KURARAY EUROPE GMBH

Patent Trials and Appeals Board

Nov 16, 2020

2019006160 (P.T.A.B. Nov. 16, 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.
14/443,323 05/15/2015 Jan BEEKHUIZEN KURA0138PUSA 5221
22045 7590 11/16/2020
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
LOWREY, DANIEL D
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
11/16/2020 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 JAN BEEKHUIZEN
and UWE KELLER
____________

Appeal 2019-006160
Application 14/443,323
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–27 of Application 14/443,323. Final
Act. 1 (Oct. 4, 2018). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Kuraray Europe GmbH, as the real party
in interest. Appeal Br. 1.
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I. BACKGROUND
The ’323 Application describes a plasticizer-containing film for use as
an intermediate layer in laminated glass. Spec. 1:19–21. The film is said to
(i) be suitable for sound-damping and (ii) possess good penetration
resistance properties. Id. The ’323 Application describes that the film is
constructed from at least two sub-films based on plasticizer-containing
polyvinyl acetals with different polyvinyl alcohol content. Id. 1:3–5; 1:21–
23. Claim 11 is representative of the ’323 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
11. An intermediate layer film for laminated glazing,
comprising one or more first sub-films and at least one second
sub-film, both first and second sub-films comprising plasticiser-
containing polyvinyl acetal, the one or more first sub-films
having a first plasticizer content, and the at least one second
sub-film having a second plasticiser content different from the
first plasticiser content, wherein the plasticiser-containing
polyvinyl acetal of each of the one or more first sub-films has a
polyvinyl alcohol content from 17 to 22[]% by weight and a
first plasticizer content of 22 to 27% by weight based on the
total weight of each of the one or more first sub-films, and the
plasticiser-containing polyvinyl acetal of the at least one
second sub-film has a polyvinyl alcohol content from 11 to
14[]% by weight and a second plasticizer content of 30–38% by
weight based on the total weight of the second sub-film, and the
intermediate layer film has a total plasticiser content of less
than 28[]% by weight based on the total weight of all first and
second sub-films in the intermediate layer film[].
Appeal Br. Claims App. 1 (emphasis added).
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II. REJECTION
On appeal, the Examiner maintains the rejection of claims 11–27
under 35 U.S.C. § 103(a) as unpatentable over the combination of Steuer2
and Keller.3 Answer 3–6.
III. DISCUSSION
Appellant argues for reversal of the rejection at issue based upon the
limitations in claim 11. Appeal Br. 2–19; Reply Br. 2–4. We, therefore,
select claim 11 as representative of the claims subject to this ground of
rejection and limit our discussion to this claim. 37 C.F.R. § 41.37(c)(1)(iv).
In rejecting claim 11, the Examiner found that Steuer’s interlayer film
describes each sub-film and feature of the claimed film, except that Steuer is
silent regarding the intermediate layer film having a total plasticizer content
of less than 28% by weight. Final Act. 3. The Examiner, however, found that
Keller discloses “A/B laminates with total amounts of plasticizer such as 26
wt[.]%.” Id. at 4 (citing Keller ¶ 68; Table 1). The Examiner further found
that Keller discloses “laminates of partial films of acetalized polyvinyl
alcohols, such as PVB, wherein the partial films have different plasticizer
contents and a total amount of 15–50 wt[.]%, preferably 20–40 wt[.]%,
plasticizer for each mixture.” Final Act. 3–4 (citing Keller ¶¶ 15, 19, 20, 23).
The Examiner determined that it would have been obvious to a person
having ordinary skill in the art at the time of invention to use Keller’s total
amounts of 15–50 wt.% plasticizer in Steuer’s interlayer film, “including

2 US 2010/0028642 A1, published Feb. 4, 2010.
3 US 2008/0163977 A1, published July 10, 2008.
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amounts presently claimed . . . in order to gain the benefit of [Keller’s] good
mechanical properties with satisfactory sound deadening and processing.”
Final Act. 4 (Keller ¶¶ 4–6, 38, 42).
Appellant argues that the rejection of claim 11 should be reversed
because Steuer is directed to providing less expensive sound deadening
polyvinyl acetate laminating films. Appeal Br. 6. Appellant argues that the
problem Steuer addressed is distinguished from the problem Appellant
addressed, namely “providing polyvinyl acetal laminating films[,] which
simultaneously are sound attenuating as well as impact resistant.” Id. at 8
(citing In re Shaffer, 229 F.2d 476, 480 (CCPA 1956)). Appellant contends
that Steuer, either alone or in combination with Keller, cannot render
Appellant’s invention obvious, because Steuer does not address or mention
the problem that the claimed subject matter solved. Appeal Br. 8; Reply Br.
2.
Appellant, however, is incorrect in arguing that the applied prior art’s
silence regarding simultaneous sound attenuation and impact resistance is
relevant to our disposition. Cross Med. Prods., Inc. v. Medtronic Sofamor
Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in
the art need not see the identical problem addressed in a prior art reference
to be motivated to apply its teachings.”); see also KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 419–20 (2007) (“In determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. . . . The first error of the Court of
Appeals in this case was . . . holding that courts and patent examiners should
look only to the problem the patentee was trying to solve.” (citation
omitted)).
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Appellant argues that the Examiner erred by finding that Steuer
teaches or suggests each feature of the claimed first and second sub-films.
Appeal Br. 8. In particular, Appellant argues that “Steuer never indicates
that the first film should have a plasticizer content of 20 to 27% by weight
measured following lamination and 10 weeks storage.” Id. (emphasis
added). Appellant further argues that only one of Steuer’s second film
examples falls within the claimed polyvinyl alcohol and plasticizer content
ranges. Id. (citing Example 6c).
We are not persuaded by these arguments because the limitations of
claim 11 are silent with respect to any method or timing of plasticizer
measurement. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of
[Appellant’s] arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”). We agree with the Examiner that
the Specification describes that plasticizer measurement can occur following
lamination and after 10 weeks of storage. Answer 6 (citing Spec. ¶¶ 12:13–
16; 24). As the Examiner found, Steuer provides “examples wherein the first
film A has a plasticizer content from 26.5 wt[.]% and the second film B has
a plasticizer content of 37.5 wt[.]%.” Final Act. 3 (citing Steuer ¶ 74; Tables
3, 4). In other words, the claimed plasticizer content ranges encompass
Steuer’s known plasticizer content for interlayer sub-films. See Appeal Br.
Claims App. 1 (claim 11).
Regarding the claimed polyvinyl alcohol content ranges, Steuer’s first
and second plasticizer-containing polyvinyl acetal films each comprise
polyvinyl alcohol groups of 17–22% and a preferred 11–13.5% by weight,
respectively. Steuer ¶ 21; see Final Act 3. Thus, the Examiner has made
findings that the applied prior art discloses polyvinyl alcohol content ranges
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that overlap and encompass the claimed polyvinyl alcohol content ranges.
Final Act. 3. This is sufficient to create a prima facie case of obviousness. In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (a prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art).
Appellant’s arguments have not identified reversible error in the
Examiner’s prima facie case of obviousness. Once established, a prima facie
case can be overcome if Appellant shows either (i) that the prior art teaches
away from the claimed invention or (ii) that there are new and unexpected
results relative to the closest prior art. Iron Grip Barbell Co. v. USA Sports,
Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (citing In re Geisler, 116 F.3d
1465, 1471 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990)).
First, Appellant argues, inter alia, that Keller “teaches directly away
from the use of multilayer films . . . having a very high plasticizer content
such as” Steuer’s sub-film B’s plasticizer content of 37.5 wt.%. Appeal Br. 9
(citing Keller ¶¶ 4–9, 12); see Steuer Table 4.
The teachings of a reference that arguably teaches away from a
claimed feature must be weighed alongside the teachings of a cited reference
that teaches the propriety of employing that feature. Para-Ordnance Mfg.,
Inc. v. SGS Imps. Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995). For a
reference to “teach away,” it must criticize, discredit, or otherwise
discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004).
In this case, Appellant does not direct our attention to any teaching in
Keller that criticizes, discredits, or discourages Steuer’s plasticizer content.
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Although “an increased [p]lasticiser content usually also causes a weakening
of the mechanical strength of the film,” Keller discloses that “a certain
increase in the [p]lasticiser content . . . causes improved sound deadening.”
See Keller ¶ 4. A person of ordinary skill in the art would have understood
and weighed this tradeoff in benefits. Winner Int’l Royalty Corp. v. Wang,
202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating
benefit comes at the expense of another benefit . . . should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.”); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine”).
Keller, furthermore, explicitly discloses a preferred plasticizer content
of 20–40% by weight. Keller ¶ 23. We, therefore, view Keller as providing a
teaching or suggestion for providing a second sub-film with a “plasticizer
content of 30-38% by weight,” as recited in claim 11. See also Peterson, 315
F.3d 1325, 1329.
Appellant contends that the Examiner’s relied upon disclosures in
Keller provide insufficient motivation to modify Steuer’s interlayer film to
possess the claimed total plasticizer content. Appeal Br. 12 (citing Keller ¶¶
38, 42); see also Reply Br. 3. According to Appellant, these paragraphs are
merely concerned with selecting compounds and providing conditions that
encourage Keller’s interlayer plasticizer migration. Appeal Br. 12. Appellant
argues that Keller’s preferred plasticizer content of 20–40% by weight is
only for each individual film, not for the total amount. Id.
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We, however, agree with the Examiner that a person having ordinary
skill in the art at the time of invention would have been motivated by
Keller’s paragraphs 38 and 42 to achieve “a particularly hard film with high
mechanical stability by selecting and adjusting plasticiser content for
mechanical properties.” Answer 9. We note Keller’s paragraph 62 teaches
that adjusting plasticizer content in laminates is particularly desirable “in the
case of a 3 layer ‘hard/soft/hard’ film composite since the mechanically soft
and tacky inner film [having a relatively higher plasticizer content] is present
in a protected manner.” Keller ¶ 62; see also Appeal Br. Claims App. 1
(claim 12); Final Act. 10.
Furthermore, Keller’s teachings regarding plasticizer content in
individual laminates necessarily affects the total plasticizer content based on
the total weight of all first and second sub-films in the intermediate layer
film. We, therefore, discern no reversible error in the Examiner’s finding
that Keller’s Table 1 renders obvious the claimed limitation “the
intermediate layer film has a total plasticiser content of less than 28[]% by
weight.” Claim 11; In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where,
as here, the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of [the] claimed
product.”).4

