Ex Parte Sakagami et alDownload PDFPatent Trial and Appeal BoardJul 13, 201612672682 (P.T.A.B. Jul. 13, 2016) Copy Citation 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 2 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."). 3 Appeal2015-002609 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. 4 Appeal2015-002609 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 5 Appeal2015-002609 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. 6 Copy with citationCopy as parenthetical citation