Solutia Inc.

Patent Trials and Appeals Board

Aug 26, 2021

2020004473 (P.T.A.B. Aug. 26, 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.
15/407,385 01/17/2017 Vincent J. Yacovone 85421US03 6625
66024 7590 08/26/2021
EASTMAN CHEMICAL COMPANY
200 SOUTH WILCOX DRIVE
KINGSPORT, TN 37660-5147
EXAMINER
JOHNSON, NANCY ROSENBERG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/26/2021 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):
estiltner@eastman.com
jlmcglothlin@eastman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VINCENT J. YACOVONE
Appeal 2020-004473
Application 15/407,385
Technology Center 1700
Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, 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 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Solutia Inc., a
subsidiary of Eastman Chemical Company. Appeal Br. 3.
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Application 15/407,385

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CLAIMED SUBJECT MATTER
The claims are directed to embossed polymer interlayers for multiple
layer glass panels. Spec. ¶ 2.
Claims 1, 10, and 17 are independent claims. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An embossed polymer interlayer sheet comprising: a first
side; a second side opposing the first side; and an embossed
surface on at least one of the sides, wherein the embossed
polymer interlayer sheet has a high frequency semi-isotropic
surface having a surface texture ratio, Str, (as measured per ISO
25178) of between 0.2 and 0.99, a surface roughness, Sz, of from
greater than about 10 to less than about 85 microns, and at least
50 roughness peaks per centimeter (R PC, as measured per
ASME B46.1 (1985)).
Br. 20 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Endo US 4,925,725 May 15, 1990
Choi US 2003/0012964 A1 Jan. 16, 2003
Smith US 2006/0141212 A1 June 29, 2006
Hopfe US 5,425,977 June 20, 1995
Yacovone US 2006/0188695 A1 Aug. 24, 2006

REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1–5, 9–11, 13, 14, and 16 under 35 U.S.C. § 103 as
unpatentable over Endo, Choi, and Smith. Final Act. 2–7.
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2. Claims 6 and 12 under 35 U.S.C. § 103 as being unpatentable
over Endo, Choi, Smith, and Hopfe. Id. at 7–8.
3. Claims 7, 8, and 15 under 35 U.S.C. § 103 as being
unpatentable over Endo, Choi, Smith, and Yacovone. Id. at 8–9.
4. Claims 17 and 19 under 35 U.S.C. § 103 as being unpatentable
over Endo, Choi, Smith, and Hopfe. Id. at 9–12.
5. Claims 18 and 20 under 35 U.S.C. § 103 as being unpatentable
over Endo, Choi, Smith, Hopfe, and Yacovone. Id. at 12–13.
6. Claims 1–20 on the ground of nonstatutory double patenting as
being unpatentable over claims 11–18 of U.S. Patent No. 9,574,028. Id. at
13–16.
OPINION
Rejection 1
The Examiner finds the term “embossed” is a product-by-process
limitation. Final Act. 2. The Examiner further finds that Endo discloses
embossing a polymer interlayer so the interlayer includes coarse raised and
depressed portions and fine raised and depressed portions. Id. at 2–3. The
Examiner finds Endo discloses an average distance between two adjacent
coarse depressed or raised portions is 2 to 10 times the 10-point average
roughness and that the embossed surface is semi-isotropic because it
includes coarse raised and depressed portions arranged regularly and fine
raised and depressed portions arranged irregularly. Id. at 3.
The Examiner finds that Endo does not specifically disclose a surface
texture ratio (Str) value for its interlayer, but that its surface is semi-isotropic
due to its regular and irregular structures. Id. The Examiner also finds that
Choi discloses a polymer laminate that is roughened with a random
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directional pattern so its film has low haze and channels that facilitate de-
airing. Id. The Examiner concludes it would have been obvious to design
Endo’s coarse raised and depressed portions to a desired level of irregularity
and directionality so haze is reduced and de-airing is facilitated, as Choi
teaches, and provide a surface texture ratio (Str) value within the claimed
range. Id. at 3–4.
The Examiner finds that Endo does not specifically disclose a number
of peaks per centimeter for its interlayer, but rather discloses the average
distance between two adjacent raised or depressed portions being 100 to 500
microns and 60 to 100 microns for fine raised and depressed portions. Id. at
4. The Examiner determines that if the average distance between peaks is
100 microns, the number of peaks per centimeter is about 100. Id. The
Examiner further concludes it would have been obvious to optimize this
value. Id.
With regard to the claimed surface roughness (Sz) value, the
Examiner finds that Endo and Choi disclose Rz values2 but do not disclose
an Sz value for an interlayer. Id. The Examiner finds Smith discloses
thermoplastic interlayers having ARt values (a difference in elevation
between the highest peak and lowest valley in a roughness profile that
corresponds to Sz) of less than 32 microns. Id. The Examiner concludes it
would have been obvious to modify Endo and Choi in view of Smith so an
interlayer has an ARt value of less than 32 microns and there is a suitable
path for air to escape during lamination, as Smith teaches. Id. at 5.
Product-by-Process Interpretation

2 Choi teaches that Rz is an expression of surface roughness. Choi ¶ 18.
Smith describes Rz as a “10-point average roughness.” Smith ¶ 28.
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As an initial matter, Appellant disputes the Examiner’s interpretation
of “embossed” as a product-by-process limitation. Specifically, Appellant
argues that the Examiner has failed to examine the claims as written and has
failed to consider all of the claim limitations. Br. 16. Appellant further
contends that the claim limitations describe a product by its structure, imply
a structure or type of structure on the claimed polymer layer, and “there is no
other way to describe the structure of the surface of the product and how it
differs from other surfaces, such as a surface formed by melt fracture
without embossing.” Id. at 16–17.
Appellant’s arguments are unpersuasive. The Examiner’s rejection
addresses each limitation of independent claims 1 and 10, including a
finding that Endo discloses embossing its interlayer.3 Final Act. 2; Ans. 5.
The Examiner further explains why it would have been obvious to modify
Endo in view of Choi, but retain Endo’s embossing operation. Ans. 5.
Appellant does not respond to the Examiner’s explanation.
Further, even if the Examiner cites to a non-embossing process in
Endo’s disclosure (e.g., engraving), Appellant does not identify a reversible
error in the Examiner’s product-by-process interpretation or present
sufficient arguments to meet its burden under this interpretation.
Specifically, the Examiner limits the product-by-process interpretation to
only the term “embossed” and presents a reasonable basis for why Endo’s
structure, as modified in view of Choi and Smith, would have the claimed

3 To the extent the Examiner relies upon operations in Endo’s disclosure
other than embossing, such as engraving or blasting, Appellant has not met
its burden of demonstrating that such operations provide a different
structure, under the Examiner’s product-by-process interpretation of
“embossed,” as explained herein.
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structure. Final Act. 2–5. It is well established that, when a product recited
in product-by-process format reasonably appears to be the same as or
obvious from a product of the prior art, the burden is on the applicant to
show that the prior art product is in fact different from the claimed product,
even though the products may be made by different processes. In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985). Appellant merely argues that the claims
recite a structure that is different from Endo’s without sufficiently
explaining why. Br. 16–17. For these reasons and those that follow, we
agree with the Examiner that Appellant has not met its burden of
demonstrating that Endo’s interlayer, as modified in view of Choi and
Smith, has a different structure than the claimed “embossed” interlayer.
Interpretation of “high frequency” and “semi-isotropic”
Other initial matters regard the limitation “a high frequency semi-
isotropic surface,” specifically the terms “high frequency” and “semi-
isotropic.” Appellant’s Specification states that “[a]s used herein, a surface
having at least 25 roughness peaks (R PC of at least 25) is referred to as a
‘high frequency’ surface.” Spec. ¶ 48. Therefore, Appellant defines “high
frequency” in terms of a roughness peaks per centimeter (R PC) value.
Because claims 1 and 10 require R PC values4 greater than what is defined

