3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Jun 22, 2020

2019004791 (P.T.A.B. Jun. 22, 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.
14/772,094 09/02/2015 David F. SLAMA 71360US009 6240
32692 7590 06/22/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
WATKINS III, WILLIAM P
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte DAVID F. SLAMA,
GARTH V. ANTILA, STEVEN J. FLANAGAN,
BRENT R. HANSEN, and THOMAS P. HANSCHEN
_______________
Appeal 2019–004791
Application 14/772,094
Technology Center 1700
_______________
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–13 of Application 14/772,094. See
Non-Final Act. 1; Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6.

1 In our Decision, we refer to the Specification filed September 2, 2015
(“Spec.”) of Application 14/772,094 (“the ’094 Application”); the Non-Final
Office Action dated February 23, 2018 (“Non-Final Act.”); the Appeal Brief
filed July 23, 2018 (“Appeal Br.”); and the Examiner’s Answer dated
January 7, 2019 (“Ans.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies 3M Company as the real party in
interest. Appeal Br. 2.
Appeal 2019–004791
Application 14/772,094
2
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’094 Application relates to perforated films, which have
applications in the personal hygiene field, the food packaging industry, and
in acoustics absorption. Spec. ¶ 1. According to the ’094 Application,
conventional processes for manufacturing perforated films tend to have
limited film thicknesses and/or hole sizes and densities. Id. ¶ 2. The ’094
Application describes a perforated polymeric multilayer film having
adjacent, yet separable, films. Id. ¶¶ 6, 8.
Claims 1 and 5 are representative of the ’094 Application’s claims and
are reproduced below from the Claims Appendix of the Appeal Brief with
key limitations emphasized.
1. A co-extruded polymeric multilayer film having first and
second generally opposed major surfaces, adjacent first and
second layers that are separable from each other, and an array
of indentations extending into the first and second layers.
5. A co-extruded polymeric multilayer film having first and
second generally opposed major surfaces, an array of openings
extending between the first and second major surfaces, and at
least first and second adjacent layers that are separable from
each other, wherein the openings each have a series of areas
through the openings from the first and second major surfaces
ranging from minimum to maximum areas, and wherein the
minimum area is not at[] least one of the major surface[s].
Appeal Br. 13 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Appeal 2019–004791
Application 14/772,094
3
Name Reference Date
Arrington US 2009/0288764 A1 Nov. 26, 2009
Scheibner WO 2011/081894 A1 July 7, 2011
REJECTION
The Examiner maintains the rejection3 of claims 1–13 under 35
U.S.C. § 103(a) as unpatentable over Scheibner in view of Arrington. Non-
Final Act. 3–4.
DISCUSSION
Ground 1: Rejection of claims 1–13 as obvious over Scheibner in view
of Arrington
The Examiner determines that claims 1–13 would have been rendered
obvious over Scheibner in view of Arrington. Non-Final Act. 3–4.
Appellant argues the claims as a group based on limitations recited in
claims 1 and 5. Appeal Br. 9–11. We select claim 1 as representative.
Claims 2–4 and 13 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
A. The claimed “adjacent first and second layers that are
separable from each other,” as recited in claim 1
With respect to claim 1, the Examiner finds that Scheibner teaches,
indenting a film, chilling the indented film, and then perforating the chilled
film by applying heat to the indentations. Non-Final Act. 3. The Examiner

