Ex Parte Mayville et al

Patent Trial and Appeal Board

Mar 14, 2013

11106082 (P.T.A.B. Mar. 14, 2013)

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.
11/106,082 04/14/2005 Christian G. Mayville GIPH 0109 PUSP 4395
22045 7590 03/14/2013
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
03/14/2013 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 CHRISTIAN G. MAYVILLE,
Christopher j. Wawsczyk, and Jeffrey s. Hutchison
________________

Appeal 2011-0093861
Application 11/106,082
Technology Center 1700
________________

Before CATHERINE Q. TIMM, MARK NAGUMO, and
CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

1 See also Appeal 2011-007016 in application 11/105,901, decided
concurrently due to the similar subject matter and large overlap of argument
in the two appeals.
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Application 11/106,082

2
A. Introduction2
Christian G. Mayville, Christopher J. Wawsczyk, and Jeffrey S.
Hutchison (“Mayville”) timely appeal under 35 U.S.C. § 134(a) from the
final rejection3 of claims 1-10, 31, 32 and 34.4 We have jurisdiction.
35 U.S.C. § 6. We AFFIRM.
According to the 082 Specification, the subject matter on appeal
relates to “a multilayer film having at least one pigmented layer that can be
integrated into or onto the surface of desired substrate article to produce a
substantially uniform, aesthetically pleasing outer surface.”
(Spec. 2 [0006].) The films are described further as being composed of
“extrudable thermoplastic material” and to be “characterized by essentially
uniform polymerization characteristics throughout the layer.”
(Id. at [0007].) The 082 Specification teaches that the disclosed multilayer
films “can be made using a suitable polymeric coextrusion process”
(Id. at 4 [0018].) It is thought that the causes of the uniform polymerization
characteristics include the absence of gel formation in the polymeric
material due to crosslinking within the polymeric matrix and between the

2 Application 11/106,082, Polymeric article having a multilayer film
including at least one pigmented layer, method of making the same, and
pigment additive package and composition suitable for use therein,
filed 14 April 2005, claiming the benefit of a provisional application
filed 14 April 2004. The specification is referred to as the
“082 Specification,” and is cited as “Spec.” The real party in interest is
listed as NJT Enterprises, LLC (Appeal Brief, filed 23 July 2010 (“Br.”), 1.)
3 Office action mailed 17 March 2010 (“Final Rejection”; cited as “FR”).
4 Remaining copending claims 11-29 have been withdrawn from
consideration. (FR 1; Br. 2.)
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Application 11/106,082

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matrix and materials such as metallic pigments. (Id. at 16 [0054].)
The 082 Specification defines the term “essentially uniform polymerization”
as “positioning of the thermoplastic polymeric material in the film layer
without undue evidence of atypical polymeric cross-linking either
spontaneous or metallic particulate focused.” (Id. at 17 [0058].) According
to the disclosure, “[t]ypically gel formation results in gel regions present in
the polymeric layer that are widely distributed and have sizes less than 200
microns. Occurrences less than 40 per square inch in the produced film are
contemplated.” (Id.) Suitable substrate articles are said to include bumpers,
automotive fascia, and body panels for interior and exterior use.
(Id. at 4 [0019].)
Claim 1, the sole independent claim on appeal, is representative and
reads:
A multilayer film comprising:
a clear coat layer having
at least one extruded optically transmissive
thermoplastic polymer; and
a pigment layer having
at least one extruded thermoplastic material and
at least one particulate pigment interposed within the
thermoplastic material,
there being less than 40 cross-link gels per square inch
of the multilayer film.
(Br., Claims App. 1; indentation, paragraphing, and emphasis added.)
Claim 2 depends from claim 1 and further requires that the
thermoplastic polymer and the thermoplastic material be selected from the
group consisting of ionomers and ionomeric precursors. (Id.)
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Claims 31 and 32 depend from claim 1 and require that the cross-
linking gels be less than 500 microns and less than 200 microns in size,
respectively. (Id. at 5.)
Claim 34 depends from claim 1 and requires that the thermoplastic
material be such that “the pigment layer has minimal perceptible clumping
or agglomeration of the particulate pigment.” (Id. at 6.)
The Examiner maintains the following grounds of rejection:5
A. Claims 1-10,6 31-32, and 34 stand rejected under
35 U.S.C. § 103(a) in view of the teachings of Heuwinkel.7
B. Claims 1-10, 31-32, and 34 stand rejected under
35 U.S.C. § 103(a) in view of the teachings of Mientus.8
C. Claims 1-7, 31-32, and 34 stand rejected under Obviousness-
type double patenting in view of claims [18-36] of 11/106,210,
now claims 1-12 of U.S. Patent 8,252,424,
issued 28 August 2012, to Wawsczyk (“Wawsczyk”).

5 Examiner’s Answer mailed 2 March 2011 (“Ans.”).
6 The Final Rejection includes an explanation of why claims 8-10 are not
patentable over Heuwinkel (FR 4, 2d para.), although the statement of the
rejection omits claims 8-10 (id. at 2). The Answer includes those claims in
the statement of the rejection (Ans. 4) and explains that the absence in the
Final Rejection was an oversight (id. at 7, lst para.) Appellants have been
notified of the rejection and have had the opportunity to respond. Because
Mayville does not raise arguments for the separate patentability of
claims 8-10, we need not pursue the issue further.
7 Heike Heuwinkel et al., Aqueous Coating Media and Their Use in Single-
Layer and Multi-Layer Coating Processes, U.S. Patent 5,886,085 (1999).
8 Bernard S. Mientus et al., Method of Manufacturing a High DOI/High
Gloss Multifunctional Thermoplastic Film, U.S. Patent 6,403,005 B1 (2002).
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Application 11/106,082

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B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The critical issue in this case concerns the patentable weight to be
given to the term “extruded” in claim 1. Mayville presents separate
arguments for certain claims rejected in view of Heuwinkel, which we
address infra. Otherwise, all claims stand or fall with claim 1.
Heuwinkel
The Examiner finds that Heuwinkel discloses multilayer coatings
comprising a clear lacquer coating over reflective aluminum platelets
uniformly dispersed in a paste resin coating having no flocculation or
settling of pigments, which the Examiner further finds meets the less
than 40 cross-link gels per square inch limitation. (Ans. 4.)
Mayville argues that Heuwinkel is directed to liquid paint
compositions that are entirely distinct from the solid extruded compositions
covered by the appealed claims. (Br. 7.) In particular, Mayville argues that
whereas “a liquid can be rendered homogenous simply by mixing,” “mixing
does not necessarily ensure homogenous distribution of particles in a solid
composition.” (Id. at 3rd full para.) In Mayville’s view, because Heuwinkel
does not mention extruded thermoplastic materials and does not recognize
the problem solved by Appellants, Heuwinkel cannot suggest the [claimed]
solution. (Id. at 8, ll. 1-3.)
Mayville argues that “[a]s is well known in the art that properties of
extruded films are completely different from films formed by evaporation of
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resins from a dispersion, such as the water-thinnable resins of Heuwinkel.”
(Br. 6, ll. 12-14.) Mayville has not, however, directed our attention to any
credible evidence of record as to what those differences might be.
Moreover, although the 082 Specification refers to prior art difficulties in
producing multilayer pigmented films (e.g., Spec. 1-2, [0005]), it does not
appear to disclose differences between extruded films and films made by
other processes.
It is well settled that “when the prior art discloses a product which
reasonably appears to be either identical with or only slightly different than a
product claimed in a product-by-process claim, a rejection based
alternatively on either section 102 or section 103 of the statute is eminently
fair and acceptable.” In re Brown, 459 F.2d 531, 535 (CCPA (1972). “As a
practical matter,” the court explained, “the Patent Office is not equipped to
manufacture products by the myriad of processes put before it and then
obtain prior art products and make physical comparisons therewith.” Id.
In the present case, the reported absence of flocculation of pigments
or precipitation of binder vehicles (Heuwinkel col. 9, ll. 36-37), together
with the disclosure that the multi-layer coatings have “[v]ery good visual
properties” (Heuwinkel col. 10, l. 33), support the Examiner’s determination
that the limitation “less than 40 areas of agglomeration” is met. The burden
is thus shifted fairly to Mayville to come forward with evidence and
argument demonstrating reason to doubt the disclosure of Heuwinkel and the
Examiner’s interpretation in this obviousness rejection. Mayville, however,
has not come forward with such evidence. We conclude that harmful error
has not been established in the Examiner’s reliance, in part, on the
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disclosures regarding the stability of the liquid compositions described by
Heuwinkel.
Mayville’s repeated protests that various portions of Heuwinkel cited
by the Examiner do “not disclose in any way the above-mentioned feature of
claim 1” (Br. 8, ll. 8-9, 16-17, 20-21) are not persuasive for lack of evidence
supporting the statement. The absence of supporting evidence vitiates the
arguments and amplifies the ambiguity of the identity of the “above-
mentioned feature.”
Mayville argues that claim 2 is separately patentable because
“Heuwinkel does not disclose ionomers or ionomeric precursors as recited in
claim 2.” (Br. 9, last para.) Mayville’s arguments focus on the identity of
ionomers. (Id. at para. bridging 9-10; Reply at 2, last para.)
The Examiner, however, identifies “ethylene/methacrylic copolymers
such as polymethacrylic acid” disclosed by Heuwinkel as corresponding to
the ionomer precursors recited in claim 2. (FR 3, ll. 19-20 and at 7, ll. 1-3;
Ans. 9, last para; see also Ans. 4, last para.) Mayville does not dispute this
finding with any reasonable specificity.
The 082 Specification defines the term “ionomeric precursors” as
meaning “homopolymers, acid co-polymers, monomeric compounds, and
various constituents used to prepare ionomeric materials.” (Spec. 9 [0031].)
Particularly in view of the breadth of Mayville’s definition of
“ionomeric precursors,” we are not persuaded that Mayville has shown
harmful error in the Examiner’s finding that Heuwinkel describes or
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Application 11/106,082

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suggests ionomeric precursors as thermoplastic polymers or materials
required by claim 2.
Regarding claims 31 and 32, Mayville argues that Heuwinkel “fails to
teach or suggest any multilayer film having a particular gel size or any
related process to effectuate the control of gel sizes during extrusion
formation of pigmented multilayer film.” (Br. 11, last para.)
Mayville’s arguments continue to focus on extrusion, a focus that is,
as discussed supra, unsupported by probative evidence of record. Notably,
Mayville has not shown any basis to doubt the Examiner’s finding that the
clear coatings and absence of clumping in the pigment layers disclosed by
Heuwinkel indicate that fewer than 40 crosslink gels greater in size than the
500 microns or 200 microns recited in claims 31 and 32, respectively, are
present.
Similarly, regarding claim 34, Mayville appears to focus on the
extrusion-process aspects of the claimed multilayer film. Mayville does not
come forward with evidence and argument demonstrating that the dispersion
having a pigment particle size of less than 10 microns cited by the
Examiner9 does not provide a multilayer film having the “minimally
perceptible clumping or agglomeration of the particulate pigment” required
by claim 34. The weight of the cited evidence of record favors the
Examiner’s conclusions.

9 See FR 4, last two lines, and Ans. 5, last two lines, both citing Heuwinkel
[Production] Example 12.
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Application 11/106,082

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We conclude that harmful error has not been demonstrated in the
rejections based on Heuwinkel.
Mientus
Mayville argues that Mientus discloses multilayer films in which any
gels that may have formed are pushed from the surface into the interior of
the film. (Br. 13, last para., citing Mientus col. 3, ll. 63-66.) Thus, in
Mayville’s view, Mientus does not teach or suggest the uniform
polymerization throughout the pigmented layer and the clear coat layer of
the multilayer film. (Id. at 14.)
The Examiner finds that “[b]ecause the pigment is extruded it is
uniform” (Ans. 6, l. 10), and reasons that “size is not a matter of invention,”
deeming the size recitation to be “matters of choice involving differences in
degree and or size and are not patentable distinctions” (id. at ll. 15-16, citing
case law). The Examiner cites no credible evidence of record to support
either conclusion.
The evidence of record, taken at face value (as well as based on
“common sense”), indicates that uniformity upon extrusion, whether of the
distribution of a pigment in a polymer matrix or the size of irregularities
(“gels”) in the extruded polymer, likely depends strongly on the materials
being extruded and the conditions of extrusion. The Examiner has not come
forward with any credible evidence that extrusion, per se, guarantees
uniformity. To the extent the Examiner means to argue that the conditions
of extrusion described by Mientus result in “uniform polymerization”
(i.e., the absence of gels of a certain size) throughout the extruded layer, the
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passage cited by Mayville, supra, is direct evidence to the contrary. Finally,
as Mayville explains thoroughly (Br. 6), the case-law cited by the Examiner
involves scalable machinery. Again, the Examiner has not cited any credible
evidence of record supporting the conclusion that size of gels or pigment
agglomerations are “matters of choice” in the arts relevant to the claimed
invention. As our reviewing court has explained, “[p]recedent cannot
establish facts.” Case v. CPC Int’l, Inc., 730 F.2d 745, 750 (Fed. Cir. 1984).
Obviousness type Double Patenting
US Patent Application 11/106,210 issued as U.S.
Patent 8,252,424 B2, to Wawsczyk et al., on 28 August 2012 (“Wawsczyk”).
Claim 18 of the ‘210 application is identical to claim 1 of the ‘424 patent,
which reads as follows:
A multilayer film comprising:
a clear coat layer comprising at least one extruded
optically transmissive thermoplastic polymer; and
a pigment layer comprising
at least one extruded thermoplastic material and
at least one particulate pigment interposed within
the thermoplastic material,
wherein the extruded thermoplastic is uniform in
polymerization;
wherein the clear coat layer and the pigment layer are
essentially free of iron-induced imperfections
including iron/ionomer complexes and are free of
polymeric regions having trace quantities of iron
as the foci of the regions and having thermosetting
or quasi-thermosetting characteristics.
(Wawsczyk col. 14, ll. 42-55; indentation and emphasis added.)
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The first two conditions of appealed claim 1 are identical to the first two
conditions of Wawsczyk, claim 1. Wawsczyk states that “[t]he resulting
article has a suitably colored surface that exhibits essentially uniform
polymerization throughout the film and minimal defects such as
discoloration or ambering and gel formation.” (Wawsczyk col. 2, ll. 13-16;
emphasis added), but does not appear to otherwise define or limit the term
“uniform in polymerization.”
According to the 082 Specification, “[a]s used herein, the term
‘essentially uniform polymerization’ is defined as positioning of the
thermoplastic polymeric material in the film layer without undue evidence of
atypical polymeric cross-linking either spontaneous or metallic particulate
focused.” (Spec. 17 [0058].)
Wawsczyk’s claims cover a subset of the multilayer films covered by
the present claims. Mayville’s argument amounts to a rehearsal of the
different recitations in the claims, but does not explain why the appealed
claims are patentable over the already patented claims.
We therefore affirm the obviousness-type double patenting rejection.
C. Order
We AFFIRM the rejection of claims 1-10, 31-32, and 34 under
35 U.S.C. § 103(a) in view of the teachings of Heuwinkel.
We REVERSE the rejection of claims 1-10, 31-32, and 34 under
35 U.S.C. § 103(a) in view of the teachings of Mientus.
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We AFFIRM the rejection of claims 1-7, 31-32, and 34 under
Obviousness-type double patenting in view of claims 1-12 of Wawsczyk.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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