Ex Parte Johnson et al

Patent Trial and Appeal Board

Feb 21, 2019

13596425 (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/596,425 08/28/2012
32692 7590 02/25/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Stephen A. Johnson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
69685US002 7158
EXAMINER
ZHANG, MICHAEL N
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
02/25/2019 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 STEPHEN A. JOHNSON, ONUR S. YORDEM,
TIMOTHY J. LINDQUIST, and TERENCE D. NEA VIN
Appeal2018-003721
Application 13/596,425
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
LILAN REN, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision to reject claims 1-13 and 17-50. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In explaining our Decision, we cite to the Specification of August 28, 2012
(Spec.), Final Office Action of August 26, 2016 (Final), Appeal Brief of
January 30, 2017 (Appeal Br.), Examiner's Answer of January 11, 2018
(Ans.), and Reply Brief of February 26, 2018 (Reply Br.).
2 Appellants identify the real party in interest as 3M Innovative Properties
Company. Appeal Br. 3.
Appeal2018-003721
Application 13/596,425
The claims are directed to a multilayer film comprising a stack of
polymer layers. See, e.g., claims 1 and 27. Figure 2 depicts such a stack
220 that may form all or part of multilayered polymer film 210. Spec. 11.
Figure 2 is reproduced below:
l '>'){'
(C .. .t--d
.,e, .. ~'
Figure 2 is a schematic side or sectional view of a portion of a polymer film
As shown in Figure 2, the polymer layers of the stack 220 are
organized into at least four layer packets 222, 224, 226, and 228. Spec. 11.
Each layer packet has a polymer layer A, a polymer layer B, and a polymer
layer C. Id. The layer packets are defined by a front major surface and a
back major surface, which are between the A and C layers. See, e.g., packet
224, which has front major surface 224a and back major surface 224b. The
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Application 13/596,425
packets can be irreversibly delaminated from each other as shown in Figure
1 b, which shows one layer packet being peeled ( delaminated) from the stack
of polymer layers 120a shown in Figure la. Spec. 8. Claim 1, with
reference numerals from Figure 2 inserted, is further illustrative:
1. A film comprising a stack [220J of polymer layers [ A,
B, CJ, the polymer layers [ A, B, CJ being organized into layer
packets [222, 224, 226, 228 (hereinafter 22x)J, each of the layer
packets [22x J having a front major surface [ e.g. 22xa J, a back
major surface [e.g., 22xbJ, and at least three of the polymer
layers [A, B, CJ between the front and back major surfaces
[22xa, 22xb J;
wherein for every pair of adjacent first and second layer
packets [22x J in the stack, the first layer packet [ e.g., 222J
includes a backmost polymer layer [222b J that on one side
thereof contacts an interior polymer layer [222BJ of the first
layer packet [222J and that on an opposite side thereof
intimately contacts a frontmost polymer layer [224a J of the
second layer packet [224J, the backmost polymer layer [222b J
having a weaker attachment to the frontmost polymer layer
[224a J than to the interior polymer layer [222BJ such that the
first layer packet [222J tends to irreversibly delaminate from the
second layer packet [224 J along a de lamination surface
corresponding to an interface between the backmost polymer
layer [222b J and the frontmost polymer layer [224a J;
wherein all of the polymer layers in the stack of polymer
layers [220] have respective polymer compositions that are
coextruded with each other to form the stack of polymer layers
[220];
wherein each of the layer packets [22x J in the stack has a
thickness of no more than 1 mil (25 microns);
wherein none of the polymer layers [ A, B, CJ in the stack
are pressure sensitive adhesives; and
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Appeal2018-003721
Application 13/596,425
wherein none of the polymer layers [ A, B, CJ in the stack
are adhesives.
Appeal Br., claim appendix ( emphasis added).
OPINION
The principal rejection on appeal is the Examiner's rejection of
claim 1 under 35 U.S.C. § I03(a) as obvious over Saylor3 in view of
Janssen, 4 Wallace, 5 and Dooley. 6 Final 3-5. The Examiner adds various
prior art references to reject other claims, but we need not discuss those
other rejections as the issues on appeal are the same for all the rejections and
it will suffice to discuss the issues as they apply to the rejection of claim 1.
Appellants' arguments focus on the teachings of Wallace, which the
Examiner finds teaches using coextrudable polymer in all the layers in a
stack of polymer layers. Compare Appeal Br. 14--16, with Final 5, and Ans.
31-32.
