Thomas P. Hedblom

Patent Trials and Appeals Board

Jul 17, 2019

13990292 - (D) (P.T.A.B. Jul. 17, 2019)

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.
13/990,292 09/25/2013 Thomas P. Hedblom 67037US004 3994
32692 7590 07/17/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
BUIE-HATCHER, NICOLE M
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
07/17/2019 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 THOMAS P. HEDBLOM
____________

Appeal 2018-008290
Application 13/990,292
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MONTÉ T. SQUIRE, and
SHELDON M. MCGEE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

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The Applicant1 (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Primary Examiner’s final decision to reject claims 1–6, 19, 20, and 23–
27.2, 3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
I. BACKGROUND
The subject matter on appeal relates to a pavement marking
composition (Specification filed May 29, 2013 (“Spec.”), ¶ 1).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A pavement marking composition, comprising:
a non-crosslinked elastomeric material;
a thermoplastic reinforcing polymer;
wherein the pavement marking composite lacks a
reinforcing material selected from the group consisting of
ceramic fibers, asbestos, silicon dioxide, talc, and polyester
fibers, mica and magnesium silicate.
(Supp. Appeal Br. 9 (emphasis added)).

1 The Applicant is listed as “3M INNOVATIVE PROPERTIES
COMPANY” (Application Data Sheet filed May 29, 2013, 4). According to
the Appeal Brief, the real parties in interest are “3M Company . . . and its
affiliate 3M Innovative Properties Company” (Appeal Brief filed March 21,
2018 (“Appeal Br.”), 3).
2 Appeal Br. 4–8; Reply Brief filed August 14, 2018 (“Reply Br.”), 6–7 (not
paginated); Final Office Action entered October 25, 2017 (“Final Act.”), 2–
8; Examiner’s Answer entered June 15, 2018 (“Ans.”), 3–9.
3 Claims 7–18, 21, and 22 were included in the Claims Appendix to the
Appeal Brief (Supplemental Appeal Brief filed April 23, 2018 (“Supp.
Appeal Br.”), 9–11), but these claims were previously withdrawn from
further consideration (Final Act. 2; Appeal Br. 3).
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II. REJECTIONS ON APPEAL4
The claims on appeal stand rejected as follows:
A. Claims 1–6, 19, 20, and 23–27 under 35 U.S.C. § 112, ¶ 1, as
failing to comply with the written description requirement;
B. Claims 1, 2, 4–6, 19, 20, and 23–275 under 35 U.S.C. § 103(a) as
unpatentable over Jordan6 and Helland et al.7 (“Helland”); and
C. Claim 3 under 35 U.S.C. § 103(a) as unpatentable over Jordan,
Helland, and Thomsen.8
(Ans. 3–9; Final Act. 2–8).
III. DISCUSSION
Rejection A. This rejection was entered in the Final Action following
an amendment to claim 1 (Final Act. 2–3; Amendment filed August 17,
2017, 3). The Appellant, however, does not acknowledge—let alone contest
on the merits—the rejection in the Appeal Brief (Appeal Br. 3–8).9

4 The Examiner states that a rejection under 35 U.S.C. § 102(b) of claims 1,
20, and 24 as anticipated by Uchiyama et al. (EP 0 601 790 A1, published
June 15, 1994) has been withdrawn (Ans. 6).
5 The Examiner states that claims 1, 2, and 4–27 are rejected on this ground
(Ans. 3; Final Act. 5). As we noted above, however, claims 7–18, 21, and
22 were previously withdrawn from further consideration.
6 US 4,490,432, issued December 25, 1984.
7 US 2003/0069358 A1, published April 10, 2003.
8 WO 01/42349 A1, published June 14, 2001.
9 The Appellant attempts to address this rejection in the Reply Brief by
characterizing the rejection as a “NEW GROUNDS OF REJECTION”
(Reply Br. 6). This is inappropriate because the Examiner’s Answer does
not contain any new ground of rejection (Ans. 3–9), and, absent a showing
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Therefore, we summarily sustain the rejection. Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) (“In the event of . . . a waiver, the [Board] may
affirm the rejection . . . without considering the merits.”).
Rejections B & C. The Appellant’s arguments against these
rejections focus solely on claim 1 (Appeal Br. 6–8). Therefore, consistent
with 37 C.F.R. § 41.37(c)(1)(iv), we limit our discussion to representative
claim 1.
The Examiner finds that Jordan describes a pavement marking
composition including a non-crosslinked elastomer precursor, a
thermoplastic reinforcing polymer, and a particulate inorganic filler
dispersed in the composition (Ans. 3). The Examiner acknowledges that
“Jordan does not disclose the pavement marking composition lacks a
reinforcing material selected from the group consisting of ceramic fibers,
asbestos, silicon dioxide, talc, polyester fibers, mica, and magnesium
silicate” as required by claim 1 (id. at 4). The Examiner finds, however, that
Helland teaches magnetite particles, such as strontium platelet fillers, may
be used as fillers in pavement marking compositions (id.). Based on these
findings, the Examiner concludes:
It would have been obvious to one of ordinary skill in the art at
the time of invention to substitute the platelet fillers per the
teachings of Jordan with the magnetite particles such as
strontrium [sic] platelet fillers per the teachings of Helland et al.,
and the motivation to do so would have been as Helland et al.
suggests such platelets become aligned in a north south
orientation such that high magnetic strength can be achieved for
magnetic lane awareness markings [0019].

