Ex Parte SKAGGS et al

Patent Trial and Appeal BoardFeb 26, 2019

14824735 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/824,735 08/12/2015 63652 7590 02/28/2019 DISNEY ENTERPRISES, INC. c/o Marsh Fischmann & Breyfogle LLP 8055 East Tufts A venue Suite 450 Denver, CO 80237 FIRST NAMED INVENTOR LAUREL LINDSEY SKAGGS 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. 15-DIS-191-PR-US-UTL 5511 EXAMINER CHANG, VICTORS ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 02/28/2019 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): PTOMail@mfblaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LAUREL LINDESY SKAGGS, MARKE. TRIPP and MARK ALAN NAYLOR Appeal 2018-002407 Application 14/824,735 Technology Center 1700 Before MARK NAGUMO, N. WHITNEY WILSON, and BRIAND. RANGE, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's October 18, 2017 decision rejecting claims 1-15 and 21-24 ("Non-Final Act."). We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We reverse. 1 Appellant is Disney Enterprises, Inc., which is also identified as the real party in interest (Appeal Br. 1 ). Appeal2018-002407 Application 14/824,735 CLAIMED SUBJECT MATTER Appellant's disclosure is directed to a sheet of heat shrink laminated composite for use creating repair patches for repairing or building up a surface formed of a composite material such as fiberglass-reinforced plastic (Abstract). The claimed sheet includes first and second layers of a heat- curable adhesive, and a reinforcement layer sandwiched between the first and second layers of the adhesive (id.). The claimed sheet further includes a pressure application layer, which is formed of a heat-activated shrink wrap film, abutting an outer surface of the first layer of the adhesive (id.). The adhesive is said to be cured when heated to a temperature in a curing temperature range, and the shrink wrap film is activated when heated to a temperature in an activation temperature range that overlaps the curing temperature range of the adhesive (id.). Details of the claimed invention are set forth in independent claims 1 and 12, which are reproduced below from the Claims Appendix of the Appeal Brief: 1. A multi-layer sheet for use in repairing and building up a surface formed of a composite material, comprising: a first layer comprising a resin; a second layer comprising the resin, wherein the resin comprises a heat activated adhesive; a reinforcement layer sandwiched between the first and second layers of the resin; and a pressure application layer comprising a heat-activated shrink wrap film abutting a surface of the first layer of the resin opposite the reinforcement layer, wherein the adhesive is cured when heated to temperatures in a curing temperature range and wherein the heat activated shrink wrap film has an activation temperature range at least partially overlapping the curing temperature range of the adhesive. 2 Appeal2018-002407 Application 14/824,735 12. A laminate for field repair of damaged surfaces, compnsmg: first and second films of an adhesive reacting when heated to a temperature in a first temperature range; a porous fabric layer between the first and second films of heat activated adhesive; and a heat shrink film, wherein the first film of the heat activated adhesive is sandwiched between the heat shrink film and the porous fabric layer, wherein the heat shrink film is activated to shrink and apply pressure on the first film of the heat activated adhesive when heated to a temperature in a second temperature range that overlaps with the first temperature range, and wherein the first and second films, the porous fabric layer, and the heat shrink film are laminated into a unitary sheet. REJECTION Claims 1-15 and 21-24 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over JP '9992 in view of Krulic. 3 DISCUSSION Claim 1. JP '999 is said to relate to an adhesive tape for repairing cracks in a pipe (Non Final Act. 2). The Examiner finds that JP '999 discloses each of the limitations of the independent claims, except the presence of the "reinforcement layer" of claim 1 and the "a porous fabric layer" of claim 12 (Non-Final Act. 2, citing JP '999, ,r,r 1, 2, 6, 13). The 2 Yabuta, JP 2003-117999, published April 23, 2003 (translation of record). 3 Krulic, US 2006/0121805 Al, published June 8, 2006. 3 Appeal2018-002407 Application 14/824,735 Examiner further finds that Krulic relates to composite sheets of reinforcement fabrics and curable adhesives, where the fabrics have a porous structure (Non-Final Act. 2). The Examiner also finds that Krulic discloses a structure in which the fabrics are embedded in heat-curable adhesive, providing a unitary laminated structure, where the outer resin sublayers of Krulic' s composite sheet correspond to the claimed first and second resin layers (films) (Non-Final Act. 2-3). The Examiner determines that it would have been obvious to embed a reinforcing fabric layer into the heat curable adhesive layer of JP '999 in order to obtain an adhesive tape with improved strength (Non-Final Act. 3). Appellant argues that the cited art does not show ( 1) a sheet with two layers of resin in the form of a heat activated adhesive, or (2) a reinforcement layer sandwiched between the first and second layers of the resin (Appeal Br. 8). Appellant contends that JP '999 discloses only a single layer of a heat activated epoxy resin (adhesive), because the second layer is a pressure sensitive adhesive (id.). Appellant further argues that in Krulic's final fabric, the heat activated resins have already been cured and, therefore, are no longer heat activated adhesives (Appeal Br. 9). According to Appellant, the obviousness rejection relies on Appellant's teachings and is, therefore, improper (Appeal Br. 9-10). Appellant's argument (1) is not persuasive. As noted by the Examiner, to the extent that Appellant is arguing the references individually, such arguments are unavailing as the rejection is over the combination of JP '999 and Krulic. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,426 (CCPA 1981). Thus, Appellant's argument that JP '999 doesn't disclose two layers of a heat activated 4 Appeal2018-002407 Application 14/824,735 adhesive is not persuasive because the rejection relies on the combination of JP '999 and Krulic. However, with regards to argument (2), Appellant's argument that Krulic does not show a fabric sandwiched between heat activated adhesive layers is persuasive. The Examiner finds that Krulic' s composite sheet comprises a heat curable adhesive with reinforcing fabrics embedded (i.e. sandwiched) therein (Final Act. 2-3, citing Krulic ,r,r 52-53). However what is disclosed in the cited passage of Krulic is the application of a liquid adhesive resin to one side of a reinforcing fabric (Krulic ,r 52). This is not what is meant by the phrase "layer comprising a resin" as used in claim 1. It is well established that "the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) ( citation omitted). In this instance, the Specification discloses that the recited adhesive layers are each a film which is solid below its activation temperature (Spec. ,r 23, "[f]urther, the adhesive material is chosen such that when it is activated or reacts, e.g., at raised temperature falling within a reaction/ curing temperature range for the adhesive material, it melts and flows through the gaps and holes/pores of the porous fabric of the reinforcement layer 110.). Moreover, each recited layer is a layer of a "multi-layer sheet" rather than merely being, for example, a layer of liquid adhesive resin. Thus, the liquid adhesive applied to Krulic' s fabric are not a teaching of or suggestion of the claimed heat activated adhesive layers. 5 Appeal2018-002407 Application 14/824,735 The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. Â§ 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability."). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). In this instance, the art of record does not teach or suggest the claimed reinforcement layer sandwiched by two heat activated adhesive resin layers. Accordingly, we reverse the rejection of claim 1, as well as the claims which depend from it. Claim 12. Claim 12 further recites that "the first and second films, the porous fabric layer, and the heat shrink film are laminated into a unitary sheet." Appellant argues that JP '999 shows that its heat activated epoxy layer is separate from the heat shrink layer and, therefore, cannot meet the claim limitation noted above. Appellant's argument is persuasive. The Examiner has not adequately explained why the combined teachings of the references would have suggested laminating all of the claimed layers into a unitary sheet, and the Examiner has not contested Appellant's contention that the various layers in JP '999 are separate. As discussed above, to establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 6 Appeal2018-002407 Application 14/824,735 1074 (Fed. Cir. 1988). In this instance, the evidence of record does not adequately establish that the cited art would have made obvious the claimed limitation that "the first and second films, the porous fabric layer, and the heat shrink film are laminated into a unitary sheet." Accordingly, we reverse the rejection of claim 12, and claims 13-15, which depend from it. CONCLUSION We REVERSE the rejection of claims 1-15 and 21-24 under 35 U.S.C. Â§ 103(a) as unpatentable over JP '999 in view of Krulic. REVERSED 7