DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites the limitation "at least one color layer of the at least one color layers" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. It is noted that line 1 of claim 8 already recites “at least one color layer” and it is unclear how this earlier recitation relates to the language of lines 3-4. The examiner suggests amending lines 3-4 to recite “the at least one color layer”.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 4 and 7 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Reuther (US 20180215190 A1).
As to claim 1, Reuther discloses a method for producing a decorative foil (”stamping foil”), wherein the method comprises the following steps:
a) providing a carrier film, wherein the carrier film has a thickness in the range of from 3.0 μm to 10.0 μm (paragraph 0080, disclosing “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm.”); and
b) applying an all-over varnish layer to at least one region of at least one surface of the carrier film (paragraph 0082, “has a varnish layer made of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm. The varnish layer can be transparent, translucent or transparently dyed, or opaquely dyed.”), wherein a decorative foil is formed.
See paragraphs 0080-83 and 0131-139, disclosing:
[0080] A base body and/or a stamping foil is preferably used which has a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm. The carrier ply protects and stabilizes the transfer ply during the production, storage and processing of the films. If, during the pre- or full curing of the adhesive, illumination is to be effected from the side of the carrier ply with UV light, the material selection is to be targeted at the corresponding transparency of the carrier ply in the illumination wavelength range.
[0081] It is further expedient if a base body and/or a stamping foil is used the carrier ply of which has a detachment layer made of acrylate copolymer, in particular of an aqueous polyurethane copolymer, and preferably free from wax and/or free from silicone, with a layer thickness of from 0.01 μm to 2 μm, preferably from 0.1 μm to 0.5 μm, which is arranged on a surface of the carrier ply. The detachment layer makes a simple and damage-free detachment of the carrier ply from the transfer ply possible after application thereof to the substrate.
[0082] It is further preferred if a base body and/or a stamping foil is used the transfer ply of which has a varnish layer made of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm. The varnish layer can be transparent, translucent or transparently dyed, or opaquely dyed.
[0083] The varnish layer preferably comprises at least one colorant, in particular colored or achromatic pigments and/or effect pigments, thin-film layer systems, cholesteric liquid crystals, dyes and/or metallic or non-metallic nanoparticles.
…
[0131] FIG. 1 shows a multilayer film 1, which can be used for the decoration of objects, for the application of security elements and the like.
[0132] The multilayer film 1 comprises a carrier ply 11, a detachment layer 12, a protective varnish layer 13, which can itself be multilayered, a decorative ply 14, which can itself be multilayered, a further varnish layer 15 and a primer 16, which can itself be multilayered and acts as an adhesive when the multilayer film is applied to a substrate.
[0133] The carrier ply 11 preferably consists of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm. The carrier ply 11 protects and stabilizes the further plies of the multilayer film 1 during the production, storage and processing of the film.
[0134] The detachment layer 12 is preferably formed from acrylate copolymer, in particular from an aqueous polyurethane copolymer, and preferably free from wax and/or free from silicone, with a layer thickness of from 0.01 μm to 2 μm, preferably from 0.1 μm to 0.5 μm, and arranged on a surface of the carrier ply 11.
[0135] The detachment layer 12 makes a simple and damage-free detachment of the carrier ply 11 from the further layers of the multilayer film 1 possible after application thereof to the substrate.
[0136] The protective varnish layer 13 preferably consists of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm, and is arranged on a surface of the detachment layer 12 facing away from the carrier ply 11. In particular, several layers made of these substance classes can be used.
[0137] The decorative ply 14 can be constructed multilayered. Among other things, the decorative ply 14 can comprise metal layers, layers made of high refractive index (HRI) materials, varnish layers and replication layers in any desired sequence and combination.
[0138] It is preferred if such a varnish layer has made of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm. The varnish layer can be transparent, translucent or transparently dyed, or opaquely dyed.
[0139] The varnish layer preferably comprises at least one colorant, in particular colored or achromatic pigments and/or effect pigments, thin-film layer systems, cholesteric liquid crystals, dyes and/or metallic or non-metallic nanoparticles.
See also claim 1 of Reuther, claiming:
1. A method for producing a multilayer film comprising: a) providing a base body with a carrier ply and a transfer ply, which comprises at least one layer; b) applying a UV curable adhesive to at least one first partial area of the transfer ply of the base body, wherein no adhesive is applied in at least one second partial area of the transfer ply; c) applying a stamping foil which comprises a carrier ply and a transfer ply, with the result that the transfer ply of the stamping foil comes into contact with the adhesive deposited on the transfer ply of the base body in the at least one first partial area; d) curing the adhesive by UV irradiation; e) removing the carrier ply of the stamping foil.
As to claim 1, the range of Reuther reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm” substantially overlap the claimed range of “3.0 μm to 10.0 μm”, and therefore, under MPEP 2131.03, disclose the claimed range with “sufficient specificity”. See MPEP 2131.03 II, reciting:
When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
As to claim 2, Reuther discloses wherein the all-over varnish layer in step b) has a thickness in the range of from 1.0 μm to 2.5 μm. See paragraph 0082, disclosing “a varnish layer made of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm”
As to claim 4, Reuther discloses wherein the all-over varnish layer in step b) has at least one detachment layer and/or at least one protective varnish layer and/or at least one decorative layer and/or at least one primer layer and/or at least one adhesive layer and/or at least one color layer.
See paragraph 0132, disclosing:
[0132] The multilayer film 1 comprises a carrier ply 11, a detachment layer 12, a protective varnish layer 13, which can itself be multilayered, a decorative ply 14, which can itself be multilayered, a further varnish layer 15 and a primer 16, which can itself be multilayered and acts as an adhesive when the multilayer film is applied to a substrate.
As to claim 7, Reuther discloses a method for decorating a target substrate, wherein the method comprises the following steps: a) providing a decorative foil (“stamping foil”) comprising a carrier film (carrier ply 11) and an all-over varnish layer (protective varnish layer 13, further varnish layer 15), wherein the carrier film has a thickness in the range of from 3.0 μm to 10.0 μm (“a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm.”; see the rejection of claim 1 above);
b) providing a target substrate; and c) applying the decorative foil to the target substrate (“or alternatively or additionally can apply the stamping foil to the substrate”).
For step a), See paragraphs 0080-83 and 0131-139, disclosing:
[0080] A base body and/or a stamping foil is preferably used which has a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm. The carrier ply protects and stabilizes the transfer ply during the production, storage and processing of the films. If, during the pre- or full curing of the adhesive, illumination is to be effected from the side of the carrier ply with UV light, the material selection is to be targeted at the corresponding transparency of the carrier ply in the illumination wavelength range.
[0081] It is further expedient if a base body and/or a stamping foil is used the carrier ply of which has a detachment layer made of acrylate copolymer, in particular of an aqueous polyurethane copolymer, and preferably free from wax and/or free from silicone, with a layer thickness of from 0.01 μm to 2 μm, preferably from 0.1 μm to 0.5 μm, which is arranged on a surface of the carrier ply. The detachment layer makes a simple and damage-free detachment of the carrier ply from the transfer ply possible after application thereof to the substrate.
[0082] It is further preferred if a base body and/or a stamping foil is used the transfer ply of which has a varnish layer made of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm. The varnish layer can be transparent, translucent or transparently dyed, or opaquely dyed.
[0083] The varnish layer preferably comprises at least one colorant, in particular colored or achromatic pigments and/or effect pigments, thin-film layer systems, cholesteric liquid crystals, dyes and/or metallic or non-metallic nanoparticles.
…
[0131] FIG. 1 shows a multilayer film 1, which can be used for the decoration of objects, for the application of security elements and the like.
[0132] The multilayer film 1 comprises a carrier ply 11, a detachment layer 12, a protective varnish layer 13, which can itself be multilayered, a decorative ply 14, which can itself be multilayered, a further varnish layer 15 and a primer 16, which can itself be multilayered and acts as an adhesive when the multilayer film is applied to a substrate.
[0133] The carrier ply 11 preferably consists of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm. The carrier ply 11 protects and stabilizes the further plies of the multilayer film 1 during the production, storage and processing of the film.
[0134] The detachment layer 12 is preferably formed from acrylate copolymer, in particular from an aqueous polyurethane copolymer, and preferably free from wax and/or free from silicone, with a layer thickness of from 0.01 μm to 2 μm, preferably from 0.1 μm to 0.5 μm, and arranged on a surface of the carrier ply 11.
[0135] The detachment layer 12 makes a simple and damage-free detachment of the carrier ply 11 from the further layers of the multilayer film 1 possible after application thereof to the substrate.
[0136] The protective varnish layer 13 preferably consists of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm, and is arranged on a surface of the detachment layer 12 facing away from the carrier ply 11. In particular, several layers made of these substance classes can be used.
