Ex Parte Bermel

Board of Patent Appeals and Interferences

Jun 25, 2008

10190169 (B.P.A.I. Jun. 25, 2008)

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
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Decided: June 25, 2008
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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.)
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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).)
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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
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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).

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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
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