Kuraray Europe GmbH

Patent Trials and Appeals Board

Aug 28, 2020

15491261 - (D) (P.T.A.B. Aug. 28, 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.
15/491,261 04/19/2017 Uwe KELLER KURA0149PUS 4942
22045 7590 08/28/2020
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
UTT, ETHAN A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/28/2020 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UWE KELLER
Appeal 2019-004833
Application 15/491,261
Technology Center 1700
Before LINDA M. GAUDETTE, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–13 and 15–20.3
We AFFIRM IN PART.

1 This Decision includes citations to the following documents: Specification
filed April 19, 2017 (“Spec.”); Final Office Action dated August 28, 2018
(“Final”); Appeal Brief filed February 22, 2019 (“Appeal Br.”); Examiner’s
Answer dated April 4, 2019 (“Ans.”); and Reply Brief filed June 3, 2019
(“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as Kuraray
Europe GmbH. Appeal Br. 1.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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CLAIMED SUBJECT MATTER
The “invention relates to laminated glass comprising a
functionalisedpolymer film sandwiched between two films based on
polyvinyl acetal, having high and low plasticiser content.” Spec. ¶ 1.
According to the Appellant, the invention addresses the problem of
“incorporation of polymer films into a glass laminate while avoiding optical
distortion.” Appeal Br. 4.Claims 1 and 15, reproduced below, are illustrative
of the claimed subject matter:
1. A laminated glass, consisting of two glass sheets
interlayered with an interlayer film assembly comprising
at least one film A containing a polyvinyl acetal PA and
optionally at least one plasticiser WA,
at least one film B containing a polyvinyl acetal PB and
at least one plasticiser WB and
at least one polymer film C, wherein
film A comprises less than 16 % by weight of
plasticiser WA,
film B comprises at least 16 % by weight of
plasticiser WB,
film C comprises a polyamide, polyethylene
terephthalate (PET), polybutylene terephthalate (PBT),
polyvinyl alcohol (PVA), polylactic acid (PLA),
cellulose acetate, or ionomer polymer, and
wherein film C is located between film A and
film B.
Claims Appendix 1 (paragraphing added).
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15. The laminated glass of Claim 1, wherein the
laminated glass is prepared by first forming a duplet film of
film A and film C, melt adhering the duplet film to a first glass
sheet with film A directly abutting the first glass sheet, and then
applying the film B onto the film C layer of the duplet film,
applying a second glass sheet onto film B, and laminating under
heat and pressure.
Id. at 2.
REJECTIONS4, 5
1. Claims 1–3, 6, 7, 11–13, and 15–17 are rejected under 35
U.S.C. § 103 as unpatentable over Lu (US 2006/0210776 A1, pub. Sept. 21,
2006). Final Act. 6.
2. Claims 4 and 5 are rejected under 35 U.S.C. § 103 as
unpatentable over Lu in view of Lee (US 2007/0009714 A1, pub. Jan. 11,
2007). Final Act. 10.
3. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over
Lu in view of Beekhuizen (EP 2,269,816 A1, pub. Jan. 5, 2011). Final Act.
11.

4 The Examiner has withdrawn the rejection of claim 19 under 35 U.S.C.
§ 112(d) or pre-AIA 35 U.S.C. § 112, 4th paragraph. Ans. 15.
5 In the Final Office Action, the Examiner includes claim 18 (but not claim
16) in the first ground of rejection, and identifies claim 19 (but not claim 18)
and claim 21 (but not claim 19) as subject to the fifth and sixth grounds of
rejection, respectively. In an Amendment filed November 27, 2018, the
Appellant renumbered claims 17–21 as 16–20. In the Advisory Action dated
December 27, 2018, the Examiner stated that the claim numbering that
appears in the November 27, 2018 Amendment is the correct numbering
and, therefore, references to claims 17–21 should be treated as references to
claims 16–20 as they appear in the November 27, 2018 Amendment. In our
discussion, we use the November 27, 2018 claim numbering.
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4. Claims 9 and 10 are rejected under 35 U.S.C. § 103 as
unpatentable over Lu in view of Keller (US 2014/0224423 A1, pub. Aug.
