Ex Parte Mori et al

Patent Trial and Appeal BoardSep 18, 2012

10486373 (P.T.A.B. Sep. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/486,373 07/06/2004 Katsuhiro Mori 930055-2013 7931 7590 09/18/2012 H. Jay Spiegel and Associates PC P.O. Box 11 Mount Vernon, VA 22121 EXAMINER LIGHTFOOT, ELENA TSOY ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 09/18/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KATSUHIRO MORI, HIRONOBU NAGOH, JUNJI MOMODA, and SHINOBU IZUMI __________ Appeal 2011-001095 Application 10/486,373 Technology Center 1700 ____________ Before MARK NAGUMO, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001095 Application 10/486,373 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-9 and 14-16. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants’ invention is said to be directed to a method of producing a laminate with a high molecular film that exhibits photochromic properties (Spec. 1:5-15). Claim 1 is illustrative: 1. A method of producing a laminate comprising a substrate having curved surfaces and a photochromic film thereon, said film having a thickness of 20 to 50 µm and containing a photochromic compound in a concentration of 2 to 7% by weight, the method comprising the steps of: preparing the substrate; applying a photocurable composition having a viscosity (25°C) of 60 to 200 cp and containing a photopolymerizable monomer, the photochromic compound and a phosphorus- containing photopolymerization initiator onto the curved surfaces of said substrate by a spin-coating method; and curing said photocurable composition to form the photochromic film by irradiation with an active energy ray having a relative intensity profile of 25 to 50% of wavelength components of not shorter than 400 nm but not longer than 500 nm, 50 to 75% of wavelength components of not shorter than 300 nm but shorter than 400 nm, and 0 to 5% of wavelength components of not shorter than 200 nm but shorter than 300 nm while maintaining said substrate at a temperature not higher than 80°C, wherein an intensity of the active energy ray falling on the substrate is not larger than 30 mW/cm2 at a wavelength of 315 nm, 30 to 90 mW/cm2 at a wavelength of 365 nm, and 50 to 200 mW/cm2 at a wavelength of 405 nm. Appeal 2011-001095 Application 10/486,373 3 Appellants appeal the following rejections: 1. Claims 1-6, 8, and 9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gupta (US 5,531,940 issued July 2, 1996) in view of Mouri (US 5,187,041 issued Feb. 16, 1993), Welch (US 6,602,603 B2 issued Aug. 5, 2003), Blum (US 4,873,029 issued Oct. 10, 1989), Parker (US 5,770,259 issued June 23, 1998) and Modrek (US 5,076,974 issued Dec. 31, 1991). 2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Gupta in view of Mouri, Welch, Blum, Parker, Modrek, and Lu (US 5,175,030 issued Dec. 29, 1992). 3. Claims 14-16 are rejected under 35 U.S.C. §103(a) as being unpatentable over Gupta in view of Mouri, Welch, Blum, Parker, Modrek, and Takayasu (JP 2000-279869 A published Oct. 10, 2000). ISSUE Did the Examiner reversibly err in failing to specifically address the claim 1 requirement that the active energy ray has a relative intensity profile that includes 25% to 50% of wavelength components within the range of 400 to 500 nm? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSES The Examiner’s findings and conclusions regarding claim 1 are presented on pages 3-9 of the Answer. Regarding the claimed relative intensity profile of the active energy ray, the Examiner finds that Gupta teaches exposing a photochromic material to ultraviolet (UV) light which has a wavelength from 300 to 450 nm (Ans. 4). The Examiner finds that Appeal 2011-001095 Application 10/486,373 4 Gupta teaches reducing the portion of the UV light that has a wavelength less than 320 nm. Id. The Examiner relies on Modrek to teach a high pressure mercury discharge lamp emits mixed wavelengths in the 250 to 750 nm range with the majority of the wavelengths in the 300 to 400 nm range (id. at 8). The Examiner reasons that Gupta’s use of a similar lamp teaches that the majority (i.e., greater than 50%) is within the 300 to 400 nm wavelength range. Id. The Examiner finds that Appellants’ Specification evidence is limited to a single wavelength (405 nm) and does not experimentally establish criticality in the claimed intensity profile. The Examiner concludes that it would have been obvious for one skilled in the art to optimize and arrive at the intensity profile of the claimed method through routine experimentation (id. at 10). Appellants argue that the Examiner’s applied prior art does not teach or suggest the claimed intensity profile (App. Br. 16-17; Reply Br. 20). Appellants contend that the Examiner engaged in impermissible hindsight to piece together the teachings of the applied prior art in an attempt to arrive at the claimed invention (App. Br. para. bridging 21-22). Appellants contend that a broad teaching of 300-450 nm with the majority of radiation with a wavelength between 300-400 nm does not constitute a teaching of a specific intensity profile as claimed (id. at 22-23). Appellants contend that the Specification data establishes criticality in the combination of phosphorus photoinitiator and the claimed intensity profile such that the claimed invention would not have been arrived at through routine optimization (Reply Br. 15-19). Appellants argue that the data is not limited to a single wavelength (i.e., 405 nm), but rather the data refers to the intensity of the light on the surface of the lens at that specific wavelength (id. at 15). Appeal 2011-001095 Application 10/486,373 5 The preponderance of the evidence favors Appellants’ argument of nonobviousness. The Examiner’s optimization rationale for arriving at the particular intensity profile does not address why it would have been obvious based upon the teachings of the applied prior art to arrive at an intensity profile with 25% to 50% of the active energy ray having wavelengths between 400 and 500 nm. The Examiner relies on the prior art teaching that the majority of the wavelengths in the UV light applied to a coating should be between 300 to 400 nm, but this finding does not specifically address or explain why the claimed 400-500 nm portion of the intensity profile would have been arrived at through routine optimization. Appellants explain that the 400-500 nm portion of the profile is used for “highly decomposing the phosphorus-containing photopolymerization initiator” (Spec. 90:11-15). Contrary to the Examiner’s findings regarding the Specification evidence of criticality of the claimed intensity profile, we agree with Appellants that the data in the Specification is not limited to a single wavelength (i.e., 405 nm). Rather, the Specification data clearly presents that the 405 nm wavelength is the measurement point for the intensity of the light on the lens surface at that particular wavelength (id. at 112, Table 2 “405nm irradiation intensity on the lens surface”). The Specification discloses that the light source used in the examples when filtered through hard soda glass has wavelength distribution of 200-300 nm: 2%, 300-400 nm: 64%, and 400-500 nm: 34% (id. at 106). In other words, the light source of the Specification examples contains the intensity profile of the claimed method. On this record, the Examiner has not satisfied the initial burden of establishing a prima facie case of obviousness. We reverse Examiner’s Appeal 2011-001095 Application 10/486,373 6 § 103 rejection of independent claim 1 and dependent claims 2-6, 8, and 9. For the same reasons, we reverse the § 103 rejections of dependent claims 7 and 14-16. DECISION The Examiner’s decision is reversed. ORDER REVERSED bar