Ex Parte Bermel

Board of Patent Appeals and Interferences

Dec 14, 2007

10190169 (B.P.A.I. Dec. 14, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Marcus S. Bermel

Appeal 2007-3663
Application 10/190,169
Technology Center 1700
____________

Decided: December 14, 2007
____________

Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Examiner’s action finally
rejecting claims 21, 26-28, 53, and 54. Claims 1-20, 29, 35, 41, 42, 46, and
49-52 are also pending but have been withdrawn from consideration. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2007-3663
Application 10/190,169

The invention relates to a transparent resin film used to form electrode
substrates, light polarizers, compensation plates and protective covers in
optical devices such as liquid crystal displays. Spec. 1, ll. 10-13. Claims
21, 27, and 28 are illustrative of the invention and are reproduced below:
21. A composite film comprising:
a resin film coated on a discontinuous thin flexible carrier substrate,
the resin film having a thickness in the range of from about 1 to about 40
µm, the resin film having an in-plane retardation that is less than 5 nm, the
resin film being adhered to the carrier substrate with an adhesive strength of
between 0.3 and 250 N/m, wherein said composite film is a wound film roll
and wherein the resin film is peelable from the carrier substrate.

27. A composite film as recited in claim 26 wherein:
at least a top layer of the multilayer composite includes a surfactant
therein.

28. A composite film as recited in claim 26 wherein:
a plasticizer is incorporated in the optical resin film.

The Examiner relies on the following prior art references to show
unpatentability:
Shiro 5,645,766 July 8, 1997
Sumi 6,582,789 June 24, 2003

Claims 21, 26-28, 53, and 54 stand rejected under 35 U.S.C. § 103 as
unpatentable over Shiro in view of Sumi.
Appellants present separate arguments as to claims 27 and 28. We
decide the Appeal with respect to the remaining claims on the basis of
independent claim 21. See 37 C.F.R. § 41.37(c)(1)(vii).
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The Examiner found that Shiro discloses the invention as claimed in
claim 21 with the exception of the resin film being adhered to the carrier
substrate “with an adhesive strength of between 0.3 and 250 N/m” and the
composite film being “a wound film roll.” Ans. 3-4. The Examiner
contends that it would have been obvious to one of ordinary skill in the art at
the time of the invention to have provided Shiro’s composite film with these
features “in order to enable the optical film to be stuck to the carrier film
substrate so as to be wound up neatly for storage as a multilayer composite
film roll, and yet be easily peeled from the carrier film substrate just prior to
use, as taught by Sumi.” Ans. 4.
Appellants maintain that the Examiner’s conclusion of obviousness is
based on several inaccurate findings of fact. More specifically, Appellants
argue that:
(1) “there is no basis for the Examiner’s assumption that the refractive
index difference actually obtained for the films of the example (100 μm) [in
Shiro] would be obtained for films at the lower thickness limit of 30 μm”
(Br. 3); and
(2) the Examiner incorrectly interpreted Sumi as teaching “a
composite film in a wound film roll, comprising an adhesive layer (B)
peelable from a carrier film substrate (protective layer (C)), with a peel force
of from 0.4 N/m to 40 N/m (10 mN/25 mm to 1,000 mN/25 mm)” (Br. 4
(citations omitted))
Accordingly, the issue presented is: Has the Examiner made accurate
and sufficient factual findings such that it is reasonable to conclude that one
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of ordinary skill in the art would have been motivated to combine the
references in the manner claimed?
The following enumerated findings of fact are relevant to our
consideration of this issue:
Definitions
1) “Birefringence in cast films arises from orientation of polymers
during the manufacturing operation. This molecular orientation causes
indices of refraction within the plane of the film to be measurably
different. In-plane birefringence is the difference between these indices
of refraction in perpendicular directions within the plane of the film.”
Spec. 5, ll. 7-11.
2) “In-plane retardation is a measure of molecular anisotropy within
the plane of the film.” Spec. 5, ll. 12-14.
3) In-plane retardation = refractive index difference (birefringence) ·
film thickness. Shiro, col. 15, ll. 13-15; Spec. 5, ll. 11-12.
Shiro
4) Shiro discloses a casting method for producing an optically
isotropic film which may be used for a liquid crystal display device. The
film is said to be “excellent in surface properties, optical properties and
uniformity and has a reduced residual solvent.” Shiro, col. 16, ll. 14-22.
5) In Shiro’s method, a polyethersulfone layer is formed on a
substrate such as glass, stainless steel, or polyethylene terephthalate.
Shiro, col. 9, ll. 52-59.
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6) Shiro’s film has a refractive index difference of less than 0.0010
and a thickness nonuniformity in the range of from 0.1 to 1% based on
an average film thickness. Shiro, col. 5, ll. 19-39.
7) According to Shiro “[t]he average thickness of the optically
isotropic film . . . is in the range of from 30 to 300 μm, preferably 50 to
200 μm. For a liquid crystal display device, preferred is the film having
an average thickness of 50 to 200 μm. When the average thickness is
larger than the above upper limit, it is difficult to remove the residual
solvent. When it is smaller than the above lower limit, it is difficult to
prevent the thickness nonuniformity. Further, the thickness
nonuniformity greatly influences the optical properties.” Shiro, col. 14,
ll. 42-50.
8) Shiro discloses that the residual solvent amount in the film during
processing must be controlled to allow the film to be peeled from the
substrate. Shiro states that “when the residual solvent amount is too
large, the film is soft so that it is deformed. When the residual solvent
amount is too small, the adhesion of the film to the substrate is high so
that the film has a stress strain upon peeling-off.” Shiro, col. 10, ll. 56-
64.
9) Shiro discloses exemplary films having thicknesses of 98 μm and
103 μm. Col. 17, l. 3; col. 18, l. 36. The refractive index difference in
the exemplary films is less than 0.0001. Shiro, col. 17, ll. 14-15; col. 18,
ll. 45-47.
Sumi
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10) Sumi discloses a surface protective film comprising at least a
polyester film (A) and an adhesive layer (B). Further, a protective layer
(C) containing at least either an antistatic agent or a release agent can be
formed on the surface reverse to the surface on which the adhesive layer
is formed. A release layer (D) can also be formed on the adhesive layer
(B). Sumi, col. 2, ll. 61-67.
11) Sumi discloses that the surface protective film may be used to
protect the surfaces of optical components and optical laminates such as
polarizers and optical retardation films. Sumi, col. 1, ll. 25-28.
12) “Since the surface protective film . . . must be easily peeled off a
substrate such as a polarizer or stainless steel plate, the dry adhesion
against a stainless steel plate of the adhesive layer is preferably 30
mN/25 mm to 500 mN/25 mm. In case the dry adhesion is less than 30
mN/25 mm, the sides of the surface protective film may curl up or the
film may be easily peeled off for some reason disadvantageously. On the
other hand, in case the dry adhesion is more than 500 mN/25 mm, the
surface protective film is not easily peeled off a polarizer or the like, so
that an excessive force which may be inadvertently applied to the
polarizer may deform the polarizer disadvantageously.” Sumi, col. 6, ll.
15-30.
13) The base film (layer A) of the surface protective film is preferably
a polyethylene terephthalate film. Sumi, col. 3, ll. 2-6. This adhesive (B)
is preferably an acrylic adhesive. Sumi, col. 5, ll. 28-29.
14) The surface protective layer (C) preferably contains an antistatic
agent and/or a release agent. The antistatic agent and the release agent
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may be mixed into one layer or form separate layers. Further, the
antistatic agent may be mixed with the adhesive layer or formed between
the adhesive layer and the polyester film. Sumi, col. 9, l. 66-col. 10, l.
10.
15) The release agent preferably has a moderate peel force and
durability because it must protect the surface of the surface protective
film from dust. Sumi, col. 10, ll. 40-42.
16) The antistatic agent and the release agent preferably contain
polymer compounds such as thermoplastic resins, e.g., thermoplastic
polyester resin and acrylic resin, and thermosetting resins, e.g.,
thermosetting acrylic resin, urethane resin, melamine resin and epoxy
resin, as a binder for the purpose of improving the strength of the layer
and the adhesion on the biaxially oriented polyester film, water
resistance, solvent resistance and anti-block properties of the layer.
Sumi, col. 10, ll. 12-19.
17) Sumi discloses forming a film roll by rolling up a surface
protective film, which comprises a polyester film (A), an adhesive layer
formed on one surface of the polyester film (A) and a protective layer
formed on the other surface of the polyester film (A), with the adhesive
layer contacting (sticking to) the protective layer. Sumi, col. 11, ll. 45-
50.
18) In use, the surface protective film is unrolled from the film roll
and stuck on a substrate (such as a polarizer or stainless steel plate) to
protect the surface of the substrate. When the substrate is to be processed
or used for the application for which the substrate is intended, the
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surface protective film is peeled off of the substrate. “When the peel
force against the protective layer is less than 10 mN/25 mm, the surface
protective film may not be rolled up neatly. On the other hand, when the
peel force is more than 1,000 mN/25 mm, great tension is required when
a wide film is unrolled, and such great tension requires large-scale
facilities and increases peeling charge, whereby the surface of the film
may be damaged.” Sumi, col. 11, l. 50-col. 12, l. 3.
Based on the foregoing findings of fact and the reasons well-stated in
the Examiner’s Answer, we conclude that the Examiner made accurate and
sufficient factual findings such that it is reasonable to conclude that the
claimed invention is prima facie obvious in view of the combined teachings
of Shiro and Sumi. We have considered Appellants’ arguments, but do not
find them persuasive in overcoming the Examiner’s rejection for the reasons
discussed below.
Appellants argue that Shiro’s stated preference of a 50 μm lower
thickness limit “effectively teaches against the assumption made by the
Examiner” that the good optical properties obtained for a film having a
thickness of 100 μm in the examples of Shiro, i.e., a refractive index
difference of less than 0.0001, would also apply to thinner films, i.e., 40 μm
or less as claimed in claim 21. Br. 3. However, a reference disclosure must
be evaluated for all that it fairly teaches and not only for what is indicated as
preferred. In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). As pointed out
by the Examiner, Shiro clearly teaches that the method of the invention may
be used to produce 30-40 μm films having the desired optical properties.
Ans. 6. See Finding of Fact 7. Cf. In re Gurley, 27 F.3d 551, 553
(Fed.Cir.1994) ("A reference may be said to teach away when a person of
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ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant."). Thus, in our
view, the Examiner presented a reasonable basis to conclude that Shiro’s
method is capable of producing optically isotropic films having a refractive
index difference of 0.0001 over the entire disclosed thickness range of from
30 to 300 μm. See Finding of Fact 9.
Appellants argue that Shiro “has not demonstrated the capability of
actually making an optically isotropic film at such thickness with such in-
plane retardation by the film casting methods disclosed therein.” Br. 3. As
correctly noted by the Examiner (Ans. 7), Appellants misapprehend the
burden of proof. Where, as here, the Examiner has established that a
claimed product appears to be substantially identical to a product disclosed
by the prior art, the burden is properly shifted to the Appellants to prove that
the product of the prior art does not necessarily or inherently possess
characteristics or properties attributed to the claimed product. In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (“Where patentability rests upon a property of the claimed material
not disclosed within the art, the PTO has no reasonable method of
determining whether there is, in fact, a patentable difference between the
prior art materials and the claimed material. Therefore, where the claimed
and prior art products are identical or substantially identical, or are produced
by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily possess the
characteristics of the claimed product.”). Appellants’ arguments alone are
not sufficient to meet this burden. See C.R. Bard, Inc. v. Advanced
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Cardiovascular Sys., 911 F.2d 670, 674 n.2 (Fed. Cir. 1990) (attorney
arguments are not evidence). See also, Ex parte Gray, (BPAI 1989 )(“The
reason for requiring evidence in declaration or affidavit form is to obtain the
assurance that any statements or representations made are correct, as
provided by 35 U.S.C. § 25 and 18 U.S.C. § 1001.”)
With respect to Sumi, Appellants argue that “there is no peeling of
two distinct films of the composite B/A/C film structure from one another
(such as the optical film of the present invention from a carrier substrate),
but rather only an unwinding of the single B/A/C composite film. Br. 4. As
pointed out by the Examiner, Appellants’ argument is not persuasive
because it fails to address the crux of the Examiner’s rejection. Ans. 9-10.
More specifically, Appellants have not presented arguments to refute the
Examiner’s finding that one of ordinary skill in the art would have been
motivated to provide an adhesive strength within the range of 0.3 and 250
N/m between the optical film and carrier film substrate of Shiro’s composite
film “in order to enable the optical film to be stuck to the carrier film
substrate so as to be wound up neatly for storage as a multilayer composite
film roll, and yet be easily peeled from the carrier film substrate just prior to
use, as taught by Sumi.” (Ans. 4). Stated differently, the Examiner relies on
Sumi for a teaching that adjusting adhesive strength between a polyethylene
terephthalate film and substrate surface, i.e., the same materials used in
Shiro’s composite film (Compare Finding of Fact 5 with Findings of Fact 11
& 13), within a range overlapping Appellants’ claimed range, provides the
benefit of good adherence yet the ability to remove the film from the
substrate without damage (Finding of Fact 12; see Findings of Fact 17 &
18). When a second reference identifies the benefits of adding a feature to
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the primary reference, an obviousness rejection is proper. In re Thrift, 298
F.3d 1357, 1365 (Fed.Cir.2002). See KSR Int'l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1741 (2007) (An obviousness analysis “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.”).
Appellants contend that Sumi fails to provide any motivation to add
surfactants and plasticizers as coating aids to enable production of thin high
quality optical films. Br. 5. With respect to claim 27, Appellants argue that
Sumi’s disclosure is limited to the use of surfactants for their antistatic
properties and ability to function as release agents in release layers. Br. 5.
With respect to claim 28, Appellants argue that while Sumi mentions the use
of fatty acid ester and low molecular weight phthalate esters as additives to
release agents, Sumi fails to disclose the use of plasticizers as coating aids to
minimize blistering, curl, and delamination of resin films during drying
processes. Br. 5
A reference is relevant if it is within the inventor's field of endeavor or
reasonably pertinent to the particular problem confronting the inventor. In
re GPAC, Inc., 57 F.3d 1573, 1578 (Fed. Cir. 1995). As explained by the
Examiner, one of ordinary skill in the art, in considering the problem of
handling and storage of optical films, would have considered the teachings
of both Shiro and Sumi. Ans. 10. Thus, in our view, the Examiner’s finding
of motivation to utilize a surfactant and plasticizer in Shiro’s composite film
is reasonably based on Sumi’s teaching that use of an antistatic agent (which
is a surfactant) provides protection from peeling charge and use of release
agents (which also function as plasticizer) protect the film surface from dust.
Ans. 5. See Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424
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F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in the art need not
see the identical problem addressed in a prior art reference to be motivated
to apply its teachings.”); In re Beattie, 974 F.2d 1309, 1312 (Fed.Cir.1992)
(“As long as some motivation or suggestion to combine the references is
provided by the prior art taken as a whole, the law does not require that the
references be combined for the reasons contemplated by the inventor.”). See
also, In re Hoeschele, 406 F.2d 1403, 1406-07 (CCPA 1969) (“[I]t is proper
to take into account not only specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”).
In view of the above, we find that the preponderance of evidence
weighs in favor of obviousness of as to all of the appealed claims.

ORDER
The Examiner’s decision rejecting claims 21, 26-28, 53, and 54 under
35 U.S.C. § 103 as unpatentable over Shiro in view of Sumi is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(i)(iv).

AFFIRMED
tc

THOMAS H. CLOSE
PATENT LEGAL STAFF
EASTMAN KODAK COMPANY
343 STATE STREET
ROCHESTER, NY 14650-2201
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