Ex Parte Toyama et al

Patent Trial and Appeal Board

Aug 9, 2018

13910605 (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/910,605 06/05/2013 Yuusuke Toyama
38834 7590 08/13/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
UNITED ST A TES OF AMERICA
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
P4326USOO 9561
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
08/13/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUUSUKE TOY AMA,
TOMOYUKI KIMURA, and MASAKUNI FUJITA
Appeal2017-009289
Application 13/910,605
Technology Center 1700
Before TERRY J. OWENS, RAEL YNN P. GUEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 4--7, 13, and 15. We have jurisdiction under
35 U.S.C. § 6.
We affirm.
1 NITTO DENKO CORPORATION of Osaka, Japan is the
Applicant/ Appellant and is identified as the real party in interest. App. Br.
2.
Appeal2017-009289
Application 13/910,605
The claimed invention is principally directed to a pressure sensitive
adhesive layer-carrying optical film. Claim 4 illustrates the invention:
4. A pressure-sensitive adhesive layer-carrying optical film,
comprising a pressure-sensitive adhesive layer laminated over
at least one surface of an optical film with an anchor layer
interposed therebetween,
wherein the anchor layer is a layer obtained by coating
and drying an anchor-layer-forming coating liquid over the
optical film,
wherein the anchor layer alone shows a transmittance
reduction of 1 % or less,
wherein the anchor layer-forming coating liquid
comprises a polythiophene-based polymer, a polyoxyalkylene-
group-containing polymer, and a mixed solvent comprising 65
to 100% by weight of water and Oto 35% by weight of an
alcohol,
wherein the anchor-layer-forming coating liquid
comprises 0.01 to 0.5 % by weight of the polythiophene-based
polymer, and
wherein the anchor-layer-forming coating liquid
comprises 0.005 to 0.3% by weight of a polyurethane resin-
based binder.
Appellant requests review of the following rejections from the
Examiner's Final Action (see generally Appeal Brief):
I. Claims 4, 5, 7, 13, and 15 rejected under 35 U.S.C. § I03(a) as
unpatentable over Ogasawara (US 2009/0123718 Al, published May 14,
2009), Asai (US 2011/0001720 Al, published January 6, 2011), and Kim
(US 2012/0034453 Al, published February 9, 2012). 2
II. Claim 6 rejected under 35 U.S.C. § I03(a) as unpatentable over
Ogasawara, Asai, Kim, and either Kim '886 (US 2010/0253886 Al,
2 For the purposes of this opinion, we refer to publication US 2012/0034453
Al as Kim.
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Application 13/910,605
published October 7, 2010) or Wang (US 7,622,185 B2, issued November
24, 2009).
For Rejection I, Appellant does not argue any claim separate from the
other. See generally App. Br. Appellant also relies on the arguments
presented for Rejection I to address separately rejected claim 6 (Rejection II)
and does not distinguish the additional features of the claim so rejected
based on the additionally cited references. Id. Accordingly, we select claim
4 as representative of the subject matter before us for review on appeal and
decide the appeal as to all grounds of rejection based on the arguments made
by Appellant in support of patentability of claim 4.
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner's rejections of claims 4--7, 13, and 15
essentially for the reasons presented by the Examiner. We add the following
for emphasis.
Claim 4
The subject matter of independent claim 4 is directed to a pressure
sensitive adhesive layer-carrying optical film comprising an anchor layer
made from a polythiophene-based polymer, a polyoxyalkylene-group-
containing polymer, and a mixed solvent comprising an alcohol and further
having 0.005 to 0.3% by weight of a polyurethane resin-based binder.
Appellant does not dispute the Examiner's specific findings with
respect to Ogasawara and Asai and the determination that the combined
teachings of these references disclose a pressure-sensitive adhesive layer-
carrying optical film comprising an electrically conductive anchor layer that
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differs from the claimed invention in that the cited references do not disclose
the anchor-layer forming liquid comprising 0.005 to 0.3 wt% of a
polyurethane resin-based binder. Final Act. 3-5; see generally App. Br.
The Examiner remedies this deficiency by pointing to the teachings of Kim.
Final Act. 5---6. Kim is directed to forming a structure comprising a substrate
coated with a polythiophene-based conductive polymer comprising 0.1 to
15% of a polyurethane resin. Kim ,r,r 11, 21, 23. Kim discloses the
conductive film as providing improved transparency when applied to a
transparent substrate. Id. ,r 12. The Examiner further finds Kim discloses a
conductive polymer composition comprising a polyurethane binder in the
amount of 0.1 to 5 wt% with improved adhesivity to transparent substrates
and durability of the conductive layer. Final Act. 5-6; Kim ,r,r 34--37, 45,
47. The Examiner determines it would have been obvious to one of the
ordinary skill in the art to use Kim's amount of polyurethane resin in the
anchor layer taught by the combined teachings of Ogasawara and Asai to
improve the adhesivity and conductivity of the anchor layer. Final Act. 6.
Appellant argues Kim teaches away from using the claimed amount of
polyurethane binder because the reference generally prefers that the binders
be present in an amount of 0.1 to 15 wt % and that the binder in the
polythiophene-based conductive polymer layer be one or more selected from
methyltrimethoxysilane and tetraethoxysilane (Kim ,r 31 ). App. Br. 6.
According to Appellant, Kim's examples demonstrate that the composition
of the conductive polymer is tailored according to the substrate to which it is
applied and disclose no preference for a polyurethane binder. Id. at 6-7.
Appellant also contends that Kim's disclosure of a binder amount of O .1 to
5% does not pertain to a polyurethane resin but instead applies to a polyester
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resin binder (Kim ,r 4 7). Id. at. 7. Appellant further argues that Kim's
examples lead to a polyurethane binder amounts of about 0.5 to about 1 %,
which fall outside the claimed range amounts. Id. at 8-9.
In addition, Appellant argues the conductive layer disclosed by Kim is
not an anchor layer because Kim discloses interposing an organic polymer
layer between the polythiophene-based conductive polymer layer and the
substrate (Kim Abst. and Figures 1-2). Id. at 14. Thus, Appellant contends
that, in the course of preparing and improving on the anchor layer taught in
Ogasawara, a person of ordinary skill in the art would not have looked to the
teachings in Kim on the conductive polymer layer. Id.
We are unpersuaded of Examiner error by these arguments. The
premise of Appellant's arguments is that Kim's teachings with respect to the
content of a polyurethane binder are limited to the exemplary embodiments.
It is well settled that a reference may be relied upon for all that it discloses
and not merely the preferred embodiments as suggested by Appellant. See
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
("[ A ]11 disclosures of the prior art, including unpreferred embodiments, must
be considered." (quoting In re Lamberti, 545 F.2d 747,750 (CCPA 1976)));
In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a
prior art reference's disclosure is not limited to its examples).
With respect to the polyurethane resin content, the portion of Kim
relied upon by the Examiner for the resin content of 0.1 to 5 wt% generally
discusses the amount of resin binder necessary "for improving adhesivity to
the transparent substrate" and specifically includes polyurethane among the
binders that can be used. Ans. 10; Kim ,r 47. While Appellant contends that
this range of binder amount is applicable to a polyester resin (App. Br. 7),
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Appellant directs us to no portion of Kim that adequately supports this
contention. Further, Appellant directs us to no portion of Kim that supports
the assertion that the binder content of 0.1 to 5 wt% does not apply to a
polyurethane resin binder. Moreover, as acknowledged by Appellant, Kim
generally prefers that the polyurethane resin binder be present in an amount
of 0.1 to 15 wt%. App. Br. 6; see Kim ,r 23 ("0.1 to 15 wt% of one or more
binder(s) selected from polyester, polyurethane, alkoxysilane and melamine
resin").
With respect to Kim's conductive layer not contacting the transparent
substrate, this argument is also unpersuasive because it focuses on an
embodiment disclosed by Kim while the broader teaching of the reference is
to improve adhesivity of the conductive polymer with a transparent surface.
Kim ,r,r 34, 47.
Thus, Appellant has not adequately explained how the preferred
embodiments of the cited art detract from Kim's respective broader
teachings.
Appellant argues that the Declaration under 37 C.F.R. § 1.132 by co-
inventor and Declarant Yuusuke Toyama (Declaration or Decl.) 3 and data in
the Specification establish the criticality of the amounts for the polyurethane
resin content. App. Br. 11-13.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 5 31 F .2d 1048,
3 The Declaration was submitted on February 8, 2016, and was entered into
the record by the Examiner in the Non-Final Office Action mailed March 11,
2016.
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1052 (CCPA 1976). The burden of establishing unexpected results rests on
the Appellants. Appellants may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The unexpected results must be established by factual evidence, and
attorney statements are insufficient to establish unexpected results. See In re
Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of
unexpected results supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
After weighing the declaration evidence, we agree with the
Examiner's determination that the evidence is insufficient to overcome the
prima facie case of obviousness. Ans. 19-20.
We first note that the Specification does not disclose any criticality
associated with the claimed amount for the polyurethane content. Instead,
the Specification only describes a polyurethane resin content as preferred.
Spec. ,r 45. Further, it is not clear that the showing compares the claimed
invention to the closest prior art. Moreover, the showing is not
commensurate in scope with the claim because the data referred to by
Declarant only tests a single sample of a composition having a specific
polythiophene-based polymer (DENATRON P-580W)/polyurethane
composition and a single polyoxyalkylene-group-containing polymer
(EPOCROSWS-700). Deel. ,r 5 (Table), 6; Spec. ,r 148. Declarant and
Appellant have not adequately explained why this single sample is
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representative of the broad scope of the components of the anchor layer
claimed.
Thus, on this record, Appellant has not adequately explained why the
evidence relied upon would have been unexpected by one of ordinary skill in
the art or is reasonably commensurate in the scope with the claims.
Accordingly, we affirm the Examiner's rejections of claims 4--7, 13,
and 15 under 35 U.S.C. § 103 for the reasons presented by the Examiner and
given above.
We have also considered the arguments in the Reply Brief filed June
15, 2017, in our deliberation to the extent that they are consistent with the
Appeal Brief. We note, however, that Appellant presents a number of
arguments for the first time, such as the anchor layer as taught in Ogasawara
containing predominantly polyurethane and that there is no mention of
binders being determinative of transparency. Reply Br. 3. Any argument
not presented in the Appeal Brief will not be considered when filed in a
Reply Brief, absent a showing of good cause explaining why the argument
could not have been presented in the Appeal Brief. See Ex parte Borden, 93
USPQ2d 14 73, 14 7 4 (BP AI 2010) (informative) ("The reply brief is not an
opportunity to make arguments that could have been made during
prosecution, but were not. Nor is the reply brief an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner's rejections, but were not."); see also 37 C.F.R. §
41.41 (b )(2). Appellant has not shown good cause why these arguments
should now be considered.
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DECISION/ORDER
The Examiner's prior art rejections of claims 4--7, 13, and 15 under
35 U.S.C. § 103 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
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