Ex Parte Araki et al

Patent Trial and Appeal BoardFeb 12, 2019

13821361 (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/821,361 03/07/2013 Tatsuya Araki 38834 7590 02/14/2019 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. P23525USOO 4922 EXAMINER HUANG,WEN ART UNIT PAPER NUMBER 2872 NOTIFICATION DATE DELIVERY MODE 02/14/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TATSUYA ARAKI, SEIJI KONDO, HIROYUKI MORIKAZU, TAKASHI SHIMIZU, and HIROAKI SAWADA Appeal2018-000150 Application 13/821,361 Technology Center 2800 Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and JANEE. INGLESE, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-000150 Application 13/821,361 Appellant1 appeals under 35 U.S.C. Â§ 134 the final rejection of claims 1-10, 12, 15, 17, 19, and 22. Claims 11, 13, 14, 16, 18, 20, and 21 are withdrawn from consideration by the Examiner. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. The invention is directed to a method of producing a thin polarizing film and optical laminate. ( claims 1 and 8; Spec. ,r 1 ). Claims 1 and 8 are illustrative: 1. A method of producing a thin polarizing film, comprising: stretching a thermoplastic resin substrate in a first direction, followed by formation of a polyvinyl alcohol-based resin layer on the thermoplastic resin substrate to prepare a laminate; shrinking and stretching the laminate in the first direction and a second direction, respectively; and releasing the thermoplastic resin substrate from the laminate. 8. An optical laminate, comprising: a thin polarizing film produced by the method of producing a thin polarizing film according to claim 1 ; and a substrate provided on at least one side of the thin polarizing film. Appellant appeals the following rejection: Claims 1-10, 12, 15, 17, 19, and 22 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Land (US 4,895,769, pat. Jan. 23, 1990) in view of 1 According to the Appeal Brief, the real party in interest is listed as "Nitto Denko Corporation" (App. Br. 2). 2 Appeal2018-000150 Application 13/821,361 Yoshimi (JP 2009/93074, pat. Apr. 30, 2009) and Mino (JP 2006/163082, pat. June 22, 2006). Appellant's arguments focus only on the subject matter of the method claim 1 (App. Br. 3--4). We address independent claim 8 separately for reasons discussed below. FINDINGS OF FACT & ANALYSIS CLAIM 1 The Examiner rejects claim 1 over the combined teachings of Land in view ofYoshimi and Mino (Final Act. 6-7). Appellant does not contest the combination of Land and Y oshimi (App. Br. 3--4). The Examiner finds that Land and Y oshimi fail to teach releasing the thermoplastic resin substrate from the laminate (Final Act. 6). The Examiner finds that Mino teaches a method of manufacturing an optical member including a polarizing plate comprising releasing a substrate from a laminate comprising a polarizing film (Final Act. 6). The Examiner concludes that it would have been obvious to use the method as taught by Mino in the method of Land in view of Y oshimi in order to combine the film with other optical layers (Final Act. 6-7). Appellant argues that Mino teaches releasing a transparent support from an ionizable radiation curable resin layer, not from a laminate formed of polyvinyl alcohol-based resin on the thermoplastic resin substrate (App. Br. 4). Appellant argues that the transfer sheet in Mino is peeled from the ionizing curable resin layer, not from the polarizer (Reply Br. 3). Appellant contends that the supporting sheet in Land is an integral and inseparable part of the polarizer (Reply Br. 2). Appellant argues that combining Mino's 3 Appeal2018-000150 Application 13/821,361 teaching to separate a transfer sheet from a polarizer would render Land unsatisfactory for its intended purpose (Reply Br. 2). The preponderance of the evidence favors Appellant's argument of non-obviousness. The Examiner's rejection is based upon combining Mino' s teaching to peel off the support from a laminate having a polarizing film with Land in view ofYoshimi's method (Ans. 3). The Examiner finds that Mino's support 21 corresponds to the claimed substrate (Ans. 3). The Examiner's conclusion is based upon using Mino' s teaching to remove the thermoplastic resin substrate in Land in view of Yoshimi (Ans. 3). The Examiner is not relying on Mino' s teaching to use a support for formation of the ionizing radiation curable resin layer and the function as the protective layer of the polarizing film (Ans. 4). In other words, the Examiner's stated rejection requires removing the support layer in Land based upon the teachings in Mino. The Examiner's analysis is flawed because Land requires that that the support sheets are formed as part of the polarizer (Land, col. 3, 11. 54--57; col. 5, 11. 47-52; col. 6, 11. 25-31; col. 9, 11. 24--25; Example 1). In other words, removing Land's support would render Land's invention unsuitable for its intended purpose (i.e., providing a polarizer carried on a durable support). In re Gordon, 733 F.2d 900 (Fed. Cir. 1984). Mino' s disclosure relates to using a removable transfer sheet 20 to transfer an ionizing curable resin 22 onto a polarizing film 10 (Mino ,r 7; Fig. 1 ). The transfer sheet 20 includes a removable transparent support 21 that may be removed to allow the curable resin 22 to act as an adhesive/protective layer for bonding the polarizing layer 10 to other items (Mino ,r,r 7, 11). Mino's transparent support 21 of transfer sheet 20 is 4 Appeal2018-000150 Application 13/821,361 removed as part of the process to transfer the curable resin 22 to the polarizing film 10. Land teaches to avoid such a removal of the support by preventing delamination and using proper adhesives ( col. 6, 11. 25-31 ). On this record, we reverse the Examiner's Â§ 103 rejection of claims 1-7, 10, 12, 15, 17, and 19 over Land in view ofYoshimi and Mino. CLAIM 8 Claim 8 is a product-by-process claim. As a product-by-process claim the determination of patentability is based upon the product itself, not its method of production. In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985). If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product is made by a different method. Id. Claim 8 is directed to an optical laminate made of a polarizing film with a substrate provided on at least one side of the thin polarizing film. Although the Examiner states that claim 8 is rejected over Land in view of Y oshimi and Mino, the Examiner finds in the body of the rejection that Land alone teaches this feature (Final Act. 8). Appellant has not argued any distinction in the end product achieved by Land as compared to the optical laminate made by the method of claim 1. Indeed, the Examiner finds that Land teaches a substrate support attached to polarizing film each of which has been stretched (Final Act. 6, 8). On this record, we affirm the Examiner's Â§ 103 rejection of claims 8 and 9 over Land in view of Y oshimi and Mino. DECISION The Examiner's decision is affirmed-in-part. 5 Appeal2018-000150 Application 13/821,361 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). ORDER AFFIRMED-IN-PART 6