Ex Parte Nishizawa et alDownload PDFPatent Trial and Appeal BoardDec 19, 201611630616 (P.T.A.B. Dec. 19, 2016) Copy Citation 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. 11/630,616 12/22/2006 Takatoshi Nishizawa 12844.103USWO 1993 52835 7590 12/21/2016 HAMRE, SCHUMANN, MUELLER & LARSON, P.C. 45 South Seventh Street Suite 2700 MINNEAPOLIS, MN 55402-1683 EXAMINER DUCHENEAUX, FRANK D ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 12/21/2016 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): PTOMail @hsml. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKATOSHINISHIZAWA1 and Yasuo Iwasa Appeal 2015-0009282 Application 11/630,616 Technology Center 1700 Before PETER F. KRATZ, MARK NAGUMO, and JAMES C. HOUSEL, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Takatoshi Nishizawa and Yasuo Iwasa (“Nishizawa”) timely appeal under 35 U.S.C. § 134(a) from a non-final rejection3 of claims 23, 25—27, 29-37, and 39-48.4’5 We have jurisdiction. 35 U.S.C. § 6. We reverse. 1 The real party in interest is identified as Yupo Corporation. (Appeal Brief, filed 15 July2014 (“Br”), 2.) 2 Heard 12 December 2016. The Official Transcript, which was not available when this Opinion was entered, will be made of record. 3 Office action mailed 28 February 2014 (cited as “OA”). 4 Remaining copending claims 49—51 have been withdrawn from consideration by the Examiner (OA 1, § 5a), and are not before us. Appeal 2015-000928 Application 11/630,616 OPINION A. Introduction5 6 The subject matter on appeal relates to in-mold labels that contain an IC chip and antenna (“IC module”) for data sending, receiving, reading, and writing. (Spec. 1 [0001].) Such labels are said to provide the advantages of smart labels to in-mold formed labels, resulting in enhanced security against disguise and alteration arising from label replacement. {Id. at 3 [0003].) The inventive label has a first thermoplastic resin layer that has a layer with voids to provide thermal insulation, and a heat-sealable layer that can be sealed to a thermoplastic substrate such as a container, and a second thermoplastic resin layer having surface that is suitable for printing. The IC module is held between the two thermoplastic resin layers in an adhesive layer that “obtains adhesiveness” by curing the adhesive by exposure to ultraviolet light or an electron beam in situ, i.e., “while the adhesive layer contacts the first thermoplastic resin film and the second thermoplastic resin film.” Sole independent claim 23 is representative and reads: A label for in-mold forming, comprising: a first thermoplastic resin film having a heat-sealable layer, a second thermoplastic resin film that is printable; 5 A Request for Continued Examination (37 C.F.R. § 1.114) was filed 24 April 2013. 6 Application 11/630,616, Label for in-mold forming, filed 22 December 2006, as the national stage under 35 U.S.C. § 371 of PCT/JP05/11981, filed 29 June 2005, claiming the benefit of an application filed 30 June 2004 in Japan. We refer to the “’616 Specification,” which we cite as “Spec.” 2 Appeal 2015-000928 Application 11/630,616 an adhesive layer comprising at least one adhesive selected from the group consisting of an ultraviolet-curing adhesive and an electron-beam-curing adhesive; and an antenna and an IC chip for data sending/receiving, the antenna and the IC chip being interposed between the first thermoplastic resin film and the second thermoplastic resin film, wherein the adhesive layer is formed between the first thermoplastic resin film and the second thermoplastic resin film, wherein the adhesive layer obtains adhesiveness that bonds the first thermoplastic resin film and the second thermoplastic resin film together, by curing the at least one adhesive selected from the group consisting of the ultraviolet-curing adhesive and the electron-beam-curing adhesive in the adhesive layer with ultraviolet light or with an electron beam, respectively, while the adhesive layer contacts the first thermoplastic resin film and the second thermoplastic resin film, wherein the first thermoplastic resin film has a film layer having voids therein, porosity of the first thermoplastic resin film as determined using a following equation is 1—60%, and the thermal conductivity of the first thermoplastic resin film is 0.05 to 0.15 W/m-K: Porosity (%) = [(p0 — p)/p0] x 100, wherein pO is a true density of the first thermoplastic resin film, and p is a density of the first thermoplastic resin film, and wherein the heat-sealable layer comprises a heat-sealable resin comprising an ethylene resin having a melting point of 50-130°C. (Claims App., Br. 10; some indentation, paragraphing, and emphasis added.) 3 Appeal 2015-000928 Application 11/630,616 The Examiner maintains the following grounds of rejection7: A. Claims 23, 25—27, 29-31, 33—37, and 39-48 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Takahashi,8 Skoultchi,9 and Savagian.10 A1. Claim 32 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Takahashi, Skoultchi, Savagian, and Funato.* 11 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Nishizawa directs its arguments for patentability primarily to limitations found in claim 23. Accordingly, we focus on that claim. Nishizawa urges first that the Examiner erred harmfully in finding that Skoultchi discloses ultraviolet-curing adhesives within the scope of claim 23, i.e., an “adhesive layer [that] obtains adhesiveness that bonds the 7 Examiner’s Answer mailed 29 August 2014 (“Ans.”). 8 Tomotsugu Takahashi and Tamio Shikano, Tag and label comprising same, U.S. Patent No. 6,562,454 B2 (13 May 2003) (assigned to Yupo Corp., the real-party-in-interest in this appeal). 9 Martin M. Skoultchi and Irwin J. Davis, Crosslinkedpressure sensitive adhesive compositions, U.S. Patent No. 4,069,123 (1978). 10 Michael D. Savagian and Steven H. Mess, In-mold radio frequency identification device label, U.S. Patent Application Publication 2004/0094949 A1 (20 May 2004), based on an application filed 14 November 2002. 11 Takashi Funato et al., In-mold label with separable part, U.S. Patent Application Publication 2005/0191449 Al (1 September 2005), based on an PCT application filed 21 November 2003 (assigned to Yupo Corp.; Takatoshi Nishizawa is named as a co-inventor) 4 Appeal 2015-000928 Application 11/630,616 first thermoplastic resin film and the second thermoplastic resin film together, by curing the . . . adhesive . . . while the adhesive layer contacts the first thermoplastic resin film and the second thermoplastic resin film.” Rather, according to Nishizawa, Skoultchi describes pressure sensitive adhesives that are already adhesive, that have enhanced cohesion properties induced by cross-linking upon exposure to ultraviolet light. (Br. 4—5.) Descriptions of adhesives in the ’616 Specification support Nishizawa’s arguments. The Specification describes several “types” of adhesives, namely pressure sensitive adhesives (Spec. 39 [0051]—41 [0052], curing type resin adhesives {id. at 41 [0053]—42), ultraviolet-curing type adhesive {id. at 42 [0054] 43), and electron-beam-curing type adhesives {id. at 43 [0055]^44). While these types are not necessarily exclusive, the descriptions make clear that the primary distinction among the types is the way in which the adhesive layers become adhesive. In particular, the Specification teaches that: an ultraviolet-curing type adhesive is used as the adhesive layer (3) to bond the film (1) to the film (2) while irradiating the adhesive with ultraviolet, then tenacious adhesion can be obtained in a short processing time and positional shifting does not occur between the film (1) and the film (2) after the curing. (Spec. 16—17 [0023]; emphasis added.) The Specification teaches further that “[t]he ultraviolet-curing type adhesive usable as the adhesive layer (3) generally is an adhesive that reacts and cures upon irradiation with ultraviolet radiation. . . . [T]he time period required for curing after ultraviolet irradiation is short. Once this adhesive cures, an exceedingly high adhesion strength can be obtained.” {Id. at 42-43 [0054].) 5 Appeal 2015-000928 Application 11/630,616 In contrast, a pressure-sensitive adhesive is tacky upon application to one or both substrates, and bonding is achieved on contact, with application of pressure, as is familiar to users of masking tape or rubber cements. The Examiner has failed to show or explain why the adhesives described by Skoultchi could “obtain adhesiveness” upon curing with ultraviolet light while in contact with the first and second thermoplastic resin films. Thus, on the present record, the Examiner has not shown that a label comprising the adhesives described by Skoultchi would be the same or substantially the same as the claimed labels such that Nishizawa would be required to distinguish the claimed subject matter from obvious variants of the prior art. Cf. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where . . . the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”) Nishizawa argues further that Savagian does not teach a thermoplastic film having a heat-sealable layer that can bond to a thermoplastic substrate such as a molded container. (Br. 6—7.) This argument is not entirely persuasive because it depends on an assumed function and order of layers that is not necessarily required by claim 23. However, the structure of the labels described by Savagian (see Savagian, Figures 1—3) comprise a radio frequency identification device (RFID) comprising IC chip 32 and antenna 28, that is mounted on flexible substrate 22. This assembly is adhered by thermal adhesive layer 18 to protective polymeric film 12 on one side, and by thermal adhesive layer 24 to polymeric film 26 (omitted in Fig. 3) on the other side. The Examiner does not explain, and it is not 6 Appeal 2015-000928 Application 11/630,616 apparent, how the heat-sealable layers described by Savagian would be incorporated in a layer corresponding to the first thermoplastic resin film of the labels described by Takahashi, even assuming the use of the ultraviolet- cured pressure sensitive adhesives taught by Skoultchi would result in a structure within the scope of the claims. The Examiner’s findings of fact and analysis regarding the additional reference Funato do not cure the defects of the principal rejection. The weight of the evidence is that Nishizawa has demonstrated harmful error in the appealed rejections. C. Order It is ORDERED that the rejection of claims 23, 25—27, 29—37, and 39-48 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation