Ex Parte Horio et al

Patent Trial and Appeal Board

Aug 1, 2017

12295061 (P.T.A.B. Aug. 1, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/295,061 11/12/2008 Tomoyuki Horio 20162.0142USWO 4963
52835 7590 08/03/2017
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
EXAMINER
KHAN, TAHSEEN
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
08/03/2017 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):
PTOMail @hsml. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMOYUKI HORIO and KENJIUENO1
Appeal 2016-001948
Application 12/295,061
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection2 of
claims 1, 7—11, 19, and 23—27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Dai Nippon Printing Co., Ltd.
(Appeal Brief, filed May 1, 2015 (“App. Br.”), 2.)
2 Final Office Action mailed December 5, 2014 (“Final Office Action,” cited
as “Final Act.”). We also refer to the Examiner’s Answer, mailed October 7,
2015 (Ans.), the Examiner’s Second Answer mailed October 30, 2015 (2d
Ans.), and the Reply Brief, filed December 3, 2015 (Reply).
Appeal 2016-001948
Application 12/295,061
CLAIMED SUBJECT MATTER
The claims are directed to an optical layered body said to “efficiently
suppress[] orprevent[] appearance of interference fringes and exhibit[] high
surface hardness.” Spec. 1 6.3 Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. An optical layered body comprising:
at least (1) a hard coat layer A adjacent to a light
transmitting substrate and (2) a hard coat layer B, formed on the
substrate,
wherein material for the light transmitting substrate is
cellulose triacetate,
wherein the hard coat layer A is formed from a
composition A containing a compound A having a weight
average molecular weight of 200 to 524 and 3 or higher and 15
or less functional groups,
wherein the compound A is a (meth)acrylate compound,
wherein the composition A contains a solvent having
penetrability for the substrate,
wherein the solvent is at least one member selected from
the group consisting of methyl ethyl ketone, methyl acetate, ethyl
acetate and butyl acetate,
wherein the hard coat layer B is formed from a
composition B containing a urethane (meth)acrylate compound
having a weight average molecular weight of 1500 to 40000 and
6 or higher and 15 or less functional groups and
wherein there is substantially no interface between the
substrate and the hard coat layer A.
App. Br. 10, Claims Appendix (emphasis added).
3 Patent Application 12/295/061, filed September 29, 2008 (“Spec.”).
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Appeal 2016-001948
Application 12/295,061
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Claims 1, 7, 9—11, 23, 24, 26, and 27 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Harada and Hattori. Final Act.
3. In a “New Ground[] of Rejection,” claims 1, 7, 9—11, 23, 24, 26, and 27
are also rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable
over Harada, Hattori, and Murata. Ans. 3; 2d Ans. 4.
Claims 8, 19, and 25 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Harada, Hattori, and Umeya. Final Act. 7. In a
“New Ground[] of Rejection,” claims 8, 19, and 25 are also rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Harada, Hattori,
Murata, and Umeya. Ans. 7; 2d Ans. 8—9.
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
In the Final Action, the Examiner found claim 5 of Harada teaches or
suggests an optical layered body comprising a “hard coat layer B [that] is
formed from a composition B containing a urethane (meth)acrylate
compound” as recited in claim 1. Final Act. 5. The Examiner subsequently
Hattori
Murata
Umeya
Harada
US 2008/0268215 A1 Oct. 30, 2008
US 2008/0233305 A1 Sept. 25, 2008
US 2004/0252373 A1 Dec. 16, 2004
JP 2000338308 A Dec. 8, 2000
REJECTIONS
OPINION
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Appeal 2016-001948
Application 12/295,061
added paragraphs 24, 30, 73, and 78 of Harada as teaching or suggesting this
particular limitation. Ans. 5, 10; 2d Ans. 6, 11.
Appellants raise various arguments with regard to the teachings of
Harada.4 App. Br. 6—7; Reply 3. In particular, Appellants argue that the
“urethane system” in paragraph 30 of Harada does not explicitly mention
urethane (meth)acrylate and therefore cannot teach or suggest the claim
limitation at issue. Reply 3.
“[W]hile an analysis of obviousness always depends on evidence that
supports the required Graham factual findings, it also may include recourse
to logic, judgment, and common sense available to the person of ordinary
skill that do not necessarily require explication in any reference or expert
opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009). In this case, the mere fact that paragraph 30 of Harada
does not specify urethane (meth)acrylate does not identify reversible error in
the Examiner’s finding that the prior art urethane system includes urethane
(meth)acrylate.
Appellants also argue that although Harada describes examples of
using urethane acrylate to form the prior art product, the urethane acrylate
forms “a single layer formed on the base material” and not one of the two
hard coat layers recited. Reply 3 (citing Harada H 73, 78).
The Examiner responds to this argument by listing examples in
Harada that uses urethane acrylate resin. Ans. 10 (citing Harada Tflf 73, 78);
2d Ans. 11 (same).
4 Appellants do not make separate arguments for other claims (App. Br. 5,
8), and they therefore stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2013).
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Appeal 2016-001948
Application 12/295,061
The record before us shows that Appellants acknowledge that Harada
discloses a two-layered film. App. Br. 6 (“The hard coat layer [in Harada]
comprises at least two layers.”). Appellants also acknowledge that Harada
discloses the use of urethane (meth)acrylate for forming one of the hard coat
layers recited in claim 1. Reply 3 (stating that urethane (meth)acrylate
includes “coating liquid G” which is used in Harada to form “the hard coat
layer (A) of the present invention”). Appellants do not point us in the record
to any showing that Harada restricts using coating liquid G to form a single
hard coat layer product only. See, e.g., App. Br. 5—9; Reply 2-4. Harada, in
fact, provides multiple examples of various two-layered products. Harada
11 66—72, Tbl. 1. In addition to coating G, the single layer examples shown
in Table 2 of Harada are formed respectively by coatings D, E, and F — all
of which are used in Table 1 for forming the two-layered products. Id.
11 66—79, Tbls. 1 & 2. Appellants provide no explanation as to why a
skilled artisan would not have taken “account of the inferences” that similar
to coatings D, E, and F, coating G may be used to form one of the two hard
coat layers. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 421
(2007) (stating that the obviousness analysis “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ” and that the skilled artisan is “not an automaton” but “ a person of
ordinary creativity”).
Given the entirety of the prior art teachings and the record before us,
we find, on balance, that there is insufficient basis to disturb the Examiner’s
findings with respect to Harada.
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Appeal 2016-001948
Application 12/295,061
DECISION
The Examiner’s rejection of claims 1, 7—11, 19, and 23—27 is
affirmed.
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)(l)(iv).
AFFIRMED
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