3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

May 25, 2021

2020003568 (P.T.A.B. May. 25, 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.
15/022,474 03/16/2016 Graham M. Clarke 73984US004 2507
32692 7590 05/25/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
GAITONDE, MEGHA MEHTA
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
05/25/2021 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 GRAHAM M. CLARKE,
RANDY S. BAY, RAYMOND J. KENNEY,
KURT J. HALVERSON, BRENT R. HANSEN,
and MICHAEL R. PLUMB
____________

Appeal 2020-003568
Application 15/022,474
Technology Center 1700
____________
Before JAMES C. HOUSEL, GEORGE C. BEST, and JANE E. INGLESE,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6–8, and 12–14 of Application
15/022,474. Final Act. (June 7, 2019). Claims 5, 9–11, and 15–24 have been
withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies 3M Company and 3M Innovative Properties Company as the real
parties in interest. Appeal Br. 2.
Appeal 2020-003568
Application 15/022,474
2
I. BACKGROUND
The ’474 Application describes film articles with dual-sided structures
and methods for preparing such articles. Spec. 1. According to the
Specification, a variety of articles—including films and sheets—have two
major surfaces. Id. For example, films that are structured substrates with
dual-sided structures are known. Id. Such structured substrates have a
structured surface—generally a micro structured surface—on each of the
substrate’s major surfaces. Id.
Claim 1 is representative of the ’474 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
1. A structured substrate comprising:
a first major surface and second major surface,
wherein the first major surface and the second major
surface each comprise a plurality of spaced apart
protrusions forming a repeating pattern,
each repeating pattern having a major axis,
wherein the major axis comprises one of the
major axes in the translational direction of
the repeating pattern, and
wherein the major axis of the repeating
pattern on the second major surface forms
an oblique angle with the major axis on the
first major surface,
wherein the angle is in the range of 10-90%
of the angle of rotational symmetry of the
repeating pattern, and
wherein the structured substrate is a monolithic substrate
prepared in a single step in a continuous process.
Appeal Br. 9 (some paragraphing and indentation added).
Appeal 2020-003568
Application 15/022,474
3
II. REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1–4, 6–8, and 12–14 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Rangarajan2 and Such.3 Final Act. 2.
III. DISCUSSION
Appellant argues for reversal of the rejection without differentiating
between the rejected claims. See Appeal Br. 3–7. We choose claim 1 as
representative of the group of rejected claims and limit our discussion
accordingly. 37 C.F.R. § 41.37(c)(1)(iv).
In rejecting claim 1, the Examiner found that Rangarajan describes or
suggests each limitation of the claim except for offsetting the patterns on
each side of the substrate by an oblique angle. Final Act. 3. The Examiner
also found that Such describes a polymer fabric material having an
embossed pattern on each side of the fabric. Id. The Examiner further found
that Such’s embossed patterns are offset by an oblique angle. Id. At 3–4.
According to the Examiner, it would have been obvious to a person having
ordinary skill in the art to include Such’s oblique angles in Rangarajan’s
product “because this creates a product without continuous lines of
compacted material that would be too flexible or continuous lines of non-
compacted material that would be weak.” Id. at 4.

2 US 2012/0156777 A1, published June 21, 2012.
3 US 3,542,364, issued November 24, 1970.
Appeal 2020-003568
Application 15/022,474
4
Appellant argues, inter alia, that the rejection of claim 1 should be
reversed because the Examiner’s finding regarding the motivation to
combine Rangarajan and Such is erroneous. Appeal Br. 3–7; Reply Br. 2–4.
For the following reasons, we agree with Appellant.
Rangarajan describes carriers for cell culture and methods for making
and using these carriers. Rangarajan ¶ 5, Fig. 1A. Rangarajan’s carriers are
made from glass, polymer, ceramic, or metal, wherein the polymeric
materials may be rigid and non-porous. Id. ¶¶ 42, 43.
Such, on the other hand, describes methods for reforming sheets of
deformable textile materials, including nonwoven textile materials. Such
1:43–53. Such’s textiles are flexible and porous. Id. 4:11–14 (“The
combination of strength, softness, drape, and flexibility thus produced is not
met with, in any other nonwoven fabric with which we are familiar.”
(emphasis added)).
As discussed above, the Examiner found that a person having ordinary
skill in the art would have been motivated to use the oblique angles
described in Such in Rangarajan’s products because the use of oblique
angles improves the properties of the final product. See Appeal Br. 4.
The problem with the Examiner’s finding is that Such’s description
does not apply to the materials used to make Rangarajan’s carriers, including
rigid, non-porous polymers. Although not specifically cited, the Examiner’s
finding appears to be based upon the following portion of Such:
Thus the three degrees of compaction are found in adjacent but
separated proximity, and there are no continuous ribs or ridges
of material of any one degree of compaction extending in any
given direction across or along the face of the fabric. Thus there
are no continuous lines of highly-compacted material which
weaken many embossed products by their lack of resistance to
repeated flexing. Similarly, there are no continuous lines or
Appeal 2020-003568
Application 15/022,474
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ridges of substantially uncompacted material, lacking in tensile
strength.
Such 4:2–11 (emphasis added). Read in context, however, it is clear that
Such is discussing the properties of embossed nonwoven textiles. See
generally id. 3:46–4:14; Fig. 2. Such clearly indicates that the passage
quoted above is a description of the properties of the material produced by
“[t]he process of forming nonwoven fabrics according to this invention.” Id.
3:59–60.
A person having ordinary skill in the art, therefore, would understand
that Such’s description of the improved properties of the embossed
nonwoven textiles does not apply to the Rangarajan’s carriers. This is
because Rangarajan prefers rigid and non-porous materials rather than being
nonwoven textiles. Also, the Examiner does not direct our attention to any
disclosure in Rangarajan suggesting that the carriers would benefit from
Such’s improved embossed fabric properties. Thus, the Examiner’s
explanation of why a person having ordinary skill in the art would have used
Such’s oblique angles in the design and fabrication of Rangarajan’s carriers
is erroneous.
For the foregoing reasons, we reverse the rejection of claims 1–4, 6–8,
and 12–14.
IV. CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–8, 12–14 103 Rangarajan, Such 1–4, 6–8, 12–14
REVERSED