Shigeyasu Morikawa et al.

Patent Trials and Appeals Board

Aug 7, 2020

14389197 - (D) (P.T.A.B. Aug. 7, 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.
14/389,197 09/29/2014 Shigeyasu Morikawa 3178.555BS 6900
126230 7590 08/07/2020
Brundidge & Stanger, P.C.
Carl I. Brundidge
WASH/ASSOC
1925 BALLENGER AVENUE, STE. 560
Alexandria, VA 22314
EXAMINER
SHOSHO, CALLIE E
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
08/07/2020 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHIGEYASU MORIKAWA,
TADASHI NAKANO, and MASAYA YAMAMOTO
____________

Appeal 2019-002725
Application 14/389,197
Technology Center 1700
____________
Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and
JANE E. INGLESE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 3–5 of Application 14/389,197. Final
Act. (March 20, 2018). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Nisshin Steel Co. as the real party in
interest. Appeal Br. 3.
Appeal 2019-002725
Application 14/389,197
2
I. BACKGROUND
The ’197 Application describes composite materials that can be used
in various industrial products, including automobiles or cell phones. Spec.
¶ 2. The composite materials at issue comprise a molded thermoplastic resin
article joined to a coated shaped metal material. Id. ¶ 1. Such composite
materials are useful because they are lighter than a part having the same
strength made only of metal and stronger than a part made only of resin
having the same weight. Id. ¶ 2.
Claim 3 is representative of the ’197 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
3. A composite comprising:
a coated shaped metal material; and
a molded article of a thermoplastic resin composition
joined to a surface of the coated shaped metal material,
wherein:
the coated shaped metal material comprises a
shaped metal material and a coating formed on a surface
of the shaped metal material,
the shaped metal material is a product made
of a metal and has a predetermined shape by
applying heat or force to the metal, the shaped
metal material including a metal sheet or a metal
member,
the coating comprises a polyurethane resin
containing a polycarbonate unit,
a mass ratio of the polycarbonate unit to a
total resin mass in the coating is 15 to 80 mass%,
and
the coating has a film thickness of 0.5 to
20 µm.
Appeal Br. 16 (some indentation supplied).
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Application 14/389,197
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II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Takanashi2 and Schmitt.3 Final Act. 2.
2. Claims 3–5 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Wank4 and Schmitt. Final Act. 3.
III. DISCUSSION
A. Rejection of claim 3 as unpatentable over the combination of
Takanashi and Schmitt
The Examiner found that Takanashi describes or suggests every
limitation of claim 3 except for the inclusion of a polycarbonate unit in the
polyurethane adhesive. Final Act. 2.
The Examiner also found that Schmitt describes or suggests a coating
composition comprising a material comprising carbonate moieties and
isocyanate groups, wherein the coating composition may be used as a primer
for metal substrates. Id. at 3. Schmitt’s Example I describes the coating
composition as comprising 46.38 wt.% of a polycarbonate diol. Id. (citing
Schmitt col. 13).
The Examiner further found that it would have been obvious to a
person having ordinary skill in the art at the time of the invention to use
Schmitt’s polyurethane/polycarbonate composition in Takanashi’s adhesive
layer to obtain the adhesive layer with improved adhesion to the metal sheet

2 US 2012/0024377 A1, published February 2, 2012.
3 US 4,692,383, issued September 8, 1987.
4 US 4,810,321, issued March 7, 1989.
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Application 14/389,197
4
and the substrate layer while providing a protective multilayer with high
impact and abrasion resistance. Id.
Appellant argues that the Examiner erred by finding that Takanashi
describes or suggests the claimed “molded article of a thermoplastic resin.”
Appeal Br. 8. In particular, Appellant argues that the heat bondable layer
that the Examiner found corresponds to the claimed “molded article” is not
in contact with the adhesive layer which corresponds to the claimed coating.
Id. Rather, Takanashi’s heat bondable layer is in contact with the metal
substrate. Id. at 8–9 Appellant argues that claim 3 requires the molded article
to be joined to and thus in contact with the coating comprising a
polycarbonate containing polyurethane. Id. at 9. Appellant argues that the
claim language needs to be considered as a whole and interpreted in view of
the Specification. Id. at 10 (citing Spec. ¶ 46).
We are not persuaded by Appellant’s argument, which is based upon
an incorrect interpretation of claim 3’s language.
During prosecution, the PTO gives the language of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account any definitions or other enlightenment provided by the written
description contained in the applicant’s specification. In re Morris, 127 F.3d
1048, 1054–55 (Fed. Cir. 1997).
Claim 3 requires that the molded article be “joined to a surface of the
coated shaped metal material” and that the coated shaped metal material
comprise “a shaped metal material and a coating formed on a surface of the
shaped metal material.”
We agree with the Examiner that nothing in claim 3’s language
requires the coating on the coated shaped metal material to be located
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Application 14/389,197
5
between the metal and the molded article. Appellant is attempting to read a
limitation from the Specification into the claims.
Thus, we affirm the rejection of claim 3 as obvious over the
combination of Takanashi and Schmitt.
B. Rejection of claims 3–5 as unpatentable over the combination
of Wank and Schmitt
Appellant presents substantially identical arguments for reversal of the
rejection of independent claims 3 and 5. We, therefore, select claim 3 as
representative of the claims on appeal. 37 C.F.R. § 41.37(c)(1)(iv) (2018).
The Examiner rejected claims 3–5 as unpatentable over the
combination of Wank and Schmitt. Final Act. 3–4. The Examiner found that
Wank describes or suggests every limitation of these claims except for the
polycarbonate containing polyurethane adhesion promoter. Id. at 4.
The Examiner also found that Schmitt describes or suggests a coating
composition comprising a material comprising carbonate moieties and
isocyanate groups, wherein the coating composition may be used as a primer
for metal substrates. Id. at 3. Schmitt’s Example I describes the coating
composition as comprising 46.38 wt.% of a polycarbonate diol. Id. (citing
Schmitt col. 13).
The Examiner further found that it would have been obvious to a
person having ordinary skill in the art at the time of the invention to use
Schmitt’s polyurethane/polycarbonate composition in Wank’s adhesive layer
to obtain the adhesive layer with improved adhesion to the copper foil and
the substrate layer while providing a protective metal-plastic laminate with
high impact and abrasion resistance. Id.
Appellant argues that the Examiner erred by finding that a person of
ordinary skill in the art at the time of the invention would have been
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Application 14/389,197
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motivated to use Schmitt’s polycarbonate-containing polyurethane metal
primer as the adhesive layer in Wank’s metal plastic laminate. Id. at 11–12
According to Appellant, a person of ordinary skill in the art would not have
been motivated to use Schmitt’s metal primer in an adhesive layer because
Schmidt describes its metal primer as a useful in the preparation of
multilayer coatings having good flexibility. Id. at 12. This argument is not
persuasive because, in this context, the term “primer” refers to a material
that can be used as “a first coat or layer of paint, size, etc., given to any
surface as a base, sealer, or the like.” Primer | Definition of Primer,
Dictionary.com https://www.dictionary.com/browse/primer. Schmitt’s
primer, therefore, serves to promote sticking of the adhesive layer to the
metal substrate.
Appellant also argues that a person of ordinary skill in the art would
not use Schmitt’s primer coating to replace Wank’s polyurethane layer
because Wank’s polyurethane layer has a film thickness of 1 to 80 µm,
preferably 10 to 30 µm. Id. at 12 (citing Wank 1:62–63). Schmitt’s primer
layer usually has a dry film thickness of 0.2 mils to about 1.5 mils. Id. (citing
Schmitt 12:60–61). Appellant calculates the thickness of Schmitt’s primer
layer as between 200 µm to about 1500 µm. Id. at 13. Based upon this
calculation Appellant argues that Schmitt’s primer is too thick to be used as
part of Wank’s adhesive composition. Id.
This argument is not persuasive because Appellant has made an error
in calculating the thickness of Schmitt’s primer layer. One mil is 1/1000 of
an inch (i.e., 0.001 inches), not one millimeter as Appellant apparently
assumed. Thus, Schmitt describes its primer layer as having a thickness of
between about 5 µm to about 38 µm.
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Application 14/389,197
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In view of the foregoing, we affirm the rejection of claims 3–5 as
unpatentable over the combination of Wank and Schmitt.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3 103(a) Takanashi, Schmitt 3
3–5 103(a) Wank, Schmitt 3–5
Overall Outcome 3–5
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