James McGuire

Patent Trials and Appeals Board

Dec 2, 2020

2020002328 (P.T.A.B. Dec. 2, 2020)

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.
12/017,031 01/19/2008 James E. McGuire JR. entrotech 07-0004 5552
36032 7590 12/02/2020
THE GRIFFITH LAW FIRM, A P.C.
991C Lomas Santa Fe Drive
Suite 450
Solana Beach, CA 92075
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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):
lgriffith@griffithpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES E. MCGUIRE
Appeal 2020-002328
Application 12/017,031
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s February 21, 2019 decision to finally reject claims 1, 2, 7–
17, 23–25, 27–32, and 34-36 (“Final Act.”). 1 An oral hearing was
held by telephone on October 29, 2020, a transcript of which will be
made part of the record. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Entrotech Inc. as the real party
in interest. (Appeal Br. 3).
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to an improved protected
graphics assembly having a graphics layer and an outwardly exposed
polymer layer which is essentially free of vinyl and having a gloss
value greater than 90 (Abstract). Independent claim 1 recites that the
graphics layer has a maximum thickness of about 8 microns.
Independent claim 17 recites a motorized vehicle having a protected
graphics assembly thereon. Claim 17 does not have a thickness
limitation for the graphics layer, but recites that the protective
graphics assembly is thicker where it is on a front exterior surface of
the motorized vehicle than where it is applied elsewhere on the
exterior surface of the vehicle. Independent claims 1, 17, 32, and 34
are representative of the claimed invention and are reproduced below
from the Claims Appendix:
1. A protected graphics assembly consisting of:
optionally, at least one adhesive layer;
at least one graphics layer comprising at least one
graphical image and having a maximum thickness of
about 8 microns; and
at least one polymer layer, one of which is
outwardly exposed when the protected graphics assembly
is applied to a surface, that is essentially free of vinyl and
having a gloss value of greater than 90 when tested
according to ASTM D2457-03 at a 60-degree angle and
comprising a urethane film,
wherein the protected graphics assembly has a
thickness of about 150 microns or less.

17. A motorized vehicle comprising at least one surf ace
having on at least a portion thereof a protected graphics
assembly, the protected graphics assembly comprising
sequential layers comprising:
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optionally, at least one adhesive layer;
at least one graphics layer; and
at least one polymer layer, one of which is
outwardly exposed when the protected graphics assembly
is applied to the surface, that is essentially free of vinyl
and having a gloss value of greater than 90 when tested
according to ASTM D2457-03 at a 60-degree angle and
comprising a urethane film or an acrylic film,
wherein a portion of the protected graphics
assembly applied to a front, exterior surface of the motor
vehicle has a greater thickness than that applied
elsewhere on the exterior surface.

32. A protected graphics assembly consisting of sequential
layers as follows:
at least one adhesive layer;
at least one graphics layer comprising at least one
graphical image and having a maximum thickness of about
8 microns; and
at least one polymer layer, one of which is
outwardly exposed when the protected graphics assembly
is applied to a surface, that is essentially free of vinyl and
having a gloss value of greater than 90 when tested
according to ASTM D2457-03 at a 60-degree angle and
comprising a urethane film,
wherein the protected graphics assembly has a
thickness of about 150 microns or less.

34. A protected graphics assembly consisting of
sequential layers as follows:
at least one adhesive layer;
at least one graphics layer having a maximum
thickness of about 8 microns; and
at least one polymer layer, one of which is
outwardly exposed when the protected graphics assembly
is applied to a surface, that is essentially free of vinyl and
having a gloss value of greater than 90 when tested
according to ASTM D2457-03 at a 60-degree angle and
comprising a polyurethane material,
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wherein the protected graphics assembly has a
thickness of about 150 microns or less.

(Appeal Br. 87–96, Claims App.)

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Conforti et al. US 5,620,819 April 15, 1997
Dathe US 2005/0175794 A1 August 11, 2005

REJECTIONS
1. Claims 9–11, 17, and 35 are rejected under
35 U.S.C. §112, second paragraph as being indefinite.2
2. Claim 10 is rejected under 35 U.S.C. § 112, fourth
paragraph as being of improper dependent form.
3. Claims 1, 7, 8–14, 23–25, 27–32 3, and 34–36 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Conforti.

2 The Final Action indicates that claims 24 and 36 are also subject to
rejection under 35 U.S.C. § 112, second paragraph (Final Act. 4).
However, the Examiner does not provide any explanation of the
rejection of claim 36 on this basis, and in the Answer does not include
claim 36 in the statement of the rejection (Ans. 5). Accordingly, we
conclude that claims 24 and 36 were inadvertently included in the
statement of rejection in the Final Action, but were not actually
subject to rejection under 35 U.S.C. § 112, second paragraph.
3 While claim 32 is not clearly subject to this rejection in the Final
Action, it is substantially similar in scope to claim 34, and was
mentioned and discussed in the Examiner’s Answer at pages 8 and 9.
Thus, we believe the omission from the § 103(a) rejection over
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4. Claims 1, 2, 10, and 15–17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Dathe in view of Conforti.
OPINION
We have reviewed the rejections set forth in the final action, the
arguments set forth in the detailed appeal brief (and as amplified
during the oral hearing), and the Examiner’s responses to Appellant’s
arguments (Ans. 15–31). We address each claim which is argued
separately. If a claim was not separately argued, its stands or falls
with the claim from which it depends.
Rejection 1 – 35 U.S.C. §112, second paragraph. We will
address the various indefiniteness rejections separately.
Claims 10 and 17. The Examiner finds that independent
claim 17 recites that the outward polymer layer comprises a urethane
film, while claim 10, which depends from claim 17, recites that the
polymer layer comprises a polyurethane material. According to the
Examiner, “[t]hese appear to be the same chemical materials, and its
not clear what [Appellant] intends or how they differ” (Final Act. 4–
5). Appellant argues that one of skill in the art would understand that
“a urethane film is a film of one type of polyurethane materials,”
therefore suggesting that urethane film is subset of a larger group of
polyurethane materials (Appeal Br. 18; see also Specification ¶ 34).
Thus, we determine that the difference between a “urethane film” and

Conforti in the Final Action was an inadvertent error that was
corrected in the Answer, and we address it as though it were part of
the rejection.
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a “polyurethane material” would have been clear to a person of
ordinary skill in the art, and reverse this rejection.
Claim 9. The Examiner states that “[i]t is not clear
whether the . . . narrower ranges in line 2 (those ranges following ‘are
less than about 5 microns’) are limitations that are part of the claim
which renders the claim indefinite” (Ans. 5). Claim 9 reads, in its
entirety, as follows: “The protected graphics assembly of claim 1,
wherein the graphics layer has a thickness of about 5 microns to about
8 microns.” Thus, the rejection articulated by the Examiner is not
supported by the language of claim 9, which sets forth a narrower
range for the thickness of the graphics layer (which is described in
claim 1 as having “a maximum thickness of about 8 microns.” The
language of claim 9 is sufficiently clear so as to meet the requirements
of 35 U.S.C. §112, second paragraph, and we reverse this rejection.
Claim 11. The Examiner stated that a “similar rationale”
as was used in connection with the rejection of claim 9 applied to
claim 11 (Final Act. 5). Claim 11 recites “[t]he protected graphics
assembly of claim 1, wherein the polymer layer has a thickness of
about 10 microns to about 50 microns.” As was the case with claim 9,
dependent claim 11 simply sets forth a narrower range for the
thickness of the polymer layer. This is not indefinite within the
meaning of 35 U.S.C. §112, second paragraph, and we reverse this
rejection.
Claim 35. Claim 35 recites “[t]he protected graphics
assembly of claim 34, wherein the at least one graphics layer is
continuous throughout the protected graphics assembly.” The
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Examiner finds that the term “continuous” is indefinite because “it is
not clear what graphics are continuous as they are discontinuous
because they are graphics” (Final Act. 5). However, the Examiner has
erred, because the claim does not recite that the “graphics are
continuous,” but instead that the “graphics layer is continuous”
(emphasis added). The Examiner has not provided an explanation of
why a graphics layer cannot be continuous, as set forth in the claim.
Accordingly, we reverse this rejection.
Rejection 2 – 35 U.S.C. § 112, fourth paragraph. Claim 10 is
rejected as being of improper dependent form for failing to further
limit the subject matter of claim from which it depends (claim 17)
(Final Act. 6). As set forth in the 35 U.S.C. §112, second paragraph
rejection of claims 10 and 17, the Examiner finds that it is not clear
how the urethane film of independent claim 17 is different from the
polyurethane material of claim 10. Claim 17 recites that the polymer
layer comprises a urethane film or an acrylic film. Appellant argues
that because claim 17 recites the use of a urethane film or an acrylic
film, claim 10 further limits claim 17 because it does not recite an
acrylic film (Appeal Br. 27–28). This argument is persuasive, and we
reverse the rejection. Thus, claim 10 does further limit the scope of
claim 17, and satisfies the requirements of 35 U.S.C. § 112, fourth
paragraph.
Rejection 3 – 35 U.S.C. § 103 over Conforti. The Examiner’s
findings and determinations underlying the obviousness rejection over
Conforti are set forth at pages 7–11 of the Final Action. We address
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the arguments set forth by Appellant in the Appeal Brief, but group
the arguments as possible so as to avoid undue repetition.
Argument that Conforti is Non-Analogous Art.
Appellant argues that Conforti is not properly used in an obviousness
rejection because it is non-analogous art (Appeal Br. 31). Appellant
properly notes that prior art is only properly used in an obviousness
rejection if it is analogous art, and that “a reference is analogous art to
the claimed invention if: (1) the reference is from the same field of
endeavor as the claimed invention (even if it addresses a different
problem); or (2) the reference is reasonably pertinent to the problem
faced by the inventor (even if it is not in the same field of endeavor as
the claimed invention)” (id., citing In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004).
Appellant argues that Conforti is directed towards primary
binary images principally in the graphics art industry, while the
claimed invention is directed to protected graphics assemblies for use
on vehicles (Appeal Br. 32). Appellant also points to the different
classification of the application on appeal and Conforti as evidence of
non-analogous status. Therefore, according to Appellant, Conforti is
not in the same field of endeavor as the claimed invention (id.).
Appellant’s argument is not persuasive. Both Conforti and
Appellant’s system involve multilayer graphics assemblies which
include an outer polymer layer (see, e.g. Conforti, Abstract). While
the principal end uses are not identical, the basic structures are
sufficiently similar that Conforti may properly be considered to be in
the same field of endeavor as Applicant’s claimed invention.
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Accordingly, Conforti is properly used in the obviousness rejections
of this application.4
Argument that the Examiner has not established a
prima facie case of obviousness over Conforti. Appellant contends
that Conforti does not teach or suggest each of the limitations of the
claims. It is well established that the Examiner has the initial burden
of establishing a prima facie case of obviousness based on an inherent
or explicit disclosure of the claimed subject matter under 35 U.S.C. §
103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he
[E]xaminer bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is
described or suggested by the prior art or would have been obvious
based on the knowledge of those of ordinary skill in the art. In re
Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
Appellant argues that because both independent claim 1 and
independent claim 34 recite the transition phrase “consisting of,” they
cannot have been obvious over Conforti because Conforti’s system
contains layers other than those specifically recited in claims 1 and 34
(Appeal Br. 40–45). In particular, Appellant notes that Conforti

4 Because we determine that Conforti is analogous art under the first
prong of the analogous art test (same field of endeavor), we need not
address the second prong (reasonably pertinent to the problems
addressed by the inventor).
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discloses the presence of multiple layers in its system, a number of
which do not meet the claimed requirements (id.).
However, each of claim 1 and claim 34 recites the presence of:
“at least one polymer layer, one of which is outwardly
exposed when the protected graphics assembly is applied
to a surface, that is essentially free of vinyl and having a
gloss value of greater than 90.”

(Claim 1). Appellant contends that the foregoing language requires
that each polymer layer must be “essentially free of vinyl” and have a
gloss value of greater than 90, and that because Conforti’s system
includes polymer layers which do not meet these requirements,
Conforti would not have rendered the claims obvious (Appeal Br. 40–
45). We do not agree.
It is well established that “the PTO must give claims their
broadest reasonable construction consistent with the specification. . . .
Therefore, we look to the specification to see if it provides a definition
for claim terms, but otherwise apply a broad interpretation.” In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(citation omitted). “[A]s applicants may amend claims to narrow their
scope, a broad construction during prosecution creates no unfairness
to the applicant or patentee” (id.). In this instance, the plain language
of the claim does not establish that each of the polymer layers must be
“essentially free of vinyl” and have a gloss value of greater than 90.
Instead, the broadest reasonable interpretation of the claim language is
that only the layer which is outwardly exposed when the protected
graphics assembly is applied to a surface which must be essentially
free of vinyl and have a gloss value of greater than 90. Appellant
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argued during the oral hearing that the placement of the commas in
that part of the claim mandated the narrower claim interpretation, but
we do not agree that broader interpretation is barred by the
punctuation in the claim. For example, the Specification makes clear
that each polymer layer can be different, and does not explicitly say
that each one needs to meet the other requirements set forth in that
portion of the claim5 (Spec. ¶ 30).
Accordingly, we determine that the language of claims 1 and 34
does not require that each polymer layer must be essentially free of
vinyl and have the articulated gloss values. Those properties are only
required for the layer which is outwardly exposed when the protected
graphics assembly is applied to a surface.
Therefore, Appellant’s arguments that because Conforti teaches
or suggests the use of polymer layer which are not essentially free of
vinyl or which do not meet the gloss requirements, it cannot render
the claims obvious (Appeal Br. 40–45), do not show reversible error
because they are not based on the properly construed claim language.
Appellant makes separate arguments about specific claims,
which we address as follows:
Claim 23. Claim 23 depends from claim 1 and recites that “the
surface tension of each layer is within about 5 dynes per centimeter of

