Ex Parte Fujita et al

Patent Trial and Appeal Board

Aug 11, 2017

12767947 (P.T.A.B. Aug. 11, 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.
12/767,947 04/27/2010 Yutaka FUJITA 071768A 4660
38834 7590 08/15/2017
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036
EXAMINER
WU, VICKI H
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
08/15/2017 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):
patentmail @ whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUTAKA FUJITA, KAZUKI TSUCHIMOTO,
MORIMASA WAD A, TOMOYUKI SENOO,
TAKAFUMI OOURA, KENTAROUIKESHIMA,
and TOMOAKI MASUDA1
Appeal 2016-001959
Application 12/767,947
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is identified as Nitto Denko Corporation (Appeal
Brief, filed July 13, 2015 (“App. Br.”), 2.) In this decision, we also refer to
the Non-Final Office Action mailed February 3, 2015 (“Office Action,”
cited as “Act.”), the Examiner’s Answer mailed October 5, 2015 (“Ans.”),
and the Reply Brief filed December 7, 2015 (“Reply Br.”).
Appeal 2016-001959
Application 12/767,947
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection2 of claims
1—10. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a method for producing multilayer
laminated films.3 Spec. 11. The method is said to “include^ bonding a
transparent film to a resin film” which “can prevent bubbles from being
formed between the resin film and the transparent film and can also prevent
the production of wrinkles or stripe-like.” Id. | 6.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for producing a multilayer laminated film
comprising:
laminating a resin film having a moisture percentage of
10% by weight to 60% by weight with a first transparent film
and a second transparent film each having a moisture
percentage of 0.5% by weight to 5% by weight to be bonded to
both sides of the resin film through an adhesive or pressure-
sensitive adhesive layer interposed therebetween; wherein the
laminating comprising steps of:
passing the resin film and the first transparent film
between a pair of a first metal roll and a first elastic roll in
such a manner that the first transparent film is placed on the
2 The record shows at least four previous Non-Final Actions mailed
February 2, 2011, July 20, 2011, December 30, 2011, and August 30, 2012,
as well as a previous Final Action mailed January 31, 2013.
3 Application 12/767,947 filed April 27, 2010 (Specification cited as
“Spec.”).
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Application 12/767,947
first metal roll side so that they are bonded to each other under
pressure to form a laminated film; and then,
using the laminated film without winding up it and
passing the laminated film and the second transparent film
between a pair of a second metal roll and a second elastic roll in
such a manner that the second transparent film is placed on the
second metal roll side so that they are bonded to each other
under pressure to form a multilayer laminated film, and
wherein the resin film is a polarizing film,
the first transparent film is a first transparent protective
film,
the second transparent film is a second transparent
protective film, and
the multilayer laminated film is a polarizing plate.
App. Br. 14 (Claims Appendix) (emphases added.)
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims and relevant on appeal4 are:
Kanbara
Murakami
Tomoguchi
Tomoguchi
US 2005/0016670 A1
US 2006/0078754 A1
US 2006/0291054 A1
WO 2005/033754 A1
Jan. 27, 2005
Apr. 13, 2006
Dec. 28, 2006
Apr. 14, 2005
REJECTIONS
Claims 1 and 6—8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tomoguchi,5 Murakami, and Kanbara. (Act. 3.)
4 Appellants provide that claims 2—10 stand or fall with claim 1 with respect
to the obviousness rejection. (See App. Br. 12.) References not used for the
obviousness rejection of claim 1 are not relevant to this appeal.
5 The Examiner states that the two Tomoguchi published applications are
equivalent. (Act. 3.) For simplicity, we cite only to the published United
States application.
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Application 12/767,947
Claims 2—5, 9, and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tomoguchi, Murakami, Kanbara, and various additional
references. (Act. 9—15.)
OPINION
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
In analyzing obviousness, the Examiner finds that Tomoguchi
describes adjusting the moisture percentage of a polarizer film to control the
“stripe-shaped appearance faults” of a resulting multilayered film. Act. 5
(citing Tomoguchi | 89); Ans. 6 (same). The Examiner finds that “a resin
film having a moisture percentage of 10% by weight to 60% by weight” as
recited in claim 1 is taught or suggested by Tomoguchi because the
reference teaches that the moisture content of a polarizer film is a result-
effective variable for the multilayered film produced from the polarizer film.
Act. 5.
The Examiner also finds that Murakami describes using a cellulose
film having a moisture content of 0.5 to 1.5 % to form a multilayered film.
Id. (citing Murakami || 1056, 1058). The Examiner accordingly finds that
“a first transparent film and a second transparent film each having a
moisture percentage of 0.5% by weight to 5% by weight” as recited in claim
1 is taught or suggested by Murakami. Id. at 5—6.
Appellants argue, without sufficient explanation and factual support,
that the Examiner reversibly erred because a skilled artisan would not
“modify the moisture percentages of the films as disclosed in Tomoguchi.”
App. Br. 7. Appellants do not respond to, much less dispute, Tomoguchi’s
teaching that “[i]f a moisture percentage ... of a polarizer [film] is
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Application 12/767,947
smaller,. . . stripe-shaped appearance faults” may appear in the resulting
multilayered film. Compare Act. 5 (citing Tomoguchi | 89) with App. Br.
7; compare Ans. 6 with Reply Br. 1—3. Tomoguchi’s teaching regarding the
moisture content is consistent with the Specification which provides that
“stripe-like irregularities or bubbles” may form “[i]f the moisture percentage
is too low.” Compare Tomoguchi | 89 (describing that the moisture content
of a polarizing film being “smaller” may lead to faults and that raising the
moisture content may suppress fault formation in the multilayer film) with
Spec. 142 (describing the necessity to control the moisture content of the
resin film from being either too low or too high). Appellants have not
sufficiently shown that the recited moisture content of the resin film is
anything other than the “discovery of an optimum value of a result effective
variable in a known process” which “is ordinarily within the skill of the art.”
In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Appellants do not argue that the Examiner erred with regard to the
teaching of Murakami for the moisture content of the transparent film. See
App. Br. 7 (merely acknowledging that “Murakami is cited for the ranges of
moisture percentages” for the transparent films).6 Appellants do not respond
to the Examiner’s rationale that a skilled artisan would have replaced the
cellulose film in Murakami with the transparent film in Tomoguchi based on
the advantages described in Murakami. Compare Act 5—6 with App. Br. 7.
No reversible error has been identified with regard to this aspect of the
obviousness analysis.
6 Appellants also state that Murakami is cited for the moisture content of the
resin film which is an incorrect statement of the Examiner’s findings.
Compare App. Br. 7 with Act. 4—5.
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With regard to the recited “a pair of a first metal roll and a first elastic
roll,” the Examiner finds that Kanbara describes using “the combination of
one rubber roll. . . and a metal roll” for bonding a polarizing plate to a
substrate. Act. 6 (citing Kanbara 1112). Also finding that Tomoguchi
describes that prior art rolls may be “any roll of rubber and a metal,” the
Examiner finds that the recited limitation is taught or suggested by the
combined prior art teaching. Id. (citing Tomoguchi | 80.) More
specifically, the Examiner finds that a skilled artisan would have arrived at
the claimed method based on a finite number of sixteen possible
combinations between rubber and metal rolls. Id.; Ans. 5.
Appellants argue that the Examiner reversibly erred because
“Tomoguchi fails to teach the type of rolls used in the pairs [and] it cannot
teach what type of roll should be on the transparent protective film side.”
App. Br. 7. Appellants argue that the specific placements as well as the
moisture content of the films increase the number of possibilities to far more
than sixteen. Id. at 9; Reply Br. 4. Appellants also argue that “Kanbara is
concerned with a different method than the Applicant’s method” and that
there is no reason to combine the production method applied to a hard
material in Kanbara with that of Tomoguchi which applies to a soft and thin
transparent film. App. Br. 7—8.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[W]henthe
question is whether a patent claiming the combination of elements of prior
art is obvious,” the answer depends on “whether the improvement is more
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than the predictable use of prior art elements according to their established
functions.” Id. at 417.
Here, the Examiner finds that the references teach using any type of
rolls to produce multilayered films and using a combination of rubber and
metal rolls for lamination. Act. 6 (citing Tomoguchi | 80, Fig. 1; Kanbara
1112). The Examiner also finds that a skilled artisan would have known to
apply various configurations of the rubber/metal roll combination for the
production of multilayered films (id.; Ans. 5) which is consistent with
figures 3—6 (showing comparative examples as opposed to the claimed
method) of the Specification. For example, Fig. 5 of the Specification shows
two pairs of elastic/metal rolls each with a transparent film placed on the
elastic roll. Fig. 4 shows a pair of elastic/metal rolls with a transparent film
on the metal roll as well as a transparent film on the elastic roll. Fig. 3
shows two pairs of elastic rolls whereas Fig. 6 shows two pairs of metal
rolls.7 Figures 3—6 illustrate various methods on which Appellants rely for
the comparative examples in support of unexpected results. App. Br. 9—12;
see Reply Br. 5 (stating that comparative examples 1—3, 8, 10, and 11 “are
representative of Tomoguchi”).8 These figures are consistent with the
Examiner’s finding that it was known in the art to apply various
7 Figures 3—6 refer to the same components as those illustrated in Figure 1
such as “al” which is an “elastic roll” and “bl” which is a “metal roll.”
Spec. 121. Table 1 specifies that rubber and iron rolls are used when
producing the examples.
8 The Specification refers to comparative examples 1—9. Spec. 1159, Table
1; App. Br. 11 (citing Spec., Table 1). The Appeal Brief additionally
includes a different “Table 1” containing comparative examples 9—11 which,
according to Appellants, is from a declaration previously submitted. App.
Br. 12.
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configurations of the rolls for forming a multilayered film. Appellants
cannot use the comparative examples as both a sword and a shield — using
the examples as the closest prior art to purportedly show expected results
while denying these examples as prior art. Cf. In re Hedges, 783 F.2d 1038,
1041 (Fed. Cir. 1986) (stating that it is impermissible to pick and choose to
apply a reference “only so much of it as will support a given position” but
exclude other necessary parts of the reference). No reversible error has been
identified here.
We now turn to the issue of whether the method recited in claim 1
produces unexpected results as argued by Appellants. “To be particularly
probative, evidence of unexpected results must establish that there is a
difference between the results obtained and those of the closest prior art, and
that the difference would not have been expected by one of ordinary skill in
the art at the time of the invention.” Bristol-Myers Squibb Co. v. Teva
Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).
As noted earlier, the comparative examples Appellants cite in support
of unexpected results are produced using different methods illustrated in
figures 3—6 of the Specification. For example, comparative examples 1—3
are produced using the method illustrated in figure 3, comparative examples
4—7 using figure 4, whereas comparative examples 8 and 9 are produced
using figures 5 and 6 respectively. App. Br. 11 (Table 1.) Appellants have
not explained why these differing methods each constitutes “the closest prior
art” and therefore cannot support nonobviousness based on unexpected
results. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
(“[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior
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art.”). Appellants have also not explained why the results based on rubber
roll and iron roll are commensurate in scope with claim 1 which recites
“elastic roll” and “metal roll” not restricted to rubber and metal,
respectively. No reversible error has been identified in the Examiner’s
finding against unexpected results.
DECISION
The Examiner’s rejection of claims 1—10 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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