Ex Parte BermelDownload PDFBoard of Patent Appeals and InterferencesJun 25, 200810190169 (B.P.A.I. Jun. 25, 2008) Copy Citation 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: June 25, 2008 ____________ Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and LINDA M. GAUDETTE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests reconsideration of our Decision of December 14, 2007 (“Decision”) wherein we sustained the Examiner's rejection of the appealed claims under 35 U.S.C. § 103(a) as unpatentable over Shiro in view of Sumi1. Appellant argues that our Decision was based on a “clear 1 The Examiner’s rejection was summarized in our Decision (p. 3) as follows: The Examiner found that Shiro discloses the invention as claimed in claim 21 with the exception of the resin film being Appeal 2007-3663 Application 10/190,169 misinterpretation of the prior art relative to the present claimed invention.” (Request for Rehearing (“Request”) 1.) We have reviewed our Decision in light of the arguments presented by Appellant in the Request. However, we are not persuaded that our Decision was in error. For ease of discussion, representative claim 21 is 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. Appellant concedes that Sumi discloses a composite film having the following structure: adhesive layer (B)/polyester film2 (A)/protective layer (C). (Request 2; Decision 6, FF 10.) Appellant further concedes that Sumi discloses an “adhesive strength between the backside [i.e., protective layer (C)] and front side [i.e., adhesive layer (B)] of such composite film structure 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. 2 E.g., a polyethylene terephthalate film. (Decision 6, FF 13; Sumi, col. 3, ll. 2-6.) 2 Appeal 2007-3663 Application 10/190,169 when such surfaces come into contact when the composite film is rolled into a film roll.” (Request 2.) According to Appellant, Sumi is properly interpreted, relative to the present invention, based on the (B)/(A)/(C) structure of the unwound, composite film. (Request 2.) Appellant thus maintains that Sumi only teaches a single composite film having one “sticky” side (Request 3) where polyester film (A) corresponds to the claimed carrier substrate for adhesive layer (B) (Request 2). Appellant contends that the Board mischaracterized Sumi’s disclosure based on the Examiner’s comparison of Sumi’s wound film roll to the claimed invention. More specifically, Appellant contends that although Sumi’s protective layer (C) is adjacent adhesive layer (B) when the film is rolled, these layers are not adjacent as part of a composite film structure and, therefore, the Board erred in characterizing the polyester film (A) and protective layer (C) of Sumi as corresponding to Appellant's claimed “resin film . . . adhered to the carrier substrate” (claim 21), respectively, by adhesive layer (B). (Request 2.) Appellant contends that, as a result of this mischaracterization, the Board erred in finding that Sumi suggests a particular adhesive strength between the polyethersulfone and polyethylene terephthalate layers of Shiro’s composite film3. (Request 2.) In KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007), the Supreme Court clarified that, in an obviousness analysis, the fact finder is not required to identify “precise teachings directed to the specific subject matter of the challenged claim.” Id. at 1741. Moreover, it is appropriate to consider the inferences and creative steps that a person of ordinary skill in the art would employ. Id. See also, In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (test 3 See Decision 5, FF 5 (citing Shiro, col. 9, ll. 52-59).) 3 Appeal 2007-3663 Application 10/190,169 for obviousness is what the collective teachings of the prior art would have suggested to one of ordinary skill in the art). In the Request for Rehearing, Appellant fails to follow the aforementioned guidelines and improperly focuses on what Sumi explicitly discloses, rather than taking account of what the ordinary artisan would have reasonably inferred from the teachings of Sumi. In particular, we understand Appellant's argument to be that, with respect to adhesive strength, Sumi is only relevant for its explicit disclosure of a suitable adhesive strength for adhering two film layers which are only contacted during the process of winding the film into a roll. Appellant has not, however, explained why the Board erred in its determination of what the ordinary artisan would have understood from Sumi; namely, that by adjusting adhesive strength between a polyethylene terphthalate film and a resin film, regardless of whether these layers are adjacent in a composite film structure or adjacent by virtue of winding the film into a roll, it is possible to obtain good adherence, yet also the ability to separate the two films from one another. (See Decision 10- 11.) Nor has Appellant identified error in the Board’s determination that one of ordinary skill in the art would have applied this knowledge in manufacturing Shiro’s composite film by adjusting adhesive strength, as taught by Sumi, between the layers of Shiro’s composite film within a range overlapping Appellant's claimed range. Appellant argues that “[a] prima facie case of obviousness as to the present claimed invention has [] not been established based on the misapprehended teachings of Shiro and Sumi.” (Request 3.) However, because Appellant has not established that the Board erred in its findings with respect to the individual references, we are likewise not persuaded of 4 Appeal 2007-3663 Application 10/190,169 error in our finding of motivation to combine the references in the manner claimed.4 Appellant additionally argues that the Board erred in its determination that the Examiner properly shifted the burden to Appellant to establish the claimed composite film was not substantially identical to a composite film based on the combined teachings of Shiro and Sumi. (Request 4.) According to Appellant, there is no basis for the Examiner's assumption that the refractive index difference actually obtained for the films of the example (100 µm thick) would be obtained for films at the lower thickness limit of 30 µm, in light of Shiro itself clearly teaching films having a thickness of at least 50 µm are preferred for enabling good optical properties in the invention taught therein, and thus effectively teaching 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 would also apply to thinner films, especially to thinner than the preferred 50 µm lower thickness limit chosen to prevent thickness nonuniformity. (Request 4.) 4 Appellant contends that there is simply no explanation as to how or why one skilled in the art would be motivated to combine Sumi with Shiro because they are directed to different types of films and Sumi’s rolling step is incompatible with Shiro’s process. (Request 3-4.) These arguments fail to identify any additional “points believed to have been misapprehended or overlooked by the Board in its Decision” and, therefore, do not require our consideration. 37 C.F.R. § 41.52(a)(1). In any event, Appellant is reminded that an obviousness determination does not require a showing that all the features of one reference are capable of being physically incorporated into another reference. In re Griver, 354 F.2d 377, 381 (CCPA 1966); In re Billingsley, 279 F.2d 689, 691 (CCPA 1960). 5 Appeal 2007-3663 Application 10/190,169 At the outset, we note that Appellant's argument is essentially identical to that presented in the Appeal Brief and is not persuasive for the same reasons discussed in our Decision (Decision 9 (citing Appeal Br. 9)). Moreover, Appellant has not explained why the Board erred in determining that the Examiner’s findings presented a reasonable basis to conclude that Shiro’s method is capable of producing films having the claimed thickness (Decision 9). (See, supra, n.2.) In conclusion, based on the foregoing, we have granted Appellant's request to the extent that we have reconsidered our decision, but we deny Appellant's request to make any change therein. DENIED cam THOMAS H. CLOSE PATENT LEGAL STAFF EASTMAN KODAK COMPANY 343 STATE STREET ROCHESTER, NY 14650-2201 6 Copy with citationCopy as parenthetical citation