Ex Parte Gurel et al

Board of Patent Appeals and Interferences

Mar 8, 2010

11381023 (B.P.A.I. Mar. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EMINE ELIF GUREL, GRANT HAY, PHILIP M. PETERS,
SHIXIONG ZHU, CHRISTOPHER A. COENJARTS, CRISTINA
COJOCARIU, TODD M. LOEHR, and JOHN GRAF
____________

Appeal 2009-002805
Application 11/381,023
Technology Center 1700
____________

Decided: March 8, 2010
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
and CHUNG K. PAK and CHARLES F. WARREN, Administrative Patent
Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 22 and 24 only. See the Notice of Appeal
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filed February 29, 2008.1,2 We have jurisdiction pursuant to 35 U.S.C. §§ 6
and 134.
APPEALED SUBJECT MATTER

The subject matter on appeal is directed to a light diffusing film
comprising a polycarbonate and light diffusing particles, with its hiding
power of 0 to about 0.5 (Spec. 1, paras. 0003 and 0005). The light diffusing
film having such hiding power is said to contain light diffusing particles
having a reflective index of about 1.3 to about 1.7. (Compare Spec. 3, para.
0016 with claim 22.). The term “polycarbonate” is broadly defined to
include the compositions, compounds, and copolymers or blends of
polycarbonates with other copolymers comprising carbonate chain units
described at pages 7 through 10 of the Specification. These polycarbonates
are recited to have a yellowness index of less than or equal to about 1.5
(claim 22). According to page 10, paragraph 0034, of the Specification:
Without being bound by theory, the yellowness index
(YI) of the polycarbonate resin can be a factor that contributes
to obtaining the desired luminance and hiding power of the
light diffusing film 110. The polycarbonate can have a

1 As stated in 37 C.F.R. § 41.31(c):
(c) An appeal, when taken must be taken from the rejection of
all claims under rejection which applicant or owner proposes to
contest. . . . [Emphasis added.]
2 The Examiner entered new grounds of rejection against claims 1-15, 17,
and 19-20 under non-statutory obviousness-type double patenting, relying on
the claims of the U.S patents which matured from the Applications relied
upon in the final office action. See Answer (“Ans.”) dated May 30, 2008,
3-5. Appellant did not appeal the original provisional rejection of these
claims (Notice of Appeal and App. Br. 4) and did not respond to these new
grounds of rejection pursuant to 37 C.F.R. § 41.39(b). Therefore, this
matter is not before us.
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yellowness index sufficient to provide the desired properties to
the light diffusing film 110. For example, polycarbonate resin
can have a yellowness index of about 0.8 to about 1.5,
particularly about 0.9 to about 1.3. Unless specifically
specified otherwise, yellowness index herein is measured in
accordance with ASTM E-313-73 (D1925). [(Emphasis
added.)]
Although the Specification, at pages 7 through 10, describes various
processes for producing polycarbonate compositions, compounds, and
copolymers, it does not specify any particular processing conditions for such
polycarbonate compositions, compounds, and copolymers by which the
claimed yellowness index range is obtained. The Specification also states at
page 4, paragraph 0020, that:
The term “hiding power” as used herein refers to the
ability of light diffusing films to mask the light and dark pattern
produced by, for example, a linear array of fluorescent lamps
(e.g., cold cathode fluorescent lamps). Quantitatively, hiding
power can be mathematically described by Figure 1 and the
…equation [recited in claim 22]. [(Emphasis added.)]

Details of the appealed subject matter are recited in representative claim 223
reproduced from the Claims Appendix to the Appeal Brief as shown below:
22. A light diffusing film, comprising:

3 Appellants do not argue any of the claims on appeal separately, but instead
focus their arguments on the limitations of claim 22. Therefore, for
purposes of this appeal, we select claim 22 to decide the propriety of the
Examiner’s § 103 rejection set forth in the Answer (“Ans.”) filed May 30,
2008. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple claims subject to
the same ground of rejection are argued as a group by appellant, the Board
may select a single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the ground of
rejection on the basis of the selected claim alone.”).
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a polycarbonate comprising a yellowness index of less
than or equal to about 1.5; and light diffusing particles having a
refractive index of about 1.50 to about 1.53;

wherein the light diffusing film comprises a hiding power
of 0 to about 0.5 that is mathematically described by the
following equation:

wherein: Li(on) is luminance above ith cold cathode
fluorescent lamp, Lj(off) is luminance at a midpoint between
cold cathode fluorescent lamp j and cold cathode fluorescent
lamp j+l, and n equals number of CCFL lamps.

PRIOR ART
As evidence of unpatentability of the subject matter recited in claims
22 and 24 under 35 U.S.C. § 103(a), the Examiner relies on the following
references at page 3 of the Answer:
Wu 5,237,004 Aug. 17, 1993
Fujita 6,624,933 B2 Sep. 23, 2003

ARGUMENTS
Appellants request review of the Examiner’s rejection of claims 22
and 24 under 35 U.S.C. § 103(a) as unpatentable over Wu, as evidenced by
Fujita.
Appellants traverse the Examiner’s § 103(a) rejection, arguing that
Wu, as evidenced by Fajita, would not have led one of ordinary skill in the
art to a light diffusing film comprising light diffusing particles having a
refractive index of about 1.50 to about 1.53 and a polycarbonate comprising
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a yellowness index of less than or equal to about 1.5, with the light diffusing
film having a hiding power of 0 to about 0.5 as determined by the equation
recited in claim 22 (App. Br. 4-9).
Appellants also contend that Wu does not enable one of ordinary skill
in the art to make and use a polycarbonate comprising a yellowness index of
less than or equal to about 1.5 (App. Br. 5).

ISSUES AND CONCLUSIONS OF LAW
The first dispositive question raised by the dispute between
Appellants and the Examiner is: Have Appellants identified harmful error in
the Examiner’s determination that Wu, as evidenced by Fajita, would have
led one of ordinary skill in the art to a light diffusing film comprising light
diffusing particles having a refractive index of about 1.50 to about 1.53 and
a polycarbonate comprising a yellowness index of less than or equal to about
1.5, with the light diffusing film having a hiding power of 0 to about 0.5 as
determined by the equation recited in claim 22 within the meaning of 35
U.S.C. § 103? On this record, we answer this question in the negative.
The second dispositive question is: Have Appellants demonstrated
that Wu does not enable one of ordinary skill in the art to make and use a
polycarbonate comprising a yellowness index of less than or equal to about
1.5? On this record, we answer this question in the negative.

FINDINGS OF FACT (“FF”)
1. Appellants do not dispute the Examiner’s finding that:
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Wu teaches a light diffusing film (light diffusing polymers
incorporated into clear thermoplastic to films used as light
diffusers, column 1, lines 18-28), comprising: a polycarbonate
and light diffusing particles, wherein the light diffusing film
comprises a so-called hiding power of 1.0 (Examples 49-52,
column 25, lines 47-50) that is mathematically described by the
equation: [Transmitted light intensity at an angle of
0o)/Transmitted light intensity at an angle of 2o], column 22,
lines 29-44). [(Compare Ans. 5 with App. Br. 4-9.)]
2. Wu teaches (col. 13, ll. 3-7) that:
The level of particulate polymer present in the matrix
polymer will depend upon the optical effect desired, the
thickness of final fabricated article, the particle size and the
difference in refractive index between the particle and the
matrix polymer.
3. Wu exemplifies light diffusing films comprising a
polycarbonate and light diffusing particles having a particle size
of 2 to 7 micrometers, wherein the light diffusing films having
a hiding power from 0.072 to 1 in Tables IVa, IVb and XI (cols.
25 and 28)
4. Wu states (col. 22, ll. 26-44) that:
[P]laques…were evaluated for optical properties at room
temperature. A goniophotometer was used to determine the
intensity of light transmitted through the sample plaque at
different angles; the sum of light transmitted at all angles is
expressed as total luminous transmittance. The haze was
determined using a HunterLab colorimeter. Hiding power is
calculated by the following:

where I[0] is the transmitted light intensity at an angle of 0°,
and I[2] is the transmitted light intensity at an angle of 2°.
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5. Wu, like Appellants, employs a conventional polycarbonate and the
specific concentration of light diffusing particles having the particular
particle size to obtain light diffusing film having the desired optical
properties, e.g., the desired hiding power. (Compare Wu’s examples
employing 5% of PMMA or modified PMMA light diffusing particles
having a particle size of 2 or 5 micrometers in a convention polycarbonate
having a light refractive index of 1.585 in cols. 25 and 28, Tables IVa, IVb,
IX and XI with Appellants’ light diffusing film having the claimed hiding
power resulting from employing a conventional polycarbonate having a
refractive index of 1.586 and 0.375 to 6.0 pph of light diffusing particles,
e.g., PMMA-PS, having a particle size of 4 micrometers, at page 5,
paragraph 0022, of the Specification; see also Wu, col. 22, ll. 26-44,
together with Wu, col. 24, l. 26 to col. 28, l. 67.)
6. Wu teaches that the size of light diffusing particles affects either total
luminous transmittance or hiding power (col. 24, ll. 26-38).
7. Appellants do not specifically dispute the Examiner’s finding that
Wu’s light diffusing film having a hiding power of 1, if calculated in terms
of Appellants’ claimed equation, is roughly equal to 0. (Compare Ans. 5-6
with App. Br. 4-9).
8. The Examiner correctly finds at page 7 of the Answer that:
Wu teaches that the difference between the refractive index of
the light diffusing particles and the refractive index of the
polycarbonate matrix can be within about +0.2 units (column
44, lines 9-12). The refractive index of the polycarbonate of
Wu is 1.59 [sic., 1.585] (column 28, lines 25-28), which means
that the refractive index of the light diffusing particles can be
within a range of about 1.39 to about 1.79 [sic., about 1.385 to
about 1.785 (1.585-0.2=1.385 and 1.585+0.2=1.785)], which
encompasses the claimed range of about 1.50 to about 1.53, for
the purpose of providing the desired light diffusing effect.
9. Wu prefers to employ a clear thermoplastic polymer matrix in
forming a light diffusing film although the use of either a clear or
colored polymer matrix was known (col. 10, ll. 36-42 and col. 11, ll.
21-26).
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10. Wu teaches (col. 37, l. 58 to col. 38, l. 23) that:
These examples illustrate the effectiveness of a
particulate polymer of this invention at high use levels to obtain
a desirable balance of optical properties; it further illustrates the
utility of such a particulate polymer in achieving optical
properties deemed commercially acceptable for specific end-use
applications. Plaques were molded… These plaques were
compared with acrylic sheet sold for various diffusive lighting
uses; these acrylic sheets are essentially poly(methyl
methacrylate) modified with wither inorganic particles or
polystyrene of non-uniform particle size. The match with
commercially acceptable optical performance was noted. In the
comparative examples, the plot of normalized intensity vs.
angle in degree was a very close parallel. Improved
transmittance of light and less yellowness was noted while
retaining the desired high haze levels.
11. Wu shows that the above 3 mm-thick plaques having less yellowness
indexes (4.8, 3.4, 0.7 and -1.7) than those of commercially available acrylic
sheets (comparative examples) (14.4, 11.6, and 6.4) have superior light
transmittance, thus showing the improved light transmittance being
associated with less yellowness (col. 38, ll. 8-24 and Table XXIV).
12. Fujita teaches an intermediate light diffusing layer useful for a rear
projection television comprising a base transparent resin, such as a
polycarbonate, and a diffusing agent, such as fine resin particles made of a
cross-linked copolymer comprising methyl methacrylate, styrene, or
inorganic material having an average particle size of 1 to 20 micrometers
and a different refractive index than the base transparent resin (col. 1, ll. 9-
13 and col. 3, l. 60 to col. 4, l. 7).

PRINCIPLES OF LAW
As stated in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18
(2007):
[A]nalysis [of whether the subject matter of a claim
would have been prima facie obvious] need not seek out precise
teachings directed to the specific subject matter of the
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challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.

It is well established that in order to be valid prior art for the purposes
of 35 U.S.C. § 103, a reference must “enable” one of ordinary skill in the art
to practice an invention. In re Payne, 606 F.2d 303, 314-15 (CCPA 1979).
However, a U.S. patent, such as Wu, enjoys a presumption of validity and
operability. 35 U.S.C. § 282; University of Rochester v. G.D. Searle & Co.,
Inc., 358 F.3d 916, 920 (Fed. Cir. 2004); In re Spence, 261 F.2d 244, 246
(CCPA 1958). This presumption applies to the enablement requirement of
the first paragraph of 35 U.S.C. § 112, a prerequisite to validity of a U.S.
patent, and can only be overcome by clear and convincing evidence. Nat’l.
Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195
(Fed. Cir. 1999); G.D. Searle & Co., Inc, 358 F.3d at 920. Thus, the burden
of proving a prior art patent, Wu, as lacking an enabling disclosure rests on
Appellants. Spence, 261 F.2d at 246.
Any arguments not timely raised in the principal Appeal Brief are
considered waived. 37 C.F.R. § 41.37(c)(1)(vii). See also Cross Med.
Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1320-21 n. 3
(Fed. Cir. 2005); In re Watts, 354 F.3d 1362, 1366–68 (Fed. Cir. 2004); In
re McDaniel, 293 F.3d 1379, 1383 (Fed. Cir. 2002). It is not the function of
this Board to review the Examiner’s decision in greater detail than argued by
Appellants. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for nonobvious distinctions over
the prior art.”).
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ANALYSIS
Appellants have not identified harmful error in the Examiner’s
determination that one of ordinary skill in the art would have been led to
employ light diffusing particles having the claimed refractive index range
with a reasonable of expectation of forming Wu’s light diffusing film having
desired optical properties. As indicated supra, both Wu and Fajita teach a
light diffusing film comprising a polycarbonate and light diffusing particles.
Wu, like Appellants, teaches employing a polycarbonate having a refractive
index of, for example, about 1.585 (close to Appellant’s disclosed carbonate
having a refractive index of about 1.586). Wu also teaches that its light
diffusing particles have a refractive index of +0.2 of the refractive index of
the polycarbonate. In other words, Wu’s light diffusing particles have a
refractive index of about 1.385 to about 1.785 (about 1.585+0.2), which
encompasses the claimed reflective index range of the light diffusing
particles recited in claim 22. As our reviewing court stated in In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003):
In cases involving overlapping ranges, we
and our predecessor court have consistently held
that even a slight overlap in range establishes a
prima facie case of obviousness . . . . We have
also held that a prima facie case of obviousness
exists when the claimed range and the prior art
range do not overlap but are close enough such
that one skilled in the art would have expected
them to have the same properties. Titanium Metals
Corp. of America v. Banner, 778 F.2d 775, 783
(Fed. Cir. 1985).

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Appellants also have not identified harmful error in the Examiner’s
determination that one of ordinary skill in the art would have been led to
employ a polycarbonate having the claimed yellowness index in forming
Wu’s light diffusing film. As indicated supra, Wu prefers to employ a clear
matrix in forming its light diffusing film, thus implying a polymer matrix
free of yellow color. Wu also teaches using a polycarbonate having a
refractive index of 1.585 (identical or substantially identical to Appellants’
polycarbonate disclosed at page 5, paragraph 0022, of the Specification) as a
polymer matrix in forming its light diffusing film. Further, Wu shows
improving light transmittance properties with decreasing yellowness indexes
of polymer matrixes in given applications, thus implying the relationship
between the improved light transmittance properties and low yellowness
indexes for given polymer matrixes. Thus, it is well within the ambit of one
of ordinary skill in the art to employ a clear polycarbonate matrix having the
claimed low yellowness index in forming Wu’s light diffusing film. This is
especially true in this case since the use of a polycarbonate having such low
yellowness index is suggested to be desirable or suggested to be a result
effective variable in obtaining a light diffusing film having desired optical
properties. See also In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
(“[D]iscovery of an optimum value of a result effective variable . . . is
ordinarily within the skill of the art.”).
Further, Appellants have not identified harmful error in the
Examiner’s determination that Wu teaches or would have suggested a light
diffusing film having the claimed hiding power. As indicated supra, Wu,
like Appellants, teaches the importance of using a light diffusing film having
the desired optical properties, e.g., the hiding power desired by one of
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ordinary skill in the art. Wu, like Appellants, employs a conventional
polycarbonate and the specific concentration of light diffusing particles
having the particular particle size to obtain a light diffusing film having the
desired hiding power. Compare Wu’s examples employing 5% of PMMA
or modified PMMA light diffusing particles having a particle size of 2 or 5
micrometers in a convention polycarbonate having a light refractive index of
1.585 in cols. 25 and 28, Tables IVa, IVb, IX and XI with Appellants’ light
diffusing filing having the claimed hiding power resulting from employing a
conventional polycarbonate having a refractive index of 1.586 and 0.375 to
6.0 pph of light diffusing particles, e.g., PMMA-PS, having a particle size of
4 micrometers at page 5, paragraph 0022, of the Specification. Appellants
also do not question the Examiner’s calculation of the hiding power taught
by Wu based on the claimed equation, which is said to show that Wu’s
hiding power is roughly equal to the claimed hiding power. Thus, we concur
with the Examiner that Wu teaches a light diffusing film having the claimed
hiding power. See also In re Best, 562 F.2d 1252, 1255 (CCPA 1977) which
states in relevant part:
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. [citation omitted] Whether the
rejection is based on “inherency” under 35 U.S.C. 102, on “prima
facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products. [(Emphasis added.)]

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To the extent that Wu’s exemplified light diffusing film does not
possess the claimed hiding power, the outcome is still not changed. Wu
teaches that the desired hiding power is a known result effective variable for
forming a light diffusing film and can be obtained via optimizing the particle
size, refractive index, and/or concentration of light diffusing particles. Thus,
it is well within the ambit of one of ordinary skill in the art to employ the
optimum particle size, refractive index and/or concentration of light
diffusing particles, together with a polycarbonate matrix to obtain Wu’s light
diffusing film having optimum optical properties, inclusive of the claimed
hiding power. See Boesch, 617 F.2d at 276.
Finally, Appellants have not demonstrated that Wu does not enable
one or ordinary skill in the art to make or use polycarbonates having the
claimed low yellowness indexes. Appellants’ mere argument in the Appeal
Brief is not sufficient to carry the burden of establishing lack of enablement
of a U.S. Patent, Wu. Spence, 261 F.2d at 246; see also In re Lindner, 457
F.2d 506, 508 (CCPA 1972) (Appellants' mere arguments in the Brief cannot
take the place of objective evidence.) As stated above, Wu would have
suggested to one of ordinary skill in the art to employ polycarbonates having
the claimed low yellowness indexes as clear polymer matrixes in forming
light diffusing films. Wu also exemplifies employing a polycarbonate
matrix having a refractive index of 1.585, which is either identical or slightly
different from the polycarbonate preferred by Appellants at page 5,
paragraph 0022, of the Specification in forming a light diffusing film having
the claimed hiding power, Yet, Appellants have not shown that the
information provided by Wu, coupled with the information known in the art,
would not have enabled one of ordinary skill in the art make or use
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polycarbonates having the claimed low yellowness indexes, without undue
experimentation. In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991) (Whether
any given disclosure would enable one of ordinary skill in the art to make
the claimed subject matter without undue experimentation requires
consideration of, among other things, the state of the prior art, the relative
skill of those in the art, the nature of the invention, and the predictability or
unpredictability of the art.). Nor have Appellants shown that Wu’s
exemplified conventional polycarbonate matrix having a refractive index of
1.585, which is either identical or slightly different from the polycarbonate
preferred by Appellants, does not possess the claimed low yellowness index.
Best, 562 F.2d at 1255.
Accordingly, based on the totality of record, including due
consideration of Appellants’ arguments, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness of
the claimed subject matter within the meaning of 35 U.S.C. § 103(a).
ORDER
In view of the foregoing, the decision of the Examiner is affirmed.
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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)(iv)(2008).

AFFIRMED

kmm

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