3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals BoardNov 13, 2020

2020000287 (P.T.A.B. Nov. 13, 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. 15/131,283 04/18/2016 William W. Merrill 56702US029 8341 32692 7590 11/13/2020 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER CHAPEL, DEREK S ART UNIT PAPER NUMBER 2872 NOTIFICATION DATE DELIVERY MODE 11/13/2020 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM W. MERRILL, JEFFERY N. JACKSON, ANDREW T. RUFF, JOHN A. WHEATLEY, and DENNIS L. KRUEGER Appeal 2020-000287 Application 15/131,283 Technology Center 2800 Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and KAREN M. HASTINGS, 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 claim 1.3 1 This Decision includes citations to the following documents: Specification filed April 18, 2016, as amended (“Spec.”); Final Office Action dated Dec. 20, 2018 (“Final Act.”); Appeal Brief filed May 15, 2019 (“Appeal Br.”); Examiner’s Answer dated Aug. 19, 2019 (“Ans.”); and Reply Brief filed Oct. 18, 2019 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as 3M Company and 3M Innovative Properties Company. Appeal Br. 2. 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2020-000287 Application 15/131,283 2 We REVERSE. CLAIMED SUBJECT MATTER The invention relates to an apparatus for making transversely drawn films with substantially uniaxial character. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A stretcher for processing a film, the stretcher comprising: means for grasping edge portions of a film; means for conveying the film in a machine direction; and means for moving the opposing grasped edge portions along diverging, substantially parabolic paths to form a stretched film. Appeal Br. 7 (Claims App.). REFERENCES The Examiner relies on the following prior art: Name Reference Date Kwack US 4,862,564 Sept. 5, 1989 Weber US 6,531,230 B1 Mar. 11, 2003 REJECTION Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kwack in view of Weber. Appeal 2020-000287 Application 15/131,283 3 OPINION The Examiner found that Kwack discloses a stretcher as recited in claim 1 except that Kwack’s means for4 moving is not configured to move a film’s opposing grasped edge portions along diverging, substantially parabolic paths. See Final Act. 8. The Examiner found that Weber discloses a stretched film having a quadratic cross section (id.), which the Examiner interprets as “substantially parabolic” (Ans. 6). The Examiner determined that the ordinary artisan would have modified Kwack’s film stretching path shape “to include the teachings of Weber so that the stretch path has a substantially parabolic pat[]h shape, for the purpose of stretching the film in a desired manner to achieve desired optical and physical film characteristics.” Final Act. 8. The Examiner additionally found that the ordinary artisan would have modified Kwack’s curvilinear stretch path to form a substantially parabolic stretch path as a matter of routine optimization “for the purpose of having a constant stretch rate all along a stretch zone to achieve desired optical and physical characteristics in the stretched film.” Id. at 9. The Appellant disputes the Examiner’s finding that Weber discloses or suggests stretching a film to form a quadratic (or parabolic) cross section. Appeal Br. 3. The Appellant argues that Weber’s description of a quadratic cross-sectional area pertains to extruded resin fluid streams exiting a 4 The Examiner interpreted the claim 1 “means for” language in accordance with 35 U.S.C. § 112, sixth paragraph. See Final Act. 3–5. The Appellant does not disagree with the Examiner’s interpretations. See generally Appeal Br. 3–5. Appeal 2020-000287 Application 15/131,283 4 multiplier that have not yet been cast into films. Id. The Appellant’s argument is supported by Weber’s disclosure. See, e.g., Weber 32:43–54. In response, the Examiner argues that Weber’s disclosure nevertheless is relevant to Kwack’s film stretching system because Weber controls the flow channel shape “to provide control of the expansion/widening and thickness (i.e. the cross sectional shape) of the film layers.” Ans. 6 (citing Weber 30:1–13). In the relied-upon disclosure, Weber teaches that a “type of multiplier useful for producing high quality multilayer optical films in accordance with the present invention utilizes asymmetric expansion of the flow stream to correct for differences in volumetric flow rates.” Weber 30:1–4. According to Weber, “[t]his type of multiplier allows for a prescribed ratio of layer thicknesses to be obtained in the composite stream, without introducing thickness variations or interfacial disturbances in the layers of the composite stream.” Id. at 30:10–13 (emphasis added). We are persuaded that the Examiner has not explained sufficiently why Weber’s description of the fluid profile in the multiplier would have suggested modifying the profile used in Kwack’s apparatus to stretch a film cast from the stream. See Reply Br. 2 (“[T]he shape of the fluid profile in the multiplier obviously has nothing to do with the stretch profile in the tenter . . . .). Moreover, we note that the Examiner has not identified, nor do we find, a teaching in Weber that using the fluid path’s profile as the film- stretching profile would provide any benefit to the film. See generally Weber 38:25–48:57 (discussing film formation and stretching); see also id. at 33:2–7 (“[T]he layer thickness distribution and uniformity needs of the optical films made in accordance with the method and apparatus of the Appeal 2020-000287 Application 15/131,283 5 present invention can frequently be better and more economically met by the use of multipliers which do not maintain rectangularity of cross-section in the flow channels used to re-stack the split streams.” (emphasis added)). The Appellant further argues that the Examiner has not provided any evidence or reasoning to support a finding that “one of ordinary skill in the art would have had any reasonable expectation that changing the exponential stretch path of Kwack to a substantially parabolic stretch path would have resulted in any improved optical or physical characteristics of the resulting film.” Appeal Br. 5. The Examiner contends that because Kwack discloses that an appropriate curvilinear stretch profile can be chosen “through trial and error or by computer, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the film stretching path shape to be substantially parabolic (e.g. quadratic).” Ans. 6. Kwack discloses that “[t]he exponentially widening profile [of the stretching path], in accordance with Equation I, may be calculated by trial and error methods for a given line speed . . . . Such methods are perfectly adaptable to be carried out by a computer.” Kwack 4:49–53. The Appellant has argued persuasively that this disclosure is insufficient to support a finding that achieving a substantially parabolic profile would have been a matter of routine optimization or that it would have been obvious to try a substantially parabolic profile in Kwack’s film-stretching apparatus. See Reply Br. 2–3. At most, Kwack suggests optimizing the explicitly-disclosed, exponentially-widening profile, but does not suggest optimizing to achieve an entirely different profile, and the Examiner has not identified a finite Appeal 2020-000287 Application 15/131,283 6 number of predictable profiles or direction in the prior art to select a parabolic path. CONCLUSION For the above reasons, we are persuaded of reversible error in the Examiner’s conclusion of obviousness. Accordingly, we do not sustain the rejection of claim 1. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103(a) Kwack, Weber 1 REVERSED