Ex Parte Goto et alDownload PDFPatent Trials and Appeals BoardMay 16, 201914488738 - (D) (P.T.A.B. May. 16, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/488,738 09/17/2014 Shusaku Goto 38834 7590 05/20/2019 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 8500 Leesburg Pike SUITE 7500 Tysons, VA 22182 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 ATTORNEY DOCKET NO. CONFIRMATION NO. P3031USOO 5952 EXAMINER GUGLIOTTA, NICOLET ART UNIT PAPER NUMBER 1781 NOTIFICATION DATE DELIVERY MODE 05/20/2019 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): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHUSAKU GOTO, YOSHIFUMI YAMAMOTO, and KENT ARO IKESHIMA 1 Appeal2018-004560 Application 14/488,738 Technology Center 1700 Before ROMULO H. DELMENDO, GEORGE C. BEST, and CHRISTOPHER C. KENNEDY, 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, 4, and 5. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. BACKGROUND The subject matter on appeal relates to polarizing films. E.g., Spec. l; Claim 1. Claim 1 is reproduced below from page 14 ( Appendix A - Claims) of the Appeal Brief: 1 The Appellant is the Applicant, Nitto Denko Corporation, which is also identified as the real party in interest. See App. Br. 2. Appeal2018-004560 Application 14/488,738 1. A polarizing film, comprising a polyvinyl alcohol-based resin film having a thickness of 10 µm or less, wherein: the polyvinyl alcohol-based resin film has an iodine concentration of 8.5 wt% or more; the polarizing film has a cross-linking index of 100 to 200; the polarizing film has a single axis transmittance of 40.0% to 42.5%.; and wherein the cross-linking index is equal to iodine concentration in film multiplied by boric acid concentration in film. ANALYSIS Claims 1, 4, and 5 stand rejected under 35 U.S.C. § I02(a)(l) as anticipated by, or alternatively under 35 U.S.C. § 103 as unpatentable over, Shimizu (WO 2012/074063 Al,2 published June 7, 2012). The Appellant argues the claims as a group. We select claim 1 as representative of the rejected claims, and the remaining claims will stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). 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§ 103 rejection. Accordingly, we affirm the§ 103 rejection for reasons set forth below, in the Final Action, and in the Examiner's Answer. See generally Final Act. 2-7; Ans. 2-10. 2 The Examiner and the Appellant rely on US 2013/0249129 Al (published Sept. 26, 2013) as an English language equivalent. E.g., Final Act. 3. We do the same. 2 Appeal2018-004560 Application 14/488,738 The Examiner finds that Shimizu teaches or suggests a polarizing film comprising each element of claim 1. See Final Act. 3---6. The Examiner acknowledges Shimizu discloses a film "thickness of 3-20 µm," as opposed to the claimed range of" 10 µm or less," but the Examiner finds that the disclosure "is sufficiently specific to anticipate" the claimed range. Id. at 3. The Examiner also acknowledges that Shimizu does not "explicitly teach" the iodine concentration, the cross-linking index, or the transmittance of claim 1. Id. However, the Examiner finds that Shimizu discloses "a polarizing film that is produced by a substantially identical process as Applicant's polarizing film," and that Shimizu's film would necessarily possess the recited iodine concentration, cross-linking index, and transmittance. Id. at 3---6. As to the obviousness basis for the Examiner's rejection (see App. Br. 5-12), the Appellant first argues that Shimizu discloses a transmittance of 38% or less, and that Shimizu "does not disclose, teach or suggest" the claimed range of 40.0% to 42.5%. App. Br. 6. That argument is not persuasive. In the Answer, the Examiner explains that the transmittance disclosure of Shimizu relied on by the Appellant (38% or less) "is not equivalent to Appellant's claimed single axis transmittance" because Shimizu's "38% was obtained at the shortest immersion time within 5 to 120 seconds," while "Appellant's disclosure does not state whether their measured values of 40-42.5 % were measured at the shortest immersion time, but simply states the immersion time is somewhere between 5 seconds and 5 minutes." Ans. 4. The Examiner finds that "[t]he single axis transmittance value is dependent on the immersion time in the dye bath. Therefore, Shimizu' s teaching of 3 8% or less cannot 3 Appeal2018-004560 Application 14/488,738 be reasonably compared to Appellant's claimed values." Id. The Examiner also explains that "the specific working examples" of Shimizu from which the 38% transmittance was obtained were missing some of the process steps disclosed by Shimizu and taught by the Appellant's Specification, and, "[t ]herefore, the single transmittance values of these specific embodiments taught by Shimizu et al. cannot be reasonably compared to Appellant's claimed single axis transmittance values." Id. at 5. In the Reply Brief, the Appellant does not address or otherwise dispute the Examiner's discussion of Shimizu' s 3 8% transmittance value. See generally Reply Br. The Examiner's findings are supported by Shimizu. See Shimizu ,r 7 6 ("The shortest immersion time where the single transmittance of 3 8% or less was obtained was determined." ( emphasis added)), ,r,r 81-107 (Examples 1-6). Accordingly, on this record, we are not persuaded that Shimizu' s disclosure of a 3 8% "shortest immersion time" transmittance for certain embodiments shows reversible error in the Examiner's rejection. The Appellant also argues that, because certain steps of Shimizu' s process are optional, Shimizu's process does not inherently produce a polarizing film that falls within the scope of claim 1. App. Br. 6-12. The Appellant argues that "[t]here is no reason, motivation or guidance in Shimizu et al. for one skilled in the art to select the right combination of processing features to obtain the presently claimed polarizing film." Id. at 11. Those arguments are not persuasive. Shimizu specifically describes the optional steps of the process; it specifically describes reasons for 4 Appeal2018-004560 Application 14/488,738 including those steps; and it specifically guides the order in which the steps are performed. See Shimizu ,r,r 21---64. For example, Shimizu expressly discloses the use of a combined aerial and underwater stretching processes; Shimizu expressly teaches "two advantageous effects" of performing that process; and Shimizu teaches that aerial stretching should precede dyeing which should precede underwater stretching. See id. ,r,r 35-37. As a further example, Shimizu explicitly teaches benefits to including insolubilizing and cross-linking steps ("water resistance can be imparted"), and Shimizu provides guidance as to when in the process those steps should be performed. See id. ,r,r 56-57. The Appellant does not persuasively address those disclosures. We discern no reversible error in the Examiner's determination that a method including those steps in the order proposed by the Examiner, see Final Act. 4--5, would have been obvious to a person of ordinary skill in the art. The Appellant does not persuasively argue that a polarizing film possessing the claimed iodine concentration, cross-linking index, and transmittance would not flow naturally from the method. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) ("The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious."); see also In re Best, 562 F.2d 1252, 1255-56 (CCPA 1977) ("Where, as here, 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 or inherently possess the characteristics of his claimed product."). 5 Appeal2018-004560 Application 14/488,738 Lastly, the Appellant argues that "there is no reason or motivation within Shimizu et al., or within the common knowledge of a skilled artisan at the time of the invention, to expect the cross-linking index and crack values, which are established by the experimental data summarized on page 39 of the specification of the present application." App. Br. 11-12. To the extent that the Appellant is attempting to rely on the data on page 3 8 of the Specification to support an unexpected results argument, we are not persuaded that unexpected results support a conclusion of nonobviousness in this case. The burden of providing evidence to show unexpected results rests with the Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ( emphasis in original). "[ A ]ny superior property must be unexpected to be considered as evidence of non-obviousness." See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (emphasis in original). "[I]t is well settled that unexpected results must be established by factual evidence. 'Mere argument or conclusory statements in the specification does not suffice.'" In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)). Even assuming that the data on page 3 8 show an improvement over the comparative and reference examples, the Appellant gives no reason, supported by evidence, to believe any improvement would have been unexpected. Mere use of the word "unexpected" in the Appeal Brief or Reply Brief, e.g., Reply Br. 11, is insufficient. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the 6 Appeal2018-004560 Application 14/488,738 place of evidence."). The Appellant, for example, has identified no portion of the Specification indicating that any results would have been considered to be unexpected. Nor has the Appellant pointed to any evidence in the record----e.g., a declaration-that the observed results would have been unexpected. Thus, the Appellant has not shown that unexpected results support a conclusion of nonobviousness in this case. On this record, we are not persuaded of reversible error in the Examiner's obviousness rejection. See Jung, 637 F.3d at 1365. We affirm the rejection. Because we affirm the rejection on the basis of obviousness, we need not address the alternative anticipation basis for the rejection. CONCLUSION We AFFIRM the Examiner's obviousness rejection of claims 1, 4, and 5. We express no opinion regarding the anticipation rejection. 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 7 Copy with citationCopy as parenthetical citation