Ex Parte Engelhard et al

Patent Trial and Appeal Board

Sep 20, 2017

13458004 (P.T.A.B. Sep. 20, 2017)

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.
13/458,004 04/27/2012 Heinz ENGELHARD 100728-115 WCG 8130
27386 7590 09/21/2017
GERSTENZANG, WILLIAM C.
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD AVE, 8TH FLOOR
NEW YORK, NY 10022
EXAMINER
ENGLISH, PATRICK NOLAND
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
09/21/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEINZ ENGELHARD, MICHAEL FURST,
JURGEN PANHANS, and MATTHIAS MAUSER
Appeal 2017-003281
Application 13/458,004
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, and 4—16. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
1 We cite to the Substitute Specification (“Spec.”) filed April 27, 2012;
Final Office Action (“Final Act.”) dated November 13, 2015; Appellant’s
Appeal Brief (“Br.”) dated May 20, 2016; and Examiner’s Answer (“Ans.”)
dated July 18, 2016.
2 Appellants identify Huhtamaki Forchheim as the real party in interest.
Br. 1.
Appeal 2017-003281
Application 13/458,004
BACKGROUND
The subject matter on appeal relates to a release film. Spec. 1. Claim
1—the sole independent claim on appeal—is reproduced from the Claims
Appendix of the Appeal Brief as follows, with emphasis added to highlight
the key recitation in dispute (minor formatting provided):
1. A release film comprising at least one layer (s) with a
closed-cell foam structure of at least one thermoplastic
polymer,
where the closed-cell foam structure is formed of
expanded, hollow thermoplastic microparticles, the expansion
of which has been achieved by virtue of at least one volatile
organic compound present in the cavity of the microparticles,
where the diameter of the expanded, hollow
microparticles is from 30 pm to 300 pm, and the average
diameter of the expanded microparticles is greater than the
overall thickness of the release film, thereby providing the
release film with a rough and uneven surface,
where at least one of the surfaces of the release film is
provided with a release layer (b) as external layer, formed of at
least one crosslinked polysiloxane, and connected to said at
least one layer (s) with an anchoring aid,
where the melting point of the thermoplastic polymer of
the layer (s) is lower than that of the thermoplastic polymer of
which the hollow microparticles are formed.
REJECTIONS
The Examiner maintains the following grounds of rejection:3
3 Final Act. 4—11; Ans. 3—14. A rejection under 35 U.S.C. § 112 is
withdrawn. Ans. 2.
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Application 13/458,004
I. Claims 1, 2, 4, 7, and 9-11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Webster,4 Giogetta,5 De Vogel,6 and
Hayes.7
II. Claims 5, 6, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Webster, Giogetta, De Vogel, Hayes,
and Gobelt.8
III. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Webster, Giogetta, De Vogel, Hayes,
and Maligie.9
IV. Claims 14—16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Webster, Giogetta, De Vogel, Hayes, and Furst.10
DISCUSSION
Relevant to Appellants’ principal arguments on appeal, the Examiner
finds that Webster discloses a release liner formed from a plastic material,
which liner may be about 2 mils (about 50.8 pm) in thickness. Final Act. 2—
3. The Examiner also finds that Giogetta provides a reason to form
Webster’s release liner from a closed cell polypropylene foam. Id. at 4. The
Examiner finds that De Vogel discloses “a foamable thermoplastic
vulcanizate blend containing expandable polymeric microspheres,” and that
the average particle size of the microspheres before expansion is suitably
4 US 2007/0048478 Al, published March 1, 2007 (“Webster”).
5 US 2006/0019083 Al, published January 26, 2006 (“Giogetta”).
6 US 2007/0254971 Al, published November 1, 2007 (“De Vogel”).
7 US 2008/0193696 Al, published August 14, 2008 (“Hayes”).
8 US 2004/0054071 Al, published March 18, 2004 (“Gobelt”).
9 US 6,440,566 Bl, issued August 27, 2002 (“Maligie”).
10 US 2004/0109968 Al, published June 10, 2004 (“Furst”).
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Application 13/458,004
from about 1 to about 200 pm. Id. at 5; see also De Vogel 143. In light of
De Vogel’s statement that “it is normally possible to expand the
microspheres from about 2 to about 12 times,” {id.), the Examiner finds that
“[t]he expanded diameter of the microspheres [disclosed by De Vogel] is
considered to be between 2 to 2400 pm.” Id. at 7. Thus, according to the
Examiner, 98% of the purportedly disclosed range of expanded particle sizes
in De Vogel would exceed the 2 mil release liner thickness suggested in
Webster. Id. at 7.
Appellants argue that De Vogel fails to teach providing expanded
particles that are larger than the thickness of a film, such that a rough film
surface is obtained. Br. 7. We agree. Even if we were to accept the
Examiner’s interpretation of De Vogel’s disclosure as teaching a range of 2
to 2400 pm for expanded particles, that teaching alone would not provide a
reason to select particles that, when expanded, would exceed the thickness of
a film in which they were provided. Nor does the Examiner articulate a
reason why one of ordinary skill would have considered it useful to do so.
Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art in the manner proposed by the Examiner. See
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Conversely,
“[Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” Id.
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Examiner
fails to provide an adequate reason why one of ordinary skill would have
provided Webster’s release film with expanded particles having an average
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Application 13/458,004
diameter that is greater than the overall thickness of the release film, as is
required by claim 1.
The deficiency of the main rejection is not cured in the Examiner’s
subsidiary rejections.
DECISION
The Examiner’s decision rejecting claims 1, 2, and 4—16 is reversed.
REVERSED
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