3 Because this application claims priority to an application filed after the
March 16, 2013, effective date of the America Invents Act, we refer to the
AIA version of the statute.
Appeal 2019–004791
Application 14/772,094
4
finds Scheibner teaches that the perforated polymeric film may comprise a
polyolefin, such as polyethylene. Id.
The Examiner finds that Arrington teaches separating very thin films,
which have been co-extruded. Id. The Examiner finds that one of
Arrington’s thin film layers may be polypropylene, “with no restriction on
the type of polymer in the main layer.” Id.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have used Arrington’s
separable films in Scheibner’s process in order to perforate very thin films,
which can be separated. Id. The Examiner determines that it also would
have been obvious to an ordinarily skilled artisan to have used Scheibner’s
polyethylene first layer and Arrington’s polypropylene support layer in a
multilayer film. Id. at 3–4.
Analysis of a rejection under § 103 requires, inter alia, consideration
of whether the prior art would have suggested to a skilled artisan that he or
she should make the claimed composition, i.e., is there motivation, and
whether the prior art would have revealed that in so making, a skilled artisan
would have had a reasonable expectation of success. Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). These are questions of
fact. Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006).
Appellant’s arguments are not persuasive of reversible error by the
Examiner.
Appellant argues that the Examiner has provided insufficient evidence
that one of ordinary skill in the art would have been motivated to combine
Scheibner and Arrington. Appeal Br. 9.
Appeal 2019–004791
Application 14/772,094
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The Examiner finds that one of ordinary skill in the art would have
been motivated to implement Arrington’s co-extruded multiple thin layer
films because co-extrusion simplifies the processing of Scheibner’s
individual films. Non-Final Act. 4.
Evidence of a motivation to combine prior art references “may flow
from the prior art references themselves, the knowledge of one of ordinary
skill in the art, or, in some cases, from the nature of the problem to be
solved.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229
F.3d 1120, 1125 (Fed. Cir. 2000). We note Scheibner teaches that “an
additional flat film (or secondary film) may be introduced between the
support surface and the embossed polymeric film.” Scheibner 13. Although
Scheibner describes the extrusion of the polymeric film, the secondary film
is implicitly pre-manufactured in a separate step. Id. at 20. We agree with
the Examiner that one of ordinary skill in the art would have been motivated
to implement Arrington’s co-extrusion process for manufacturing multilayer
films simultaneously to avoid difficulties in processing each film
individually. See Non-Final Act. 4.
Appellant argues that Arrington “recognizes that there can be
difficulty separating its film and assist layers.” Appeal Br. 10 (citing
Arrington ¶ 150). Appellant asserts that adding an array of indentations and
openings, which extend through two film layers, would have “enhance[d]
the uncertainty of two layers of a polymeric multilayer film being
separable.” Appeal Br. 10. According to Appellant, the Examiner has not
established that one of ordinary skill in the art would have recognized that
the proposed combination provides a reasonable expectation of success. Id.
10–11.
Appeal 2019–004791
Application 14/772,094
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“[O]bviousness does not require absolute predictability of success . . .
all that is required is a reasonable expectation of success.” In re Kubin, 561
F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853 F.2d 894, 903–
04 (Fed. Cir. 1988)). Here, a skilled artisan would have had a reasonable
expectation of success that Arrington’s multilayer films could be separated if
subjected to Scheibner’s film treatments because Scheibner teaches
embossing and perforating both a polymeric film and a secondary support
film and, thereafter, separating the polymeric and secondary films. See
Scheibner 13, 20.
Arrington, furthermore, explicitly describes several techniques to
address delamination in the event that it occurs. Arrington ¶ 150 (teaching
that undesirable delamination “can be solved” by reducing the
interpenetration of two layers, adding a release agent or talc, etc.).
Appellant does not specifically rebut the Examiner’s finding that the level of
the skill in the art needed to adjust for the potential delamination problems
described in Arrington is high. Appeal Br. 11. A person with a high level of
skill in the art of multilayer polymeric films would have understood and
weighed the tradeoff of potential delamination with the benefits. Winner
Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The
fact that the motivating benefit comes at the expense of another benefit, . . .
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.”).
We agree with the Examiner that there is sufficient evidence of record
that a skilled artisan would have been motivated to manufacture the claimed
Appeal 2019–004791
Application 14/772,094
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co-extruded polymeric multilayer film with a reasonable expectation of
success. See Ans. 5.
We sustain the rejection of claim 1 over Scheibner in view of
Arrington. For the reasons given above, we also sustain the rejection of
claims 2–4 and 13.
B. The claimed “at least first and second adjacent layers that
are separable from each other,” as recited in claim 5
Claim 5 is an independent claim, rejected over the same combination
of prior art as claim 1. See Non-Final Act. 3–4. Claims 6–12 stand or fall
with claim 5. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant’s arguments for
patentability of claim 5 do not differ substantively from those made in
support of patentability of claim 1. See Appeal Br. 10–11.
We sustain the rejection of claim 5 over Scheibner in view of
Arrington. For the reasons given above, we also sustain the rejection of
claims 6–12.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–13 103(a) Scheibner, Arrington 1–13
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED