NIPPON ELECTRIC GLASS CO., LTD.

Patent Trials and Appeals Board

Mar 2, 2021

2020000888 (P.T.A.B. Mar. 2, 2021)

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.
15/755,563 02/27/2018 Koji IKEGAMI 96313.98 5858
96313 7590 03/02/2021
MIYAZAKI & METSUGI
1800 Alexander Bell Drive
Suite 200
Reston, VA 20191
EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
03/02/2021 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):
jkeating@kbiplaw.com
sfunk@kbiplaw.com
uspto@kbiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KOJI IKEGAMI and TOMOHIRO NAGAKANE

Appeal 2020-000888
Application 15/755,563
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, MAHSHID D. SAADAT, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1 and 3–11. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Feb. 27, 2018 (“Spec.”),
the Final Office Action dated Mar. 6, 2019 (“Final Act.”), the Appeal Brief
filed July 25, 2019 (“Appeal Br.”), the Examiner’s Answer dated Sept. 19,
2019 (“Ans.”), and the Reply Brief filed Nov. 11, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Nippon Electric Glass Co., Ltd., as the
real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The subject matter on appeal relates to a display cover member for
reducing the reflection of the background on the surface of a display and
providing “excellent anti-sparkle properties.” Spec. ¶ 1. According to the
Specification, “sparkling” refers to the problem in which the display pixels
and the surface irregularities of the cover member interfere with each other
to produce luminance distribution that makes the display screen less visible.
Id. ¶ 4. Claim 1 is illustrative and reproduced from the Claims Appendix to
the Appeal Brief (disputed limitations italicized and paragraphing added).
1. A display cover member in which:
one of principal surfaces is formed of an uneven surface;
a mean width of roughness profile elements (RSm) of the
uneven surface defined by JIS B 0601-2013 is not less than 1
μm and not more than 30 μm; and
a ratio θ/Rku between an average inclined angle (θ) of
the roughness profile of the uneven surface and a kurtosis of the
roughness profile (Rku) of the uneven surface defined by JIS B
0601-2013 is not less than 0.40° and not more than 1.08°.
ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
argued claims and Appellant’s arguments, we are not persuaded of reversible
error in the appealed rejections.
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The Examiner rejects claims 1 and 3–11 as follows for the reasons
provided in the Final Office Action. Final Act. 2–7.
Claim(s) Rejected 35 U.S.C. § References/Basis
1, 3–9, 10 103 Nozawa,3 Ohishi,4 Honda5
8 103 Nozawa, Ohishi, Honda, Kondo6
11 103 Nozawa, Ohishi, Honda, Amin7
Appellant does not separately argue the rejections or the rejected
claims. Appeal Br. 8.8 Accordingly, we select claim 1 as representative and,
in the absence of arguments directed to the subsidiary rejections, claims 3–
11 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant contends the Examiner erred in rejecting claim 1 over the
combination of Nozawa, Ohishi, and Honda because the rejection relies on
improper hindsight picking and choosing from the cited disclosures to the
exclusion of other parts of the prior art references that provide a full
understanding of what would have been suggested to a person having

3 US 2014/0146454 A1, published May 29, 2014.
4 US 2010/0246011 A1, published Sept. 30, 2010.
5 US 2014/0247495 A1, published Sept. 4, 2014.
6 WO 2014/020836 A1, published Feb. 6, 2014 (citations in the record are to
corresponding English language publication US 2015/0177425 A1,
published June 25, 2015).
7 US 2009/0197048 A1, published Aug. 6, 2009.
8 Appellant requests rejoinder of non-elected claims 12–14. Appeal Br. 8.
The Examiner’s restriction of claims 12–14, however, is not within our
jurisdiction because, under 35 U.S.C. § 134(a), our review is limited to
rejections of claims. Therefore, we do not address claims 12–14 in our
discussion below.

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ordinary skill in the art. Appeal Br. 4. In support of this position, Appellant
directs us to the Examiner’s selection of Honda’s disclosed Rku range to the
exclusion of Honda’s disclosed inclination angle range when calculating an
inclination angle/Rku ratio range. Id. Appellant argues that a person having
ordinary skill in the art would select Honda’s inclination angle range rather
than Ohishi’s inclination angle range because Honda discloses in the same
paragraph, ranges for both the inclination angle and the Rku. Id. (citing
Honda ¶ 118). Appellant contends that Honda’s disclosure of an inclination
angle of 0.7º in paragraph 34 is “merely” to define the term “projection” and
does not suggest an average inclination angle. Id. at 7.
Appellant also argues that “it would have made no sense” to combine
Ohishi’s average inclination angle with Honda’s Rku value because the
record lacks “support or motivation to do so.” Id. at 5. Nevertheless, without
addressing the Examiner’ finding (Final Act. 3; Ohishi ¶ 23) that Ohishi
itself discloses a reason for using its disclosed average inclination angle
range, Appellant argues even if there is motivation to increase the upper
limit of the range, the combination is improper because (1) Ohishi’s
inclination angle is almost three times higher than Honda’s lower limit and
(2) Honda expressly teaches away from increasing the average inclination
angle in order to prevent white muddiness or scintillation. Appear Br. 5–6
(citing Honda ¶ 116). Appellant asserts that “Honda and Ohishi are
sufficiently different such that one of ordinary skill in the art would not have
had a reasonable expectation of success by combining some properties of
one film with other properties of another film.” Id. at 6. Appellant bases this
difference on the different average inclination angles disclosed by Ohishi
and Honda while also conceding “it is not apparent why the average
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inclination angles disclosed by Ohishi and Honda are so different from each
other.” Id.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting the claims over the combination of cited prior
art references.
Appellant’s arguments distinguishing Nozawa, Honda, and Ohishi for
lacking explicit disclosure of the θ/Rku ratio range recited in claim 1 are not
persuasive of error because such arguments attack the references
individually. Appeal Br. 4–6. One cannot show nonobviousness by attacking
references individually where the rejections are based on a combination of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant’s argument (Appeal Br. 5, 7) that the rejection lacks a
reason for modifying Nozawa by selecting Ohishi’s inclination angle range
and Honda’s Rku value is not persuasive of reversible error because the
rejection is supported by the Examiner’s findings in this regard. The
Examiner finds Ohishi discloses a benefit to having an average inclination
value greater than 0.8º, namely to provide sufficient anti-glare effect. Ans. 4.
The record supports the Examiner’s finding. Ohishi ¶ 23. The record also
supports the Examiner’s finding that Honda discloses a benefit to having an
Rku value between 2 and 4 to suppress scintillation and white muddiness
while maintaining an antiglare property. Final Act. 3–4; Honda ¶¶ 116–118.
Appellant does not dispute these findings, but, rather, contends that a
person having ordinary skill in the art would have selected Honda’s average
inclination values together with Honda’s Rku range with a reasonable
expectation of success. Appeal Br. 4. Appellant also asserts that Honda
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expressly teaches away from increased average inclination angles. Id. at 6.
Appellant’s arguments do not persuade us of error in this respect. As the
Examiner finds, Honda discloses “prevention of white muddiness or
scintillation may be insufficient” at values above Honda’s disclosed
inclination angle range. Ans. 5; Honda ¶ 116 (emphasis added). We agree
with the Examiner that the permissiveness of Honda’s teaching suggests a
preference instead of amounting to a teaching away from larger inclination
angles as Appellant contends. “A reference may be said to teach away when
a person of ordinary skill, upon reading the reference would be led in a
direction divergent from the path that was taken by the applicant.” In re
Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001). Honda’s statement leaves
open the direction of larger average inclination angles.
We also find Appellant’s argument unpersuasive of error because it
seeks to bodily incorporate Honda’s antiglare film into Nozawa’s modified
surface with anti-glare properties. “The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference. . . . Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”). Rather, “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
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obvious unless its actual application is beyond his or her skill.” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). In this case, Ohishi generally
teaches the result effective properties of an anti-glare surface with respect to
the average inclination angle. Ohishi ¶ 23 (“When the average inclination
angle is less than 0.8º, anti-glare effect is insufficient. When the average
inclination angle is more than 3.0º, image contrast is insufficient, so that the
optical film is unsuitable for using on the display surface.”).
Appellant’s assertion that a person having ordinary skill in the art
would not have combined Ohishi’s and Honda’s teachings because their
disclosed anti-glare films “are sufficiently different” based on their different
average inclination angle values is not persuasive of Examiner error because
Appellant concedes there is no apparent reason for the difference. Appeal
Br. 6. Appellant’s argument also is not persuasive of error because Honda
recognizes the anti-glare layer may have an inclination angle of “at least
0.7º.” Ans. 5; Honda ¶ 34.
Appellant’s assertion that Honda’s disclosure of an inclination angle
of “at least 0.7º” is not an average inclination angle does not adequately
rebut Honda’s disclosure in paragraph 34 supporting larger average
inclination angles on the order of Ohishi’s disclosure. Appeal Br. 7. Because
Honda’s disclosure in paragraph 34 relates to projections having this
inclination angle and projections forming the surface roughness of the anti-
glare layer, Honda’s disclosure has a relationship to average inclination
angle. Ans. 6; Honda ¶ 116 (“average inclination angle of projections and
depressions”). Moreover, according to Ohishi, the average inclination angle
is related to the thickness of the resin layer. Ohishi ¶ 29. Ohishi describes
controlling the average inclination angle by adjusting, inter alia, the resin
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coating thickness and the average inclination enlarges as a result of the resin
thickness being thinner. Id. Appellant’s Specification similarly discloses
adjusting the ratio θ/Rku and the mean width of roughness profile (Rsm) by
forming a coating film with spraying, and, more particularly, adjusting the
flow rate of air and the amount of light-transmissive material discharged per
unit area. Spec. ¶¶ 84, 86. Thus, the preponderance of the evidence cited in
this Appeal record does not support Appellant’s position that Ohishi and
Honda’s anti-glare films “are sufficiently different” and the references’
teachings cannot be combined.
The record supports the Examiner’s finding that Honda does not teach
the two values (average inclination angle and Rku) are chosen together. Ans.
4. Based on the cited record in this appeal, therefore, the values for average
inclination angle and Rku are not interrelated and either range would have
been suitable for an anti-glare film. Even if there were a relationship
between inclination angle and Rku, we note that an overlap exists between
the ratio calculated for the full ranges of Honda’s average inclination angle
and Rku values and the ratio calculated for the full range of the average
inclination angle and Rku values disclosed in Appellant’s Specification.
Compare Honda ¶ 118 (calculated ratio 0.038< θ/Rku <0.15) with Spec.
¶¶ 33, 34 (calculated ratio 0.12< θ/Rku <7).
In sum, the preponderance of the evidence in this appeal record
supports the Examiner’s conclusion that the claimed subject matter would
have been obvious over the teachings of the cited prior art references.
Accordingly, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 103 for the above reasons and those expressed in the Answer, including
the Response to Argument section.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ References/Basis Affirmed Reversed
1, 3–9, 10 103 Nozawa, Ohishi, Honda 1, 3–9, 10
8 103 Nozawa, Ohishi, Honda, Kondo 8
11 103 Nozawa, Ohishi, Honda, Amin 11
Overall
Outcome 1, 3–11
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED