3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Sep 4, 2020

2019005743 (P.T.A.B. Sep. 4, 2020)

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.
14/603,851 01/23/2015 Michael A. Johnson 63470US013 3040
32692 7590 09/04/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
SHOSHO, CALLIE E
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
09/04/2020 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 MICHAEL A. JOHNSON, FRANK A. BRANDYS,
KENT E. NIELSEN, CHARLIE C. HO,
and VIJAY RAJAMANI
Appeal 2019-005743
Application 14/603,851
Technology Center 1700
Before MASHID D. SAADAT, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, 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 7–26. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as 3M Company
(formerly known as Minnesota Mining and Manufacturing Company).
Appeal Br. 2.
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We AFFIRM.
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to paint films or paint
production films that could be used, for example, as an aesthetically pleasing
coating for vehicles. Spec. 1–2. Claim 7 is illustrative, and we reproduce
claim 7 below while adding emphasis to recitations at issue on appeal:
7. A multilayer article comprising:
a thermoformable substrate having a bottom surface and
a top surface;
a base layer having a bottom surface and a top surface,
the bottom surface of the base layer adhered to the top surface
of the thermoformable substrate, and wherein the base layer
comprises a first polymeric material; and
an optional transparent protective layer having a bottom
surface and a top surface, the bottom surface of the transparent
protective layer contacting and permanently adhered to the top
surface of the base layer, and wherein the transparent protective
layer comprises a second polymeric material,
wherein the polymeric material of at least one of the base
layer and the transparent protective layer comprises a
polyurethane, with the polyurethane having hard segments
in an amount in the range of from 35 to 65 percent by
weight,
wherein the polymeric material of at least one of the base
layer and the transparent protective layer is substantially
isotropic, and
wherein the bottom surface of the base layer is
permanently adhered to the top surface of the thermoformable
substrate either by an adhesive or by contacting and being

2 In this Decision, we refer to the Final Office Action dated October 26,
2018 (“Final Act.”), the Appeal Brief filed April 26, 2019 (“Appeal Br.”),
the Examiner’s Answer dated May 24, 2019 (“Ans.”), and the Reply Brief
filed July 24, 2019 (“Reply Br.”).
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Application 14/603,851

3
covalently bonded to the top surface of the thermoformable
substrate.
Appeal Br. 10 (Claims App.) (emphasis added).

REJECTION AND REFERENCE
On appeal, the Examiner maintains the rejection of claims 7–26 under
35 U.S.C. § 103 as obvious over Johnson, US 5,122,560, issued June 16,
1992.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 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 Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant argues all claims as a group. See Appeal Br. 5–9. Therefore,
consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit
our discussion to claim 7, and all other claims on appeal stand or fall
together with claim 7.
The Examiner rejects claim 7 as obvious in view in Johnson. Ans. 3.
The Examiner finds, for example, that Johnson teaches 1–5 wt% OH-
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4
containing carboxylic acid and 5–35 wt% polyester urethane. Ans. 4 (citing
Johnson). We note that Johnson actually teaches 5–30 wt% polyester
urethane. Johnson 3:45–56; see also Reply Br. 2.3 The Examiner finds that
Johnson thus teaches 10–40% hard segments (or at least 10–35 wt% hard
segments if 30 wt% maximum polyester is used in the calculation) which
overlaps the claimed range of 35–65 wt%. Ans. 3–4.
Appellant’s arguments focus on whether or not Johnson teaches or
suggests claim 1’s recitation of “the polyurethane having hard segments in
an amount in the range from 35 to 65 percent by weight.” Appeal Br. 5–9.
As Appellant states, the Specification explicitly defines hard segment weight
percent as follows:
As used herein: wt% means percent by weight based on the
total weight of material, and
Hard Segment wt%= (weight of short chain diol and polyol +
weight of short chain di- or polyisocyanate)/total weight of resin
wherein:
short chain diols and polyols have an equivalent weight ≤
185 g/eq, and a functionality ≥ 2; and
short chain isocyanates have an equivalent weight ≤ 320
g/eq and a functionality ≥ 2.
Spec. 19:26–20:2.
Appellant argues that each example of Johnson has a lower percent of
hard segments than claim 1’s recited 35 to 65 percent by weight. Appeal Br.
5–7. This argument is unpersuasive because the Examiner’s rejection relies
upon Johnson’s broader teachings rather than Johnson’s specific examples.

3 This error is harmless because, as we explain, Appellant does not establish
error in the Examiner’s overall finding that Johnson teaches “polyurethane
having hard segments in an amount in the range of from 35 to 65 percent by
weight.”
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Ans. 5–6. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1370 (Fed. Cir.
2007) (“all disclosures of the prior art, including unpreferred embodiments,
must be considered”) (internal quotes and citation omitted).
Appellant also argues that the Examiner does not establish 35 percent
hard segments because Johnson’s broader teachings do not distinguish
between short chain and long chain diols/isocyanates. Appeal Br. 8. The
Examiner, however, explains how Johnson teaches that both its 1–5%
carboxylic acid and 5–30% polyisocyanate components are “short chain”
within the Specification’s meaning of the term “short chain.” Ans. 6–7.
With respect to Johnson’s 1–5% “hydroxyl containing
monocarboxylic acid,” the Examiner finds that the hydroxyl containing
monocarboxylic acid has weight and functionality within the Specification’s
definition of short chain. Ans. 6–7. Appellant argues that the OH-containing
carboxylic acid is not a short chain because “a carboxylic acid group is
generally not considered a polyol group.” Reply Br. 1–2. Although
Appellant’s statement may be accurate with respect to carboxylic acid
groups and polyol groups, Appellant does not address the issue at hand: is a
hydroxyl containing monocarboxylic acid (i.e., the entire molecule not just a
group within a molecule) a polyol? Because the acid is “hydroxyl
containing,” the preponderance of the evidence supports finding that
Johnson’s acid includes a –OH group and is thus a polyol. Appellant
presents no persuasive argument or evidence to the contrary.
With respect to Johnson’s polyisocyanate, the Examiner finds that
Johnson’s dihydroxy succinic acid is the same as Desmodur N 3390 as
disclosed in Appellant’s Specification. Ans. 6–7; Spec. 18:25–19:11. The
Examiner thus finds that Johnson’s polyisocyanate is short chain within the
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Specification’s definition. Ans. 6–7. Appellant does not persuasively dispute
these particular findings. Appellant instead argues that Johnson only teaches
trifunctional isocyanate (i.e., Desmodur N3390) in an amount from 0–15%
by weight. Reply Br. 2. Appellant’s argument is unpersuasive because
Johnson’s reference to “0–15% by weight of a trifunctional isocyanate” is
merely a preferred embodiment. Johnson 3:51–56 (“Preferably … 0–15% by
weight of a trifunctional isocyanate are used”). Johnson more broadly
teaches 5–30% of organic polyisocyanate (Johnson 3:45–51), and the
Examiner appropriate relied upon this broader teaching. See, e.g., Pfizer,
Inc., 480 F.3d at 1370.
Based on the above, the Examiner established by a preponderance of
the evidence that Johnson teaches up to 5% by weight of a short chain polyol
(the hydroxyl containing monocarboxylic acid) and up to 30% by weight of
short chain polyisocyanate. Johnson 3:45–56. The Examiner thus establishes
that Johnson teaches up to 35% by weight hard segments based upon the
Specification’s definition. This percentage overlaps with claim 7’s recitation
of “35 to 65 percent be weight.” The overlapping range is sufficient to
establish prima facie obviousness. See In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003) (“even a slight overlap in range establishes a prima facie
case of obviousness.”); see also, e.g., In re Woodruff, 919 F.2d 1575, 1577
(Fed. Cir. 1990) (affirming obviousness determination based upon prior art
reference whose disclosed range (“about 1–5%” carbon monoxide) abutted
claimed range (“more than 5% to about 25%” carbon monoxide)).
Appellant further argues that a higher percent of hard segments
provide better scratch resistance. Appeal Br. 7. Appellant, however, does not
argue unexpected results and does not present evidence sufficient to
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7
establish unexpected results. Ans. 6. Appellant’s argument, therefore, does
not persuasively weigh against the evidence of obviousness we address
above.
Because Appellant’s arguments do not identify Examiner error, we
sustain the Examiner’s rejection.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7–26 103 Johnson 7–26

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

AFFIRMED