Ex Parte Jacobs et al

Patent Trial and Appeal Board

Apr 25, 2016

11601094 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/601,094 11117/2006
32692 7590 04/27/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Jeffry L. Jacobs
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.
61484US005 6022
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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
Ex parte JEFFRY L. JACOBS, JEFFREY A. PETERSON,
and CHRISTOPHER A. HAAK
Appeal2014-007651
Application 11/601,094
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal the Examiner's final rejection of claims 1-12.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
1 Appellants identify 3M Company and 3M Innovative Properties Company
as the real parties in interest. App. Br. 2.
Appeal2014-007651
Application 11/601,094
The Claimed Invention
Appellants' disclosure relates to an infrared light reflecting mixture
comprising inorganic granules and polymeric multilayer infrared light
reflecting film particles. Abstract; App. Br. 2. Independent claim 1 is
representative of the claims on appeal and is reproduced below from the
Claims Appendix to the Appeal Brief (App. Br. 7) (emphasis added):
1. An infrared light reflecting mixture, comprising:
inorganic granules having a mean size ranging from about
0.1 millimeters to about 5 millimeters; and
polymeric multilayer infrared light reflecting film
particles comprising a plurality of alternating polymeric layers,
wherein the particles exhibit a mean size ranging from about 50
micrometers to about 5 millimeters, and further wherein the
polymeric multilayer infrared light reflecting film particles are at
least about 90 percent transparent to incident light within the
visible spectrum of about 400 to about 700 nanometers,
wherein the relative weight percent of inorganic granules
to polymeric multilayer infrared light reflecting film particles is
about 99.95 to about 70 weight percent inorganic granules and
about 0.05 to about 30 weight percent polymeric multilayer
infrared light reflecting film particles.
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Whitney et al., US 6,475,609 Bl Nov. 5, 2002
(hereinafter "Whitney")
Shiao et al., US 2005/0072110 Al Apr. 7, 2005
(hereinafter "Shiao")
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Application 11/601,094
The Rejection
Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Shiao in view of Whitney.
OPINION
Appellants argue claims 1-12 as a group. We, therefore, select claim
1 as representative of this group, and the remaining claims stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2014).
The Examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
The Examiner finds that Shiao teaches the majority of claim 1 's limitations,
but that Shiao does not teach film particles that are "at least about 90 percent
transparent to incident light within the visible spectrum of about 400 to
about 700 nanometers." Ans. 2, 3. The Examiner, however, relies on
Whitney for teaching that limitation. Id. at 3. In particular, the Examiner
finds that \Vhitney inherently teaches the limitation because \Vhitney
discloses film particles (i.e., glitter) that satisfy both the material and size
limitations of the claim. Id. at 3, 5.
Appellants argue the Examiner has failed to establish a prima facie
case of obviousness because Whitney does not "inherently describe
polymeric multilayer infrared light reflecting film particles that are 'at least
about 90 percent transparent to incident light within the visible spectrum of
about 400 to about 700 nanometers,"' as required by the claim. App. Br. 4,
5. We agree with Appellants' argument for the reasons discussed below.
We begin by considering the proper interpretation of the claim
limitation "at least about 90 percent transparent to incident light within the
visible spectrum of about 400 to about 700 nanometers." This phrase is
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Application 11/601,094
susceptible of multiple interpretations: (1) the phrase could require that at
least about 90% of incident light of any wavelength within the recited range
pass through the infrared light-reflecting film particle, i.e., at least about
90% transparency is a floor that extends across the recited range, or (2) the
phrase could require that, on average, at least about 90% of light incident
light within recited range passes through the infrared light-reflecting film
particle.
During prosecution, claims are given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. Of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as they would have been
interpreted by one of ordinary skill in the art at the time of the invention. Id.
In this case, Appellants' Specification expresses a desire to "minimize
visual changes to the shingle to which the film particles have been applied."
Spec. 8, 11. 14--19. The Specification explains that this objective may be
achieved by "permitting at least about 90 percent of incident visible light to
be transmitted or passed through." Id. A person of ordinary skill in the art
would have understood that an infrared light-reflecting film particle might,
on average, transmit at least about 90% of visible light but change the color
of the shingle by selectively absorbing all or nearly all light of a specific
color. Because the Specification evidences a desire to avoid changes to the
shingle's appearance, the skilled artisan, at the time of the invention, a
person of ordinary skill in the art would have understood the transparency
limitation set forth in claim 1 is a floor that applies to every wavelength
within the claimed range.
The Examiner has failed to establish by a preponderance of the
evidence that Whitney inherently discloses this limitation. For a claim
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Application 11/601,094
limitation to be found inherently present, a prior art reference "must make
clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill." Continental Can Co. v. Monsanto Co., 948 F.2d 1264,
1268---69 (Fed. Cir. 1991).
The Examiner does not identify sufficient evidence that the limitation
is necessarily present in the glitter described in Whitney. As noted by
Appellants (App. Br. 4, 5), the Examiner does not point to any teachings in
Whitney that disclose or suggest the limitation. The portion of Whitney
cited by the Examiner as support in the Answer (Ans. 3) states only that "the
color shifting film has at least one transmission band in the visible region of
the spectrum and at least one reflection band ... in the visible region of the
spectrum." Whitney, col. 2, 11. 31-36. This passage, however, does not
teach, suggest, or mention that the glitter or any film particles permit at least
about 90 percent of incident visible light to be transmitted or passed through,
as required by the claims.
Moreover, based on the record before us and the combined teachings
of the cited prior art references, we are not persuaded the Examiner has
identified sufficient evidence to support the finding that the "structure
recited in the references is substantially identical to that of the claims."
Ans. 5 (citing MPEP 2112.01 (I)). Additionally, the Examiner's assertion
that the limitation is "a function of the polymeric multilayer infrared
reflecting film particles of the instant claims," without more, is insufficient
to establish that Whitney inherently discloses the limitation and support a
prima case face of obviousness. In re Kahn, 441F.3d977, 988 (Fed. Cir.
2006) (holding "rejections on obviousness grounds cannot be sustained by
mere conclusory statements").
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Application 11/601,094
The Examiner does not provide a sufficient rationale or adequately
explain why one of ordinary skill would have recognized that the limitation
was necessarily present in the glitter described in Whitney. As noted by
Appellants (App. Br. 5), the Examiner does not point to any structure in the
glitter Whitney describes that would teach or suggest to one of ordinary skill
in the art that permitting at least about 90 percent of incident visible light to
be transmitted or passed through is a characteristic or property that would
have been necessarily present in the glitter.
Accordingly, we reverse the Examiner's rejection of claim 1 under 35
U.S.C. § 103(a) as unpatentable over Shiao in view of Whitney. Because
claims 2-12 depend from claim 1, we also reverse the Examiner's rejection
of these claims.
DECISION/ORDER
The Examiner's rejection of claims 1-12 under 35 U.S.C. § 103(a) is
reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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