Appellants acknowledge that "Wallace teaches that 'the multiple
sheets that make up the laminated sheet can be formed simultaneously, such
as by co-extrusion"' (Appeal Br. 14 (quoting Wallace ,r 128)), but contend
that "Wallace teaches that to form a stack of ( delaminatable) polymer layers,
these laminated sheets must then be further combined." Appeal Br. 14
(emphasis omitted) (citing Wallace ,r 130).
3 Saylor, US 2012/0137414 Al, published June 7, 2012.
4 Janssen et al., US 2004/0121105 Al, published June 24, 2004.
5 Wallace, US 2013/0142975 Al, published June 6, 2013.
6 Joseph Dooley & Harvey Tung, Coextrusion, Encyclopedia of Polymer
Science and Technology, vol. 2, 1-25 (2001).
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Application 13/596,425
Appellants' argument fails because further combining coextruded
layers results in a stack of coextrudable layers. Thus, we agree with the
Examiner that Wallace teaches a stack of polymer layers "wherein all of the
polymer layers in the stack of polymer layers have respective polymer
compositions that are coextrudable with each other." Final 5.
Appellants' argument rests on the fact that Wallace does not teach
coextruding the entire stack of layers. Although Appellants are correct that
the laminated sheets described in paragraph 128 must be further combined to
form the stack, we do not agree that paragraph 130 discloses including
polymer compositions in the layers that are not coextrudable. Paragraph 130
of Wallace merely states that the laminated sheets are arranged in the
conformation of a stack of laminated sheets. Wallace ,r 130.
Other portions of Wallace indicate that all the layers of the stack are
coextrudable. To understand this aspect of the teaching, some context is
required. We provide that context below.
Wallace teaches a laminated sheet 2 composed of a distal sheet 10 and
a medial sheet 30 that are bound together by a first tie layer 20. Wallace
,r 23, Fig. 1. The distal sheet 10 and medial sheet 30 are each composed of
multiple layers. Wallace ,r 23, Fig. 1. Distal sheet 10 contains scratch-
resistant polymer layer 12, anti-permeation layer 14, and bonding layer 16.
Id. Medial sheet 30 includes distal bonding layer 32, odor barrier layer 34,
and proximal bonding layer 36. Id. The laminated sheet may also contain
proximal layer 50 and second tie layer 40. Wallace ,r 24, Fig. 2. Laminated
sheets 2 may be assembled in peelable configurations in which the laminated
sheets 2 are stacked. Wallace ,r 25, Figs. 3A-3D (showing stacked
laminated sheets 2, 2', 2", etc.).
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Appeal2018-003721
Application 13/596,425
Although Wallace uses the term "laminated," Wallace defines "[a]
'laminated' sheet" as "a sheet having multiple, substantially parallel planar
layers, without regard to the means of attachment between the layers and
without regard to the method by which the layers are assembled or
attached." Wallace ,r 33. Wallace further states that "[a] laminated sheet
having multiple layers can be made by coextrusion of the layers to form a
single sheet or by adhesion of multiple, separately formed sheets, for
example." Id. (emphasis added).
Wallace specifically discloses coextruding the multiple sheets that
make up the laminated sheets and states that coextrusion is particularly
suitable when the first and/or second tie layers of the laminated sheet consist
of heat-bonded, melt-bonded, or chain entangled portions of adjacent
polymer layers. Wallace ,r 128. Given that all of "the multiple sheets that
make up the laminated sheet can be formed simultaneously, such as by co-
extrusion" (id.), all of the multiple sheets in the stack of those laminated
sheets are formed from coextrudable polymer compositions. This follows
from the teachings of Wallace.
Moreover, we note that claim 1 is directed to an article of
manufacture, i.e., a structure. Whether the laminated sheets 2 are assembled
by stacking previously coextruded laminated sheets 2 or assembled by co-
extruding the entire stack, it is reasonable to conclude that the resulting
structure is the same or substantially the same. All the layers are
coextrudable polymer compositions. This is all that is required in terms of
structure. "[I]t is the patentability of the product claimed and not of the
recited process steps which must be established." In re Brown, 459 F.2d
531,535 (CCPA 1972).
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Appellants have not persuaded us of a reversible error in the
Examiner's finding that Wallace teaches or suggests polymer layers in a
stack of polymer layers that have the respective polymer compositions and
structure required by claim 1.
