Ex Parte Tanimoto et al

Patent Trial and Appeal BoardMar 16, 2017

12447925 (P.T.A.B. Mar. 16, 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. 12/447,925 04/30/2009 Naoshi Tanimoto A918.12-0001 7877 27367 7590 03/16/2017 WESTMAN CHAMPLIN & KOEHLER, P.A. SUITE 1400 900 SECOND AVENUE SOUTH MINNEAPOLIS, MN 55402 EXAMINER KHAN, TAHSEEN ART UNIT PAPER NUMBER 1781 MAIL DATE DELIVERY MODE 03/16/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NAOSHI TANIMOTO, TOMOHIRO YAMAMOTO, and TAKAHARUITO Appeal 2016-001839 Application 12/447,925 Technology Center 1700 Before LINDA M. GAUDETTE, MARK NAGUMO, and DEBRA L. DENNETT, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 1 This Decision includes citations to the following documents: Specification filed Apr. 30, 2009 (“Spec.”); Final Office Action mailed Dec. 22, 2014 (“Final”); Appeal Brief filed May 19, 2015 (“Appeal Br.”); Examiner’s Answer mailed Oct. 6, 2015 (“Ans.”); and Reply Brief filed Nov. 30, 2015 (“Reply Br.”). Appeal 2016-001839 Application 12/447,925 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision (see Final 2—5) finally rejecting claims 1—4, 7—14, and 17 under 35 U.S.C. § 103(a) as unpatentable over Hasegawa (JP 2005-199495 A, pub. July 28, 2005 (machine translation)), as evidenced by Patterson (US 2,605,205, iss. July 29, 1952), in view of Fukumura (JP 2005-325242 A, pub. Nov. 24, 2005 (machine translation)). Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. At the time of the invention, it was known in the art to use melamine decorative sheets for horizontal surfaces, such as counter or desk tops, because of the excellent melamine resin properties, such as surface hardness, heat resistance, and abrasion resistance. Spec. Tflf 2—3. According to the Specification, however, a drawback of known melamine decorative sheets was that the surface was easily stained with greasy dirt, in particular, fingerprints. Id. 13. Moreover, adhering fingerprints were highly visible due to their higher reflectivity in contrast to the low glossiness of an embossed portion of the melamine decorative sheet. Id. The inventors are said to have discovered that fingerprints are less noticeable when the melamine decorative laminated sheet includes a low refractive index layer on an upper surface of the melamine resin layer, the low refractive index layer having a lower refractive index than that of the melamine resin layer. Id. 5—6. Claim 1 is representative of the claimed invention, and is reproduced below: 1. A melamine decorative laminated sheet comprising: a melamine resin layer having a first surface; and a low refractive index layer based on a composition comprising a siloxane graft-type polymer obtained by compositing fluorine resin or acrylic resin with siloxane, and having a lower refractive index than 2 Appellants identify the real party in interest as Aica Kogyo Co., Ltd. Appeal Br. 2. 2 Appeal 2016-001839 Application 12/447,925 a refractive index of the melamine resin layer, wherein the low refractive index layer is formed over the first surface the melamine resin layer, and wherein the low refractive index layer has a water and oil repellency; wherein the low refractive index layer is disposed over the melamine resin layer when the laminated sheet is in use. Appeal Br. 11 (Claims App’x). The Examiner finds Hasegawa discloses a decorative sheet comprising a melamine-formaldehyde resin impregnated paper having a resin liquid/solution- protein powder layer applied to an upper surface. Final 3. The Examiner finds Hasegawa’s sheet is oil repellent because Hasegawa describes the sheet as rejecting hand oil marks. Id. The Examiner relies on Patterson as evidence that Hasegawa’s melamine-formaldehyde resin impregnated paper has a refractive index of 1.652. Id. The Examiner acknowledges Hasegawa does not disclose that the refractive index of its resin liquid/solution-protein powder layer is lower than 1.652. Id. The Examiner finds Fukumura discloses a coating for use in kitchen products and display screen films that is non-tacky, non-adhesive, antistatic, and has hardness properties. Id. at 3—4, 7. The Examiner further finds Fukumura discloses the coating may comprise ZX-022H, which is one of the same commercially available siloxane graft-type polymers identified in Appellants’ Specification as suitable for use in the low refractive index layer, and as having a lower refractive index than that of a melamine resin layer. Id. at 4. The Examiner finds one of ordinary skill in the art at the time of the invention “would have tried” Fukumura’s siloxane graft polymer coating in place of Hasegawa’s resin liquid/solution-protein powder layer with the expectation that the non-tack and anti-static properties of Fukumura’s coating “would facilitate [] obtaining a more fingerprint-free and oil-free surface.” Id. 3 Appeal 2016-001839 Application 12/447,925 Appellants argue there is no evidentiary support for the Examiner’s finding that non-tack and anti-static properties would facilitate obtaining a more fingerprint-free and oil-free surface. Appeal Br. 8; see also Reply Br. 10 (arguing the Examiner’s “statement is conclusory and not supported by any objective evidence or rationale.”). Appellants thus contend the Examiner reversibly erred in finding one of ordinary skill in the art would have had a reason to replace Hasegawa’s resin liquid/solution-protein powder layer with Fukumura’s siloxane graft polymer coating. Id. The Examiner responds to Appellants’ argument by asserting “[i]t is quite obvious that a non-tack, non-adhesive, anti-static surface would not allow oil to remain on its surface.” Ans. 5. “In recognizing the role of common knowledge and common sense, [the Federal Circuit has] emphasized the importance of a factual foundation to support a party’s claim about what one of ordinary skill in the relevant art would have known.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). “[T]o invoke ‘common sense’ or any other basis for extrapolating from prior art to a conclusion of obviousness, [the factfinder] must articulate its reasoning with sufficient clarity for review.” Perfect Web Techs. Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009); see also In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (“[0]bviousness findings ‘grounded in “common sense” must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness.’” (quoting Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013))); cf. In re Icon Health and Fitness, Inc. v. Strava, Inc., 2017 WF 744548 at *7 (Fed. Cir. Feb. 27, 2017) (“Although the PTAB made a factual finding, this finding did not have an adequate basis in the record, and the PTAB did not adequately explain its reasoning.”). 4 Appeal 2016-001839 Application 12/447,925 Appellants have argued persuasively in their Appeal and Reply Briefs that the Examiner failed to meet the Office’s burden to explain with sufficient clarity why the ordinary artisan would have understood that Fukumura’s coating would provide a fingerprint-free and oil-free surface by virtue of its non-tack/non- adhesive and anti-static properties. The Examiner appears to contend that the non- tack/non-adhesive features of Fukuwara’s coating must provide a fingerprint-free and oil-free surface because the coating is used in applications “where hands often touch,” e.g. display screens and kitchen products. Ans. 5. The Examiner’s position is not supported by Fukuwara’s disclosure. Fukuwara discloses that non adhesiveness is a useful feature for “the coating layer of processing units, such as [for] medicine, a granular material, food, a semiconductor device, and a liquid crystal display.” Fukuwara 1 52. Fukuwara discloses that when the coating is used in a granular material apparatus, for example, the non-adhesive property prevents adhesion of granular material thereby reducing the effort needed to clean the apparatus. Id. 129. Fukuwara further describes an example wherein adhesion of flour to the coating was tested. Id. f 32. We do not find, nor has the Examiner identified, any disclosure in Fukuwara (or elsewhere in the appeal record) that indicates non-tack/non-adhesive and/or anti-static properties provide a fingerprint- free and oil-free surface. In sum, because Appellants have identified harmful error in the findings relied upon by the Examiner in concluding the claimed invention would have been obvious, we do not sustain the rejection of claims 1—4, 7—14, and 17 under 35 U.S.C. § 103(a). REVERSED 5