Kuraray America, Inc.

Patent Trials and Appeals Board

Jan 18, 2022

2021000671 (P.T.A.B. Jan. 18, 2022)

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. 15/796,192 10/27/2017 James OLSON 508293US 4738 22850 7590 01/18/2022 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER GUO, TONG ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 01/18/2022 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES OLSON, RUTGER D. PUTS, and STEVEN M. HANSEN Appeal 2021-000671 Application 15/796,192 Technology Center 1700 Before GEORGE C. BEST, BRIAN D. RANGE, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-12, 14-16, and 18-20 of Application 15/796,192, which constitute all the claims pending in this application See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). 1 In our Decision, we refer to the Specification (“Spec.”) of Application 15/796,192 filed Oct. 27, 2017 (“the ’192 App.”); the Final Office Action dated Dec. 27, 2019 (“Final Act.”); the Appeal Brief filed May 19, 2020 (“Appeal Br.”); and the Examiner’s Answer dated Sept. 3, 2020 (“Ans.”). Appellant did not file a Reply Brief. 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Kuraray America, Inc. as the real party in interest. Appeal Br. 1. Appeal 2021-000671 Application 15/796,192 2 For the reasons set forth below, we AFFIRM. BACKGROUND The subject matter of the invention relates to a partially- or fully- wedge-shaped multilayer interlayer based on a combination of an integrated multilayer sheet with an interior layer and a separate wedge-shaped film. Spec. ¶ 2. According to the Applicant, the invention results in an interlayer with fewer overall defects that can be made in a more convenient and consistent manner with less waste. Id. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief, illustrates the claimed subject matter: 1. A multilayer interlayer comprising: (l) an integrated multilayer sheet having a length, a width and a total thickness, comprising: (a) a first skin layer A which is a layer of a first thermoplastic resin optionally containing one or more additives, the first skin layer having an exterior side, an interior side and a first thickness, (b) a second skin layer C which is a layer of a second thermoplastic resin optionally containing one or more additives, the second skin layer having an exterior side, an interior side and a second thickness, and (c) an interior layer B which is a layer of a third thermoplastic resin optionally containing one or more additives, the interior layer B being disposed between the interior side of first skin layer A and the interior side of second skin layer C and having a third thickness, wherein each of the third thickness and the total thickness is individually substantially consistent throughout the length and width of the integrated multilayer sheet; and Appeal 2021-000671 Application 15/796,192 3 (2) a wedge-shaped film of a fourth thermoplastic resin optionally containing one or more additives, the wedge-shaped film having an exterior side and an interior side, wherein the interior side of the wedge-shaped film is adhered directly or indirectly to the exterior side of first skin layer A, wherein the multilayer interlayer is wedge-shaped having a thicker first edge and a thinner second edge, wherein the thicker first edge has a thickness of about 1850 μm or less, wherein the thinner second edge has a thickness of about 600 μm or more, wherein the integrated multilayer sheet forms the predominant portion of the thickness at the thinner second edge, wherein the third thickness is less than the first thickness and the second thickness, and wherein the co-extruded integrated multilayer sheet forms the predominant portion of the thickness at both the thicker first edge and thinner second edge. REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Name Reference Date Hayes et al. (“Hayes”) US 2008/0280076 A1 Nov. 13, 2008 Miyai US 2009/0294212 A1 Dec. 3, 2009 Tsuchiya et al. (“Tsuchiya”) US 2015/0202854 A1 July 23, 2015 REJECTIONS The Examiner maintains the following rejections under 35 U.S.C. § 103: 1. Claims 1-4, 6-12, 14-16, 18, and 19 as obvious over Miyai. Final Act. 2-9. 2. Claim 5 as obvious over Miyai in view of Hayes. Id. at 9-10. Appeal 2021-000671 Application 15/796,192 4 3. Claim 20 as obvious over Miyai in view of Tsuchiya. Id. at 10- 11. DISCUSSION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), (cited with approval in 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 [E]xaminer’s rejections.”). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Rejection of claims 1-4, 6-12, 14-16, 18, and 19 as unpatentable over Miyai Appellant does not present specific arguments for reversal of the rejection of any specific claim subject to this rejection. See Appeal Br. 7-9. We select claim 1 as representative of the claims subject to this ground of rejection and limit our discussion accordingly. 37 C.F.R. § 41.37(c)(1)(iv) (2019). Appellant provides an annotated version of Figure 6 of the ’192 Application, reproduced below from the Appeal Brief: Appeal 2021-000671 Application 15/796,192 5 Figure 6 is an embodiment of a wedge-shaped multilayer laminate (“partial wedge”) in accordance with the claimed invention. Spec. ¶ 52. “A” and “C” are a first and second skin layer having thicknesses t1 and t2, respectively. Id., ¶¶ 80-84; Appeal Br. 7. “B” is interior layer having thickness t3. Spec. ¶ 85; Appeal Br. 7. “WSF” is a wedge-shaped film having a thicker first edge (ta) and a thinner second edge (tb). Spec. ¶ 87; Appeal Br. 7. “T1” is the thickness of WSF+A+B+C = t1+t2+t3+ta at the thicker edge, and “T2” is the thickness of WSF+A+B+C = t1+t2+t3+tb at the thinner edge. Appeal Br. 7. Appellant argues that the rejection is based on Miyai’s Figure 4 in which protection layers flank a sound-insulating layer, and includes a shape- assisting layer, which is said to be the wedge-shaped film of the claimed invention. Id. at 8. Miyai’s Figure 4 is reproduced below: Appeal 2021-000671 Application 15/796,192 6 Miyai’s Figure 4 is a cross-sectional view of an embodiment of Mayai’s interlayer film. Sound-insulating layer 2 with a rectangular cross- sectional shape is sandwiched between protection layers 1 with shape- assisting layer 3 laminated on the surface of one of the protection layers. Miyai ¶ 59. Appellant argues that Miyai merely provides general thickness ranges for the sound-insulating layer and the overall thickness of the interlayer film, and makes general statements about adjusting various dimensions to achieve the proper wedge shape. Appeal Br. 8. Appellant argues that Miyai’s disclosure is insufficient to lead a skilled artisan to the specific construct claimed, which requires at least six different conditions be met. Id. at 9. Relying on Figure 4, Appellant argues that “it appears that the ‘third thickness’ (i.e., the thickness of layer 2 vs. layers l) needs to be greater than the first and second thicknesses,” and the shape assisting layer “looks to be thicker than the rest at the thick edge.” Id. Appellant also argues that Miyai teaches away from the claimed invention. Id. at 9-12. In support, Appellant argues that the embodiment in Figure 4 is “less preferred” by Miyai. Id. Appellant argues that Miyai’s examples do not meet the claim requirement that the integrated multilayer sheet forms the predominant portion of the thickness at both the thicker first Appeal 2021-000671 Application 15/796,192 7 edge and the thinner second edge (i.e., the examples do not show (t1 + t2 + t3) > ta as in annotated Figure 6, supra). Id. at 11. Appellant points to Miyai’s Comparative Example 8 as being closest to meeting the requirement, but having an unsatisfactory double image. Id.at 11. Appellant’s arguments are unpersuasive of reversible error. First, Appellant’s focus on Miyai’s Figure 4 ignores the reference’s broader disclosure. Figure 4 illustrates Miyai’s layer structure, but nothing in Miyai suggests that Figure 4 is drawn to scale or that the invention is limited to proportions represented in the figures. Thus, Appellant’s statements that “looking at Fig. 4, it appears that the ‘third thickness’ . . . needs to be greater than the first and second thicknesses” and the shape assisting layer “looks to be thicker than the rest at the thick edge” (see Appeal Br. 9) are conjecture. Drawings in a patent application or patent ordinarily illustrate the principles embodied in the invention claimed therein. In re Olson, 212 F.2d 590, 592 (CCPA 1954). “[P]atent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000). Drawings teach all that they reasonably disclose and suggest to a person of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (“[A] drawing in a utility patent can be cited against the claims of a utility patent application even though the feature shown in the drawing was unintended or unexplained in the specification of the reference patent.”). “Description for the purposes of anticipation can be by drawings alone as well as by words.” In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (quoting In re Bager, 47 Appeal 2021-000671 Application 15/796,192 8 F.2d 951, 953 (CCPA 1931). Here, Miyai’s Figure 4 suggests a multilayered interlayer. Miyai teaches a range of thicknesses for a thicker first edge and a thinner second edge that overlap the ranges claimed. Miyai ¶ 9. Miyai also teaches that the thicknesses of the protection layers and of the shape- assisting layer may be adjusted. Id., ¶¶ 40, 50. Miyai teaches that the thickness of the sound-insulating layer is a result effective variable. Id., ¶ 13 (teaching that sound-insulating properties are dependent on thickness). Our reviewing court and its predecessor have recognized for decades “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955); see also, e.g., In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Second, we disagree with Appellant’s teaching away argument. “Whether or not a reference teaches away from a claimed invention is a question of fact.” In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995)). Appellant contends that Figure 4 shows a “less preferred” embodiment of Miyai’s invention. Appeal Br. 9. However, Miyai only states that “the interlayer film . . . shown in Fig. 2 is preferably [sic] since it has an excellent defoaming property of generating no foam at the time of producing a laminated glass.” Miyai, ¶ 60. At most, the Figure 2 embodiment is preferred under a specified circumstance. “A reference that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claimed invention does not teach away.” Appeal 2021-000671 Application 15/796,192 9 Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (quoting Galderma Labs. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)). Miyai’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed by Appellant. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant’s argument that Miyai’s examples do not meet all conditions of the claims fails to shore up its teaching away position. See Appeal Br. 9-11. “[A] reference is not limited to the disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972). Disclosed examples do not constitute a teaching away from a broader disclosure. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). 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. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). On the record before us, Miyai does not teach away the claimed invention. For the reasons above, we sustain the rejection of claim 1 as obvious over Miyai. For the same reasons, we sustain the rejection of claims 2-4, 6- 12, 14-16, 18, and 19 over Miyai. Rejection of claim 5 as unpatentable over Miyai in view of Hayes Appellant argues, “Hayes does not discloses the structural arrangement of the presently claimed invention nor does this reference provide any disclosure or suggestion that would overcome the aforementioned deficiencies in the disclosure of Miyai.” Appeal Br. 12. Appeal 2021-000671 Application 15/796,192 10 Having found no deficiencies in Miyai, we sustain the rejection of claim 5 over Miyai in view of Hayes. Rejection of claim 20 as unpatentable over Miyai in view of Tsuchiya Similar to claim 5, for claim 20 Appellant argues, “Tsuchiya does not discloses the structural arrangement of the presently claimed invention nor does this reference provide any disclosure or suggestion that would overcome the aforementioned deficiencies in the disclosure of Miyai.” Id. at 13. Having found no deficiencies in Miyai, we sustain the rejection of claim 20 over Miyai in view of Tsuchiya. CONCLUSION The Examiner’s rejections are sustained. More specifically, Appeal 2021-000671 Application 15/796,192 11 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 6-12, 14-16, 18, 19 103 Miyai 1-4, 6- 12, 14- 16, 18, 19 5 103 Miyai, Hayes 5 20 103 Miyai, Tsuchiya 20 Overall Outcome 1-12, 14- 16, 18-20 TIME PERIOD FOR RESPONSE 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