Ex Parte Rhyner et al

Patent Trials and Appeals BoardMar 19, 2019

13844591 - (D) (P.T.A.B. Mar. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/844,591 03/15/2013 41754 7590 THE JANSSON FIRM 3616 Far West Blvd Ste 117-314 AUSTIN, TX 78731 03/21/2019 FIRST NAMED INVENTOR Steven J. Rhyner 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 ATTORNEY DOCKET NO. CONFIRMATION NO. MMMOOlO 7575 EXAMINER GRABOWSKI, KYLE ROBERT ART UNIT PAPER NUMBER 3638 NOTIFICATION DATE DELIVERY MODE 03/21/2019 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): law firm @thej anssonfirm. com Pehr@thejanssonfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN J. RHYNER, CHRISTOPHER K. HAAS, TODD D. JONES, KUI CHEN-HO, KRYSTAL K. HUNT, and RYANE. MARX Appeal2017-003779 Application 13/844,591 Technology Center 3700 Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and LEE L. STEPINA, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Steven J. Rhyner et al. ("Appellants") 1 appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1-25 in this application. The Board has jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 3M Innovative Properties Company is the Applicant and is identified as the real party in interest. 37 C.F.R. Â§ 1.46; Appeal Br. 3. Appeal2017-003779 Application 13/844,591 CLAIMED SUBJECT MATTER Claim 1 illustratively recites: 1. An article comprising: a biodata page defining a perimeter including an edge; and a hinge layer attached to at least a portion of the biodata page, wherein the hinge layer comprises a cross-linked thermoset elastomeric polyurethane sheet, and wherein a portion of the hinge layer extends beyond the edge to form a flexible hinge. Appeal Br. 17 (Claims App.). REJECTIONS ON APPEAL Claims 1-3, 8-10, 12-14, 19, 20, 22, and 23 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Parviainen (WO 98/19870, pub. May 14, 1998)2 and Gardner (US 2010/0314162 Al, pub. Dec. 16, 2010). 3 Claims 1, 3-7, 11, 12, 15-18, and 22-25 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Sakagami (US 2012/0164419 Al, pub. June 28, 2012), Parviainen, and Gardner. Claim 21 stands rejected under 35 U.S.C. Â§ 103 as unpatentable over Parviainen, Gardner, and Staub (US 2005/0248147 Al, pub. Nov. 10, 2005). 2 The Examiner and Appellants both refer to this reference as Parviainen, so we will do likewise, even though Parviainen is the last-named of five inventors identified on the face of the reference. 3 The initial statement of the rejection (Final Act. 2) refers only to claims 1- 3, 8, and 13, but the analysis in support (id. at 3--4) also refers to claims 9, 10, 12, 14, 19, 20, 22, and 23. 2 Appeal2017-003779 Application 13/844,591 ANALYSIS A. Obviousness over Parviainen and Gardner In rejecting independent claim 1, the Examiner finds Parviainen discloses biodata page 1 and hinge layer 10, which "both comprise a cross-linked thermoset elastomeric material," namely, polycarbonate. Final Act. 3 (emphasis added) (citing Parviainen, Abstract, Figs. 1 and 4); see Parviainen, Figs. 1, 2, and 4 (polycarbonate layers 5 and 7 extend into area 10 which forms part of the hinge of a passport booklet). Claim 1 requires a cross-linked thermoset polyurethane hinge layer, not polycarbonate, so the Examiner cites Gardner as disclosing that "thermoset polyurethane is a known material ... appropriate for use in passports." Final Act. 3 (citing Gardner ,r,r 69, 93). The Examiner determines "[i]t would have been obvious to use polyurethane in lieu of polycarbonate" in Parviainen's passport booklet, because both are "known cross-linked thermoset elastomeric materials," and "it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice." Id. ( emphasis added) ( citing In re Leshin, 277 F.2d 197 (CCPA 1960)). In support, the Examiner cites a dictionary definition of the term "elastomeric" as meaning "any material, such as natural or synthetic rubber, that is able to resume its original shape when a deforming force is removed." Id. (citing www.dictionary.com). The Examiner finds Parviainen's polycarbonate layers 5 and 7 are "inherently" elastomeric, because they are disclosed "for ... use as a hinge," and also due to "the inherent properties of polycarbonate in this usage." Id. The Examiner finds Gardner "explicitly disclose[ s] the plastics further having 3 Appeal2017-003779 Application 13/844,591 'elastomeric' properties," because Gardner teaches "a material consisting essentially of cross-linked thermoset elastomeric polyurethane." Id. ( emphasis added). Appellants respond that the Examiner errs in applying a dictionary definition of the term "elastomeric," because "Appellant[ s] defined the meaning of elastomer in the specification: 'As used herein, elastomers are polymers, either cross-linked (thermoset elastomers) or uncross-linked (thermoplastic elastomers), which include a flexible, rubbery phase."' Appeal Br. 5---6 ( emphasis added) ( quoting Spec. ,r 23); Reply Br. 6-7. Appellants contend that when the proper construction of the term "elastomeric" is applied, requiring a flexible, rubbery phase, the Examiner has not shown that Parviainen's polycarbonate layers 5 and 7 are inherently elastomeric. Appeal Br. 6. Further according to Appellants, the evidence does not support the Examiner's determination that it would have been obvious to a skilled artisan to use polyurethane in lieu of polycarbonate in Parviainen' s passport booklet, in part because "Gardner does not disclose or suggest that polyurethane is a cross-linked thermoset elastomeric material." Id. at 6-8. The Examiner answers that there is no material difference between the dictionary definition of "elastomeric" as cited in the rejection, and the definition of the term "elastomer" in Appellants' Specification. Ans. 6. 4 4 Thus, the record presently before us does not present the issue of whether a broadest reasonable construction of the claim term "elastomeric" ( an adjective) might include a material that does not satisfy the structural requirement(s) to be an "elastomer" (a noun), as defined in the Specification, by virtue of behaving similarly to an elastomer under similar conditions. 