Ex Parte Sakagami et al

Patent Trial and Appeal Board

Jul 13, 2016

12672682 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/672,682 02/08/2010 Toshinori Sakagami
22850 7590 07115/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
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.
438514US 1742
EXAMINER
HANDVILLE, BRIAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
07/15/2016 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
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHINORI SAKAGAMI and AK.IRA SHIMIZU
Appeal2015-002609
Application 12/672,682
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3---6, 9, 12, 13, 16, 19, and 20. We have
jurisdiction. 35 U.S.C. § 6(b ).
We REVERSE.
1 According to the Appellants, the Real Party in Interest is JAPAN
COLORING CO., LTD. Appeal Br. 1.
Appeal2015-002609
Application 12/672,682
STATEMENT OF THE CASE
Appellants describe the present invention as relating to an "over-
sheet" for a plastic card such as a credit card. Spec. i-fi-f l and 3. Appellants
explain that the invention permits the over-sheet to be marked with a laser in
high quality. Id. i17. Claim 1 is the only independent claim on appeal and is
reproduced below with emphasis added to highlight disputed claim
limitations:
1. An over-sheet for a card, comprising at least three layers
including two skin layers and a core layer, each of the two skin layers
being an outermost layer of the over-sheet, the at least three layers
being laminated by a coextrusion technique,
wherein each of the two skin layers is formed of an amorphous
aromatic polyester-based resin composition comprising:
a copolymerized polyester resin formed of:
a dicarboxylic acid unit containing, as a
main component, terephthalic acid unit; and
a glycol unit contammg, as a main
component, an ethylene glycol unit (I) and 1,4-
cyclohexanedimethanol unit (II), an amount of the
ethylene glycol unit (I) and an amount of the 1,4-
cyclohexanedimethanol unit (II) having a relation
of (I)/(II) = 90 to 30 I 10 to 70 mol %; and
at least one lubricant selected from the group of fatty acid ester,
fatty acid amide, and fatty acid metal salt, an amount of the lubricant
being 0. 01 to 3 parts by mass with respect to 100 parts by mass of the
copolymerized polyester resin,
wherein the core layer is transparent, and formed of a
polycarbonate resin which is transparent,
wherein the core layer contains 0.0001 to 1 parts by mass of
carbon black, which is an energy absorber, or 0.0001 to 3 parts by
mass of a mixture of carbon black and at least one selected from the
group consisting of metal oxide, metal sulfate, metal carbonate and
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Appeal2015-002609
Application 12/672,682
metal silicate having an average particle size of less than 50 nm with
respect to 100 parts by mass of the polycarbonate resin, and
wherein a total thickness of the over-sheet is 50 to 150 µm, a
percentage of a thickness of the core layer in the total thickness of the
over-sheet is 25% or more and less than 50%, and a total light
transmittance of the over-sheet is 80 % or more.
Appeal Br. 2 13-14 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Ishida et al. US 2006/0182922 Al Aug. 17, 2006
(hereinafter "Ishida")
Tasaki et al. US 2007/0032601 Al Feb. 8, 2007
(hereinafter "Tasaki")
Bennett et al. US 2008/0076065 Al Mar. 27, 2008
(hereinafter "Bennett")
Aoshima US 2008/0193685 Al Aug. 14, 2008
JP 2007-210166 Aug 1, 2007
Yuhsin Tsai et al., Poly(ethylene terephthalate) Copolymers That Contain 5-
tert-Butylisophtalic Acid and 1-311-4-Cyclohexanedimethanol: Synthesis,
Characterization, and Properties, 104 J. APPL. POLYM. SCI., 279-285
(2007) (hereinafter "Tsai").
2 In this decision, we refer to the Final Office Action mailed February 20,
2014 ("Final Act."), the Appeal Brief filed July 9, 2014 ("Appeal Br."), the
Examiner's Answer mailed October 22, 2014 ("Ans."), and the Reply Brief
filed December 18, 2014 ("Reply Br.").
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Application 12/672,682
REJECTIONS
The Examiner withdrew the rejection of claims 1-20 under 35 U.S.C.
§ 112, first paragraph and the rejection of claims 1, 2-11, 13, and 15-20
under 35 U.S.C. § 112, second paragraph. Ans. 2. Claims 2, 7, 8, 10, 11,
14, 15, 17, and 18 have been cancelled. Appeal Br. 13-16 (Claims
Appendix).
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1 and 4 under 35 U.S.C. § 103 as unpatentable
over JP 2007-210166 (hereinafter, "JP '166") in view of Tsai and further in
view of Tasaki. Ans. 3.
Rejection 2. Claims 3 and 9 under 35 U.S.C. § 103 as unpatentable
over JP '166 in view of Tsai in further view of Tasaki and further in view of
Aoshima. Id. at 8.
Rejection 3. Claims 5 and 13 under 35 U.S.C. § 103 as unpatentable
over JP '166 in view of Tsai in further view of Tasaki and further in view of
Bennett. Id. at 9.
Rejection 4. Claims 6 and 20 under 35 U.S.C. § 103 as unpatentable
over JP '166 in view of Tsai in further view of Tasaki and further in view of
Ishida. Id. at 12.
Rejection 5. Claim 12 is rejected as unpatentable over JP '166 in
view of Tsai in further view of Tasaki, Aoshima, and Bennett. Id. at 13.
Rejection 6. Claim 16 is rejected as unpatentable over JP '166 in
view of Tsai in further view of Tasaki, Aoshima, and Ishida. Id. at 14.
Rejection 7. Claim 19 is rejected as unpatentable over JP '166 in
view of Tsai and Tasaki and further in view of Aoshima, and Ishida. Id. at
15.
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Application 12/672,682
ANALYSIS
Appellants argue that the cited prior art fails to disclose or suggest that
"a percentage of a thickness of the core layer in the total thickness of the
over-sheet is 25% or more and less than 50%" as recited in claim 1. Appeal
Br. 9--10. We agree that the Examiner has not established this point.
The Examiner finds that JP '166 teaches a core layer thickness from
0.15---0.7 mm and a total multilayer sheet thickness from 0.2-8 mm. Ans.
18-20; Final Act. 6-7; see also JP '166 i-fi-129--30. The Examiner reasons
that, "taking into consideration the highest and lowest values of the
thickness ranges disclosed by JP '166, the percentage of the thickness of the
core layer in the total thickness []ranges from 35 to 75%." Final Act. 7.
Reading the relevant passages of JP '166 as a whole, however, we agree
with Appellants that the reference teaches first layer/internal layer/second
layer thicknesses from 1:4:1 to 1: 10: 1 and that these thicknesses correspond
to core layer percent thicknesses from about 67% to about 83%. Appeal Br.
9; see also JP '166 i1 31, claim 1.
We find that a person of skill in the art following the teachings of the
JP '166 patent would have been inclined to follow the reference's teachings
when choosing internal layer thickness, total sheet thickness, and layer
ratios. One of skill could pick internal layer and sheet thicknesses within the
ranges taught by JP '166 (JP '166 i-fi-129--30) while also maintaining the
stated thickness composition ratios (JP '166 i131 ). The Examiner does not
provide persuasive reasoning as to why a person of skill in the art would
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Application 12/672,682
have been inclined to modify these teachings to meet the ratio recited in
claim 1. 3
We therefore do not sustain the Examiner's rejection of independent
claim 1. Because the Examiner does not apply the teachings of any of the
other cited prior art to address the thickness ratio of claim 1, we also do not
sustain the rejection of claims 3-6, 9, 12, 13, 16, 19, and 20 which each
depend from claim 1.
DECISION
For the above reasons, we reverse the Examiner's decision to reject
claims 1, 3---6, 9, 12, 13, 16, 19, and 20.
REVERSED
3 Appellants do not raise this point, but we also note that claim recites
that the "total thickness of the over-sheet is 50 to 150 µm [micrometers]."
Thus, the maximum total thickness permitted by claim 1 is 0.15 millimeters.
This corresponds to the minimum preferable inner layer thickness taught by
JP '166. JP '166 i-f 29. This constraint further suggests that a person of skill
would not have reached the recited ratio of claim 1 by following the
teachings of JP '166.
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