Ex Parte Rouby et al

Patent Trials and Appeals BoardMar 5, 2019

13996256 - (D) (P.T.A.B. Mar. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/996,256 09/16/2013 Michel Rouby 22850 7590 03/07/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 417526US99PCT 3274 EXAMINER SHUKLA, KRUPA ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 03/07/2019 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): patentdocket@oblon.com OBLONPAT@OBLON.COM iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL ROUBY, PIERRE CHAUSSADE, and CATHERINE DESCUSSE Appeal2018-004749 Application 13/996,256 Technology Center 1700 Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and GEORGIANNA W. BRADEN, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-12, 15, 16, 21, and 22. (Appeal Br. 4--5.) We have jurisdiction pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM. 1 This Decision includes citations to the following documents: Specification filed June 20, 2013 and amended on August 9, 2018 ("Spec."); Non-final Office Action dated August 30, 2017 ("Non-final Act."); Appeal Brief filed November 16, 2017 ("Appeal Br."); Examiner's Answer dated February 8, 2018 ("Ans."); and Reply Brief filed April 2, 2018 ("Reply Br."). 2 Appellants identify Saint-Gobain Glass France as the real party in interest. (Appeal Br. 2.) Appeal2018-004749 Application 13/996,256 THE INVENTION Appellants state that the invention relates to a safety glazing including a glass substrate and a complex sheet made of plastic including polyester (PE) film and a polyvinyl butyral (PVB) layer, which may be used in a transport vehicle such as an airborne transport vehicle that may be subjected to unexpected impact including bird strikes. (Spec. 1, 11. 1-25.) Claim 1, the only independent claim on appeal, is representative and reproduced below from the Claims Appendix to the Appeal Brief: 1. A glazing, comprising: a glass substrate; a complex sheet comprising a plastic comprising a plasticized polyvinyl butyral layer and a polyester film comprising a scratch-resistant and abrasion-resistant coating; and an adhesive layer of thermoplastic polyurethane between the glass substrate and the polyvinyl butyral layer of the complex sheet, wherein an adhesion of the polyester film to the plasticized polyvinyl butyral layer, measured by exerting on a 1 cm wide strip of the polyester film a tensile force perpendicular to the surface of the glazing with a pull rate of 5 cm/min, is at least equal to 3 daN/cm. (Appeal Br. i, Claims Appendix.) 2 Appeal2018-004749 Application 13/996,256 REJECTIONS The Examiner rejected claims 1-12, 15, 16, 21, and 22 as follows: 1. Claims 1-12, 15, 16, 21, and 22 under 35 U.S.C. Â§ 112(a) or under 35 U.S.C. Â§ 112 (pre-AIA), first paragraph, as failing to comply with the enablement requirement. 2. Claims 1-7, 11, 12, 15, and 16 under pre-AIA 35 U.S.C. Â§ I02(b) anticipated by or, in the alternative, under pre-AIA 35 U.S.C. Â§ I03(a) as obvious over Chaussade et al., (US 5,763,089, issued June 9 1998 "Chaussade")Â· ' ' ' 3. Claim 8 under pre-AIA 35 U.S.C. Â§ I03(a) as obvious over Chaussade and Chopinet et al., (US 6,333,285 Bl, issued December 25, 2001, "Chopinet"); 4. Claims 9, 10, 21, and 22 under pre-AIA 35 U.S.C. Â§ I03(a) as obvious over Chaussade and Cid-Aguilar et al., (US 2005/0233891 Al, published on October 20, 2005, "Cid-Aguilar"); 5. Claims 1-7, 11, 12, 15, and 16 under pre-AIA 35 U.S.C. Â§ I03(a) as obvious over Chaussade, Nose et al. (US 4,605,591, issued August 12, 1986, "Nose"), Greenan et al., (US 2009/0279004 Al, published on November 12, 2009, "Greenall"), and Cunningham et al. (US 4,208,468, issued June 17, 1980, "Cunningham"); 6. Claim 8 under pre-AIA 35 U.S.C. Â§ I03(a) as obvious over Chaussade, Nose, Greenan, Cunningham, and Chopinet; 3 Appeal2018-004749 Application 13/996,256 7. Claims 9, 10, 21, and 22 under pre-AIA 35 U.S.C. Â§ 103(a) as obvious over Chaussade, Nose, Greenall, Cunningham, and Cid- Aguilar, 8. Claims 1-7, 11, 12, 15, and 16 under the ground ofnonstatutory double patenting as being unpatentable over claims 1-21 of Chaussade; and 9. Claims 1-7, 11, 12, 15, and 16 under the ground ofnonstatutory double patenting as being unpatentable over claims 1-21 of Chaussade in view of Nose, Greenall, Cunningham, and Cid- Aguilar. (Ans. 2-22.) Appellants additionally rely on the Declaration Under 37 C.F.R. Â§ 1.132 of Pierre Chaussade, dated July 25, 2016 ("Chaussade Deel."). Rejection 1-Enablement ISSUE The Examiner found that the Specification is not enabling for the full scope of the claims, because the claims read on complex sheets encompassing innumerable types of polyester films and plasticized polyvinyl butyral layers, requiring undue experimentation due to the quantity of experimentation necessary, the lack of direction of guidance presented, and the absence of working examples in the Specification. (Ans. 3--4.) In particular, the Examiner found that the claimed relationship between the polyester film and plasticized polyvinyl butyral layer is described only by a physical property (adhesion) without any correlation 4 Appeal2018-004749 Application 13/996,256 between the property and the structure of the polyester film and plasticized polyvinyl butyral layer. (Ans. 4.) The Examiner found that although the Specification discloses two tradenames for glazings that meet the adhesion recited in the claims, the Specification does not disclose the details pertaining to the type and amount of plasticizer or specify what adhesive bonding treatment was performed on the polyester layer. (Ans. 4.) In addition, the Examiner found that the Specification states that plasticized PVB layers having the SAFLEXÂ® tradenames are suitable, however Appellants argue there are plasticized PVB falling under the SAFLEXÂ® tradename that do not meet the claimed adhesion. (Ans. 4--5.) The Examiner points out that Appellants argue that the type and amount of plasticizer and the adhesion surface treatment of the polyester can affect the adhesion property, but no guidance is provided in the Specification regarding these features. (Ans. 5.) Appellants argue the Specification discusses suitable PE and PVB materials, includes working examples that illustrate the specific PE films and PVB layers and their adhesion strengths such that the Specification clearly teaches those of skill in the art that the adhesion between the PE film and the PVB layer is a function of plasticizer type, the plasticizer content, and the presence of adhesion treatment to the PE film. (Appeal Br. 7-10.) Appellants argue the Examiner neglects the information that a person of skill in the art would already know. (Appeal Br. 11-12.) Accordingly, the issue with respect to this rejection on appeal is: Have Appellants identified reversible error in the Examiner's determination that the Specification is not enabling for the scope of the claims? 5 Appeal2018-004749 Application 13/996,256 DISCUSSION Appellants do not argue any claim with particularity. (Appeal Br. 5- 13.) Accordingly, we select claim 1 as representative for disposition of this rejection. 37 C.F.R. Â§ 4I.37(c)(l)(iv). "To satisfy the enablement requirement ofÂ§ 112, ,r 1, a patent application must adequately disclose the claimed invention so as to enable a person skilled in the art to practice the invention at the time the application was filed without undue experimentation." In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000) (citation omitted). The scope of the claims must not be broader than the scope of the enabling description in the specification. See Nat'! Recovery Tech., Inc. v. Magnetic Separation Systems, Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999). "The scope of enablement, in tum, is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation." Id. ( citation omitted). To determine whether the necessary experimentation is undue, we look at factors including "(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, ( 4) the nature of the invention, ( 5) the state of the prior art, ( 6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims." In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). We are not persuaded by Appellants' arguments that the Specification provides enablement for the full scope of the claims. The Specification sets forth "suitable" plasticized PVB sold under the name SAFLEXÂ® or under the name BUTACITEÂ®, giving only example thicknesses as defining 6 Appeal2018-004749 Application 13/996,256 structural characteristics of the plasticized PVB. (Spec. p. 8, 11. 6-10.) For the polyester film, the Specification again only discloses the thickness of the polyester film and hard organopolysiloxane coating. (Spec. p. 8, 11. 12-14.) The Specification states that a prefabricated complex sheet according to the invention is sold "under the name SP ALLSHIELDÂ® by the company DU PONT DE NEMOURS." (Spec. p. 8, 11. 16-27.) In the Example, the Specification discloses three complex sheets of plastic falling under the SP ALL SHIELDÂ® trademark, SP ALL SHIELDÂ® BE 1028-157 disclosed as not in accordance with the invention, and SP ALLSHIELDÂ® SG2-157 and SP ALLSHIELDÂ® SG-307 disclosed as being in accordance with the invention. (Spec. p. 9, 11. 1-35.) Importantly, although the Specification discloses that SP ALL SHIELDÂ® BE 1028-157 "has a PVB that is different in the nature and the content of the plasticizer that it contains, and its varnished PET [polyethylene terephthalate] sheet has not been subjected, on its face intended to adhere to the plasticized PVB, to the same adhesive bonding treatment as that of the two other complex sheets" (Spec. p. 9, 11. 19-25), the Specification does not provide sufficient description or guidance as to what aspects of the nature and content of the plasticizer or the adhesive bonding treatment lead to the difference in adhesion properties. Thus, while the Specification provides enablement for use of the particular complex sheets in the examples disclosed therein, we agree with the Examiner that the Specification does not provide a sufficient amount of direction or guidance to enable one of ordinary skill in the art to make and use the complex sheets beyond those two examples disclosed in the Specification and commensurate in scope with claim 1. 7 Appeal2018-004749 Application 13/996,256 Although we acknowledge that the knowledge of one of ordinary skill in the art must be accounted for, in this case, we have not been directed to sufficient evidence that one of ordinary skill art would have been able to ascertain the necessary characteristics of the nature and content of the plasticizer or the adhesive bonding treatment that lead to the adhesion recited in the claims based on the mere disclosure SP ALLSHIELDÂ® SG2- 157 and SPALLSHIELDÂ® SG-307 as complex sheets. This is particularly so in view of the Specification's generic disclosure that SP ALLSHIELDÂ® complex sheets are suitable, where according to the examples, not all SPALLSHIELDÂ® complex sheets result in the claimed adhesion. For these reasons, we are not persuaded by Appellants' argument that the common structural features shared by polyesters and polyvinyl butyral layers would function similarly or that the Examiner has not shown the art of safety glazings is unpredictable. (Reply Br. 3, 6.) In this case, the amount of direction and guidance combined with the breadth of the claims are determinative. Accordingly, we affirm the Examiner's rejection of claims 1-12, 15, 16, 21, and 22 under 35 U.S.C. Â§ 112(a) or under 35 U.S.C. Â§ 112 (pre- AIA), first paragraph, as failing to comply with the enablement requirement. Rejection 2-Anticipation/Obviousness - Chaussade alone The Examiner found that Chaussade discloses a glazing as recited in claim 1, but Chaussade does not explicitly disclose the adhesion of the polyester film to the polyvinyl butyral layer of at least equal to 3 daN/cm as recited in the claim. (Ans. 7-8.) The Examiner found that because Chaussade discloses the identical polyester film and plasticized polyvinyl 8 Appeal2018-004749 Application 13/996,256 butyral layer as utilized in the present invention (i.e., SAFLEXÂ®), that the adhesion recited in claim 1 is inherent. (Ans. 8.) Appellants contend Chaussade does not disclose that the adhesion strength between the PE film and the plasticized PVB layer recited in the claims would necessarily be produced as evidenced by the present Specification and the Chaussade Declaration. (Appeal Br. 15-22, 27-28.) Appellants argue Chaussade does not recognize the adhesion strength between the PET and PVB layers, but rather, only discusses adhesion between the glass substrate and the PVB layer of the complex sheet, and as a result, the modification of such adhesion strength would not have been obvious. (Appeal Br. 28-29.) Accordingly, the issue with respect to this rejection is: Did the Examiner reversibly err in finding that the adhesion between the polyester film and plasticized polyvinyl butyral layer recited in claim 1 is inherent in the polyester film and plasticized polyvinyl butyral layers disclosed in Chaussade? DISCUSSION We agree with Appellants that sufficient evidence does not support the Examiner's position that glazings disclosed in Chaussade would inherently possess the adhesion between the polyester film and plasticized polyvinyl butyral layer recited in claim 1. The Examiner's reasoning is based on the position that both Chaussade and the Specification disclose similar polyester layers and the plasticized PVB. In particular, the Examiner points to Chaussade ( col. 5, claim 2) and the Specification (p. 8, 11. 16-17) for the use of PET as the polyester and the disclosure of SAFLEXÂ® as the 9 Appeal2018-004749 Application 13/996,256 plasticized PVB in both Chaussade (col. 3, 11. 31-32) and in the present Specification (p. 8, 11. 6-7 .) As discussed above, however, the Specification states that although complex sheets including PET and PVB under the name SP ALLSHIELDÂ® may be used (Spec. 8, 11. 16-27), the Specification also provides examples that not all complex sheets under the name SP ALLSHIELDÂ® achieve the adhesion recited in claim 1 due to a different plasticizer included in the PVB layer and a PET sheet that has been subjected to a different adhesive bonding treatment. (Spec. 9, 11. 3-27; Chaussade Deel. ,r,r 2-7.) Thus, although there is no indication that plasticized PVBs under the SAFLEXÂ® ( or BUTACITEÂ®) tradename are used in the SP ALLSHIELDÂ® complex sheets, the Specification provides evidence that not all materials falling under the general tradenames disclosed therein would necessarily provide the adhesion characteristics recited in claim 1. Therefore, we agree with Appellants that the general disclosure of a PET film and SAFLEXÂ® plasticized PVB layer in Chaussade is insufficient to support a prima facie case of inherency in view of the express disclosure in the Specification that there are combinations of materials, falling within the SP ALLSHIELDÂ® tradename (also disclosed in Chaussade as preferable in col. 3, 11. 44--50) that fail to meet the recited adhesion requirement. (See Chaussade Deel. ,r,r 4, 8.) Accordingly, we reverse the Examiner's rejection of claims 1-7, 11, 12, 15, and 16. 10 Appeal2018-004749 Application 13/996,256 Rejections 3 and 4 Rejections 3 and 4 are directed to dependent claims 8 and 9, 10, 21, and 22, respectively. These rejections rely on the position that Chaussade inherently discloses the adhesion between the polyester film and plasticized polyvinyl butyral layer recited in claim 1. The addition of Chopinet in Rejection 3 and Cid-Aguilar in Rejection 4 fail to remedy the deficiencies in Chaussade discussed above. Accordingly for similar reasons as discussed above, we reverse the Examiner's rejections of claims 8-10, 21, and 22 as set forth in Rejections 3 and 4. Rejection 5 - Obviousness-Chaussade, Nose, Greenall, Cunningham The Examiner found that Chaussade discloses the glazing recited in claim 1, with the exception that Chaussade does not explicitly disclose the adhesion of the polyester film to the polyvinyl butyral layer recited in claim 1. (Ans. 13.) The Examiner found that Nose discloses that a polyester layer can be subjected to corona discharge treatment to improve adhesion properties, Greenan discloses that the amount of plasticizer in PVB influences adhesion properties, and Cunningham discloses that the amount of plasticizer depends on the acceptable adhesion required and type of plasticizer employed. (Ans. 13-14.) The Examiner determined it would have been obvious to subject the bonding surface of the polyester layer in Chaussade to corona discharge treatment as well as to vary the amount and type of plasticizer in the PVB layer in Chaussade "in order to obtain improved and desired adhesion between polyester film and plasticized PVB layer including that presently claimed." (Ans. 14.) 11 Appeal2018-004749 Application 13/996,256 Appellants argue the Examiner does not set forth adequate reasoning as to why one of ordinary skill in the art would have modified Chaussade as in the rejection because Chaussade does not disclose that the adhesion between the PE film and the PVB layer is a result-effective variable and it was the present inventors who discovered that increasing the adhesion between the PE film and the PVB layer provides a better lasting impact resistance. (Appeal Br. 33-34.) Appellants argue Nose, Greenan, and Cunningham fail to provide support for the Examiner's rationale. (Appeal Br. 34.) Appellants contend Nose discloses a thermoplastic resin laminate including a polyester film that has nothing to do with glazings, but, rather, relates to increasing adhesion between a polyester film and a polyester resin composition of a specific copolymer and inorganic particles such that Nose is nonanalogous art. (Appeal Br. 34--37 .) Appellants contend Greenan is concerned with plasticizer migration into LCD films that disposed in an interlayer, which is not related to the present application or Chaussade such that one of ordinary skill in the art would not have looked to Greenan in modifying Chaussade absent hindsight. (Appeal Br. 37-39.) Appellants argue Cunningham does not disclose a plasticized PVB layer, and that Cunningham fails to disclose a difference in adhesion between the PVB layer and PE film, which are not in direct contact. (Appeal Br. 39.) As a result, Appellants argue one of ordinary skill in the art would not have been motivated to modify the PVB layer of Chaussade based on Cunningham's disclosure relating to PVC and PE films separated by a plasticizer free (meth)acrylic acid layer. (Appeal Br. 39.) Accordingly, the dispositive issue with respect to this rejection is: Did Appellants identify reversible error in the Examiner's position that the 12 Appeal2018-004749 Application 13/996,256 adhesion between the polyester film and plasticized polyvinyl butyral layer recited in claim 1 would have been obvious over Chaussade, Nose, Greenan, and Cunningham? DISCUSSION We agree with Appellants that the Examiner's position is not sufficiently supported by the record. That is, as Appellants point out, Chaussade does not provide any disclosure with respect to adhesion between the polyester film and PVB layer. (Appeal Br. 33; Chaussade, col. 1, 1. 54- col. 2, 1. 7, col. 3, 1. 26- col. 4, 1. 9.) Although Nose discloses improving adhesion between a thermoplastic resin film and a polyester resin through a corona electric discharge treatment of the polyester resin composition in order to improve adhesion (col. 11, 11. 51-62), there is no indication such a treatment would be desirable in Chaussade or that such a treatment would result in the adhesion between the polyester film and plasticized polyvinyl butyral layer recited in claim 1. (See Appeal Br. 35-37.) Likewise, although Greenan and Cunningham disclose that the amount of plasticizer influences adhesion in laminates (Greenan ,r 31; Cunningham, col. 2, 1. 64 - col. 3, 1. 3), neither provides any guidance as to the amount of adhesion between the polyester film and plasticized polyvinyl butyral layer that would have been desirable for the glazings such as those recited in claim 1. Thus, the Examiner's rationale for combining Chaussade, Nose, Greenan, and Cunningham to achieve the adhesion between the polyester film and plasticized polyvinyl butyral layer recited in claim 1 is not based on sufficient rationale underpinnings. "'[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the 13 Appeal2018-004749 Application 13/996,256 legal conclusion of obviousness.'" KSR Int 'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). As a result, we reverse the Examiner's rejection of claims 1-7, 11, 12, 15, and 16. Rejections 6 and 7 Rejections 6 and 7 are directed to dependent claims 8 and 9, 10, 21, and 22, respectively. These rejections rely on the position that Chaussade in combination with Nose, Greenan, and Cunningham renders the adhesion between the polyester film and plasticized polyvinyl butyral layer recited in claim 1 obvious. The addition of Chopinet in Rejection 6 and Cid-Aguilar in Rejection 7 fail to remedy the deficiencies in the combination of Chaussade, Nose, Greenan, and Cunningham discussed above. Accordingly, for similar reasons as discussed above, we reverse the Examiner's rejections of claims 8-10, 21, and 22 as set forth in Rejections 6 and 7. Rejections 8 and 9 - Double Patenting The Examiner relies on similar reasoning for the double patenting rejections as discussed above for Rejections 2 and 5. (Compare Ans. 7-9 and 13-14 with Ans. 19-22.) For similar reasons as discussed above for Rejections 2 and 5, we reverse Rejections 8 and 9. 14 Appeal2018-004749 Application 13/996,256 DECISION We affirm the Examiner's decision rejecting claims 1-12, 15, 16, 21, and 22 under 35 U.S.C. Â§ 112 (pre-AIA), first paragraph, as failing to comply with the enablement requirement. We reverse all of the other rejections on appeal. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l ). AFFIRMED 15