Ex Parte Loescher et al

Patent Trial and Appeal Board

Jan 25, 2019

14363311 (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/363,311 06/06/2014
32692 7590 01/29/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Claus W. Loescher
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
68266US004 8741
EXAMINER
BLADES, JOHN A
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
01/29/2019 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 CLAUS W. LOESCHER, VIKTOR DANNEWITZ,
KIRSTIN KRYBUS, and DIRK KOLOWROT
Appeal2018-000916
Application 14/363,311
Technology Center 1700
Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3 and 5-14 under 35 U.S.C. § 103(a) as
1 Our decision refers to the Specification ("Spec.") filed June 6, 2014, the
Examiner's Non-Final Office Action (''Non-Final") dated November 3,
2016, Appellants' Appeal Brief ("Br.") filed June 15, 2017, and the
Examiner's Answer ("Ans.") dated August 10, 2017.
2 Appellants, 3M Company and its affiliate 3M Innovative Properties
Company, are identified in the Appeal Brief as the real parties in interest
(Br. 2). 3M Innovative Properties Company is the Applicant.
Appeal2018-000916
Application 14/363,311
unpatentable over either Kawabata3 or Johnson, 4 in view of AAPA5 and
Starka, 6 and adding Barsotti7 for claim 4. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a colored polyvinyl chloride (PVC) adhesive
film for producing graphics and a method of applying a graphic to a
substrate such as a building or vehicle (Spec. 1 :4--7).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. Adhesive film comprising a colored polyvinyl chloride film
having opposite first and second major sides, the first major
side having an adhesive layer protected by a release liner and a
primer layer arranged between the colored polyvinyl chloride
film and the adhesive layer, the primer layer comprising an
aminoplast and a polyester and/or a curing product thereof and
having a thickness of more than 10 microns, the second major
side having a clear transparent top layer.
Claim 11 recites a method of producing a graphic on a substrate
comprising removing the release liner from the adhesive film of claim 1 and
applying the film to the substrate.
3 Kawabata et al., US 2005/0175818 Al, published August 11, 2005
("Kawabata").
4 Johnson et al., US 4,818,589, issued April 4, 1989 ("Johnson").
5 Appellants' admitted prior art, Spec. 1: 10 ("AAP A").
6 Starka, US 4,752,532, issued June 21, 1988.
7 Barsotti, US 4,614,683, issued September 30, 1986.
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ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 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
Appellants' arguments, we are not persuaded that Appellants identify
reversible error. Thus, we affirm the Examiner's rejections for the reasons
expressed in the Non-Final Office Action and the Examiner's Answer. We
add the following primarily for emphasis.
Appellants argue claim 9 separately, but otherwise argue the
remaining claims as a group. We address claim 9 separately from
representative claim 1, but claims 2-8 and 10-14 stand or fall with claim 1
pursuant to 37 C.F.R. § 4I.37(c)(l)(iv) (2016).
The Examiner finds that Kawabata and Johnson each teach a
decorative adhesive film comprising, sequentially, a carrier, a clear
(transparent) topcoat, a colored polymer film, a primer layer, an adhesive
layer, and a release liner, wherein the carrier and release liner are removed
during application of the film to an object (Non-Final 2, ,r 4; 5, ,r 13). The
Examiner further finds that although Kawabata prefers that the primer layer
have a thickness of 10 microns, Kawabata recognizes that this layer could be
made thicker (id. at 2, ,r 4). The Examiner also finds that Johnson's
reinforcing layer is a primer layer that is preferably at least 20 microns thick
(id. at 5, ,r 13).
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Application 14/363,311
The Examiner acknowledges that neither Kawabata nor Johnson
teaches that the colored polymer film is made of PVC (Non-Final 3, ,r 5; 5, ,r
14). However, the Examiner finds that the AAPA teaches PVC as a well-
known material for a decorative adhesive film (id.). Therefore, the
Examiner concludes that it would have been obvious to make the decorative
adhesive film of either Kawabata or Johnson using PVC, a well-known
alternate polymer material for such films, as the colored polymer film with
predictable success (id.).
The Examiner further acknowledges that neither Kawabata nor
Johnson teaches that the primer layer comprises a polyester and an
aminoplast (Non-Final 3, ,r 6; 5---6, ,r 15). However, the Examiner finds
these are known base and crosslinking materials for many primers as taught
by Starka, "which uses up to 85% ... polyester with as little as 15% of a
butylated melamine formaldehyde aminoplast resin to form a primer coating
composition which has excellent adhesion to all types of substrates including
plastic" (id. at 3, ,r 6 ). Therefore, the Examiner concludes that it would
have been obvious to substitute the known polyester/aminoplast primer of
Starka for that of Kawabata's primer layer or Johnson's reinforcing layer
with predictable success, especially given that each is useful in automobile
applications (id.).
Appellants argue that neither Kawabata nor Johnson discloses a
structure using a PVC film (Br. 8). Appellants assert that Kawabata, instead,
expressly discloses that the decorative layer comprises a vinyl chloride-vinyl
acetate copolymer resin, a urethane based resin, or an acrylic based resin
(id.). In addition, Appellants assert that Johnson expends more than a full
column describing the composition of the colored layer with no mention of
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Application 14/363,311
PVC (id.). Appellants contend that the Examiner fails to provide any
teaching or suggestion "that PVC may be substituted for any of the materials
used in Kawabata, Johnson, Starka, or Barsotti, nor can any such teaching be
inferred, particularly in light of the recognized unpredictability of the
chemical arts" (id.). Appellants also contend that "any overlap in
characteristics between PVC and the materials used in Kawabata or Johnson
[ would not] be predictive of success in combination with a primer layer
'comprising an aminoplast and a polyester and/or a curing product thereof"'
(id.).
This argument is not persuasive of reversible error. An express
teaching need not be present in the art to support the substitution of one
element for another element used for the same purpose. In re Fout, 675 F.2d
297,301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 567-68 (CCPA
1967) ( express suggestion to interchange methods which achieve the same
or similar results is not necessary to establish obviousness). Although
neither Kawabata nor Johnson teaches that the colored or decorative layer
may be made of PVC, Appellants admit that "PVC based adhesive films
have been widely used in producing graphics or decorations on substrates"
(AAP A, Spec. 1: 10). Appellants further admit that these PVC based
adhesive films have been used on vehicles (Spec. 1: 11-12). Similarly, both
Kawabata and Johnson disclose that the decorative adhesive film may be
used on vehicles (Kawabata ,r 1; Johnson 1: 11-16).
The substitution of one known element for another is obvious when
the combination yields no more than a predictable result, as here (i.e., using
PVC as the material for the colored or decorative layer in Kawabata or
Johnson). KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007) ("when a
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Application 14/363,311
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result"). Although
Appellants contend that such a substitution would not have been obvious "in
light of the recognized unpredictability of the chemical arts," (Br. 8).
Appellants fail to direct our attention to any evidence in the record in
support of this contention, nor do we find any. Nor do Appellants direct our
attention to any evidence or provide persuasive technical reasoning why any
overlap in characteristics between PVC and the materials used in Kawabata
or Johnson would not be predictive of success when combined with a primer
layer comprising an aminoplast and a polyester and/or a curing product
thereof. Attorney argument cannot take the place of evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Appellants next argue that Starka fails to teach an adhesive primer for
binding adhesive to PVC (Br. 6). Appellants assert that Starka generically
describes the surfaces that may be used with the primer as "metals and
plastics," but does not teach priming a PVC surface, a flexible film, or an
adhesive coating (id.). In addition, Appellants contend that Starka and
Kawabata concern "distinctly different technology" (id.). As such,
Appellants urge that the rejections fail to provide motivation to look to the
art of binding automotive paint to auto parts, as taught in Starka, for a way to
bind pressure sensitive adhesive to the decorative layer of Kawabata (id. at
7). As to Johnson, Appellants contend that Johnson's reinforcing layer must
have characteristics distinct from those required of primer layers,
particularly the ability to resist damage to itself or the colored layer on
impact (id.). Therefore, Appellants urge that the rejections fail to provide
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Application 14/363,311
motivation to look to the art of binding automotive paint to auto parts, as
taught in Starka, to find a reinforcing layer meeting Johnson's requirements
(id. at 8).
These arguments are not persuasive of reversible error. As the
Examiner finds, Starka teaches that its primer material, comprising polyester
and an aminoplast, has "excellent adhesion to all types of substrates such as
metal and plastics" (Ans. 2; Starka Abstract). Therefore, the ordinary artisan
would have reasonably expected that Starka's primer material would
likewise have excellent adhesion to PVC, a well-known plastic material.
KSR, 550 U.S. at 401 ("if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill."). Indeed, it is
Starka's teaching that this primer material has excellent adhesion to all types
of substrates including metals and plastics, especially with regard to graphics
for vehicles, that commends this reference to the attention of the skilled
artisan looking to modify Kawamata's the primer layer of decorative
adhesive film which is also applicable to vehicles. In other words, Starka's
teaching motivates the ordinary artisan to substitute a primer material
comprising polyester and an aminoplast for Kawamata's primer layer with a
reasonable expectation of achieving excellent adhesion between the adhesive
layer and the colored polymer layer.
Regarding the Examiner's finding that Johnson's reinforcing layer is a
primer layer, the Examiner notes that Appellants fail to provide any special
definition or limitation distinguishing a primer layer from Johnson's
reinforcing layer (Ans. 3). In addition, the Examiner finds that Johnson's
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reinforcing layer has the same thickness as the claimed primer layer and
performs its reinforcement function "by virtue of its strong adhesion to the
lower side of the top layer, which prevents it from chipping or delamination"
(id.). As such, the Examiner determines that Johnson's reinforcing layer
performs as a primer layer (id.). Given Johnson's teaching that the
reinforcing layer functions to support and resist damage to the colored
decorative layer or itself when applied to a vehicle and Starka's teaching that
a primer material comprising polyester and an aminoplast provides excellent
adhesion to all types of substrates including metals and plastics, the ordinary
artisan would have been motivated to substitute Starka's primer material for
Johnson's reinforcing material with a reasonable expectation of success.
Finally, Appellants argue that the Examiner fails to make any finding
that the clear top coat of either Kawamata or Johnson is composed of PVC
as required by claim 9 (Br. 9). The Examiner responds that "where a base
film layer is made from PVC, making its clear transparent topcoat layer from
a like material-the principle of 'like bonds to like'-would have been
prima facie obvious" (Ans. 4). The Examiner also finds that Kawabata and
Johnson suggest the use of the same material for the topcoat and the base
film, highlighting the desire to have these two layers bond well (id.;
Kawabata ,r 167; Johnson 6:58-7:37). Appellants fail to rebut or otherwise
address these findings and, therefore, fails to identify reversible error in the
Examiner's rejections of claim 9.
Accordingly, we will sustain the Examiner's obviousness rejections of
claims 1-14.
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Application 14/363,311
DECISION
Upon consideration of the record, and for the reasons given above and
in the Non-Final Office Action and the Examiner's Answer, the decision of
the Examiner rejecting claims 1-14 under 35 U.S.C. § 103(a) as
unpatentable over either Kawabata or Johnson in view of AAP A and Starka,
alone or further in view of Barsotti, is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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