Ex Parte Riedl et al

Patent Trial and Appeal Board

Sep 18, 2018

13579449 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/579,449
22913 7590
Workman Nydegger
60 East South Temple
Suite 1000
08/16/2012
09/20/2018
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
Josef Riedl
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.
19838.42 4086
EXAMINER
KHAN, TAHSEEN
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEF RIEDL and ANDREAS BRAUN
Appeal2017-001826
Application 13/579,449
Technology Center 1700
Before JAMES C. HOUSEL, MONTE T. SQUIRE, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision finally rejecting claims 17-26, 29, and 32-36. 3 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision refers to the Specification (Spec.) filed August 16, 2012,
Appellants' Appeal Brief (Appeal Br.) filed February 25, 2016, the
Examiner's Answer (Ans.) dated September 13, 2016, and Appellants'
Reply Brief (Reply Br.) filed November 14, 2016.
2 Appellants identify Giesecke & Devrient GmbH as the real party in interest
(Appeal Br. 2).
3 Pending claims 27, 28, 30, and 31 have been withdrawn from
consideration.
Appeal2017-001826
Application 13/579,449
STATEMENT OF THE CASE
The invention relates to a foil composite material, a method for
manufacturing the foil composite material, a card body for a portable data
carrier including the foil composite material, and a method for
manufacturing the card body (Spec. ,r 1 ). Appellants describe card bodies
made using thermoplastic foils are deficient in mechanical properties which
can result in cracks and breaks (id. ,r 2). In addition, Appellants describe
foils including thermoplastic elastomers having thermoplastic materials
laminated thereto are difficult to manufacture because the glass point4 of the
thermoplastic elastomer is well below that of the thermoplastic layers (id. ,r
4).
Claim 1 7, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitation(s) at
issue is [are] italicized.
1 7. A foil composite material comprising:
at least one first outer plastic layer,
at least one inner plastic layer,
at least one second outer plastic layer,
wherein all the layers jointly form a coextruded
composite,
the plastic of the at least one first outer layer being a
thermoplastic polymer or a mixture of thermoplastic polymers,
the plastic of the at least one inner layer being a mixture
of at least one thermoplastic elastomer and at least one
therm op las tic po 1 ymer,
the plastic of the at least one second outer layer being a
thermoplastic polymer or a mixture of thermoplastic polymers.
4 We understand "glass point" to be referring to the glass transition
temperature of the material.
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Appeal2017-001826
Application 13/579,449
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection:
1. Claims 17, 18, 22, 23, 26, and 29 are provisionally rejected on
the ground of nonstatutory double patenting as unpatentable over
claims 17, 19, 22, 24, 25, and 30 of copending U.S. Patent
Application No. 13/579,635;
2. Claims 17, 22, 23, and 29 are provisionally rejected on the
ground of nonstatutory double patenting as unpatentable over claims
12-14, 16, 17, 19, and 20 of copending U.S. Patent Application No.
13/511,209;
3. Claims 17-24, 5 26, 29, and 32-36 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Wank6 in view ofRauh7 and Riedl; 8 and
4. Claim 25 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Wank in view of Rauh and Riedl, and further in view of
Ishimaru. 9
ANALYSIS
Double Patenting Rejections 1 and 2
Appellants do not separately argue the provisional obviousness-type
double patent rejection (Appeal Br. 10). Instead, Appellants request that
these provisional rejections be held in abeyance under all other issues have
been addressed. Id. The claims of the applications upon which these
5 We note that claim 24 has been inadvertently omitted from the statement of
rejection (see Ans. 8 ,r 22, and Appeal Br. 11, 23-26). We have corrected
the statement of rejection accordingly.
6 Wank et al., US 5,055,345, issued October 8, 1991 ("Wank").
7 Rauh et al., US 2005/0009972 Al, published January 13, 2005 ("Rauh").
8 Riedl et al., CA 2728468 Al, published December 23, 2009 ("Riedl").
9 Ishimaru, JP 2000-246858 A, published September 12, 2000.
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Application 13/579,449
provisional rejections are based have been replaced by new claims
subsequent to the mailing date of the Final Office Action. In addition, the
Examiner's Answer does not reflect that the Examiner has considered
whether the present claims should still be provisionally rejected under
nonstatutory double patenting over the new claims in in each application.
Under these circumstances, we decline to reach the double patenting
rejection. ExparteJerg, 2012 WL 1375142 (BPAI 2012) ("Panels have
flexibility to reach or not reach provisional obviousness-type double
patenting rejections."), citing Ex parte Moncla, 95 USPQ2d 1884 (BP AI
2010) (precedential). Upon return of jurisdiction, the Examiner may
determine if a non-provisional double patenting rejection should be made
over the then-pending claims of each application. See MPEP
§ 804(I)(B)(l )(b ).
Obviousness Rejection 3
The Examiner has the initial duty of supplying the requisite factual
basis and may not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398,418 (2007) ("To facilitate review, [the obviousness] analysis should be
made explicit."); see also, In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
("[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness."), quoted with approval in KSR, 550 U.S. at 418.
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Appeal2017-001826
Application 13/579,449
The Examiner finds Wank discloses a multilayer composite material
used for the production of credit and identity cards, comprising up to seven
layers, wherein the 1st and 7th thermoplastic layers correspond to the at least
one first outer plastic layer and the at least one second outer plastic layer and
the 4th thermoplastic elastomer layer corresponds to the at least one inner
layer (Ans. 4--5). However, the Examiner finds Wank does not disclose that
the 4th layer is a mixture of at least one thermoplastic elastomer and at least
one thermoplastic polymer and that only the 3rd and 5th layers are coextruded
(id. at 5). Nonetheless, the Examiner finds Rauh discloses forming digital
media, credit cards, etc. using a mixture of thermoplastic polyester and
thermoplastic elastomer that is "versatile, permanent, flexible plastic, and
overcomes certain difficulties inherent in related inventions while providing
better overall results" (id.). The Examiner also finds Riedl discloses forming
a data storage card body comprising multiple films that can all be
coextruded which makes it simple to form various regions in the card body
which differ from one another in terms of the nature of the materials (id. at
6). Therefore, the Examiner concludes that it would have been obvious to
have provided Wank's 4th layer as a mixture of at least one thermoplastic
polymer and at least one thermoplastic elastomer to provide a versatile,
permanent, flexible plastic that overcomes certain difficulties inherent in
related inventions while providing better overall results (id.). The Examiner
also concludes that it would have been obvious to modify Wank' s
production process to substitute coextrusion for the printing steps in order to
simplify the production process as taught by Riedl (id. at 7).
Appellants argue 1) that the proposed combination of Wank, Rauh,
and Riedl fails to disclose or suggest a composite foil material comprising
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Appeal2017-001826
Application 13/579,449
first and second outer thermoplastic layers and an inner layer of a mixture of
thermoplastic polymer and thermoplastic elastomer, all of which are jointly
formed by coextrusion; and 2) that the proposed modifications to Wank
would render Wank unsatisfactory for its intended purpose and would
change its principle of operation (Appeal Br. 14--20). In particular,
Appellants contend that Wank requires the 2nd and 6th decorative ink layers
be obtained by a printing process, such as screen, gravure, or offset printing
(id. at 17). Appellants also contend that Wank's multilayer composite
material must be assembled through a lamination process because such
printed layers would be incompatible with coextrusion (id. at 19--20). As a
result, Appellants urge that the proposed modification of Wank in view of
Riedl to coextrude the multilayer structure would necessitate doing so
without the 2nd and 6th decorative ink layers thereby rendering Wank
unsatisfactory for its intended purpose and would significantly change
Wank's principle of operation (id.).
We agree. Although the Examiner finds the limitation at issue, that all
the layers of the composite foil be coextruded, is a process limitation (Ans.
15), the Examiner neither finds nor asserts that a multilayer coextruded
product is the same as or structurally indistinguishable from a laminated
structure. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) ("The
patentability of a product does not depend on its method of production. If
the product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process."). Further, although the Examiner
finds that Wank's decorative ink layers could be applied to the individual 1st,
4th, and 7th layers prior to being coextruded (id.), the Examiner fails to
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Application 13/579,449
explain how this could be accomplished if the layers are formed by the
coextrusion process.
In addition, the Examiner finds Wank does not require the 2nd and 6th
layers be decorative ink layers, but permits adhesive layers only (id.).
However, a careful review of Wank establishes that, although Wank
discloses the 2nd and 6th layers may be decorative ink "and/or" adhesive
layers (Wank 1:9-10 and 1: 17-18), it is the adhesive layers that are optional
(id. at 2:60-66). For example, as Appellants note, Wank requires that the 1st
and 7th layers are highly transparent in order to enable the underlying
decorative ink layers to be visible (id. at 1 :60-62). Wank also teaches that
the optional adhesive layers are applied to the decorative ink layers by
screen printing or roll coater (id. at 3: 1-5). Thus, the ordinary artisan would
understand that Wank's 2nd and 6th layers are decorative ink layers with an
optional adhesive.
The Examiner also indicates that Riedl' s teaching seems "to indicate
that all of the layers of its composite can be coextruded together which when
applied to Wank would also include layers 2 and 6" (Ans. 15). However,
again the Examiner fails to explain how Wank's printed decorative ink
layers can be formed via extrusion. In this regard, we note that Riedl's
teaching is directed to producing data carrier cards having areas with
different material properties, including zones with different colors, via
coextrusion rather than printing to simplify the production process (Riedl ,r
6). The Examiner does not explain how Riedl's coextrusion would or could
provide a decorative pattern as required by Wank's 2nd and 6th decorative ink
layers. Indeed, we are persuaded that doing so would seem to render Wank
unsatisfactory for its intended purpose of providing a visible decorative
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Application 13/579,449
pattern within a multilayer composite structure. In re Ratti, 270 F .2d 810,
813 (CCPA 1959) (Combinations of prior art that change the "basic
principles under which the [prior art] was designed to operate" may not
support a conclusion of obviousness.).
Accordingly, we cannot say that the Examiner has provided the
requisite articulated reasoning with rational underpinning necessary to
support the conclusion of obviousness. We will not sustain the Examiner's
obviousness rejection of independent claim 17, which requires that all the
layers of the foil composite material are jointly formed by coextrusion, and
claims 18-24, 26, 29, and 32-36 which depend therefrom.
Obviousness Rejection 4
The Examiner rejects claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Wank in view of Rauh and Riedl, and further in view of
Ishimaru. The Examiner does not rely on Ishimaru to remedy the
deficiencies in the combination of Wank, Rauh, and Riedl, discussed above.
Accordingly, for the same reasons as set forth above, we will not sustain the
Examiner's obviousness rejection of claim 25.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 17-26, 29, and 32-36 is reversed.
REVERSED
8