Ex Parte Johnson et al

Patent Trial and Appeal BoardMar 22, 2019

14157688 (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/157,688 01/17/2014 32692 7590 03/26/2019 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Stephen A. Johnson 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. 74825US002 5912 EXAMINER ZHANG, MICHAEL N ART UNIT PAPER NUMBER 1781 NOTIFICATION DATE DELIVERY MODE 03/26/2019 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 STEPHEN A. JOHNSON, TIMOTHY J. LINDQUIST, TERENCE D. NEA VIN, and ONUR S. YORDEM Appeal2018-005490 Application 14/157,688 Technology Center 1700 Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and LILAN REN, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellants2 appeal from the Examiner's decision to reject claims 1-20 and 22-25. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 In explaining our Decision, we cite to the Specification of January 17, 2014 (Spec.), Final Office Action of February 9, 2017 (Final), Appeal Brief of July 10, 2017 (Appeal Br.), Examiner's Answer of March 8, 2018 (Ans.), and Reply Brief of May 4, 2018 (Reply Br.). 2 Appellants identify the real party in interest as 3M Innovative Properties Company of St. Paul, Minnesota. Appeal Br. 3. Appeal2018-005490 Application 14/157,688 The claims are directed to a multilayer film comprising a stack of polymer layers. See, e.g., claim 1, which is reproduced below with the limitations most at issue emphasized: 1. A film comprising a stack of polymer layers, the polymer layers being organized into layer packets, each of the layer packets having at least two of the polymer layers; wherein for every pair of adjacent first and second layer packets in the stack, the front major surface of a first layer packet intimately contacts the back major surface of the second layer packet and attachment between the front major surface of the first layer packet and the back major surface of the second layer packet is weak enough to permit the layer packets to be separately irreversibly delaminated from a remainder of the stack, and the stack is configured without adhesives in the polymer layers that are disposed at interfaces between adjacent layer packets to promote such irreversible delamination between such layer packets; wherein all of the polymer layers in the stack of polymer layers have respective polymer compositions that are coextruded with each other to form the stack of polymer layers; wherein at least one of the polymer layers in a plurality of the layer packets comprises one or more ultraviolet (UV) light stabilizer; and wherein each of the layer packets in the stack has a thickness of no more than 1 mil. Appeal Br., claim appendix (emphasis added). 2 Appeal2018-005490 Application 14/157,688 OPINION The principal rejection on appeal is the Examiner's rejection of claim 1 under 35 U.S.C. Â§ I03(a) as obvious over Janssen3 in view of Wallace4 and Dooley. 5 Final 2--4. The Examiner adds various prior art references to reject other claims, but we need not discuss those other rejections as the issues on appeal are the same for all the rejections and it will suffice to discuss the issues as they apply to the rejection of claim 1. Appellants' arguments focus on the teachings of Wallace, which the Examiner finds teaches using coextrudable polymer in all the layers in a stack of polymer layers. Compare Appeal Br. 11-15, with Final 3, and Ans. 13-14. Appellants acknowledge that "Wallace teaches that 'the multiple sheets that make up the laminated sheet can be formed simultaneously, such as by co-extrusion"' (Appeal Br. 13 (quoting Wallace ,r 128)), but contend that "Wallace teaches that to form a stack of ( delaminatable) polymer layers, these laminated sheets must then be further combined." Id. ( citing Wall ace ,r 130). Appellants' argument fails because further combining coextruded layers results in a stack of coextrudable layers. Thus, we agree with the Examiner that Wallace teaches "a stack of peelable layers, where all of the layers are coextrudable together." Ans. 13. Appellants' argument rests on the fact that Wallace does not teach coextruding the entire stack of layers. Although Appellants are correct that 3 Janssen et al., US 2004/0121105 Al, published June 24, 2004. 4 Wallace, US 2013/0142975 Al, published June 6, 2013. 5 Joseph Dooley & Harvey Tung, Coextrusion, Encyclopedia of Polymer Science and Technology, vol. 2, 1-25 (2001). 3 Appeal2018-005490 Application 14/157,688 the laminated sheets described in paragraph 128 must be further combined to form the stack, we do not agree that paragraph 130 discloses including polymer compositions in the layers that are not coextrudable. Paragraph 130 of Wallace merely states that the laminated sheets are arranged in the conformation of a stack of laminated sheets. Wallace ,r 130. Other portions of Wallace indicate that all the layers of the stack are coextrudable. To understand this aspect of the teaching, some context is required. We provide that context below. Wallace teaches a laminated sheet 2 composed of a distal sheet 10 and a medial sheet 30 that are bound together by a first tie layer 20. Wallace ,r 23, Fig. 1. The distal sheet 10 and medial sheet 3 0 are each composed of multiple layers. Wallace ,r 23, Fig. 1. Distal sheet 10 contains scratch- resistant polymer layer 12, anti-permeation layer 14, and bonding layer 16. Id. Medial sheet 