of good cause, new arguments in a Reply Brief are not permitted. 37 C.F.R.
§ 41.41(b)(2).
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(Id.).
The Appellant contends that Jordan and Helland do not disclose or
suggest the disputed negative limitations highlighted in reproduced claim 1
above (Appeal Br. 6). According to the Appellant, Jordan requires
particulate inorganic fillers (id. at 6–7). Regarding Helland, the Appellant
argues that it does not cure the perceived deficiency in Jordan because
Helland teaches pavement marking compositions containing polyester fibers,
which are excluded from claim 1 (id. at 7). The Appellant argues that “there
is no impetus to provide a pavement marking composition that ‘lacks a
reinforcing material selected from the group consisting of ceramic fibers,
asbestos, silicon dioxide, talc, and polyester fibers’” as required by claim 1
(id. at 8). Additionally, the Appellant alleges that “[f]ormation of a
pavement marking composition having improved resistance to flattening at
high temperature, increased flexibility at low temperature, and similar
downweb and crossweb tensile strengths while lacking a reinforcing material
was first discovered by the [I]nventors” (id.).
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
We start with claim construction. In re Paulsen, 30 F.3d 1475, 1479
(Fed. Cir. 1994) (“[T]o properly compare [the prior art reference] with the
claims at issue, we must construe the [disputed limitation] to ascertain its
scope and meaning.”).
Claim 1’s negative limitation (“the pavement marking composition
lacks a reinforcing material selected from the group consisting of ceramic
fibers, asbestos, silicon dioxide, talc, and polyester fibers, mica and
magnesium silicate”) excludes only the reinforcing materials specified in the
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Markush group. As the Examiner correctly concludes, “[t]he instant claims
do not exclude all particulate inorganic fillers” (Ans. 8). Indeed, as the
Examiner finds (id.), the current Specification reasonably informs one
skilled in the relevant art that fillers (other than the species identified in the
exclusionary language of claim 1) may be included in the claimed pavement
marking composition (Spec. ¶ 16). Because the Markush group does not
recite strontium platelet fillers, the claimed pavement marking composition
fails to exclude such strontium platelet fillers. Having construed claim 1, we
consider the prior art teachings below.
Jordan describes a pavement-marking sheet material comprising a
non-crosslinked elastomeric precursor such as acrylonitrile-butadiene
polymer, a thermoplastic polymer such as polyethylene that reinforces the
sheet material (e.g., by orientation of the thermoplastic polymer so that the
calendered product exhibits greater tensile strength downweb than
crossweb), and a particulate inorganic filler, which preferably includes
platelet-type fillers such as talc, mica, or magnesium silicate (Jordan,
Abstract; col. 1, ll. 35–45), which are excluded from claim 1’s scope.
Although Jordan states that the filler component “preferably includes
platelet-type fillers such as talc, mica, or magnesium silicate” (id., Abstract
(emphases added)), a person having ordinary skill in the art would have
understood that Jordan’s disclosure is not limited to talc, mica, or
magnesium silicate. Indeed, Jordan’s disclosure would have suggested to a
person having ordinary skill in the art that other platelet-type fillers that
impart properties such as reinforcement, extending, surface hardness, and
abrasion resistance would also be suitable (id., col. 3, ll. 4–26).
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Helland discloses a thermoplastic pavement marking composition
comprising synthetic polymeric fibers (Helland, Abstract). Although
Helland identifies polyesters as one suitable material for the synthetic
polymeric fibers, other suitable polymers such as polyolefins are also
disclosed (id. ¶ 14). Furthermore, Helland teaches that fillers, such as
platelet fillers, may be included not only to enhance visibility of the exposed
top layer of the marking composition, but also to enhance properties such as
reinforcement, extending, surface hardness, and abrasion resistance (id.
¶ 19)—the same filler properties of interest in Jordan. Helland teaches that
strontium platelet fillers are interchangeable with other fillers such as
magnesium silicate, talc, or mica (id.).
Given the collective teachings in the prior art references, we detect no
reversible error in the Examiner’s reasoned conclusion that a person having
ordinary skill in the art would have been prompted to substitute Jordan’s
platelet-type talc, mica, or magnesium silicate fillers with Helland’s
strontium platelet fillers with a reasonable expectation that these materials
would be interchangeable for the purposes described in Jordan as well as
Helland. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[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.”); Wm. Wrigley
Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364–65 (Fed. Cir.
2012) (explaining that a “strong case of obviousness” exists where the
combination of ingredients recited in the claims were based on selections
from a finite number of identified, predictable solutions).
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As a final point, we find that the Appellant’s allegation of improved
properties (Appeal Br. 8) lacks persuasive merit because the Appellant does
not direct us to any persuasive objective evidence of unexpected results over
the cited prior art references. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997).
For these reasons and those given by the Examiner, we uphold the
Examiner’s rejections.
IV. SUMMARY
Rejections A through C are sustained. Therefore, the Examiner’s final
decision to reject claims 1–6, 19, 20, and 23–27 is affirmed.
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