Ex Parte Aiiso et al

Patent Trial and Appeal Board

Dec 27, 2016

10554343 (P.T.A.B. Dec. 27, 2016)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/554,343 08/14/2006 Yoshimitu Aiiso 38915 5380
116 7590 12/29/2016
PFARNF fr GORDON T T P
EXAMINER
1801 EAST 9TH STREET HINDENLANG, ALISON L
SUITE 1200
CLEVELAND, OH 44114-3108 ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIMITU AIISO and TOSHIE TORII
Appeal 2015-008260
Application 10/554,343
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 5. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A manufacturing method for a polarizing lens
comprising the steps of:
heating and drying a polarizing film, which is constituted
by polyvinyl alcohol and has untreated surface, at a temperature
lower than a glass transition point of the polyvinyl alcohol such
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Application 10/554,343
that a water content of said polarizing film is 4.5 wt% or less to
prevent generation of CO2 bubbles due to a reaction of the
water within said polarizing film with a polyisocyanate
contained in a monomer mixture containing polyisocyanate and
polythiol;
placing the polarizing film inside a mold set for lens
casting;
filling a gap between each of the molds and said
polarizing film with said monomer mixture; and
curing said monomer mixture by polymerization.
Appellants request review of the Examiner’s rejection of claims 1 and
5 under 35 U.S.C. § 103(a) as unpatentable over Evans (US 2001/0028435
Al, published October 11, 2001), Mase (US 5,496,641, issued March 5,
1996), Biethan (US 3,852,375, issued December 3, 1974), Merger (US
4,853,454, issued August 1, 1989), Okamura (US 4,564,545, issued January
14, 1986), Kumagai (JP 10-039137, published February 13, 1998, and
relying on an English machine translation dated April 4, 2011), Chen (US
5,235,014, issued August 10, 1993) and Hennessey (US 2003/0006535 Al,
published January 9, 2003). App. Br. 6; Non-Final Act. 3—8.
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Application 10/554,343
OPINION
Prior Art Rejection1,2
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s prior art rejection under
35 U.S.C. § 103(a) for the reasons presented by the Examiner and add the
following for emphasis.
Independent claim 1 is directed to a method of making a polarizing
lens using a polarizing film having a water content of said polarizing film is
4.5 wt% or less.
The prior art teaches molding of a polarizing lens using a polarizing
film comprising polyvinyl alcohol and contacting the polarizing film with a
monomer mixture containing polyisocyanate and polythiol that is
subsequently cured. Non-Final Act. 3—5; Spec. H 3^4; Evans Abstract,
Figures 1, 2, 4, 7, 8, H 5, 9, 27, 28, 34, 44, 61, 62; Mase Abstract, col. 2,11.
49—62, col. 7,11. 15—18. The prior art recognizes that lens compositions
comprising a polyisocyanate component are prone to react with water and
produce gas bubbles during the molding of lenses that yield undesirable
1 Appellants present argument only for independent claim 1 and relies on
these arguments to address the rejection of claim 5. See Appeal Brief,
generally. Accordingly, we select claim 1 as representative of the subject
matter before us on appeal. Claim 5 stands or falls with claim 1.
2 A discussion of Biethan and Merger is unnecessary for disposition of this
appeal. The Examiner relied on these references to establish as well known
in the art that mixing polyisocyanate with water will generate bubbles. Non-
Final 5—6; Biethan col. 1,11. 45—51; Merger col. 1,11. 40—57. The formation
of bubbles in making polarized lenses using a composition comprising a
polyisocyanate is acknowledged by Appellants and taught by Chen. Spec.
114—5; Chen col. 2,11. 46—56. Thus, Biethan and Merger are duplicative of
this teaching.
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Application 10/554,343
products where the polarizing film and the resin layer become detached
easily. Non-Final Act. 6—7; Spec. Tflf 4—5, 25; Chen col. 2,11. 46—56. Thus,
the prior art also recognizes the desirability of avoiding the formation of
bubbles in making lenses made from polyisocyanate based compositions by
preventing the reaction of the polyisocyanate with water. Spec. 14; Chen
col. 2,11. 46-56.
The Examiner found Okumura and Kumagai disclose as known to
reduce the moisture content of a polarizing film comprising a polyvinyl
alcohol to less than the claimed water content level to increase durability and
optical quality of a polarizing device when laminated. Non-Final Act. 6;
Okumura Abstract, col. 2,11. 7—18, 28-48, col. 7,11. 10—53; Kumagai
Abstract, || 4—11. Okamura particularly suggests reducing the water
content as a treatment prior to lamination of subsequent films. Okumura col.
7,11. 10-53. The Examiner also found Hennessey teaches drying optical
films at temperatures less than the glass transition temperature of the
composition to remove the moisture (water) and reduce the moisture content
to the desired levels before further processing into an end product. Non-
Final Act. 7—8; Okumura col. 7,11. 50-52, 56—65 (Examples 1 4);
Hennessey | 68. The Examiner determined that it would have been obvious
to one skilled in the art to look at the teachings of Okumura, Kumagai, and
Hennessey to modify the prior art, as represented by the combined teachings
of Evans and Mase, to reduce the moisture content of a polarizing film given
the prior art’s recognition of the problem that water reacts with the
polyisocyanate component of a lens composition. Non-Final Act. 6—8.
Appellants argue Evans fails to teach a polymerizable material
containing polyisocyanate and polythiol. App. Br. 11. Appellants
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Application 10/554,343
additionally argue each of Mase, Okumura, Kumagai, Chen, and Hennessey
fail to disclose heating and drying a polarizing film and/or molding of a lens
as claimed. App. Br. 11—13, 15—16.
We are unpersuaded by these arguments for the reasons presented by
the Examiner. Ans. 6—9. Appellants’ arguments do not adequately address
the Examiner’s reasons for combining the teachings of the cited art. It is
well established that nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986); In re Keller, 642 F.2d 413, 425-26 (CCPA 1981) (“The test for
obviousness ... is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”).
As noted above, the Examiner provided a reasonable basis to combine
the cited art to arrive to the claimed invention. Non-Final Act. 3—8.
Moreover, Evans teaches as conventional to treat or condition the polarizing
film prior to molding to enhance adhesion and/or integral bonding within the
optical part. Evans Figure 4, | 59.
Appellants have not adequately explained why one skilled in the art
would not have been capable of modifying Evan’s method of making a
polarizing lens by incorporating a step of heating and drying step the
polarizing step to reduce the moisture content of the film prior to molding
the lens in view of the prior art’s recognition of the detrimental impact of
water to a polyisocyanate based composition and the desire for enhanced
adhesion and/or integral bonding within the optical part. Appellants have
not adequately explained why the water content conditioning step of
Okamura would not have been suitable for conditioning the polarizing film
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of the combined teachings of Evans and Mase to ensure adequate adhesion
between the film and the polyurethane composition.
Thus, Appellants’ arguments do not point to reversible error in the
Examiner’s determination of obviousness. Cf. In re Mayne, 104 F.3d 1339,
1340 (Fed. Cir. 1997) (“Because the applicants merely substituted one
element known in the art for a known equivalent, this court affirms [the
rejection for obviousness].”); In re Font, 675 F.2d 291, 301 (CCPA 1982)
(“Express suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.”).
Accordingly, we sustain the Examiner’s prior art rejection under 35
U.S.C. § 103(a) for the reasons presented by the Examiner and given above.
ORDER
The Examiner’s prior art rejection of claims 1 and 5 under 35 U.S.C.
§ 103(a) is affirmed.
TIME PERIOD
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).
AFFIRMED
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