4 The claims recite Str and R PC values according to specific standards
recited in parentheses, i.e., “as measured per ISO 25178” and “as measured
per ASME B46.1 (1985).” This use of parentheticals in the claims raises a
question of whether the standards are positive limitations of these product
claims. Should Appellant wish to continue with examination of the claims,
we suggest consideration of whether the claims should recite the standards
without the use of parentheticals.
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for “high frequency,” we consider an interlayer having a value within the
claimed range of R PC values as having a “high frequency” surface.
With regard to a “semi-isotropic” surface, the Specification states that
“[a]s used herein, semi-isotropic means a surface pattern that is neither
completely isotropic nor anisotropic and has a Str value between 0 and 1, or
between 0.1 and 0.99, or even approaching 0.5.” Id. ¶ 53. Claims 1 and 10
require a Str value “between 0.2 and 0.99,” which is narrower than the range
of “between 0 and 1” and falls within the range of “between 0.1 and 0.99”
for Appellant’s definition. Therefore, an interlayer having the Str value
required by claims 1 and 10 is “semi-isotropic.”
Analysis of “semi-isotropic surface” and Claimed Str Value
Turning to Appellant’s arguments, Appellant contends that Endo
discloses forming its coarse raised and depressed portions via engraving and
Endo does not disclose a semi-isotropic pattern because Endo “simply states
or discloses that the surface can be regular or irregular, as desired, and
engraved or blasted, depending on the desired type of raised and depressed
portions.” Br. 11–12. Appellant asserts that “[t]he coarse raised and
depressed portions of Endo do not necessarily create a semi-isotropic surface
and would not necessarily be within the claimed Str range.” Id. at 12–13.
Appellant argues that Endo discloses engraving to provide a surface having a
relatively uniform and stable configuration and Endo “simply states or
discloses that the surface can be regular or irregular, as desired, and
engraved or blasted, depending on the desired type of raised and depressed
portions, and irregular does not necessarily mean semi-isotropic, as
claimed.” Id. at 13.
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Appellant also argues that Choi does not disclose a semi-isotropic
pattern. Specifically, Appellant argues: “Choi is specifically directed to
interlayers that have surfaces formed by melt fracture without embossing”;
“Choi discloses interlayers having directional surface patterns”; and “one
skilled in the art would not combine Endo, which provides an embossed
surface with regular coarse portions, with Choi, which teaches a directional
surface formed by melt fracture since the two methods of providing surface
roughness are very different.” Id. at 12, 15.
Appellant’s arguments are unpersuasive. In response, the Examiner
finds that the claims recite an extremely broad range (apparently for the
surface texture ratio, Str, value) and Endo’s surface is semi-isotropic
because it includes both regular and irregular structures. Ans. 4.
Appellant’s Specification supports this reasoning. Paragraph 50 of the
Specification explains that “[an] Str value of 0 or close to 0 represents a
strongly anisotropic surface and reflects a very regular pattern and a[n] Str
value of 1 or close to 1 represents an isotropic surface and reflects a very
random pattern.” As noted above, Appellant’s definition for “semi-
isotropic” includes Str values between 0 and 1, which is essentially every
type of surface between a strongly anisotropic surface and an isotropic
surface. Appellant’s claimed range for the surface texture ratio, Str, is
somewhat more narrow, but still encompasses the vast majority of this
range.
Paragraph 50 of the Specification further explains that an isotropic
surface “presents identical characteristics regardless of the measurement of
direction,” whereas “an anisotropic surface has patterns or oriented surfaces
that may be described as regular surface patterns.” Endo discloses an
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interlayer for laminated glass that includes a double raised and depressed
pattern that may be produced by an embossing roll method. Endo 1:6–9,
3:61–63. Therefore, Endo’s disclosure supports the Examiner’s finding that
Endo discloses embossing. Endo discloses that its coarse raised and
depressed portions are arranged irregularly but, if desired, may be arranged
regularly. Id. at 2:27–30. Endo further teaches that “the coarse raised
portions may be connected in a long line in one direction to form ridges,” its
raised and depressed portions have a relatively uniform and stable
configuration or roughness and depart deaeratability to the interlayer, and its
fine raised and depressed portions impart an antiblocking property to the
interlayer. Id. at 2:30–32, 4:18–26. Therefore, Endo’s disclosure supports
the Examiner’s finding that Endo’s structure includes a mixture of regular
and irregular structures.
According to Appellant’s explanations that an anisotropic surface is
patterned or is an oriented surface with regular patterns, whereas an isotropic
surface is a random pattern, such a mixture of regular and irregular
structures in Endo’s surface would be neither purely isotropic nor purely
anisotropic but somewhere in between, namely semi-isotropic. With regard
to the specific range of surface texture ratio (Str) values that claims 1 and 10
recite, the Examiner concludes that such a range would have been obvious in
view of Endo’s teachings that its surface structures facilitate de-airing. Ans.
4–5. As noted above, Endo teaches that its coarse structures impart
deaeratability and its fine features impart an antiblocking property. Endo
4:18–26. “[D]iscovery of an optimum value of a result effective variable in
a known process is ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276 (CCPA 1980). Therefore, it would have been obvious to
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modify the arrangement of Endo’s coarse and/or fine structures by
determining workable or optimal de-airing rates and/or antiblocking
performance for an interlayer, as a matter of routine experimentation and
design within the level of the ordinary skill, thus arriving at an arrangement
or configuration within the scope of the claimed Str value.
To the extent Endo alone does not render the claimed Str values
obvious, the Examiner finds that Choi also discloses a mixed structure,
which reduces haze. Final Act. 3; Ans. 4–5. Choi discloses an interlayer
“having a roughened surface with directionality,” such as in a washboard
pattern, that minimizes haze. Choi at code (57), ¶¶ 11, 12. Therefore,
Choi’s disclosure also supports the Examiner’s findings and conclusion that
it would have been obvious to modify Endo’s interlayer in view of Choi,
such as to optimize the interlayer’s structure to minimize haze, and to
provide an interlayer having a semi-isotropic surface with an Str value
falling within the claimed range. The Examiner further explains why one of
ordinary skill in the art would have retained Endo’s embossing operation,
even when modified in view of Choi. Ans. 5.
In addition, although Appellant argues that one of ordinary skill in the
art would not have combined Endo and Choi because they use different
methods to form their surfaces (i.e., embossing and melt fracturing),
Appellant does not sufficiently explain why such differences would have
made the proposed combination non-obvious.
Analysis of Claimed R PC Value
With regard to the claimed roughness peaks per centimeter (R PC)
value, Appellant contends that Endo’s raised and depressed structures do not
necessarily create a surface having the claimed R PC value and “[u]sing the
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test parameters disclosed in Endo and Appellants’ method to calculate or
determine R PC would likely give a result for roughness peaks that would be
considerably lower than that claimed.” Br. 12–13. Appellant asserts that its
method using upper and lower boundaries for determining R PC is different
from taking a distance, such as a centimeter, and using an average distance
between peaks to determine how many peaks occur within that distance, as
the Examiner does, because such peaks do not necessarily occur within a
lower boundary and an upper boundary. Id. at 13–14. Appellant argues that
“Endo does not disclose the number of roughness peaks in the manner used
by Appellants (per ASME B46.1 (1985)) nor does Endo include the fine
raised portions in the calculation.” Id. at 14. Appellant further contends that
the Examiner’s rejection is based upon unfounded assumptions or hindsight
reconstruction and lacks a factual basis. Id. at 17–18.
Appellant’s arguments regarding the claimed R PC value are
unpersuasive. Claims 1 and 10 recite an interlayer having a certain
roughness peaks per centimeter (R PC) value. The Examiner provides a
reasonable basis that Endo’s interlayer has a structure possessing such a
value based on Endo’s disclosure of an average distance between adjacent
raised portions.5 Final Act. 4; Endo 1:66–68. Although Appellant presents
arguments based on upper and lower thresholds and argues Endo would not
provide the claimed R PC value when calculated properly, Appellant does
not demonstrate how Endo’s peaks would be outside any upper and lower

5 In response to Appellant’s arguments, the Examiner notes that the average
distance between Endo’s coarse raised features was used to determine
Endo’s R PC value, but if Endo’s fine raised features were also included in
this calculation, Endo’s R PC value would appear to increase. Ans. 7.
Appellant does not respond to the Examiner’s finding.
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threshold or otherwise provide a different R PC value and Appellant does
not actually present an R PC calculation for Endo’s interlayer structure to
demonstrate it would be outside the claimed range. Therefore, Appellant’s
arguments do not identify reversible error in the Examiner’s determination
of Endo’s R PC value.
Analysis of Claimed Sz Value
Appellant argues that Smith does not disclose a semi-isotropic
surface. Br. 12. As noted above, the Examiner finds that Endo and Choi
disclose semi-isotropic surfaces and explains why it would have been
obvious to modify Endo in view of Choi and retain Endo’s embossing
technique.
Appellant further asserts that Smith discloses a surface pattern that is
regular, diamond shaped, or formed via metal mesh patterns for
unplasticized materials (e.g., ionomers) where a depth of the channels is
shallow. Id. at 15. Appellant contends that surface patterns that are useful
for polyvinyl butyral (PVB) are not necessarily useful for ionomers and vice
versa and one of ordinary skill in the art would not have combined Smith
with Endo because “Endo, Choi and Smith are directed to different
materials, surfaces, patterns and processes.” Id. at 15–16. These arguments
are also unpersuasive because Appellant does not sufficiently explain how
Smith’s teachings regarding PVB relate to Endo’s interlayer, which can be
made of other thermoplastic materials than PVB, in such a manner as to
prevent their combination. See Endo 3:48–54. Other than this reference to
Smith’s teachings regarding PVB, Appellant does not sufficiently explain
how the “different materials, surfaces, patterns and processes” of Endo,
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Choi, and Smith would have rendered the proposed combination non-
obvious for one of ordinary skill in the art.
Appellant also argues the difference between the claimed Sz values
and Endo’s Rz values. Br. 14–15. This argument does not address the
Examiner’s rejection, which relies upon Smith’s disclosure of ARt values to
address the claimed Sz values.
Conclusion
For these reasons, Appellant has not identified reversible error in the
Examiner’s rejection of claims 1 and 10 over Endo, Choi, and Smith.
For dependent claims 2–5, 9, 11, 13, 14, and 16, Appellant argues that
their additional limitations further distinguish over Endo, Choi, and Smith.
Br. 18. These “separate” arguments, however, amount to no more than a
recitation of the additional limitations of the dependent claims and a generic
denial that the references teach or suggest the additional limitations or cure
the deficiencies of the principal references. We, and our reviewing court,
have long held that such “argument” does not merit separate consideration.
See, e.g., In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
Accordingly, we affirm the Examiner’s rejection of claims 1–5, 9–11,
13, 14, and 16 as unpatentable over Endo, Choi, and Smith.

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Rejections 2–5
Appellant presents the same arguments for independent claim 17 as
independent claims 1 and 10. Br. 10–18. Therefore, we affirm the rejection
of independent claim 17 for the reasons discussed above with regard to
Rejection 1.
For dependent claims 6–8, 12, 15, and 17–20, Appellant argues that
their additional limitations further distinguish over Endo, Choi, and Smith,
either alone or in combination with Hopfe and/or Yacovone. Br. 18. As
discussed above with regard to Rejection 1, such “argument” does not merit
separate consideration. See, e.g., In re Lovin, 652 F.3d at 1357.
Accordingly, we affirm the Examiner’s rejections of claims 6–9, 12,
15, and 17–20.

Rejection 6
Appellant acknowledges the non-statutory double patenting rejection
and states that it will file a terminal disclaimer once the remaining rejections
have been overcome. Br. 18. The Examiner states that no terminal
disclaimer has been filed. Ans. 11.
Appellant does not argue the propriety of the double patenting
rejection. We, therefore, summarily affirm the Examiner’s non-statutory
double patenting rejection of claims 1–20.
CONCLUSION
The rejections are affirmed.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–5, 9–11,
13, 14, 16
103 Endo, Choi, Smith 1–5, 9–11,
13, 14, 16

6, 12 103 Endo, Choi, Smith,
Hopfe
6, 12
7, 8, 15 103 Endo, Choi, Smith,
Yacovone
7, 8, 15
17, 19 103 Endo, Choi, Smith,
Hopfe
17, 19
18, 20 103 Endo, Choi, Smith,
Hopfe, Yacovone
18, 20
1–20 Nonstatutory Double
Patenting,
US 9,574,028 B2
1–20
Overall
Outcome

1–20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED