Ex Parte Haida et al

Patent Trial and Appeal Board

May 31, 2016

12520140 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/520,140 06/19/2009 Nobuyuki Haida
38834 7590 06/02/2016
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT A VENUE, NW
SUITE 700
WASHINGTON, DC 20036
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.
090701 7912
EXAMINER
FROST, ANTHONY J
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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 PAUL M. ZEL TZER and
LLOYD FISCHEL
Appeal2014--003036
Application 12/560,140
Technology Center 3700
Before BEYERL YA. FRANKLIN, JULIA HEANEY, and MONTE T.
SQUIRE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1--4 and 6-26. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b). An Oral Hearing was held on May 12, 2016.
STATEMENT OF THE CASE
Appeal2014-003036
Application 12/560,140
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. A polarizer protective film consisting of, in the following order:
a resin layer (A); and
a resin layer (B 1 ), wherein:
the resin layer (A) is a resin layer containing 50 to 99 wt% of a
(meth)acrylic resin as a main component and contains a UV absorber at a
ratio of 0.5 to 10 wt% with respect to a resin component contained in the
resin layer (A); and
the resin layer (B 1) is a resin layer containing, as a main component,
a polystyrene-based resin.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Dobler et al.
Otome1
US 2003/0039821 Al
WO 2006/112223
published Feb. 27, 2003
published Oct. 26, 2006
THE REJECTION
Claims 1--4 and 6-26 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Otome in view of Dobler.
ANALYSIS
We consider claims 1, 3, and 13 in this appeal, based upon
Appellants' presented arguments. 37 C.F.R. § 41.37(c)(l)(iv) (2014). We
adopt the Examiner's findings and position in the Answer, and AFFIRM,
and add the following for emphasis.
1 We use the English equivalent Otome et al., US 2009/0059369 Al
(published Mar. 5, 2009).
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Appeal2014-003036
Application 12/560,140
With regard to claim 1, the Examiner relies upon Otome for teaching
the claimed subject matter, except for the teaching that the second layer
(resin layer (B 1) in the claim) is a polystyrene-based resin. The Examiner
relies upon Dobler for teaching this aspect of the claimed invention. Ans. 2-
3.
Appellants argue that Otome and Dobler are not combinable because
these references are in different fields of endeavor for the reasons stated on
pages 6-7 of the Appeal Brief and on pages 2--4 of the Reply Brief.
However, we agree with the Examiner's stated response to this argument
made on pages 8-9 of the Answer. We note that "[a] reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor's endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor's attention in
considering his problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
In the instant case, as the Examiner points out, Dobler teaches that the films
can be used in electronic applications (Dobler, i1 0078), and Dobler also
teaches the benefit of employing a protective sheet having properties such as
good weatherability (Ans. 2-3, Dobler, i-f 0033). One skilled in the art
would have considered the problem of providing a film to have protective
properties in an electronic application (such as a liquid crystal display of
Appellants' application) pertinent to both Otome and Dobler, each of which
pertain to electronic applications involving films having protective
properties.
Appellants also argue that it would not have been obvious to have
modified Otome to substitute the base material with resin layer (B) of
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Appeal2014-003036
Application 12/560,140
Dobler because layer (B) of Dobler is a thin painted film which is coated on
substrate layer (A), and thus, layer (B) is not a base material. Appeal Br. 7.
However, we are unpersuaded by such argument for the reasons
stated by the Examiner in the response made on pages 9-10 of the
Answer. On pages 4---6 of the Reply Brief, Appellants reply to the
Examiner's response. Therein, Appellants repeat the positon that it
would not have been obvious to have substituted the base layer of
Otome with the relatively thin layer of Dobler (layer B). However, as
stated in Jn re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations
omitted.):
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings
of the references would have suggested to those of ordinary
skill in the art.
We are thus not persuaded by Appellants' arguments on this point for
the reasons provided by the Examiner in the record.
With regard to claim 3, Appellants submit that the applied art does not
teach that the content ratio of the UV absorber in the resin layer B 1 is less
than the content ratio of the UV absorber in the resin layer A for the reasons
set forth on page 8 of the Appeal Brief and on pages 6-8 of the Reply Brief.
The Examiner disagrees with Appellants' position. The Examiner
states that Otome teaches a first layer having a UV absorber at from 0.02-6%
(i.e. two UV absorbers at 0.01-3% each, i-f 0070). Ans. 10. The Examiner
states that Dobler teaches applying a second layer (reading on the resin B 1 ),
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Appeal2014-003036
Application 12/560,140
capable of being made of a polystyrene (Dobler, i-f 0034) that has an amount
of UV absorber reading on the range of greater than 0 to 2 wt% (Dobler,
i-f 0032). Id. The Examiner concludes that therefore it would have been
obvious to have included the layer of Dobler having UV absorber in the
range of from 0 to 2 wt% as the additional layer of Otome for the benefit of
providing additional weathering resistance, particularly of the other layer of
the protective sheet (Dobler, i-f 0018). Id. The Examiner also states that
accordingly, the amount of UV absorber in the additional layer,
corresponding to layer B 1, may be less than the amount of initiator in the
layer corresponding to A (Dobler, i-f 0032), and it would have obvious to
have adjusted the amount of UV absorber in order to optimize the
weatherability of the protective sheet (Dobler, i-f 0032). Id.
In reply, Appellants argue that the Examiner has not established that
the relative amount of UV absorber between layers A and Bis a result
effective variable for the reasons stated on pages 7-8 of the Reply Brief.
Appellants submit it is the thickness of the layers, not the amount of UV
absorber, that is taught by Dobler as being a result effective variable. Reply
Br. 8. However, Appellants overlook the Examiner's reliance upon
paragraph 0018 of Dobler (Ans. 10), discussed, supra. Paragraph 0018 of
Dobler indicates that the additional presence of ultraviolet absorber (found
in layer B, in addition to the amount of UV absorber in layer A) provides
more protection against decomposition. In other words, Dobler teaches an
association between more UV absorbers and additional protection. Hence,
we are unpersuaded by Appellants' arguments in this regard.
With regard to claim 13, Appellants argue that Otome fails to teach
that the protective film has a light transmittance at 380 nm in a thickness of
50 micrometers of 10% or less. Appeal Br. 8-9.
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Appeal2014-003036
Application 12/560,140
The Examiner disagrees with the aforementioned position of
Appellants. The Examiner states that claim 13 recites a property of a film,
wherein such a film has a transmittance of light of 3 80 nm of less than 10%
for a film of 50 micrometers. Ans. 11. The Examiner finds that Otome
teaches that the light transmittance for a film of 80 micrometers may be less
than 6%, that is, from 0 to 6%. Id. The Examiner finds further that, absent
an objective showing to the contrary, the light of the film of Otome having a
thickness of 50 micrometers would have a lower bound transmittance of 0%.
Id. The Examiner also states that because Otome teaches that it is
advantageous for its protective film to have low transmittance (from 0 to 6%
transmittance), one skilled in the art would have found it a matter of routine
experimentation to maintain the film such that it has from 0 to 10%
transmittance for a film having a thickness of 50 micrometers. Id. The
Examiner's findings are sufficiently supported by the evidence in the record
and Appellants do not respond in the Reply Brief. See Reply Brief,
generally. As such, we are not persuaded of error.
In view of the above, we affirm the rejection.
DECISION
The rejection is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
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Appeal2014-003036
Application 12/560,140
AFFIRMED
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