4 To the extent Appellant argues that the Specification provides a
comparison of prior art products to the claimed subject matter, we are not
persuaded. See Appeal Br. 14–15. As the Examiner explained, “there is no
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Appellant argues that claim 11 is not obvious because Keller’s
multilayer films “are totally different . . . and cannot be combined with
Steuer.” Appeal Br. 9. In particular, Appellant contends that the films in the
Examiner’s proposed combination “must be the films employed by Keller
because these films are necessary to the invention of Keller.” Id. at 13 (citing
In re Wesslau, 353 F.2d 238, 240 (CCPA 1965)); see also Reply Br. 3–4.
Appellant argues that Keller’s films’ “polyvinyl alcohol contents of 15–25%
by weight,” would have to be incorporated, but such an incorporation
“would not [have] result[ed] in the Appellant’s invention.” Appeal Br. 13.
These arguments are not persuasive.
In an obviousness inquiry, the fact that a specific embodiment is
taught to be preferred is not controlling, because all disclosures of the prior
art, including non-preferred embodiments, must be considered. Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (citing In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
We find that the Examiner’s proposed modification is reasonable
because Keller’s teachings do not limit polyvinyl alcohol content to only 15–
25% by weight. See Merck, 874 F.2d at 807. Rather, Keller discloses that the
disclosed range is preferable. Keller ¶ 23; see In re Fritch, 972 F.2d 1260,
1264–65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom); see also Answer 9.

sub-film that meets the requirements of Claim 11” in the Specification’s
examples. Answer 10; see also supra.
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Second, Appellant contends that evidence in the record demonstrates
“by comparative examples that the claimed invention produces surprising
and unexpected results.” Appeal Br. 14.
The Examiner, however, concluded that Appellant’s relied upon data
was not commensurate in scope with claim 11 because
[t]he only sub-film with a polyvinyl alcohol content in the cited
range [for the one or more first sub-films] is sub-layer B1 at 20
wt[.]% [polyvinyl] alcohol, which has either 27.5 wt[.]%
plasticizer or a higher amount such as 36.1 to 38.1 wt[.]% after
lamination and 10 weeks storage.
Answer 10–11. We agree with the Examiner (id. at 11) that sub-layer B1’s
plasticizer content is, thus, outside the scope of claim 11, which requires “a
first plasticizer content of 22 to 27% by weight.”
We find that, out of the 6 inventive A sub-films tested, only film A1
provides the requisite “second plasticizer content of 30–38% by weight,” as
recited in claim 11. Spec. Table 1. Thus, even assuming that sub-layer B1’s
27.5 wt.% plasticizer content is within the scope of claim 11, Example 1
(comprising the sub-film layer structure A1/B1/A1) would have provided the
only inventive example tested. See id. Tables 1, 2; see also In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005) (Unexpected results must be “commensurate in scope with the degree
of protection sought by the” claims on appeal.).
In view of the foregoing, we determine that the Examiner did not
reversibly err in rejecting claim 11 as unpatentable over Steuer with Keller.
Accordingly, we also affirm the rejection of claims 12–27, which depend
from claim 11.
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IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
11–27 103(a) Steuer, Keller 11–27
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED