3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Jan 13, 2022

2021000634 (P.T.A.B. Jan. 13, 2022)

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. 16/067,023 06/28/2018 Jeffrey L. Solomon 76084US008 6951 32692 7590 01/13/2022 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER PLESZCZYNSKA, JOANNA ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 01/13/2022 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 JEFFREY L. SOLOMON and ELISA M. CROSS1 ____________ Appeal 2021-000634 Application 16/067,023 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, CHRISTOPHER C. KENNEDY, and JANE E. INGLESE, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to layered, microstructured films said to be useful as, among other things, “brightness enhancement film[s].” E.g., Spec. 1:4-5; Claim 1. Claim 1 is reproduced below from page 6 (Claims Appendix) of the Appeal Brief: 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real parties in interest as 3M Company and 3M Innovative Properties Company. Appeal Br. 2. Appeal 2021-000634 Application 16/067,023 2 1. An article comprising: a first, microstructured layer comprising a first material, and having first and second opposed major surfaces, the first major surface being a microstructured surface, and the microstructured surface having peaks and valleys, wherein the peaks are microstructural features each having a height defined by the distance between the peak of the respective microstructural feature and an adjacent valley; a second layer com prising an adhesive material, and having a first and second opposed major surfaces, wherein at least a portion of the second major surface of the second layer is directly attached to at least a portion of the first major, microstructured surface of the first layer; and a third, microstructured layer comprising at least one of a crosslinkable or crosslinked composition, and having first and second opposed major surfaces, the first major surface being a microstructured surface, and the microstructured surface having peaks and valleys, wherein the peaks are microstructural features each having a height defined by the distance between the peak of the respective microstructural feature and an adjacent valley, wherein at least a portion of the second major surface of the third layer comprises a microstructured surface, and wherein at least a portion of the second major surface of the third layer is directly attached to at least a portion of the first major surface of the second layer. REJECTIONS ON APPEAL The claims stand rejected under 35 U.S.C. § 103 as follows: 1. Claims 1-4 and 6-10 over Edmonds (US 2014/0016208 A1, published Jan. 16, 2014) and Tsai (US 2014/0185273 A1, published July 3, 2014). 2. Claim 5 over Edmonds, Tsai, and Sun (US 2010/0165603 A1, published July 1, 2010). Appeal 2021-000634 Application 16/067,023 3 ANALYSIS The Appellant argues the claims as a group. We select claim 1 as representative, and the remaining claims on appeal will stand or fall with claim 1. After review of the cited evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner’s rejections. Accordingly, we affirm the rejections for reasons set forth below, in the Final Action dated January 30, 2020, and in the Examiner’s Answer. The Examiner finds, and the Appellant does not dispute, that Edmonds teaches or suggests an article comprising each element of claim 1 except that the second major surface of Edmonds’ third layer does not include any portion of microstructured surface. Ans. 4. The Examiner finds that Tsai discloses a backlight module taught to improve light output efficiency, and that Tsai’s structure includes microstructures on both the surface 40 facing towards the light source module 30 and on the surface 10 facing away from the light source module 30. Id. at 4-5 (citing Tsai Fig. 2B). The Examiner finds that Tsai teaches that its “layer 40 includes microstructures 400 which prevent light from generating total reflections at the structured film 10,” and that “microstructures 400 formed on a surface of layer 40 . . . improve the light output efficiency and lighting quality of the article.” Id. at 4-5. The Examiner determines that it would have been obvious “to provide the second major surface of the third layer of Edmonds with a microstructured surface as in Tsai to improve lighting quality of the article of Edmonds.” Id. Appeal 2021-000634 Application 16/067,023 4 The Appellant argues that neither Edmonds nor Tsai teaches “any layer wherein both the first side and the second side of the layer, nor any portion thereof, have a microstructured surface.” Appeal Br. 3. That argument is unpersuasive because it attacks the references individually. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.”). The Examiner proposes adding microstructures to the second surface of Edmonds’ third layer in view of Tsai. The Appellant also observes that the layer structures of Tsai and Edmonds are not identical (i.e., Tsai’s layer 40 is immediately above light source module 30, rather than a third layer in a structure), and the Appellant argues that “the types of structures taught by Tsai are specifically for refracting incoming light into a non-normal direction, which, if added to the ‘third layer’ of Edmonds, would render Edmonds inoperable.” Appeal Br. 4. That argument is unpersuasive because the Appellant provides no explanation of why or how the proposed modification would render Edmonds inoperable. It appears that, at most, the proposed modification would alter the flow of light through the article of Edmonds. The Examiner finds, and the Appellant does not persuasively dispute, that the altered flow would improve the light output efficiency and lighting quality of the article. Ans. 5. It is unclear on this record how the proposed modification would render Edmonds inoperable. In that regard, we observe that Edmonds discloses that its microstructures (prismatic structures) “are generally present on surface 2072, i.e. the opposing surface,” and that “[o]ther relative orientations of the prisms are sometimes desirable.” Edmonds ¶ 81. Thus, Appeal 2021-000634 Application 16/067,023 5 Edmonds itself appears to be inconsistent with the Appellant’s allegation that the proposed modification would render Edmonds inoperable. The Appellant also argues that layer 40 of Tsai bends light to a non- normal direction, whereas “as shown in FIG. 1 of the present application,” light is directed into a normal direction before it passes into the third layer. Appeal Br. 4. The Appellant argues that adding Tsai’s layer 40 to the third layer “would at least partially negate the normalizing function of prism film 101.” Id. That argument is not persuasive because, as the Examiner explains in the Answer, the Examiner is not proposing modification of the subject matter of the Appellant’s application in view of Tsai; the Examiner is proposing modification of Edmonds. See Ans. 9 (“[T]he Appellant discusses the structure of the instant application . . . instead of discussing the combination of Edmonds with Tsai.”). The Appellant also argues that Tsai “appear[s] to teach the advantage of a gap 15 between normalizing structure layer 40 and prism film 10.” Appeal Br. 4. The Appellant argues the presence of gap 15 “teaches away from adding the normalizing structures of optical structure layer 40 as taught by Tsai to the second surface of the third layer of Edmonds.” Id. at 4-5. That argument is not persuasive because Tsai does not criticize, discredit, or otherwise discourage the absence of an air gap. Cf. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (to “teach away,” reference must criticize, discredit, or otherwise discourage the claimed solution). As the Appellant acknowledges in the Reply Brief, Tsai does “not specifically state any advantage or purpose for an air gap between structure layer 40 and prism film 10.” Reply Br. 1. While the Appellant asserts that air gap 15 is Appeal 2021-000634 Application 16/067,023 6 “necessary,” the Appellant identifies no evidence in support of that assertion, and we observe that Tsai discloses that it is the optical structure of layer 40 itself that adjusts the advancing direction of light, not the air gap. See Tsai ¶ 38. While the air gap apparently plays a role in light flow through the apparatus, see, e.g., Tsai Fig. 2B, the Appellant has not shown that Tsai “teaches away” from a structure without such an air gap, or that omission of the air gap would negate the benefits that the Examiner finds would be achieved using the proposed combination. On this record, the Appellant has not identified reversible error in the Examiner’s rejection. See 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 . . . .”). CONCLUSION In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1-4, 6-10 103 Edmonds, Tsai 1-4, 6-10 5 103 Edmonds, Tsai, Sun 5 Overall Outcome 1-10 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED