Ex Parte Kanno

Patent Trial and Appeal Board

Mar 23, 2016

12059048 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/059,048 03/3112008
32692 7590 03/25/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Mamoru Kanno
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.
63754US002 4313
EXAMINER
NORDMEYER, PATRICIA L
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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 MAMORU KANNO
Appeal2014-008004
Application 12/059,048
Technology Center 1700
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and WLIA
HEANEY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-8. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
Appeal2014-008004
Application 12/059,048
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant's subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A decorative sheet comprising
(i) a substrate layer; and
(ii) a scratch resistant layer comprising a clear resin layer and hard
particles dispersed in the clear resin layer wherein the hard particles are
beads,
wherein the average particle diameter of the hard particles is larger
than the thickness of the clear resin layer,
the amount of hard particles is 30 parts by mass to 400 parts by mass
with respect to 100 parts by mass of the clear resin layer, and
the area ratio of the hard particles which protrude at least 3 micro-
meters from the outer surface of the clear resin layer is 10% to 80% of the
scratch resistant layer.
The Examiner relies on the following prior art references as evidence
.. ' ' 1 ·1 ·' or unpacemaouny:
Jorgensen us 4,117,192 Sept. 26, 1978
Tsuei us 5,643,669 Jul. 1, 1997
THE REJECTION
Claims 1 - 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsuei in view of Jorgensen.
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Appeal2014-008004
Application I2/059,048
ANALYSIS
We adopt the Examiner's position and findings in the Answer and
AFFIRM. We add the following for emphasis. We select claim I as
representative of all the claims on appeal, based upon Appellant's presented
arguments. 37 C.F.R. § 41.37(c) (1) (iv) (20I4).
Appellant argues that claim I recites that the "hard particles are
beads". Appeal Br. 5. Appellant argues that Tsuei discloses use of
"frictional particles" which may be "abrasive particles". Appellant argues
that Tsuei uses these types of particles to impart "nonskid or antislip"
properties to articles such as floor coverings. Appeal Br. 5. Appellant
argues that therefore Tsuei's purpose is the opposite of the purpose of their
Specification (the purpose being part of a scratch-resistant layer). Id.
Appellant argues that hard beads would not be frictional particles suitable
for the purposes of Tsuei and therefore Tsuei teaches away from hard beads.
Appeal Br. 6.
In reply, the Examiner refers to Appellant's Specification for
disclosing that the shapes of the hard particles can include spherical, floccus,
ellipsoidal, acicular, polyhedral, cylindrical, or irregular. Spec. 3, 11. 23 -p.
4, 1. 3. Ans. 4. The Examiner then states that Tsuei discloses "[t]he particles
can be transparent or opaque. They can be regularly shaped or irregularly
shaped, with or without sharp edges (although sharp edges
are preferred for abrasive articles)." Tsuei, col. I I, lines 46 - 49. The
Examiner states that a "regularly shaped" particle would include a particle
that is a bead. Ans. 4--5.
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Appeal2014-008004
Application 12/059,048
In reply, Appellant reiterates the position that Tsuei teaches use of
"frictional particles" to make "antislip and abrasive articles". Reply Br. 2.
Appellant argues that the particles must be frictional particles and not every
combination of shape and material recited by Tsuei would be a "frictional
particle". Id. Hence, it is Appellant's position that because of the purpose
of Tsuei, the selection of hard beads as the particles would not serve as
frictional particles.
As discussed by the Examiner, Tsuei teaches that particles that are
regularly shaped or irregularly shaped, with or without sharp edges, can be
frictional particles. Tseui, col. 11, 11. 36-53. Ans. 4--5. On the other hand,
while Appellant argues that hard beads cannot serve the purpose of Tsuei,
absent such supporting evidence, Appellant's assertion amounts to a mere
conclusory statement that is entitled to little, if any, probative weight. See,
e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). We are thus
unpersuaded by such argument based upon a preponderance of the evidence.
With regard to the secondary reference of Jorgenson, Appellant
merely argues that Jorgenson fails to provide the teaching absent from Tsuei.
Appeal Br. 6.
In view of the above, we therefore affirm the rejection.
DECISION
The rejection is affirmed.
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Appeal2014-008004
Application 12/059,048
TIME PERIOD
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).
ORDER
AFFIRMED
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