Ex Parte Rehfeld et al

Patent Trial and Appeal Board

Sep 28, 2017

13495018 (P.T.A.B. Sep. 28, 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.
13/495,018 06/13/2012 Marc Rehfeld 400438US41 1011
22850 7590 10/02/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
KHATRI, PRASHANT J
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC REHFELD,1
David Fournier, Jean-Philippe Boure, and Corinne Payen
Appeal 2017-003891
Application 13/495,018
Technology Center 1700
Before MARK NAGUMO, BRIAN D. RANGE, and
MERRELL C. CASHION, Jr., Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Marc Rehfeld, David Fournier, Jean-Philippe Boure, and
Corinne Payen (“Rehfeld”) timely appeal under 35 U.S.C. § 134(a) from the
Final Rejection2 of all pending claims 1—9. We have jurisdiction.
35 U.S.C. § 6. We affirm.
1 The real party in interest is identified as Saint-Gobain Glass France
(Appeal Brief, filed 23 September 2016 (“Br.”), 2.)
2 Office Action mailed 8 January 2016 (“Final Rejection”; cited as “FR”).
Appeal 2017-003891
Application 13/495,018
OPINION
A. Introduction3
The subject matter on appeal relates to “a viscoelastic plastic
interlayer intended to be incorporated between two sheets of glass to form
laminated glazing with [vibro-acoustic] damping properties, intended
especially for locomotive machines, in particular a motor vehicle.” (Spec. 1,
11. 11—13.) According to the ’018 Specification, “[i]t has been demonstrated
that the use of standard plastic films in laminated glazing is unsuitable for
improving acoustic comfort.” (Id. at 2,11. 4—5.) This is said to be true
especially for windows having thinner glass sheets, which are lighter, and
thus result in reduced fuel consumption of a vehicle in which the windows
are installed. Such windows, however, are said to suffer from degraded
acoustic properties. Rehfeld seeks patent protection for an interlayer that is
said to overcome these problems.
The Specification reveals that such an interlayer, preferably
comprising polyvinyl butyral (“PVB”) and a plasticizer (id. at 3,11. 7—8)),
provides, when sandwiched between two glass sheets having a specified
thickness and surface areas to form a laminated glazing bar, a resonant
frequency f2 of the second resonance mode of the laminated glazing bar, in a
specified range, and a loss factor r|i2 greater than or equal to 0.25, when
measured by specific methods under specified conditions (id. at 11. 1—6).
3 Application 13/495,018, Viscoelastic plastic interlayer for vibro-acoustic
damping and glazing comprising such an interlayer, 13 June 2012, claiming
the benefit of an application filed in France on 22 May 2012. We refer to
the “’018 Specification,” which we cite as “Spec.”
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Application 13/495,018
Somewhat more specifically, the ’018 Specification states that “[t]he content
and nature of the plasticizer and the degree of acetalization of the polyvinyl
butyral make it possible to modify in a known manner the rigidity of a
component based on polyvinyl butyral and [the] plasticizer.” (Spec. 6,
11. 12—14; emphasis added.) Regarding the Example of Figure 2, the
Specification states that “[t]he outer layers 4, 5 are preferably made of
standard PVB. The layer 3 is less rigid than the outer layers 4, 5 so as to
vibrate correctly to ensure the desired acoustic damping." {Id. at 11. 17—18;
emphasis added.)
Sole independent claim 1 is representative and reads:
A viscoelastic plastic interlayer to be incorporated between
two glass sheets to form a laminated glazing with vibro-
acoustic damping properties, the interlayer comprising:
at least one layer made of viscoelastic plastic with vibro-
acoustic damping properties, wherein
the resonant frequency f2 of the second resonance mode
of a laminated glazing bar with
a surface area of 25 mm * 300 mm composed of
two glass sheets each 2.1 mm thick, between
which is incorporated the interlayer,
determined by measuring the mechanical impedance
(MIM) at 20°C according to standard ISO 16940,
is between 760 Hz and 1000 Hz, and wherein
the loss factor rp2 of the second resonance mode of the
laminated glazing bar, determined by MIM under the
same conditions,
is greater than or equal to 0.25.
(Claims App., Br. 7; some indentation, paragraphing, and emphasis added.)
Because Rehfeld has based all arguments for patentability on
independent claim 1, remaining dependent claims 2—9 stand or fall with
claim 1, 37 C.F.R. § 41.37(c)(l)(iv) (2016), and we need not discuss them.
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Application 13/495,018
The Examiner maintains the following ground of rejection4,5:
Claims 1—9 stand rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of Toyama,4 5 6 Cadogan,7 and Blizard.8
B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Claim 1 covers a viscoelastic plastic “interlayer” comprising at least
one layer made of viscoelastic plastic with vibro-acoustic damping
properties. Claim 1 states that the interlayer is “to be incorporated between
two glass sheets to form a laminated glazing.” Thus, the interlayer is simply
a layer of plastic that can be laminated between two glass sheets. When the
interlayer is laminated between the two glass sheets having the surface area
dimensions and thickness recited in claim 1, the laminated glazing bar must
have a resonant frequency f2 of the second resonance mode, according to a
specified ISO standard, within the recited range, and the loss factor r|i2 of
4 Examiner’s Answer mailed 2 November 2016 (“Ans.”).
5 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
6 Kiyobumi Toyama, Intermediate film for sandwich glass and sandwich
