Ex Parte Lu et al

Patent Trial and Appeal Board

Apr 19, 2016

11015406 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111015,406 12/17/2004
32692 7590 04/21/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Ying-Yuh Lu
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.
60404US002 7163
EXAMINER
CHANG, VICTORS
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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 YING-YUH LU and DAVID SCOTT THOMPSON 1
Appeal2014-008046
Application 11/015,406
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and DEBRA
L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
10, 12-14 and 21-27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as 3M Innovation Properties
Company (Appeal Brief ("App. Br.") 2.
Appeal2014-008046
Application 11/015,406
The Invention
The claims are directed to an optically clear pressure sensitive
adhesive article. Claim 10, reproduced below, is illustrative of the claimed
subject matter:
10. An optically clear pressure sensitive adhesive article
compnsmg:
a substrate;
an optically clear pressure sensitive adhesive film formed
by polymerizing a (C1-Cs)alkyl (meth)acrylate monomer,
disposed on the substrate; and
a plurality of surface modified nanoparticles disposed in
the optically clear pressure sensitive adhesive film, wherein the
optically clear pressure sensitive adhesive film has a haze value
in a range of 0 to 5% and a visible light transmittance value of
85 to 100% at 550 nm, and a concentration of surface modified
nanoparticles in a range from about 5% wt and about 60% wt;
wherein the substrate comprises an optical film
comprising a brightness enhancement film, retardation plate,
quarter-wave plate, quarter-wave film, multilayer reflective
polarizer, continuous/disperse phase reflective polarizer,
metallized back reflector, prismatic back reflector, diffusely
reflecting back reflector, multilayer dielectric back reflector,
holographic back reflector, an optical compensation film or a
mirror film.
App. Br. 8 (Claims App'x).
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Application 11/015,406
The References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schmidt et al.
Shiraogawa et al.
Husemann et al.
us 5,910,522
US 2003/0071947 Al
US 2004/0254289 Al
The Rejections
June 8,1999
Apr. 17, 2003
Dec. 16, 2004
Claims 10, 12-14, and 21-27 stand rejected under 35 U.S.C § 103(a)
as being unpatentable over Shiraogawa in view of Husemann and further in
view of Schmidt.
OPINION
We affirm the rejections. The Appellants argue the claims as a
group.2 We therefore limit our discussion to one claim, i.e., claim 10, the
sole independent claim. Claims 12-14, and 21-27 stand or fall with that
claim.
The Examiner asserts that Shiraogawa relates to an optical brightness
enhancement film integrally laminated to a collimating film by an acrylic
pressure-sensitive adhesive (PSA) (Ans. 2 (citing Shiraogawa i-fi-f 14, 46 and
4 7) ), that such film can be provided with an acrylic PSA layer for adhesion
with other members, and can include fine particles to obtain optical
diffusivity. Id. (citing Shiraogawa i-fi-1 48 and 52). The Examiner contends
2 Appellants' Brief addresses the rejection of claims 10, 12-14, and 21-25,
but the Claim App'x. also lists claims 26 and 27 as claims at issue. The
Examiner acknowledged that claims 26 and 27 were inadvertently left out of
the list of claims in the Final Action (Ans. 6). We agree with the Examiner
that claims 26 and 27 are within the same scope of structure and composition
as claims 10, 12-14, and 21-25, and stand or fall with them.
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Application 11/015,406
that Shiraogawa's acrylic PSA is necessarily optically clear. Id. With
regard to the claims, the Examiner acknowledges that Shiraogawa does not
disclose (1) the monomer composition used for forming the acrylic PSA, (2)
the fine particles are surface modified nanoparticles, and (3) the optical
(haze value and visible light transmittance) and physical (shear value and
delamination) properties of the composite PSA (nanoparticle containing).
Id. (emphasis original).
Appellants do not dispute the Examiner's findings on Shiraogawa,
focusing instead on Husemann, and making no argument regarding Schmidt.
App. Br. 4.
Appellants assert that "Husemann does not teach the claimed haze and
visible light transmittance at 550 nm and does not teach the same
chemistry." Id. Appellants then argue that Husemann is "directed only to
'co-polymers' of CH2=CH(R1)(COOR2) where Riis Hor CH3 and R2 is an
alkyl chain having 1-20 carbon atoms; and olefinically unsaturated
monomers which contain at least one UV-crosslinking functional group per
monomer," while "the pending claims are directed to polymerizing a (C1-
Cs)alkyl (meth)acrylate monomer." App. Br. 5. Appellants urge that "[i]it
is clear error to assert that the UV co-polymer PSA of Husemann chemistry
is 'the same chemistry as claimed."' Id. at 5.
The Examiner's Answer addresses the "same chemistry" issue first, in
order to then show the claimed optical properties are inherent in Husemann.
The Examiner notes that Husemann teaches a composite PSA
comprising a copolymer and a silicate filler, wherein the silicate filler is 2 to
20 wt% based on the copolymer composition and has a maximum particle
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Application 11/015,406
diameter of 50 nm, preferably not more than 10 to 30 nm (nanoparticulate
fillers). Ans. 3; see also Husemann i-fi-f 13 and 32.
The Examiner then finds that the monomer mixtures taught by
Husemann correspond to the monomer mixtures described in the
Specification. Ans. 3 (citing Spec. 5:15-7:26). The acrylic adhesive of
Husemann is a copolymer of the following monomer mixtures:
(al) 75-99.8 wt.% (meth)acrylic esters, i.e., CH2=CH(R1)(COOR2);
(a2) 0-10 wt.% (meth)acrylic acid, i.e., CH2=CH(R1)(COOH);
(a3) 0.2-5 wt.% olefinically unsaturated monomers which contain
UV-crosslinking functional group (first crosslinkers); and
(a4) 0-20 wt.% olefinically unsaturated monomers which are
different from the monomers which contain UV-crosslinking
functional group (optional second crosslinkers ),
wherein, Ri is Hor CH3 (methyl), and R2 is an alkyl having 1 to 20
carbon atoms. Id. (citing Husemann i-fi-17-13).
The Specification denominates several classes of useful
(meth)acrylate monomers for preparing a poly(meth)acrylate PSA,
including: Class A (acrylic acid esters of an alkyl alcohol, the alcohol
containing from 2 to 8 or from 4 to 8 carbon atoms) (Spec. 5: 16-17); Class
B ((meth)acrylate or other vinyl monomers) (id. 5:24--25); Class C (polar
monomers such as (meth)acrylic) (id. 6: 1-6); and Class D Crosslinkers
(including a photosensitive crosslinker, which is activated by high intensity
ultraviolet (UV) light, a common photosensitive crosslinker used for acrylic
PSAs being benzophenone) (id. 6:9-11 and 6:24--26).
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Application 11/015,406
According to the Examiner, the classes of monomers described in the
Specification correspond to the monomer mixtures of Husemann as follows:
• Class A (acrylic acid esters) and Class B (e.g., meth)acrylate)
monomers of the Specification correspond to Husemann' s (a 1)
monomers (CH2=CH(R1)(COOR2) wherein Riis Hor CH3, and R2
is an alkyl having 1 to 20 carbon atoms);
• Class C monomers (e.g., (meth)acrylic acid) correspond to
Husemann's (a2) monomers ((meth)acrylic acid); and
• Class D (crosslinkers) correspond to Husemann's (a3) and (a4)
crosslinkers ). Ans. 3--4. In particular, with respect to UV
crosslinkers, both Husemann and the Specification teach use of
benzophenone. Husemann i-f 26; Spec. 6:24--26.
Having discussed the correspondence of the monomer mixtures, the
Examiner contends "the monomer mixtures for forming optically clear
acrylic adhesives is essentially the same" in Husemann as in the
Specification. Ans. 4. The Examiner thus takes the position that, in the
absence of any distinct feature to the monomer mixtures disclosed in
Husemann versus those disclosed in the Specification, the compositions of
the acrylic PS As disclosed in both are believed to be essentially of the same
chemistry and would inherently have the same optical properties over the
entire useful wavelength range and physical properties. Id. Appellants
offered no reply to the Examiner's explanation of his reasoning. In essence,
Appellants' argument consists of ( 1) a statement of what Husemann teaches,
(2) the recitation of a claim limitation, and (3) a bald assertion that "[i]t is
clear error to assert that the UV co-polymer PSA of Husemann chemistry is
'the same chemistry as claimed."' See Br. 5. Those arguments do not
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Application 11/015,406
address, or identify reversible error in, the Examiner's detailed findings
concerning the similarities of Husemann's monomer mixtures and the
monomer mixtures used to form the PSA of claim 10. Cf 37 C.F.R. §
41.37(c)(l)(iv) ("A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.");
accord In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.").
We find that the Examiner has provided sufficient scientific reasoning
for his inference, permissible under In re Best, 562 F.2d 1252, 1255 (CCP A
1977) ("\Vhere, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior mi
products do not necessarily or inherently possess the characteristics of his
claimed product"); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
("[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.").
Whether the rejection is based on 'inherency' under
35 U.S.C. § 102, or 'prima facie obviousness' under
35 U.S.C. § 103 ... the burden of proof is the same, and its
fairness is evidenced by the PTO' s inability to manufacture
products or to obtain and compare prior art products.
In re Best, 562 F.2d at 1255 (citing In re Brown, 459 F.2d 531 (CCPA
1972).
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Application 11/015,406
Hence, the burden shifted to Appellants to come forward with
evidence that the processes described in the Specification and in Husemann
are not identical or substantially identical, or the products produced by the
processes described in the Specification (and recited in claim 10) and in
Husemann are different. Appellants have not done so. Thus, we cannot say
that the Examiner erred in finding the monomer mixtures of the claims
inherently have the same properties as Husemann's monomer mixtures.
Appellants' argument that "[g]uessing that if someone modified the
references like the examiner asserts then asserting the transparency and haze
value would inherently be present is not sufficient evidence to support at
[sic] prima facie case of obviousness" is not well taken. The Examiner did
not need to modify Husemann to obtain the claimed optical properties.
Instead, Appellants' Specification instructs that the optical properties are not
an additional requirement imposed by the claims, but rather a property
necessarily present in the invention. Thus, the Examiner had no obligation
to predicate his obviousness finding on factual findings regarding a prior art
teaching of the optical properties in claim 10. See In re Kubin, 561 F.3d
1351, 1357 (Fed.Cir.2009) (stating "[e]ven if no prior art of record explicitly
discusses the [limitation], [applicant's] application itself instructs that [the
limitation] is not an additional requirement imposed by the claims on the
[claimed invention], but rather a property necessarily present in [the claimed
invention]").
Accordingly, we are not persuaded of reversible error in the rejection
of claims 10, 12-14, and21-27.
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Appeal2014-008046
Application 11/015,406
DECISION/ORDER
The rejection of claims 10, 12-14, and 21-27 stand under 35 U.S.C
§ 103(a) as being unpatentable over Shiraogawa in view of Husemann and
further in view of Schmidt 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)(l )(iv) (2009).
AFFIRMED
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