5 For example, that portion of the claim might read as follows: “at
least one polymer layer, one of which is outwardly exposed when the
protected graphics assembly is applied to a surface, and each of which
. . .is essentially free of vinyl and having a gloss value of greater than
90….”

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surface tension of adjacent layers therein.” The Examiner determines
that this limitation would have been obvious because “Conforti
inherently has a structure and composition where the surface tensions
of each layer are present and the chemistries of all adjacent layers
form covalent bonds between them because the same materials,
encompassed range of gloss values, and structure is taught” (Final
Act. 10). Appellant argues that the Examiner has not adequately
established that the surface tension of each layer would be within
about 5 dynes per centimeter of the surface tension of adjacent layers
(Appeal Br. 48). We agree.
Although the Examiner demonstrated that the claimed structure
from claim 1 would have been obvious in view of Conforti, Conforti
does not teach or suggest matching the surface tensions of adjacent
layers. The Examiner has not identified sufficient evidence that
establishes that the layers described by Conforti would have the
relative surface tensions required by claim 23. In other words, the
evidence of record does not show that a graphics layer and a
polyurethane layer as taught by Conforti would have surface tensions
within 5 dynes per centimeter, nor has the Examiner persuasively
explained why such relative surface tensions would have been
suggested to one of skill in the art. Accordingly, we conclude the
Examiner has not adequately established a prima facie case of
obviousness for claim 23, and reverse its rejection over Conforti.
Claim 24. Claim 24 depends from claim 1 and recites that
“chemistries of adjacent layers within the protected graphics assembly
are selected such that covalent bonds form between the layers.” The
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basis for the Examiner’s rejection is that because the materials used
by Conforti are the same as the claimed materials, this property would
also be met. The rejection is flawed for essentially the same reasons
discussed above with respect to claim 23. That is, the Examiner has
not established that the graphics layer and the polymer layers of
Conforti would form covalent bonds, or provided an explanation of
why picking the specific components in order to create such bonds
would have been obvious. Accordingly, we reverse this rejection.
Claim 25. Claim 25 depends from claim 1 and recites that “the
graphics layer is essentially free of low surface energy additives.”
The Examiner determines that this would have been obvious because
Conforti “teaches the graphic layer free of low surface energy
materials because there are no ‘high’ surface energy materials” and
that, therefore, “the graphic layer is considered to be free of surface
energy materials” (Final Act. 11). Appellant argues that Conforti
teaches that various low surface energy additives can be added to the
graphics layers, and that Conforti teaches its graphics layer is ideally
“weakly adherent” (Appeal Br. 53–55). Appellant’s argument is not
persuasive, because, as noted by the Examiner, the additives cited by
Appellant in Conforti are only optional. Thus, Conforti does teach,
even if it is not a preferred teaching, that the graphics layer can be free
of additives, including low surface energy additives. Thus, we affirm
the rejection of claim 25.
Claim 27. Claim 27 depends from claim 1 and recites that “the
polymer layer is essentially free of silicones and fluoropolymers.”
The Examiner finds that Conforti teaches that its polymer layer can be
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urethane, which is free from silicones and fluroropolymers (Final Act.
11). Appellant argues that Conforti expresses a preference that its
polymer layer contain siloxane (corresponding to a silicone), or that
Conforti teaches that it can include a release layer which contains
polytetrafluoroethylene (Appeal Br. 58–59). However, these
teachings by Conforti are only optional. Appellant has not shown
error in the Examiner’s finding that Conforti teaches the use of a
simple polyurethane, which would not include a silicone or a
fluoropolymer. Accordingly, we sustain the rejection of claim 27.
Claim 28. Claim 28 depends from claim 1 and recites that the
claimed graphics assembly is “removable from a surface without
interlayer delamination after adherence thereto.” In making the
rejection of claim 28, the Examiner states:
Conforti teaches a removed assembly after adherence to a
surface because . . . it is a PSA and the PSA layer of Conforti
can be used without the adjacent layer. See 9:60-10:41. (See
rationale above.) Thus, the adhesion strength against the
adjacent layer is less than the PSA and substrate as the same
construction and materials are taught. Due to the inherent nature
of PSAs and the adjacent layers, it would be expected to be
removed with a limited degree of force as compared to regular
adhesives that are not pressure-sensitive and thus function
without interlayer delamination.

(Final Act. 11). Appellant’s arguments seeking reversal are set forth
in the Appeal Brief at pages 60–64. These arguments are not
persuasive of reversible error. The Examiner finds, and Appellant
does not dispute, that Conforti’s PSA (pressure sensitive adhesive)
could be removable from a surface. Moreover, the benefits of being
able to remove a graphics assembly from a surface would have been
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readily apparent to a person of skill in the art, as would the benefits of
doing so without delaminating the assembly. Accordingly, we sustain
the rejection of claim 28.
Claims 29–31. Claim 29 depends from claim 1 and recites that
“the protected graphics assembly has a thickness of about 125 microns
or less.” The Examiner finds that Conforti teaches thicknesses of each
individual layer which total less than the claim 125 microns (Final
Act. 10). Appellant argues that the Examiner’s finding does not take
into account each Conforti’s layers (Appeal Br. 65–67). This
argument is not persuasive because Appellant’s calculations rely on
preferred thicknesses disclosed by Conforti, not the complete
disclosures of Conforti (id.). Moreover, Appellant has not shown
error in the Examiner’s finding that taking the minimum thicknesses
for each layer of Conforti’s assembly would result in a total thickness
of greater than 125 microns. Accordingly, we sustain the rejection of
claim 29.
Appellant advances similar arguments in connection with
claims 30 and 31 (Appeal Br. 68–69), which are not persuasive for the
same reasons discussed above in connection with claim 29. We
therefore also affirm the rejections of claims 30 and 31.
Claims 32 and 34. Claims 32 and 34 each recite the presence
of “sequential layers” of an adhesive layer, a graphics layer, and a
polymer layer. In general, Appellant argues that Conforti fails to
teach an adhesive layer and a polymer layer sandwiching a graphics
layer, so that the adhesive layer can adhere the assembly to a surface
while the polymer layer is then outwardly exposed (i.e. directly
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visible) (Appeal Br. 70–72). Appellant also argues that the different
end use of Conforti’s assembly means that a person of skill in the art
would not have had a reason to alter the order to layers to meet the
requirements of the claim (Appeal Br. 72).
Appellant’s argument is persuasive, in that the Examiner has
not make a finding that the required layers are in the required
sequence, and the Examiner explicitly, and erroneously, states that the
claims “do[] not require the adhesive layer to be in any particular
location” (Final Act. 9). Therefore, the Examiner does not provide
any reasoning or explanation of why a person of skill in the art would
have placed the layers in the claimed sequence. While the Examiner’s
statement regarding the lack of any requirement for the adhesive layer
to be in a particular location is true with respect to independent claim
1, it is not true with respect to independent claims 32 and 34, each of
which recite a specific sequence for the layers. Accordingly, the
Examiner has not met the burden of demonstrating that the prior art
discloses or suggests each limitation of claims 32 and 34, and the
claims dependent thereon. Accordingly, we reverse the obviousness
rejections of those claims.
Rejection 4 – 35 U.S.C. § 103(a) over Dathe in view of
Conforti. The principal different argument raised in connection with
this rejection is whether the Examiner has provided an adequate
reason to combine the references. The Examiner states that the
motivation to combine the references is because both references were
“concerned with the same problem of gloss values attributed to
assemblies” (Final Act. 14). We agree with the Examiner that both
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references mention gloss value as an important factor in their systems
(see, e.g., Dathe ¶ 48; see also Conforti 12:23–26), such that a person
of skill in the art would have sought to combine their teachings.
Accordingly, we sustain the rejection.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
9–11, 17,
35
112, ¶ 2 Indefiniteness 9–11, 17, 35
10 112, ¶ 4 Improper
dependent form
10
1, 7, 8–14,
23–25,
27–32,
34–36
103(a) Conforti 1, 12–14, 25, 27,
28, 29–31
23, 24, 32,
34–36
1, 2, 10,
15–17
103(a) Conforti, Dathe 1, 2, 10, 15–17
Overall
Outcome
1, 2, 10, 12–17,
25, 27, 28, 29–31
9, 11, 23, 24,
32, 34–36

AFFIRMED-IN-PART