Ex Parte Getschel et al

Patent Trial and Appeal Board

Oct 27, 2016

14363132 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/363,132 06/05/2014
32692 7590 10/31/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Joel A. Getschel
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.
68118US004 1076
EXAMINER
BELL, WILLIAM P
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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
Exparte 3M INNOVATIVE PROPERTIES COMPANY
Appeal2016-008120
Application 14/363,132
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER L. OGDEN, and
DEBRA L. DENNETT, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2016-008120
Application 14/363,132
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision2
finally rejecting claims 1, 2, 4--9, and 11-22. We have jurisdiction under 35
U.S.C. § 6(b).
For the reasons explained below, we affirm the rejections of claims 1, 2, 4--
9, and 11-22, but denominate the affirmed rejections as NEW GROUNDS OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).
The invention relates to methods of bonding polyester substrates together.
Specification filed June 5, 2014 ("Spec."), 1:8. Claim 1, the sole independent
claim on appeal, is reproduced below:
1. A method comprising:
externally delivering thermal energy onto a first major bonding
surface of a first moving polyester substrate so that the first major
bonding surface of the first moving substrate is a heated surface;
externally delivering thermal energy onto a first major bonding
surface of a second moving polyester substrate so that the first major
bonding surface of the second moving substrate is a heated surface;
bringing the heated first major bonding surface of the first
polyester substrate into proximity to the heated first major bonding
surface of the second polyester substrate;
and,
self-bonding the first polyester substrate and the second
polyester substrate to each other to form a polyester laminate,
wherein the first polyester substrate and/or the second polyester
substrate comprises a polyester foam with a density of less than
0.2 glee.
1 Appellant identifies the real party in interest as "3M Company (formerly known
as Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and its
affiliate 3M Innovative Properties Company of St. Paul, Minnesota." Appeal Brief
filed Jan. 25, 2016 ("App. Br."), 3.
2 Final Office Action mailed Sep. 17, 2015.
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Appeal2016-008120
Application 14/363,132
App. Br. 13 (Claims App'x).
The claims stand finally rejected under pre-AIA 35 U.S.C. § 103(a) as
follows:
1. claims 1, 2, 4--9, 12-16, and 19-21 over Haverty et al.
(US 2008/0254307 Al, pub. Oct. 16, 2008 ("Haverty")) in view of Longo et al.
(US 2010/0003378 Al, pub. Jan. 7, 2010 ("Longo"));
2. claim 11 3 over Haverty in view of Longo and Perman et al.
(US 5,670,102, iss. Sep. 23, 1997 ("Perman")); and
3. claims 17, 18, and 22 as unpatentable over Haverty in view of Longo4
and Ouderkirk et al. (US 4,822,451, iss. Apr. 18, 1989 ("Ouderkirk")); Final Act.
2---6.
The Examiner, referring to the description of Haverty Figure 1, finds
Haverty discloses a method of bonding major surfaces of two moving polyester
substrates by heating the surfaces and bringing them into contact, thereby forming
a laminate. Final Act. 2-3 (citing Haverty i-fi-150, 54--58, 63---65). The Examiner
finds the polyester substrates may comprise layers, including foam and film layers
formed by extrusion. Id. at 3 (citing Haverty i-fi-174, 76, 78). The Examiner
acknowledges "Haverty does not explicitly teach that the foam layers are polyester
foams with a density of less than 0.2 g/cm2" as required by appealed claim 1. Id.
The Examiner finds Longo discloses laminates formed by heat-treatment
3 In an amendment filed August 25, 2015, claim 11 was amended to change its
dependency to claim 1. Claim 11, as it appears in the Claims Appendix to the
Appeal Brief, is erroneously identified as dependent from cancelled claim 10.
4 The Examiner does not cite Longo in the statement of the rejection. We find this
omission to be harmless error, as the Examiner makes reference to the rejection of
claim 1, which is based on the combination of Haverty and Longo. See Final Act.
6.
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Appeal2016-008120
Application 141363,132
comprising a polyester film and a polyester foam having a density of less than 0.2
glcm2• Id. (citing Longo i-fi-145, 54--58). The Examiner determines one of ordinary
skill in the art at the time of the invention would have modified Haverty's method
"by combining polyester films and polyester foam layers in any combination and
in any number of layers for the benefit of producing a structure that can be easily
recycled." Id. (citing Longo i157).
Appellant argues Haverty' s Figure 1 embodiment requires the application of
pressure P2 on the order of 1000 psi during the lamination process to ensure that
oriented layers lOla-e do not shrink unacceptably. App. Br. 7; see generally id. at
5-11. Appellant argues one of ordinary skill in the art would have expected "a
polyester foam with a density of less than 0.2 glee," as recited in appealed claim 1,
to be crushed at this pressure. Id. at 6. In support of its argument, Appellant cites
to technical data sheets for three representative polyester foams having densities
