Ex Parte FujiwaraDownload PDFPatent Trials and Appeals BoardJun 11, 201913640870 - (D) (P.T.A.B. Jun. 11, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/640,870 10/12/2012 23850 7590 06/11/2019 KRATZ, QUINTOS & HANSON, LLP 1420 K Street, N.W. 4th Floor WASHINGTON, DC 20005 FIRST NAMED INVENTOR Takamichi Fujiwara 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. 120422 5386 EXAMINER KRUER,KEVINR ART UNIT PAPER NUMBER 3649 MAIL DATE DELIVERY MODE 06/11/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKAMICHI FUJIWARA Appeal2018-008040 Application 13/640,870 Technology Center 3600 Before STEFAN STAICOVICI, JEFFREY A. STEPHENS, and PAUL J. KORNICZKY, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) from the Examiner's Final Office Action (Jan. 22, 2018) ("Final Act.") rejecting claims 1-3 and 7, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons explained below, we are not informed of error in the rejection. Accordingly, we AFFIRM. 1 Wavelock Advanced Technology Co., Ltd. is identified in the Appeal Brief as the real party in interest. Appeal Br. 2. Appeal2018-008040 Application 13/640,870 Claimed Subject Matter The claimed subject matter relates to a metallic decoration sheet that may be used to add an outer metallic layer to a molded resin product. Spec. 1 :7-15. Claim 1, the sole independent claim on appeal, is reproduced below to illustrate the claimed subject matter. 1. A method for making a metallic decoration sheet, comprising the successive steps of: obtaining a transfer film having a mold release substrate having sides perpendicularly intersecting to each other, and a metal layer, the metal layer directly disposed on a mold release face of the mold release substrate, applying a first adhesive material layer on a thermoplastic resin sheet, attaching the thermoplastic resin sheet via the first adhesive material layer to the metal layer side face of the transfer film so as to obtain a base sheet; removing the mold release substrate directly from the metal layer of the base sheet to obtain an intermediate laminate sheet; and thereafter, attaching an acrylic resin film arranged at an outermost layer upon molding via a second adhesive material layer to a metal layer side face of the intermediate laminate sheet. Appeal Br. 8 (Claims Appendix). Rejection Claims 1-3 and 7 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Eshbach (US 6,676,799 B2, issued Jan. 13, 2004) and Beer (US 5,985,180, issued Nov. 16, 1999). Final Act. 2--4. 2 Appeal2018-008040 Application 13/640,870 DISCUSSION Appellant argues all claims together as a group. Appeal Br. 6-7. We select claim 1 as representative, and decide the appeal on the basis of representative claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). In rejecting claim 1, the Examiner finds Eshbach teaches attaching a thermoplastic resin sheet (Eshbach's substrate 2) via an adhesive layer to a metal layer (metallized film 3), and thereafter attaching an acrylic resin film ( second film 4) via a second adhesive material layer. Final Act. 3 ( citing Eshbach abstract, col. 3, 1. 9 et seq., col. 5, 1. 31, 1. 54 et seq., col. 6, 1. 4 et seq.). The Examiner finds Eshbach does not teach a transfer film having the metal layer disposed on a smooth mold release face of a mold release substrate having perpendicularly intersecting sides, but that Beer teaches a method of applying metallized layers to substrates by applying the metallized layer to a polymeric carrier film (herein relied upon to read on the claimed 'mold release substrate' having a 'mold release face') and removing the mold release substrate directly from the metal layer after application of the metallized film to the substrate. Id. The Examiner also finds that Beer's substrate has sides perpendicularly intersecting each other. Id. at 4. The Examiner states: Thus, it would have been obvious to one of ordinary skill in the art ... to laminate the metallized film to the substrate ofEshbach by supplying the metallized film as a film wherein the metal layer is disposed on a smooth mold release face of a mold release substrate, applying an adhesive on the support sheet or metallized film, attaching the support sheet via the first adhesive material layer to the metal layer ... of the intermediate support, and then removing the mold release substrate. The motivation for doing so would have been Beer teaches such techniques for application 3 Appeal2018-008040 Application 13/640,870 of metallized films is known and useful for applying thin metal layers and ensuring adhesion between the support and the metal layer. Id. at 3--4. The Examiner finds that "[i]n such a combination, the acrylic resin film is thereafter attached to the outermost layer via a second adhesive material to the metal layer side of the intermediate laminate sheet." Id. at 4. Appellant's argument merely recites the claimed steps of removing the mold release substrate and attaching an acrylic resin film, quotes two sentences from Beer, and states that "even by combining the above features of Beer with Eshbach, the features of the Appellant's claimed invention," namely the removing and attaching steps recited previously, "would not be obvious to one of ordinary skill in the art." Appeal Br. 6-7. Appellant further states: In view of the distinctions noted above, at least one claimed element of the Appellant's claimed invention is not present in the asserted references. Thus, a person of ordinary skill in the art could not have predicted or could not have found obvious the Appellant's claimed invention based on the cited references. Id. at 7. Appellant's argument is conclusory and does not explain why the Examiner erred in finding these limitations are taught by the combined teachings of the references. 37 C.F.R. § 4I.37(c)(l)(iv) ("The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that "the Board reasonably interpreted Rule 41.3 7 to require more substantive arguments in an appeal brief than a mere recitation 4 Appeal2018-008040 Application 13/640,870 of the claim elements and a naked assertion that the corresponding elements were not found in the prior art"). The portions of Beer quoted by Appellant do not contradict the Examiner's findings as to the limitations taught by Beer. In addition, we agree with the Examiner that attaching a metallized layer to Eshbach's substrate 2 using a transfer film such as that taught in Beer, and removing the transfer film as taught in Beer, followed by applying the outer acrylic resin layer as taught in Eshbach, results in the claimed method being performed. The Examiner provides reasons for doing so that are not persuasively challenged by Appellant in the Appeal Brief. The Examiner's Answer reiterates the rejection, and notes that "Appellant does not directly refute the [E]xaminer's finding of fact" or "explain what features of the claimed element could not have been predicted or found obvious." Ans. 4---6. In the Reply Brief, Appellant provides additional argument and "submits that these arguments are presented specifically in response to the Examiner's answer and Applicant has not raised any new argument not in response to the Examiner's answer." Reply Br. 2-5. Appellant makes no showing on this record of a reason the arguments in the Reply Brief could not have been presented in the Appeal Brief. Therefore, such newly raised arguments are untimely and waived. See 37 C.F.R. § 4I.41(b)(2) (2012) ("Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, ... will not be considered by the Board for purposes of the present appeal, unless good cause is shown."). Other than the conclusory assertion that the Reply Brief arguments "are presented 5 Appeal2018-008040 Application 13/640,870 specifically in response to the Examiner's answer," Reply Br. 5, the Reply Brief does not refer to the Examiner's Answer or explain how any point raised by the Examiner in the Answer necessitated additional argument in the Reply Brief. 2 Even considering Appellant's contention that "since Eshbach or Beer nowhere discloses the features of b ), c ), 3 there is no suggestion or motivation in these references for the present invention," we are not informed of error in the rejection. Reply Br. 4--5 (footnote added). Appellant's argument does not address the combined teachings of the references or the Examiner's determination that one of ordinary skill in the art would have had reason to combine them in the manner claimed. Although "it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does," KSR International Co. v. Teleflex Inc., 550 U.S. 398,418 (2007), "[t]he obviousness analysis cannot be confined by a formalistic conception 2 Although the Reply Brief may be said to be "responsive" to the Examiner's Answer in the sense that additional argument is provided after the Examiner pointed out that the Appeal Brief did not contain substantive argument, such argument is not responsive to a point raised for the first time in the Examiner's Answer relating to the merits of the rejection. 3 Appellant is referring to designated steps in its earlier statement that Eshbach nowhere discloses a) obtaining a transfer film having a mold release substrate and a metal layer, b) attaching the thermoplastic resin sheet via the first adhesive material layer to the metal layer side face of the transfer film so as to obtain a base sheet, and c) removing the mold release substrate directly from the metal layer of the base sheet to obtain an intermediate laminate sheet, which are required by claim 1. Reply Br. 2. 6 Appeal2018-008040 Application 13/640,870 of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents," id. at 419. See also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) ("[W]hile an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion."). Thus, Appellant's contention that Eshbach and Beer do not themselves provide a suggestion or motivation for the combination does not inform us of error in the rejection. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner's rejection of representative claim 1 under 35 U.S.C. § 103(a) as unpatentable over Eshbach and Beer. For the same reasons, we sustain the rejection of claims 2, 3, and 7, which fall with claim 1. DECISION We affirm the Examiner's decision to reject claims 1-3 and 7 under 35 U.S.C. § 103(a). 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)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation