Ex Parte Crawford-Taylor et al

Patent Trial and Appeal BoardMar 28, 2019

13295908 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/295,908 11/14/2011 Shannon K. Crawford-Taylor 44986 7590 04/01/2019 Levenfeld Pearlstein, LLC (ILLINOIS TOOL WORKS) 2 North LaSalle Street Suite 1300 Chicago, IL 60602 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 60159-US 35371-85006 2952 EXAMINER KHATRI, PRASHANT J ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): ipdocket@lplegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHANNON K. CRAWFORD-TAYLOR and DANIEL M. SZUMSKI Appeal2018-005989 Application 13/295,908 Technology Center 1700 Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and JEFFREY R. SNAY, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-005989 Application 13/295,908 Appellants 1 appeal under 35 U.S.C. Â§ 134 the final rejection of claims 1-6, 8, 10, 11, 14, 17, 18, and 20. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b ). We REVERSE. Appellants' invention is directed to a laminate sheet. (Spec. ,r 8; claim 1 ). Claim 1 is illustrative of the issues on appeal: 1. A laminate sheet, comprising: a base film formed from one or more of a recyclable, biodegradable, degradable, and compostable material, the base film having a first side facing in a first direction; a metal or reflective film layer disposed over the first side of the base film; a heat resistant layer disposed over the metal or reflective film in the first direction; an emboss coat disposed directly over the base film and between the base film and the metal or reflective film layer, the emboss coat embossed to produce metallic or holographic images; and a substrate disposed over the heat resistant layer in the first direction, wherein the base film and substrate are positioned as respective outermost layers on opposite sides of the laminate. Appellants appeal the following rejections: 1. Claims 1---6, 18, and 20 are rejected under 35 U.S.C. Â§ I02(b) as unpatentable over Herslow (US 2009/0169776 Al, published July 2, 2009). 1 The Appeal Brief on page 3 indicates that "ILLINOIS TOOL WORKS INC.," is the assignee of record. 2 Appeal2018-005989 Application 13/295,908 2. Claims 8, 10, 11, 14, and 17 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Herslow in view of Aigner (US 2010/0035032 Al, published February 11, 2010) and Riedl (US 7,503,503 B2, issued March 1 7, 2009). FINDINGS OF FACT & ANALYSIS CLAIM 1 The Examiner's findings regarding how Herslow anticipates the subject matter of claim 1 are located on pages 2 to 4 of the Final Action. The Examiner's anticipation rejection of claim 1 is based on the interpretation of claim 1 where the claimed "an emboss coat" is read to include Herslow's layers 21, 23b and 24b (Final Act. 2). The Examiner finds that the Specification does not provide a clear teaching as to the structure of the emboss coat and the Specification describes that the examples and embodiments contained therein are not meant to limit the scope of the invention (Ans. 7). The Examiner determines that the broadest reasonable interpretation of "an emboss coat" when read in light of the Specification includes a multiple layer coating (Ans. 7). Appellants argue that the Examiner's claim interpretation is unreasonably broad and incorrectly applies the broadest possible interpretation of the phrase "an emboss coat" (App. Br. 10, 13). Appellants argue that the broadest reasonable interpretation of "an emboss coat" would not include Herslow's layers 21, 23b and 24b (App. Br. 11). Appellants contend that Herslow's clear primer layer 23b and clear PE adhesive layer 24b are not part of an emboss coat because neither includes an embossed surface or other pattern for producing metallic or holographic images (App. 3 Appeal2018-005989 Application 13/295,908 Br. 12). Appellants argue that Herslow's hologram is formed by embossed surface 21 a of the base layer 21 having the aluminum layer 22 deposited thereon (App. Br. 12). Appellants contend that the claims recite the phrase "an emboss coat" in terms of its (1) relative position in the laminate sheet, (2) a structural feature of the emboss coat e.g., that it is embossed and (3) functional aspect attributable to the embossed structure, e.g., to form a metallic holographic image (App. Br. 9). We find that Appellants' interpretation of the claim phrase "an emboss coat" comports better with the meaning of that phrase when read in light of the Specification than the Examiner's claim interpretation. As argued by Appellants, the phrase "an embossed coat" requires that the coating be embossed with an image or design. Although, we agree with the Examiner that the embossed coat may be composed of multiple layers of coating, nevertheless, we agree with Appellants that the plain meaning of emboss coat would require that all the layers of the emboss coat be embossed to provide the holographic or metallic image. The Specification supports our claim interpretation. Paragraph 33 of the Specification discloses that "a" or "an" include both the singular and plural forms. Therefore, "an emboss coat" would be understood to include plural emboss coats (e.g., multiple layers). However, the Specification further discloses an emboss coat 18 disposed between the base film 12 and the metal or reflective layer 16 that is embossed to produce metallic or holographic images (i1 17). In other words, "an emboss coat" as interpreted in light of the Specification includes a multiple layer coating wherein each of the layers within the coating is embossed to produce a metallic or holographic image. 4 Appeal2018-005989 Application 13/295,908 Claims 1 and 18 additionally require an emboss coat "disposed directly over" the base film. Appellants argue that intervening layers between the emboss coat and base film are excluded by the claim language (App. Br. 17). The Specification describes in Figure 1 and paragraph 17 that "disposed directly over" means that a layer is directly adjacent and touching the adjacent layer, such as the emboss coat 18 and the base film 12. 2 . Accordingly, we construe "disposed directly over" in the context of the relationship of the base film and the emboss coat as requiring the layers to be immediately adjacent and touching one another with no intervening layers between them. In light of our claim interpretation, we find that the Examiner has not established that Herslow' s base layer 21, clear PE adhesive layer 24b and primer coating 23b constitute an emboss coat within the meaning of the claims. The adhesive layer 24b and primer coating 23b are not embossed as is required for an emboss coat. Therefore, the Examiner has not established where Herslow teaches an emboss coat disposed directly over the base film as recited in claims 1 and 18. We reverse the Examiner'sÂ§ 102(b) rejection of claims 1---6, 18, and 20. The 35 U.S.C. Â§ 103 rejection of claim 8 is reversed for similar reasons as claims 1 and 18. Claim 8 requires that the plurality of layers are 2 The Specification at paragraph 1 7 describes an embodiment where the base film 12 is "layered directly over" the substrate 14. Paragraph 17 further describes that in contrast to the embodiment where the base film and substrate are directly layered over one another, other embodiments may be used where intervening layers such as a metal or reflective layer is disposed between the base film 12 and substrate 14. In other words, "directly disposed over" means in the context of the Specification that two layers are directly adjacent and touching each other. 5 Appeal2018-005989 Application 13/295,908 non-symmetrically disposed on opposite sides of the emboss coat and the metal or reflective film. Because the proper claim construction of emboss coat would only permit Herslow's layer 21 and metal layer 22 to read on the emboss layer, the Examiner has not shown where Herslow in combination with Riedl or Aigner teaches the non-symmetrical arrangement of layers. Rather, as shown in Herslow's Figure 1, there are four layers (i.e., 23b, 24b, 25b, 27b, and 23a, 24a, 25a, 27a) on either side of the emboss layer 21/22. We reverse the Examiner'sÂ§ 103 rejection of claims 8, 10, 11, 14, and 17 over Herslow in view of Riedl and Aigner. DECISION The Examiner's decision is reversed. ORDER REVERSED 6