"at or even slightly above" 0.2 glee. Id. at 5-6.5 Appellant argues the data sheets
evidence that one of ordinary skill in the art would have understood a low density
polyester foam could withstand only about half of the clamping force (pressure P2)
applied in Haverty's process. Id. at 6. Appellant contends the ordinary artisan
would not have attempted to reduce pressure P2 in Haverty's process to a level
compatible with a low density polyester foam because such modification would
have rendered Haverty' s method unsatisfactory for its intended purposed of
restraining oriented layers lOla-e to prevent unacceptable shrinkage. Id. at 7.
The Examiner, in response, finds Haverty teaches that a pressure of 1000 psi
is preferred, but not required. Answer mailed July 15, 2016 ("Ans."), 2. The
Examiner further finds Haverty teaches that "pressure P2 is a results-effective
5 Appellant states that the referenced data sheets were submitted with an
Information Disclosure Statement filed Aug. 25, 2015. See id. at 5 n.4.
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Appeal2016-008120
Application 14/363,132
variable to be optimized for the particular materials being laminated, as well as the
particular speed of transport of the materials through the apparatus and the
temperatures to which the materials are heated." Id. at 3. In support of these
findings, the Examiner cites paragraph 65 of Haverty which reads, in relevant part:
"[T]he value of P2 will vary as a function of the material used for the oriented
layers 101 a-e, the speed of the material through the lamination device 100, and the
temperatures generated by the heaters 125, 130. However a pressure of 1,000 psi
or greater is preferable for P2" (Haverty i-f 65).
Appellant contends "the dispositive issue is not whether an ordinary artisan
would [have been] led to use a laminating pressure 'below' 1000 psi. The issue is
whether the artisan would [have been] led to use a pressure that is so low as to
allow a low-density polyester foam to survive (i.e., a pressure of 500 psi or less)."
App. Br. 10. Appellant argues there is no evidence that an ordinary artisan would
have expected movement and shrinkage of layers 101 a-e could be restricted
sufficiently at the reduced pressures necessary for a low density polyester foam to
survive Haverty' s Figure 1 embodiment. Reply Brief filed Aug. 25, 2016 ("Reply
Br."), 2-3. Appellant further argues "Haverty provides no suggestion that the
unwanted effect of reduced lamination pressure (allowing unacceptable shrinkage
of oriented films) can be compensated for by changes in line speed and/ or
temperature." Id. at 3.
We have considered Appellant's arguments and evidence, but are not
persuaded of error in the Examiner's conclusion that the claimed invention would
have been obvious in view of the combined teachings of Haverty and Longo.
Appellant's principal argument is that the ordinary artisan would not have had a
reasonable expectation of success in using Haverty' s Figure 1 embodiment to form
a laminate comprising a "a polyester foam with a density of less than 0.2 glee"
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Appeal2016-008120
Application 14/363,132
(claim 1). See generally, App. Br. 5-11. In rejecting the claims, however, the
Examiner relies not only on Haverty, but also on Longo's disclosure of using
laminates comprising a low-density PET foam (i.e., "from 1.0 to 0.1 g/cm3"
(Longo i-f 45)) and an oriented PET to form molded articles. See Final Act. 3;
Advisory Action mailed Nov. 27, 2015 ("Advisory Act."), 2. The Examiner relies
on Longo' s disclosure that these materials can be heat laminated. Final Act. 3
(citing Longo i-f 58). Longo also teaches, however, that "[b ]onding of the
thermoplastic film with the foamed polyester sheet can be carried out by any
technique conventionally used in the art, including: ... in-line lamination." Longo
i-f 58. Given Longo's disclosure that a low-density polyester foam can be
laminated to a thermoplastic film using any conventional technique, including in-
line lamination, we are not convinced of error in the Examiner's finding that the
ordinary artisan would have had a reason, and possessed the requisite skills, to
adjust pressure P2 in Haverty' s Figure 1 embodiment to a level that would not
crush the low density polyester foam material, but still would prevent unacceptable
shrinkage of the oriented polyester film.
Accordingly, we AFFIRM the rejections under 35 U.S.C. § 103(a) of: (1)
claims 1, 2, 4-9, 12-16, and 19-21 as unpatentable over Haverty in view of
Longo; (2) the rejection of claim 11 as unpatentable over the same references,
further in view of Perman; and (3) the rejection of claims 17, 18, and 22 as
unpatentable over the same references, further in view of Ouderkirk. Because we
recognize our Decision relies on facts and reasons not expressly stated by the
Examiner, we denominate the affirmed rejections as NEW GROUNDS OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).
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Appeal2016-008120
Application 14/363,132
37 C.F.R. § 41.50(b) provides that an appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of the
appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same
record ....
AFFIRMED;
37 C.F.R. § 41.50(b)
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