Dai Nippon Printing Co., Ltd.

Patent Trials and Appeals Board

Nov 3, 2020

2020005617 (P.T.A.B. Nov. 3, 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.
15/108,913 06/29/2016 Masanori Ueno 1451202.202US9 1001
21874 7590 11/03/2020
LOCKE LORD LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
DILLON, DANIEL P
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASANORI UENO,
and CHIKA FUNABIKI

Appeal 2020-005617
Application 15/108,913
Technology Center 1700

Before: BEVERLY A. FRANKLIN, DONNA M. PRAISS, AND
BRIAN D. RANGE, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s Final decision to reject claims 1 and 3–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Dai Nippon Printing Co., Ltd., as the real
party in interest. Appeal Br. 2.
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Application 15/108,913

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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:

1. A decorative sheet, comprising a base sheet formed of a
polyester resin or a polyolefin resin; and an ornamental layer
and a surface-protecting layer provided on the base sheet in this
order, and the decorative sheet further comprises a resin layer
between the base sheet and the surface-protecting layer;

the decorative sheet having a total thickness of 70 to 135
μm, the decorative sheet having recesses, the maximum depth
of each recess being 15 to 100% based on the total thickness
and not less than 15 μm, the ratio of a tensile elastic modulus at
120 °C to a tensile elastic modulus at 20 °C being 1:12 to
1:160, and the ratio of a maximum point load at 120 °C to a
maximum point load at 20 °C upon 30-mm stretching being
1:1.7 to 1:30, wherein the decorative sheet has a combination of
the recesses that end with different max depths in which the
max depths are formed in various layers, including max depths
are formed in the resin layer, the ornamental layer, and the base
layer.
REFERENCES
The prior art relied upon by the Examiner is:

Matsukawa et al. US 2011/0045284 A1 Feb. 24, 2011
(“Matsukawa”)
Iizuka et al. US 2011/0052880 A1 Mar. 3, 2011
(“Iizuka”)
Segaert US 2011/0117325 A1 May 19, 2011

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THE REJECTION
Claims 1 and 3–20 are rejected under 35 U.S.C. §103 as being
unpatentable over Matsukawa in view of Iizuka and Segaert.
OPINION
Appellant does not make separate arguments in support of
patentability of any particular claim or claim grouping. Accordingly, the
claims subject to the stated ground of rejection will stand or fall with claim
1. See 37 C.F.R. § 41.37(c)(iv).
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of
Appellant’s claims is unpatentable over the applied art. Accordingly, we
sustain the Examiner’s rejection on appeal essentially for the reasons set
forth in the Final Office Action and in the Answer, and affirm, with the
following emphasis.
We refer to the Examiner’s statement of the rejection as set forth on
pages 4–8 of the Answer and on pages 2–7 of the Final Office Action.
On pages 4–8 of the Appeal Brief, Appellant submits that the
combination of Matsukawa, Iizuka, and Segaert fails to teach each of the
limitations of independent claim 1, particularly the limitation of “wherein
the decorative sheet has a combination of recesses that end with different
max depths in which the max depths are formed in various layers, including
max depths are formed in the resin layer, the ornamental layer, and the base
layer.” Appeal Br. 4. Appellant points to the Examiner’s rejection where
the Examiner states that Matsukawa is silent with respect to this feature and
the rejection turns to Segaert. Appeal Br. 5–6. Appellant submits that
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Segaert is silent with respect to a combination of recesses with max depths
extending into different layers because Segaert teaches a chrome layer
having a microstructure including recesses having different heights or depths
and the microstructure being limited to the chrome layer, and not
extending into other layers as identified by paragraphs [0028] and [0055] of
Segaert. Appeal Br. 6.
We are unpersuaded by the aforementioned line of argument for the
reasons provided by the Examiner on pages 9–10 of the Answer. Therein,
the Examiner finds that Segaert’s microstructure teachings are all preferred
embodiments such that it appears as though each of the descriptions
identified by Appellant having the microstructure in the uppermost layer are
preferred (see p. 3, paragraph [0028], p. 5, paragraphs [0055]–[0056] of
Segaert). The Examiner refers to MPEP 2123 II which states that disclosed
examples and preferred embodiments do not constitute a teaching away from
a broader disclosure or non-preferred embodiments. Ans. 9. We agree. The
Examiner further states that Segaert generally teaches providing a plurality
of zones having recesses with differing depth, orientation and density in
order to achieve special effects, such as gloss, (which was noted in the
statement of the rejection) as the motivation to vary the depths of the
recesses of Iizuka formed in the decorative sheets of Matsukawa. Ans. 9.
The Examiner explains that the rejection relies upon Matsukawa for teaching
the respective layers of claim 1, and Iizuka teaches the formation of the
recesses, or a concave pattern with depths ranging from 20 to 80 microns in
order to provide an air of luxuriousness. The Examiner states that Iizuka
fails to teach the concave pattern having recesses with differing max depths,
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Application 15/108,913

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to which the rejection turns to Segaert which teaches varying the depths of
the recesses in order to achieve the gloss effect. Ans. 9.
In view of the above, the Examiner reiterates the conclusion that it
would have been obvious to have formed Matsukawa’s sheets, with Iizuka’s
concave pattern, which has differing max depths, to achieve a glossiness as
taught by Segaert. The Examiner also states that in order to teach
the limitation of the recesses extending into different layers, one of ordinary
skill in the art would have appreciated that the differing max depths of
Iizuka’s pattern would have resulted in recesses having depths of 20 microns
(“into the resin layer”), depths of 80 microns (“into the base layer”), and
depths in between (“into the printing layer”), which is described in the stated
rejection (Final Act. 5). Ans. 10. The Examiner states that the portions of
Segaert cited by the Appellant are all preferred embodiments which are not
mentioned in the statement of the rejection of claim 1, whereas the rejection
relies on Segaert’s teaching of providing varying depths of recesses in order
to achieve a desired glossiness. Ans. 10. We agree.
On pages 9–10 of the Appeal Brief, Appellant argues that Segaert
further teaches that the microstructure is relatively shallow such that little to
no dirt can adhere, and one of ordinary skill would not have a
recess extending into the base layer in order to prevent dirt from adhering.
We agree with the Examiner’s stated reply that the combination is
proper as each of the cited references of Matsukawa, Iizuka, and Segaert
teaches laminate panels or sheets which are used for decoration (Matsukawa,
Abstract; Iizuka, p. 1, paragraph [0001]; Segaert, p. 1, paragraphs
[0002], [0005]). Ans. 10. Therein, the Examiner also states that each of the
references teaches layers and recesses on the scale of microns such that each
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of the layers of Matsukawa are described on the scale of microns. Ans. 10.
The Examiner also states that Iizuka’s recesses are on the scale of microns,
particularly having depths of 20 to 80 microns, and Segaert’s
microstructures preferably have a difference in heights of 50 microns or less
(Segaert, p. 1, paragraph [0012]). Ans. 10. The Examiner reiterates that
therefore the combination of Matuskawa, Iizuka, and Segaert is proper as
there is significant overlap between the thickness/depths of the recesses. We
agree.
In view of the above, we affirm the rejection.
CONCLUSION
We affirm the Examiner’s decision.
DECISION SUMMARY
In summary:

Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–20 1, 3–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED