Ex Parte Nashiki et al

Patent Trial and Appeal BoardMar 18, 2016

12250645 (P.T.A.B. Mar. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/250,645 10/14/2008 Tomotake Nashiki 38834 7590 03/22/2016 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 1250 CONNECTICUT A VENUE, NW SUITE 700 WASHINGTON, DC 20036 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. P8248USOO 4149 EXAMINER JOHNSON, NANCY ROSENBERG ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 03/22/2016 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): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOM OTAKE NASHIKI and HIDEO SUGA WARA 1 Appeal2014-000392 Application 12/250,645 Technology Center 1700 Before JAMES C. HOUSEL, N. WHITNEY WILSON, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1, 5-10, and 13 in the above-identified application. We have jurisdiction pursuant to 35 U.S.C. Â§ 6. An oral hearing was held on February 29, 2016. We REVERSE. 1 According to Appellants, the real party in interest is NITTO DENKO CORPORATION. Appeal Br. 2. Appeal2014-000392 Application 12/250,645 BACKGROUND Appellants' invention relates to a transparent conductive film that may be used in applications such as transparent electrodes in touch panels. Spec. iii! 1-2. Independent claim 1 is representative: 1. A transparent conductive film, comprising: a transparent film substrate; a transparent conductor layer that is provided on one side of the transparent film substrate and has a thickness d of 15 nm to 3 5 nm and an average surface roughness Ra of0.37 nm to 1 nm; at least a single layer of an undercoat layer interposed between the transparent film substrate and the transparent conductor layer; wherein the transparent conductor layer has a maximum surface roughness Ry of 7. 5 nm to 15 nm, and wherein in the transparent conductor layer, the ratio (Ry/d) of the maximum surface roughness Ry to the thickness d is from 0.34 to 1; and wherein in the transparent conductor layer, the ratio (Raid) of the average surface roughness Ra to the thickness dis from 0.017 to 0.045. Appeal Br. 14. The Examiner rejects claims 1, 5-10, and 13 under 35 U.S.C. Â§ 103(a) as being unpatentable over JP 2005-0933182 [hereinafter Naotomi] (published April 7, 2005), in view of US 2005/0269707 Al [hereinafter Nashiki] (issued Dec. 8, 2005). Final Act. 3-6. 2 References to N aotomi herein are to a machine translation provided by the Examiner, see Final Action 3, the accuracy of which is not in dispute. 2 Appeal2014-000392 Application 121250,645 DISCUSSION The Examiner finds that Naotomi teaches a film with an average surface roughness Ra of 1 nm or less, and a maximum surface roughness Ry of 10 nm or less, Final Action 3 (citing Naotomi iii! 13, 40--46), which overlap the ranges required by claim 1. The Examiner states that N aotomi fails to disclose the thickness d, and the ratios Ryld and Raid required by claim 1. Id. at 4. However, the Examiner finds that Nashiki discloses a thickness d of 20 to 35 nm. Id. (citing Nashiki iJ 31, abstract). Dividing the values of Ry and Ra taught by Naotomi by the thickness d taught by Nashiki, the Examiner finds that the combined references teach a ratio Ryld of 0.20 to 0.46, and a ratio Raid of 0.017 to 0.04. Id. Moreover, the Examiner finds that one of ordinary skill in the art would have found it obvious to combine the thickness d ofNashiki with the roughness values Ry and Ra ofNaotomi, because Nashiki teaches that "it is difficult to obtain a continuous film and the surface resistivity is liable to become too high with a thickness of less than 20 nm and there may be a reduction of transparency with a thickness of more than 35 nm." Id. Appellants argue that Naotomi teaches away from a thickness of 25- 35 nm. Appeal Br. 6. According to Appellants, the thickness of the conductive layer in Naotomi is 175 nm, which is significantly thicker than the range described in Nashiki. See id. Appellants argue that, unlike in Nashiki, the application for which the conductive layer is used in Naotomi requires maintaining low surface resistance. Id. (citing Naotomi iii! 6-11 ). Appellants note that in Naotomi's working examples, the surface resistance is in the range 33-35 Qlo, as compared to the comparative examples which 3 Appeal2014-000392 Application 12/250,645 give a surface resistance as high as 133 Q/o. Id. at 6-7 (citing Naotomi iii! 36--46, table 1 ). Appellants argue that, by contrast to N aotomi, "N ashiki disfavors a transparent conductive film with a surface resistance lower than 190 Q/o." Id. at 7 (citing Nashiki iii! 73-75). Appellants also argue that Nashiki teaches that there is an inverse relationship between thickness and surface resistance, so that "increasing the thickness of a transparent conducting film will lower the surface resistance of the resulting conductive film," and that the converse is also true. Id. (citing Nashiki iJ 6, tbls. 1, 2). According to Appellants, Nashiki teaches that "reducing the thickness of a transparent conducting film from 30 nm (Example 2) to 25 nm (Example 3) increases the surface resistance of the resulting transparent conductive film by 50 Q/o." Id. As further evidence that N aotomi teaches away from a thickness of 3 5 nm or less, Appellants also cite a declaration from Tamotake Nashiki, one of the inventors. Id. at 8. According to the declaration, Naotomi teaches that the surface roughness for a film 175 nm thick is adjusted by grinding; however, this method of reducing the surface roughness would not be feasible for a film in the range of 15-35 nm, because such grinding would result in "large flaws, cracks, or large grinding marks" that result in "failure of the transparent conducting film to function as intended." Nashiki Deel. 3. We are persuaded, based on this appeal record, that one of ordinary skill in the art would have been dissuaded from scaling a film as taught by Naotomi from a thickness of 175 nm down to a thickness of 35 nm or thinner. In particular, a preponderance of the evidence shows that significantly decreasing the thickness from that taught by Naotomi would 4 Appeal2014-000392 Application 12/250,645 likely result in high surface resistance that would be unacceptable according to the teachings of N aotomi. Moreover, a preponderance of the evidence on this record shows that obtaining the required average and maximum surface roughness values for a film in the range of 15-35 nm would likely require different techniques than the grinding method taught by Naotomi. Although the Examiner states that one of ordinary skill in the art would have been able to use known processes other than grinding for adjusting the roughness of the film at the thicknesses required by claim 1, see Answer 5-6, the Examiner does not explain why such techniques would result in surface roughness values Ra and Ry within the ranges required by claim 1. Thus, on this appeal record, the Examiner has not made a prima facie case that independent claim 1 is obvious in view ofNaotomi and Nashiki. The Examiner's additional findings regarding dependent claims 5-10, and 13 do not address the deficiencies addressed above. Therefore, we reverse the Examiner's rejection of claims 1, 5-10, and 13. DECISION The Examiner's decision is reversed. REVERSED 5