Ex Parte Yuasa et al

Patent Trial and Appeal Board

May 24, 2018

13119545 (P.T.A.B. May. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/119,545 03/17/2011
7055 7590 05/29/2018
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Yoshiyuki Yuasa
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.
P39787 2289
EXAMINER
GUO, TONG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
05/29/2018 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIYUKI YUASA, KEN TAKENOUCHI, GO KUNIMOTO,
MAO FURUSA WA, and HIROAKI KIKUCHI 1
Appeal2016-008583
Application 13/119 ,545
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a laminated structural body
having a fine periodic structure. E.g., Spec. 1:7-8; Claim 1. Claim 1 is
reproduced below from page 26 of the Appeal Brief:
1 According to the Appellants, the real parties in interest are Toyo Seikan
Kaisya, LTD., and Japan Crown Cork Co., LTD. App. Br. 3.
Appeal2016-008583
Application 13/119,545
1. A laminated structural body comprising:
a base material;
a film;
a regularly arranged periodic structure of a dented-and-
protruded shape that expresses structured colors arranged only
on a surface of said film opposite a surface of said film in
contact with the base material;
said regularly arranged periodic structure being formed by
irradiation with a laser beam having a periodic intensity profile;
said regularly arranged periodic structure having a pitch of
between about 0.5 µm and 2.0 µm; and
said film comprising a thermosetting resin or a thermosetting
resin coating material.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. Claims 1---6, 10, 14, 15, 18, and 20 over the combination of
Yamada (US 2006/0263554 Al, published Nov. 23, 2006), Ishimoto
(US 2002/0191234 Al, published Dec. 19, 2002), and Oshima
(US 6,264,782 Bl, issued July 24, 2001);
2. Claims 7-9, 11-13, 16, 17, and 19 over the combination of
Yamada, Ishimoto, Oshima, and Tanahashi (US 4,533,576, issued Aug. 6,
1985).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below,
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in the Final Action dated July 16, 2015, in the Advisory Action dated
Nov. 5, 2015, and in the Examiner's Answer dated July 15, 2016. See
generally Final Act. 2-17; Advisory Act. 2; Ans. 2-20.
Rejection 1
The Examiner finds that Yamada teaches a laminated structural body
comprising each element of claim 1 except that Yamada does not
specifically teach that its film may comprise a thermosetting resin. Ans. 2-
5. However, the Examiner finds that Ishimoto, which is directed to
holographic laminates and labels, teaches that its hologram layer (i.e., film
layer) may be formed of a variety of materials, including thermosetting
resins and thermoplastic resins. Id. at 4. The Examiner also finds that
Oshima, which is directed to holographic prints and printing processes,
teaches hologram layers comprising mixtures of thermoplastic and
thermosetting resins. Id. at 5. The Examiner determines that it would have
been obvious to substitute a thermosetting resin, or a mixture of
thermosetting resin/thermoplastic resin, for the thermoplastic resin film of
Yamada, because all are known suitable materials for hologram film layers.
Id.
The Appellants first argue that "Ishimoto is unrelated to the field of
caps and containers as in Appellant's invention. Nor is it related to the field
encompassed by Yamada which relates to plastic packages." App. Br. 8.
Those arguments are unpersuasive. The claims subject to Rejection 1
broadly encompass "laminated structural bod[ies ]" and do not recite "caps"
or "containers." Both Yamada and Ishimoto are directed to laminated
structural bodies. See, e.g., Yamada i-f 82 & Fig. 1; Ishimoto at Abstract.
Thus, to the extent the Appellants' argument concerns analogous art, see
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Reply Br. 2, we agree with the Examiner that both Yamada and Ishimoto
constitute analogous art because they are from the same field of endeavor
(laminated structural bodies) as the claimed invention. See In re Bigio,
381F.3d1320, 1325 (Fed. Cir. 2004); see also Wyers v. Master Lock Co.,
616 F.3d 1231, 1237 (Fed. Cir. 2010) ("The Supreme Court's decision in
KSR International Co. v. Teleflex, Inc. directs us to construe the scope of
analogous art broadly .... "(internal citation omitted)).
Moreover, both Yamada and Ishimoto are reasonably pertinent to
problems with which the inventors of the application on appeal were
involved. See Bigio, 381 F.3d at 1325. One problem faced by the inventors
was the selection of a film suitable for expression of structured colors (e.g.,
holograms). E.g., Spec. 1:7-8, 4:22-29. Both Yamada and Ishimoto teach
film compositions suitable for expression of structured colors. See, e.g.,
Yamada i-fi-158, 99, 153-155, 163; Ishimoto at Abstract, i-fi-130, 32.
Therefore, Yamada and Ishimoto "would have commended [themselves] to
an inventor's attention in considering his problem." In re Clay, 966 F.2d
656, 658-59 (Fed. Cir. 1992). Accordingly, Yamada and Ishimoto qualify
as analogous art forthat reason, as well. See Bigio, 381 F.3d at 1325 (art is
analogous if it is "reasonably pertinent to the particular problem with which
the inventor is involved"); Clay, 966 F.2d at 659 (art is "reasonably pertinent
if ... it is one which, because of the matter with which it deals, logically
would have commended itself to an inventor's attention in considering his
problem.").
To the extent that the Appellants' argument concerns the reason to
combine Ishimoto or Oshima with Yamada, the Examiner simply proposes
the use of known elements (i.e., thermosetting resins and/or mixtures of
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Application 13/119,545
thermoplastic resins and thermosetting resins) according to their established
functions (i.e., use as a hologram layer) with predictable results. The use of
known elements according to their established functions typically does not
result in nonobvious subject matter. See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 416-21 (2007) ("The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results."); see also id. at 416 ("[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result."). The Appellants' arguments do not persuade us
otherwise in this case.
The Appellants also raise arguments concerning the purpose of the
invention and attacking the prior art references individually. See App.
Br. 8-11. For instance, the Appellants argue that "the problem solved in
