Ex Parte Ho et al

Patent Trials and Appeals BoardMar 29, 2019

14146753 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/146,753 01/03/2014 32692 7590 04/02/2019 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Charlie C. Ho 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. 62507US010 1032 EXAMINER CHANG, VICTORS ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARLIE C. HO, STEPHEN M. STARK, KENNETH J. HALFORD, andDALER. STEWART Appeal 2018-005911 Application 14/146,753 Technology Center 1700 Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and JEFFREY R. SNAY, Administrative Patent Judges. 1 HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. Â§ 134(a) from an Examiner's decision rejecting claims 1-3, 6, 7, and 15-19 under 35 U.S.C. Â§ 103(a) as 1 The real party in interest is said to be 3M Company and its affiliate, the Applicant, 3M innovative Properties Company. Appeal Brief dated January 5, 2018 ("Br."), at 2. Appeal 2018-005911 Application 14/146,753 unpatentable over admitted prior art2 in view of Liu. 3 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. The claimed invention is directed to an adhesive-backed paint protection film assembly comprising a transparent paint protection polyurethane film having a back surface and a front surface, a pressure sensitive adhesive bonded to the back surface of the film, and a release liner having an outer surface and an inner surface, wherein the assembly is wound into a roll with the outer surface of the release liner facing outwardly and the front surface of the paint protection film facing inwardly. Br. 13. The Appellants disclose that a polymeric film assembly is conventionally wound with the front surface of the polymeric film facing outwardly and the surface of the release liner facing inwardly. Spec. 1, 11. 26-29. The Appellants disclose that discrete pieces of adhesive-backed film are often die cut out of such a rolled film assembly, removed from the release liner, and applied to a desired location ofa substrate surface. Spec. 1, 11. 29-33. The Appellants disclose: It has been uncovered that there are times when such discrete pieces of such a film assembly can be cut to a desired shape, within acceptable tolerances, but when it comes time to remove one of the pieces of adhesive-backed film from the liner and apply it to the substrate, the piece of film is no longer within dimensional tolerances. It has been observed that for an adhesive-backed polymeric film assembly, including a piece of such polymeric film assembly, that is wound into a roll using the conventional method, where the polymeric 2 Paragraphs 3 and 4 of US 2014/0120294 Al, to Ho et al., published May 1, 2014, which is the US Patent Application Publication of instant Application 14/146,753 ("APA"). 3 US 2002/0192465 Al, to Liu et al., published December 19, 2002 ("Liu"). 2 Appeal 2018-005911 Application 14/146,753 film is removed from the release liner, it noticeably grows or elongates in length and may also noticeably grow or elongate in width. While some such elongation may be within acceptable tolerances for some applications, it has been observed that increases of 0.4% or more, or even as little as 0.3%, in the 2-dimensional size (i.e., width and/or length) of such film assemblies will typically fall out of acceptable tolerances. This can result in the piece of adhesive- backed film not being suitable for its intended application. It has been discovered that by winding such adhesive-backed polymeric film assemblies in a manner that is opposite to the standard practice, this problem can be avoided. That is, the present invention involves winding such a film assembly such that the outer surface of the release liner faces outwardly and the front surface of the polymeric film faces inwardly. Spec. 2, 11. 2-17. Independent claim 1 is reproduced below from the Claims Appendix to the Appeal Brief. The limitation at issue is italicized. 1. An adhesive-backed paint protection film assembly comprising: a transparent paint protection film comprising a polyurethane and having a back surface and a front surface, with a pressure sensitive adhesive bonded to said back surface, wherein said paint protection film is cut into multiple discrete adhesive-backed paint protection films, each said discrete adhesive-backed paint protection film having a surface area with a desired 2-dimensional shape and a closed peripheral edge that defines the 2-dimensional shape of said surface area; and a release liner having an outer surface and an inner surface, the adhesive on the back surface of each said discrete adhesive-backed paint protection film directly contacting, and being releasably bonded to, the inner surface, wherein said assembly is wound into a roll, with the outer surface of said release liner facing outwardly and the front surface of said paint protection film facing inwardly, said paint protection film will elongate at least 3% when subjected to an applied tensile stress of at least 6 MPa at ambient conditions, and said 2-dimensional shape is 3 Appeal 2018-005911 Application 14/146,753 dimensioned to cover a corresponding area of at least one body part of a vehicle. Br. 13. B. DISCUSSION The Examiner finds that a rolled film assembly comprising a polyurethane film, a pressure sensitive adhesive bonded to the back surface of the film, and a release liner was known at the time of the Appellants' invention. Non-Final Act. 2-3. 4 The Examiner finds the "APA lacks teachings of: 1) in the roll assembly, the release liner facing outwardly and the discrete film piece facing inwardly, 2) the tensile property of the film, and newly added limitation 3) the film is transparent." Non-Final Act. 3. The Examiner finds Liu Figure 1 discloses an adhesive label comprising a backing layer and a pressure sensitive adhesive layer. 5 Non-Final Act. 3; see also Liu ,r 38. The Examiner finds Liu discloses that a wide variety of materials can be used for the backing layer, including papers, various polymeric films, and multilayer films. Non-Final Act. 3; see also Liu ,r 39. The Examiner finds Liu discloses that a release liner may be positioned over the adhesive layer. Non-Final Act. 3; see also Liu Figs. 2a, 2b; Liu ,r 48 (identifying layer 23 as the release liner). The Examiner finds: [Liu] Fig. 7 illustrates a means of dispensing printable labels comprising a roll, wherein each of the discrete die-cut labels has a 2- dimensional shape and a closed peripheral edge, and corresponds to the shape of an intended substrate shape. The labels are releasably carried on a carrier sheet (release liner) which faces outwardly in the roll. 4 Non-Final Office Action dated August 4, 2017. 5 Liu discloses that the adhesive layer in Figure 1 is "a layer of repositionable non- pressure sensitive adhesive." Liu ,r 38. 4 Appeal 2018-005911 Application 14/146,753 Non-Final Act. 3--4 (citing Liu ,r 58). The Examiner concludes that "[i]t would have been obvious to one of ordinary skill in the art to likewise form AP A's roll assembly with the release liner facing outwardly, as taught by Liu." Non-Final Act. 4. The Appellants argue that Liu does not expressly define the orientation of label 73 on the roll. Br. 9. Moreover, the Appellants argue that the evidence in Liu suggests that Figure 7 depicts the opposite of the Appellants' claimed assembly. Br. 9. Liu does not identify a release liner in Figure 7. See Liu ,r 5 8 ( disclosing that roll 70, label 73, backing sheet 71, and perforated or cutting line 72 are depicted in Figure 7); see also Br. 10 ( contending that a release liner and an adhesive layer are not shown in Lin Figure 7). Moreover, Liu discloses that in certain embodiments, no release liner is required. See Liu ,r,r 37, 56. Thus, to the extent that one of ordinary skill in the art would have used a release liner in the embodiment of Liu Figure 7, it is just as likely that the release liner would be facing inwardly of the roll assembly, in a conventional manner, as argued by the Appellants. See Br. 9 (arguing that "Lin does not unequivocally teach winding a roll with the release liner facing outward" as claimed (emphasis omitted)). Based on the foregoing, we find that a preponderance of the evidence does not support the Examiner's finding that a release liner faces outwardly in the roll assembly illustrated in Liu Figure 7. For that reason, the obviousness rejection is not sustained. C. DECISION The Examiner's decision is reversed. REVERSED 5