Ex Parte Ozawa et al

Patent Trial and Appeal BoardAug 23, 2017

13421931 (P.T.A.B. Aug. 23, 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. 13/421,931 03/16/2012 Hiroki Ozawa 120317 4746 38834 7590 08/25/2017 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 1250 CONNECTICUT AVENUE, NW SUITE 700 WASHINGTON, DC 20036 EXAMINER PLESZCZYNS KA, JOANNA ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 08/25/2017 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 HIROKI OZAWA, HIROYUKI TAKAO, MINORU KANATANI, and WATARU NAGATAKE1 Appeal 2015-007428 Application 13/421,931 Technology Center 1700 Before CHUNG K. PAK, WILSON, N. WHITNEY WILSON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2 rejecting claims 1 and 3-7, which are all of the claims pending in the above-identified application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify the real party in interest as “NITTO DENKO CORPORATION[.]” Appeal Brief filed January 22, 2015 (“App. Br.”) 2. 2 Final Action entered August 21, 2014 (“Final Act.”) 2-6; and the Examiner’s Answer entered June 5, 2015 (“Ans.”) 2-5. Appeal 2015-007428 Application 13/421,931 STATEMENT OF THE CASE The subject matter of the claims on appeal relates to a transparent conductive film having a transparent polymer substrate and a transparent conductive layer on one [of the] main surfaces of the transparent polymer substrate and in which a cured resin layer with surface irregularities is formed at least one of: between the transparent polymer substrate and the transparent conductive layer; and on the main surface opposite to the surface with the transparent conductive layer formed thereon of the transparent polymer substrate. Spec. ^ 10; App. Br. 15 (claim 1) (Claims Appendix). Figures 1-3, which are illustrative of the embodiments of such transparent conductive films embraced by the claims on appeal, are reproduced below: Figures 1-3 show transparent conductive films 101, 102, 103, each having transparent conductive layer 4 formed on a first main surface of transparent polymer substrate 1, cured resin layers 2 and/or 3 containing resin composition 21,31 and fine particles 22, 32 placed on a second main surface of transparent polymer substrate 1 that is opposite to the first main surface and/or between transparent polymer substrate 1 and transparent conductive layer 4. Spec. ^ 16. This transparent conductive film is said to have “good 2 Appeal 2015-007428 Application 13/421,931 transparency and a good external appearance while having anti-blocking properties” and is suitable for “touch panel applications.” Spec. 1,9. Details of the appealed subject matter are recited in representative claim 1, the broadest claim on appeal, which is reproduced below from the Claims Appendix of the Appeal Brief (with disputed limitations in italicized form): 1. A transparent conductive film having a transparent polymer substrate and a transparent conductive layer on one main surface of the transparent polymer substrate, wherein a cured resin layer with surface irregularities is formed at least one of: between the transparent polymer substrate and the transparent conductive layer; and on the main surface opposite to the surface with the transparent conductive layer formed thereon of the transparent polymer substrate, the thickness of the cured resin layer is 1 pm or more and 3 pm or less, the cured resin layer contains: a resin composition containing at least two components; and 0.01 to 5 parts by weight offine particles to 100 parts by weight of the solid content of the resin composition, the resin composition undergoes phase separation, the average particle size of the fine particles is 25 to 80% of the thickness of the cured resin layer, and the average particle size of the fine particles is 250 to 2400 nm. App. Br. 15 (Claims Appendix). The Examiner maintains, and Appellants seek review of, the Examiner’s rejection of claims 1 and 3-7 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Ito (US 2010/0260986 Al; 3 Appeal 2015-007428 Application 13/421,931 published Oct. 14, 2010), Keizo3 (JP 10-323931; published Aug. 12, 1998), and Noguchi (US 2009/0029151 Al; published Jan. 29, 2009). Final Act. 2- 5; Ans. 2-13; App. Br. 6-14; Reply Brief filed August 5, 2015 (“Reply Br.”) 1^1. DISCUSSION Upon consideration of the evidence and arguments advanced by the Examiner and Appellants, we concur with Appellants that the Examiner has not demonstrated a prima facie case of obviousness regarding the subject matter recited in claims 1 and 3-7 within the meaning of 35 U.S.C. § 103(a) for the reasons set forth in the Appeal Brief and Reply Brief. We add the following for emphasis. As evidence of obviousness of the subject matter recited in claims 1 and 3-7 under 35 U.S.C. § 103(a), the Examiner relies upon the collective teachings of Ito, Keizo, and Noguchi. Final Act. 2. The Examiner finds that Ito teaches a transparent electroconductive laminate (corresponding to the claimed transparent conductive film) having a transparent polymer substrate (polymer film (2)), a transparent conductive layer (transparent electroconductive layer (5)) on one of the main surfaces of the transparent polymer substrate, and a cured resin layer (3) having an uneven surface provided between the transparent polymer substrate and the transparent conductive layer. Final Act. 2-3; see also Ito 18, 19, 27-33, 43^46, Figs. 1—4. The cured resin layer (3) having an uneven surface taught by Ito can be formed either by fine particles for imparting a surface unevenness or 3 Our reference of Keizo is to the English translation of record relied upon by the Examiner in the above-identified application. 4 Appeal 2015-007428 Application 13/421,931 by phase separation of two components (a polymer and a monomer), without using fine particles for imparting a surface unevenness. Final Act. 2-3; see also Ito 27-33, 145-160 (especially ^ 160, “the cured resin layer has a surface unevenness formed by the phase separation of two components, and does not contain a fine particle for imparting surface unevenness.”). The fine particles used for imparting a surface unevenness taught by Ito can be at least one fine particle C having an average primary particle diameter of more than 0.1 micrometer which is equal to or greater than 1.2 times of the film thickness of the cured resin layer and/or at least one fine particle D of metal oxide or metal fluoride having an average primary particle diameter of lOOnm or less. Ito 27, 28, 29, 148, 150. The cured resin layer has preferably a thickness of 10 micrometers or less, more preferably 5 micrometers or less. Final Act. 3; see also Ito ^ 144. According to paragraph 44 of Ito, the transparent electroconductive laminate (corresponding to the claimed transparent conductive film) also has optional hardcoat layer (1) which is placed on the other surface of the transparent polymer substrate. The Examiner acknowledges that Ito does not teach that the cured resin that undergoes phase separation comprises fine particles [having the average particle size of 250 to 2400 nm (0.25 to 2.4 micrometers) which is equal to 25 to 80% of the thickness of the cured resin layer] in the amount of from 0.01 to 5 parts by weight to 100 parts by weight of the solid content of the resin composition as recited in claim 1. Final Act. 3. To remedy these deficiencies in Ito, the Examiner relies upon Keizo to teach a conductive film that employs fine particles having an average particle size of 1 micrometer to 4 micrometer in the recited amount to obtain better haze control and eliminate Newton rings 5 Appeal 2015-007428 Application 13/421,931 and relies upon Noguchi to teach “a transparent conductive film comprising a hard coating layer [containing fine particles having the average particle size of from 30% to 75% of the thickness of the hard-coating layer to provide sufficient hardness and scratch resistance].” Final Act. 3—4 (citing Keizo, Abstract, 24; Noguchi ]fl[ 8, 14-17, 59). However, we concur with Appellants that the collective teachings of Ito, Keizo, and Noguchi do not teach or would not have suggested forming a cured resin layer having an uneven or roughened surface by using both the phase separation and fine particles having the average particle size of 250 to 2400 nm (0.25 to 2.4 micrometers) which must constitute 25 to 80% of the thickness of the cured resin layer, as recited in claim 1, to obtain better haze control and eliminate Newton rings. As indicated supra, Ito teaches using fine particles having a larger average particles size that includes the average particle size recited in claim 1, provided that such average particle size is 1.2 time or more of the film thickness of the cured resin layer to eliminate Newton rings and obtain better haze control that corresponds to the roughened surface, i.e., “more preferably from 1% to less than 3%” haze (less than 1% can create a Newton ring). See also Ito 148, 156. Keizo, like Ito, teaches using fine particles having a larger average particle size that includes the average particle size recited in claim 1, provided that such average particle size is about 1 or 2 times of the cured resin layer (coating layer) thickness to eliminate Newton rings and obtain better haze control that corresponds to the roughened surface. Keizo ^ 23 (“Since a filler will be buried into a coating agent if mean particle diameter shall be less than 1 micrometer, effective unevenness is not formed and Newton rings cannot be made ... to eliminate thoroughly .... As for the mean particle diameter of 6 Appeal 2015-007428 Application 13/421,931 a filler, since it is preferred to suppress a haze rate to 5% or less and 3 more% or less .... It is preferred to carry out by 1 to 2.0 times the coating layer thickness.”), ^ 24 (“If quantity of a filler is increased, it is effective in elimination of Newton rings, but since a haze rate also increases with the increase in the amount of fillers, it is preferred to make number average density per unit area into below 3000 piece [of] [/mm]2 and below 2500 more piece [/mm]2.”). Keizo and Ito do not teach or suggest using fine particles having the average particle size of 250 to 2400 nm (0.25 to 2.4 micrometers), which must constitute 25 to 80% of the thickness of the cured resin layer, as required by claim 1. Nor does Keizo contradict Ito’s disclosure of using either the phase separation without using fine particles or fine particles having an average particle size of larger than 0.1 microns (corresponding to about 100% or more of the film thickness of the cured resin layer) to form a cured resin layer having an uneven surface that provides desired haze control and eliminate Newton rings. Compare Keizo Tflj 23, 24, with Ito 30, 60. As also acknowledged by the Examiner, Noguchi teaches using “a transparent conductive film comprising a hard coating layer . . . [containing] fine particles having an average particle size of from 30% to 75% of the thickness of the hard-coating layer” to provide sufficient hardness and scratch resistance. Final Act. 3. Moreover, as Appellants correctly explain, Noguchi shows that such particles provide an increased haze rate above 30% which is undesirable in the cured resin layer taught by Ito. App. Br. 11; compare also Noguchi, Table 1, with Ito ]fl[ 156, 159. This showing in Noguchi is also consistent with the teachings of Ito and Keizo, which recommend the use of fine particles having the average particle size of about 7 Appeal 2015-007428 Application 13/421,931 1,1.2 times, or more of the thickness of the cured resin layer if the desired haze control is to be obtained as indicated supra. Thus, from our perspective, one of ordinary skill in the art would have been led to use the fine particles taught by Noguchi in the optional hardcoat layer of the transparent conductive film taught by Ito, rather than the cured resin layer of the transparent conductive film taught by Ito. To do so would destroy the invention on which Ito is based. Ex parte Hartmann, 186 USPQ 366, 367 (BPAI 1974) (“Reynolds cannot properly be combined with Graham et al. relative to the employment of continuous monofilaments, since to do so would destroy that on which the invention of Graham et al. is based, namely, the use of very short fibers.”) Accordingly, on this record, we reverse the Examiner’s decision rejecting claims 1 and 3-7 under 35 U.S.C. § 103(a). DECISION Upon consideration of the record, and for the reasons given, it is ORDERED that the decision of the Examiner to reject claims 1 and 3- 7 under 35 U.S.C. § 103(a) is REVERSED. REVERSED 8