Ex Parte DiZio et al

Patent Trial and Appeal Board

Mar 6, 2017

12443342 (P.T.A.B. Mar. 6, 2017)

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