SOLUTIA INC.

Patent Trials and Appeals Board

Jan 25, 2021

2020000717 (P.T.A.B. Jan. 25, 2021)

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.
15/270,105 09/20/2016 JUN LU 86171US01 1070
66024 7590 01/25/2021
EASTMAN CHEMICAL COMPANY
200 SOUTH WILCOX DRIVE
KINGSPORT, TN 37660-5147
EXAMINER
LUKS, JEREMY AUSTIN
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
01/25/2021 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):
estiltner@eastman.com
jlmcglothlin@eastman.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUN LU

Appeal 2020-000717
Application 15/270,105
Technology Center 2800
Before BEVERLY A. FRANKLIN, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15 and 17–21. 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.
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Application 15/270,105

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to multiple layer
substrates having a rigid substrate between two acoustic interlayers. Spec.
¶ 1. In particular, Appellant seeks to reduce sound transmission through the
glass substrate. Id. at ¶ 2–10. Claim 1 is illustrative:
1. A sound insulating multiple layer panel comprising:
a first panel having a first thickness;
a first interlayer having a first interlayer thickness, a
damping loss factor of at least 0.10 at 20°C, and a first glass
transition temperature of less than 25°C adjacent the first panel;
a second panel having a second thickness adjacent the
first interlayer;
a second interlayer having a second interlayer thickness,
a damping loss factor of at least 0.10 at 20°C, and a second
glass transition temperature of less than 25°C adjacent the
second panel;
a third panel having a third thickness adjacent the second
interlayer;
wherein the multiple layer panel has a combined panel
thickness, a combined interlayer thickness and a total thickness;
wherein the second panel is disposed between the first
interlayer and the second interlayer.

2 In this Decision, we refer to the Final Office Action dated March 7, 2018
(“Final Act.”), the Appeal Brief filed November 10, 2018 (“Appeal Br.”),
and the Examiner’s Answer dated February 13, 2019 (“Ans.”).
Appeal 2020-000717
Application 15/270,105

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REJECTION AND REFERENCES
On appeal, the Examiner maintains the rejection of claims 1–15 and
17–21 under 35 U.S.C. § 103 as obvious over Nugue et al., US 8,959,770 B2
(Feb. 24, 2015) (“Nugue”) in view of Thompson et al., US 2015/0158276
A1, June 11, 2015 (“Thompson”). Final Act. 2.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant argues claims 1, 8, and 21 as a group and presents separate
argument for claims 6, 7, 14, and 15. See Appeal Br. 13, 22. Consistent with
the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we address claim 1 and
argument concerning claims 6, 7, 14, and 15. All other claims on appeal
stand or fall together with claim 1.
The Examiner finds, for example, that Nugue teaches the various
layers recited by claim 1 but does not explicitly teach a dampening loss
factor and glass transition temperature for the first and second interlayers as
claim 1 recites. Final Act. 2–3 (citing Nugue). The Examiner finds that
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Application 15/270,105

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Thomson teaches a similar acoustic glass panel interlayer having
overlapping materials as disclosed by Appellant and, therefore, having the
same damping loss factor and glass transition temperature. Id. at 3–4 (citing
Thompson). The Examiner determines that it would have been obvious to a
person having ordinary skill in the art to combine the apparatus of Nugue
with the apparatus of Thompson to substitute one interlayer with another to
provide the predictable result of providing an acoustic or sound damping
function. Id.
As to claim 1, Appellant argues that Nugue teaches a laminated
glazing unit that must withstand a predetermined load and that a person of
skill in the art, therefore, would not have substituted Thompson’s interlayers
with soft interlayers. Appeal Br. 14–15. Appellant argues that “the structural
panels of Nugue are directed to a completely different purpose (i.e.,
improved load resistance) than sound dampening for panels such as
windshields.” Id. at 16. Appellant further argues that the Examiner relies on
hindsight in combining Nugue and Thompson’s teachings and that
substituting Nugue’s interlayer with acoustic interlayers would destroy
Nugue’s “intended purpose (load bearing.).” Id. at 17–21.
Appellant’s argument is unpersuasive because the preponderance of
the evidence supports the Examiner’s stated rationale for combining the
references’ teachings. In particular, Nugue expressly teaches that, if desired,
its structural interlayers may be substituted for acoustic interlayers. Nugue
13:65–14:12 (describing Nugue Figure 9 as providing data “for a laminated
glazing panel according to the invention that differs from the panel
considered in FIG. 6 only in that it comprises two acoustic interlayer plies
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instead of two structural interlayer plies.”) (emphasis added); see also id. at
6:13–22 (describing embodiment with two acoustic interlayer plies).
Because Nugue explicitly suggests substituting acoustic interlayer plies for
structural plies, a person of skill in the art would naturally look towards a
reference such as Thompson to identify appropriate interlayer materials.
Ans. 3–5. Indeed, Thompson’s interlayers would have been particularly
attractive because Thompson teaches that the glass transition temperatures of
its layers contribute to a sound damping effect. Id. at 4–5 (citing Thompson
¶¶ 46–47).
Appellant also argues that the references’ combined teachings would
not necessarily result in the sound transmission loss recited by claim 1.
Appeal Br. 16–17. The Examiner, however, provides detailed findings
supported by a preponderance of the evidence as to why the Thompson
acoustic interlayers have identical material compositions to Appellant’s
acoustic interlayers. Ans. 5–7. In particular, the Examiner finds that the
combined teachings of the art would result in materials and thicknesses
identical to Appellant’s. Id. at 7. Appellant does not persuasively dispute
these findings. The Examiner, thus, reasonably finds that the combined
teachings would also result in the same mechanical properties including
sound transmission loss. Id. In re Best, 562 F.2d 1252, 1256 (CCPA 1977)
(“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.”).
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Application 15/270,105

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With respect to claims 6, 7, 14, and 15, Appellant argues that the
claims include recitations regarding damping factor and sound transmission
loss that are not disclosed by the cited art. Appeal Br. 21. The Examiner
finds, as explained above, that the cited references suggest a combination of
materials and thickness identical to that Appellant discloses and, therefore,
reasonably finds that the references combined teachings will yield the same
mechanical properties including sound transmission loss. Ans. 11–12.
Appellant’s argument is unpersuasive because it does not identify error in
this finding. Moreover, Appellant’s argument is unpersuasive because
merely identifying a claim recitation and stating it is not taught by the art,
without more, is not sufficient to identify error in this context. See
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that merely
asserting that applied prior art does not teach a recited limitation is not
substantive argument for separate patentability).
Because Appellant’s arguments do not identify Examiner error, we
sustain the Examiner’s rejection.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–15, 17–21 103 Nugue, Thompson 1–15, 17–21
Appeal 2020-000717
Application 15/270,105

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED