Ex Parte Wolk et al

Patent Trial and Appeal Board

Jun 30, 2016

13521121 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/521, 121 07/09/2012
32692 7590 07/05/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Martin B. Wolk
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.
66015US004 8963
EXAMINER
HANDVILLE, BRIAN
ART UNIT PAPER NUMBER
1783
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 MARTIN B. WOLK, WILLIAM BLAKE KOLB, ENCAI HAO,
MICHAEL BENTON FREE, AUDREY A. SHERMAN,
JOHN A. WHEATLEY, DAVIDS. THOMPSON, and
MATTHEWS. STAY
Appeal2014-009989
Application 13/521,121
Technology Center 1700
Before PETER F. KRATZ, KAREN M. HASTINGS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal 1 under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 2, 4---6, 10, 13, 14, 16, 20, 21, 35, 36,
and 40. We have jurisdiction pursuant to 35 U.S.C. § 6.
Appellants' claimed invention is directed to a microstructured article
comprising a nanovoided layer having a microstructured major surface and a
1 Appellants state "[t]he real party in interest is 3M Company (formerly
known as Minnesota Mining and Manufacturing Company) of St. Paul,
Minnesota and its affiliate 3M Innovative Properties Company of St. Paul,
Minnesota" (Br. 2).
Appeal2014-009989
Application 13/521,121
polymeric resin layer comprising a polymeric material that penetrates into
the nanovoided layer.
Claim 1 is illustrative and reproduced below:
1. A microstructured article, comprising:
a nanovoided layer having a microstructured first major surface and a
second major surface opposing the first major surface, the nanovoided layer
comprising a polymeric binder and a plurality of interconnected voids; and
a polymeric resin layer disposed on the microstructured first major
surface, wherein the polymeric resin layer comprises a polymeric material
that penetrates into the nanovoided layer.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Emmons et al.
Patel et al.
US 7,010,212 B2
WO 2010/121054 Al
Mar. 7, 2006
("Emmons")
Oct. 21, 2010
("Patel")
The Examiner maintains the following grounds of rejection:
Claims 1, 2, 4---6, 10, 13, 14, 20, 21, 35, 36, and 40 stand rejected
under 35 U.S.C. § 103 (a) as being unpatentable over Patel. Claim 16 stands
rejected under 35 U.S.C. § 103 (a) as being unpatentable over Patel in view
of Emmons.
After a careful review of the opposing positions articulated by
Appellants and the Examiner and the evidence of obviousness applied by the
Examiner, we determine that the Appellants' arguments are insufficient to
identify reversible error in the Examiner's obviousness rejections. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we affirm the stated obviousness rejections for
substantially the fact findings and the reasons set forth by the Examiner in
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Appeal2014-009989
Application 13/521,121
the Examiner's Answer and in the Final Otlice Action. We offer the
following for emphasis only.
Concerning the Examiner's rejection of claims 1, 2, 4---6, 10, 13, 14,
20, 21, 35, 36, and 40 under 35 U.S.C. § 103 (a) as being unpatentable over
Patel, Appellants argue the rejected claims together as a group.
Accordingly, we select claim 1 as the representative claim on which we
decide this appeal as to this ground of rejection.
Appellants argue that Patel does not "teach or contemplate an article
wherein the polymeric resin layer comprises a polymeric material that
penetrates into the nanovoided layer" because Patel forms the low refractive
index layer (resin layer) on a formed microstructured first major surface of
the nanovoided layer (Br. 6). In this regard, Appellants point to a portion of
the detailed description of illustrative embodiments of the subject
Specification, wherein it is described that "at least one structural difference
can occur between the two articles," such as in a case b where "nanovoided
material would not typically migrate into the layer of conventional material
[that is already formed] because that layer typically presents a substantially
solid, non-porous barrier ... beyond which the nanovoided material cannot
penetrate" (Spec. 23, 11. 8-14; Br. 5---6).
However, representative claim 1 does not require any particular
amount or degree of penetration of polymeric material into the nanovoided
layer much less any amount of penetration of the nanovoided layer into a
polymeric resin layer. Nor is representative claim 1 limited to a particular
method of preparation of the microstructured article. The mere disclosure
that there may be a structural difference in a prepared article based on the
order of carrying out certain steps as set forth in an illustrative embodiment
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Appeal2014-009989
Application 13/521,121
section of the Specification does not substantiate Appellants' argument that
there is a patentable distinction between the article of representative claim 1
and the applied article of Patel based on a method of preparation. In this
regard, we further observe that Appellants' Specification indicates that the
claimed invention "is not limited to the illustrative embodiments set forth"
(Spec. p. 62, 11. 9-12).
Accordingly, Appellants' arguments are insufficient to identify
reversible error in the Examiner's obviousness holding respecting the first
stated rejection, which is premised on the Examiner's determination that at
least some penetration of polymer into the nanovoided layer would have
been reasonably expected to occur in the article of Patel (Ans. 2-11).
It follows that, on this appeal record, we sustain the Examiner's first
stated obviousness rejection.
Appellants do not present any further argument with respect to the
Examiner's separate obviousness rejection of dependent claim 16.
Therefore, we shall likewise sustain the latter rejection for the reasons
advanced by the Examiner.
CONCLUSION
The Examiner's decision to reject the appealed claims 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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