3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Dec 30, 2020

2020000697 (P.T.A.B. Dec. 30, 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.
14/761,751 07/17/2015 Ronald S. Steelman 69968US004 1141
32692 7590 12/30/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
WALSHON, SCOTT R
ART UNIT PAPER NUMBER
1796
NOTIFICATION DATE DELIVERY MODE
12/30/2020 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 RONALD S. STEELMAN and KEITH R. LYON
____________________

Appeal 2020-000697
Application 14/761,7511
Technology Center 1700
____________________

Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 1–3, 6, 8–16, and 18–26.
We have jurisdiction under 35 U.S.C. § 6(b).2
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies 3M Company as the real party in
interest. Appeal Brief (“Appeal Br.”) filed June 3, 2019, 2.
2 Our Decision additionally refers to the Specification (“Spec.”) filed July
17, 2015, and the Examiner’s Answer (“Ans.”) dated August 8, 2019.
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The subject matter on appeal relates to graphic film articles (see, e.g.,
claims 1, 19, and 26). The Specification describes graphic films for
applying designs to windows, buildings, pavements, or vehicles, such as for
advertising or decoration. Spec. 1:6–9. According to the Specification,
polyvinyl chloride (“PVC”) is conventionally used in graphic films due to its
advantageous properties. Id. at 1:17–19. However, PVC contains halogens,
which are in some cases undesirable for environmental reasons. Id. at 20–
22. The Specification also discloses that polyolefin films are advantageous
because they do not contain halogens. Id. at 1:23–24. Polyolefin films,
however, are difficult to image and may require an additional image
receptive layer, are more difficult to apply to contoured surfaces, and many
polyolefin films do not exhibit adequate weather resistance for extended
outdoor applications. Id. at 1:24–29.
In view of the above, the Specification discloses an article comprising
a film layer comprising a polymer blend including thermoplastic
polyurethane and a polyvinyl butyral, as well as an adhesive layer. Id. at
2:2–5.
Independent claims 1, 19, and 26 are illustrative and are reproduced
below from the Claims Appendix of the Appeal Brief.
1. A graphic film article comprising
a conformable, extruded film layer comprising a polymer
blend comprising a thermoplastic polyurethane and a polyvinyl
butyral;
an adhesive layer on a first major surface of the film
layer; and
an imageable surface that can receive an ink layer, on a
second major surface of the film layer opposite the first major
surface;
wherein the film layer further comprises a polyester
plasticizer.
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19. A graphic film article comprising
a conformable, extruded film layer comprising a polymer
blend comprising a thermoplastic polyurethane and a polyvinyl
butyral, wherein the film layer is less than 5 mil thick, the film
has a first major surface and a second major surface opposite
the first major surface, and at least one major surface is an
imageable film surface that can receive an ink layer.

26. A graphic film article comprising:
a conformable, extruded film layer comprising a polymer
blend comprising a thermoplastic polyurethane and a polyvinyl
butyral, wherein the film layer is outdoor weatherable, the film
has a first major surface and a second major surface opposite
the first major surface, and at least one major surface is an
imageable film surface that can receive an ink layer.

REJECTIONS ON APPEAL
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C. § 103:
I. Claim 26 as unpatentable over Guo3 and Hidetoshi;4
II. Claims 1, 2, 6, 11–16, and 19–26 as unpatentable over
Moriguchi5 and Abe;6 and
III. Claims 1–3, 6, 8–16, and 18–26 as unpatentable over
Guo in view of Volpp7 and Hidetoshi.

3 Guo et al., US 2009/0017287 A1, published Jan. 15, 2009 (“Guo”).
4 Hidetoshi, US 2006/0063673 A1, published Mar. 23, 2006.
5 Moriguchi et al, US 2010/0273012 A1, published Oct. 28, 2010
(“Moriguchi”).
6 Abe et al., US 2003/0180505 A1, published Sept. 25, 2003 (“Abe”).
7 Volpp et al., US 2008/0210287 A1, published Sept. 4, 2008 (“Volpp”).
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B. DISCUSSION
Rejection I
Claim 26 is rejected under 35 U.S.C. § 103 as being unpatentable over
Guo and Hidetoshi.
The Examiner finds that Guo discloses a melt processed film having
good weather resistance that includes a core layer and outer layers on either
side of the core layer. Ans. 3. The Examiner finds that Guo’s core layer
comprises thermoplastic polyurethane, polyvinyl butyral, or combinations
thereof. Id.
The Examiner finds that although Guo teaches its film as being
suitable for printing and graphics, Guo does not expressly teach that a
surface of the film can receive an ink layer, as claim 26 recites. Id. The
Examiner finds Hidetoshi discloses a marking film that may have ink
applied to its surface. Id. The Examiner concludes it would have been
obvious to modify Guo in view of Hidetoshi so ink colorant is printed on
Guo’s film and desired graphics or other indicia are provided on the film.
Id. at 4.
Appellant contends that Guo discloses a multilayer construction with
only its core layer including thermoplastic polyurethane combined with
polyvinyl butyral. Appeal Br. 3. Appellant further asserts that claim 26
requires a film layer comprising a polymer blend comprising a thermoplastic
polyurethane and a polyvinyl butyral, “wherein the film layer is outdoor
weatherable,” but Guo only teaches outdoor weatherability for its outer
acrylic layers. Id. at 3–4. Appellant argues that Hidetoshi is not used in the
rejection to address this issue. Id. at 4.
Appellant’s arguments are not persuasive. The Examiner concludes
that the broadest reasonable interpretation of “film layer” is not limited to a
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monolayer but instead includes multiple layers because the Specification
describes a film layer than can include multiple layers. Ans. 13. In
particular, the Specification describes an embodiment “wherein the film
layer is multiple layers.” Spec. 10:11. Another embodiment describes a
multiple layer structure “where one of the layers comprises a thermoplastic
urethane and a polyvinyl butyral.” Id. at 10:12–13. Therefore, Appellant’s
Specification supports the Examiner’s interpretation of “film layer” as
encompassing multilayer constructions, such as Guo’s. Furthermore, the
Examiner correctly finds that claim 26 uses “comprising” language, which
permits the inclusion of additional, unrecited elements. Ans. 13.
Appellant’s arguments are also unpersuasive with regard to claim 26’s
“outdoor weatherable” limitation. Claim 26 recites that “the film layer is
outdoor weatherable,” but does not specify how this is accomplished (e.g.,
that the portion of the film layer including thermoplastic polyurethane and
polyvinyl butyral is exposed to the elements). Therefore, to the extent Guo’s
film layer is made outdoor weatherable by its outer acrylic layers, as
Appellant argues, Guo’s film layer is nevertheless “outdoor weatherable,” as
claim 26 requires.
For these reasons and those set forth in the Examiner’s Answer, we
sustain the Examiner’s § 103 rejection of claim 26 over Guo and Hidetoshi.
Rejection II
Claims 1, 2, 6, 11–16, and 19–26 are rejected as unpatentable over
Moriguchi and Abe.
The Examiner finds that Moriguchi discloses a thermoplastic
composition including (1) a thermoplastic elastomer that reads on
thermoplastic polyurethane and (2) a polyvinyl acetal, which can be
polyvinyl butyral. Id. at 4. The Examiner finds that Moriguchi’s
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composition has a surface that is imageable because the composition may
include other components, such as colorants, pigments, and dyes. Id. at 5.
The Examiner also finds that although Moriguchi’s composition has
an imageable surface, Moriguchi does not expressly disclose that the
imageable surface can receive an ink layer, as claims 1, 19, and 26 recite.
Id. at 6. The Examiner finds Abe discloses a marking film that may have ink
applied to its surface. Id. The Examiner concludes it would have been
obvious to have printed Moriguchi’s film with ink, as Abe teaches, because
it would provide graphics or other indicia on the film. Id.
Appellant asserts that Moriguchi does not teach or suggest an
imageable surface that can receive an ink layer and Moriguchi’s use of
colorants, pigments, and dyes is not equivalent to an imageable surface
because those additives are not applied to a surface of the material. Appeal
Br. 4. Appellant further argues that the Examiner does not provide a
sufficient rationale for modifying Moriguchi in view of Abe and the
Examiner does not properly address whether one of ordinary skill in the art
would have had a reasonable expectation of success in doing so. Id. at 5–6.
Appellant’s arguments are unpersuasive. Appellant does not dispute
the Examiner’s finding that Moriguchi suggests a thermoplastic polymer
composition that can include both thermoplastic polyurethane and polyvinyl
butyral. Thus, Moriguchi teaches the same composition as the claimed film
layer. By showing that the prior art teaches the same structure (film layer)
made from the same material as the recited article, the Examiner has
established a prima facie case of obviousness, and is entitled to presume that
the prior art article has the same inherent properties as the claimed
composition. See E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d
996 (Fed. Cir. 2018). As a result, Moriguchi’s film layer would necessarily
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be capable of receiving an ink layer, as claims 1, 19, and 26 recite.
Therefore, the modification of Moriguchi in view of Abe does not appear to
be necessary to provide this function and we do not need to reach
Appellant’s arguments regarding the Examiner’s rationale for that
modification or whether one of ordinary skill in the art would have had a
reasonable expectation of success.
For these reasons and those set forth in the Examiner’s Answer, we
sustain the Examiner’s § 103 rejection of claims 1, 2, 6, 11–16, and 19–26
over Moriguchi and Abe.
Rejection III
Claims 1–3, 6, 8–16, and 18–26 are rejected under 35 U.S.C. § 103 as
unpatentable over Guo in view of Volpp and Hidetoshi.
Appellant presents separate arguments for claim 1 and for claims 19
and 26. Id. at 6–8. Appellant does not present separate arguments for
claims 2, 3, 6, 8–16, 18, and 20–25. Id. Therefore, claims 2, 3, 6, 8–16, 18,
and 23–25 stand or fall with claim 1, and claims 20–22 stand or fall with
claim 19, respectively. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
Claims 1–3, 6, 8–16, 18, and 23–25
For the rejection of claim 1, the Examiner finds Guo discloses a melt
processed film having good weather resistance that includes a core layer and
outer layers. Ans. 9. The core layer comprises thermoplastic polyurethane,
a polyvinyl butyral, or combinations thereof. Id. The Examiner finds it is
unclear whether Guo intends to use the plasticizers it discloses for the
polyvinyl butyral in the core layer. Id. The Examiner finds Volpp discloses
plasticized polyvinyl butyral sheets for laminates and concludes it would
have been obvious to use Volpp’s plasticizer in Guo’s film element because
the plasticizer determines the viscosity of the sheets. Id. at 9–10.
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The Examiner further finds that Guo does not specify an adhesive
layer for its laminate structure but Hidetoshi discloses a marking film that
includes an adhesive layer. Id. at 10. The Examiner concludes it would
have been obvious to modify Guo to include an adhesive layer, as Hidetoshi
teaches, because it would allow Guo’s film to be adhered to an adherent,
such as for advertisement or display purposes. Id. at 10–11.
Similar to the arguments for the rejection of claim 26 over Guo and
Hidetoshi above, Appellant contends that Guo is directed to a multilayer
construction. Appeal Br. 6–7. Appellant further argues that, even if it
would have been obvious to include an adhesive layer in Guo’s film, the
adhesive layer would not be disposed “on a first major surface of the film
layer,” as claim 1 recites, because the adhesive layer would be disposed on
one of Guo’s outer acrylic layers, not Guo’s core layer, which includes
thermoplastic polyurethane and polyvinyl butyral. Id. at 7. Appellant
argues that Volpp and Hidetoshi are not relied upon in the rejection to
remedy this issue. Id.
Appellant’s arguments are unpersuasive. As discussed above, the
Examiner’s broadest reasonable interpretation of “film layer,” in light of the
Specification, encompasses multilayer constructions, such as Guo’s.
Therefore, a modification of Guo in view of Hidetoshi to add an adhesive
layer upon one of Guo’s acrylic layers results in the adhesive layer being “on
a first major surface of the film layer,” as claim 1 recites, because claim 1’s
“film layer” encompasses Guo’s acrylic layers as part of a multilayer
construction.
Claims 19–22 and 26
Appellant argues that “the Examiner fails to provide any argument or
reason why one of ordinary skill in the art would have combined Guo and
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Hidetoshi to arrive at the claimed invention recited in claim 19 or claim 26.”
Id. at 7. Appellant asserts “[t]he Examiner’s arguments articulated vis-á-vis
claim 1 are inapplicable, as they relate to the reliance on Hidetoshi for an
adhesive layer” and claims 19 and 26 do not require an adhesive layer. Id.
Appellant further contends that the rejection of claims 19 and 26 only
provides a list of elements that are allegedly taught by the applied references
without providing an argument. Id. at 8. Appellant also argues that
elements of claim 26 are unaccounted for in the rejection, such as the
“outdoor weatherable” limitation. Id.
The Examiner explains that the findings made in the rejection of claim
1 are applicable to the rejections of claims 19 and 26. Ans. 17. The
rejection of claim 1 includes a finding that Guo’s film has good weather
resistance. Id. at 9. Appellant does not respond to this explanation, which is
reasonable. As a result, Appellant’s arguments have not identified a
reversible error in the rejections of claims 19 and 26.
For these reasons and those set forth in the Examiner’s Answer, we
sustain the Examiner’s § 103 rejection of claims 1–3, 6, 8–16, and 18–26
over Guo, Volpp, and Hidetoshi.

CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Examiner’s Answer, the Examiner’s
decision to reject claims 1–3, 6, 8–16, and 18–26 under 35 U.S.C. § 103 is
affirmed.
In summary:

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Claim(s)
Rejected
35
U.S.C.
§
References/Basis Affirmed Reversed
26 103 Guo, Hidetoshi 26
1, 2, 6, 11–16,
19–26 103 Moriguchi, Abe
1, 2, 6, 11–16,
19–26
1–3, 6, 8–16,
18–26 103
Guo, Volpp,
Hidetoshi
1–3, 6, 8–16,
18–26
Overall
Outcome
1–3, 6, 8–16,
18–26

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