, and 11–21. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 SABIC
GLOBAL TECHNOLOGIES B.V. Appeal Br. 2.
Appeal 2019-006329
Application 15/111,234

2
STATEMENT OF THE CASE
The appealed invention is directed to a multilayer sheet, wherein the
substrate comprises a hard coating on a first surface (cap layer) and flexible
coating on the second surface (core layer). Claim 2 illustrates the subject
matter on appeal and is reproduced below:
2. A multilayer sheet, comprising:
a substrate comprising
a cap layer comprising a polymeric material; and
a core layer, wherein when joined, the cap layer
forms a first surface of the substrate and the core layer
forms a second surface of the substrate;
a first coating layer disposed on the first surface of the
substrate, wherein the first coating is a hard coating with a
Taber Abrasion as measured according to ASTM D1044-05 of
less than or equal to 5%; and
a second coating layer disposed on the second surface of
the substrate, wherein the second coating is a flexible coating
with a Taber Abrasion as measured according to ASTM D1044-
05 of greater than or equal to 7%;
wherein the multilayer sheet passes a ball drop test from
a distance of greater than or equal to 50 centimeters.

Appeal Br. 13, Claims Appendix.
The following rejections are presented for appeal:2,3
Claims 1–3, 5, 6, 9, 11, 13–16, 20, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Gilmer (US 2006/0286383 A1, published Dec. 21, 2006).
Claims 4, 12, and 17–19 under 35 U.S.C. § 103 as unpatentable over
Gilmer in view of Sharygin (US 2010/0003523 A1, published Jan. 7, 2010).

2 The complete statement of the rejection on appeal appears in the
Examiner’s Answer. (Ans. 3–6.)
3 The 35 U.S.C. § 112, first paragraph, rejection of claims 22 and 23 has
been withdrawn since the claims have been cancelled. (Ans. 7.)
Appeal 2019-006329
Application 15/111,234

3

OPINION
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner’s rejections under 35 U.S.C.
§ 103(a).
The dispositive issue on appeal is:
Did the Examiner err in determining that Gilmer describes or suggests
a multilayer sheet comprising a hard coating on a first surface and a flexible
coating on the second surface of the substrate, wherein the first coating layer
has a Taber Abrasion as measured according to ASTM D1044-05 of less
than or equal to 5% and the second coating layer has a Taber Abrasion as
measured according to ASTM D1044-05 of greater than or equal to 7% as
required by independent claim 2?4
The Examiner finds Gilmer teaches a shaped article that may have
more than one layer prepared from a thermoplastic resin and resulting in the
structure required by independent claim 2. (Ans. 3; Gilmer ¶ 15.) The
Examiner recognizes that Gilmer does not disclose that the different surfaces
of the article may be coated with two different coating compositions. (Ans.
3.) However, the Examiner determines it would have been obvious to utilize
one coating composition comprising a hexafunctional urethane acrylate and
another coating comprising a difunctional urethane acrylate because Gilmer
discloses that the coating composition may contain urethane diacrylate or
urethane hexa-acrylate. (Ans. 3–4; Gilmer ¶¶ 31, 32.) The Examiner also
finds that Gilmer Examples 1 and 6 utilize different compositions that result

4 We limit our discussion to claim 2, the only independent claim on appeal.
Appeal 2019-006329
Application 15/111,234

4
in a Taber Abrasion according to ATSM D1044 after 100 cycles of 1.26%5
and 9.75% respectively. (Ans. 4; Gilmer Tables 2 and 6.) The Examiner
concludes it would have been obvious to one of ordinary skill in the art to
have used two different coating layers on the two surfaces of the article in
Gilmer for the purpose of obtaining one surface with increased flexibility
and the opposite surface having increased hardness. (Ans. 4.)
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (noting that 35 U.S.C.
§ 103 leads to three basic factual inquiries: (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue;
and (3) the level of ordinary skill in the art). Furthermore, the Examiner’s
obviousness rejection must be based on
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever,
the analysis 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., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and

5 The Examiner improperly states this value as 1.29%. (Compare Ans. 4,
with Gilmer Table 2.)
Appeal 2019-006329
Application 15/111,234

5
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
Although Gilmer discloses a shaped article that may contain more
than one coating, the Examiner does not adequately rebut Appellant’s
assertions in the Brief that Gilmer fails to disclose or suggest: (1) a
multilayer sheet comprising a hard coating on a first top surface and a
flexible coating on the second bottom surface as required by independent
claim 2; (2) the first coating is a hard coating having a Taber Abrasion of
less than or equal to 5% and the second coating is a flexible coating having a
Taber Abrasion of greater than or equal to 7% as required by independent
claim 2; and (3) a basis to pick and choose from the many urethane acrylates
to obtain 2 different coatings having the abrasion resistance requirements of
independent claim 2. (Appeal Br. 4–7.)
As Appellant points out and the record supports, Gilmer fails to
provide sufficient guidance to a person of ordinary skill in the art to form a
multilayer article wherein the first layer on the first surface is a hard coating
and the second layer on the second surface is a flexible coating as required
by independent claim 2. To the extent Gilmer discloses the at least one
urethane acrylate may be difunctional or hexafunctional, the Examiner has
failed to identify a disclosure that suggests the selection of both a first
coating on the first side of the substrate having a difunctional urethane
acrylate and a second coating on the second side of the substrate that is a
hexafunctional urethane acrylate. Thus, the Examiner has not provided an
adequate technical explanation with the requisite rational underpinning of
why or how one skilled in the art, absent impermissible hindsight, would
Appeal 2019-006329
Application 15/111,234

6
have arrived at the claimed multilayer sheet having both surfaces with the
Taber Abrasion as required by independent claim 2.
Since we reverse because the Examiner has not established that the
relied-upon disclosures are sufficient to support obviousness, we need not
reach the issue of the sufficiency of the evidence of unexpected results
presented in the Specification argued by Appellant. Cf. In re Geiger, 815
F.2d 686, 688 (Fed. Cir. 1987).
The Examiner rejected claims 4, 12, and 17–19 as obvious over
Gilmer in combination with Sharygin. We did not sustain the Examiner’s
rejection of independent claim 2 for the reasons presented by Appellant and
given above. We, likewise, do not sustain the Examiner’s decision to reject
dependent claims 4, 12, and 17–19, since this rejection is premised on the
Examiner’s misinterpretation of Gilmer. We need not reach whether the
Examiner’s reliance on Sharygin in addition to Gilmer for the rejection of
the dependent claims is supported by the evidence of record. The Examiner
cited Sharygin to address limitations different from independent claim 2.
For these reasons, we reverse the Examiner’s 35 U.S.C. § 103
rejections of claims 1–6, 9, and 11–21.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 6, 9,
11, 13–16,
20, 21
103 Gilmer 1–3, 5, 6,
9, 11, 13–
16, 20, 21
4, 12, 17–19 103 Gilmer, Sharygin 4, 12, 17–
19
Appeal 2019-006329
Application 15/111,234

7
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome
1–6, 9,
11–21

REVERSED