Ex Parte Johnson et al

Board of Patent Appeals and Interferences

Feb 20, 2009

08421055 (B.P.A.I. Feb. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL A. JOHNSON, CLAYTON A. GEORGE,
PEGGY S. WILLETT and SCOTT R. MEYER
____________

Appeal 2008-4952
Application 08/421,055
Technology Center 1700
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Decided:1 February 24, 2009
____________

Before CHUNG K. PAK, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 6 through 13, 16 through 24, 26 through 29, and 31

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-4952
Application 08/421,055

through 37, all of the claims pending in the above-identified application.
We have jurisdiction under 35 U.S.C. §6.
We REVERSE for the reasons expressed in the Appeal Brief, the
Reply Brief, and below.
Statement of the Case
The subject matter on appeal is directed to “a method of using a melt-
flowable sheet material to provide protective and aesthetic features to a
surface” (Spec. 1, ll. 10-12). This method, as recited in independent claims
6, 28, and 29 on appeal, requires expressly or impliedly that the melt-
flowable composition on the sheet material be in contact with the surface of
a step joint or a surface of a vehicle body. Details of the appealed subject
matter are recited in representative claim 6 reproduced below:
6. A method for modifying a surface of a step joint in a vehicle body
comprising the steps of:
(a) placing a sheet material on the surface of the step joint,
said sheet material comprising (i) a lower melt-flowable layer comprising a
melt-flowable composition, the melt-flowable layer having a thickness in the
range of at least about 0.05 mm up to about 25 mm, and (ii) a dimensionally
stable film for controlling the melt-flow behavior of said melt-flowable
composition, said film having a surface topography and being sufficiently
dimensionally stable so as not to melt and flow or exhibit wrinkling when
heated to a melt sealing temperature of the melt-flowable composition and
subsequently cooled, said sheet material being placed on the surface of the
step joint such that said melt-flowable composition contacts said surface of
the step joint;
(b) heating the sheet material to a melt sealing temperature
sufficient to cause said melt-flowable composition to (1) melt, flow and
level out over surface imperfections or fill gaps in the step joint, as well as
(2) adhere and form a bond to the step joint; and
(c) allowing the sheet material and the step joint to cool
while substantially retaining said surface topography of said film,
wherein the melt-flowable layer is thick enough to provide sufficient
material to flow and seal the step joint, the sheet material remains adhered to
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Application 08/421,055

the step joint, and topographical or protective features are imparted to the
step joint by the sheet material.

As evidence of unpatentability of the claimed subject matter, the
Examiner has proffered the following prior art references:
Sato JP 58-217516 A Dec. 17, 1983
Schappert US 4,822,683 Apr. 18, 1989
Matsui JP 01-152049 A Jun. 14, 1989
Leatherman ‘679 US 4,877,679 Oct. 31, 1989
Leatherman ‘779 US 4,892,779 Jan. 9, 1990
Manser US 4,920,182 Apr. 24, 1990
Johnson EP 0 384 598 A1 Aug. 29, 1990
Masaaki JP 03-273975 A Dec. 5, 1991

The Examiner has rejected the claims on appeal as follows:

1) Claims 6, 8, 16, 17, 19 through 24, and 34 under 35 U.S.C. § 102(b)
as anticipated by the disclosure of Masaaki;

2) Claims 6, 8, 12, 13, 16, 17, 19 through 24, and 34 under 35 U.S.C. §
103(a) as unpatentable over the disclosure of Masaaki;

3) Claims 7, 9, and 28 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Masaaki, Schappert, and Manser;

4) Claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Masaaki, Leatherman ‘679, and Leatherman ‘779;

5) Claims 18, 29, 31, 36, and 37 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Masaaki, Manser, and Sato;

6) Claim 32 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Masaaki and Johnson;

7) Claims 26, 27, and 33 under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Masaaki and Matsui; and

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8) Claim 35 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Masaaki, Schappert, Manser and Matsui.

ISSUE
The Examiner’s anticipation and obviousness determinations are
based on findings that Masaaki teaches or would have suggested particularly
placing and sufficiently heating a lower melt-flowable composition on a
dimensionally stable film to melt and flow the melt-flowable composition to
cover and adhere to a surface or a step joint of a vehicle body as recited in
claims 6, 28, and 29. (See Ans. 3-23). Thus, the dispositive question raised
is: Has the Examiner demonstrated that Masaaki teaches or would have
suggested sufficiently heating a particularly placed lower melt-flowable
composition on a dimensionally stable film to melt and flow the melt-
flowable composition to cover and adhere to a surface or a step joint of a
vehicle body or substrate as recited in claims 6, 28, and 29?

CONCLUSION OF LAW
On this record, we determine that the Examiner has not demonstrated
that Masaaki teaches or would have suggested sufficiently heating a
particularly placed lower melt-flowable composition on a dimensionally
stable film to melt and flow the melt-flowable composition to cover and
adhere to a surface or a step joint of a vehicle body or substrate as recited in
claims 6, 28, and 29.

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FINDINGS OF FACT
1) Masaaki teaches employing a tape having a first layer of hot melt film
(4a) having a thickness of about 30-100 micrometers and a second layer of
thermosetting viscous resin (4b) corresponding to the claimed dimensionally
stable film on the joint of vehicle body plates to prevent rust (Compare
Masaaki, Abstract and p. 2 with Spec. 4).
2) Masaaki teaches applying the tape such that the second layer of
thermosetting viscous resin (4b), not the hot melt film (4a), contacts a ED
coating film on the joint of vehicle plates or the joint itself (p. 6, together
with Figs. 1-5).
3) Masaaki teaches an optional backing treatment to soften the tape
which is hardened upon reaching its ordinary temperature (p. 8).
4) According to the Examiner (Ans. 3), “the tape softens (but does not
melt) during baking but hardens after cooling to ordinary temperature
(translation p. 8)….”
5) Masaaki is silent as to placing, melting, and flowing the hot melt
film (4a) of its tape directly on the joint or surface of vehicle plates to cover
and adhere to the joint or surface of the same, while preventing its
thermosetting viscous resin from melting and flowing or wrinkling (See
Masaaki generally).
6) The Examiner relies on Schappert, Manser, Leatherman ‘679,
Leatherman ‘779, Sato, Johnson, and Matsui as evidence for limitations
recited in various dependent claims (Ans. 6-13).

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PRINCIPLES OF LAW
Under 35 U.S.C. § 102(b), anticipation is established only if “each
and every element as set forth in the claim is found, either expressly or
inherently, described in a single prior art reference.” Verdegall Bros. v.
Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). As stated
in our reviewing court in In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999):
To establish inherency, the extrinsic evidence “must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference…..” Continental Can Co. USA
v. Monsanto Co., 948 F.2d 1264, 1268…(Fed. Cir. 1991).
“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from
a given set of circumstances is not sufficient.” Id. at
1269…(quoting In re Oelrich, 666 F.2d 578, 581…(C.C.P.A.
1981)).

See also MEHL/Biophile Intern. Corp. v. Milgraum, 192 F.3d 1362, 1365
(Fed. Cir. 1999) (inherency may not be established by mere probabilities or
possibilities).
According to KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41
(2007):
[A]nalysis [of whether the subject matter of a claim
would have been obvious] 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….

Nevertheless, "rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
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obviousness." KSR at 1741-42, quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006).
Analysis
As indicated supra, Masaaki is silent as to placing, melting, and
flowing the hot melt film (4a) of its tape directly on the joint or surface of
vehicle plates to cover and adhere to the joint or surface of the same. The
Examiner has not demonstrated that Masaaki places its hot melt film (4a) in
contact with the joint or surface of vehicle plates or inherently or necessarily
melts the hot melt film to flow, cover and adhere to the joint or surface of
vehicle plates as required by the claims on appeal. Nor has the Examiner
sufficiently articulated why one of ordinary skill in the art would have been
led to place its hot melt film (4a) in contact with the joint or surface of
vehicle plates or melt and flow the hot melt film to cover and adhere to the
joint or surface of the same contrary to the teachings of Masaaki. The
Examiner has not relied on the teachings of the remaining references to cure
this inadequacy.
For the reasons set forth above and in the Appeal Brief and the Reply
Brief, we determine that the Examiner has failed to carry the burden of
establishing a prima facie case of unpatentability within the meaning of 35
U.S.C. §§ 102(b) and 103(a).
ORDER
The decision of the Examiner is reversed.

REVERSED

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tc

3M INNOVATIVE PROPERTIES COMPANY
P.O. BOX 33427
ST. PAUL, MN 55133-3427

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