Ex Parte Padiyath et al

Patent Trial and Appeal Board

Jun 30, 2016

11752350 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111752,350 05/23/2007
32692 7590 07/05/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Raghunath Padiyath
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.
62942US002 3606
EXAMINER
JACKSON, MONIQUE R
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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 RAGHUNATH PADIYATH,
DOUGLAS A. HUNTLEY, and OLESTER BENSON JR.
Appeal2015-002879
Application 11/752,350
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
LILAN REN, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 13 and 15-25 of Application
11/752,350 under 35 U.S.C. § 103(a) as obvious. Final Act. (February 27,
2014). Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 3M Company is identified as the real party in interest. Appeal Br. 2.
Appeal2015-002879
Application 11/752,350
BACKGROUND
The '350 Application describes a light redirecting layer disposed on a
visible light transmitting and infrared light reflecting multilayer film.
Spec. i-f 5. The solar control films described in the '350 Application are said
to provide improved building illumination while minimizing unwanted solar
gam. Id.
An embodiment of the light redirecting solar control glazing system is
shown in Figure 1 of the '350 Application, which is reproduced below.
40--~----------~
;
~=~-~~~~--~·~--~--~-~~~~-~~~~~~---~~~-~~·-X---·cA~~~-
10
~-
50
Figure 1 is a schematic cross-sectional view of the illustrative solar
control laminate 10. Id. i-f 22. Solar control laminate 10 includes multilayer
film 20, which transmits visible light and reflects infrared light. Id. i-fi-122-
23. Adhesive layer 40 joins multilayer film 20 with light redirecting layer
30. Id. i-f 22. Light redirecting layer 30 includes major surface 31. Id. i-f 31.
Major surface 31 forms a plurality of prisms 32. Id.
Claim 13 is representative of the '350 Application's claims and is
reproduced below:
13. A light redirecting solar control glazing system,
compnsmg:
an interior space comprising an exterior wall and a ceiling;
a first glazing substrate located on the exterior wall; and
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Appeal2015-002879
Application 11/752,350
a light redirecting solar control film disposed on the first
glazing substrate, the light redirecting solar control film
compnsmg:
a multilayer polymeric film that transmits visible light
and reflects infrared light;
and a light redirecting layer disposed on the multilayer
film forming a light redirecting solar control film,
the light redirecting layer comprising a major
surface forming a plurality of prism structures,
wherein incoming visible solar light incident on
the exterior wall is redirected upwards toward the
ceiling of the interior space.
Appeal Br. 9 (Claims App.) (some paragraphing and indentation added).
REJECTION
Claims 13 and 15-25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Graf2 and Fleming. 3 Final Act. 2.
DISCUSSION
Appellants argue for reversal of the rejection of claims 13 and 15-25
as a group. Accordingly, we select claim 13 as representative of the group.
37 C.F.R. § 41.37(c)(l)(iv) (2013). Claims 15-25 will stand or fall with
claim 13.
In rejecting claim 13, the Examiner found that Graf teaches a film
integrated into a window glazing. Final Act. 3. The film comprises
optically active surface structures such as prisms. Id. (citing Graf i-fi-123-35,
75-78). These prisms or other surface structures refract, reflect, and/or
2 US 2005/0254130 Al, published November 17, 2005.
3 US 2004/0032658 Al, published February 19, 2004.
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Appeal2015-002879
Application 11/752,350
scatter light, guiding incoming light upwards toward the ceiling of the
building's interior. Id. The Examiner further found that Graf s device also
includes optically active layers whose absorption, transmission, and/or
reflection behavior does not vary with time. Id. (citing Grafi-fi-128-35). The
Examiner found that Graf does not describe or suggest a multilayer polymer
film as an optically active layer. Id. at 4.
The Examiner found that Fleming describes an enhanced heat mirror
film containing a birefringent dielectric multilayer laminate. Id. (citing
Fleming Abstract).
The Examiner found that a person having ordinary skill in the art
would have been motivated to incorporate Fleming's film into Graf s
glazing unit to provide desired reflecting properties to the glazing unit and to
further incorporate an adhesive layer and/or a pigmented layer to selectively
absorb light as taught by Fleming. Id. at 4--5. The Examiner also found that
a person having ordinary skill in the art at the time of the invention would
have been motivated to use routine experimentation to determine the optimal
optically active layers or coatings to provide the desired optical properties.
Id. at 5.
Based upon these factual determinations, the examiner concluded that
