Ex Parte Fujiwara

Patent Trials and Appeals Board

Jun 11, 2019

13640870 - (D) (P.T.A.B. Jun. 11, 2019)

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.
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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
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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
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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
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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.
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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
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