Ex Parte Lin et al

Patent Trial and Appeal BoardNov 28, 2018

14346482 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/346,482 05/14/2014 32692 7590 11/30/2018 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR HaohaoLin 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. 67917US005 1087 EXAMINER VAZQUEZ, ELAINE M ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 11/30/2018 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 HAOHAO LIN, MAMORU KANNO, KIU-YUEN TSE, EUMI PYUN, GUANG ZHENG, YING ZHANG, YUGI KASHIWAZAKI, CHARLES A. SHAKLEE, and LYNNE. LORIMOR Appeal2018-000165 Application 14/346,482 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's December 24, 2015 decision finally rejecting claims 1, 6-9, and 13-20. Claims 3-5 and 10-12 are canceled. 2 We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants state that the real party in interest is 3M Company and its affiliate 3M Innovative Properties (Br. 2). 2 Appellants do not appeal the Examiner's rejection of claim 2 (Br. 4). Rather, Appellants state in their Brief that they "wish to cancel claim 2." Id. at 2. While Amendments filed on the date the Appeal Brief may be filed may be admitted to cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding under 37 C.F.R. Â§ Appeal2018-000165 Application 14/346,482 CLAIMED SUBJECT MATTER Appellants' invention is directed to decorative films or sheets having decreased flammability (Spec. ,r 2). According to the Specification, the described sheets possess desirable mechanical properties, including workability, adhesion, durability, etc., while reducing gross heat of combustion relative to currently available sheets. Id. ,r 17. Claims 1, 6, and 17 are representative and are reproduced below from the Claims Appendix of the Appeal Brief (emphasis added): 1. A decorative sheet comprising: a decorative base layer, wherein the decorative base layer comprises one or more inorganic non-combustible fillers at a weight percentage of between 10% and 50%, wherein the one or more inorganic non-combustible fillers comprise CaC03; an adhesive layer disposed on a surface of the decorative base layer, wherein the adhesive layer comprises a silicone pressure sensitive adhesive, and wherein the adhesive layer is available to adhere the decorative sheet to a surface; and a transparent layer disposed on an opposing surface of the base layer from the adhesive layer, wherein the decorative sheet has a thickness of between 85 micrometers and 250 micrometers and has a gross heat of combustion of 4.0 megajoules per square meter or less when measured by oxygen bomb calorimetry using standard GB/T 14402-2007. 6. A decorative sheet according to claim 1, wherein the decorative base layer comprises polyvinylchloride. 41.3 7 (b )( 1 ), no such amendment appears to have been filed. Accordingly, we will summarily affirm the rejection of claim 2. Should prosecution continue, Appellant can file an amendment canceling this claims. 2 Appeal2018-000165 Application 14/346,482 19. A decorative sheet consisting essentially of: a decorative base layer comprising polyvinylchloride and one or more inorganic noncombustible fillers, wherein the one or more inorganic non-combustible fillers comprise CaC03, wherein the inorganic non-combustible fillers comprise between 10% and 50% by weight of the decorative base layer, and wherein the decorative base layer has a thickness of between 60 micrometers and 150 micrometers; an adhesive layer disposed on a surface of the decorative base layer, wherein the adhesive layer has a thickness of between 15 micrometers and 50 micrometers, wherein the adhesive layer comprises a silicone pressure sensitive adhesive, and wherein the adhesive layer is available to adhere the decorative sheet to a surface; and a transparent layer disposed on an opposing surface of the base layer from the adhesive layer, wherein the transparent layer comprises polyvinylidene fluoride and has a thickness of between 15 micrometers and 50 micrometers. Br. 8, 9--10 (Claims App.). DISCUSSION The only rejection on appeal is the rejection of claims 1, 2, 6-9, and 13-20 under 35 U.S.C. Â§ I03(a) as unpatentable over Pierson3 in view of Conesa, 4 Thompson, 5 0 'Neill, 6 and further in view of Parsons. 7 Appellants' arguments are directed to limitations recited in independent claims 1, 1 7, and 3 Pierson et al., US 2008/0233365 Al, published September 25, 2008. 4 Conesa, US 2010/0003879 Al, published January 7, 2010. 5 Thompson et al., US 2005/0215683 Al, published September 29, 2005. 6 O'Neill, US 4,940,112, issued July 10, 1990. 7 Parsons et al., US 5,851,663, issued December 22, 1998. 3 Appeal2018-000165 Application 14/346,482 19 (see Br. 5-7). Appellants offer additional arguments directed to limitations recited in claims 6 and 17-19 (see Br. 7). Accordingly, our discussion will focus on the rejection of claims 1 and 19, which we select as representative of the claims subject to the rejection. 37 C.F.R. Â§ 4I.37(c)(l)(iv). Appellants' principal argument in this appeal is that the applied prior art fails to teach or suggest the features of claims 1 and 19 (Br. 5-7). The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a primafacie case ofunpatentability."). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Furthermore, the Examiner must articulate some "reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006). This reasoning must show that "there was an apparent reason to combine the known elements in the fashion claimed." KSRint'l Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007). We have reviewed the arguments and evidence presented by Appellants in the Brief seeking reversal of the obviousness rejection, and conclude that Appellants have not shown reversible error in the appealed 4 Appeal2018-000165 Application 14/346,482 rejection, essentially for the reasons set forth in the Answer. We add the following primarily for emphasis. Appellants argue that the applied prior art, specifically Pierson and O'Neill, fails to teach that the requisite silicone pressure sensitive adhesive layer is available to adhere the decorative sheet to a surface as required by claims 1 and 19 (Br. 5). With respect to Pierson, Appellants assert that the pressure sensitive adhesive disclosed therein is used to adhere a decorative sheet to substrate 200 made of materials selected from a group consisting of acrylic, polyvinylchloride, or polyester. (Id. at 5---6, citing Pierson ,r,r 20, 25--42). In contrast, Appellants contend that O'Neill's silicon pressure sensitive adhesive is used as an inter-layer to form a composite structure made ofpolyimide:polyimide or polyimide:silicon rubber layers (Br. 6-7, citing O'Neill Figs 1, 2; claim 1). Therefore, according to Appellants, O'Neill fails to teach a silicone pressure sensitive adhesive layer for adhering an outer portion of a decorative sheet to acrylic, polyvinylchloride, or polyester substrates (Br. 6-7). With respect to claim 19, Appellants further argue that "O'Neill fails to teach or suggest a silicone pressure sensitive adhesive layer [that is] attached to a polyvinylchloride layer and available for attachment to an unspecified substrate" (Id. at 7). Appellants' arguments are not persuasive. As the Examiner finds, Pierson discloses or suggests each of the claimed decorative sheet's components except, inter alia, that the described pressure sensitive adhesive is a silicone pressure sensitive adhesive (Ans. 2 , 5 Appeal2018-000165 Application 14/346,482 citing Pierson ,r 26; claim 42; see also Ans. 14--15). However, the Examiner finds that O'Neill discloses or suggests a multilayered composite having improved flammability and smoke resistance properties ... wherein the pressure sensitive adhesive is a silicone pressure sensitive adhesive ... [that] is high temperature resistant and exhibits zero flame time, no drippings, a bum length of no more than four inches, and flame retardant properties. (Ans. 4, citing O'Neill Abstract; 4:38-53); see also Ans. 16). Appellants' arguments fail to identify reversible error in the Examiner's reasoned determination that one of ordinary skill in the art at the time the invention was made would have been motivated to use O'Neill's silicone in Pierson's product because the silicone adhesive exhibits flame retardant properties (Ans. 4, 16). Furthermore, we agree with the Examiner that O'Neill is relied upon for teaching the pressure sensitive adhesive's silicone material, not the location thereof (Id. at 18). As the Examiner finds, Pierson teaches an adhesive layer disposed on the surface of the decorative base layer 70 (Ans. 2, citing Pierson ,r 26; claim 42; see also Ans. 14--15, citing Pierson ,r 21 ( describing the decorative base layer 70 comprising polyvinylchloride) ). Thus, that O'Neill's pressure sensitive adhesive forms an inter-layer in a composite structure does not show reversible error in the obviousness rejection. Absent any evidence that O'Neill's silicone pressure sensitive adhesive cannot adhere Pierce's acrylic, polyvinylchloride, or polyester substrate 200 or polyvinylchloride decorative base layer 70, Appellants have not identified reversible error in the Examiner's reasoned conclusion that it would have been obvious for the ordinary skilled artisan to modify Pierson's 6 Appeal2018-000165 Application 14/346,482 product by using O'Neill's silicone as the pressure sensitive adhesive material in order to have an adhesive that is high temperature resistant (Ans. 4, 16). For the foregoing reasons, we affirm the obviousness rejection of claims 1, 17, and 19; dependent claims 6-9, 13-16, 18, and 20 fall with their respective independent claims. 37 C.F.R. Â§ 4I.37(c)(l)(iv). CONCLUSION We AFFIRM the rejection of claims 1, 2, 6-9, and 13-20 under 35 U.S.C. Â§ 103(a) as unpatentable over Pierson in view of Conesa, Thompson, O'Neill, and further in view of Parsons. 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 )(iv). AFFIRMED 7