claim 13 as unpatentable over the combination of Graf and Fleming. Id. at
2-5.
"Appellants['] arguments [for reversal of this rejection] are twofold,
pointing out that the Patent Office's equation of elements in Graf to those of
present claim 13 is not correct, and that the combination of Graf with
Fleming not only lacks motivation but also is not possible." Appeal Br 4.
We are not persuaded by these arguments, and we affirm the rejection
of claim 13.
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Appeal2015-002879
Application 11/752,350
First, Appellants argue that the Examiner erred by finding that Graf's
optical switchable coatings correspond to the claimed multilayer polymeric
film. Appeal Br. 3-5. Appellants argue that the rejection should be reversed
because "the IR reflecting multilayer film and visible light redirecting
structures of claim 13 are part of a unitary construction, whereas the
elements of Graf are not a unitary construction, nor can they be a unitary
construction because the elements are designed to be separately switchable
(i.e. changeable with time)." Id. at 4.
The Examiner, however, found that Graf describes optically active
layers such as dielectric or metallic layer materials that can be used in
combination with a microstructure surface. Final Act. 3. In particular, the
Examiner relies upon the following portion of Graf:
In addition, further studies of the device according to the
invention have surprisingly shown that, aside from optically
switchable coating materials, optically active layers whose
absorption, transmission and/or reflection behavior is
independent of time, i.e., chronologically invariable, as is the
case for dielectric or metallic layer materials, for example,
exhibit comparably good optical light guiding or scattering
properties, as can be observed when using the device according
to the invention described above, provided the optically active
layers are used at least in combination with a microstructure
surface.
Graf i-f 28 (emphasis added).
Thus, Appellants' arguments regarding the Examiner's alleged error
in finding that Graf' s optically switchable layer corresponds to the claimed
multilayer polymeric film are not persuasive because they do not address the
rejection the Examiner actually made. Furthermore, the phrase "unitary
construction" does not appear in claim 13.
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Appeal2015-002879
Application 11/752,350
Appellants also argue that the Examiner's reliance upon Graf s i-f 28 is
erroneous because the dielectric or metallic layer materials described therein
are either light-guiding or light-scattering. Appeal Br. 6. Appellants argue
that the materials described in Graf have a different composition and
different function than the claimed multilayer film. Id. Based upon this
argument, Appellants conclude that "[i]t is unclear how one of skill in the art
would look to these teachings of Graf to arrive at the system of claim 13."
Id.
In making this argument, Appellants are attacking Graf individually
even though the rejection is based upon the combination of Graf and
Fleming. Thus, Appellants' argument is not persuasive.
Second, Appellants argue that Graf and Fleming cannot be combined
because the combination would render Graf unsuitable for its intended
purpose. Appeal Br. 7. In particular, Appellants argue that Graf is intended
to block IR in the summer to reduce the need for cooling and to permit IR
transm1ss10n during the winter to reduce the need for heating. Id. Fleming's
multilayer film, on the other hand, only reflects IR. Thus, Appellants
contend that the combination of Graf and Fleming would destroy Graf s
purpose of selectively allowing IR transmission. Id.
The Examiner contends that Appellants' argument is unpersuasive
because Graf does not specifically teach away from incorporation of an IR
reflecting film such as that described in Fleming. Answer 8.
We agree with the Examiner. Fleming states that multilayer films can
be engineered to reflect or absorb a desired amount of light in a desired
spectral region of interest. See Fleming i-f 4. Furthermore, Fleming teaches
that the multilayer film can also include dyes or pigments to vary the films'
visible light or UV transmission properties. Id. i-f 101. Thus, we are not
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Appeal2015-002879
Application 11/752,350
persuaded that the Examiner erred by finding that a person of ordinary skill
in the art at the time of the invention would have included a multilayer film
such as described in Fleming in Graf s solar control system to reduce the
total amount of IR transmitted through the glazing system and otherwise
modify the properties of the transmitted light to achieve a desired goal.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 13
and 15-25 of the '350 Application.
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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