Ex Parte Steelman et al

Patent Trial and Appeal Board

Oct 3, 2018

14232931 (P.T.A.B. Oct. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/232,931 01/15/2014
32692 7590 10/05/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Ronald S. Steelman
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.
67886US004 3958
EXAMINER
SMITH JR., JIMMY R
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
10/05/2018 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD S. STEELMAN, JOHN A. NIELSEN,
and KEITH R. LYON
Appeal2017-008804
Application 14/232,931
Technology Center 1700
Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
LILAN REN, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision twice rejecting claims 1-8, 10-14, and 16-22. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 This Decision includes citations to the following documents: Specification
filed January 15, 2014, as amended ("Spec."); Non-Final Office Action
dated April 28, 2016 ("OA"); Appeal Brief filed August 31, 2016 ("Br.");
and Examiner's Answer dated January 9, 2017 ("Ans.").
2 Appellants identify the real party in interest as 3M Company and its
affiliate 3M Innovative Properties Company. Br. 2.
Appeal2017-008804
Application 14/232,931
The invention relates to the application of graphic films to complex
irregular surfaces, such as buildings, pavements, or vehicles, for advertising
or decorative purposes. Spec. 1 :4--9. The films comprise a thermoplastic
polyurethane and a cellulose ester, such as cellulose acetate butyrate
("CAB") or cellulose acetate propionate ("CAP"). Id. at 3: 11-13. The films
may include additional materials such as poly(meth)acrylate. Id. at 3:14--15.
Claim 1, the sole independent claim on appeal, is reproduced below:
1. A method of displaying an image comprising
providing a substrate with an irregular surface;
applying an adhesive article to the substrate, wherein the
adhesive article comprises a film layer, the film layer
comprising a polymer blend comprising a thermoplastic
polyurethane and a cellulose ester, wherein said film layer is
hot melt processable, and wherein the polymer blend comprises
at least 10% by weight of the cellulose ester based on total
weight of thermoplastic polyurethane and cellulose ester; and
an adhesive layer adjacent to the film layer,
wherein the adhesive layer adheres the adhesive article to
the substrate.
Br. 16 (Claims Appendix).
The Examiner relies on the following references as evidence of
unpatentability:
F ale oner et al.
("F ale oner")
Rega et al.
("Rega")
Kitchin et al.
("Kitchin")
Rearick et al.
("Rearick")
us 4,921,740
us 6,054,208
US 6,874,421 B2
US 7,906,199 B2
2
May 1, 1990
Apr. 25, 2000
Apr. 5, 2005
Mar. 15, 2011
Appeal2017-008804
Application 14/232,931
Xiaodong Wang et al., Study on blends of thermoplastic polyurethane and
aliphatic polyester: morphology, rheology, and properties as moisture vapor
permeable films, 24 Polymer Testing 18-24 (2005) (hereinafter "Wang").
Engineering Materials- Thermoplastic Materials
http://engineershandbook.com/Materials/thermoplastic.htm (hereinafter
"Engineer's Handbook").
Eastman Cellulose-based Specialty Polymers, June 2009 (hereinafter
"Eastman 325G").
The claims stand rejected under 35 U.S.C. § 103(a) as follows (see
OA2-7):
1. claims 1--4, 7, 11-14, and 19 over Rega in view of the
Engineer's Handbook, and optionally in view of Eastman 325G;
2. claims 5, 16, and 22 over Rega in view of the Engineer's
Handbook, further in view of Eastman 325G and Falconer;
3. claims 6 and 20 over Rega in view of the Engineer's Handbook,
optionally in view of Eastman 325G, and further in view of Wang;
4. claims 8 and 21 over Rega in view of the Engineer's Handbook,
optionally in view of Eastman 325G, and further in view of Rearick;
5. claim 10 over Rega in view of the Engineer's Handbook,
optionally in view of Eastman 325G, and further in view of Kitchin;
6. claim 17 over Rega in view of the Engineer's Handbook,
optionally in view of Eastman 325G, and further in view of Wang and
Falconer; and
7. claim 18 over Rega in view of the Engineer's Handbook,
optionally in view of Eastman 325G, and further in view of Rearick and
Falconer.
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Appeal2017-008804
Application 14/232,931
We have considered Appellants' arguments, but are not persuaded of
reversible error in the Examiner's conclusion that claims 1-8, 10-14, and
16-22 are unpatentable under 35 U.S.C. § 103(a). We adopt the Examiner's
fact finding and reasoning, as set forth in the April 28, 2016 Office Action
and in the Answer, as our own in sustaining all seven grounds of rejection.
We add the following for completeness.
Appellants argue Rega discloses the optional use of 0.01 wt% to 5
wt% CAB for control of rheology, and does not disclose or suggest using the
higher amounts of cellulose ester recited in claim 1, i.e., "at least 10% by
weight" ( claim 1 ). Br. 7. Appellants further argue Rega teaches away from
film formulations containing CAB in higher amounts. Id. at 6. As explained
by the Examiner, Appellants' arguments are not persuasive because Rega
discloses that "[t]he amount of cellulose acetate butyrate contained in the
mixture used to form the polyurethane topcoat may vary over a wide range
but is generally within the range of from about 0.01 % to about 5% by
weight" (Rega 9:51-55 (emphasis added)). See Ans. 8. We agree with the
Examiner that, at most, Rega discloses that film formulations containing
CAB in amounts that exceed 5% are less preferred. See id. However,
Appellants have not identified, nor do we find, any disclosure that the
ordinary artisan would view as discouraging the addition of CAB in amounts
within Appellants' claimed range. See Syntex (US.A.) LLC v. Apotex, Inc.,
407 F.3d 1371, 1379-80 (Fed. Cir. 2005) ("A statement that a particular
combination is not a preferred embodiment does not teach away absent clear
discouragement of that combination.").
A prima facie case of obviousness exists where the prior art and
claimed ranges overlap, as well as in those cases where the claimed range
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Appeal2017-008804
Application 14/232,931
and the prior art range, though not overlapping, are sufficiently close that
one skilled in the art would have expected them to have the same properties.
See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re
Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997).
Appellants cite Specification Examples 17-26 as evidence of the
dramatic improvement in conformability achieved by adding CAB in
amounts ranging from 10% to 85%. Br. 7-8. We disagree that these
examples provide persuasive evidence of criticality in the claimed range of
"at least 10%" ( claim 1 ). Specification Table 2B provides comparisons of
film formulations comprising polyurethane ("PU") and CAB in ratios
ranging from 60:40 to 15:85 (PU:CAB) and PU and CAP in ratios ranging
from 90:10 to 15:85 (PU:CAP). There is no comparison, however, with the
closest prior art, i.e., Rega's film-forming mixture, or with any other
formulation containing cellulose ester in an amount of less than 10% by
weight. Moreover, based on the Specification's description of a
conformable film as one that may be stretched around projections or pressed
into depressions without breaking (Spec. 1: 10-14), not all formulations
falling within the scope of the claims would appear to exhibit improved
conformability. See, e.g., Spec. Table 2B, Example 26 (indicating a film
comprising 85% CAP broke at less than 50% elongation). Further,
Examples 17-26 utilize the same PU (PU 1 ), the same CAB (CAB 3a), and
the same CAP (CAP 1). Claim 1, however, is not limited to a particular
thermoplastic polyurethane or cellulose ester. Appellants have not provided
an adequate basis to support a finding that other embodiments falling within
the scope of the claims (i.e., blends of different polyurethanes and cellulose
esters) would be expected to exhibit improved conformability. See In re
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Appeal2017-008804
Application 14/232,931
Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) ("If an applicant demonstrates
that an embodiment has an unexpected result and provides an adequate basis
to support the conclusion that other embodiments falling within the claim
will behave in the same manner, this will generally establish that the
evidence is commensurate with scope of the claims."). To the contrary, the
Specification Table lB comparison of film formulations comprising CAB 3a
with each of PUs 1, 2, and 8 (Examples 9, 10, and 12) and film formulations
comprising CAPl with each of PUs 1, 5, 6, and 7 (Examples 13-16),
indicates that conformability varies widely with the particular PU used in the
film formulation. Compare Example 10 (0% conformability), with Example
12 (72% conformability); see also Example 16 (wherein the film broke at
less than 50% elongation).
Appellants' remaining arguments in support of patentability of claims
1-8, 10-14, and 16-22 have been fully addressed by the Examiner and are
unpersuasive for the reasons explained in the Answer. See Ans. 8-12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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