Ex Parte Jokisch et al

Patent Trial and Appeal Board

May 22, 2017

12867855 (P.T.A.B. May. 22, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/867,855 08/16/2010 Carl Jokisch 365039US0PCT 3580
22850 7590 05/24/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
05/24/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL JOKISCH and JUERGEN WEISER1
Appeal 2015-0069092
Application 12/867,855
Technology Center 1700
Before JEFFREY W. ABRAHAM, JULIA HEANEY, and
JEFFREY R. SNAY, Administrative Patent Judges.
ABRAHAM, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—3, 5—7, 18, and 21—27. We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We reverse.
1 According to the Appeal Brief, the real party in interest is BASF SE. App.
Br. 1.
2 We heard oral arguments from the Appellants’ representative on May 9,
2017. A written transcript will be entered into the record when it is made
available.
Appeal 2015-006909
Application 12/867,855
BACKGROUND
Appellants’ claimed invention relates to multilayered composite
materials comprising a plastic or metal foil, an optional bonding layer, and a
polyurethane layer. Spec. 1:4—8.
Claim 1 is the only independent claim on appeal, and is reproduced
below from the Claims Appendix:
1. A multilayered composite material comprising, in
order:
a plastic film or metal foil (A);
optionally at least one bonding layer (B); and
a polyurethane layer (C) with capillaries passing
through the entire thickness of the polyurethane layer,
wherein polyurethane layer (C) has on average at least
100 capillaries per 100 cm2, exhibits patterning, and has
an average thickness of 15 to 300 pm,
wherein said patterning corresponds to a velvet
surface, in which hairs having an average length of from
20 to 500 pm, with an average spacing of from 50 to 350
pm from one hair to the next, and
wherein when (B) is not present, (A) and (C) are in
contact with each other, and when (B) is present, (A) is in
contact with (B), and (B) is in contact with (C).
The Examiner maintains,3 and Appellants appeal, the following
rejections:
3 In the Answer, the Examiner withdrew the rejection of claims 1,2, 5—7,
and 21—26 under 35 U.S.C. § 103 as unpatentable over Schaefer in view of
Wistozky et al. (US 3,709,752, issued Jan. 9, 1973). Ans. 12.
2
Appeal 2015-006909
Application 12/867,855
1. Claims 1, 6, 7, 21—24, and 27 under 35 U.S.C. § 103 as
unpatentable over Schaefer;4
2. Claims 1—3, 6, 7, 18, 21—23, and 25—27 under 35 U.S.C. § 103 as
unpatentable over Sugiyama5 in view of Brownhill,6 Chou,7 and
Onstad;8 and
3. Claim 24 under 35 U.S.C. § 103 as unpatentable over Sugiyama in
view of Brownhill, Chou, Onstad, and Pike.9
OPINION
Rejection over Schaefer
Claim 1 requires, inter alia, that the polyurethane surface exhibits
patterning, wherein said patterning corresponds to a velvet surface in which
hairs have “an average spacing of from 50 to 350 pm from one hair to the
next.” The Examiner finds that Schaefer teaches a multilayered composite
material comprising a metal foil and a polyurethane layer exhibiting
patterning, namely a textured surface with fine hairs. Ans. 2. The Examiner
acknowledges that “Schaefer fails to explicitly disclose an average spacing
from one hair to the next,” but finds that Schaefer does disclose that the fine
hairs prevent dirt from adhering over the total surface. Id. at 2—3. The
Examiner further finds that “[a]s the prevention of dirt contamination is a
variable that can be modified ... by adjusting the average spacing from one
4 Schaefer, US 2007/0082176 Al, published Apr. 12, 2007.
5 Sugiyama et al., US 6,372,333 Bl, issued Apr. 16, 2002.
6 Brownhill et al., US 4,289,513, issued Sept. 15, 1981.
7 Chou et al., US 5,817,415, issued Oct. 6, 1998.
8 Onstad et al., US 3,155,560, issued Nov. 3, 1964.
9 Pike et al., US 5,597,645, issued Jan. 28, 1997.
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Appeal 2015-006909
Application 12/867,855
hair to the next, the precise amount would have been considered a result
effective variable by one having ordinary skill in the art.” Id. at 3. The
Examiner thus determines that a person of ordinary skill in the art would
have optimized the average spacing from one hair to the next in Schaefer’s
composite material to prevent dirt contamination as desired by Schaefer. Id.
Appellants argue that the Examiner provides no evidence of a
relationship between average spacing from one hair to the next and
prevention of dirt contamination. App. Br. 8. Appellants thus assert that the
Examiner erred in rejecting claims 1, 6, 7, 21—24, and 27 over Schaefer.
We are persuaded by Appellants’ argument. The Examiner bears the
initial burden of factually supporting any prima facie conclusion of
obviousness. See In re Warner, 379 F.2d 1011, 1016 (CCPA 1967).
Furthermore, “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner fails to provide any evidence supporting the conclusion
that a person of ordinary skill in the art would have optimized average
spacing from one hair to the next to prevent dirt contamination. Instead, the
Examiner impermissibly relies upon a conclusory statement regarding an
alleged relationship between hair spacing and dirt contamination. In view of
this, we find the Examiner failed to establish a prima facie case of
obviousness.
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Appeal 2015-006909
Application 12/867,855
Rejections over Sugiyama
Claim 1 requires a composite material comprising a plastic film or
metal foil and a polyurethane layer, wherein the polyurethane layer exhibits
patterning, has an average thickness of 15 to 300 pm, and has capillaries
passing through its entire thickness. The Examiner finds that Sugiyama
discloses a multilayered composite comprising:
a plastic or metal foil (A) (col. 8, lines 48-55); and a
polyurethane layer (C) (col. 6, line 66-col. 7, line 6, col. 7, lines
14-16 and 30-9) which is formed as a textile layer and would
intrinsically have capillaries passing through the entire
thickness of the polyurethane layer as claimed, exhibits
patterning given that the textile layer (col. 7, lines 31-40) is
patterned by warp and woof, and has an average thickness of
about 200 to 500 pm (col. 7, lines 65-67).
Ans. 4—5.
Appellants argue that “it is not even clear that Sugiyama et al
contemplates, let alone discloses” a metal foil or plastic film next to the
claimed polyurethane layer. App. Br. 20. Appellants contend that the
Examiner relies on alternate embodiments of Sugiyama, one having a
plastic film or foil combined with inorganic composite (A) and another
having a polyurethane layer combined with inorganic composite (A).
Id.; Reply 3.
In responding to Appellants’ arguments, the Examiner states that
“Sugiyama discloses a laminate having composite (A) and substrate (B2)
(col. 8, lines 12-17) where composite (A) includes fiber (Bl) of
polyurethane (col. 6, line 65-col. 7, line 6 and 14-16) and substrate (B2)
includes plastic film or metal foil (col. 8, lines 48-55).” Ans. 14. Contrary
to the Examiner’s finding, however, Sugiyama expressly states that “[t]he
function improving fiber (Bl) is a fiber other than composite fiber (A).”
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Appeal 2015-006909
Application 12/867,855
Sugiyama, 7:8—9 (emphasis added). Thus, the Examiner’s rejection is based
on the incorrect finding that “composite (A) includes fiber (Bl) of
polyurethane.” Ans. 14.
Moreover, Sugiyama teaches that the combination of composite (A)
with function improving substrate (B2) is a “different product of the present
invention.” Sugiyama, 8:12—13. We note that substrate B2 may comprise a
sheet made from a polyurethane fiber in combination with a plastic film or
metal foil. Id. at 8:31—55 (stating that B2 is exemplified by a plastic film or
metal sheet in addition to a sheet made from a polyurethane fiber). The
Examiner, however, does not specifically direct us to that combination of
elements in B2. Instead, the Examiner points to a combination of A, Bl, and
B2 that Sugiyama does not disclose.
Nor does the Examiner demonstrate sufficiently that the polyurethane
fiber in substrate B2 of Sugiyama is patterned, has a certain average
thickness, and has capillaries passing through its entire thickness, as required
by claim 1. Rather, the Examiner directs us to Sugiyama’s discussion of
properties (e.g., warp and woof) of a textile formed from a combination of
composite fiber (A) and function improving fiber (Bl). See Ans. 4—5, 14
(citing only columns 6 and 7 of Sugiyama when referring to the claimed
polyurethane, not column 8 which discusses substrate B2).
The Examiner has not demonstrated that the teachings of Brownhill,
Onstad, or Chou cure the aforementioned deficiencies of Sugiyama.
In view of this, we find the Examiner failed to establish a prima facie
case of obviousness. In re Warner, 379 F.2d at 1016.
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CONCLUSION
For the reasons set forth above, we reverse the Examiner’s rejection of
claims 1—3, 5—7, 18, and 21—27.
REVERSED
7