Ex Parte Johnson et al

Patent Trials and Appeals Board

Mar 22, 2019

14157688 - (D) (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. § 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. § 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.
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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).
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Application 14/157,688
OPINION
The principal rejection on appeal is the Examiner's rejection of
claim 1 under 35 U.S.C. § 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).
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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
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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
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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.
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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. § 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. § 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. § 112 ,r 2 as indefinite. Thus, there is no
indefiniteness rejection for us to review here.
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Appeal2018-005490
Application 14/157,688
AFFIRMED
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