[0137] The decorative ply 14 can be constructed multilayered. Among other things, the decorative ply 14 can comprise metal layers, layers made of high refractive index (HRI) materials, varnish layers and replication layers in any desired sequence and combination.
[0138] It is preferred if such a varnish layer has made of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm. The varnish layer can be transparent, translucent or transparently dyed, or opaquely dyed.
[0139] The varnish layer preferably comprises at least one colorant, in particular colored or achromatic pigments and/or effect pigments, thin-film layer systems, cholesteric liquid crystals, dyes and/or metallic or non-metallic nanoparticles.
For steps b) and c), See paragraph 0031 and 0076-78 and 0156 and 0185-187:
[0031] The one or more mobile modules can apply the stamping foil to the multilayer film or to the base body, or alternatively or additionally can apply the stamping foil to the substrate. The application of the stamping foil to the substrate can be effected before and/or after the application of the multilayer film or the base body to the substrate.
…
[0076] The absorbent layer can thus be transferred by such a transfer film, for example, by hot embossing onto a substrate, in particular onto a security element, in order to make it possible to personalize the security element by inkjet printing. Cold embossing represents a further method. A print which can be crosslinked under UV radiation is applied to the substrate or the absorbent layer and then the substrate and absorbent layer are brought together. The print cures by UV radiation and binds the substrate and absorbent layer in the form determined by the print. To improve the interlayer adhesion, a further layer can previously have been applied to the absorbent layer.
[0077] It is expedient if the absorbent layer is applied to the substrate after application of the security element.
[0078] The security element is thus produced independently of the absorbent layer and can be transferred onto the substrate according to known methods. This makes it possible to personalize already existing security elements, without the need to modify the production thereof.
…
[0156] Such a detachment layer 412 makes it easier to detach the carrier ply 41 after transfer of the absorbent layer 421 onto a substrate 1 and/or security element 2, for example after hot embossing, and advantageously remains on the detached carrier ply 41.
…
[0185] As FIG. 7 shows, the device 3 can be arranged shortly before or during the application of the multilayer film 1 to a substrate 51. The base body 17 is preferably provided by a spool. However, it is also conceivable that only the carrier ply of the base body is provided by the spool and, between the spool and the device 3, more printing units are arranged which provide the carrier ply of the base body with further layers, such as for example decorative layers and/or protective layers.
[0186] Then, in the device 3—as already described—the depositing of the stamping foil 2 on the base body 17 is effected. After the multilayer film 1 has been produced, the multilayer film 1 is conveyed to an application device or stamping device 5. In the application device 5, the multilayer film 1 is applied to a substrate 51 at least in areas.
[0187] Advantageously, between the device 3 and the application device 5, at least one further device for depositing a further stamping foil 2 is arranged. The multilayer film 1 can hereby be adapted individually to the customers' requirements. It is also conceivable that a device 3, in particular a further device 3, is arranged downstream of the application device 5.
Claim(s) 1, 2, 4, 7 and 8 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Plaia (EP 2172347 A2).
As to claim 1, Plaia discloses a method for producing a decorative foil (”carrier foil”), wherein the method comprises the following steps:
a) providing a carrier film, wherein the carrier film has a thickness in the range of from 3.0 μm to 10.0 μm (“The carrier film preferably has a thickness in the range of 7 to 23 μm.”); and
b) applying an all-over varnish layer to at least one region of at least one surface of the carrier film (“The protective lacquer layer preferably has a thickness in the range from 0.8 to 3 .mu.m, in particular from 0.9 to 1.3 .mu.m,”), wherein a decorative foil is formed.
See the translation, disclosing:
The carrier film preferably has a thickness in the range of 7 to 23 μm. The carrier film is preferably formed from polyester, polyolefin, polyvinyl, polyimide or ABS. Particularly preferred in this case is the use of carrier films made of PET, PC, PP, PE, PVC or PS. In particular, a carrier film made of PET has been proven.
Overall, the transfer film has in particular a thickness in the range from 9 to 25 μm, in particular in the range from 13 to 16 μm.
It has proven useful if the transfer layer has a protective lacquer layer. In particular, the protective lacquer layer provides protection against mechanical and / or chemical stress on the transfer layer on a substrate. The protective lacquer layer preferably has a thickness in the range from 0.8 to 3 .mu.m, in particular from 0.9 to 1.3 .mu.m, and may further be clear or colorless or colored or at least partially colored.
The at least one decorative layer of the transfer layer is preferably formed by a metallic layer or a dielectric layer. It has proven useful if the at least one decorative layer has a thickness in the range of 8 to 500 nm.
…
The carrier film 42 is a PET film with a thickness in the range of 7 to 23 microns. The thickness of the carrier film 42 is here in particular 12 microns.
As to claim 1, the range of Plaia reciting “carrier film preferably has a thickness in the range of 7 to 23 μm.” substantially overlap the claimed range of “3.0 μm to 10.0 μm”, and therefore, under MPEP 2131.03, disclose the claimed range with “sufficient specificity”. It should be noted that Plaia also recites that “Overall, the transfer film has in particular a thickness in the range from 9 to 25 μm, in particular in the range from 13 to 16 μm.” Plaia also recites that “The thickness of the carrier film 42 is here in particular 12 microns.” These examples and overlapping ranges create “sufficient specificity” that Plaia overlaps the claimed range of “3.0 μm to 10.0 μm”, and therefore, under MPEP 2131.03, disclose the claimed range with “sufficient specificity”.
See MPEP 2131.03 II, reciting:
When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
As to claim 2, Plaia discloses wherein the all-over varnish layer in step b) has a thickness in the range of from 1.0 μm to 2.5 μm. See paragraph 0082, disclosing “The protective lacquer layer preferably has a thickness in the range from 0.8 to 3 .mu.m, in particular from 0.9 to 1.3 .mu.m,”
These examples and overlapping ranges create “sufficient specificity” that Plaia overlaps the claimed range of “1.0 μm to 2.5 μm”, and therefore, under MPEP 2131.03, disclose the claimed range with “sufficient specificity”.
See MPEP 2131.03 II, reciting:
When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
As to claim 4, Plaia discloses wherein the all-over varnish layer in step b) has at least one detachment layer and/or at least one protective varnish layer and/or at least one decorative layer and/or at least one primer layer and/or at least one adhesive layer and/or at least one color layer.
See translation, disclosing:
The transparent protective lacquer layer 44 is an optional layer, which serves in particular to protect the decorative layer 45 from mechanical and / or chemical stress. The protective lacquer layer 44 is in particular a lacquer layer based on nitrocellulose and acrylate polymers.
…
the transfer layer (41) comprises, starting from the carrier film (42), a transparent release layer (43), an optional transparent protective lacquer layer (44), at least one decorative layer (45) and at least one thermoplastic adhesive primer layer (46) Temperature range of> 90 ° C can be activated.
As to claim 7, Plaia discloses a method for decorating a target substrate, wherein the method comprises the following steps: a) providing a decorative foil (“carrier foil”) comprising a carrier film (carrier film 42) and an all-over varnish layer (protective lacquer layer (44)), wherein the carrier film has a thickness in the range of from 3.0 μm to 10.0 μm (“The carrier film preferably has a thickness in the range of 7 to 23 μm.”; see the rejection of claim 1 above);
b) providing a target substrate (“printing sheet”); and c) applying the decorative foil to the target substrate (“a transfer film 40 is passed through a transfer nip 60, wherein the transfer film 40 is pressed in the transfer nip 60 against the printing sheet”).
See the translation, disclosing:
The carrier film preferably has a thickness in the range of 7 to 23 μm. The carrier film is preferably formed from polyester, polyolefin, polyvinyl, polyimide or ABS. Particularly preferred in this case is the use of carrier films made of PET, PC, PP, PE, PVC or PS. In particular, a carrier film made of PET has been proven.
Overall, the transfer film has in particular a thickness in the range from 9 to 25 μm, in particular in the range from 13 to 16 μm.
It has proven useful if the transfer layer has a protective lacquer layer. In particular, the protective lacquer layer provides protection against mechanical and / or chemical stress on the transfer layer on a substrate. The protective lacquer layer preferably has a thickness in the range from 0.8 to 3 .mu.m, in particular from 0.9 to 1.3 .mu.m, and may further be clear or colorless or colored or at least partially colored.
The at least one decorative layer of the transfer layer is preferably formed by a metallic layer or a dielectric layer. It has proven useful if the at least one decorative layer has a thickness in the range of 8 to 500 nm.
…
The carrier film 42 is a PET film with a thickness in the range of 7 to 23 microns. The thickness of the carrier film 42 is here in particular 12 microns.
…
FIG. 4 now shows a schematic representation of a printing press with a film transfer module for the cold foil transfer, with a single sheet processing printing machine is shown, which consists of at least two printing units. The two printing units are used for the following purposes:
A sheet to be coated is provided in a first step with a pattern of cold glue. The cold glue is applied in a device configured as a printing station 100, e.g. B. a conventional printing unit of an offset printing press on there existing inking and dampening 110, a printing plate on a plate cylinder 120, a covered with a blanket cylinder 130 and an impression cylinder 400 '. Likewise, printing units in the form of flexographic printing units or coating units can be used here.
Thereafter, together with a printing sheet, a transfer film 40 is passed through a transfer nip 60, wherein the transfer film 40 is pressed in the transfer nip 60 against the printing sheet. For this purpose, a film transfer module 200 is used which can correspond to a printing unit or a coating module or a base unit or another type of processing station of a sheetfed offset printing press. The transfer nip 60 in the film transfer module 200 is formed by a roller 300 and a counterpressure roller 400. In this case, the roller 300 can correspond to a blanket cylinder and the counterpressure roller 400 to an impression cylinder of a known offset printing unit. Furthermore, the roller 300 can correspond to a forme cylinder and the counterpressure roller 400 can correspond to an impression cylinder of a paint module of a sheet-fed printing press.
As to claim 7, the range of Plaia reciting “carrier film preferably has a thickness in the range of 7 to 23 μm.” substantially overlap the claimed range of “3.0 μm to 10.0 μm”, and therefore, under MPEP 2131.03, disclose the claimed range with “sufficient specificity”. It should be noted that Plaia also recites that “Overall, the transfer film has in particular a thickness in the range from 9 to 25 μm, in particular in the range from 13 to 16 μm.” Plaia also recites that “The thickness of the carrier film 42 is here in particular 12 microns.” These examples and overlapping ranges create “sufficient specificity” that Plaia overlaps the claimed range of “3.0 μm to 10.0 μm”, and therefore, under MPEP 2131.03, disclose the claimed range with “sufficient specificity”.
See MPEP 2131.03 II, reciting:
When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
As to claim 8, Plaia discloses wherein at least one color layer is applied to at least one surface of the all-over varnish layer after step c), with the result that the adhesive force between at least one color layer of the at least one color layers and the all-over varnish layer is at least 25 cN. See the translation, disclosing:
The second object is achieved for a second transfer film for use in a cold foil transfer process, comprising a carrier film and a transfer layer detachable from the carrier film, in which the transfer layer, starting from the carrier film, comprises a transparent polymeric release layer, an optional transparent protective lacquer layer, at least one decorative layer and at least one Priming layer comprises and that in a temperature range of 15 to 35 ° C, the separation force of the transfer layer of the carrier film in the range of 15 to 35 cN / cm, in particular in the range of 20 to 30 cN / cm.
…
The release force of the transfer layer from the carrier film in the range of 15 to 35 cN / cm, in particular in the range of 20 to 30 cN / cm is low in the temperature range of 15 to 35 ° C compared to a conventional hot stamping foil.
…
Conversely, with respect to the first transfer film, it is preferable that the release layer be a polymeric release layer and in a temperature range of 15 to 35 ° C, the peel force of the transfer layer from the support film be in the range of 15 to 35 cN / cm, more preferably in the range of 20 to 30 cN / cm, lies, as was also defined for the second transfer film.
These examples and overlapping ranges create “sufficient specificity” that Plaia overlaps the claimed range of “in the range of 15 to 35 cN / cm, in particular in the range of 20 to 30 cN / cm”, and therefore, under MPEP 2131.03, disclose the claimed range with “sufficient specificity”.
See MPEP 2131.03 II, reciting:
When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reuther (US 20180215190 A1).
As to claim 1, Reuther discloses a method for producing a decorative foil (”stamping foil”), wherein the method comprises the following steps:
a) providing a carrier film, wherein the carrier film has a thickness in the range of from 3.0 μm to 10.0 μm (paragraph 0080, disclosing “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm.”); and
b) applying an all-over varnish layer to at least one region of at least one surface of the carrier film (paragraph 0082, “has a varnish layer made of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm. The varnish layer can be transparent, translucent or transparently dyed, or opaquely dyed.”), wherein a decorative foil is formed.
See paragraphs 0080-83 and 0131-139, disclosing:
[0080] A base body and/or a stamping foil is preferably used which has a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm. The carrier ply protects and stabilizes the transfer ply during the production, storage and processing of the films. If, during the pre- or full curing of the adhesive, illumination is to be effected from the side of the carrier ply with UV light, the material selection is to be targeted at the corresponding transparency of the carrier ply in the illumination wavelength range.
[0081] It is further expedient if a base body and/or a stamping foil is used the carrier ply of which has a detachment layer made of acrylate copolymer, in particular of an aqueous polyurethane copolymer, and preferably free from wax and/or free from silicone, with a layer thickness of from 0.01 μm to 2 μm, preferably from 0.1 μm to 0.5 μm, which is arranged on a surface of the carrier ply. The detachment layer makes a simple and damage-free detachment of the carrier ply from the transfer ply possible after application thereof to the substrate.
[0082] It is further preferred if a base body and/or a stamping foil is used the transfer ply of which has a varnish layer made of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm. The varnish layer can be transparent, translucent or transparently dyed, or opaquely dyed.
[0083] The varnish layer preferably comprises at least one colorant, in particular colored or achromatic pigments and/or effect pigments, thin-film layer systems, cholesteric liquid crystals, dyes and/or metallic or non-metallic nanoparticles.
…
[0131] FIG. 1 shows a multilayer film 1, which can be used for the decoration of objects, for the application of security elements and the like.
[0132] The multilayer film 1 comprises a carrier ply 11, a detachment layer 12, a protective varnish layer 13, which can itself be multilayered, a decorative ply 14, which can itself be multilayered, a further varnish layer 15 and a primer 16, which can itself be multilayered and acts as an adhesive when the multilayer film is applied to a substrate.
[0133] The carrier ply 11 preferably consists of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm. The carrier ply 11 protects and stabilizes the further plies of the multilayer film 1 during the production, storage and processing of the film.
[0134] The detachment layer 12 is preferably formed from acrylate copolymer, in particular from an aqueous polyurethane copolymer, and preferably free from wax and/or free from silicone, with a layer thickness of from 0.01 μm to 2 μm, preferably from 0.1 μm to 0.5 μm, and arranged on a surface of the carrier ply 11.
[0135] The detachment layer 12 makes a simple and damage-free detachment of the carrier ply 11 from the further layers of the multilayer film 1 possible after application thereof to the substrate.
[0136] The protective varnish layer 13 preferably consists of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm, and is arranged on a surface of the detachment layer 12 facing away from the carrier ply 11. In particular, several layers made of these substance classes can be used.
[0137] The decorative ply 14 can be constructed multilayered. Among other things, the decorative ply 14 can comprise metal layers, layers made of high refractive index (HRI) materials, varnish layers and replication layers in any desired sequence and combination.
[0138] It is preferred if such a varnish layer has made of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm. The varnish layer can be transparent, translucent or transparently dyed, or opaquely dyed.
[0139] The varnish layer preferably comprises at least one colorant, in particular colored or achromatic pigments and/or effect pigments, thin-film layer systems, cholesteric liquid crystals, dyes and/or metallic or non-metallic nanoparticles.
See also claim 1 of Reuther, claiming:
1. A method for producing a multilayer film comprising: a) providing a base body with a carrier ply and a transfer ply, which comprises at least one layer; b) applying a UV curable adhesive to at least one first partial area of the transfer ply of the base body, wherein no adhesive is applied in at least one second partial area of the transfer ply; c) applying a stamping foil which comprises a carrier ply and a transfer ply, with the result that the transfer ply of the stamping foil comes into contact with the adhesive deposited on the transfer ply of the base body in the at least one first partial area; d) curing the adhesive by UV irradiation; e) removing the carrier ply of the stamping foil.
As to claim 1, the claim range of “3.0 μm to 10.0 μm would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Reuther reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm””, and therefore, under MPEP 2144.05, a prima facie case of obviousness exists. See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
As to claim 2, Reuther discloses wherein the all-over varnish layer in step b) has a thickness in the range of from 1.0 μm to 2.5 μm. See paragraph 0082, disclosing “a varnish layer made of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm”
As to claim 3, Reuther does not disclose wherein the ratio of the thickness of the carrier film to the thickness of the all-over varnish layer lies in a range of from 1.8:1 to 7.0:1, wherein the carrier film has a thickness in a range of from more than or equal to 3 µm to less than or equal to 7 µm and/or wherein the ratio of the thickness of the carrier film to the thickness of the all-over varnish lies in a range of from 4.1:1 to 10.0:1, wherein the carrier film has a thickness in a range of from more than or equal to 7 µm to less than or equal to 10 µm.
However, Reuther discloses that in paragraph 0080 “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm” and discloses in paragraph 0082 “a varnish layer made of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm”. Therefore, Reuther discloses prior art conditions which read on or overlap with the claimed individual ranges.
Additionally, routine optimization within prior art conditions or through routine experimentation is often obvious. See MPEP 2144.05 II A and B:
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing of the invention to have utilized wherein the ratio of the thickness of the carrier film to the thickness of the all-over varnish layer lies in a range of from 1.8:1 to 7.0:1, wherein the carrier film has a thickness in a range of from more than or equal to 3 µm to less than or equal to 7 µm and/or wherein the ratio of the thickness of the carrier film to the thickness of the all-over varnish lies in a range of from 4.1:1 to 10.0:1, wherein the carrier film has a thickness in a range of from more than or equal to 7 µm to less than or equal to 10 µm because Reuther discloses prior art conditions which read on or overlap with the claimed individual ranges and it would have obvious to try to optimize the prior art conditions and ranges with each other through routine experimentation to achieve the claimed ranges and ratios.
As to claim 4, Reuther discloses wherein the all-over varnish layer in step b) has at least one detachment layer and/or at least one protective varnish layer and/or at least one decorative layer and/or at least one primer layer and/or at least one adhesive layer and/or at least one color layer.
See paragraph 0132, disclosing:
[0132] The multilayer film 1 comprises a carrier ply 11, a detachment layer 12, a protective varnish layer 13, which can itself be multilayered, a decorative ply 14, which can itself be multilayered, a further varnish layer 15 and a primer 16, which can itself be multilayered and acts as an adhesive when the multilayer film is applied to a substrate.
As to claim 5, Reuther does not disclose the additional limitation of wherein a tear-off force between the carrier film and the all-over varnish layer has fluctuations in the force amplitude around its average in a range of from more than or equal to -0.5 cN to less than or equal to 0.5 cN.
However, applicant’s own specification discloses that “Due to the reduced carrier film thickness, these stresses can be reduced and the resulting cracking force and tear-off force are likewise reduced. Further, the fluctuations in the force amplitude of the tear-off force decrease significantly, which further improves the detachment behavior and promotes a clean decoration.” Applicant’s own specification thus suggests that a thinner carrier film thickness such as “wherein the carrier film has a thickness in the range of from 3.0 µm to 10.0 µm” can achieve these benefits.
As noted above, the claim range of “3.0 μm to 10.0 μm” that would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Reuther reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm”, and therefore, under MPEP 2144.05, a prima facie case of obviousness exists for this range. See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Because the disclosed range of "overlap or lie inside ranges disclosed by the prior art" the range of Reuther reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm” in Reuther would make obvious the claimed range, Reuther would also achieve “the reduced carrier film thickness, these stresses can be reduced and the resulting cracking force and tear-off force are likewise reduced” and would also achieve wherein “the fluctuations in the force amplitude of the tear-off force decrease significantly, which further improves the detachment behavior and promotes a clean decoration”.
Therefore, Reuther discloses prior art conditions which read on or overlap with the claimed individual ranges which would have the claimed properties of claim 5.
Additionally, routine optimization within prior art conditions or through routine experimentation is often obvious. See MPEP 2144.05 II A and B:
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing of the invention to have utilized the additional limitation of wherein a tear-off force between the carrier film and the all-over varnish layer has fluctuations in the force amplitude around its average in a range of from more than or equal to -0.5 cN to less than or equal to 0.5 cN because Reuther discloses prior art conditions which read on or overlap with the claimed individual ranges and it would have obvious to try to optimize the prior art conditions and ranges with each other through routine experimentation to achieve the claimed ranges and ratios.
As to claim 6, Reuther does not disclose the additional limitation of wherein the all-over varnish layer has a covering power of more than or equal to 99.5%, in the case of a decoration of a continuous solid surface and a decoration or point perception of more than or equal to 99.5%, in the case of a decoration of a 10% halftone area.
However, applicant’s own specification discloses that “a covering power of the full-tone area of 100% is achieved with a decorative foil 40 with a carrier film thickness of 5.7 µm, whereas a covering power of the full-tone area of 99% is achieved with a decorative foil 40 with a carrier film thickness of 12 µm.” Applicant’s own specification thus suggests that a thinner carrier film thickness such as “wherein the carrier film has a thickness in the range of from 3.0 µm to 10.0 µm” can achieve these benefits.
As noted above, the claim range of “3.0 μm to 10.0 μm” that would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Reuther reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm”, and therefore, under MPEP 2144.05, a prima facie case of obviousness exists for this range. See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Because the disclosed range of "overlap or lie inside ranges disclosed by the prior art" the range of Reuther reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm” in Reuther would make obvious the claimed range, Reuther would also achieve “the reduced carrier film thickness, these stresses can be reduced and the resulting cracking force and tear-off force are likewise reduced” and would also achieve wherein “the fluctuations in the force amplitude of the tear-off force decrease significantly, which further improves the detachment behavior and promotes a clean decoration”.
Therefore, Reuther discloses prior art conditions which read on or overlap with the claimed individual ranges which would have the claimed properties of claim 6.
Additionally, routine optimization within prior art conditions or through routine experimentation is often obvious. See MPEP 2144.05 II A and B:
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing of the invention to have utilized the additional limitation of wherein the all-over varnish layer has a covering power of more than or equal to 99.5%, in the case of a decoration of a continuous solid surface and a decoration or point perception of more than or equal to 99.5%, in the case of a decoration of a 10% halftone area because Reuther discloses prior art conditions which read on or overlap with the claimed individual ranges and it would have obvious to try to optimize the prior art conditions and ranges with each other through routine experimentation to achieve the claimed ranges and ratios.
As to claim 7, Reuther discloses a method for decorating a target substrate, wherein the method comprises the following steps: a) providing a decorative foil (“stamping foil”) comprising a carrier film (carrier ply 11) and an all-over varnish layer (protective varnish layer 13, further varnish layer 15), wherein the carrier film has a thickness in the range of from 3.0 μm to 10.0 μm (“a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm.”; see the rejection of claim 1 above);
b) providing a target substrate; and c) applying the decorative foil to the target substrate (“or alternatively or additionally can apply the stamping foil to the substrate”).
For step a), See paragraphs 0080-83 and 0131-139, disclosing:
[0080] A base body and/or a stamping foil is preferably used which has a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm. The carrier ply protects and stabilizes the transfer ply during the production, storage and processing of the films. If, during the pre- or full curing of the adhesive, illumination is to be effected from the side of the carrier ply with UV light, the material selection is to be targeted at the corresponding transparency of the carrier ply in the illumination wavelength range.
[0081] It is further expedient if a base body and/or a stamping foil is used the carrier ply of which has a detachment layer made of acrylate copolymer, in particular of an aqueous polyurethane copolymer, and preferably free from wax and/or free from silicone, with a layer thickness of from 0.01 μm to 2 μm, preferably from 0.1 μm to 0.5 μm, which is arranged on a surface of the carrier ply. The detachment layer makes a simple and damage-free detachment of the carrier ply from the transfer ply possible after application thereof to the substrate.
[0082] It is further preferred if a base body and/or a stamping foil is used the transfer ply of which has a varnish layer made of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm. The varnish layer can be transparent, translucent or transparently dyed, or opaquely dyed.
[0083] The varnish layer preferably comprises at least one colorant, in particular colored or achromatic pigments and/or effect pigments, thin-film layer systems, cholesteric liquid crystals, dyes and/or metallic or non-metallic nanoparticles.
…
[0131] FIG. 1 shows a multilayer film 1, which can be used for the decoration of objects, for the application of security elements and the like.
[0132] The multilayer film 1 comprises a carrier ply 11, a detachment layer 12, a protective varnish layer 13, which can itself be multilayered, a decorative ply 14, which can itself be multilayered, a further varnish layer 15 and a primer 16, which can itself be multilayered and acts as an adhesive when the multilayer film is applied to a substrate.
[0133] The carrier ply 11 preferably consists of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm. The carrier ply 11 protects and stabilizes the further plies of the multilayer film 1 during the production, storage and processing of the film.
[0134] The detachment layer 12 is preferably formed from acrylate copolymer, in particular from an aqueous polyurethane copolymer, and preferably free from wax and/or free from silicone, with a layer thickness of from 0.01 μm to 2 μm, preferably from 0.1 μm to 0.5 μm, and arranged on a surface of the carrier ply 11.
[0135] The detachment layer 12 makes a simple and damage-free detachment of the carrier ply 11 from the further layers of the multilayer film 1 possible after application thereof to the substrate.
[0136] The protective varnish layer 13 preferably consists of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm, and is arranged on a surface of the detachment layer 12 facing away from the carrier ply 11. In particular, several layers made of these substance classes can be used.
[0137] The decorative ply 14 can be constructed multilayered. Among other things, the decorative ply 14 can comprise metal layers, layers made of high refractive index (HRI) materials, varnish layers and replication layers in any desired sequence and combination.
[0138] It is preferred if such a varnish layer has made of nitrocellulose, polyacrylate and polyurethane copolymer with a layer thickness of from 0.1 μm to 5 μm, preferably from 1 μm to 2 μm. The varnish layer can be transparent, translucent or transparently dyed, or opaquely dyed.
[0139] The varnish layer preferably comprises at least one colorant, in particular colored or achromatic pigments and/or effect pigments, thin-film layer systems, cholesteric liquid crystals, dyes and/or metallic or non-metallic nanoparticles.
For steps b) and c), See paragraph 0031 and 0076-78 and 0156 and 0185-187:
[0031] The one or more mobile modules can apply the stamping foil to the multilayer film or to the base body, or alternatively or additionally can apply the stamping foil to the substrate. The application of the stamping foil to the substrate can be effected before and/or after the application of the multilayer film or the base body to the substrate.
…
[0076] The absorbent layer can thus be transferred by such a transfer film, for example, by hot embossing onto a substrate, in particular onto a security element, in order to make it possible to personalize the security element by inkjet printing. Cold embossing represents a further method. A print which can be crosslinked under UV radiation is applied to the substrate or the absorbent layer and then the substrate and absorbent layer are brought together. The print cures by UV radiation and binds the substrate and absorbent layer in the form determined by the print. To improve the interlayer adhesion, a further layer can previously have been applied to the absorbent layer.
[0077] It is expedient if the absorbent layer is applied to the substrate after application of the security element.
[0078] The security element is thus produced independently of the absorbent layer and can be transferred onto the substrate according to known methods. This makes it possible to personalize already existing security elements, without the need to modify the production thereof.
…
[0156] Such a detachment layer 412 makes it easier to detach the carrier ply 41 after transfer of the absorbent layer 421 onto a substrate 1 and/or security element 2, for example after hot embossing, and advantageously remains on the detached carrier ply 41.
…
[0185] As FIG. 7 shows, the device 3 can be arranged shortly before or during the application of the multilayer film 1 to a substrate 51. The base body 17 is preferably provided by a spool. However, it is also conceivable that only the carrier ply of the base body is provided by the spool and, between the spool and the device 3, more printing units are arranged which provide the carrier ply of the base body with further layers, such as for example decorative layers and/or protective layers.
[0186] Then, in the device 3—as already described—the depositing of the stamping foil 2 on the base body 17 is effected. After the multilayer film 1 has been produced, the multilayer film 1 is conveyed to an application device or stamping device 5. In the application device 5, the multilayer film 1 is applied to a substrate 51 at least in areas.
[0187] Advantageously, between the device 3 and the application device 5, at least one further device for depositing a further stamping foil 2 is arranged. The multilayer film 1 can hereby be adapted individually to the customers' requirements. It is also conceivable that a device 3, in particular a further device 3, is arranged downstream of the application device 5.
As to claim 7, the claim range of “3.0 μm to 10.0 μm would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Reuther reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm””, and therefore, under MPEP 2144.05, a prima facie case of obviousness exists. See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
As to claim 8, Reuther discloses wherein at least one color layer is applied to at least one surface of the all-over varnish layer. See paragraph 0038-40, below, disclosing a color layer obtained by using a dye.
[0038] When a stamping foil with a metal layer is used, a partial metallization with all metals with which a transfer ply metallized over the whole surface can be produced is possible.
[0039] A partial metallization can thus be dyed as desired, without an overlap of the transparent varnish layer being visible. Moreover, holographic effects can be integrated. The front and back side of the metallization can additionally be dyed differently.
[0040] The method is flexible, as the color and appearance of the metallization or other decorative layers combined therewith can be altered by simply changing the stamping foil.
Reuther does not disclose, however, that this is after step c), with the result that the adhesive force between at least one color layer of the at least one color layers and the all-over varnish layer is at least 25 cN. However, Reuther does recognize the value of detachment forces,, disclosing in paragraph 0041-0042 and 0149, that:
[0041] It is preferred if a base body and a stamping foil are used which are formed such that a detachment force between the carrier ply of the stamping foil and the transfer ply of the stamping foil is lower than a detachment force between the carrier ply of the base body and the transfer ply of the base body. This makes it possible to detach the carrier ply of the stamping foil together with the unglued areas of the transfer ply of the stamping foil, without damaging the transferred layers or the layers of the base body.
[0042] It is advantageous if the detachment force between the carrier ply of the stamping foil and the transfer ply of the stamping foil is at least 15% lower, preferably at least 30% lower, than the detachment force between the carrier ply of the base body and the transfer ply of the base body. The detachment forces were determined with the aid of a tensile testing machine (Zwick Z005 from Zwick GmbH & Co. KG, Ulm). For this, the stamping foil or the base body was glued flat to the lower holder. The layer to be detached was then detached at right angles by the tensile test. The detachment forces were determined via the load cell.
…
[0149] The carrier ply 21, detachment layer 22, protective varnish layer 23 and primer layer 25 correspond, in terms of their composition, to the carrier ply 11, detachment layer 12, protective varnish layer 13 and primer layer 16 of the multilayer film 1. However, it is to be noted that the detachment force of the detachment layer 12 must be greater than the detachment force of the detachment layer 22.
Additionally, routine optimization within prior art conditions or through routine experimentation is often obvious. See MPEP 2144.05 II A and B:
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing of the invention to have utilized the additional limitation of wherein at least one color layer is applied to at least one surface of the all-over varnish layer after step c), with the result that the adhesive force between at least one color layer of the at least one color layers and the all-over varnish layer is at least 25 cN because Reuther discloses that the detachment force is a relevant variable and it would have obvious to try to optimize the prior art conditions and ranges with each other through routine experimentation to achieve the claimed ranges and ratios.
As to claim 9, Reuther does not disclose the additional limitation of wherein the all-over varnish layer after step c) has a covering power of more than or equal to 99.5%, in the case of a decoration of a continuous solid surface and a decoration or point perception of more than or equal to 99.5%, in the case of a decoration of a 10% halftone area.
However, applicant’s own specification discloses that “a covering power of the full-tone area of 100% is achieved with a decorative foil 40 with a carrier film thickness of 5.7 µm, whereas a covering power of the full-tone area of 99% is achieved with a decorative foil 40 with a carrier film thickness of 12 µm.” Applicant’s own specification thus suggests that a thinner carrier film thickness such as “wherein the carrier film has a thickness in the range of from 3.0 µm to 10.0 µm” can achieve these benefits.
As noted above, the claim range of “3.0 μm to 10.0 μm” that would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Reuther reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm”, and therefore, under MPEP 2144.05, a prima facie case of obviousness exists for this range. See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Because the disclosed range of "overlap or lie inside ranges disclosed by the prior art" the range of Reuther reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm” in Reuther would make obvious the claimed range, Reuther would also achieve “the reduced carrier film thickness, these stresses can be reduced and the resulting cracking force and tear-off force are likewise reduced” and would also achieve wherein “the fluctuations in the force amplitude of the tear-off force decrease significantly, which further improves the detachment behavior and promotes a clean decoration”.
Therefore, Reuther discloses prior art conditions which read on or overlap with the claimed individual ranges which would have the claimed properties of claim 9.
Additionally, routine optimization within prior art conditions or through routine experimentation is often obvious. See MPEP 2144.05 II A and B:
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing of the invention to have utilized the additional limitation of wherein the all-over varnish layer after step c) has a covering power of more than or equal to 99.5%, in the case of a decoration of a continuous solid surface and a decoration or point perception of more than or equal to 99.5%, in the case of a decoration of a 10% halftone area because Reuther discloses prior art conditions which read on or overlap with the claimed individual ranges and it would have obvious to try to optimize the prior art conditions and ranges with each other through routine experimentation to achieve the claimed ranges and ratios.
As to claim 10, Reuther does not disclose the additional limitation of wherein a tear-off force between the carrier film and the all-over varnish layer has fluctuations in the force amplitude around its average in a range of from more than or equal to -0.5 cN to less than or equal to 0.5 cN.
However, applicant’s own specification discloses that “Due to the reduced carrier film thickness, these stresses can be reduced and the resulting cracking force and tear-off force are likewise reduced. Further, the fluctuations in the force amplitude of the tear-off force decrease significantly, which further improves the detachment behavior and promotes a clean decoration.” Applicant’s own specification thus suggests that a thinner carrier film thickness such as “wherein the carrier film has a thickness in the range of from 3.0 µm to 10.0 µm” can achieve these benefits.
As noted above, the claim range of “3.0 μm to 10.0 μm” that would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Reuther reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm”, and therefore, under MPEP 2144.05, a prima facie case of obviousness exists for this range. See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Because the disclosed range of "overlap or lie inside ranges disclosed by the prior art" the range of Reuther reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm” in Reuther would make obvious the claimed range, Reuther would also achieve “the reduced carrier film thickness, these stresses can be reduced and the resulting cracking force and tear-off force are likewise reduced” and would also achieve wherein “the fluctuations in the force amplitude of the tear-off force decrease significantly, which further improves the detachment behavior and promotes a clean decoration”.
Therefore, Reuther discloses prior art conditions which read on or overlap with the claimed individual ranges which would have the claimed properties of claim 10.
Additionally, routine optimization within prior art conditions or through routine experimentation is often obvious. See MPEP 2144.05 II A and B:
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing of the invention to have utilized the additional limitation of wherein a tear-off force between the carrier film and the all-over varnish layer has fluctuations in the force amplitude around its average in a range of from more than or equal to -0.5 cN to less than or equal to 0.5 cN because Reuther discloses prior art conditions which read on or overlap with the claimed individual ranges and it would have obvious to try to optimize the prior art conditions and ranges with each other through routine experimentation to achieve the claimed ranges and ratios.
As to claim 11, Reuther does not disclose the additional limitation of wherein the all-over varnish layer has a covering power of more than or equal to 99.5%, in the case of a decoration of a continuous solid surface and a decoration or point perception of more than or equal to 99.5%, in the case of a decoration of a 10% halftone area.
However, applicant’s own specification discloses that “a covering power of the full-tone area of 100% is achieved with a decorative foil 40 with a carrier film thickness of 5.7 µm, whereas a covering power of the full-tone area of 99% is achieved with a decorative foil 40 with a carrier film thickness of 12 µm.” Applicant’s own specification thus suggests that a thinner carrier film thickness such as “wherein the carrier film has a thickness in the range of from 3.0 µm to 10.0 µm” can achieve these benefits.
As noted above, the claim range of “3.0 μm to 10.0 μm” that would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Reuther reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm”, and therefore, under MPEP 2144.05, a prima facie case of obviousness exists for this range. See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Because the disclosed range of "overlap or lie inside ranges disclosed by the prior art" the range of Reuther reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm” in Reuther would make obvious the claimed range, Reuther would also achieve “the reduced carrier film thickness, these stresses can be reduced and the resulting cracking force and tear-off force are likewise reduced” and would also achieve wherein “the fluctuations in the force amplitude of the tear-off force decrease significantly, which further improves the detachment behavior and promotes a clean decoration”.
Therefore, Reuther discloses prior art conditions which read on or overlap with the claimed individual ranges which would have the claimed properties of claim 11.
Additionally, routine optimization within prior art conditions or through routine experimentation is often obvious. See MPEP 2144.05 II A and B:
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing of the invention to have utilized the additional limitation of wherein the all-over varnish layer has a covering power of more than or equal to 99.5%, in the case of a decoration of a continuous solid surface and a decoration or point perception of more than or equal to 99.5%, in the case of a decoration of a 10% halftone area because Reuther discloses prior art conditions which read on or overlap with the claimed individual ranges and it would have obvious to try to optimize the prior art conditions and ranges with each other through routine experimentation to achieve the claimed ranges and ratios.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Plaia (EP 2172347 A2).
As to claim 1, Plaia discloses a method for producing a decorative foil (”carrier foil”), wherein the method comprises the following steps:
a) providing a carrier film, wherein the carrier film has a thickness in the range of from 3.0 μm to 10.0 μm (“The carrier film preferably has a thickness in the range of 7 to 23 μm.”); and
b) applying an all-over varnish layer to at least one region of at least one surface of the carrier film (“The protective lacquer layer preferably has a thickness in the range from 0.8 to 3 .mu.m, in particular from 0.9 to 1.3 .mu.m,”), wherein a decorative foil is formed.
See the translation, disclosing:
The carrier film preferably has a thickness in the range of 7 to 23 μm. The carrier film is preferably formed from polyester, polyolefin, polyvinyl, polyimide or ABS. Particularly preferred in this case is the use of carrier films made of PET, PC, PP, PE, PVC or PS. In particular, a carrier film made of PET has been proven.
Overall, the transfer film has in particular a thickness in the range from 9 to 25 μm, in particular in the range from 13 to 16 μm.
It has proven useful if the transfer layer has a protective lacquer layer. In particular, the protective lacquer layer provides protection against mechanical and / or chemical stress on the transfer layer on a substrate. The protective lacquer layer preferably has a thickness in the range from 0.8 to 3 .mu.m, in particular from 0.9 to 1.3 .mu.m, and may further be clear or colorless or colored or at least partially colored.
The at least one decorative layer of the transfer layer is preferably formed by a metallic layer or a dielectric layer. It has proven useful if the at least one decorative layer has a thickness in the range of 8 to 500 nm.
…
The carrier film 42 is a PET film with a thickness in the range of 7 to 23 microns. The thickness of the carrier film 42 is here in particular 12 microns.
As to claim 1, the claim range of “3.0 μm to 10.0 μm would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Plaia reciting “carrier film preferably has a thickness in the range of 7 to 23 μm.” substantially overlap the claimed range of “3.0 μm to 10.0 μm”, and therefore, under MPEP 2144.05, a prima facie case of obviousness exists. It should be noted that Plaia also recites that “Overall, the transfer film has in particular a thickness in the range from 9 to 25 μm, in particular in the range from 13 to 16 μm.” Plaia also recites that “The thickness of the carrier film 42 is here in particular 12 microns.” See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
As to claim 2, Plaia discloses wherein the all-over varnish layer in step b) has a thickness in the range of from 1.0 μm to 2.5 μm. See paragraph 0082, disclosing “The protective lacquer layer preferably has a thickness in the range from 0.8 to 3 .mu.m, in particular from 0.9 to 1.3 .mu.m,”
These examples and overlapping ranges create “sufficient specificity” that Plaia overlaps the claimed range of “1.0 μm to 2.5 μm”, and therefore, under MPEP 2131.03, disclose the claimed range with “sufficient specificity”.
As to claim 2, the claimed range of “1.0 μm to 2.5 μm” would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Plaia disclosing “The protective lacquer layer preferably has a thickness in the range from 0.8 to 3 .mu.m, in particular from 0.9 to 1.3 .mu.m,” and therefore, under MPEP 2144.05, a prima facie case of obviousness exists. See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
As to claim 3, Plaia does not disclose wherein the ratio of the thickness of the carrier film to the thickness of the all-over varnish layer lies in a range of from 1.8:1 to 7.0:1, wherein the carrier film has a thickness in a range of from more than or equal to 3 µm to less than or equal to 7 µm and/or wherein the ratio of the thickness of the carrier film to the thickness of the all-over varnish lies in a range of from 4.1:1 to 10.0:1, wherein the carrier film has a thickness in a range of from more than or equal to 7 µm to less than or equal to 10 µm.
However, Plaia discloses in the translation that “carrier film preferably has a thickness in the range of 7 to 23 μm” and discloses in the translation that “The protective lacquer layer preferably has a thickness in the range from 0.8 to 3 .mu.m, in particular from 0.9 to 1.3 .mu.m,”. Therefore, Plaia discloses prior art conditions which read on or overlap with the claimed individual ranges.
Additionally, routine optimization within prior art conditions or through routine experimentation is often obvious. See MPEP 2144.05 II A and B:
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing of the invention to have utilized wherein the ratio of the thickness of the carrier film to the thickness of the all-over varnish layer lies in a range of from 1.8:1 to 7.0:1, wherein the carrier film has a thickness in a range of from more than or equal to 3 µm to less than or equal to 7 µm and/or wherein the ratio of the thickness of the carrier film to the thickness of the all-over varnish lies in a range of from 4.1:1 to 10.0:1, wherein the carrier film has a thickness in a range of from more than or equal to 7 µm to less than or equal to 10 µm because Plaia discloses prior art conditions which read on or overlap with the claimed individual ranges and it would have obvious to try to optimize the prior art conditions and ranges with each other through routine experimentation to achieve the claimed ranges and ratios.
As to claim 4, Plaia discloses wherein the all-over varnish layer in step b) has at least one detachment layer and/or at least one protective varnish layer and/or at least one decorative layer and/or at least one primer layer and/or at least one adhesive layer and/or at least one color layer.
See translation, disclosing:
The transparent protective lacquer layer 44 is an optional layer, which serves in particular to protect the decorative layer 45 from mechanical and / or chemical stress. The protective lacquer layer 44 is in particular a lacquer layer based on nitrocellulose and acrylate polymers.
…
the transfer layer (41) comprises, starting from the carrier film (42), a transparent release layer (43), an optional transparent protective lacquer layer (44), at least one decorative layer (45) and at least one thermoplastic adhesive primer layer (46) Temperature range of> 90 ° C can be activated.
As to claim 5, Plaia does not disclose the additional limitation of wherein a tear-off force between the carrier film and the all-over varnish layer has fluctuations in the force amplitude around its average in a range of from more than or equal to -0.5 cN to less than or equal to 0.5 cN.
However, applicant’s own specification discloses that “Due to the reduced carrier film thickness, these stresses can be reduced and the resulting cracking force and tear-off force are likewise reduced. Further, the fluctuations in the force amplitude of the tear-off force decrease significantly, which further improves the detachment behavior and promotes a clean decoration.” Applicant’s own specification thus suggests that a thinner carrier film thickness such as “wherein the carrier film has a thickness in the range of from 3.0 µm to 10.0 µm” can achieve these benefits.
As noted above, the claim range of “3.0 μm to 10.0 μm” that would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Plaia reciting “carrier film preferably has a thickness in the range of 7 to 23 μm”, and therefore, under MPEP 2144.05, a prima facie case of obviousness exists for this range. See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Because the disclosed range of "overlap or lie inside ranges disclosed by the prior art" the range of Reuther reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm” in Plaia would make obvious the claimed range, Plaia would also achieve “the reduced carrier film thickness, these stresses can be reduced and the resulting cracking force and tear-off force are likewise reduced” and would also achieve wherein “the fluctuations in the force amplitude of the tear-off force decrease significantly, which further improves the detachment behavior and promotes a clean decoration”.
Therefore, Plaia discloses prior art conditions which read on or overlap with the claimed individual ranges which would have the claimed properties of claim 5.
Additionally, routine optimization within prior art conditions or through routine experimentation is often obvious. See MPEP 2144.05 II A and B:
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing of the invention to have utilized the additional limitation of wherein a tear-off force between the carrier film and the all-over varnish layer has fluctuations in the force amplitude around its average in a range of from more than or equal to -0.5 cN to less than or equal to 0.5 cN because Plaia discloses prior art conditions which read on or overlap with the claimed individual ranges and it would have obvious to try to optimize the prior art conditions and ranges with each other through routine experimentation to achieve the claimed ranges and ratios.
As to claim 6, Plaia does not disclose the additional limitation of wherein the all-over varnish layer has a covering power of more than or equal to 99.5%, in the case of a decoration of a continuous solid surface and a decoration or point perception of more than or equal to 99.5%, in the case of a decoration of a 10% halftone area.
However, applicant’s own specification discloses that “a covering power of the full-tone area of 100% is achieved with a decorative foil 40 with a carrier film thickness of 5.7 µm, whereas a covering power of the full-tone area of 99% is achieved with a decorative foil 40 with a carrier film thickness of 12 µm.” Applicant’s own specification thus suggests that a thinner carrier film thickness such as “wherein the carrier film has a thickness in the range of from 3.0 µm to 10.0 µm” can achieve these benefits.
As noted above, the claim range of “3.0 μm to 10.0 μm” that would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Plaia reciting “carrier film preferably has a thickness in the range of 7 to 23 μm”, and therefore, under MPEP 2144.05, a prima facie case of obviousness exists for this range. See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Because the disclosed range of "overlap or lie inside ranges disclosed by the prior art" the range of Plaia reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm” in Plaia would make obvious the claimed range, Plaia would also achieve “the reduced carrier film thickness, these stresses can be reduced and the resulting cracking force and tear-off force are likewise reduced” and would also achieve wherein “the fluctuations in the force amplitude of the tear-off force decrease significantly, which further improves the detachment behavior and promotes a clean decoration”.
Therefore, Plaia discloses prior art conditions which read on or overlap with the claimed individual ranges which would have the claimed properties of claim 6.
Additionally, routine optimization within prior art conditions or through routine experimentation is often obvious. See MPEP 2144.05 II A and B:
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing of the invention to have utilized the additional limitation of wherein the all-over varnish layer has a covering power of more than or equal to 99.5%, in the case of a decoration of a continuous solid surface and a decoration or point perception of more than or equal to 99.5%, in the case of a decoration of a 10% halftone area because Plaia discloses prior art conditions which read on or overlap with the claimed individual ranges and it would have obvious to try to optimize the prior art conditions and ranges with each other through routine experimentation to achieve the claimed ranges and ratios.
As to claim 7, Plaia discloses a method for decorating a target substrate, wherein the method comprises the following steps: a) providing a decorative foil (“carrier foil”) comprising a carrier film (carrier film 42) and an all-over varnish layer (protective lacquer layer (44)), wherein the carrier film has a thickness in the range of from 3.0 μm to 10.0 μm (“The carrier film preferably has a thickness in the range of 7 to 23 μm.”; see the rejection of claim 1 above);
b) providing a target substrate (“printing sheet”); and c) applying the decorative foil to the target substrate (“a transfer film 40 is passed through a transfer nip 60, wherein the transfer film 40 is pressed in the transfer nip 60 against the printing sheet”).
See the translation, disclosing:
The carrier film preferably has a thickness in the range of 7 to 23 μm. The carrier film is preferably formed from polyester, polyolefin, polyvinyl, polyimide or ABS. Particularly preferred in this case is the use of carrier films made of PET, PC, PP, PE, PVC or PS. In particular, a carrier film made of PET has been proven.
Overall, the transfer film has in particular a thickness in the range from 9 to 25 μm, in particular in the range from 13 to 16 μm.
It has proven useful if the transfer layer has a protective lacquer layer. In particular, the protective lacquer layer provides protection against mechanical and / or chemical stress on the transfer layer on a substrate. The protective lacquer layer preferably has a thickness in the range from 0.8 to 3 .mu.m, in particular from 0.9 to 1.3 .mu.m, and may further be clear or colorless or colored or at least partially colored.
The at least one decorative layer of the transfer layer is preferably formed by a metallic layer or a dielectric layer. It has proven useful if the at least one decorative layer has a thickness in the range of 8 to 500 nm.
…
The carrier film 42 is a PET film with a thickness in the range of 7 to 23 microns. The thickness of the carrier film 42 is here in particular 12 microns.
…
FIG. 4 now shows a schematic representation of a printing press with a film transfer module for the cold foil transfer, with a single sheet processing printing machine is shown, which consists of at least two printing units. The two printing units are used for the following purposes:
A sheet to be coated is provided in a first step with a pattern of cold glue. The cold glue is applied in a device configured as a printing station 100, e.g. B. a conventional printing unit of an offset printing press on there existing inking and dampening 110, a printing plate on a plate cylinder 120, a covered with a blanket cylinder 130 and an impression cylinder 400 '. Likewise, printing units in the form of flexographic printing units or coating units can be used here.
Thereafter, together with a printing sheet, a transfer film 40 is passed through a transfer nip 60, wherein the transfer film 40 is pressed in the transfer nip 60 against the printing sheet. For this purpose, a film transfer module 200 is used which can correspond to a printing unit or a coating module or a base unit or another type of processing station of a sheetfed offset printing press. The transfer nip 60 in the film transfer module 200 is formed by a roller 300 and a counterpressure roller 400. In this case, the roller 300 can correspond to a blanket cylinder and the counterpressure roller 400 to an impression cylinder of a known offset printing unit. Furthermore, the roller 300 can correspond to a forme cylinder and the counterpressure roller 400 can correspond to an impression cylinder of a paint module of a sheet-fed printing press.
As to claim 7, the claim range of “3.0 μm to 10.0 μm would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Plaia reciting “carrier film preferably has a thickness in the range of 7 to 23 μm.” substantially overlap the claimed range of “3.0 μm to 10.0 μm”, and therefore, under MPEP 2144.05, a prima facie case of obviousness exists. It should be noted that Plaia also recites that “Overall, the transfer film has in particular a thickness in the range from 9 to 25 μm, in particular in the range from 13 to 16 μm.” Plaia also recites that “The thickness of the carrier film 42 is here in particular 12 microns.” See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
As to claim 8, Plaia discloses wherein at least one color layer is applied to at least one surface of the all-over varnish layer after step c), with the result that the adhesive force between at least one color layer of the at least one color layers and the all-over varnish layer is at least 25 cN. See the translation, disclosing:
The second object is achieved for a second transfer film for use in a cold foil transfer process, comprising a carrier film and a transfer layer detachable from the carrier film, in which the transfer layer, starting from the carrier film, comprises a transparent polymeric release layer, an optional transparent protective lacquer layer, at least one decorative layer and at least one Priming layer comprises and that in a temperature range of 15 to 35 ° C, the separation force of the transfer layer of the carrier film in the range of 15 to 35 cN / cm, in particular in the range of 20 to 30 cN / cm.
…
The release force of the transfer layer from the carrier film in the range of 15 to 35 cN / cm, in particular in the range of 20 to 30 cN / cm is low in the temperature range of 15 to 35 ° C compared to a conventional hot stamping foil.
…
Conversely, with respect to the first transfer film, it is preferable that the release layer be a polymeric release layer and in a temperature range of 15 to 35 ° C, the peel force of the transfer layer from the support film be in the range of 15 to 35 cN / cm, more preferably in the range of 20 to 30 cN / cm, lies, as was also defined for the second transfer film.
As to claim 8, the claim range of “is at least 25 cN” would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Plaia reciting “in the range of 15 to 35 cN / cm, in particular in the range of 20 to 30 cN / cm” substantially overlap the claimed range of “is at least 25 cN”, and therefore, under MPEP 2144.05, a prima facie case of obviousness See MPEP 2131.03 II, reciting:
When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
Additionally, routine optimization within prior art conditions or through routine experimentation is often obvious. See MPEP 2144.05 II A and B:
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing of the invention to have utilized the additional limitation of wherein at least one color layer is applied to at least one surface of the all-over varnish layer after step c), with the result that the adhesive force between at least one color layer of the at least one color layers and the all-over varnish layer is at least 25 cN because Plaia discloses that the force is a relevant variable and a prior art range of “in the range of 15 to 35 cN / cm, in particular in the range of 20 to 30 cN / cm” and it would have obvious to try to optimize the prior art conditions and ranges with each other through routine experimentation to achieve the claimed ranges and ratios.
As to claim 9, Plaia does not disclose the additional limitation of wherein the all-over varnish layer after step c) has a covering power of more than or equal to 99.5%, in the case of a decoration of a continuous solid surface and a decoration or point perception of more than or equal to 99.5%, in the case of a decoration of a 10% halftone area.
However, applicant’s own specification discloses that “a covering power of the full-tone area of 100% is achieved with a decorative foil 40 with a carrier film thickness of 5.7 µm, whereas a covering power of the full-tone area of 99% is achieved with a decorative foil 40 with a carrier film thickness of 12 µm.” Applicant’s own specification thus suggests that a thinner carrier film thickness such as “wherein the carrier film has a thickness in the range of from 3.0 µm to 10.0 µm” can achieve these benefits.
As noted above, the claim range of “3.0 μm to 10.0 μm” that would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Plaia reciting “carrier film preferably has a thickness in the range of 7 to 23 μm”, and therefore, under MPEP 2144.05, a prima facie case of obviousness exists for this range. See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Because the disclosed range of "overlap or lie inside ranges disclosed by the prior art" the range of Plaia reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm” in Plaia would make obvious the claimed range, Plaia would also achieve “the reduced carrier film thickness, these stresses can be reduced and the resulting cracking force and tear-off force are likewise reduced” and would also achieve wherein “the fluctuations in the force amplitude of the tear-off force decrease significantly, which further improves the detachment behavior and promotes a clean decoration”.
Therefore, Plaia discloses prior art conditions which read on or overlap with the claimed individual ranges which would have the claimed properties of claim 9.
Additionally, routine optimization within prior art conditions or through routine experimentation is often obvious. See MPEP 2144.05 II A and B:
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing of the invention to have utilized the additional limitation of wherein the all-over varnish layer after step c) has a covering power of more than or equal to 99.5%, in the case of a decoration of a continuous solid surface and a decoration or point perception of more than or equal to 99.5%, in the case of a decoration of a 10% halftone area because Plaia discloses prior art conditions which read on or overlap with the claimed individual ranges and it would have obvious to try to optimize the prior art conditions and ranges with each other through routine experimentation to achieve the claimed ranges and ratios.
As to claim 10, Plaia does not disclose the additional limitation of wherein a tear-off force between the carrier film and the all-over varnish layer has fluctuations in the force amplitude around its average in a range of from more than or equal to -0.5 cN to less than or equal to 0.5 cN.
However, applicant’s own specification discloses that “a covering power of the full-tone area of 100% is achieved with a decorative foil 40 with a carrier film thickness of 5.7 µm, whereas a covering power of the full-tone area of 99% is achieved with a decorative foil 40 with a carrier film thickness of 12 µm.” Applicant’s own specification thus suggests that a thinner carrier film thickness such as “wherein the carrier film has a thickness in the range of from 3.0 µm to 10.0 µm” can achieve these benefits.
As noted above, the claim range of “3.0 μm to 10.0 μm” that would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Plaia reciting “carrier film preferably has a thickness in the range of 7 to 23 μm”, and therefore, under MPEP 2144.05, a prima facie case of obviousness exists for this range. See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Because the disclosed range of "overlap or lie inside ranges disclosed by the prior art" the range of Plaia reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm” in Plaia would make obvious the claimed range, Plaia would also achieve “the reduced carrier film thickness, these stresses can be reduced and the resulting cracking force and tear-off force are likewise reduced” and would also achieve wherein “the fluctuations in the force amplitude of the tear-off force decrease significantly, which further improves the detachment behavior and promotes a clean decoration”.
Therefore, Plaia discloses prior art conditions which read on or overlap with the claimed individual ranges which would have the claimed properties of claim 10.
Additionally, routine optimization within prior art conditions or through routine experimentation is often obvious. See MPEP 2144.05 II A and B:
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing of the invention to have utilized the additional limitation of wherein a tear-off force between the carrier film and the all-over varnish layer has fluctuations in the force amplitude around its average in a range of from more than or equal to -0.5 cN to less than or equal to 0.5 cN because Plaia discloses prior art conditions which read on or overlap with the claimed individual ranges and it would have obvious to try to optimize the prior art conditions and ranges with each other through routine experimentation to achieve the claimed ranges and ratios.
As to claim 11, Plaia does not disclose the additional limitation of wherein the all-over varnish layer has a covering power of more than or equal to 99.5%, in the case of a decoration of a continuous solid surface and a decoration or point perception of more than or equal to 99.5%, in the case of a decoration of a 10% halftone area.
However, applicant’s own specification discloses that “a covering power of the full-tone area of 100% is achieved with a decorative foil 40 with a carrier film thickness of 5.7 µm, whereas a covering power of the full-tone area of 99% is achieved with a decorative foil 40 with a carrier film thickness of 12 µm.” Applicant’s own specification thus suggests that a thinner carrier film thickness such as “wherein the carrier film has a thickness in the range of from 3.0 µm to 10.0 µm” can achieve these benefits.
As noted above, the claim range of “3.0 μm to 10.0 μm” that would result in a range that "overlap or lie inside ranges disclosed by the prior art" the range of Plaia reciting “carrier film preferably has a thickness in the range of 7 to 23 μm”, and therefore, under MPEP 2144.05, a prima facie case of obviousness exists for this range. See MPEP 2144.05 I, reciting:
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Because the disclosed range of "overlap or lie inside ranges disclosed by the prior art" the range of Plaia reciting “a carrier ply made of polyester, polyolefin, polyvinyl, polyimide, ABS, PET, PC, PP, PE, PVC or PS with a layer thickness of from 3 μm to 100 μm, preferably from 7 μm to 23 μm” in Plaia would make obvious the claimed range, Plaia would also achieve “the reduced carrier film thickness, these stresses can be reduced and the resulting cracking force and tear-off force are likewise reduced” and would also achieve wherein “the fluctuations in the force amplitude of the tear-off force decrease significantly, which further improves the detachment behavior and promotes a clean decoration”.
Therefore, Plaia discloses prior art conditions which read on or overlap with the claimed individual ranges which would have the claimed properties of claim 11.
Additionally, routine optimization within prior art conditions or through routine experimentation is often obvious. See MPEP 2144.05 II A and B:
II. ROUTINE OPTIMIZATION
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
B. There Must Be an Articulated Rationale Supporting the Rejection
In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). See also In re Van Os, 844 F.3d 1359,1361,121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’"); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362, 119 USPQ2d 1822 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support … .").
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing of the invention to have utilized the additional limitation of wherein the all-over varnish layer has a covering power of more than or equal to 99.5%, in the case of a decoration of a continuous solid surface and a decoration or point perception of more than or equal to 99.5%, in the case of a decoration of a 10% halftone area because Plaia discloses prior art conditions which read on or overlap with the claimed individual ranges and it would have obvious to try to optimize the prior art conditions and ranges with each other through routine experimentation to achieve the claimed ranges and ratios.
Conclusion
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/GEORGE R KOCH/Primary Examiner, Art Unit 1745
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