Ex Parte Loescher et al

Patent Trial and Appeal BoardAug 25, 2017

13714657 (P.T.A.B. Aug. 25, 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. 13/714,657 12/14/2012 Claus W. Loescher 68265US004 4566 32692 7590 08/29/2017 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER KOKKINOS, NICHOLAS C ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 08/29/2017 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CLAUS W. LOESCHER, VIKTOR DANNEWITZ, KIRSTIN KRYBUS, and DIRK KOLOWROT 1 Appeal 2015-007449 Application 13/714,657 Technology Center 1700 Before CHUNG K. PAK, LINDA M. GAUDETTE, and MONTE T. SQUIRE, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2 rejecting claims 1-14. Claims 15-28, the other claims pending in the above-identified application, were withdrawn from consideration by the Examiner pursuant to 37 C.F.R. § 1.142(b) as being 1 Appellants identify the real party in interest as “3M Company (formerly known as Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and its affiliate 3M Innovative Properties Company of St. Paul, Minnesota.” Appeal Brief filed December 15, 2014 (“App. Br.”) 2. 2 Final Action entered June 3, 2014 (“Final Act.”) 1-13; Advisory Action entered August 26, 2014 (“Advisory Act.”) 1—4; and the Examiner’s Answer entered July 23, 2015 (“Ans.”) 2-9. Appeal 2015-007449 Application 13/714,657 drawn to a non-elected invention.3 We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we REVERSE and enter new grounds of rejection against claims 1-14 pursuant to 37 C.F.R. § 41.50(b). STATEMENT OF THE CASE The subject matter of the claims on appeal relates to “an adhesive film based on polyvinyl chloride (PVC)” which may be used in applying “a graphic to a substrate such as a building or a vehicle[.]” Spec.4 1,11. 4-6. This adhesive film includes a polyvinylchloride film, an adhesive layer protected by a release liner, and a primer layer comprising an aminoplast and a polyester and/or a curing product thereof between the polyvinylchloride film and the adhesive layer. Spec. 3,11. 1-8. “The polyvinyl chloride film is typically a plasticized PVC” which “may be clear transparent or may be colored.” Spec. 13,11. 9-10. “In general[,] the adhesive used in the adhesive layer is not particularly restricted.” Spec. 18,1. 1. “In a particular embodiment, the adhesive layer comprises a pressure sensitive adhesive (PSA).” Spec. 18,11. 4-5. “In a particular embodiment, the adhesive layer . . . is a topologically structured adhesive layer or an adhesive layer having at least one micro structured surface” to provide “a network of channels between the substrate surface on which the adhesive film is being applied and the adhesive layer[,]” which “allows air to escape from beneath the 3 Non-Final Action entered September 9, 2013 (“Non-Final Act.”) 1-3. 4 Our reference to Appellants’ Specification is to the Specification filed December 14, 2013 (“Spec.”). 2 Appeal 2015-007449 Application 13/714,657 multi-layer sheet material and the surface substrate during application.” Spec. 19,11. 13-18. Details of the appealed subject matter are recited in representative claim l,5 which is reproduced below from the Claims Appendix of the Appeal Brief (with disputed limitations italicized): 1. An adhesive film comprising: a polyvinyl chloride film having opposite first and second major sides when in a flat position, the first major side having an adhesive layer protected by a release liner and a primer layer arranged between the polyvinyl chloride film and the adhesive layer, the primer layer comprising an aminoplast and a polyester and/or a curing product thereof, and the adhesive layer being at least one of topologically structured or having at least one microstructured surface. App. Br. 10, Claims Appendix. The Examiner maintains, and Appellants seek review of, the following grounds6 of rejection: 1. Claims 1-6, 10, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Sangani (US 5,612,107 issued March 18, 1997), LaRose (US 5,954,907 issued September 21, 1999), and Sher (US 6,197,397 B1 issued March 6, 2001); 2. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Sangani, LaRose, Sher, and Dorffel (US 4,101,496 issued July 18, 1978); and 5 Appellants only argue claim 1, the broadest claim on appeal. App. Br. 7- 14. Thus, we limit our discussion to claim 1 pursuant to 37 C.F.R. § 41.37(c)(l)(iv) (2013). 6 The Examiner withdrew the rejection of claims 1-14 under 35 U.S.C. §112, first paragraph, set forth in the Final Action. Advisory Act. 2; Ans. 3. 3 Appeal 2015-007449 Application 13/714,657 3. Claims 8, 9, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Sangani, LaRose, Sher, and Hanson (2003/0035972 A1 published February 20, 2003). Final Act. 2-13; Advisory Act. 1—4; Ans. 2-9; App. Br. 4. DISCUSSION Examiner’s § 103(a) Rejections Upon consideration of the evidence relied upon by the Examiner in light of each of Appellants’ contentions, we find reversible error in the Examiner’s decision rejecting claims 1-14 under 35 U.S.C. § 103(a).7 Although the aminoplast and polyester taught by Sangani are useful as plasticizer-resistant layer ingredients, the Examiner has not sufficiently shown that they are also useful as primer ingredients, i.e., the ingredients of the known primer taught by LaRose, as required by claim 1. Accordingly, on this record, we reverse the Examiner’s § 103(a) rejections of the above claims for at least one of the reasons set forth at pages 5-7 of the Appeal Brief. New Grounds of Rejection Pursuant to 37 C.F.R. § 41.50(b), we enter the following new grounds of rejection: 1. Claims 1-7, 10, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Sangani, LaRose, Dorffel, 7 To prevail in an appeal to this Board, an appellant must adequately explain or identify reversible error in the examiner’s rejection(s). See 37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011). 4 Appeal 2015-007449 Application 13/714,657 Sher, and optionally Jackson (US 5,489,448 issued February 6, 1996) and/or Simon (US 4,187,258 issued February 5, 1980); and 2. Claims 8, 9, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Sangani, LaRose, Dorffel, Sher, optionally Jackson and/or Simon, and Hanson. Ground 1: Claims 1-7, 10, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Sangani, LaRose, Dorffel, Sher, and optionally Jackson and/or Simon There is no dispute that Sangani teaches an adhesive film comprising a plasticized polymer film, such as a plasticized polyvinyl chloride film, having first and second major sides, a release-coated liner, a pressure sensitive adhesive layer between the plasticized polymer film and the release-coated liner, and a plasticizer-resistant polymer backcoating containing an aminoplast and a polyester for blocking plasticizer migration on the other uncoated surface of the release-coated liner or on the other uncoated surface of the plasticized polymer film. Compare Final Act. 4-5, with App. Br. 5-6; see also Sangani, col. 3,11. 5-54, col. 11.11. 4-35, col. 15,11. 6-16, and col. 18,1. 63-col. 20,1. 14 and Figs. 2 and 3. Nor is there any dispute that Sangani teaches that its adhesive film may employ a colored (pigmented or dyed) plasticized polyvinyl chloride film having a thickness of about 1 mil to about 3 mils within the recited range of 25 to 100 micrometers and has a thickness of more than 10 microns, as required by claims 2, 3, 9, and 10. Compare Final Act. 7-8, with App. Br. 5-8; see also Sangani, col. 4,11. 11-26 and col. 18.11. 52-62. Sangani’s adhesive film is said to have a variety of applications. Sangani, col. 1,11. 15-17. As acknowledged by the Examiner, Sangani does not disclose using a primer layer comprising an aminoplast and a polyester and/or a curing 5 Appeal 2015-007449 Application 13/714,657 product thereof between the plasticized polymer film (plasticized polyvinyl chloride) and the pressure sensitive adhesive layer, as required by claims 1 and 4-8. Final Act. 5. However, LaRose teaches using a primer layer between second substrate 208 made of a polymer film, such as a polyvinyl chloride film, and pressure sensitive layer 206 of an adhesive film similar to that disclosed by Sangani, i.e., an adhesive film comprising second substrate 208 (polyvinyl chloride film), pressure sensitive layer 206, release coating layer 204 and first substrate 202 in sequence. LaRose, col. 9,11. 15-18 and col. 10.1. 61-col. 11,1. 18. LaRose teaches that “[t]he primer layer could be used to increase facestock opacity, improve adhesive anchorage, prevent adhesive bleed or block plasticizer migration” and that “[t]he use of. . . primers and top coatings are well known in the art and need not be described further herein.” LaRose, col. 11,11. 19-21 and 11. 28-30. Although LaRose does not specifically mention the ingredients of these known primers, Dorffel teaches a binder for a liquid coating, which comprises 55-95% by weight of a polyester and 45-10% by weight of an aminoplast curing agent, which encompass the polyester/aminoplast ratios recited in claim 7. Dorffel, col. 2,11. 47-55, col. 6,11. 23-30, col. 7,11. 