Ex Parte Boyd et al

Patent Trials and Appeals BoardMar 26, 2019

14395588 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/395,588 10/20/2014 32692 7590 03/28/2019 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Gary T. Boyd 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. 69721US005 2613 EXAMINER PICHLER, MARIN ART UNIT PAPER NUMBER 2872 NOTIFICATION DATE DELIVERY MODE 03/28/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARY T. BOYD, QINGBING WANG, TRI DINH PHAM, and CONNIE L. JOHNSON Appeal2018-005643 Application 14/395,588 Technology Center 2800 Before TERRY J. OWENS, MARK NAGUMO, and MONTE T. SQUIRE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant (3M Innovative Properties Company) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-7. We have jurisdiction under 35 U.S.C. Â§ 6(b). The Invention The claims are to an optical film. Claim 1 is illustrative: 1. An optical film, comprising: a birefringent substrate; a prismatic layer carried by the substrate, the prismatic layer having a major surface comprising a plurality of side by side linear prisms extending along a same first direction; and an embedded structured surface disposed between the substrate and the prismatic layer, the optical film extending parallel to an x-y plane, and having a z-axis orthogonal to the Appeal2018-005643 Application 14/395,588 x-y plane, wherein the z-axis extends in a positive z-direction from the embedded structured surface toward the prismatic layer and extends in a negative z-direction from the embedded structured surface toward the birefringent substrate, wherein the embedded structured surface is an interface between a first optically transmissive medium having a refractive index nl and a second optically transmissive medium having a refractive index n2, and wherein if nl < n2 at least 80% of the embedded structured surface comprises a plurality of lenslets that curve in the negative z-direction, and wherein if nl > n2 at least 80% of the embedded structured surface comprises a plurality of lenslets that curve in the positive z-direction. Shimada1 The Reference WO 2010/041656 Al The Rejection Apr. 15, 2010 The claims stand rejected over Shimada as follows: claims 1-7 under 35 U.S.C. Â§ I02(b) and claims 2 and 5 under 35 U.S.C. Â§Â§ I02(a) and I03(a). 2 OPINION We reverse the rejections. We need address only the sole independent claim, i.e., claim 1. 3 1 Citations herein to Shimada are to US 2011/0280004 Al (published Nov. 17, 2011) which the Examiner relies upon as an English language equivalent of WO 2010/041656 Al (Final Act. 4). 2 The Examiner erroneously maintains in the Examiner's Answer (Ans. 2, 4) a rejection of claims 1-7 under 35 U.S.C. Â§ 112(b ), which the Examiner previously withdrew (Notice of Decision from Post-Prosecution Pilot Program (P3) Conference (Dec. 21, 2016; p. 2 and signature page). 3 In the rejection under 35 U.S.C. Â§ I03(a), the Examiner does not apply any obviousness rationale to the limitations in claim 1 (Final Act. 8-11). 2 Appeal2018-005643 Application 14/395,588 "Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference." Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989). Shimada discloses an optical sheet (30) comprising, in order, a base layer (32), a light-diffusing layer (40), and a light-control layer (35) having prismatic unit shaped elements (38) on a support portion (36) (i1i167, 69; Figs. 9, 10). The light-diffusing layer (40) has a binder resin portion (42) containing granulated substances (45) which are single particles (46) and/or particle aggregates ( 47) (i1i178, 80, 126; Figs 5A---C). The light-diffusing layer (40)'s surface facing the light-control layer (35) is rough with raised portions (48) (i1143; Figs. 9, 10). "[T]he raised portions 48 are formed such that each raised portion corresponds to one granulated substance 45 in the light diffusing layer 40, with the top of the raised portion lying at a slightly different position from the granulated substance 45 in the normal direction nd of the optical sheet 30" (i1144; Figs. 9, 10). The average radius of curvature (R2) at the tops of the raised portions (48) can be controlled relative to the average radius of curvature (RI) of the light-diffusion particles ( 45) by adjusting the nip pressure when molding the light-control layer (35) of ionizing radiation curable resin, adjusting the degree of cure shrinkage of the light-control layer (35)'s ionizing radiation curable resin, or adjusting the viscosity of the binder resin portion (42) (i1i1145-147; Figs. 9, 10). The Examiner relies upon Shimada' s raised portions ( 48) as corresponding to the Appellant's lenslets (Final Act. 5). The Examiner adds to each of Shimada's Figures 9 and 10 a horizontal reference line extending 3 Appeal2018-005643 Application 14/395,588 in Figure 9 along the bottom surface of the raised portions ( 48) and extending in Figure 10 along the top surface of the raised portions ( 48) (Ans. 6-7). The Examiner finds that at least 80% of the surface of raised portions ( 48) in Figure 9 above the reference line curves "in the z-direction, e.g., upwards" (Ans. 5), whereas at least 80% of the surface of raised portions ( 48) in Figure 10 below the reference line curves "in the z-direction, e.g., downwards" (Ans. 6). 4 The Examiner does not establish that the percentage of raised portions ( 48) that curve in the upward or downward direction can be changed by selecting the position of a reference line. Moreover, the Examiner does not establish that (a) Shimada's Figures 9 and 10 are drawn to scale or the percentage of raised portions ( 48), each of which corresponds to a granulated substance ( 45), curving in the upward or downward direction does not depend on the (i) size and spacing of the particles or particle agglomerates of granulated substance ( 45) or (ii) the selected raised portion ( 48)/ granulated substance ( 45) radius of curvature ratio. Thus, the Examiner does not establish that the Examiner's reference lines enable Shimada to meet the Appellant's claim 1 requirement regarding the direction of curvature of at least 80% of the lenslets. The record, therefore, indicates that the Examiner's rejections are based upon impermissible hindsight in view of the Appellant's disclosure. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on 4 The Appellant's Specification (Spec. 21: 14--16) indicates that the meaning of "positive z-direction" and "negative z-direction" in claim 1 is opposite to the Examiner's meaning of "z-direction" and "negative z-direction." (The Appellant should check whether the curvatures in the Appellant's Figures 16b and 17 are consistent with each other.) 4 Appeal2018-005643 Application 14/395,588 section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art."). Accordingly, we reverse the rejections. DECISION The rejections over Shimada of claims 1-7 under 35 U.S.C. Â§ 102(b) and claims 2 and 5 under 35 U.S.C. Â§Â§ 102(a) and 103(a) are reversed. The Examiner's decision is reversed. REVERSED 5