Ex Parte DiZio et alDownload PDFPatent Trial and Appeal BoardMar 6, 201712443342 (P.T.A.B. Mar. 6, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/443,342 03/27/2009 James P. DiZio 62467US010 8208 32692 7590 03/08/2017 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER CHAPEL, DEREK S ART UNIT PAPER NUMBER 2872 NOTIFICATION DATE DELIVERY MODE 03/08/2017 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 JAMES P. DIZIO, MAUREEN C. NELSON, KATHLEEN E. ALLEN, BEVERLY J. BLAKE, ERIN L. COLEMAN, and CHARLES L. BRUZZONE Appeal 2014-005137 Application 12/443,342 Technology Center 2800 Before JEFFREY T. SMITH, JAMES C. HOUSEL, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1—16 and 25—28. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 In this decision, we refer to Appellants’ Specification filed March 27, 2009 (“Spec.”), the Final Office Action mailed April 5, 2013 (“Final Act.”), the Appeal Brief filed September 12, 2013 (“App. Br.”), the Examiner’s Answer mailed January 9, 2014 (“Ans.”), and the Reply Brief filed March 7, 2014 (“Reply Br.”). 2 Appellants identify the real party in interest as 3M Company (formerly known as Minnesota Mining and Manufacturing Company) and its affiliate 3M Innovative Properties Company. App. Br. 2. Appeal 2014-005137 Application 12/443,342 The claims are directed to an adhesives inhibiting formation of artifacts in polymer based optical elements. Claim 1, reproduced below with some added formatting, is illustrative of the claims on appeal. 1. A polarizing beam splitter, comprising: a polymer based polarizing film; an adhesive layer disposed on the polarizing film, the adhesive layer having a thickness of between about 1 pM and about 200 pM; and a first optical element disposed on the adhesive layer, wherein the adhesive layer comprises a crystallization inhibiting plasticizer component in an amount effective for inhibiting formation of (i) crystallized domains; (ii) particles; or (iii) a combination thereof, that cause optical artifacts in the polarizing film. App. Br. 11 (Claims Appendix). DISCUSSION The Examiner maintains the rejection of claims 1—16 and 25—28 under 35 U.S.C. § 103(a) as being unpatentable over Bruzzone et al. (US 2005/0168697 Al, published Aug. 4, 2005 (“Bruzzone”)) in view of Castiglione et al. (US 2004/0209020 Al, published Oct. 21, 2004 (“Castiglione”)) and Kobayashi et al. (US 6,068,794, issued May 30, 2000 (“Kobayashi”)). Final Act. 4. The Appellants argue the claims as a group. We select claim 1 as representative of the rejected claims, and the remaining claims on appeal will stand or fall with claim 1. The Examiner finds that Bruzzone discloses a polarizing beam splitter comprising a polymer based polarizing film (Figure 1, element 12 and Figure 2, elements 112 and 120), an adhesive layer disposed on the 2 Appeal 2014-005137 Application 12/443,342 polarizing film (Figure 1, elements 50 and 60, and Figure 2, elements 150, 160 and 161); and a first optical element disposed on the adhesive layer (Figure 1, element 30 or 40, and Figure 2, element 130 or 140). Final Act. 4 (citing Bruzzone H[0006]-[0012], [0021]-[0023], [0028], [0033]-[0039], and [0041 ]—[0051]; Figures 1—2). The Examiner acknowledges that Bruzzone does not specifically disclose that the adhesive layer has a thickness of between about 1 pM and about 200 pM. Id. at 6. The Examiner, however, finds that Castiglione teaches adhering optical elements together using pressure sensitive adhesives with a thickness of between about 5 microns and about 150 microns. Id. (citing Castiglione ^fl[ [0023] and [0051 ]—[0053]). The Examiner also acknowledges that Bruzzone does not specifically disclose that the adhesive layer comprises a crystallization inhibiting plasticizer component in an amount effective for inhibiting formation of (i) crystallized domains; (ii) particles; or (iii) a combination thereof, that cause optical artifacts in the polarizing film. Id. at 7. The Examiner finds, and Appellants do not dispute, that Kobayashi teaches a known adhesive layer for adhering optical layers, such as polarizing layers, to other optical bases or substrates. Id. (citing Kobayashi Abstract; col. 3; and col. 42,1. 40-col. 46,1. 52); see generally App. Br. 6— 10. The Examiner finds that Kobayashi teaches that the adhesive further includes at least one solvent in the form of water, ethylene glycol, etc. or mixtures thereof in a final residual amount of 5% or less by weight of the adhesive. Id. (citing Kobayashi col. 46,11. 24—52).3 According to 3 According to Appellants’ Specification, examples of plasticizers for use in their invention include glycols such as ethylene glycol and water. Spec. 11, 3 Appeal 2014-005137 Application 12/443,342 Kobayashi, “the coated [adhesion] layer is dried to minimize residual solvent since when the residual solvent is too much, bubbles are likely to produce between the polarizing surface and the coated layer.” Kobayashi col. 46, 11. 36-40. The Examiner determines that it would have been obvious to one of ordinary skill in the art to form a polarizing beam splitter assembly, such as described by Bruzzone, utilizing an adhesive layer with a thickness as described by Castiglione to “adequately [bond] the optical layers of the polarizing beam splitter.” Final Act. 6—7. The Examiner determines that one of ordinary skill in the art would have been motivated, based on Kobayashi and Castiglione, to use a solvent-based adhesive such as disclosed in Kobayashi at the thickness disclosed in Castiglione “[to allow] the adhesive layer to be applied easily as a coating onto a surface, while minimizing the amount of bubbling that occurs when the adhesive layer has sufficiently dried.” See Final Act. 6—8; see also Ans. 3,5. Appellants argue that “a solvent borne adhesive of the thickness described would not be used (or combined with the Bruzzone reference) due to the difficulty in curing.” App. Br. 7. (emphasis omitted). Appellants’ argument is not persuasive of reversible error in the Examiner’s rejection. Appellants have not directed us to evidence that establishes a thickness of between about 5 microns and about 150 microns, 11. 5—8. In addition, Appellants’ Specification teaches that the amount of crystallization inhibitor plasticizer component employed in the adhesive material may vary widely, but usually forms between about 1 and 30 weight percent, or even between about 1 and about 5 percent weight. Id. at 12, 11. 1-3. 4 Appeal 2014-005137 Application 12/443,342 such as described by Castiglione, results in an adhesive layer that has difficulty in curing. Moreover, Bruzzone teaches that any suitable optical adhesive may be used in its polarizing beam splitter assembly. Bruzzone 1 55. Moreover, contrary to Appellants’ argument, Bruzzone expressly discloses that its polarizing beam splitter assembly can be formed without curing the adhesive. Bruzzone 1 62; see also Castiglione 1 51 (teaching that the adhesive layer may be radiation cured and can be solvent-based, water-based or 100 percent solids). It is not clear based on Kobayashi’s disclosure whether its solvent-based adhesive is cured. Nevertheless, even if it is cured, the fact that there may be some difficulty curing Kobayashi’s adhesive would not have led one of ordinary skill in the art away from using such an adhesive in Bruzzone’s polarizing beam splitter assembly. In addition, Appellants argue that if Kobayashi’s solvent-borne adhesive with a thickness of 25 microns was used for assembling a polarizing beam splitter (PBS), which often have prism surfaces on either side of the PBS polarizing film, the adhesive could not be dried effectively or uniformly because the adhesive would be covered by an impermeable prism. App. Br. 8. Appellants contend that “[t]his would make drying such an adhesive extremely difficult and time consuming, if not impossible, and render the degree of dryness a strong function of location within the PBS.” Id. Accordingly, Appellants contend that “no one of ordinary skill in the art would ever attempt to use an adhesive requiring drying[, such as Kobayashi’s adhesive] in a PBS” as disclosed in Bruzzone. Id. Appellants’ arguments are not persuasive of reversible error in the Examiner’s rejection because they are not sufficiently supported by factual 5 Appeal 2014-005137 Application 12/443,342 evidence. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (argument by counsel cannot take the place of evidence). Appellants have not provided evidence sufficient to support their contention that it would have been “extremely difficult and time consuming, if not impossible,” to effectively dry a Kobayashi’s solvent-based adhesive having a thickness of 25 microns, if used in Bruzzone’s polarizing beam splitter assembly. Moreover, Appellants have not explained or provided evidence to establish that it would have been “extremely difficult or time consuming, if not impossible” to dry Kobayashi’s adhesive having a lesser thickness, for example about 5 microns, as disclosed in Castiglione, if used in Bruzzone’s polarizing beam splitter assembly. In other words, Appellants have not persuasively argued or presented sufficient evidence to demonstrate that using Kobayashi’s adhesion layer, at the thickness disclosed in Castiglione, in Bruzzone’s polarizing beam splitter assembly would have been beyond the skill and creativity of one of ordinary skill in the art. Accordingly, we sustain the rejection of claims 1—16 and 25—28. DECISION For the above reasons, the Examiner’s rejection of claims 1—16 and 25—28 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 6 Copy with citationCopy as parenthetical citation