Ex Parte Kodama

Board of Patent Appeals and Interferences

Jan 19, 2010

10922137 (B.P.A.I. Jan. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte NAOKI KODAMA
________________

Appeal 2009-007003
Application 10/922,137
Technology Center 1700
________________

Decided: January 19, 2010
________________

Before CHUNG K. PAK, CHARLES F. WARREN, and
TERRY J. OWENS,, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-6, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an optical sheet composition. Claim 1 is
illustrative:

Appeal 2009-007003
Application 10/922,137

1. A composition for an optical sheet, comprising:
(A) a copolymer containing at least one repeating unit selected from
the group consisting of a repeating unit derived from a (meth)acrylic ester
possessing a cycloalkyl group, a repeating unit derived from an iso-butyl
(meth)acrylate, and a repeating unit derived from a tert-butyl (meth)acrylate;
(B) a light-diffusing agent having an average diameter of 1 to 50 µm;
and
(C) an inorganic particle.

The References
Ichiro (Namura)1 JP 11-005940 Jan. 12, 1999
(as translated)
Kamikita (as translated) JP 13-318210 Nov. 16, 2001
The Rejection
Claims 1-6 stand rejected under 35 U.S.C. § 103 over Namura in view
of Kamikita.
OPINION
We affirm the Examiner’s rejection.
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, a copolymer containing at least
one repeating unit selected from a repeating unit derived from a
(meth)acrylic ester possessing a cycloalkyl group, a repeating unit derived
from isobutyl (meth)acrylate, and a repeating unit derived from a tert-butyl
(meth)acrylate, in combination with a light-diffusing agent having an
average diameter of 1 to 50 µm?

1 Both the Examiner (Ans. 3) and the Appellants (Br. 1) refer to Namura
Ichiro as “Namura”. For consistency, we likewise do so.
2
Appeal 2009-007003
Application 10/922,137

Findings of Fact
Kamikita discloses a light diffusion sheet comprising 1) a binder (7)
which preferably contains (meth)acrylic units (¶ 0027); 2) beads (9) which
should have an average grain size of 1-50 µm and can be made from, for
example, acrylic resin, polyurethane, polyvinyl chloride, polystyrene,
polyacrylonitrile and polyamide (¶¶ 0024-25) (which correspond to the
Appellants’ light-diffusing agent (Spec. 13:7-9, 14-15)); and 3) ultra-fine
inorganic grains (11) having an organic polymer chemically bonded onto
their surfaces (¶¶ 0009, 0029) (which correspond to the Appellants’
inorganic particles which preferably have an organic polymer chemically
bonded onto their surfaces (Spec. 14:6-8; 15:9-24)). The desirable
properties of the light diffusion sheet include surface hardness, heat
resistance, weatherability and soiling resistance (¶ 0010).
Namura discloses a film forming composition comprising 1) a
copolymer of an acryl type monomer unit and a monomer unit other than the
acryl type monomer unit (¶ 0008), and 2) fine inorganic particles having an
organic polymer fixed, apparently chemically, onto their surfaces and having
an average particle diameter of 5-200 nm (¶¶ 0018-19). The disclosed acryl
type monomers include an acrylate having a cycloalkyl group which can be
substituted, isobutyl methacrylate and tert-butyl methacrylate (all of which
correspond to one of the Appellants’ copolymer’s repeating units (Claim 1)),
and two or more types of such monomers can be used jointly (¶ 0011-12).
The composition can be used to form films on “for example, inorganic
materials like aluminum, stainless steel, titanium, tinplate, copper plate,
concrete, mortar, slate and glass, and organic materials like polycarbonate,
polymethyl methacrylate, polyethylene terephthalate and paper” (¶ 0054).
3
Appeal 2009-007003
Application 10/922,137

The properties of the films include hardness, thermal resistance, water
resistance (weatherability) and soil resistance (¶¶ 0041-42, 0050) which are
properties desired by Kamikita (¶ 0010).
Analysis
The Appellants argue that Kamikita’s disclosure of an acrylic resin as
a binder encompasses myriad acrylic polymers and monomers from which
they are made, and that Kamikita does not mention Namura’s copolymer
(Br. 3). The Appellants argue that a skilled person would not have been
motivated to choose Namura’s copolymer among myriad copolymers as
Kamikita’s binder. See id.
Kamikita discloses that the polymeric binder preferably contains
(meth)acryl units (¶ 0027), but Kamikita does not disclose specific polymers
containing those units. Hence, one of ordinary skill in the art would have
looked to the prior art for polymers which contain those units, are capable of
binding Komika’s organic beads and ultra-fine inorganic grains having an
organic polymer chemically bonded onto their surfaces, and provide
properties desired by Kamikita such as surface hardness, heat resistance,
weatherability and soiling resistance (¶ 0010). One such polymer is the
acryl polymer disclosed by Namura which 1) can comprise cycloalkyl
group-containing acrylate units, isobutyl methacrylate units, tert-butyl
methacrylate units or a combination of those units (¶¶ 0011-12); 2) binds
inorganic fine particles having an organic polymer fixed, apparently
chemically, onto their surfaces (¶ 0018); and 3) provides properties
including hardness, thermal resistance, water resistance (weatherability) and
soil resistance (¶¶ 0011-12, 0041-42). Hence, the applied references would
have led one of ordinary skill in the art, through no more than ordinary
4
Appeal 2009-007003
Application 10/922,137

creativity, to use Namura’s polymer containing those units as Kamikita
binder. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In
making an obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”).
The Appellants argue that Namura is nonanalogous art because
Namura’s composition which, Namura discloses, has folding and self
cleaning properties (¶ 0005), is not in the Appellants’ field of endeavor of
making an optical sheet and is not reasonably pertinent to the problem of
heat warping resulting in uneven luminescence which the Appellants
intended to solve (Reply Br. 4).
The test of whether a reference is from an analogous art is first,
whether it is within the field of the inventor’s endeavor, and second, if it is
not, whether it is reasonably pertinent to the particular problem with which
the inventor was involved. See In re Wood, 599 F.2d 1032, 1036 (CCPA
1979). A reference is reasonably pertinent if, even though it may be in a
different field of 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 the inventor’s problem. See In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992).
Namura’s polymer, like the Appellants’ polymer, binds fine inorganic
particles having an organic polymer fixed onto their surfaces (Nakamura,
¶ 0018; Appellants’ Spec. 14:1-8; 15:9-24). Because Nakamura’s polymer
provides heat resistance (¶ 0042), Namura logically would have commended
itself to the Appellants’ attention in considering the heat warping problem
5
Appeal 2009-007003
Application 10/922,137

with which the Appellants were involved (Spec. 2:22-24). Namura,
therefore, is analogous art.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, a copolymer containing at least
one repeating unit selected from a repeating unit derived from a
(meth)acrylic ester possessing a cycloalkyl group, a repeating unit derived
from isobutyl (meth)acrylate, and a repeating unit derived from a tert-butyl
(meth)acrylate, in combination with a light-diffusing agent having an
average diameter of 1 to 50 µm.
DECISION/ORDER
The rejection of claims 1-6 under 35 U.S.C. § 103 over Namura in
view of Kamikita is affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED

tc

OCCHIUTI ROHLICEK & TSAO, LLP
10 FAWCETT STREET
CAMBRIDGE, MA 02138
6