Ex Parte Inenaga

Patent Trial and Appeal Board

Jan 21, 2015

11911549 (P.T.A.B. Jan. 21, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MAKOTO INENAGA
____________

Appeal 2013-003944
Application 11/911,549
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY W. ABRAHAM, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–3, 7 and 17–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

1 According to Appellant, the Real Party in Interest is Mitsubishi Plastics.
App. Br. 1.
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STATEMENT OF THE CASE
The claimed subject matter relates to a double sided adhesive sheet.
App. Br. 8 (claim 1). According to the Specification, such adhesive sheets
can be used for adhesively bonding constituents of a window of an
automobile, train, ship, building, machine, or display panel of a flat-type
imaging apparatus. Spec. ¶ 1.2 An objective is to conform to irregularities
and prevent air bubbles at the interface between different kinds of materials
that are bonded to each other, for example, a synthetic resin plate and a glass
plate. Id. ¶ 7.
Claim 1 is representative of the subject matter on appeal and is set
forth below (with bold added for emphasis):
1. A double sided adhesive sheet, comprising:
a sheet comprising a transparent sheet substrate and an
inorganic oxide layer having a thickness of 10 nm to 500 nm;
a first adhesive layer; and
a second adhesive layer;
wherein:
the sheet has an oxygen transmission rate (cc/m2 in 24
hours) measured according to JIS K7126B (at 23°C and 70%
humidity) of 50 or less;
the sheet has a water vapor transmission rate (g/m2 in 24
hours) measured according to JIS K7126B (at 40°C and 90%
humidity) of 20 or less;
the first adhesive layer is provided on a first surface of
the sheet;

2 References to the Specification are to the version having a filing date of
October 15, 2007.
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the first adhesive layer comprises an adhesive that has
a glass transition temperature (Tg) of -20°C or less and a
holding force (JIS 20237) of 2 mm to 12 mm in terms of
displacement;
the second adhesive layer is provided on a second surface
of the sheet opposite from the first surface; and
the second adhesive layer comprises an adhesive that
has a glass transition temperature (Tg) of from -20 to 10°C
and a holding force (JIS 20237) of 0 mm to 0.5 mm in terms
of displacement.
App. Br. 8 (Claims App’x).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bernard US 5,264,532 Nov. 23, 1993
Oura US 6,194,063 Bl Feb. 27, 2001
Ercillo US 6,416,858 B July 9, 2002
Mientus US 2003/0021930 Al Jan. 30, 2003
Yamamoto US 6,621,170 B2 Sept. 16, 2003
Terasaki US 6,749,940 B1 June 15, 2004
Miyatake US 6,864,932 B2 Mar. 8, 2005

THE REJECTIONS
1. Claims 1–3, 7, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mientus in view of Terasaki, Ercillo, Bernard, and
Yamamoto. Final Action ¶¶ 3–19.3
2. Claims 1–3, 7, and 17–20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Oura in view of Miyatake. Id. ¶¶ 20–27.

3 References to the Final Action are to the action having an electronic
notification date of March 23, 2012.
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ANALYSIS
First Ground of Rejection
Appellant does not present arguments specifically directed to the
dependent claims under rejection. See App. Br. 3–7. Therefore, the
dependent claims stand or fall with independent claim 1, and we confine our
discussion to independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)(2012).
The Examiner finds that Mientus discloses a double sided adhesive
sheet having all elements of claim 1, except for the thickness of the
inorganic oxide layer, the glass transition temperatures and holding forces of
the first and second adhesive layers, and the oxygen and water vapor
transmission rates of the sheet. Final Action ¶¶ 4, 5, 8, 14 (citing Mientus
¶¶ 26, 33, 38, 43, 45, 63 & Fig. 6 (composite 10A with core layer 16,
intermediate layer 17 and skin layers 18 and 20)).
With respect to the thickness of the inorganic oxide layer, the
Examiner finds that Terasaki teaches an adhesive sheet having an inorganic
oxide layer having a thickness of 10 to 500 nm and concludes that it would
have been obvious to choose such a thickness for the inorganic oxide layer
of Mientus in order to control moistureproofness and curling and prevent
cracking and flaking. Final Action ¶¶ 6–7 (citing Terasaki 5:46, 6:11–19,
6:30–38).
With respect to the glass transition temperatures of the first and
second adhesive layers, the Examiner finds that it would have been obvious
in view of Ercillo to provide a first adhesive layer having a relatively low
glass transition temperature and a second adhesive layer having a relatively
high glass transition temperature, and that the claimed ranges for the glass
transition temperature of the first and second adhesive layers would have
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been obvious in view of Bernard and Yamamoto, respectively. Final Action
¶¶ 9–13 (citing Ercillo Fig. 2, 3:49–56, 5:8–9, 9:39–51; Bernard 3:41–47,
4:62–67, 6:6–20; and Yamamoto Title, 5:8–9, 11:54–60).
With respect to the oxygen and water vapor transmission rates of the
sheet and the holding forces of the first and second adhesive layers, the
Examiner finds that the sheet and first and second adhesive layers of
Mientus as modified by Ercillo, Bernard, and Yamamoto would intrinsically
exhibit the claimed characteristics. Final Action ¶ 14.
Appellant argues that Mientus and Terasaki each lack certain features
recited in claim 1 and further argues that the inorganic oxide layer of
Mientus has a different composition and morphology from that of Terasaki
and therefore it “cannot be possible” to control moistureproofness and
curling and prevent cracking and flaking by making the thickness of
Mientus’ layer within the range disclosed by Terasaki. App. Br. 4–5. After
reviewing Appellant’s arguments in the Briefs, the Final Action, the
Advisory Action, the Examiner’s Answer, Mientus and Terasaki, we are not
persuaded that Appellant identifies reversible error. We therefore adopt the
Examiner’s factual findings, analysis, and legal conclusion as set forth in the
Answer as our own and add the following comments for emphasis.
Appellant does not challenge the Examiner’s findings or conclusions
regarding the teachings of Ercillo, Bernard, or Yamamoto. We are not
persuaded by Appellant’s arguments that certain claimed features (thickness
of inorganic oxide layer and different properties on each side of double-
sided adhesive sheet) are not disclosed by Mientus or Terasaki individually,
App. Br. 4, because the Examiner finds that these features are disclosed or
suggested by the combined teachings of Mientus, Terasaki, Ercillo, Bernard,
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and Yamamoto, and Appellant’s arguments do not address the Examiner’s
findings based on the combined teachings of these references. Final Action
¶¶ 5–7 (thickness of inorganic oxide layer); id. ¶¶ 8–14 (double sided
adhesive sheet with different properties on each side of sheet); see also Ans.
¶¶ 1–6; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (“The test for
obviousness is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”) (citation omitted); In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.”)
(citation omitted).
We are also not persuaded by Appellant’s arguments regarding the
thickness of the inorganic oxide layer, as recited in claim 1, because these
arguments do not address the particular teachings of Mientus and Terasaki
that are cited and relied upon by the Examiner and because Appellant does
not provide an explanation or evidence to support the assertion that it
“cannot be possible” to achieve the objectives taught by Terasaki by making
the thickness of Mientus’ inorganic oxide layer within the range disclosed by
Terasaki. App. Br. 5.
More specifically, the Examiner finds that Mientus discloses an
inorganic oxide layer in the form of intermediate layer 17. Final Action ¶ 4
(citing Mientus ¶¶ 26, 33, 45, 63). The Examiner explains that Mientus’
inorganic oxide layer comprises titanium dioxide and that Terasaki also
discloses an inorganic oxide layer comprising titanium dioxide. Ans. ¶ 4
(citing Mientus ¶¶ 26, 33, 45, 63 and Terasaki 5:54); see also Advisory
Action ¶ 5. Appellant does not address the Examiner’s finding regarding
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Mientus’ intermediate layer 17 or the teachings of Mientus and Terasaki
regarding an inorganic oxide layer comprising titanium dioxide. Instead,
Appellant argues that “the inorganic oxide of Mientus is formed by adding
silica etc. in a multi-layer film in order to confer transparency or stiffness.”
App. Br. 4; see also Reply Br. 4 (explaining that Mientus discloses silica in
paragraph 41). The paragraph of Mientus cited by Appellant addresses the
composition of skin layers 18 and 20 of Mientus’ multilayer composite,
Mientus ¶ 41, and does not address the composition of intermediate layer 17
or an inorganic oxide layer comprising titanium dioxide, as identified by the
Examiner. Because Appellant’s arguments do not address the particular
teachings of Mientus and Terasaki that are cited and relied upon by the
Examiner, we are not persuaded that Appellant identifies reversible error in
the Examiner’s analysis.
The Examiner finds that it would have been obvious to choose a
thickness of 10 to 500 nm, as taught by Terasaki, for the inorganic oxide
layer of Mientus in order to control moistureproofness and curling and to
prevent cracking and flaking. Final Action ¶ 7 (citing Terasaki 6:11–19).
Appellant argues that achieving these objectives “cannot be possible”
because the multilayered film of Mientus comprises silica and the
morphology of the inorganic oxide layer is different from that of Terasaki.
App. Br. 4–5. As already noted, however, Appellant’s argument regarding
silica fails to address teachings of Mientus and Terasaki that are cited and
relied upon by the Examiner, namely an inorganic oxide layer comprising
titanium dioxide. Advisory Action ¶ 5; Ans. ¶ 4 (citing Mientus ¶¶ 26, 33,
45, 63 and Terasaki 5:54). Appellant does not explain how the morphology
of the inorganic oxide layer of Mientus differs from that of Terasaki or why
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any such differences in morphology would have made it impossible to
control moistureproofness and curling and to prevent cracking and flaking
by adopting the thickness taught by Terasaki for the inorganic oxide layer
taught by Mientus. Appellant’s arguments are therefore not persuasive to
demonstrate reversible error on the part of the Examiner. In re Glaug, 283
F.3d 1335, 1338 (Fed. Cir. 2002) (“During patent examination the PTO
bears the initial burden of presenting a prima facie case of unpatentability
. . . [W]hen a prima facie case is made, the burden shifts to the applicant to
come forward with evidence and/or argument supporting patentability.”)
(internal citations omitted).
Second Ground of Rejection
The Examiner finds that Oura discloses a double sided adhesive sheet
having all elements of claim 1, except for the glass transition temperatures
and holding forces of the first and second adhesive layers and the oxygen
and water vapor transmission rates of the sheet. Final Action ¶¶ 21, 22, 25
(citing Oura Title, Abstract, 3:14–21, 3:63–65, 4:15–17, 5:35–44).
With respect to the glass transition temperatures of the first and
second adhesive layers, the Examiner finds that Miyatake teaches a double
sided adhesive sheet in which each adhesive layer has a glass transition
temperature of not higher than 20°C, which encompasses Appellant’s
claimed ranges. Final Action ¶ 23 (citing Miyatake Abstract, 5:61–6:9,
6:55–57). According to the Examiner, it would have been obvious to choose
the claimed glass transition temperatures in order to impart transparency,
weather resistance, and heat resistance. Id. ¶ 24 (citing Miyatake 6:7–9).
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With respect to the oxygen and water vapor transmission rates of the
sheet and the holding forces of the first and second adhesive layers, the
Examiner finds that the sheet and first and second adhesive layers of Oura as
modified by Miyatake would intrinsically exhibit the claimed characteristics.
Final Action ¶ 25.
Appellant argues, among other things, that the combination of Oura
and Miyatake fails to disclose first and second adhesive layers that would
necessarily have different holding forces. App. Br. 5–6. After reviewing
Appellant’s arguments in the Briefs, the Final Action, the Advisory Action,
the Examiner’s Answer, Oura and Miyatake, we are persuaded that
Appellant identifies reversible error and that the Examiner’s findings with
respect to the second ground of rejection on appeal are not sufficient to
establish a prima facie case of obviousness under the present record.
In rejecting claims under 35 U.S.C. § 103(a), the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). To establish prima facie obviousness of a
claimed invention, all the claim limitations must be taught or suggested by
the prior art. See In re Royka, 490 F.2d 981, 985 (CCPA 1974). Only if this
initial burden is met does the burden of coming forward with evidence or
argument shift to the appellant. Oetiker, 977 F.2d at 1445; see also Piasecki,
745 F.2d at 1472. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. Id.
Before considering the Examiner’s rejection, we must first determine
the scope of the claim. See In re Geerdes, 491 F.2d 1260, 1262 (CCPA
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1974). Claim 1 recites first and second adhesive layers having the following
properties:
Glass transition
temperature (Tg)
Holding force in terms of
displacement (JIS20237)
First adhesive layer -20°C or less 2 mm to 12 mm
Second adhesive layer from -20 to 10°C 0 mm to 0.5 mm
App. Br. 8 (claim 1). Although the recited ranges for glass transition
temperature overlap at an endpoint (-20°C), the recited ranges for holding
force do not overlap. Id. Accordingly, we construe claim 1 as requiring that
the first adhesive layer have at least one property—holding force—that is
different from the second adhesive layer.
We find that Oura and Miyatake each teach an adhesive layer, see,
e.g., Oura Abstract, 2:66–3:10, 4:15–5:35; Miyatake Abstract, 1:51–62,
2:44–64, 5:30–6:54, and further teach that an adhesive layer may be formed
on one or both sides of a base layer, Oura 5:36–44; Miyatake, 6:55–57,
7:13–17, but that, as argued by Appellant, neither reference discloses or
suggests, either expressly or inherently, first and second adhesive layers
having different holding forces. We note that Examples in each reference
teach using the same adhesive composition or layer on both sides of a
substrate, Oura 6:47–49, 7:36–40, 7:58–63; Miyatake 8:19–32, which is
contrary to the Examiner’s position that first and second adhesive layers
disclosed or suggested by the combination of Oura and Miyatake would
intrinsically exhibit the claimed holding forces. We therefore concur with
Appellant that the combination of Oura and Miyatake fails to disclose first
and second adhesive layers having different holding forces, as recited in
claim 1. App. Br. 5.
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We therefore determine that a preponderance of the evidence does
not support the Examiner’s conclusion of obviousness, and we do not sustain
the Examiner’s second ground of rejection.

CONCLUSION OF LAW AND DECISION
In view of the foregoing, we affirm the Examiner’s decision rejecting
claims 1–3, 7, 17, and 18 under 35 U.S.C. § 103(a) and reverse the
Examiner’s decision rejecting claims 19 and 20 under 35 U.S.C. § 103(a).
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-IN-PART

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