Appellants further contend that Wallace includes adhesive-containing
barrier layers that are excluded by the language "wherein none of the
polymer layers in the stack are adhesives" in claim 1. Appeal Br. 14. To
support this argument, Appellants cite to the teaching in Wallace of
including interposing barrier compositions between sheets in the stack to
prevent fusion of the laminated sheets. Appeal Br. 14 ( citing Wallace
,r,r 131-132). Appellants point out that the barrier composition can include
an adhesive. Id.
First, the claim language does not seem to exclude the presence of an
adhesive composition incorporated into a barrier layer as taught by Wallace.
Wallace ,r 132. The claim language reads: "wherein none of the polymer
layers in the stack are adhesives." Claim 1 (emphasis added). Wallace still
terms the layer a barrier layer even though it can include an adhesive. Thus,
arguably, the layer is still a barrier layer rather than an adhesive layer.
Second, it is not clear what compositions Appellants are attempting to
exclude with the language "wherein none of the polymer layers in the stack
are adhesives." The Specification provides no definition of what
compositions are to be classified as adhesive and, thus, excluded from the
polymer layers. One can read "polymer layers ... [that] are adhesives" to
include any layer that has adhesive properties, but that would include, for
instance, Appellants' layer B, which has adhesive properties that make it
adhere to layers A and C while one packet can be peeled from another
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packet. By that definition, the tie layers of Wallace would be adhesive
layers, but Appellants do not argue that Wallace's tie layers are excluded by
the claim language. Given the lack of clarity of the claim language, 7 we
cannot say that it excludes the adhesive-containing barrier layers taught by
Wallace.
Third, we agree with the Examiner that Wallace discloses the barrier
layer as optional. Ans. 31. Appellants do not dispute this finding of the
Examiner. Reply Br. 2-3.
Appellants have not identified a reversible error in the Examiner's
finding that Wallace discloses a stack of layers in which none of the polymer
layers in the stack are adhesives.
Appellants mention the Examiner's rejection of claim 27 and the
Examiner's finding that "Kocher teaches coextruded peelable films should
have a peel strength of 0.45 to 1134 g/inch. (Abstract). This overlaps the
claimed range of less than 3 5 grams per inch." Final 19, quoted in Appeal
Br. 1 7. Appellants note that Kocher is not included in the statement of
rejection. However, this omission is not reversible error as Kocher, as
quoted above, was discussed in the body of the rejection and Appellants
were aware that the Examiner has relying Kocher. This awareness is
evidenced by Appellants' discussion of Kocher in the Appeal Brief. Appeal
Br. 17.
7 Although the scope of the claim language is unclear, the Examiner did not
reject any claims under 35 U.S.C. § 112 ,r 2 as indefinite. Thus, there is no
indefiniteness rejection for us to review here.
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Appellants' discussion of Kocher does not give rise to a separate
argument. Appellants instead rely on the arguments they previously
presented against the rejection of claim 1. Appeal Br. 17.
In the Reply Brief, Appellants contend that the Examiner made a new
ground of rejection as to claim 46. Reply Br. 2-3. This argument is not
persuasive for several reasons.
First, the Examiner did not designate the rejection of claim 46 a new
ground. The issue of whether the Examiner should have designated the
rejection a new ground is a matter within the Examiner's discretion and a
procedural matter rather than an issue on the merits of the rejection. Matters
of a discretionary, procedural or non-substantive nature not directly
connected with the merits of issues involving rejections of claims are
reviewed by petition rather than by appeal. In re Hengehold, 440 F.2d 1395,
1403 (CCPA 1971). We lack jurisdiction to decide this petitionable
question. Id.
Second, Appellants were aware of the rejection of claim 46. As
discussed in the Appeal Brief, Appellants were aware that claim 46 was
inadvertently omitted from the statement of the rejected claims. Appeal Br.
3. According to Appellants, "[i]n a telephone call on November 30, 2016,
the Examiner indicated that claim 46 was inadvertently omitted from the
statement of the rejected claims and would be properly rejected under
35 U.S.C. § 103 for the same reasons as claim 27 ." Id.
Given the Examiner merely reproduced the findings made against the
rejection of claim 27 to reject claim 46, we cannot say that the rejection of
claim 46 reproduced in the Answer amounted to a new ground of rejection
that Appellants did not have the opportunity to respond to. Appellants had
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reasonable notice of the basis for rejection under 35 U.S.C. § 132 and,
additionally, had the opportunity to respond in the Reply Brief.
CONCLUSION
We sustain the Examiner's rejections.
DECISION
The Examiner's decision is affirmed.
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)(l ).
AFFIRMED
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