Ex Parte Yamanaka et al

Patent Trial and Appeal BoardApr 21, 2016

11555912 (P.T.A.B. Apr. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111555,912 11102/2006 Masaaki Yamanaka 22850 7590 04/25/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 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. 298265US40CONT 7772 EXAMINER CHANG, VICTORS ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 04/25/2016 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 MASAAKI YAMANAKA and KAZUYUKI KIMURA1 Appeal2014-006420 Application 11/555,912 Technology Center 1700 Before BRADLEY R. GARRIS, PETER F. KRATZ, and GEORGE C. BEST, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1-5 and 8-23. We have jurisdiction under 35 U.S.C. Â§ 6. We REVERSE. 1 Yupo Corporation is identified as the real party in interest. App. Br. 4. Appeal2014-006420 Application 11/555,912 Appellants claim a multilayered-stretched resin film comprising a printable front layer comprising a wallpaper display and a back layer laminated on a back surface of the printable front layer for securing the front layer to a wall, the front layer having a peel strength to back layer of 30 to 150 g/cm, the back layer having a liquid water-absorption volume of 6 to 50 mL/m2 (as measured by Japan TAPPI NO. 51-87), the back layer comprising from 3 to 200 weight parts of hydrophilic thermoplastic resin per 100 weight parts of nonhydrophilic thermoplastic resin, and the back layer comprising a detachable surface with the front layer to permit removal of the front layer from the wall while preserving the back layer on the wall for reuse (independent claim 1; see also remaining independent claims 21 and 23). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A multilayered-stretched resin film comprising: a printable front layer (A) comprising a wall paper display and having at least one of a thermoplastic resin, an inorganic finepowder, and an organic filler, and a back layer (B) laminated on a back surface of said printable front layer (A), said back layer for securing the printable front layer to a wall, wherein said back layer (B) comprises a surface-treated inorganic fine powder and a thermoplastic resin comprising a hydrophilic thermoplastic resin, said front layer (A) has a peel strength to back layer (B) of 30 to 150 g/cm, said back layer has a liquid water-absorption volume as measured by Japan TAPPI NO. 51-87of6 to 50 mL/m2, 2 Appeal2014-006420 Application 11/555,912 said back layer (B) comprises from 3 to 200 weight parts of said hydrophilic thermoplastic resin per 100 weight parts of nonhydrophilic thermoplastic resin; and said back layer comprises a detachable surface with the front layer to permit removal of the front layer from the wall while preserving said back layer on the wall for reuse. The Examiner rejects all appealed claims under 35 U.S.C. Â§ 112, 2nd paragraph, as failing to particularly point out and distinctly claim the subject matter which Appellants regard as their invention. The Examiner also rejects all claims under 35 U.S.C. Â§ 112, 1st paragraph, as failing to comply with the written description requirement. Finally, the Examiner rejects all claims under 35 U.S.C. Â§ 103(a) as unpatentable over Yamanaka (WO 99/59813, published Nov. 25, 1999, wherein EP 1 097 805 Al is relied on and cited to as an English translation) in view of Iwasa (WO 01/42340 Al, published Jun. 14, 2001, wherein US 2003/0017321 Al is relied on and cited to as an English translation). TheÂ§ 112 Rejections The Examiner considers the claims to be indefinite because "the [independent claim] term 'reuse', which is plainly interpreted as recycling the backing layer, is inconsistent with the general teaching of recycling (reuse) the front layer throughout the original specification, the added limitation is vague and indefinite" (Non-Final Action 5). We agree with Appellants that the term "reuse" is reasonably clear from the Specification as referring, not to recycling as the Examiner believes but rather, "to the capability of the back layer to be reused as a base for the rehanging of the front layer" (App. Br. 26 (citing Spec. 26:15-23)). As a consequence, we will not sustain the Examiner'sÂ§ 112, 2nd paragraph, rejection. 3 Appeal2014-006420 Application 11/555,912 According to the Examiner, the claims violate the written description requirement because of the independent claim limitation "said front layer (A) has a peel strength to back layer (B) of 30 to 150 g/cm" (Non-Final Action 5---6) and because of the last-recited independent claim limitation "said back layer comprises a detachable surface with the front layer to permit removal of the front layer from the wall while preserving said back layer on the wall for reuse" (id. at 3-5). Regarding the peel strength limitation, Appellants point out that the Specification discloses peel strengths (e.g., 30 to 150 g/cm as claimed) with respect to back layer (B) (App. Br. 24 (citing Spec. 11:19-23)) and in particular with respect to peeling from the back layer (B) (id. (citing Spec. 16:14--21)). We share Appellants' position that "[a] person skilled in the art would have recognized from the description of 'peeling from the back layer (B)' that the peel strengths described for the back layer in Appellants' [S]pecification were the peel strengths between Appellants' front layer and Appellants' back layer" (id.). For this reason, Appellants are correct in arguing that their originally filed Specification "would have reasonably conveyed to the artisan that the inventor had possession of the claimed subject matter-- said front layer (A) has a peel strength to back layer (B) of 30 to 150g/cm--" (id.). Appellants contend that the last-recited limitation also is supported by their original Specification disclosure (App. Br. 21-23 (citing Spec. 26: 15- 23, 35:24--36:24)). We agree. Specifically, we find persuasive merit in Appellants' following contention: Thus, the description in the specification noted above (specifically that "it is not necessary to first peel off the back layer (B) remaining on the wall before hanging a new multilayered-stretched resin film" and specifically that "the 4 Appeal2014-006420 Application 11/555,912 back layer (B) remaining on the wall surface can be used for rehanging any number of times"), and the descriptions in the "Ease of Rehanging" section all mean that Appellants' specification as originally filed would have reasonably conveyed to the artisan that the inventor had possession of the claimed subject matter - - said back layer comprises a detachable surface with the front layer to permit removal of the front layer from the wall while preserving said back layer on the wall for reuse - -. (Id. at 23) For these reasons, the Examiner'sÂ§ 112, 1st paragraph written description, rejection also will not be sustained. TheÂ§ 103 Rejection The Examiner concludes that it would have been obvious to provide the back layer ( C) of Yamanaka' s multilayered-stretched resin film with a hydrophilic thermoplastic resin as claimed in view of Iwasa (Non-Final Action 9). As for the claimed water-absorption volume and the claimed ratio of hydrophilic resin to nonhydrophilic resin, the Examiner determines that "a workable amount of ratio and related amount of water absorption volume is deemed to be an obvious routine optimization to one of ordinary skill in the art, motivated by the desire to obtain the required water absorbing properties for the same end uses as the claimed invention" (id.). Regarding the last recited limitation of the independent claims, the Examiner states that "it is new matter ... and is not considered" (id. at 10) or alternatively that "these end use related properties are deemed to be inherent to the same structure and composition of the wall paper, which has been rendered obvious by the collective teachings of prior art as set forth above" (Ans. 16). 5 Appeal2014-006420 Application 11/555,912 Concerning this last limitation, Appellants convincingly argue that Yamanaka' s back layer is not disclosed as comprising a detachable surface to permit removal of the front layer while preserving the back layer on the wall for reuse (App. Br. 27-28) and that the claimed detachable surface is a property of the back layer which must be given consideration (id. at 39--40; see also Reply Br. 27-28). In response to the inherency position expressed by the Examiner in the Answer, Appellants correctly explain that an examiner must provide some evidence or scientific reasoning to support a theory of inherency and persuasively contend that the Examiner has not provided any such evidence or scientific reasoning in an attempt to meet this burden of proof (Reply Br. 18). The Examiner has committed reversible error by stating that the last limitation of the independent claims "is not considered" (Non-Final Action 10) and by stating without support that the limitation is inherent in the multilayered-stretched resin film "which has been rendered obvious by the collective teachings of prior arC (Ans. 16). We will not sustain, therefore, the Â§ 103 rejection. Conclusion The Examiner's decision is reversed. REVERSED 6