Ex Parte Kitagawa et al

Patent Trial and Appeal Board

Feb 10, 2017

13224063 (P.T.A.B. Feb. 10, 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.
13/224,063 09/01/2011 Takeharu KITAGAWA 5070-0015 8681
22429 7590 02/14/2017
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
CAILLOUET, CHRISTOPHER C
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
02/14/2017 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):
docketing @ ipfirm. com
pair_lhhb @ firsttofile. com
EAnastasio @ IPFirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKEHARU KITAGAWA,
TAKUYA NAKAZONO, SHUSAKU GOTO,
MINORU MIYATAKE, TOMOHIRO MORI, and
TAKASHI KAMIJO
Appeal 2016-000318
Application 13/224,0631
Technology Center 1700
Before JAMES C. HOUSEL, BRIAN D. RANGE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—7 and 10—16. We have jurisdiction. 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is NITTO DENKO
CORPORATION. Appeal Br. 2.
Appeal 2016-000318
Application 13/224,063
STATEMENT OF THE CASE
Appellants describe the invention as relating to a method of producing
a roll of laminate strip with a polarizing film. Spec. 11. The film could be
used in optical display devices such as televisions and mobile phones. Id. at
12. Claim 1, reproduced below with emphases added to certain key
recitations, is illustrative of the claimed subject matter:
1. A method of producing a roll of an optical film laminate
strip, comprising the steps of:
forming an optical film laminate which comprises an
optical film having at least a continuous web of polarizing film,
and a resin film bonded to the optical film;
applying a reference mark to extend across the optical film
laminate in a widthwise direction thereof, in a continuous line
pattern or a doted [sic] line pattern consisting of a plurality of
dots, while feeding the optical film laminate in a lengthwise
direction thereof;
performing a defect inspection for detecting any defect
existing in the optical film, while feeding the optical film
laminate in the lengthwise direction, and, when a defect is
detected, recording the position of the defect in the form of a
laminate widthwise position and a laminate lengthwise
position as measured from the reference mark;
cutting the optical film laminate along a direction parallel
to the lengthwise direction to form a plurality of continuous webs
of laminate strips each having a given width;
based on the widthwise position of the defect detected
by the defect inspection, determining which of the cut
laminate strips has the defect, and, with respect to a specific
laminate strip which is determined to have the defect, storing
information about the defect together with identification
information for identifying the specific laminate strip; and
winding each of the laminate strips into a roll.
Appeal Br.2 15 (Claims App’x).
2 In this decision, we refer to the Final Office Action mailed September 5,
2014 (“Final Act.”), the Appeal Brief filed March 25, 2015 (“Appeal Br.”),
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Application 13/224,063
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Von Hofe
Bjork
Nishikubo et al.
(hereinafter “Nishikubo”)
Nakamura et al.
(hereinafter “Nakamura”)
Kitada et al.
(hereinafter “Kitada”)
Takebe et al.
(hereinafter “Takebe”)
Kimura et al.
(hereinafter “Kimura”)
US 3,536,550
US 2002/0154307 Al
US 2005/0199337 Al
US 2008/0233312 Al
US 2009/0199950 Al
US 2009/0207491 Al
TW201009444
Oct. 27, 1970
Oct. 24, 2002
Sep. 15,2005
Sep. 25, 2008
Aug. 13, 2009
Aug. 20, 2009
Apr. 13, 2009* * 3
REJECTIONS
The Examiner allowed claim 17. Final Act. 9. The Examiner has also
indicated that claims 8 and 9 would be allowable if written in independent
form. Id. at 11.
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1,2, and 5—7 under 35 U.S.C. § 103(a) as
unpatentable over Kimura in view of Kitada, Nishikubo, Von Hofe, and
Bjork. Ans. 2.
the Examiner’s Answer mailed July 30, 2015 (“Ans.”), and the Reply Brief
filed September 30, 2015 (“Reply Br.”).
3 The Examiner cites US 2010/00283943, Nov. 18, 2010, as an English
translation of Kimura. Final Act. 2. Appellants request an official
translation of Kimura but do not dispute that US 2010/00283943 provides an
adequate translation. Appeal Br. 7—8. We therefore also reference US
2010/00283943 as an English translation of Kimura.
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Application 13/224,063
Rejection 2. Claims 3, 4, and 10-16 under 35 U.S.C. § 103(a) as
unpatentable over Kimura, Kitada, Nishikubo, Von Hofe, and Bjork further
in view of Nakamura and Takebe. Id. at 6—7.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ contentions,
we are not persuaded that Appellants identify reversible error. Thus, we
affirm the Examiner’s § 103 rejections for the reasons expressed in the Final
Office Action and the Answer. We add the following primarily for
emphasis.
Appellants present no distinct arguments with respect to the
Examiner’s second rejection and argue all claims as a group. See Appeal Br.
7—8, 13—14. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(l)(iv) (2013), we limit our discussion to claim 1, and all other
claims on appeal stand or fall together with claim 1.
The Examiner finds that Kimura discloses a method of manufacturing
optical film laminate which includes inspecting the film for defective
regions. Final Act. 2 (providing citations to Kimura). The Examiner finds
that it was “well known and conventional in the art to form rolls of optical
laminate from a wide strip of laminate material” and cites Kitada and
Nishikubo as supporting evidence. Id. at 3 (providing citations to Kitada
and Nishikubo). The Examiner concludes that it would have been obvious
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Application 13/224,063
to use the roll production method of Kitada and Nishikubo with the method
taught by Kimura to create the individual film roll. Id.
The Examiner finds that the above references do not discuss how
encoded information sections regarding defective regions of Kimura are
created upon the web but finds that Von Hofe discloses that it was known in
the art to apply control marks across the width of the web of material. Id. at
3,4. The Examiner concludes that it would have been obvious to use the
conventional Von Hofe technique to achieve the predictable result of
creating a conventional control mark pattern for the optical strips of the
other references. Id. at 4. The Examiner further finds that Bjork discloses
recording both the X and Y coordinates of any defect and concludes that this
technique would be used in combination with other references in order to
provide “a more accurate method of tracking defects . . . since the location of
the defect is recorded in two coordinates instead of only one coordinate.”
Ans. 4, 5 (providing citations to Bjork). A preponderance of the evidence
supports the Examiner’s findings and obviousness conclusion.
Appellants argue that the combination of references cited by the
Examiner fails to suggest claim l’s recitation of “determining which of the
cut laminate strips has the defect, and, with respect to a specific laminate
strip which is determined to have the defect.” Appeal Br. 8; see also Reply
Br. 4. The Examiner, however, explains that the rejection is based upon
putting the conventional method of manufacturing rolls of optical film of a
desired dimension along with an inspection step upstream of Kimura.
Ans. 12. In such a configuration, the X and Y position of any defects would
be known prior to cutting based upon the teachings of Bjork. Ans. 10; Bjork
127, 37. Thus, the process would track which strips have a defect since the
x and y location of the defects are tracked throughout the process. Ans. 11.
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Appellants do not persuasively dispute the Examiner’s findings of fact
regarding the combination of references. Rather, Appellants argue, for
example, that Bjork does not cut multiple strips. Appeal Br. 9. Non­
obviousness, however, “cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
Appellants also argue that there would be no reason to combine
Bjork’s width wise determination of defect locations into Kimura. Appeal
Br. 10; Reply Br. 4. Appellants, however, do not persuasively dispute the
Examiner’s finding that Bjork’s widthwise determination would be within a
person of skill’s technical grasp and would have the advantage of more
accurately locating a defect’s location (tracking in two coordinates rather
than one). Ans. 10. The advantage of Bjork is particularly apparent when
considering Kimura as modified by Kitada and Nishikubo (as proposed by
the Examiner) precisely because Bjork’s determination of x and y defect
location would provide information as to which strip has a defect.
Appellants’ argument thus fails to identify reversible error as to the
Examiner’s combining Bjork with the other references.
Appellants also argue that Kimura teaches away from having a film
width greater than that needed for a final product and that the Examiner’s
proposed modification of Kimura would change Kimura’s principle of
operation. Appeal Br. 11—13; Reply Br. 6—8. The Examiner, however,
persuasively explains that cutting a wider roll into more narrow rolls prior to
use of Kimura’s process is conventional as taught by Kitada and Nishikubo
(Final Act. 2—3) and concludes that moving the inspection step of Kimura
would have been obvious as a rearrangement of steps because no unexpected
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results would result from performing that step at a different point of the
process (Final Act. 5). Appellants argue that moving the inspection location
upstream would require redesign in a number of respects (Reply Br. 7), but
Appellants present no factual evidence to support this argument and do not
argue that any of the modifications would require undue experimentation or
would be difficult for a person of skill in the art. Moreover, Appellants’
attempt to distinguish In re Burhans, 154 F.2d 690, 692 (CCPA 1946)
(holding that Appellants argument regarding ordering of steps has no merit
“in the absence of any proof in the record that the order of performing the
steps produces any new and unexpected results”) at pages 5 and 6 of the
Reply Brief is unpersuasive because, as explained above, the Examiner’s
combination tracks X and Y coordinates of a defect and thus can track
defects after lengthwise cutting.
Because Appellants do not identify reversible error, we sustain the
Examiner’s rejections.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
1—7 and 10-16.
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
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