Ex Parte Pawlik et al

Patent Trial and Appeal Board

Jan 9, 2017

13649498 (P.T.A.B. Jan. 9, 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.
13/649,498 10/11/2012 Andreas PAWLIK 405383US99 2182
22850 7590 01/11/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
MARTIN, BETHANY LAMBRIGHT
ART UNIT PAPER NUMBER
1758
NOTIFICATION DATE DELIVERY MODE
01/11/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS PAWLIK, MARTIN WIELPUETZ,
and MICHAEL BEYER
Appeal 2016-000341
Application 13/649,498
Technology Center 1700
Before MARKNAGUMO, JULIA HEANEY, and BRIAN D. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—4 and 9-17. We have jurisdiction. 35 U.S.C.
§ 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is EVONIK
INDUSTRIES AG. Appeal Br. 1.
Appeal 2016-000341
Application 13/649,498
STATEMENT OF THE CASE
Appellants describe the invention as relating to a multilayer film as a
back cover for solar modules. Spec. 10-11. Claim 1, reproduced below
with emphases added to certain key recitations, is illustrative of the claimed
subject matter:
1. A multilayer film, comprising, in the order listed:
a) a first outermost surface layer of a moulding
composition, comprising:
at least 35% by weight of polyamide; and
from 1 to 65% by weight of a light-reflecting filler,
wherein the % by weight is based on the weight of the moulding
composition of the first outermost surface layer;
b) optionally, a layer intermediate to the first
outermost surface layer and a second outermost surface layer of
a thermoplastic moulding composition; and
c) the second outermost surface layer opposite to
the first outermost surface layer of a moulding composition
which comprises at least 35% by weight of polyamide; and
from 1 to 65% by weight of a light-reflecting filler,
wherein the % by weight is based on the weight of the moulding
composition of the second outermost surface layer; and
wherein
at least one of the first outermost surface layer and second
outermost surface layer further comprises from 1 to 25% by
weight of the layer composition of a polyamide elastomer which
is a polyetheresteramide, a polyetheramide or a combination
thereof.
Appeal Br.2 13 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
2 In this decision, we refer to the Final Office Action mailed December 15,
2014 (“Final Act.”), the Appeal Brief filed March 16, 2015 (“Appeal Br.”),
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Appeal 2016-000341
Application 13/649,498
Thill
Clark
Ries et al.,
(hereinafter “Ries”)
Fujita et al.,
(hereinafter “Fujita”)
Anderson et al.,
(hereinafter “Anderson”)
Wu
Kliesch et al.,
(hereinafter “Kliesch”)
US 4,883,836 Nov. 28, 1989
US 5,399,663 March 21, 1995
US 2002/0119272 Al Aug. 29, 2002
US 2004/0023049 Al Feb. 5, 2004
US 2008/0017241 Al Jan. 24, 2008
US 2010/0288342 Al Nov. 18, 2010
US 2010/0288353 Al Nov. 18, 2010
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1^4 and 9 under 35 U.S.C. § 103 as unpatentable
over Wu in view of Kliesch and Fujita. Ans. 3.
Rejection 2. Claim 10 under 35 U.S.C. § 103 as unpatentable over
Wu, Kliesch, and Fujita in further view of Ries. Id. at 7.
Rejection 3. Claim 11 under 35 U.S.C. § 103 as unpatentable over
Wu, Kliesch, and Fujita in further view of Clark. Id. at 9.
Rejection 4. Claim 12 under 35 U.S.C. § 103 as unpatentable over
Wu, Kliesch, and Fujita in further view of Thill. Id. at 10.
Rejection 5. Claims 13—16 under 35 U.S.C. § 103 as unpatentable
over Wu, Kliesch, and Fujita in further view of Anderson. Id. at 11.
Rejection 6. Claim 17 under 35 U.S.C. § 103 as unpatentable over
Wu, Kliesch, Fujita, and Anderson in further view of Thill. Id. at 16.
the Examiner’s Answer mailed July 31, 2015 (“Ans.”), and the Reply Brief
filed September 29, 2015 (“Reply Br.”).
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Appeal 2016-000341
Application 13/649,498
ANALYSIS
All claims on appeal depend from claim 1, so we therefore focus on
the Examiner’s rejection of claim 1 and construction of claim 1 ’s recitations
of a “first outermost surface layer of a moulding composition” and “second
outermost surface layer.” Appellants argue that claim 1 requires a film
having “first and second outermost layers [which] are both outermost
surface layers which are opposite to one another.” Reply Br. 2 (emphases
original); see also Appeal Br. 4—6. Appellants argue that a layer
“sandwiched” between other layers “cannot be an outermost surface
layer. . . .” Reply Br. 2 (emphasis original).
The Examiner maintains that “the term ‘first outermost surface layer’
and ‘second outermost surface layer’ can be interpreted to define a first layer
which is ‘farthest from the center’ and a second layer which is in sequential
order, the second layer ‘farthest from the center.’” Ans. 18. Applying this
claim construction, the Examiner finds that layer 28 of Wu’s Figure 4,
reproduced below, depicts a “first outermost surface layer” and layer 27 a
“second outermost surface layer.” Id.
16 - x
28
| 27
I...................................... 24
..... - 22
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Appeal 2016-000341
Application 13/649,498
Figure 4 of Wu represents a schematic view of a backsheet 16 of a solar cell
according to a preferred embodiment of Wu. Wu 116.
The Examiner’s claim construction is overbroad. In re Suitco Surface,
Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010) (“construction [must] be
consistent with the specification, . . . and . . . claim language should be read
in light of the specification as it would be interpreted by one of ordinary skill
in the art.” (internal quotes and citation omitted)). The plain meaning of
“outermost” is that it is on the surface, and this meaning is consistent with
claim 1 ’s recitation of “surface layer.” Nothing in the Specification suggests
a broader meaning is intended. See Spec. 7:11—13 (describing a two-layer
embodiment of the film where each layer would be on the surface)
We thus agree with Appellants that both the “first outermost surface
layer” and the “second outermost surface layer” recited in claim 1 must be
positioned on the surface of the recited film. Moreover, because claim 1
recites the “second outermost layer opposite to the first outermost surface
layer” and because films have two opposing surfaces, the first outermost
layer must be on one surface of the recited film (i.e., at the exterior of the
film on one main side of the film) and the second outermost layer must be on
the other, opposite surface of the recited film (i.e., also at the exterior of the
film on the other main side of the film).
The Examiner errs in reading claim 1 onto the multilayer film shown
in Wu, Figure 4, because Wu’s layer 27 is not described as an outermost
surface layer of any multilayer firm disclosed by Wu. Rather, layer 27 is
sandwiched between layers 28 and 24.
The Examiner does not assert that any of the other cited references
address the issue regarding the Wu reference addressed above. Accordingly,
we do not sustain the Examiner’s rejection of claim 1, and we do not sustain
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Appeal 2016-000341
Application 13/649,498
the Examiner’s rejection of claims 2-4 and 9—17 because each of those
claims depend from claim 1.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
1—4 and 9-17.
REVERSED
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