Ishimoto is entirely unrelated to that of the invention and Yamada," id. at 8;
see also id. at 10 ("Appellant has specifically defined the problem solved by
the invention in the instant specification and the Examiner fails to appreciate
or account for [that]."), Reply Br. 4 (same), and the Appellants explain that
Ishimoto's hologram laminate is "very different from Appellant's
invention," App. Br. 9. The Appellants also argue that "[t]he problem
addressed in Oshima is far removed from the invention," pointing out that
Oshima discusses "conventional method[ s ]" such as printing block "which
ha[ ve] been criticized and overcome by Appellant's invention - which uses
irradiation by a laser beam instead of a printing block." Id. at 10.
That some of the prior art references may not have been concerned
with precisely the same problems as the inventors is not indicative of
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reversible error in the rejections. Cf KSR, 550 U.S. at 420 (stating that it is
error to look "only to the problem the patentee was trying to solve"). As set
forth above, the use of a thermosetting resin, or mixture of thermosetting
resin and thermoplastic resin, as disclosed by Ishimoto and Oshima, as the
film layer in Yamada, would have been the use of a known element
according to its established function with predictable results. The
Appellants' arguments concerning the purpose of their invention do not
show otherwise.
The Appellants arguments concerning the individual teachings of
Ishimoto and Oshima also fail to identify reversible error in the rejection.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references."). The Examiner does
not rely on the structure of Ishimoto's hologram laminate in making the
rejection; nor does the Examiner rely on Oshima's method. There is no
dispute that the layer structure ofYamada's laminate falls within the scope
of claim 1, or that Yamada' s periodic structure is formed by the method
recited in claim 1; i.e., irradiation with a laser beam. The Appellants fail to
identify any portion of Ishimoto or Oshima that criticizes, disparages, or
otherwise teaches away from the claimed subject matter. See Reply Br. 3
(characterizing arguments raised in the Appeal Brief as concerning
"teach[ing] away"); cf In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
("The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of the[] [disclosed] alternatives .... ").
We agree with the Examiner that it would have been obvious to incorporate
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the thermosetting resin of Ishimoto and/or Oshima into the film layer of
Yamada for reasons stated above.
On this record, the Appellants fail to show reversible error in the
Examiner's rejection of claim 1. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections."). We affirm the
rejection.
The Appeal Brief includes a separate section subheader for claim 14,
but the arguments are essentially verbatim repeats of those discussed above
with respect to claim 1. See App. Br. 11-16. The Appellants raise no
arguments concerning the remainder of claims subject to Rejection 1. See
id. at 16. Accordingly, claims 2---6, 10, 14, 15, 18, and 20 fall with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
Rejection 2
The Appeal Brief includes a separate section header for Rejection 2
with individual subheaders for claims 7, 8, and 11. See App. Br. 17-25.
Most of the arguments raised are identical to the arguments discussed above
with respect to claim 1. Those arguments are unpersuasive for reasons
stated above.
Claim 7 depends from claim 1 and further recites "wherein said
laminated structural body is a metallic or resin cap having said film
positioned on the outer surface side of said base material." Claim 8 depends
from claim 1 and further recites "wherein said laminated structural body is a
metal can having the film positioned on the outer surface side of said base
material."
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Although claims 7 and 8 specifically recite a "cap" and a "can,"
respectively, they nevertheless remain directed to "laminated structural
bod[ies]." See claims 7, 8. We maintain our findings above that the prior art
of record is analogous under both the "field of endeavor" and "reasonably
pertinent" prongs of In re Bigio. See 381 F.3d at 1325; see also Wyers, 616
F.3d at 1237 ("The Supreme Court's decision in KSR . .. directs us to
construe the scope of analogous art broadly .... ").
The Examiner finds that, although Yamada teaches application of its
film to plastic bottle substrates, it does not specifically teach application to
metal cans or caps. Ans. 8. However, the Examiner finds that Ishimoto
discloses the application of hologram layers to both plastics and metals, see,
e.g., Ishimoto i-f 28, and that Tanahashi "discloses a composite material[]
consisting [of] a metallic foil and a resin layer, wherein the composite
materials can be used as packaging materials for caps for various bottles and
metallic can[] bodies," Ans. 9. The Examiner determines that it would have
been obvious to replace the substrate of Yamada with the metal can or cap
substrate of Tanahashi "to make a decorative metallic can[] bod[y ]" and "to
make a decorative cap[] for ... various bottle caps." Id. The Appellants do
not dispute that reasoning.
Instead, the Appellants argue that Tanahashi's resin is a thermoplastic
resin rather than a thermosetting resin, and that "Tanahashi appears entirely
unconcerned with a regularly arranged periodic structure" such as that
claimed. App. Br. 23. Those arguments are not persuasive because they
attack Tanahashi individually and do not address the Examiner's
combination rationale. See Keller, 642 F.2d at 426. The Examiner relies on
Yamada for the regularly arranged periodic structure and on Ishimoto and
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Oshima for the thermosetting resin. On this record, the Appellants have not
shown reversible error in the Examiner's rejection of claims 7 and 8. See
Jung, 637 F.3d at 1365.
With respect to claim 11, the Appellants' arguments are the same as
those raised for claim 1. See App. Br. 17-21. Those arguments are not
persuasive for reasons stated above.
The Appellants raise no arguments concerning the remainder of
claims subject to Rejection 2. See id. at 25. Accordingly, those claims fall
with the claim from which they depend. See 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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