4 Appeal2017-003779 Application 13/844,591 The Examiner finds Parviainen's polycarbonate layers 5 and 7 are elastomeric, applying either meaning. Id. We conclude that the determination of obviousness, in the rejection presently before us, is not supported by a preponderance of the evidence. In particular, the evidence presently in the record does not sufficiently support the Examiner's finding that Gardner's thermoset polyurethane is elastomeric, and therefore suitable for use in the hinge region of Parviainen's passport booklet. See Final Act. 3. A disclosure may be found in a prior art reference either expressly or inherently. See WhitServe, LLC v. Comput. Packages, Inc., 694 F.3d 10, 21 (Fed. Cir. 2012). Concerning express disclosure, the Examiner cites Gardner's paragraphs 69 and 93 as "explicitly" disclosing a thermoset polyurethane that is elastomeric. See Final Act. 3. However, those disclosures pertinently reflect only that a "thermoset polyurethane[]" may be used as a component of a "microporous material" layer in a passport, with the term "thermoset" indicating that the polyurethane "has formed a crosslinked network" because it "at least partially forms a polymeric network." Gardner ,r,r 69, 93. These disclosures do not reflect, expressly, that the thermoset polyurethane is elastomeric, regardless of whether the term is construed functionally ( as the Examiner suggests) or structurally (as Appellants suggest). Id. Concerning inherent disclosure, such a disclosure may be found if it "is necessarily present" in the reference. In re Montgomery, 677 F.3d 1375, 1379-80 (Fed. Cir. 2012) (quoting Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010) and Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003)). "[I]nherency ... may not be established by probabilities or possibilities." Id. at 13 80 ( quoting 5 Appeal2017-003779 Application 13/844,591 Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011) and In re Oelrich, 666 F.2d 578,581 (CCPA 1981)). The fact that a certain characteristic may, but not necessarily, be present in the prior art is not sufficient to establish the inherency of that characteristic. Cont 'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268---69 (Fed. Cir. 1991). The rejection presently before us does not establish that Gardner's thermoset polyurethane is necessarily elastomeric, regardless of whether the term is construed functionally or structurally. See Final Act. 3. The finding that Gardner's thermo set polyurethane is elastomeric, which for the reasons provided above is not supported by a preponderance of the evidence in the present record, was a key underpinning to the Examiner's initial determination of obviousness of using polyurethane in the hinge area of Parviainen' s passport booklet. See, e.g., Final Act. 3 ( obviousness premised upon polyurethane and polycarbonate both being "cross-linked thermoset elastomeric materials") ( emphasis added). The Examiner's Answer more broadly suggests that it would have been obvious to a skilled artisan to use any "thermosetting polymer," including Gardner's thermoset polyurethane, in the hinge area of Parviainen's passport booklet. Ans. 7. However, this broader obviousness determination is not supported by explanation or citation to evidence to reflect a rational relationship between the thermoset property of a polymer, and the suitability of the polymer for use in the hinge of a booklet, that is sufficient to support the obviousness determination. Id. For the foregoing reasons, we do not sustain the rejection of claim 1 as being unpatentable over Parviainen and Gardner. The only other independent claim, claim 22, similarly recites "a hinge layer comprising a 6 Appeal2017-003779 Application 13/844,591 cross-linked thermoset elastomeric polyurethane sheet," and is rejected on the same basis. Appeal Br. 20 (Claims App.); Final Act. 4. Thus, we do not sustain the rejection of claims 1-3, 8-10, 12-14, 19, 20, 22, and 23 as being unpatentable over Parviainen and Gardner. B. Obviousness over Sakagami, Parviainen, and Gardner The obviousness rejection based on Sakagami, Parviainen, and Gardner does not directly address the claim requirement for a hinge layer comprising an "elastomeric" polyurethane sheet. See Final Act. 4--5. At best in this regard, the Examiner finds Figure 8 of Sakagami discloses "ajlexible hinge 19" comprising polyurethane. Id. at 4 (emphasis added) ( citing Sakagami ,r 42). However, the cited disclosure pertinently reflects only that sheet layer E(C) in Figure 8 may include "a thermoplastic polyurethane resin," and does not indicate that extension 19 of sheet layer E(C) is flexible. Sakagami ,r 42. Elsewhere, Sakagami indicates extension 19 protrudes from the other layers 3 and 5 in Figure 8 to be received in binding portion 17. See id. at Fig. 3, ,r,r 131 & 301. This disclosure, likewise, does not indicate that extension 19 is flexible. For the reasons provided above, the Examiner's additional consideration of Parviainen and Gardner does not sufficiently address the claim requirement for a hinge layer comprising a cross-linked thermoset elastomeric polyurethane sheet. Thus, we do not sustain the rejection of claims 1, 3-7, 11, 12, 15-18, and 22-25 as being unpatentable over Sakagami, Parviainen, and Gardner. 7 Appeal2017-003779 Application 13/844,591 C. Obviousness over Parviainen, Gardner, and Staub The Examiner's additional consideration of dependent claim 21, and of Staub, does not address the deficiency identified above as to the parent claim 1. See Final Act. 5-6. Therefore, for the reasons provided above, we do not sustain the rejection of claim 21 as being unpatentable over Parviainen, Gardner, and Staub. DECISION The Examiner's decision to reject claims 1-25 is reversed. REVERSED 8