35- 62. Dorffel teaches that this coating composition containing a polyester and an aminoplast curing agent in the ratios recited in claim 7 can be used in the manufacture of primer coats, e.g., with a binder/pigment-weight ratio of 1:2. Dorffel, col. 7,11. 30-34.8 This binder, according to Dorffel, is useable 8 In the Final Action and the Answer, the Examiner does not recognize that Dorffel, at col. 7,11. 30-34, teaches that its coating composition containing a polyester and an aminoplast curing agent is useful in manufacturing primer coats. Final Act. 2-13; Advisory Act. 1—4; and Ans. 2-9. 6 Appeal 2015-007449 Application 13/714,657 with little or no solvent and can produce a film having excellent hardness, good elasticity, highly receptive to pigments, excellent resistance against yellowing, stability under baking conditions, high adhesion, excellent corrosion-protection effect, and weathering stability. Dorffel, col. 2,11. 35- 43, col. 8,11. 35^13. Consistent with the teachings of Dorffel, Jackson also teaches that a primer coating employing a polyester as a binder and an aminoplast as a preferred curing agent was known in the art. Jackson col. 3,11. 14-16. The aminoplast may be selected from “the reaction products of aldehydes, particularly formaldehyde, with amino-or amido-group carrying substances exemplified by melamine.... [, which may be] “modified with alkanols having from one to four carbon atoms[.]” Compare Jackson col. 3,11. 16-22 above with claims 4 and 5 and Spec. 16,11. 27-28.9 According to column 3, line 66 to column 4, line 10, of Jackson, [w]hen the substrate is a plastic, a solvent-borne primer composition suitably contains conductive pigments to facilitate the electrostatic spraying of the primer and subsequent coating thereon, but other, non-conductive, pigments are also contemplated for use when the substrate is a metal or another application method is desired. Adhesion of the primer to the substrate and adhesion of a topcoat to the primer are both excellent. The weatherability of the primer film is good as shown by ASTM 2247 test results wherein the primed substrate is subjected to 100% relative humidity at 100°F for 240 hours or more and by exposure of printed panels in Florida for 12 months. 9 According to page 17, lines 1-5, of the Specification, the aminoplast curing agent recited in claims 4 and 5 were commercially available at the time of the invention. 7 Appeal 2015-007449 Application 13/714,657 Simon, like Jackson, also teaches that a primer coating includes a saturated resin, such as a saturated polyester or a saturated polyurethane, and an aminoplast curing agent, such as a melamine-formaldehyde resin, which is said to provide extremely good adhesion even with little or no pigment, although the pigmentation is desirable. Simon, col. 2,11. 33-57 and col. 3, 11. 52-58. In addition to the above advantages of using a polyester and an aminoplast curing agent as a binder of a primer coating, as taught by Dorffel, Jackson, and Simon, Sangani teaches another advantage of preventing plasticizer migration via using a polyester (including the polyester combined with polyurethanes) and an aminoplast curing agent, such as alkylated melamine formaldehyde resin in the primer coating suggested by LaRose, Dorffel, and optionally Jackson and/or Simon. Final Act. 7-8; see also Sangani, col. 11.11. 4-35, col. 13,11. 16-22, col. 14,11. 19-32 and 57-67, and col. 15,11. 9^12. Given the above teachings, we determine that one of ordinary skill in the art would have been led to employ a primer coating containing a polyester, including a polyester having urethane groups, and an aminoplast curing agent, such as an alkylated or butylated melamine formaldehyde resin, as suggested by Sangani, LaRose, Dorfell, and optionally Jackson and/or Simon, between the plasticized polymer film, such as the plasticized polyvinyl chloride film, and the pressure sensitive adhesive layer of the adhesive film taught by Sangani, with a reasonable expectation of successfully obtaining the advantages taught by LaRose, Dorffel, Sangani, and optionally Jackson and/or Simon. In terms of forming at least one of a topologically structured or microstructured surface on a pressure sensitive adhesive layer as required by 8 Appeal 2015-007449 Application 13/714,657 claim 1 and forming a compatible pattern, including interconnected ridges, on the surface of a release liner coating as required by claims 13 and 14, Sher teaches the advantages of using such surfaces on a pressure sensitive layer and a release liner coating. Final Act. 8-9; Sher, col. 3, 25-46, col. 4, 1. 38-col. 5,1. 37, col. 5,11. 54-67, col. 6,11. 33-39, col. 7,11. 4-11, col. 7,1. 64-col. 8,1. 21, col. 9,11. 10-24. Sher, for example, discloses (col. 6,11. 33- 39) that the topography of the tool(s) is an obverse image of the final topography of the microreplicated adhesive, with the [release] liner 20 serving as the inverse image for transferring the image tool(s) to the microreplicated adhesive. Therefore, the topography(ies) of the embossing tool(s) for [release] liner 20 is essentially the topography of the microreplicated adhesive. Sher also discloses that “FIG. 1 shows pattern 24 comprising both relatively planar lands 27, i.e., large squares that have been depressed from the initial surface 22 of liner 20 and a series of ridges 28 [having an average height of about 3 to 45 micrometers, preferably 5 to 30 micrometers] formed from the material moved from the lands 27 during the embossing process.” Sher, col. 5,11. 54-67 and col. 7,11. 4-11; see also Sher col. 7,1. 64-col. 8,1. 21 and Final Act. 8-9. Sher further discloses (col. 3,11. 33^10) that: One aspect of the present invention provides a means of controlling the topography of an adhesive surface, comprising contacting a microembossed pattern to a layer of adhesive and forming a microreplicated surface, such that when an adhesion interface is established between the layer of adhesive and a supporting substrate, the topography of the adhesive surface controls the performance of the adhesion interface between that adhesive and the supporting substrate. 9 Appeal 2015-007449 Application 13/714,657 According to column 5, lines 13-37, of Sher, various advantages, including “the ability of the adhesive surface(s) to exhaust fluids such as gases, entrapped air, plasticizers, or moisture from the plane of the adhesive surface independent of specialized compositions or formulations of the adhesive [,]” can be obtained by providing the recited pattern to the surfaces of the pressure-sensitive adhesive layer. Thus, notwithstanding Appellants’ arguments to the contrary, we concur with the Examiner that one of ordinary skill in the art would have been led to provide the recited surface features for the release liner coating and the pressure sensitive adhesive layer of the adhesive filing taught by Sangani, with a reasonable expectation of successfully obtaining the advantages taught by Sher, including releasing or exhausting gases and entrapped air, when used in graphical applications. Ground 2: Claims 8, 9, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Sangani, LaRose, Dorffel, Sher, optionally Jackson and/or Simon, and Hanson The disclosures of Sangani, LaRose, Dorffel, Sher and optionally Jackson and/or Simon are discussed above. To the extent that they may not disclose the features recited in claims 8, 9, 11, and 12, the Examiner finds, and Appellants do not dispute, that Hanson discloses such features in the context of an optical multilayer adhesive film. Compare Final Act. 10-13, with App. Br. 9. Nor do Appellants dispute the Examiner’s determination that one of ordinary skill in the art would have been led to use such recited features taught by Hanson in the adhesive film suggested by Sangani and LaRose. Compare Final Act. 10-13, with App. Br. 9. Accordingly, based on the same reasons set forth by the Examiner in the Final Action, we determine that one of ordinary skill in the art would 10 Appeal 2015-007449 Application 13/714,657 have been led to employ the features recited in claims 8, 9, 11, and 12 per the teachings of Hanson in the adhesive film suggested by Sangani, LaRose, Dorffel, Sher, and optionally Jackson and/or Simon within the meaning of 35 U.S.C. § 103(a). CONCLUSION For the reasons discussed above, we reverse the Examiner’s rejection of claims 1-14 under 35 U.S.C. § 103(a) and enter new grounds of rejection against claims 1-14 under 35 U.S.C. § 103(a). This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “new ground[s] of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 11 Appeal 2015-007449 Application 13/714,657 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)(iv). REVERSED 37 C.F.R. $ 41.50(b) 12 Application/Control No. Applicant(s)/Patent Under Patent Notice of References Cited 13/714,657 Appeal No. 2015-007449 Administrative Patent Judge 1 Chung K. Pak Art Unit Page 1 of 1 1700 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification A US 5,489,448 02/1996 Jackson B US 4,187,258 02/1980 Simon C US- D US- E US- F US- G US- H US- 1 US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U V w X *A copy of this reference is being furnished with the associated Board decision from this appeal.. Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.