Ex Parte Mayville et al

Patent Trial and Appeal Board

Mar 14, 2013

11105901 (P.T.A.B. Mar. 14, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/105,901 04/14/2005 Christian G. Mayville GIPH 0102 PUSP 3907
22045 7590 03/14/2013
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
03/14/2013 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 CHRISTIAN G. MAYVILLE
and Christopher J. Wawsczyk
________________

Appeal 2011-0070161
Application 11/105,901
Technology Center 1700
________________

Before CATHERINE Q. TIMM, MARK NAGUMO, and
CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

1 See also Appeal 2011-009386 in application 11/106,082, decided
concurrently due to the similar subject matter and the large overlap of
argument in the two appeals .
Appeal 2011-007016
Application 11/105,901

2
A. Introduction2
Christian G. Mayville and Christopher J. Wawsczyk (“Mayville”)
timely appeal under 35 U.S.C. § 134(a) from the final rejection3 of
claims 1-7 and 30.4 We have jurisdiction. 35 U.S.C. § 6. We affirm.
According to the 901 Specification, the subject matter on appeal
relates to “a multilayer film having at least one pigmented metallic layer that
can be integrated into or onto the surface of desired substrate article to
produce a substantially uniform, aesthetically pleasing outer surface.”
(Spec. 2 [0006].) The films are described further as being composed of
“thermoplastic material” and to be “characterized by essentially uniform
polymerization characteristics throughout the layer.” (Id. at [0007].)
The 901 Specification teaches that the disclosed multilayer films “can be
made using a suitable polymeric coextrusion process” (Id. at 4 [0020].) It is
thought that the causes of the uniform polymerization characteristics include
the absence of gel formation in the polymeric material due to crosslinking
within the polymeric matrix and between the matrix and materials such as

2 Application 11/105,901, Article having a multilayer film including at least
one layer containing metallic components and method of making the same,
filed 14 April 2005, claiming the benefit of provisional application
60/562,173 filed 14 April 2004. The specification is referred to as the
“173 Specification,” and is cited as “Spec.” The real party in interest is
listed as NJT Enterprises, LLC. (Appeal Brief, filed 23 July 2010
(“Br.”), 1.)
3 Office action mailed 8 April 2010 (“Final Rejection”; cited as “FR”).
4 Copending claims 10-21, 23-27, and 29 have been withdrawn from
consideration. (FR 1; Br. 2; Appellants’ statements of the status of the
claims are more accurate than those of the Examiner.) Copending claim 28
is not subject to the rejection maintained on appeal by the Examiner.
Appeal 2011-007016
Application 11/105,901

3
metallic pigments. (Id. at 19 [0067].) The 901 Specification defines the
term “essentially uniform polymerization” as “positioning of the
thermoplastic polymeric material in the film layer without undue evidence of
atypical polymeric cross-linking either spontaneous or metallic particulate
focused.” (Id. at 20 [0071].) According to the disclosure, “[g]enerally,
uniform dispersion will constitute agglomerations or concentrations of
metallic particulate material at sizes less than 100 μm in depth and 50 μm in
width and in occurrences less than 40 per square inch of produced film.”
(Id.) Suitable substrate articles are said to include bumpers, automotive
fascia, and body panels for interior and exterior use. (Id. at 5 [0021].)
Representative Claim 1 reads:
A multilayer film comprising:
a clear coat layer comprising at least one extruded
optically transmissive thermoplastic polymer; and
a visually reflective layer comprising
at least one extruded thermoplastic material
and at least one metallic particulate material to
provide sheen and reflectivity, in the form of flakes,
spheres, granules, or other geometric shapes,
interposed within the thermoplastic material,
wherein the at least one extruded thermoplastic is
essentially uniform in polymerization throughout the
visually reflective layer such that there are
less than 40 areas of agglomeration of the metallic
particulate material per square inch of the multilayer
film and wherein
the metallic particulate material is associated with at
least one thermoplastic carrier material.
(Br., Claims App. 1; indentation, paragraphing, and emphasis added.)
Appeal 2011-007016
Application 11/105,901

