Ex Parte Shibata et al

Patent Trials and Appeals Board

Jan 30, 2019

14112496 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/112,496 10/17/2013 Shusaku Shibata
38834 7590 02/01/2019
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
UNITED ST A TES OF AMERICA
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.
P24047USOO 6235
EXAMINER
FROST, ANTHONY J
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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
Exparte SHUSAKU SHIBATA, KATSUNORI TAKADA,
And HIROYUKI TAKEMOTO
Appeal2018-001664
Application 14/112,496
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
September 6, 2016 decision finally rejecting claims 1, 5-7, and 9-16. 2 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We affirm.
1 The Appeal Brief identifies NITTO DENKO CORPORATION as the real
party in interest (Appeal Br. 2).
2 Claim 3 was canceled in an Amendment under 3 7 C.F .R. § 1.116 filed
May 8, 2017, which was entered by the Examiner in an Advisory Action
After the Filing of an Appeal Brief dated May 15, 2017.
Appeal2018-001664
Application 14/112,496
CLAIMED SUBJECT MATTER
Appellants' disclosure is directed to an optical laminate which
includes a base material layer formed of a (meth)acrylic resin film, a hard
coat layer, and a penetration layer formed by the composition for forming
the hard coat layer penetrating into the meth( acrylic) resin film ( Abstract,
Spec. i-f 6). Details of the claimed invention are set forth in claim 1, which is
reproduced below from the Claims Appendix of the Appeal Brief:
1. An optical laminate, comprising:
a base material layer formed of a (meth)acrylic resin
film, wherein the (meth)acrylic resin film has a weight-average
molecular weight of 10,000 to 500,000, and
a hard coat layer formed by applying a composition for
forming a hard coat layer to the (meth)acrylic resin film,
wherein:
the composition for forming a hard coat layer contains a
compound (A) having 9 or more radically polymerizable
unsaturated groups, and a compound (B 1) having 2 to
8 radically polymerizable unsaturated groups;
wherein compound (A) has a weight-average molecular
weight of 2,000 or more, and
a content of the compound (A) is 15 wt% to 100 wt%
with respect to all curable compounds in the composition for
forming a hard coat layer
further comprising, between the base material layer and
the hard coat layer, a penetration layer formed through
penetration of the composition for forming a hard coat layer
into the (meth)acrylic resin film, wherein the penetration layer
has a thickness of 1.2 µm or more.
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Appeal2018-001664
Application 14/112,496
REJECTIONS
I. Claims 1, 5-7, and 13-16 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Shimano3 in view of Kitagishi, 4 and further in view of
Yoshihara. 5
II. Claims 9-12 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Shimano in view of Kitagishi and Yoshihara, and further
in view of Mimura. 6
DISCUSSION
Claim 1. The Examiner finds that Shimano discloses each element of
claim 1, except that (1) while Shimano discloses a base material made of an
acrylic resin it does not disclose a base material made of a (meth)acrylic
resin, and (2) while Shimano teaches that its base material is penetrable, it
does not specifically disclose that its hard coat material would penetrate the
base layer to a thickness of 1.2 micrometers or more (Final Act. 3--4, citing
Shimano ,r,r 1, 2, 5, 6, 9, 24, 39, 40, 60, 118, 119, 147).
With regard to difference (1 ), the Examiner finds that Kitagishi
teaches that (meth)acrylic resins are useful as a broad category of acrylic
resins in optical laminates (Final Act. 3). Therefore, according to the
3 Shimano et al., JP 2009-084328, published April 23, 2009.
4 Kitagishi et al., US 2010/0047484 Al, published February 25, 2010.
5 Yoshihara, US 2010/0227085 Al, published September 9, 2010.
6 Mimura et al., US 2005/0008863 Al, published January 13, 2005.
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Appeal2018-001664
Application 14/112,496
Examiner, it would have been obvious to use a (meth)acrylic resin as the
base material layer in Shimano' s optical laminate (Final Act. 4 ).
With regard to difference (2), the Examiner finds that Yoshihara is in
the same field of endeavor of hard coat layers for use in display device
applications and teaches that it is known to have the material of hard coat
layer mix with the materials of a substrate layer to a penetration depth of
greater than 0.5 micrometers, which would overlap with a penetration depth
of greater than 1.2 micrometers (Final Act. 4, citing Yoshihara ,r,r 3, 17, 22 ).
The Examiner further finds that Yoshihara discloses providing a mixed
gradient layer between the base layer and a hard coat layer with low-
refractive index properties, like that of Shimano, helps to prevent optical
interference between the low refractive index layer and the underlying layer
(Final Act. 4, citing Yoshihara ,r 36). Therefore, according to the Examiner,
it would have been obvious to prepare Shimano' s optical laminate such that
the hard coat layer penetrates into the base material to a depth of more than
1.2 micrometers (id.).
Appellants argue that a heating temperature of at least 80°C is needed
to produce a penetration layer with a thickness of at least 1.2 µm (Appeal
Br. 10). Appellants further argue that Shimano does not disclose or suggest
a penetration layer with the requisite thickness, or the necessary steps to
achieve such a layer (Appeal Br. 11 ). According to Appellants, Shimano
limits heating to no more than 80°C, which cannot produce a penetration
layer having the claimed depth (id.). This argument is not persuasive
because the Examiner has persuasively explained why the teachings of
Yoshihara would have suggested to a person of skill in the art a penetration
layer of at least 1.2 µm. Final Act. 4 ( discussing Yoshihara' s disclosure of
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Appeal2018-001664
Application 14/112,496
mixed layer thickness of O. 5 µm or more). Appellants' arguments that
Shimano does not disclose the claimed limitations are unpersuasive because
the rejection is based on a combination of references, not the disclosure of
Shimano alone.
Appellants also argue that Shimano discloses a wide selection of
materials and methods, "the majority of which would not result in a
penetration layer as per the presently claimed invention" (Appeal Br. 11 ).
According to Appellants, the Examiner has not adequately established why a
person of skill in the art would have selected an acrylic resin from a broader
list of possible materials for the base layer (Appeal Br. 11-12). This
argument is not persuasive because Shimano explicitly recites that acrylate
resins can be used as the base material (Shimano ,r 119). Thus, it would be
have been obvious to select an acrylate resin as the base material.
Appellants argue that "[ t ]he fact that a claimed species or subgenus is
encompassed by a prior art genus is not sufficient by itself to establish a
primafacie case of obviousness" (Appeal Br. 12, citing In re Baird, 16 F.3d
380, 382 (Fed. Cir. 1994). However, Appellants' reliance on Baird is
misplaced because, in Baird, the prior art only disclosed a generic chemical
formula which included the claimed compound (bisphenol A) but did not
specifically disclose that compound. In this instance, as noted above,
Shimano discloses the use of acrylate resins as the base material.
Appellants also argue that the Examiner's reliance on the disclosure of
Yoshihara is improper because:
it is evident that Yoshihara does not teach, disclose or suggest
that a penetration layer formed through penetration of the
composition for forming a hard coat layer into the
(meth)acrylic resin film, wherein the penetration layer has a
thickness of l.2µm or more can be formed when a base material
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Appeal2018-001664
Application 14/112,496
layer formed of a (meth)acrylic resin film; and a hard coat layer
formed by applying a composition for forming a hard coat layer
to the (meth)acrylic resin film, wherein: the composition for
forming a hard coat layer contains a compound (A) having 9 or
more radically polymerizable unsaturated groups and a
compound (B 1) having 2 to 8 radically polymerizable
unsaturated groups are used.
(Appeal Br. 14). This argument is not persuasive because it once again does
not account for the fact that the rejection is based on a combination of
references. That Yoshihara alone does not disclose the claimed invention is
not persuasive of reversible error in the rejection. Appellants "cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on a combination of references." In re Keller, 642 F.2d
413,426 (CCPA 1981).
Finally, Appellants argue that they have demonstrated the criticality of
the limitation that the hard coat layer contains a compound (A) having 9 or
more radically polymerizable unsaturated groups (Appeal Br. 15-16).
Appellants rely on a comparison between Comparative Examples 3 and 4,
which use hexa- or heptafunctional urethane acrylic oligomers (id.).
It is well settled that Appellants have the burden of showing
unexpected results. In re Freeman, 4 7 4 F .2d 1318, 13 24 ( CCP A 1973 );
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The burden requires
Appellants to proffer factual evidence that actually shows unexpected results
relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope
with the protection sought by claim 1 on appeal, In re Grasselli, 713 F.2d
731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA
1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). As explained by the
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Appeal2018-001664
Application 14/112,496
Examiner (Ans. 8-9), Appellants have not demonstrated that the improved
hardness of the films is unexpected, particularly in light of the disclosure in
Shimano of the same compound having good hardness properties.
Moreover, the showing proffered by Appellants is not commensurate in
scope with claim 1, which recites a broad molecular weight range for the
(meth)acrylic resin film and broad range of components for the composition
used to form the hard coat layer.
With regards to dependent claims 5-7, 9 and 13, Appellants suggest
that the claimed limitations impart certain desirable properties to the claimed
optical laminates (Appeal Br. 16-18). However, these arguments are not
persuasive of reversible error in the rejections of these claims because they
do not adequately show that the claim limitations impart unexpected
properties to the claimed laminates. Nor have Appellants adequately refuted
the Examiner findings as set forth in the Final Action which support the
rejections of those claims.
Appellants do not present any separate patentability arguments for
dependent claims 14--16, but instead argue that these claims would not have
been obvious over the combination of references for at least the same
reasons as claim 1. Appeal Br. 18-19. As discussed above, we are not
persuaded of reversible error in the rejection of claim 1 or, therefore, of
reversible error in the rejection of claims 14--16.
CONCLUSION
We AFFIRM the rejection of claims 1, 5-7, and 13-16 under
35 U.S.C. § 103(a) as unpatentable over Shimano in view of Kitagishi, and
further in view of Yoshihara.
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Appeal2018-001664
Application 14/112,496
We AFFIRM the rejection of claims 9--12 under 35 U.S.C. § 103(a) as
unpatentable over Shimano in view of Kitagishi and Yoshihara, and further
in view of Mimura.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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