glass, JP 2001-206742 (2001) (Patent Abstracts of Japan machine
translation).
7 David F. Cadogan and Christopher J. Howick, Plasticizers, in Ullmann’s
Encyclopedia of Industrial Chemistry, Wiley-VCH Verlag GmbH & Co.
KGaA (2000).
8 John R. Blizard, Composite vehicle closure comprising an inner sheet of
chemically strengthened glass, U.S. Patent No. 3,592,726 (1971).
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Application 13/495,018
that second resonance mode must be greater than or equal to a specified
minimum value. The ’018 Specification indicates that a preferred material is
plasticized PVB, but provides no further details about the material, such as
the degree of polymerization or the weight-average molecular weight of the
PVB, or the identity and relative amount of the plasticizer. Nor does the
Specification indicate what other materials would be suitable to yield the
recited resonant frequency and loss factor.
The Examiner finds that Toyama describes a multilayer intermediate
film to be disposed between glass plates, made of plasticized PVB. The
Examiner finds that the thickness of the multilayer film ranges from 0.3
to 1.6 mm. (FR 2—3 13, citing Toyama [0043].9) In particular, the
Examiner finds that Toyama describes an X-Y-X laminate with central
layer Y having a thickness of 0.4 mm {id., citing Toyama [0051]). The
Examiner finds further that the outer X layers have less plasticizer [40 parts
by weight; Toyama [0050]] than inner Y-layer [60 parts by weight;
Toyama [0051]]. (FR 3,11. 5—6.) The Examiner finds further (FR 2 13) that
Toyama teaches that the sound insulation performance of a glass laminate is
influenced by dynamic viscosity characteristics of the interlayer, including
the storage modulus and loss modulus (Toyama [0018]), as well as the
thickness of the interlayer {id. at [0043]). The Examiner cites Cardogan as
evidence that the addition of plasticizers to polymers increases the flexibility
and reduces the rigidity or stiffness of the polymer.
9 According to Toyama, the range 0.3—1.6 mm “is the thickness as a usual
interlayer for glass laminates.” (Toyama [0043].)
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On the basis of this evidence, which is consistent with the teachings of
the ’018 Specification, the Examiner reasons that “it would have been
obvious . . . [to] adjust the ratio of plasticizer which affects the stiffness in
each layer in order to produce the desired sound insulation performance and
meet the acoustic limitations disclosed in claims 1 and 3.” (FR 3,11. 12—
15.)10
Rehfeld argues that “[t]here is no teaching or suggestion in Toyama
for an interlayer with the claimed resonant frequency or our loss factor, nor
is Toyama concerned with the same technical problem as one or more
embodiments of the present invention or the thinning of the glazing.” (Br. 4,
11. 5-8.)
These arguments are not persuasive of harmful error. Claim 1 is
directed to a layer that can be an interlayer in a glass laminate bar having the
resonant frequency and loss properties described supra. Toyama describes
an interlayer that meets the disclosed composition (PVB and plasticizer) and
that is suitable for use as a laminated glazing. Toyama and Cardogan teach
that properties such as the degree of polymerization and amount of
plasticizer affect properties that are correlated with sound insulation. As
indicated supra, the teachings of the ’018 Specification are not more detailed
or specific.
As already discussed, the layer of plastic material covered by claim 1
is defined functionally by recitation of physical properties—a resonant
10 The Examiner finds that Blizard discloses glass thicknesses for multilayer
glazings in windshields for vehicles. (FR 4 14.) We need not consider
Blizard further, as these limitations are not recited in claim 1.
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Application 13/495,018
frequency and a loss coefficient—measured by a certain method under
certain conditions, and the requirement that the layer be usable as the
interlayer in a glass laminate. Our reviewing court held nearly half a century
ago that functionally defined claims are not inherently improper; but, the
court explained, [functional’ terminology may render a claim quite broad.
By its own literal terms a claim employing such language covers any and all
embodiments which perform the recited function.” In re Swinehart,
439 F.2d 210, 213 (CCPA 1971). The Federal Circuit has also explained
that “[wjhere ... the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977)(citation
omitted). The court continued, “[wjhether the rejection is based on
‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.” Id., internal citation
and footnote omitted.
Here, the Examiner has come forward with a prior art description of a
similar material used for the same purpose, having similar sound-insulating
properties, with an indication of parameters (degree of polymerization,
amount of added plasticizer) that are known to affect sound-insulation
properties. Consistently, the ’018 Specification teaches that persons of
ordinary skill in the art know how to vary the rigidity of the polymer and
plasticizer.
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In summary, we are not persuaded that the Examiner erred harmfully
in transferring the burden to Rehfeld to explain why the differences are of
such a magnitude and nature that persons of ordinary skill in the art would
not have been led to the claimed interlayers. We therefore affirm the
appealed rejection.
C. Order
It is ORDERED that the rejection of claims 1—9 is affirmed.
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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