3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Jan 25, 2021

2020000713 (P.T.A.B. Jan. 25, 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.
15/341,171 11/02/2016 Andrew J. Ouderkirk 78950US012 7312
32692 7590 01/25/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
MEKHLIN, ELI S
ART UNIT PAPER NUMBER
1796
NOTIFICATION DATE DELIVERY MODE
01/25/2021 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW J. OUDERKIRK, MICHAEL J. SYKORA,
ROBERT R. KIESCHKE, KENNETH L. SMITH,
OLESTER BENSON JR., GARY E. GAIDES, TAO LIU,
THOMAS J. BLONG, and GARY T. BOYD
____________

Appeal 2020-000713
Application 15/341,171
Technology Center 1700
____________

Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–7 and 9.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies 3M Company as the real party in
interest. Appeal Brief, filed May 24, 2019 (“Br.”) 2.
2 Final Office Action, mailed January 2, 2019 (“Final Act.”). Appellant has
withdrawn claims 10–30 from consideration. Id. at 2.
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STATEMENT OF THE CASE
Background
The subject matter on appeal relates to light control films.
Specification, filed November 2, 2016 (“Spec.”) ¶ 1. Appellant’s Figure 9,
which we reproduce below, depicts an embodiment of a light control film.

Figure 9 is a cross sectional view of a light control film
Figure 9’s light control film 900 includes light transmissive regions 930 and
light absorptive regions 940. Id. ¶ 107. The light absorptive regions 940
can be formed from grooves 920 that are partially filled with light absorbing
material 941, 951, which may form a meniscus 970. Id.
We also reproduce below Appellant’s Figure 10.
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Figure 10 is a cross-sectional view of an optical article that includes a light
control film and a lens array
Figure 10’s optical article 1000 includes light control film 1002 having light
transmissive regions 1030 and light absorptive regions 1040. Id. ¶ 113. The
optical article may further include an optional clear substrate and linear
lenticular lens array 1092. Id. ¶¶ 115–116.
Of the appealed claims, claim 1 is independent. We reproduce below
claim 1, which is representative of the subject matter on appeal.
1. A light control film comprising alternating light
absorbing and light transmissive regions disposed between, and
substantially perpendicular to, substantially parallel opposing
major first and second surfaces, each light absorbing region
tapering from a wider first end proximate the major first surface
to a narrower second end proximate the major second surf ace,
each light transmissive region terminating at, and aligned with,
a corresponding optical lens at the major first surface, each light
absorbing region partially filled with a light absorbing material
so that the first end of each light absorbing region is recessed
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on each lateral side of the light absorbing region relative to a
base of the optical lens on each lateral side of the light
absorbing region and concave toward the major first surface.
Br. 10 (Claims App’x).
The References
Rouser US 5,204,160 Apr. 20, 1993
Cha US 7,710,036 B2 May 4, 2010
Koehnle US 5,142,415 Aug. 25, 1992
Boyd US 2009/0284836 A1 Nov. 19, 2009
Gaides US 2007/0160811 A1 July 12, 2007
The Rejections
The Examiner maintains the following rejections on appeal:
1. Claims 1–3 under 35 U.S.C. § 103 as unpatentable over the
combination of Rouser and Cha;
2. Claims 5, 7, and 9 under 35 U.S.C. § 103 as unpatentable over
the combination of Rouser, Cha, and Koehnle;
3. Claim 6 under 35 U.S.C. § 103 as unpatentable over the
combination of Rouser, Cha, Koehnle, and Boyd;
4. Claims 1–3 under 35 U.S.C. § 103 as unpatentable over the
combination of Gaides, Rouser, and Cha;
5. Claim 4 under 35 U.S.C. § 103 as unpatentable over the
combination of Gaides, Rouser, Cha, and Boyd;
6. Claims 5, 7, and 9 under 35 U.S.C. § 103 as unpatentable over
the combination of Gaides, Rouser, Cha, and Koehnle; and
7. Claim 6 under 35 U.S.C. § 103 as unpatentable over the
combination of Gaides, Rouser, Cha, Koehnle, and Boyd.
Final Act. 3–15.

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OPINION
Rejections based on Rouser and Cha or Rouser, Cha, and Additional Art
The Examiner rejects claims 1–3, 5–7, and 9 under 35 U.S.C. § 103 as
unpatentable over the combination of Rouser and Cha (claims 1–3), Rouser,
Cha, and Koehnle (claims 5, 7, and 9), or Rouser, Cha, Koehnle, and Boyd
(claim 6). Final Act. 3–5, 9–11, 12–13.
As to claim 1, the Examiner finds Rouser discloses a light control film
including alternating light absorbing and light transmissive regions. Id. at 3.
The Examiner finds that Rouser’s light absorbing regions taper and the light
control film further includes an optical lens at a major surface. Id. The
Examiner further finds Rouser’s light absorbing regions are completely
filled with a light absorbing material. Id. The Examiner, therefore,
acknowledges that Rouser “is silent as to whether the light absorbing region
is partially filled with a light absorbing material.” Id.
The Examiner finds Cha teaches that the bottoms of light absorbing
regions can be recessed and concave to reduce image smear and to increase
surface area in order to firmly attach a film to another sheet. Id. at 3–4
(citing Cha 15:26–34, Fig. 20). The Examiner concludes it would have been
obvious to modify Rouser to include Cha’s concavities to reduce image
smear and/or increase surface area to firmly attach a film to another sheet.
Id. at 4. The Examiner further explains that the combination of Rouser and
Cha would create light absorbing regions that are partially filled relative to a
base of an optical lens, which would permit one to form a concave structure.
Id. The Examiner also finds that, because “Cha discloses the concave
bottom without any corresponding structural requirements,” “it is within the
scope of Cha’s disclosure that the light absorbing region be recessed on each
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lateral side of the light absorbing region relative to a base of the optical
lens.” Id.
Appellant argues that the Examiner errs in finding that the prior art
discloses “each light absorbing region partially filled with a light absorbing
material so that the first end of each light absorbing region is recessed on
each lateral side of the light absorbing region relative to a base of the optical
lens on each lateral side of the light absorbing region,” as claim 1 recites.
Br. 4. In particular, Appellant argues that the Examiner relies on Cha’s
Figure 20 embodiment to address this limitation, but “FIG. 20 shows that on
each lateral side of the units 1010, the bottom 1015 is even with the flat
portions of the bottom surface on each lateral side of the units 1010.” Id.
Appellant further contends that “Cha does not disclose or even suggest
further reducing the filling so that the lateral sides of the bottom 1015 would
be recessed on each lateral side of the light absorbing region,” as claim 1
recites, and “[t]he Examiner has failed to properly account for this missing
claim element.” Id.
Appellant’s arguments are persuasive. The Examiner responds to
Appellant’s argument, stating Appellant “misunderstands both the breadth of
the claimed invention and Cha’s disclosure in the context of the breadth of
the claimed invention.” Answer, mailed August 15, 2019 (“Ans.”) 15.
Specifically, the Examiner finds that Appellant’s Specification and Figure 9
refer to a meniscus to define a recessed region but “[t]he meniscus does not
have a defined starting point” and “Appellant’s description and figures are
otherwise ambiguous as to whether the recessed region requires an exposed
sidewall in order to meet the requirements of the claimed invention.” Id. at
15–16. Nonetheless, claim 1 requires that “the first end of each light
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absorbing region is recessed on each lateral side of the light absorbing
region relative to a base of the optical lens on each lateral side of the light
absorbing region.” The Examiner’s finding regarding the breadth of the
claimed invention does not, on its own, sufficiently explain how Cha or the
combination of Rouser and Cha suggests recessed lateral sides for light
absorbing regions relative to a base of an optical lens.
The Examiner further finds that “a broad interpretation of the claimed
invention is warranted” and, given this, Cha’s Figure 20 shows its “light
absorbing region (1010) begins to taper at each lateral side relative to the
base unit within which it is disposed.” Id. at 16.
Cha is directed to plasma display devices using a filter. Cha 1:12–13.
Cha discloses that a light shield included in a filter may include a base unit
and a plurality of pattern units. Id. at 6:49–52. Cha’s Figure 20 is
reproduced below.

Figure 20 is a cross-sectional view of pattern units with recessed bottoms
Figure 20 depicts an external light shield sheet that includes pattern units
1010 with recessed or concave bottoms 1015. Id. at 15:26–29. Cha teaches
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this structure makes it possible to reduce image smear due to panel light
reflected from bottoms 1015. Id. at 15:29–31.
As Appellant argues, Figure 20 appears to depict the lateral ends of
concave bottoms 1015 extending to the bottom surface of sheet 1000. As a
result, it is unclear on this record how Cha suggests that the lateral sides of
light absorbing regions are recessed relative to the base of an optical lens.
Nor does the Examiner sufficiently explain how the combination of Rouser
and Cha provides such recesses. The Examiner’s rejections of claims 2 and
3 do not remedy this deficiency for the rejection of claim 1.
Accordingly, we reverse the Examiner’s rejection of claims 1–3 under
§ 103 over the combination of Rouser and Cha.
In rejecting claims 5–7 and 9, the Examiner additionally relies on
Koehnle (claims 5, 7, and 9) or Koehnle and Boyd (claim 6). Final Act. 9–
11, 12–13. The Examiner’s reliance on Koehnle and Boyd does not cure the
deficiencies we identify with regard to the rejection of claim 1. Accordingly,
we also reverse the Examiner’s rejection of claims 5, 7, and 9 under § 103
over the combination of Rouser, Cha, and Koehnle, and claim 6 under § 103
over the combination of Rouser, Cha, Koehnle, and Boyd.
Rejections based on Gaides, Rouser, and Cha
The Examiner rejects claims 1–7 and 9 under 35 U.S.C. § 103 as
unpatentable over the combination of Gaides, Rouser, and Cha (claims 1–3),
or the combination of Gaides, Rouser, and Cha with Boyd (claim 4),
Koehnle (claims 5, 7 and 9), or Koehnle and Boyd (claim 6). Final Act. 5–9,
11–12, 14–15.
The Examiner’s rejection of claim 1 relies on Gaides as disclosing a
light control film having alternating light absorbing and light transmissive
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regions, where the light absorbing regions taper. Final Act. 5–6. However,
similar to the rejection over Rouser and Cha alone, the Examiner finds that
Rouser discloses an optical lens, Rouser’s light absorbing regions are
completely filled, and Cha teaches light absorbing regions with recessed
concave bottoms. Id. at 6–7. Therefore, the rejection of claim 1 over
Gaides, Rouser, and Cha contains the same deficiencies we identify above
with regard to the rejection of claim 1 over Rouser and Cha. The
Examiner’s further reliance on Boyd and/or Koehnle to reject dependent
claims 4–7 and 9 does not cure these deficiencies.
Accordingly, we reverse the Examiner’s rejections of claims 1–7 and
9 under § 103 over the combination of Gaides, Rouser, and Cha (claims 1–
3), the combination of Gaides, Rouser, and Cha with Boyd (claim 4),
Koehnle (claims 5, 7 and 9), or Koehnle and Boyd (claim 6).
CONCLUSION
The Examiner’s rejections of claims 1–7 and 9 under 35 U.S.C. § 103
are reversed.
In summary:
Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–3 103 Rouser, Cha 1–3
5, 7, 9 103 Rouser, Cha,
Koehnle
5, 7, 9
6 103 Rouser, Cha,
Koehnle, Boyd
6
1–3 103 Gaides, Rouser,
Cha
1–3
4 103 Gaides, Rouser,
Cha, Boyd
4
5, 7, 9 103 Gaides, Rouser,
Cha, Koehnle
5, 7, 9
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Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
6 103 Gaides, Rouser,
Cha, Koehnle,
Boyd
6
Overall
Outcome
1–7, 9

REVERSED