Ex Parte Rouby et al

Patent Trial and Appeal Board

Mar 5, 2019

13996256 (P.T.A.B. Mar. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/996,256 09/16/2013 Michel Rouby
22850 7590 03/07/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
417526US99PCT 3274
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
03/07/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL ROUBY, PIERRE CHAUSSADE, and
CATHERINE DESCUSSE
Appeal2018-004749
Application 13/996,256
Technology Center 1700
Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-12, 15, 16, 21, and 22. (Appeal Br. 4--5.) We
have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 This Decision includes citations to the following documents:
Specification filed June 20, 2013 and amended on August 9, 2018 ("Spec.");
Non-final Office Action dated August 30, 2017 ("Non-final Act."); Appeal
Brief filed November 16, 2017 ("Appeal Br."); Examiner's Answer dated
February 8, 2018 ("Ans."); and Reply Brief filed April 2, 2018 ("Reply
Br.").
2 Appellants identify Saint-Gobain Glass France as the real party in interest.
(Appeal Br. 2.)
Appeal2018-004749
Application 13/996,256
THE INVENTION
Appellants state that the invention relates to a safety glazing including
a glass substrate and a complex sheet made of plastic including polyester
(PE) film and a polyvinyl butyral (PVB) layer, which may be used in a
transport vehicle such as an airborne transport vehicle that may be subjected
to unexpected impact including bird strikes. (Spec. 1, 11. 1-25.)
Claim 1, the only independent claim on appeal, is representative and
reproduced below from the Claims Appendix to the Appeal Brief:
1. A glazing, comprising:
a glass substrate;
a complex sheet comprising a plastic comprising a
plasticized polyvinyl butyral layer and a polyester film
comprising a scratch-resistant and abrasion-resistant coating;
and
an adhesive layer of thermoplastic polyurethane between
the glass substrate and the polyvinyl butyral layer of the
complex sheet,
wherein an adhesion of the polyester film to the
plasticized polyvinyl butyral layer, measured by exerting on a
1 cm wide strip of the polyester film a tensile force
perpendicular to the surface of the glazing with a pull rate of
5 cm/min, is at least equal to 3 daN/cm.
(Appeal Br. i, Claims Appendix.)
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REJECTIONS
The Examiner rejected claims 1-12, 15, 16, 21, and 22 as follows:
1. Claims 1-12, 15, 16, 21, and 22 under 35 U.S.C. § 112(a) or under
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply
with the enablement requirement.
2. Claims 1-7, 11, 12, 15, and 16 under pre-AIA 35 U.S.C. § I02(b)
anticipated by or, in the alternative, under pre-AIA 35 U.S.C.
§ I03(a) as obvious over Chaussade et al., (US 5,763,089, issued
June 9 1998 "Chaussade")·
' ' '
3. Claim 8 under pre-AIA 35 U.S.C. § I03(a) as obvious over
Chaussade and Chopinet et al., (US 6,333,285 Bl, issued
December 25, 2001, "Chopinet");
4. Claims 9, 10, 21, and 22 under pre-AIA 35 U.S.C. § I03(a) as
obvious over Chaussade and Cid-Aguilar et al., (US 2005/0233891
Al, published on October 20, 2005, "Cid-Aguilar");
5. Claims 1-7, 11, 12, 15, and 16 under pre-AIA 35 U.S.C. § I03(a)
as obvious over Chaussade, Nose et al. (US 4,605,591, issued
August 12, 1986, "Nose"), Greenan et al., (US 2009/0279004 Al,
published on November 12, 2009, "Greenall"), and Cunningham et
al. (US 4,208,468, issued June 17, 1980, "Cunningham");
6. Claim 8 under pre-AIA 35 U.S.C. § I03(a) as obvious over
Chaussade, Nose, Greenan, Cunningham, and Chopinet;
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7. Claims 9, 10, 21, and 22 under pre-AIA 35 U.S.C. § 103(a) as
obvious over Chaussade, Nose, Greenall, Cunningham, and Cid-
Aguilar,
8. Claims 1-7, 11, 12, 15, and 16 under the ground ofnonstatutory
double patenting as being unpatentable over claims 1-21 of
Chaussade; and
9. Claims 1-7, 11, 12, 15, and 16 under the ground ofnonstatutory
double patenting as being unpatentable over claims 1-21 of
Chaussade in view of Nose, Greenall, Cunningham, and Cid-
Aguilar.
(Ans. 2-22.)
Appellants additionally rely on the Declaration Under 37 C.F.R.
§ 1.132 of Pierre Chaussade, dated July 25, 2016 ("Chaussade Deel.").
Rejection 1-Enablement
ISSUE
The Examiner found that the Specification is not enabling for the full
scope of the claims, because the claims read on complex sheets
encompassing innumerable types of polyester films and plasticized
polyvinyl butyral layers, requiring undue experimentation due to the
quantity of experimentation necessary, the lack of direction of guidance
presented, and the absence of working examples in the Specification.
(Ans. 3--4.) In particular, the Examiner found that the claimed relationship
between the polyester film and plasticized polyvinyl butyral layer is
described only by a physical property (adhesion) without any correlation
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between the property and the structure of the polyester film and plasticized
polyvinyl butyral layer. (Ans. 4.)
The Examiner found that although the Specification discloses two
tradenames for glazings that meet the adhesion recited in the claims, the
Specification does not disclose the details pertaining to the type and amount
of plasticizer or specify what adhesive bonding treatment was performed on
the polyester layer. (Ans. 4.) In addition, the Examiner found that the
Specification states that plasticized PVB layers having the SAFLEX®
tradenames are suitable, however Appellants argue there are plasticized PVB
falling under the SAFLEX® tradename that do not meet the claimed
adhesion. (Ans. 4--5.) The Examiner points out that Appellants argue that
the type and amount of plasticizer and the adhesion surface treatment of the
polyester can affect the adhesion property, but no guidance is provided in the
Specification regarding these features. (Ans. 5.)
Appellants argue the Specification discusses suitable PE and PVB
materials, includes working examples that illustrate the specific PE films and
PVB layers and their adhesion strengths such that the Specification clearly
teaches those of skill in the art that the adhesion between the PE film and the
PVB layer is a function of plasticizer type, the plasticizer content, and the
presence of adhesion treatment to the PE film. (Appeal Br. 7-10.)
Appellants argue the Examiner neglects the information that a person of skill
in the art would already know. (Appeal Br. 11-12.)
Accordingly, the issue with respect to this rejection on appeal is:
Have Appellants identified reversible error in the Examiner's
determination that the Specification is not enabling for the scope of the
claims?
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DISCUSSION
Appellants do not argue any claim with particularity. (Appeal Br. 5-
13.) Accordingly, we select claim 1 as representative for disposition of this
rejection. 37 C.F.R. § 4I.37(c)(l)(iv).
"To satisfy the enablement requirement of§ 112, ,r 1, a patent
application must adequately disclose the claimed invention so as to enable a
person skilled in the art to practice the invention at the time the application
was filed without undue experimentation." In re Swartz, 232 F.3d 862, 863
(Fed. Cir. 2000) (citation omitted). The scope of the claims must not be
broader than the scope of the enabling description in the specification. See
Nat'! Recovery Tech., Inc. v. Magnetic Separation Systems, Inc., 166 F.3d
1190, 1196 (Fed. Cir. 1999). "The scope of enablement, in tum, is that
which is disclosed in the specification plus the scope of what would be
known to one of ordinary skill in the art without undue experimentation."
Id. ( citation omitted).
To determine whether the necessary experimentation is undue, we
look at factors including "(1) the quantity of experimentation necessary, (2)
the amount of direction or guidance presented, (3) the presence or absence of
working examples, ( 4) the nature of the invention, ( 5) the state of the prior
art, ( 6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims." In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988).
We are not persuaded by Appellants' arguments that the Specification
provides enablement for the full scope of the claims. The Specification sets
forth "suitable" plasticized PVB sold under the name SAFLEX® or under
the name BUTACITE®, giving only example thicknesses as defining
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structural characteristics of the plasticized PVB. (Spec. p. 8, 11. 6-10.) For
the polyester film, the Specification again only discloses the thickness of the
polyester film and hard organopolysiloxane coating. (Spec. p. 8, 11. 12-14.)
The Specification states that a prefabricated complex sheet according to the
invention is sold "under the name SP ALLSHIELD® by the company DU
PONT DE NEMOURS." (Spec. p. 8, 11. 16-27.) In the Example, the
Specification discloses three complex sheets of plastic falling under the
SP ALL SHIELD® trademark, SP ALL SHIELD® BE 1028-157 disclosed as
not in accordance with the invention, and SP ALLSHIELD® SG2-157 and
SP ALLSHIELD® SG-307 disclosed as being in accordance with the
invention. (Spec. p. 9, 11. 1-35.)
Importantly, although the Specification discloses that
SP ALL SHIELD® BE 1028-157 "has a PVB that is different in the nature
and the content of the plasticizer that it contains, and its varnished PET
[polyethylene terephthalate] sheet has not been subjected, on its face
intended to adhere to the plasticized PVB, to the same adhesive bonding
treatment as that of the two other complex sheets" (Spec. p. 9, 11. 19-25), the
Specification does not provide sufficient description or guidance as to what
aspects of the nature and content of the plasticizer or the adhesive bonding
treatment lead to the difference in adhesion properties. Thus, while the
Specification provides enablement for use of the particular complex sheets
in the examples disclosed therein, we agree with the Examiner that the
Specification does not provide a sufficient amount of direction or guidance
to enable one of ordinary skill in the art to make and use the complex sheets
beyond those two examples disclosed in the Specification and commensurate
in scope with claim 1.
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Although we acknowledge that the knowledge of one of ordinary skill
in the art must be accounted for, in this case, we have not been directed to
sufficient evidence that one of ordinary skill art would have been able to
ascertain the necessary characteristics of the nature and content of the
plasticizer or the adhesive bonding treatment that lead to the adhesion
recited in the claims based on the mere disclosure SP ALLSHIELD® SG2-
157 and SPALLSHIELD® SG-307 as complex sheets. This is particularly
so in view of the Specification's generic disclosure that SP ALLSHIELD®
complex sheets are suitable, where according to the examples, not all
SPALLSHIELD® complex sheets result in the claimed adhesion. For these
reasons, we are not persuaded by Appellants' argument that the common
structural features shared by polyesters and polyvinyl butyral layers would
function similarly or that the Examiner has not shown the art of safety
glazings is unpredictable. (Reply Br. 3, 6.) In this case, the amount of
direction and guidance combined with the breadth of the claims are
determinative.
Accordingly, we affirm the Examiner's rejection of claims 1-12, 15,
16, 21, and 22 under 35 U.S.C. § 112(a) or under 35 U.S.C. § 112 (pre-
AIA), first paragraph, as failing to comply with the enablement requirement.
Rejection 2-Anticipation/Obviousness - Chaussade alone
The Examiner found that Chaussade discloses a glazing as recited in
claim 1, but Chaussade does not explicitly disclose the adhesion of the
polyester film to the polyvinyl butyral layer of at least equal to 3 daN/cm as
recited in the claim. (Ans. 7-8.) The Examiner found that because
Chaussade discloses the identical polyester film and plasticized polyvinyl
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butyral layer as utilized in the present invention (i.e., SAFLEX®), that the
adhesion recited in claim 1 is inherent. (Ans. 8.)
Appellants contend Chaussade does not disclose that the adhesion
strength between the PE film and the plasticized PVB layer recited in the
claims would necessarily be produced as evidenced by the present
Specification and the Chaussade Declaration. (Appeal Br. 15-22, 27-28.)
Appellants argue Chaussade does not recognize the adhesion strength
between the PET and PVB layers, but rather, only discusses adhesion
between the glass substrate and the PVB layer of the complex sheet, and as a
result, the modification of such adhesion strength would not have been
obvious. (Appeal Br. 28-29.)
Accordingly, the issue with respect to this rejection is: Did the
Examiner reversibly err in finding that the adhesion between the polyester
film and plasticized polyvinyl butyral layer recited in claim 1 is inherent in
the polyester film and plasticized polyvinyl butyral layers disclosed in
Chaussade?
DISCUSSION
We agree with Appellants that sufficient evidence does not support
the Examiner's position that glazings disclosed in Chaussade would
inherently possess the adhesion between the polyester film and plasticized
polyvinyl butyral layer recited in claim 1. The Examiner's reasoning is
based on the position that both Chaussade and the Specification disclose
similar polyester layers and the plasticized PVB. In particular, the Examiner
points to Chaussade ( col. 5, claim 2) and the Specification (p. 8, 11. 16-17)
for the use of PET as the polyester and the disclosure of SAFLEX® as the
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plasticized PVB in both Chaussade (col. 3, 11. 31-32) and in the present
Specification (p. 8, 11. 6-7 .)
As discussed above, however, the Specification states that although
complex sheets including PET and PVB under the name SP ALLSHIELD®
may be used (Spec. 8, 11. 16-27), the Specification also provides examples
that not all complex sheets under the name SP ALLSHIELD® achieve the
adhesion recited in claim 1 due to a different plasticizer included in the PVB
layer and a PET sheet that has been subjected to a different adhesive
bonding treatment. (Spec. 9, 11. 3-27; Chaussade Deel. ,r,r 2-7.) Thus,
although there is no indication that plasticized PVBs under the SAFLEX®
( or BUTACITE®) tradename are used in the SP ALLSHIELD® complex
sheets, the Specification provides evidence that not all materials falling
under the general tradenames disclosed therein would necessarily provide
the adhesion characteristics recited in claim 1. Therefore, we agree with
Appellants that the general disclosure of a PET film and SAFLEX®
plasticized PVB layer in Chaussade is insufficient to support a prima facie
case of inherency in view of the express disclosure in the Specification that
there are combinations of materials, falling within the SP ALLSHIELD®
tradename (also disclosed in Chaussade as preferable in col. 3, 11. 44--50)
that fail to meet the recited adhesion requirement. (See Chaussade Deel.
,r,r 4, 8.)
Accordingly, we reverse the Examiner's rejection of claims 1-7, 11,
12, 15, and 16.
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Rejections 3 and 4
Rejections 3 and 4 are directed to dependent claims 8 and 9, 10, 21,
and 22, respectively. These rejections rely on the position that Chaussade
inherently discloses the adhesion between the polyester film and plasticized
polyvinyl butyral layer recited in claim 1. The addition of Chopinet in
Rejection 3 and Cid-Aguilar in Rejection 4 fail to remedy the deficiencies in
Chaussade discussed above. Accordingly for similar reasons as discussed
above, we reverse the Examiner's rejections of claims 8-10, 21, and 22 as
set forth in Rejections 3 and 4.
Rejection 5 - Obviousness-Chaussade, Nose, Greenall, Cunningham
The Examiner found that Chaussade discloses the glazing recited in
claim 1, with the exception that Chaussade does not explicitly disclose the
adhesion of the polyester film to the polyvinyl butyral layer recited in claim
1. (Ans. 13.) The Examiner found that Nose discloses that a polyester layer
can be subjected to corona discharge treatment to improve adhesion
properties, Greenan discloses that the amount of plasticizer in PVB
influences adhesion properties, and Cunningham discloses that the amount
of plasticizer depends on the acceptable adhesion required and type of
plasticizer employed. (Ans. 13-14.) The Examiner determined it would
have been obvious to subject the bonding surface of the polyester layer in
Chaussade to corona discharge treatment as well as to vary the amount and
type of plasticizer in the PVB layer in Chaussade "in order to obtain
improved and desired adhesion between polyester film and plasticized PVB
layer including that presently claimed." (Ans. 14.)
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Appellants argue the Examiner does not set forth adequate reasoning
as to why one of ordinary skill in the art would have modified Chaussade as
in the rejection because Chaussade does not disclose that the adhesion
between the PE film and the PVB layer is a result-effective variable and it
was the present inventors who discovered that increasing the adhesion
between the PE film and the PVB layer provides a better lasting impact
resistance. (Appeal Br. 33-34.) Appellants argue Nose, Greenan, and
Cunningham fail to provide support for the Examiner's rationale. (Appeal
Br. 34.) Appellants contend Nose discloses a thermoplastic resin laminate
including a polyester film that has nothing to do with glazings, but, rather,
relates to increasing adhesion between a polyester film and a polyester resin
composition of a specific copolymer and inorganic particles such that Nose
is nonanalogous art. (Appeal Br. 34--37 .) Appellants contend Greenan is
concerned with plasticizer migration into LCD films that disposed in an
interlayer, which is not related to the present application or Chaussade such
that one of ordinary skill in the art would not have looked to Greenan in
modifying Chaussade absent hindsight. (Appeal Br. 37-39.) Appellants
argue Cunningham does not disclose a plasticized PVB layer, and that
Cunningham fails to disclose a difference in adhesion between the PVB
layer and PE film, which are not in direct contact. (Appeal Br. 39.) As a
result, Appellants argue one of ordinary skill in the art would not have been
motivated to modify the PVB layer of Chaussade based on Cunningham's
disclosure relating to PVC and PE films separated by a plasticizer free
(meth)acrylic acid layer. (Appeal Br. 39.)
Accordingly, the dispositive issue with respect to this rejection is:
Did Appellants identify reversible error in the Examiner's position that the
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adhesion between the polyester film and plasticized polyvinyl butyral layer
recited in claim 1 would have been obvious over Chaussade, Nose, Greenan,
and Cunningham?
DISCUSSION
We agree with Appellants that the Examiner's position is not
sufficiently supported by the record. That is, as Appellants point out,
Chaussade does not provide any disclosure with respect to adhesion between
the polyester film and PVB layer. (Appeal Br. 33; Chaussade, col. 1, 1. 54-
col. 2, 1. 7, col. 3, 1. 26- col. 4, 1. 9.) Although Nose discloses improving
adhesion between a thermoplastic resin film and a polyester resin through a
corona electric discharge treatment of the polyester resin composition in
order to improve adhesion (col. 11, 11. 51-62), there is no indication such a
treatment would be desirable in Chaussade or that such a treatment would
result in the adhesion between the polyester film and plasticized polyvinyl
butyral layer recited in claim 1. (See Appeal Br. 35-37.) Likewise,
although Greenan and Cunningham disclose that the amount of plasticizer
influences adhesion in laminates (Greenan ,r 31; Cunningham, col. 2, 1. 64 -
col. 3, 1. 3), neither provides any guidance as to the amount of adhesion
between the polyester film and plasticized polyvinyl butyral layer that would
have been desirable for the glazings such as those recited in claim 1.
Thus, the Examiner's rationale for combining Chaussade, Nose,
Greenan, and Cunningham to achieve the adhesion between the polyester
film and plasticized polyvinyl butyral layer recited in claim 1 is not based on
sufficient rationale underpinnings. "'[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
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legal conclusion of obviousness.'" KSR Int 'l. Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
As a result, we reverse the Examiner's rejection of claims 1-7, 11, 12,
15, and 16.
Rejections 6 and 7
Rejections 6 and 7 are directed to dependent claims 8 and 9, 10, 21,
and 22, respectively. These rejections rely on the position that Chaussade in
combination with Nose, Greenan, and Cunningham renders the adhesion
between the polyester film and plasticized polyvinyl butyral layer recited in
claim 1 obvious. The addition of Chopinet in Rejection 6 and Cid-Aguilar
in Rejection 7 fail to remedy the deficiencies in the combination of
Chaussade, Nose, Greenan, and Cunningham discussed above. Accordingly,
for similar reasons as discussed above, we reverse the Examiner's rejections
of claims 8-10, 21, and 22 as set forth in Rejections 6 and 7.
Rejections 8 and 9 - Double Patenting
The Examiner relies on similar reasoning for the double patenting
rejections as discussed above for Rejections 2 and 5. (Compare Ans. 7-9
and 13-14 with Ans. 19-22.)
For similar reasons as discussed above for Rejections 2 and 5, we
reverse Rejections 8 and 9.
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DECISION
We affirm the Examiner's decision rejecting claims 1-12, 15, 16, 21,
and 22 under 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to
comply with the enablement requirement.
We reverse all of the other rejections on appeal.
TIME PERIOD
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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