14, 2014). Final Act. 12.
5. Claim 18 is rejected under 35 U.S.C. § 103 as unpatentable
over Lu in view of Nakamachi (US 5,066,525, iss. Nov. 19, 1991) as
evidenced by OXFORD DICTIONARY OF SCIENCE, 6th ed., p.178
(“Oxford”). Final Act. 14.
6. Claims 19 and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Lu in view of Moynihan (US 3,458,388, iss. July 29,
1969). Final Act. 15.
OPINION
The Examiner rejected claims 1–3, 6, 7, 11–13, and 15–17 under 35
U.S.C. § 103 as unpatentable over Lu. See Rejection 1 supra p. 3. The
Appellant argues in support of patentability of claims 1, 2, 7, and 15.
Claim 1 recites “[a] laminated glass, consisting of two glass sheets
interlayered with an interlayer film assembly comprising” films A, B, and C.
Claim 1 requires that “film C is located between film A and film B.” In
rejecting claim 1, the Examiner relies on the following disclosure in Lu (see
Final Act. 6–8): Lu discloses an interlayer “laminated between two sheets of
glass panes.” Lu ¶ 22. In one embodiment, the interlayer comprises three
layers: a wedge-shaped acoustic polymer sheet, a flat non-acoustic polymer
sheet, and a poly(ethylene terephthalate) layer positioned between the
wedge-shaped and flat sheets. Id. ¶¶ 19, 21. Lu defines an “acoustic polymer
sheet” as a polymer sheet having “a glass transition temperature of less than
25° C,” and defines a “non acoustic polymer sheet[]” as having a glass
transition temperature of 25° C or greater. Id. ¶ 34. Lu discloses that
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“[p]lasticized poly(vinyl butyral) is most commonly used to form [the]
polymer sheets.” Id. ¶ 33. A “[c]onventional, non acoustic poly(vinyl
butyral) interlayer typically has a glass transition temperature in the
range of 30–33° C.” Id. ¶ 46. Lu discloses that “[i]n various embodiments
. . . non acoustic polymer sheets can comprise 10 to 90 . . . parts plasticizer
per hundred resin . . . parts” (id. ¶ 45), which the Examiner determines is
equal to 9.1 to 47.4 % by weight plasticizer in the non-acoustic polymer
sheet (Final Act. 6). According to Lu, an “acoustic interlayer can be obtained
by increasing the concentration of plasticizer . . . to decrease the glass
transition temperature.” Lu ¶ 46. Lu discloses that “[i]n various
embodiments of the . . . invention, an acoustic polymer sheet comprises, for
example, 30–100 phr of plasticizer” (id.), which the Examiner determines is
equal to 23.1 to 50 % by weight plasticizer in the acoustic polymer sheet
(Final Act. 7).
The Examiner found that Lu discloses a laminated glass consisting of
two glass sheets interlayered with three films corresponding to the claim 1
films A, B, and C, and arranged so that film C is between films A and B.
Final Act. 6. The Examiner found that Lu’s film B includes plasticizer in an
amount that falls within the claimed range of “at least 16 % by weight”
(claim 1). Id. at 7. The Examiner found that Lu’s film A includes plasticizer
in an amount that overlaps the claimed range of “less than 16 % by weight”
(claim 1). Id. The Examiner further found that Lu teaches that the amount of
plasticizer in film A can be adjusted depending on the particular application
and, therefore, including plasticizer in the claimed amount of “less than
16 % by weight” would have been a matter of routine optimization. Id.
(citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
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The Appellant does not dispute that Lu discloses the individual films
recited in claim 1, but argues that arriving at the claimed arrangement of
films would have required too much picking and choosing. Appeal Br. 9.
The Appellant argues that Lu fails to recognize the optical distortion
problem that occurs when using a polymer film with a polymer sheet and,
therefore, does not provide direction to select the claimed combination of
films. Id. at 10–11. The Appellant argues that Lu’s statement that the
plasticizer content can be varied over a wide range is insufficient to provide
direction to select two films having the claimed plasticizer amounts. Id. at
14. The Appellant notes that Lu’s laminated glass examples do not include a
polymer film, and in each example, the non-acoustic polymer sheet—
corresponding to the claimed film A—contains 27.5 weight percent
plasticizer, which exceeds the claim 1 requirement of “less than 16 % by
weight of plasticiser.” Id. at 13–14. The Appellant also argues that the
Examiner has not identified a particular application that would have led the
ordinary artisan to optimize the plasticizer amount to “less than 16 % by
weight” (claim 1). Id. at 14.
A reference’s teachings and its obvious variants are relevant prior art,
even if the reference addresses a problem which differs from that addressed
by a patent applicant. In re Translogic Tech., Inc., 504 F.3d 1249, 1259
(Fed. Cir. 2007). Thus, the fact that Lu may not explicitly address optical
distortion does not control the obviousness analysis.
The Appellant’s argument that Lu fails to provide direction to select
three films that fall within the limitations recited in claim 1 is also
unpersuasive. As found by the Examiner, “Lu expressly and positively
discloses embodiments of an interlayer film assembly wherein two polymer
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sheets and an intermediate polymer layer are used.” Ans. 18 (citing Lu
¶¶ 15, 21); Lu ¶ 21 (“[A] polymer film can be included between the wedge
shaped polymer sheet 14 and the flat polymer sheet 12 . . . to produce a three
layer embodiment.”). Lu lists only one exemplary material for the polymer
film layer: poly(ethylene terephthalate). Lu ¶ 21. And, the Appellant
acknowledges that “Lu appears to prefer polyvinyl acetals [for the acoustic
and non-acoustic polymer sheets], since these are used in all his examples.”
Appeal Br. 12. As to the Appellant’s contention that the non-acoustic
films—corresponding to claim 1’s film A—in Lu’s examples include at least
27.5 % by weight plasticizer (Appeal Br. 12), we note that “[a] reference
must be considered for everything that it teaches, not simply the described
invention or a preferred embodiment.” In re Applied Materials, Inc., 692
F.3d 1289, 1298 (Fed. Cir. 2012). Where, as here, the prior art and claimed
ranges overlap, there is a presumption of obviousness. 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). Thus, the Examiner’s fact finding and
reasoning was sufficient to establish that claim 1 is prima facie obvious even
absent the Examiner’s additional finding that adjusting the amount of
plasticizer in Lu’s non-acoustic film to the claimed amount of “less than
16 % by weight” would have been a matter of routine optimization (see
Final Act. 7).
Regardless, we are not persuaded of error in the Examiner’s finding
that the plasticizer content is a result-effective variable. As found by the
Examiner, Lu discloses that adding plasticizer affects acoustic properties,
“wherein, all other things being the same, a lower plasticizer content is used
for a non-acoustic polymer sheet as compared to the acoustic polymer
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sheet.” Ans. 21 (citing Lu ¶¶ 45, 46). The Appellant’s argument that “such
an optimization is irrelevant to the problems of eliminating distortion and
increasing penetration resistance” (Reply Br. 5) is not persuasive because, as
noted above, the prior art need not address the same problem addressed by
the applicant. Moreover, “the prior art need not provide the exact method of
optimization for the variable to be result-effective. A recognition in the prior
art that a property is affected by the variable is sufficient to find the variable
result-effective.” Applied Materials, 692 F.3d at 1297. The Appellant has
not provided objective evidence establishing criticality in the claimed
plasticizer ranges. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990);
Aller, 220 F.2d at 456.
Claim 2 depends from claim 1 and recites “wherein the tensile stress
of film C at 10% elongation is at least 100% that of the tensile stress of film
B at 10% elongation.” Claims App. 1. The Appellant asserts that a film
having these properties provides the glass laminate with a high penetration
resistance. Appeal Br. 16 (citing Spec. ¶ 14 (“This embodiment provides
laminated glass with enhanced penetration resistance.”)). The Appellant
argues that the Examiner failed to cite evidence to support a finding that Lu
discloses a film that provides this feature. Id. at 17. Referencing the
disclosure in Lu paragraph 28, the Appellant argues that Lu teaches that its
polymer films cannot provide the necessary penetration resistance to a
multiple layer glazing structure. Id. at 16; see Lu ¶ 28 (“Polymer films differ
from polymer sheets, as used herein, in that polymer films do not themselves
provide the necessary penetration resistance and glass retention properties
to a multiple layer glazing structure, but rather provide performance
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improvements, such as infrared absorption or reflection character.”
(emphasis added)).
The Appellant’s argument is not persuasive because claim 2 does not
require that film C alone provide the necessary penetration resistance. See
Claims App. 1. As explained by the Examiner, Lu paragraph 28 “only states
that minimum requirements of penetration resistance are not met by a
polymer film alone.” Ans. 22. Similarly, Specification paragraph 14
discloses that the claim 2 “embodiment provides laminated glass with
enhanced penetration resistance.” Spec. ¶ 14 (emphasis added).
The Appellant further disputes the Examiner’s finding that Lu’s
description of the polymer film as “usually ha[ving] a greater . . . tensile
modulus regardless of composition than that of an adjacent polymer sheet”
(Lu ¶ 29) “suggests that the tensile stress at any given strain for the film C is
greater than the film B” (Ans. 23; see also Final Act. 8). Reply Br. 7; Appeal
Br. 17. The Appellant argues that “[t]ensile modulus has no relationship to
tensile stress at 10% elongation,” explaining that “tensile modulus is the
slope of the tensile stress/strain curve exhibited by the film, and as is also
well known in mathematics, a single point, i.e. a tensile stress at 10%
elongation cannot define a slope.” Appeal Br. 17 (emphasis omitted).
The Appellant’s argument is not persuasive. As explained by the
Examiner, Lu’s description of the polymer film as having a greater tensile
modulus than that of an adjacent polymer sheet means that a higher tensile
stress must be applied to the polymer film (corresponding to the claimed
film C) than is applied to the polymer sheet (corresponding to the claimed
film B) to achieve the same strain, and the Appellant agrees that “tensile
modulus is the slope of the tensile stress/strain curve.” Ans. 23. “Thus, at
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10% elongation, or tensile strain, Lu implies more tensile stress is applied to
the film C than the film B.” Id.
Turning next to claim 15, drafted in product-by-process format, the
Appellant argues that the recited process steps result in “a different product
than when individual sheets A and B and film C are individually applied
prior to laminating under heat and pressure.” Appeal Br. 18. The Appellant’s
argument is not persuasive because the Appellant does not identify evidence
to support the alleged differences in the claimed and prior art products. See
id.; Geisler, 116 F.3d at 1471 (explaining that argument by counsel cannot
take the place of evidence); Spec. ¶ 64 (describing the claim 15 process, but
failing to describe the improvement in adherence alleged by the Appellant);
see also Ans. 24.
The Appellant also argues in support of patentability of claim 7. See
Appeal Br. 18. These arguments have been fully addressed by the Examiner
and are unpersuasive for the reasons explained in the Answer. See Ans. 23–
24.
Accordingly, we sustain the rejection of claims 1–3, 6, 7, 11–13, and
15–17 for the reasons stated above and in the Final Office, the Advisory
Action, and the Answer. See 37 C.F.R. § 41.37(c)(iv)(2018).
The Examiner rejected claims 4 and 5, claim 8, and claims 9 and 10
under 35 U.S.C. § 103 as unpatentable over Lu in view of various secondary
references. See Rejections 2–4 supra pp. 3–4. The Appellant’s arguments are
limited to assertions that the secondary references’ teachings fail to cure the
deficiencies in the Examiner’s rejection of claim 1 from which claims 4, 5,
and 8–10 depend. See Appeal Br. 20–21. Because we are not persuaded of
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error in the Examiner’s rejection of claim 1, we sustain the rejections of
claims 4, 5, and 8–10.
The Examiner rejected claim 18 under 35 U.S.C. § 103 as
unpatentable over Lu in view of Nakamachi as evidenced by Oxford. See
Rejection 5 supra p. 4. Claim 18 depends from claim 1 and recites “wherein
film C is a PET film having a surface roughness parameter Ra of less than 3
μm and a surface roughness Rz of less than 5 μm.” Claims App. 3. The
Appellant disputes the Examiner’s finding that the ordinary artisan would
have modified Lu’s polymer film (corresponding to the claimed film C) to
have surface roughness parameters of less than 0.740 μm (i.e., within the
claimed ranges) based on “Nakamachi’s disclosure [that] the roughness is
suitably less than the wavelength of light used in the HUD [(head-up
display)],” and Oxford’s disclosure that visible light wavelengths range from
0.425–0.740 μm (Final Act. 15). See Appeal Br. 21–22. The Appellant
argues that the references describe entirely different head-up displays. Id.
More specifically, the Appellant argues that Nakamachi is concerned with
limiting surface roughness because it uses a holographic film, which requires
optical clarity. Id. at 22. The Appellant contends that Lu “contains a wedge-
shaped interlayer for producing his non-halogramic head[]-up display,”
“does not require any optical clarity whatsoever,” and “does not even
discuss optical clarity.” Id.
The Examiner cites Lu paragraph 3 as evidence that head-up displays
require clarity. Ans. 25. We agree with the Appellant, however, that neither
Lu paragraph 3 nor the Examiner’s relied-upon disclosure in Nakamachi
supports the Examiner’s finding that the ordinary artisan would have had a
reason to use a PET film having a surface roughness within claim 18’s
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ranges. Lu paragraph 3 discloses that a wedge-shaped interlayer “provide[s]
the correct light dynamics through the windshield required for a head up
display,” thus suggesting that Lu’s wedge-shaped interlayer provides
sufficient clarity. The Nakamachi disclosure cited by the Examiner
addresses lack of clarity in laminated glass panels that incorporate a
hologram sheet. The Examiner has not directed us to any evidence
suggesting that the ordinary artisan would have expected the same clarity
problems that occur in a laminated glass panel that incorporates a hologram
sheet also to occur in a laminated glass panel that incorporates a wedge-
shaped interlayer. Accordingly, we do not sustain the rejection of claim 18.
The Examiner rejected claims 19 and 20 under 35 U.S.C. § 103 as
unpatentable over Lu in view of Moynihan. See Rejection 6 supra p. 4.
Claims 19 and 20 depend from claim 1 and recite that film A contains,
respectively, “less than 4 weight percent plasticizer” and “no plasticizer.”
Claims App. 3. The Examiner determined that the ordinary artisan would
have modified Lu’s polymer sheet (corresponding to the claimed film A) to
reduce or eliminate the plasticizer based on Moynihan’s disclosure that a
layer of unplasticized polyvinyl butyral (PVB) provides a laminated glass
with structural rigidity even when a glass sheet is broken. Final Act. 16.
The Appellant persuasively argues that the Examiner’s evidence is
insufficient to support a finding that the ordinary artisan reasonably would
have expected that reducing the plasticizer content of Lu’s polymer sheet
(corresponding to the claimed film A) would improve the laminate’s
structural rigidity. See Appeal Br. 23–24. As argued by the Appellant,
Moynihan discloses that its polyvinyl butyral sheets “are very strong by
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virtue of having a high molecular weight in combination with a high residual
polyvinyl alcohol content,” not the elimination or reduction in plasticizer
content. Id. at 23; see Moynihan 1:64–71. Accordingly, we do not sustain
the rejection of claims 19 and 20.
Any additional arguments made by the Appellant, but not discussed in
this Decision, have been fully addressed by the Examiner and are
unpersuasive for the reasons explained in the Answer.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6, 7,
11–13,
15–17
103 Lu 1–3, 6, 7,
11–13, 15–
17

4, 5 103 Lu, Lee 4, 5
8 103 Lu, Beekhuizen 8
9, 10 103 Lu, Keller 9, 10
18 103 Lu, Nakamachi, Oxford 18
19, 20 103 Lu, Moynihan 19, 20
Overall
Outcome:
1–13, 15–
17
18–20

TIME PERIOD FOR RESPONSE
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 IN PART