Guido Hitschmann et al.

Patent Trials and Appeals BoardJan 29, 2021

2020000823 (P.T.A.B. Jan. 29, 2021)

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. 13/522,363 08/29/2012 Guido Hitschmann 65222US004 2772 32692 7590 01/29/2021 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER DAGENAIS-ENGLEHA, KRISTEN A ART UNIT PAPER NUMBER 1717 NOTIFICATION DATE DELIVERY MODE 01/29/2021 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUIDO HITSCHMANN, STEFFEN TRASER, JAN D. FORSTER, and BERND KUEHNEWEG Appeal 2020-000823 Application 13/522,363 Technology Center 1700 Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and JANE E. INGLESE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 6, 8–12, 14–16, 24, and 27. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as 3M Company. Appeal Br. 2. Appeal 2020-000823 Application 13/522,363 2 CLAIMED SUBJECT MATTER The claims are directed to a continuous process for forming a multilayer film. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A process of forming a multilayer film comprising at least two superimposed polymer layers comprising the steps of: (i) providing a substrate; (ii) providing two or more coating knives which are offset, independently changeable and adjustable from each other, from said substrate to form two or more independently adjustable gaps normal to the surface of the substrate, the coating knives forming one or more coating chambers abutting each other; (iii) moving the substrate relative to the coating knives in a downstream direction; (iv) providing two or more curable liquid precursors of the polymers to the upstream side of the coating knives thereby coating the two or more curable liquid precursors through the respective gaps as superimposed layers onto the substrate, wherein the coating knives are arranged such that a lower layer and an adjacent upper layer of the two or more curable liquid precursors are simultaneously formed, and the lower layer is directly covered by the adjacent upper layer when the layers are formed without exposing an upper surface of the lower layer and an adjacent surface of the upper layer; and (v) curing the precursors of the multilayer film thus obtained, wherein the process is a continuous self-metered process, a volume flow rate of the continuous self-metered process is variable with a substrate speed, and the process is not a pre- metered process in which the volume flow rate of the curable liquid precursors is predetermined by a fluid metering device and not variable with the substrate speed, wherein the liquid precursors of the polymers are provided in the coating chambers, being bordered in downstream direction by at least one of a front wall, one or more intermediate walls, Appeal 2020-000823 Application 13/522,363 3 and a back wall, and a rolling bead is positioned upstream relative to the front wall, and wherein a solid film is applied along an upstream surface of the back wall, extends through a most downstream coating chamber, and is attached to an upper surface of a top layer of the liquid precursors of the multilayer film simultaneously with the formation of the top layer. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Zimmerman US 4,818,610 Apr. 4, 1989 Kustermann US 5,078,081 Jan. 7, 1992 Kulper US 2007/0173156 A1 July 26, 2007 Tkacik US 2008/0004205 A1 Jan. 3, 2008 REJECTIONS Claims 1, 6, 8–12, 14–162 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined prior art of Zimmerman and Tkacik. Final Act. 3. Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined prior art of Zimmerman, Tkacik, and Kulper. Final Act. 7. 2 We consider it harmless error that the Examiner inadvertently omitted claim 16 from the statement of this rejection (compare Final Act. 3 to Final Act. 7 that explicitly refers to claim 16). Appeal 2020-000823 Application 13/522,363 4 Claim 273 is rejected 35 U.S.C. § 103(a) as being unpatentable over the combined prior art of Zimmerman, Tkacik, and Kustermann. Final Act. 8. OPINION After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant to identify the alleged error in the Examiner’s rejection). We sustain the Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellant’s main argument is that there is no reason to modify Zimmermann’s method using sequentially cast layers onto a moving base layer substrate and instead use a co-casting method to form these layers such as exemplified in Tkacik (Appeal Br. 4–6). Appellant also argues that Tkacik teaches away from sequentially cast layers, and would render Zimmerman unsatisfactory for its intended purpose (Appeal Br. 6; Reply Br. 2). Appellant’s arguments are not persuasive of reversible error for reasons presented by the Examiner (Ans. 9–13). 3 We consider it harmless error that the Examiner inadvertently stated claim 24 instead of claim 27 in the statement of this rejection (compare Final Act. 8 to Final Act. 9 that explicitly refers to claim 27). Appeal 2020-000823 Application 13/522,363 5 It is well established that a prior art reference must be considered in its entirety, i.e., as a whole, when determining if it would lead one of ordinary skill in the art away from the claimed invention. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983); In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (whether a reference teaches away from a claimed invention is a question of fact). One of ordinary skill in the art would have inferred and readily appreciated that a known co-casting technique, such as taught in Tkacik to be an alternative to the sequential casting technique of Zimmerman, may be useful in making the multilayer pressure sensitive adhesive tape of Zimmerman (e.g., Ans. 5, ). Indeed, Tkacik explicitly discusses that a multilayer structure may be formed by either co-casting or sequentially cast layers (Tkacik, e.g., ¶¶ 51, 58). Thus, an artisan of ordinary skill would have weighed the advantages and disadvantages of these two known techniques. “The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). Likewise, Appellant’s argument that any modification based on Tkacik “renders Zimmerman unsatisfactory for its intended purpose” (Appeal Br. 6; Reply Br. 2) is also unpersuasive for the reasons given above, mainly that co-casting and sequential casting are known (alternative) methods to form multilayered products and the use of either one (or both) methods would have been within the ordinary skill in the art. That is, the Appeal 2020-000823 Application 13/522,363 6 arguments fail to account for “the inferences and creative steps that a person of ordinary skill in the art would employ.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Thus, Appellant has not shown reversible error in the Examiner’s obviousness determination of the claimed method. See KSR, 550 U.S. at 417 (the predictable use of known prior art elements or steps performing the same functions they have been known to perform is normally obvious; the combination of familiar elements/steps is likely to be obvious when it does no more than yield predictable results); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” as well as routine steps, that an ordinary artisan would employ) (emphasis omitted). Accordingly, we sustain the Examiner’s rejection of independent claim 1, as well as all claims dependent thereon, noting that no claims are separately argued, even those separately rejected (Appeal Br. generally). Thus the Examiner’s § 103 rejections of claims 24 and 27 are likewise sustained. CONCLUSION The Examiner’s § 103 rejections are affirmed. Appeal 2020-000823 Application 13/522,363 7 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6, 8–12, 14–16 103(a) Zimmerman, Tkacik 1, 6, 8–12, 14–16 24 103(a) Zimmerman, Tkacik, Kulper 24 27 103(a) Zimmerman, Tkacik, Kustermann 27 Overall Outcome 1, 6, 8–12, 14–16, 24, 27 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED