Guido Hitschmann et al.

Patent Trials and Appeals Board

Jan 29, 2021

2020000823 (P.T.A.B. Jan. 29, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/522,363 08/29/2012 Guido Hitschmann 65222US004 2772
32692 7590 01/29/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
DAGENAIS-ENGLEHA, KRISTEN A
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
01/29/2021 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 GUIDO HITSCHMANN, STEFFEN TRASER,
JAN D. FORSTER, and BERND KUEHNEWEG
Appeal 2020-000823
Application 13/522,363
Technology Center 1700
Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 6, 8–12, 14–16, 24, and 27. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as 3M Company.
Appeal Br. 2.
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Application 13/522,363

2
CLAIMED SUBJECT MATTER
The claims are directed to a continuous process for forming a
multilayer film.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A process of forming a multilayer film comprising at least two
superimposed polymer layers comprising the steps of:
(i) providing a substrate;
(ii) providing two or more coating knives which are offset,
independently changeable and adjustable from each other, from
said substrate to form two or more independently adjustable gaps
normal to the surface of the substrate, the coating knives forming
one or more coating chambers abutting each other;
(iii) moving the substrate relative to the coating knives in
a downstream direction;
(iv) providing two or more curable liquid precursors of the
polymers to the upstream side of the coating knives thereby
coating the two or more curable liquid precursors through the
respective gaps as superimposed layers onto the substrate,
wherein the coating knives are arranged such that a lower layer
and an adjacent upper layer of the two or more curable liquid
precursors are simultaneously formed, and the lower layer is
directly covered by the adjacent upper layer when the layers are
formed without exposing an upper surface of the lower layer and
an adjacent surface of the upper layer; and
(v) curing the precursors of the multilayer film thus
obtained,
wherein the process is a continuous self-metered process,
a volume flow rate of the continuous self-metered process is
variable with a substrate speed, and the process is not a pre-
metered process in which the volume flow rate of the curable
liquid precursors is predetermined by a fluid metering device and
not variable with the substrate speed,
wherein the liquid precursors of the polymers are provided
in the coating chambers, being bordered in downstream direction
by at least one of a front wall, one or more intermediate walls,
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Application 13/522,363

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and a back wall, and a rolling bead is positioned upstream
relative to the front wall, and
wherein a solid film is applied along an upstream surface
of the back wall, extends through a most downstream coating
chamber, and is attached to an upper surface of a top layer of the
liquid precursors of the multilayer film simultaneously with the
formation of the top layer.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Zimmerman US 4,818,610 Apr. 4, 1989
Kustermann US 5,078,081 Jan. 7, 1992
Kulper US 2007/0173156 A1 July 26, 2007
Tkacik US 2008/0004205 A1 Jan. 3, 2008

REJECTIONS
Claims 1, 6, 8–12, 14–162 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined prior art of Zimmerman and Tkacik.
Final Act. 3.
Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combined prior art of Zimmerman, Tkacik, and Kulper. Final Act.
7.

2 We consider it harmless error that the Examiner inadvertently omitted
claim 16 from the statement of this rejection (compare Final Act. 3 to Final
Act. 7 that explicitly refers to claim 16).
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Claim 273 is rejected 35 U.S.C. § 103(a) as being unpatentable over
the combined prior art of Zimmerman, Tkacik, and Kustermann. Final Act.
8.
OPINION
After considering the evidence presented in this Appeal and each of
Appellant’s arguments, we are not persuaded that Appellant identifies
reversible error. We review the appealed rejections for error based upon the
issues identified by Appellant and in light of the arguments and evidence
produced thereon. In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011)
(explaining the Board’s long-held practice of requiring Appellant to identify
the alleged error in the Examiner’s rejection). We sustain the Examiner’s
rejections for the reasons expressed in the Final Office Action and the
Answer.
We add the following primarily for emphasis.
Appellant’s main argument is that there is no reason to modify
Zimmermann’s method using sequentially cast layers onto a moving base
layer substrate and instead use a co-casting method to form these layers such
as exemplified in Tkacik (Appeal Br. 4–6). Appellant also argues that
Tkacik teaches away from sequentially cast layers, and would render
Zimmerman unsatisfactory for its intended purpose (Appeal Br. 6; Reply Br.
2). Appellant’s arguments are not persuasive of reversible error for reasons
presented by the Examiner (Ans. 9–13).

3 We consider it harmless error that the Examiner inadvertently stated claim
24 instead of claim 27 in the statement of this rejection (compare Final Act.
8 to Final Act. 9 that explicitly refers to claim 27).
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It is well established that a prior art reference must be considered in
its entirety, i.e., as a whole, when determining if it would lead one of
ordinary skill in the art away from the claimed invention. W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983); In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (whether a reference teaches
away from a claimed invention is a question of fact).
One of ordinary skill in the art would have inferred and readily
appreciated that a known co-casting technique, such as taught in Tkacik to
be an alternative to the sequential casting technique of Zimmerman, may be
useful in making the multilayer pressure sensitive adhesive tape of
Zimmerman (e.g., Ans. 5, ). Indeed, Tkacik explicitly discusses that a
multilayer structure may be formed by either co-casting or sequentially cast
layers (Tkacik, e.g., ¶¶ 51, 58). Thus, an artisan of ordinary skill would have
weighed the advantages and disadvantages of these two known techniques.
“The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000).
Likewise, Appellant’s argument that any modification based on
Tkacik “renders Zimmerman unsatisfactory for its intended purpose”
(Appeal Br. 6; Reply Br. 2) is also unpersuasive for the reasons given above,
mainly that co-casting and sequential casting are known (alternative)
methods to form multilayered products and the use of either one (or both)
methods would have been within the ordinary skill in the art. That is, the
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arguments fail to account for “the inferences and creative steps that a person
of ordinary skill in the art would employ.” See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
Thus, Appellant has not shown reversible error in the Examiner’s
obviousness determination of the claimed method. See KSR, 550 U.S. at 417
(the predictable use of known prior art elements or steps performing the
same functions they have been known to perform is normally obvious; the
combination of familiar elements/steps is likely to be obvious when it does
no more than yield predictable results); Ball Aerosol & Specialty Container,
Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the
flexible inquiry set forth by the Supreme Court, the PTO must take account
of the “inferences and creative steps,” as well as routine steps, that an
ordinary artisan would employ) (emphasis omitted).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, as well as all claims dependent thereon, noting that no claims are
separately argued, even those separately rejected (Appeal Br. generally).
Thus the Examiner’s § 103 rejections of claims 24 and 27 are likewise
sustained.
CONCLUSION
The Examiner’s § 103 rejections are affirmed.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 8–12,
14–16
103(a) Zimmerman,
Tkacik
1, 6, 8–12,
14–16

24 103(a) Zimmerman,
Tkacik, Kulper
24
27 103(a) Zimmerman,
Tkacik,
Kustermann
27
Overall
Outcome
1, 6, 8–12,
14–16, 24,
27

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED