Ex Parte Hamamoto et al

Board of Patent Appeals and Interferences

Mar 30, 2006

10071301 (B.P.A.I. Mar. 30, 2006)

The opinion in support of the decision being entered today was not written for
publication in a law journal and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EIJI HAMAMOTO, YOUICHIROU SUGINO,
SEIICHI KUSUMOTO, and TAKASHI SHOUDA
____________

Appeal No. 2006-0124
Application No. 10/071,301
____________

HEARD: January 11, 2006
____________

Before JERRY SMITH, GROSS, and LEVY, Administrative Patent Judges.
GROSS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 24, which are all of the claims
pending in this application.
Appellants' invention relates to a polarizing plate having a
protective film bonded to a polarizing film using an adhesive
formed of a water-soluble crosslinking agent capable of
crosslinking a vinyl alcohol-based polymer. Claim 1 is
illustrative of the claimed invention, and it reads as follows:
1. A polarizing plate comprising a polyvinyl alcohol-based
polarizing film containing a dichroic substance and a transparent
Appeal No. 2006-0124
Application No. 10/071,301

2

protective film bonded to at least one surface of the polyvinyl
alcohol-based polarizing film through an adhesive layer, wherein

the adhesive layer comprises (i) a water-soluble
crosslinking agent capable of crosslinking a vinyl alcohol-based
polymer, and (ii) a catalyst.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Delangre et al. (Delangre) 3,015,989 Jan. 09, 1962
Buzzell 3,531,351 Sep. 29, 1970
Shulman et al. (Shulman) 4,545,648 Oct. 08, 1985
Claims 1 through 5, 9 through 12, and 19 through 24 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Buzzell.
Claims 6 through 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Buzzell in view of Shulman.
Claims 13 through 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Buzzell in view of Delangre.
Reference is made to the Examiner's Answer (mailed May 24,
2005) for the examiner's complete reasoning in support of the
rejections, and to appellants' Brief (filed March 18, 2005) and
Reply Brief (filed July 25, 2005) for appellants' arguments
thereagainst.

Appeal No. 2006-0124
Application No. 10/071,301

3
OPINION
As a preliminary matter, we note that appellants indicate on
pages 3, 6, and 7 of the Brief that they consider claims 1
through 5, 9 through 12, and 19 through 24 to be one group,
claims 6 through 8 to be a second group, and claims 13 through 18
to be a third group. We will treat the claims as falling into
the three groups set forth by appellants, with claims 1, 6, and
13 as representative.
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by
appellants and the examiner. As a consequence of our review, we
will reverse the obviousness rejection of claims 1 through 24.
Independent claim 1 (the only independent claim in Group I)
recites, in pertinent part, an adhesive layer which comprises "a
water-soluble crosslinking agent capable of crosslinking a vinyl
alcohol-based polymer." The examiner (Answer, page 4) recognizes
that Buzzell's adhesive layer does not contain a crosslinking
agent. However, the examiner directs our attention to column 5,
lines 25-30, of Buzzell, wherein Buzzell teaches that a
crosslinking agent "improve[s] the properties of the [mordanting]
polymer, such as to maintain the dimensional stability of the
polymer against ambient humidity, and to meet the above-mentioned
Appeal No. 2006-0124
Application No. 10/071,301

4

characteristics," which include "clear in color, castable,
stretchable, possess mordant sites than [sic] can react with a
dye, be sufficiently swellable in water to be dyed, that is, have
its mordant sites exposed and also exhibit good dichroism after
appropriate dyeing" (Buzzell, column 5, lines 13-17). The
examiner concludes (Answer, page 4) that it would have been
obvious to add a crosslinking agent to the adhesive layer, aided
by a catalyst such as hydrochloric acid (HCl) (based on column 6,
lines 1-5, of Buzzell), "to maintain the dimensional stability of
the entire polarizing plate laminate."
Appellants argue (Brief, page 4) that Buzzell "does not
disclose the advantages of a cross-linking agent for any
'polymer.'" Instead, contend appellants, Buzzell only teaches
that adding a crosslinking agent to a mordanting polymer film
improves the "dimensional stability" and other characteristics of
the mordanting polymer film. Further, appellants add (Brief,
page 5) that Buzzell fails to suggest that the characteristics
that are improved by the crosslinking agent are applicable to the
adhesive layer. Thus, appellants assert (Brief, page 5) that
the examiner has failed to establish a motivation for using a
crosslinking agent in the adhesive of Buzzell other than in
hindsight. We agree.
Appeal No. 2006-0124
Application No. 10/071,301

5
The characteristics of the mordanting polymer that are
improved by the addition of a crosslinking agent are not
properties sought for an adhesive material. Accordingly, the
skilled artisan would not have considered the teachings of
Buzzell to add a crosslinking agent to be applicable to Buzzell's
adhesive material. Without the requisite teaching or suggestion
to use a crosslinking agent in the adhesive layer, the examiner
has failed to establish a prima facie case of obviousness.
Consequently, we cannot sustain the obviousness rejection of
claims 1 through 5, 9 through 12, and 19.
Each of claims 6 and 13 (the only independent claims in
Groups II and III) includes the same limitation recited in
claim 1 of an adhesive layer comprising "a water-soluble
crosslinking agent capable of crosslinking a vinyl alcohol-based
polymer." Since neither Shulman nor Delangre remedies the
deficiencies of Buzzell, we cannot sustain the obviousness
rejection of claims 6 through 8 and 13 through 18.

Appeal No. 2006-0124
Application No. 10/071,301

6
CONCLUSION
The decision of the examiner rejecting claims 1 through 24
under 35 U.S.C. § 103 is reversed.
REVERSED

JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )

WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP1250 CONNECTICUT AVENUE,
NWSUITE 700WASHINGTON, DC 20036