Ex Parte Liu et al

Patent Trial and Appeal Board

Oct 11, 2012

11272991 (P.T.A.B. Oct. 11, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/272,991 11/14/2005 Wen-Feng Liu ITW-41147 3338
7590 10/11/2012
Maxwell J. Peterson
Pauley Petersen & Erickson
Suite 365
2800 West Higgins Road
Hoffman Estates, IL 60195
EXAMINER
MCCLELLAND, KIMBERLY KEIL
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
10/11/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte WEN-FENG LIU, JAMES W. STONE,
DONALD P. SCHAEFER, and LUTZ H. REITZEL
____________

Appeal 2011-009658
Application 11/272,991
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-009658
Application 11/272,991

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Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 92-109. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

Appellants claim an adhesive-coated laminate substrate in the form of
a high pressure decorative laminate comprising a self-adhesive layer and a
siliconized release liner (claim 92).
Representative claim 92, the sole independent claim on appeal, reads
as follows:
92. An adhesive-coated laminate substrate in the form of
a high pressure decorative laminate, in combination with a
release layer, the high pressure decorative laminate comprising:
a high pressure decorative laminate substrate including
layers of fibrous strips impregnated with a cured resin and one
or more decorative layers; and
a self-adhesive layer including a physically setting,
solvent-free terpolymer of vinyl acetate-ethylene and acrylic;
the release layer being a siliconized paper or film
positioned adjacent to the self-adhesive layer.
Under 35 U.S.C. § 103(a), the Examiner rejects:
claims 92, 93, 99-102, and 107 as unpatentable over Holzer
(US 2004/0091694 A1 published May 13, 2004), Schottenfeld
(US 2002/0094404 A1 published July 18, 2002), and De Bastiani
(US 6,174,634 B1 issued Jan. 16, 2001);
claims 94, 96, 103-106, 108, and 109 as unpatentable over Holzer,
Schottenfeld, De Bastiani, and Böhm (US 6,808,587 B2 issued Oct. 26,
2004);
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Application 11/272,991

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claim 95 as unpatentable over Holzer, Schottenfeld, De Bastiani,
Böhm, and Appellants' Admitted Prior Art (APA; Spec. 20:13-17); and
claims 97 and 98 as unpatentable over Holzer, Schottenfeld, De
Bastiani, Böhm, and Yoshizawa (US 5,670,226 issued Sept. 23, 1997).

We will sustain the above rejections for the reasons expressed in the
Answer and below.

The Rejection based on Holzer, Schottenfeld, and De Bastiani

The Examiner concludes that it would have been obvious to replace
the adhesive of Holzer with the self-adhesive of Schottenfeld and to replace
the release layer of Holzer with the siliconized release layer of De Bastiani
(Ans. 4-5).
Appellants' arguments against this rejection are limited to the
Examiner's proposed combination of Holzer and Schottenfeld. App. Br. 5-
11. Further, Appellants do not present separate arguments directed to the
dependent claims specifically. Id. As a consequence, in our consideration
of this rejection, we will focus on independent claim 92 and the proposed
combination of Holzer and Schottenfeld.
Appellants argue that Schottenfeld is nonanalogous art and therefore
not combinable with Holzer (see, e.g., id. at 7-9).
This argument is unpersuasive. As correctly indicated by the
Examiner, Schottenfeld is within the field of Appellants' endeavor because it
relates to an adhesive-coated decorative laminate (see, e.g., Abst.,
para. [0001]) and is reasonably pertinent to the problem with which
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Application 11/272,991

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Appellants were concerned, namely, laminate adhesion (Ans. 12-13). For
either one of these reasons, Schottenfeld is analogous art contrary to
Appellants' contention.
Appellants also argue that Holzer uses a heat activatable adhesive and
therefore teaches away from using a self-adhesive layer (see, e.g., App. Br.
6-7).
However, we find merit in the Examiner's position that Holzer is not
limited to using a heat activatable adhesive and does not teach away from
using a self-adhesive layer (Ans. 11). As convincing support for this
position, the Examiner cites to paragraph [0030] of Holzer which discloses
that "[t]he adhesive suitable for bonding the laminate to a substrate may be
any of those conventionally used in bonding traditional high pressure
laminates to a substrate or work surface". The Examiner's position as well
as the above obviousness conclusion are reinforced by Holzer’s additional
disclosure that pressure-sensitive adhesive tapes (i.e., self-adhesive tapes)
were used in the prior art for bonding high-pressure laminates to substrates
and work surfaces (para. [0003]).
Finally, Appellants state "[t]he Examiner alleges that it would have
been obvious 'to substitute the substrate and adhesive outer layer taught by
Schottenfeld for the substrate and adhesive layer of Holzer' (Final Office
Action, pp.3-4, ¶8)" (App. Br. 11). Appellants argue that "the proposed
substitution would render Holzer inoperable for its intended purpose" (id.).
As a matter of clarification, the Examiner no longer proposes
substituting the substrate of Schottenfeld for the substrate of Holzer. In the
rejection on appeal as expressed in the Answer, the Examiner's proposed
substitution between these references is limited to substituting the self-
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Application 11/272,991

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adhesive of Schottenfeld for the adhesive of Holzer. This substitution of
adhesives would not render Holzer's decorative laminate inoperable. Rather,
the laminate would remain bondable to a substrate via a self-adhesive known
to be suitable for bonding decorative laminates generally (see, e.g.,
Schottenfeld paras. [0001], [0024]) and suitable for bonding high-pressure
decorative laminates specifically (see, e.g., Holzer para. [0003], [0030]).
For the reasons stated above and in the Answer, we agree with the
Examiner's conclusion that it would have been obvious to substitute the self-
adhesive of Schottenfeld for the adhesive of Holzer. The record before us
reflects that this combination of elements familiar in the prior art yields no
more than predictable results (i.e., laminate adhesion). See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 415-16 (2007) ("The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.").
We sustain the § 103 rejection of claims 92, 93, 99-102, and 107 as
unpatentable over Holzer, Schottenfeld, and De Bastiani.

The Remaining § 103 Rejections

Concerning the rejection based on Holzer, Schottenfeld, De Bastiani,
and Böhm, Appellants argue that Böhm "is nonanalogous for many of the
same reasons as Schottenfeld" (App. Br. 12). This argument is
unpersuasive. Appellants have failed to provide the record of this appeal
with convincing rationale for the proposition that Böhm is neither within
Appellants' field of endeavor nor reasonably pertinent to the particular
problem with which Appellants were concerned.
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Appellants' other arguments regarding this rejection (id.) do not
specifically address, and therefore fail to show error in, the Examiner's
proposed rationale for providing Holzer with the adhesion promoter of
Böhm (see, e.g., Ans. 7).
Other than the unsuccessful arguments discussed above, Appellants
present no arguments specifically directed to the rejection based on Holzer,
Schottenfeld, De Bastiani, Böhm, and APA (App. Br. 13). Similarly,
Appellants do not even acknowledge much less present arguments
specifically directed to the rejection based on Holzer, Schottenfeld, De
Bastiani, and Yoshizawa (see, e.g., id. at 4-5).

Under these circumstances, we also sustain these remaining § 103
rejections.

Conclusion

The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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