4
Claim 2 depends from claim 1 and further requires that the
thermoplastic polymer and the thermoplastic material be selected from the
group consisting of ionomers and ionomeric precursors. (Id.)
Claim 6 depends from claim 1 and requires that the metal particulate
material is at least one of aluminum, tin, or silver. (Id. at 3.)
Claim 30 depends from claim 1 and requires that the areas of
agglomeration be less than 100 microns in depth and less than 50 microns in
width. (Id.)
The Examiner maintains only the following new ground of rejection:5
A. Claims 1-7 and 30 stand rejected under 35 U.S.C. § 103(a) in
view of the teachings of Heuwinkel.6
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The critical issue in this case concerns the patentable weight to be
given to the term “extruded” in claim 1. Mayville presents separate
arguments for certain claims rejected in view of Heuwinkel, which we
address infra. Otherwise, all claims stand or fall with claim 1.

5 Examiner’s Answer mailed 21 January 2011 (“Ans.”). The Examiner has
expressly withdrawn all rejections based on either Mientus or Hare, in
combination with Heuwinkel. (Ans. 3 ¶ (6)). The Answer is silent as to the
obviousness-type double patenting rejection, so we consider it withdrawn.
6 Heike Heuwinkel et al., Aqueous Coating Media and Their Use in Single-
Layer and Multi-Layer Coating Processes, U.S. Patent 5,886,085 (1999).
Appeal 2011-007016
Application 11/105,901

5
Heuwinkel
The Examiner finds that Heuwinkel discloses multilayer coatings
comprising a clear lacquer coating over reflective aluminum platelets
uniformly dispersed in a paste resin coating having no flocculation or
settling of pigments, which the Examiner finds further meets the limitation
requiring less than 40 areas of agglomeration of the metallic particulate
material per square inch of the multilayer film. (Ans. 4-5.)
Mayville argues that Heuwinkel is directed to liquid paint
compositions that are entirely distinct from the extruded compositions
covered by the appealed claims. (Br. 7.) In particular, Mayville argues that
whereas “a liquid can be rendered homogenous simply by mixing,” “mixing
does not necessarily ensure homogenous distribution of particles in a solid
composition.” (Id. at 2d full para.) In Mayville’s view, because Heuwinkel
does not mention extruded thermoplastic materials and does not recognize
the problem solved by Appellants, Heuwinkel cannot suggest the solution.
(Id. at 8, ll. 2-5.) Mayville argues further that the Examiner relies on
disclosures by Heuwinkel regarding the liquid form, and that those
disclosures do “not teach or suggest relatively homogeneous pigment
distribution in a thermoplastic material as recited in the claims.” (Id. at 9,
1st para.)
Mayville argues that it “is well known in the art that properties of
extruded films are completely different from films formed by evaporation of
resins from a dispersion, such as the water-thinnable resins of Heuwinkel.”
(Br. 6, ll. 3-5.) Mayville has not, however, directed our attention to any
credible evidence of record as to what those differences might be.
Appeal 2011-007016
Application 11/105,901

6
Moreover, although the 901 Specification refers to prior art difficulties in
producing multilayer pigmented films (e.g., Spec. 1-2, [0005]), it does not
appear to disclose differences between extruded films and films made by
other processes.
It is well settled that “when the prior art discloses a product which
reasonably appears to be either identical with or only slightly different than a
product claimed in a product-by-process claim, a rejection based
alternatively on either section 102 or section 103 of the statute is eminently
fair and acceptable.” In re Brown, 459 F.2d 531, 535 (CCPA (1972). “As a
practical matter,” the court explained, “the Patent Office is not equipped to
manufacture products by the myriad of processes put before it and then
obtain prior art products and make physical comparisons therewith.” Id.
In the present case, the reported absence of flocculation of pigments
or precipitation of binder vehicles (Heuwinkel col. 9, ll. 36-37), together
with the disclosure that the multi-layer coatings have “[v]ery good visual
properties” (id. at col. 10, l. 33) supports the Examiner’s determination that
the limitation “less than 40 areas of agglomeration,” which applies to the
metallic particulate material only, is met. The burden is thus shifted fairly to
Mayville to come forward with evidence and argument demonstrating reason
to doubt the disclosure of Heuwinkel and the Examiner’s interpretation in
this obviousness rejection. Mayville, however, has not come forward with
such evidence. We conclude that harmful error has not been established in
the Examiner’s reliance, in part, on the disclosures regarding the stability of
the liquid compositions described by Heuwinkel.
Appeal 2011-007016
Application 11/105,901

7
Mayville’s repeated protests that various portions of Heuwinkel cited
by the Examiner do “not disclose in any way the above-mentioned feature of
claim 1” (Br. 8, ll. 4-5, 12-13, 21-22) are not persuasive for lack of evidence
supporting the statements. The absence of supporting evidence vitiates the
arguments and amplifies the ambiguity of the identity of the “above-
mentioned feature.”
Mayville argues that claim 2 is separately patentable because
“Heuwinkel does not disclose ionomers or ionomeric precursors as recited in
claim 2.” (Br. 9, last para.) Mayville’s arguments focus on the identity of
ionomers. (Id. at para. bridging 9-10; Reply at 3, 1st full para.)
The Examiner, however, identifies “ethylene/methacrylic copolymers
such as polymethacrylic acid” disclosed by Heuwinkel as corresponding to
the ionomer precursors recited in claim 2. (Ans. 4, last para.) Mayville does
not dispute this finding with any reasonable specificity. (Reply 3, 1st full
para.)
The 901 Specification defines the term “ionomeric precursors” as
meaning “homopolymers, acid co-polymers, monomeric compounds, and
various constituents used to prepare ionomeric materials.” (Spec. 6 [0025].)
Particularly in view of the breadth of Mayville’s definition of
“ionomeric precursors,” we are not persuaded that Mayville has shown
harmful error in the Examiner’s finding that Heuwinkel describes or
suggests ionomeric precursors as thermoplastic polymers or materials
required by claim 2.
Appeal 2011-007016
Application 11/105,901

8
Regarding claim 6, Mayville argues merely that “Heuwinkel makes no
mention of aluminum, tin, or silver particulates. (Br. 11.) Mayville,
however, appears to have overlooked the disclosure in Heuwinkel at col. 9,
l. 41, mentioning aluminum platelets.
Regarding claim 30, Mayville argues that Heuwinkel does not
disclose films in which “the areas of agglomeration are of sizes less
than 100 microns in depth and 50 microns in width.” (Br. 11, last para.,
quoting claim 30.) More specifically, Mayville notes that Heuwinkel
mentions, in Example 12, pigment particles having a particle size of less
than 10 microns. (Id.) According to Mayville, however, the size of those
“has nothing to do with areas of agglomeration in a solid multilayer film as
recited in the claims.” (Id.) Moreover, “if merely ten of the 10 micron
particles agglomerate, the result is a much larger particle.” (Id.)
These objections have largely been addressed supra. The aim of the
present invention is to obtain multilayer films having a “substantially
uniform, aesthetically pleasing outer surface” (Spec. 2 [0006]), which is due
in part to the absence of pigment and polymer agglomerations. The “very
good visual properties” of the finished coating described by Heuwinkel and
the emphasis on the absence of pigment flocculation support the Examiner’s
conclusions.
Mayville’s arguments are not supported by citations to credible
evidence of record. Speculation cannot take the place of evidence.
We conclude that harmful error has not been demonstrated in the
rejections based on Heuwinkel.
Appeal 2011-007016
Application 11/105,901

9
C. Order
We AFFIRM the rejection of claims 1-7 and 30 under
35 U.S.C. § 103(a) in view of the teachings of Heuwinkel.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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