30 includes distal bonding layer 32, odor barrier layer 34, and proximal bonding layer 36. Id. The laminated sheet may also contain proximal layer 50 and second tie layer 40. Wallace ,r 24, Fig. 2. Laminated sheets 2 may be assembled in peelable configurations in which the laminated sheets 2 are stacked. Wallace ,r 25, Figs. 3A-3D (showing stacked laminated sheets 2, 2', 2", etc.). Although Wallace uses the term "laminated," Wallace defines "[a] 'laminated' sheet" as "a sheet having multiple, substantially parallel planar layers, without regard to the means of attachment between the layers and without regard to the method by which the layers are assembled or attached." Wallace ,r 33. Wallace further states that "[a] laminated sheet having multiple layers can be made by coextrusion of the layers to form a 4 Appeal2018-005490 Application 14/157,688 single sheet or by adhesion of multiple, separately formed sheets, for example." Id. (emphasis added). Wallace specifically discloses coextruding the multiple sheets that make up the laminated sheets and states that coextrusion is particularly suitable when the first and/or second tie layers of the laminated sheet consist of heat-bonded, melt-bonded, or chain entangled portions of adjacent polymer layers. Wallace ,r 128. Given that all of "the multiple sheets that make up the laminated sheet can be formed simultaneously, such as by co- extrusion" (id.), all of the multiple sheets in the stack of those laminated sheets are formed from coextrudable polymer compositions. This follows from the teachings of Wallace. Moreover, we note that claim 1 is directed to an article of manufacture, i.e., a structure. Whether the laminated sheets 2 are assembled by stacking previously coextruded laminated sheets 2 or assembled by co- extruding the entire stack, it is reasonable to conclude that the resulting structure is the same or substantially the same. All the layers are coextrudable polymer compositions. This is all that is required in terms of structure. "[I]t is the patentability of the product claimed and not of the recited process steps which must be established." In re Brown, 459 F.2d 531,535 (CCPA 1972). Appellants have not persuaded us of a reversible error in the Examiner's finding that Wallace teaches or suggests polymer layers in a stack of polymer layers that have the respective polymer compositions and structure required by claim 1. Appellants further contend that Wallace includes adhesive-containing barrier layers that are excluded by the language "configured without 5 Appeal2018-005490 Application 14/157,688 adhesives in the polymer layers that are disposed at interfaces between adjacent layer packets to promote such irreversible delamination between such layer packets," in claim 1. Appeal Br. 13. To support this argument, Appellants cite to the teaching in Wallace of including interposing barrier compositions between sheets in the stack to prevent fusion of the laminated sheets. Id. (citing Wallace ,r,r 131-132). Appellants point out that the barrier composition can include an adhesive. Id. First, Wallace's barrier layer performs the function set forth in the claim of promoting "irreversible delamination between such layer packets:" It prevents fusion of the surfaces of the sheets. Wallace ,r 131. Although the barrier layer may contain adhesive, that adhesive is selected so that the second laminated sheet can be peeled away from the first laminated sheet after thermoforming. Wallace ,r 132. Wallace still terms the layer a barrier layer even though it can include an adhesive. Second, it is not clear what compositions Appellants are attempting to exclude with the language "without an adhesive." The Specification provides no definition of what compositions are to be classified as adhesive and, thus, excluded from the polymer layers. One can read "adhesive" to include any composition that has adhesive properties, but many compositions and substances have adhesive properties and their "adhesiveness" can depend on the physical and chemical surface to which they are applied. Thus, the scope of "without an adhesive" is unclear. 6 Appeal2018-005490 Application 14/157,688 Given the lack of clarity of the claim language, 6 we cannot say that it excludes the adhesive-containing barrier layers taught by Wallace. Third, we agree with the Examiner that Wallace discloses the barrier layer as optional. Ans. 13. Appellants do not dispute this finding of the Examiner. Reply Br. 2--4. Appellants have not identified a reversible error in the Examiner's finding that Wallace discloses a stack of layers in which none of the polymer layers in the stack are adhesives. In the Reply Brief, Appellants make an argument directed to the Examiner's finding regarding the thickness limitation of claim 1 that was not made in the Appeal Brief. Reply Br. 3. Because no good cause has been shown for why this argument was not presented in the Appeal Brief, we decline to address it. 37 C.F.R. Â§ 4I.41(b)(2) (2016). CONCLUSION We sustain the Examiner's rejections. DECISION The Examiner's decision is affirmed. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). 6 Although the scope of the claim language is unclear, the Examiner did not reject any claims under 35 U.S.C. Â§ 112 ,r 2 as indefinite. Thus, there is no indefiniteness rejection for us to review here. 7 Appeal2018-005490 Application 14/157,688 AFFIRMED 8