Ex Parte Maeda

Patent Trial and Appeal Board

Aug 18, 2016

12311997 (P.T.A.B. Aug. 18, 2016)

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.
12/311,997 04/22/2009 Sadao Maeda KAS.087 3319
48234 7590 08/18/2016
MEREK, BLACKMON & VOORHEES, LLC
673 S. WASHINGTON ST
ALEXANDRIA, VA 22314
EXAMINER
STACHEL, KENNETH J
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
08/18/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SADAO MAEDA

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Appeal 2015-000182
Application 12/311,997
Technology Center 1700
____________

Before RICHARD M. LEBOVITZ, MICHAEL P. COLAIANNI, and
AVELYN M. ROSS Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims relating to a transparent plate which
comprises a resin substrate covered with a hard-coat layer, where the layer
has a region having a thickness of less than 0.6 μm. The Examiner has
rejected the claims as obvious under 35 U.S.C. § 103(a) and under 35 U.S.C.
§ 112. We have jurisdiction under 35 U.S.C. § 134. The Examiner’s
rejections are reversed.
STATEMENT OF CASE
Appellant appeals from the Examiner’s rejection of claims 1–6, 8, 11–
16, 18, and 19. Appeal Br. 6. The Examiner rejected the claims as follows:
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Claims 1, 2, 4, 5, 8, and 19 under 35 U.S.C. § 103(a) as obvious in
view of Nishide,1 Ogoshi,2 and Harvey3 “as evidenced” by Suzuki,4 Watts,5
and Hawley’s.6 Non-Final Rej. 5.
Claims 3, 6, 11–16, and 18 as obvious in view of Nishide, Ogoshi, and
Harvey, “as evidenced” by Suzuki, Watts, and Hawley’s, and further in view
of Eguchi.7 Id., 10.
Claim 19 under 35 U.S.C. § 112, second paragraph (pre-AIA), as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor regards as the invention. Id., 4.
Claim 19 under 35 U.S.C. § 112, first paragraph (pre-AIA), as failing
to comply with the written description requirement. Id., 3.
There are three independent claims on appeal: claims 1, 8, and 11.
Claim 1 is representative of the appealed claims and reads as follows:
1. A method for producing a transparent plate having a plane
shape or a three-dimensional shape in which a resin substrate is
covered with a hard-coat layer, comprising:
forming said hard-coat layer out of silicone polymer by a
wet method and by heating; and
irradiating a region of the hard-coat layer with vacuum
ultraviolet rays from an ultraviolet light source, wherein the

1 Machine translation from Japanese to English of Nishide, JP 2002-187738,
published July 5, 2002.
2 Machine translation from Japanese to English of Ogoshi et al., JP 2004-
123816, published Apr. 22, 2004 (“Ogoshi”).
3 Harvey et al., US 6,566,278 B1, issued May 20, 2003 (“Harvey”).
4 Suzuki, US 2008/0062357 A1, issued Mar. 13, 2008.
5 Watts et al., US 3,892,575, issued Jul. 1, 1975 (“Watts”).
6 Hawley's Condensed Chemical Dictionary, 14th Edition 2002 by John
Wiley & Sons, Inc. Cited for definition of silica. Non-Final Rej. 7.
7 Machine translation from Japanese to English of Eguchi et al., JP 10-
249271, published Sept. 22, 1998.
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Application 12/311,997

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vacuum ultraviolet rays have a wavelength less than 200 nm,
and wherein said region is reformed, by exposure to the
irradiation, into a hardened glass film mainly composed of
silicon dioxide, said region having a thickness less than 0.6 μm
and being thinner than the portion of the hard-coat layer that is
other than said region.

OBVIOUSNESS REJECTIONS
Claim 1 has two recited steps: 1) forming a “hard-coat layer out of
silicone polymer by a wet method and by heating”; and 2) “irradiating a
region of the hard-coat layer with vacuum ultraviolet rays from an ultraviolet
light source, wherein the vacuum ultraviolet rays have a wavelength less
than 200 nm, and wherein said region is reformed.” The reformed region is
mainly composed of silicon dioxide (SiO2) and has a thickness less than 0.6
µm. Independent claims 8 and 11 also have a reformed region of silicon
dioxide having a thickness less than 0.6 µm.
The Examiner found that Nishide describes both steps of the claimed
method, but not the specific wavelength of ultraviolet (UV) rays nor the
thickness of the reformed region. Non-Final Rej. 5–7. For the specific UV
wavelength, the Examiner cited Ogoshi, concluding that it would have been
obvious to have utilized the UV wavelength in Ogoshi to achieve “a SiO2
film of good quality and harden the layer whereby the surface hardness is
high.” Id., 8–9. The Examiner cited Harvey for modifying Nishide and
Ogoshi to obtain the recited thickness of less than 0.6 µm “to achieve more
ordered silicon oxide lattice to have the hardened SiO[2] layer.” Id., 9–10.
Appellant, inter alia, contends that the skilled worker would not have
combined Nishide and Ogoshi with Harvey because “Harvey and Ogoshi et
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al. are at direct odds with each other as the irradiation of Harvey and Ogoshi
et al. each effect the film differently.” Appeal Br. 18.
We agree with Appellant that the Examiner reversibly erred in
concluding that the claims would have been obvious in view of Nishide,
Ogoshi, and Harvey. As indicated by Appellant, Ogoshi teaches that UV
irradiation raises the SiO2 layer. Ogoshi teaches a raised SiO2 layer of about
3 μm:
A polysiloxane 1 of a solid compound containing Si-O-Si bonds
is irradiated with a vacuum ultraviolet laser beam having a
wavelength of ≤ 190 nm at an ablation threshold (about 140
mJ/cm2) or lower to completely remove the side chain
constituting the polysiloxane by photocleavage, and
simultaneously by expanding that portion, an SiO[2] raised layer
having a height of about 3 μm is directly formed on the surface
of the polysiloxane.
Ogoshi, (57) Abstract (emphasis added).
Ogoshi also refers to the raised layer as an “upheaval layer.”
To achieve the above objects, the surface treatment method of
the solid compound including the Si-O-Si combination
concerning invention of claim in this application 1 is
characterized by irradiating with the laser beam of a vacuum
ultraviolet or the wavelength not more than it the solid
compound surface including Si-O-Si combination, and forming
a SiO2 upheaval layer in it.
Id., ¶ 6 (emphasis added).
Harvey teaches applying UV radiation to a carbon-doped silicon oxide
film. Harvey, col. 2, ll. 21–22. Harvey teaches that the UV radiation
disrupts bonds, “replacing these bonds with more stable bonds characteristic
of an ordered silicon oxide film.” Id., col. 2, ll. 25–26. Harvey explains:
As a result of this UV radiation exposure, undesirable chemical
bonds in the film such as Si-OH are broken, and gas is evolved.
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This gas is then removed to leave a densified and stable
deposited carbon-doped silicon dioxide film.
Id., col. 2, ll. 26–31.
Figure 10 of Harvey
plots deposited film thickness versus UV exposure time for
wafers placed in the released and in the lifted position. FIG. 10
shows that over time, the thickness of the SiCO film decreased,
revealing progress in the densification process and replacement
of unstable bonds with stable bonds.
Id., col. 12, ll. 54–59 (emphasis added). Thus, Harvey teaches that the UV
exposure decreases the thickness of the SiCO film.
These disclosures provide factual support for Appellant’s argument
that the “results of the two irradiation processes” in Ogoshi and Harvey “are
clearly opposite to each other” and thus the skilled worker would not have
modified Nishide and Ogoshi with Harvey’s teachings. Appeal Br. 18.
Specifically, Ogoshi teaches that UV radiation expands the polysiloxane to
produce a raised silicon dioxide upheaval layer. Ogoshi, (57) Abstract; ¶ 6.
In contrast, Harvey teaches that UV decreases the layer thickness over time
(Harvey, col. 12, ll. 54–59). Harvey explains that UV radiation densifies
and decreases the thickness of silicon oxide layer doped with carbon as a
result of the loss of gas from the layer. Id., col. 2, ll. 26–31. Thus, as argued
by Appellant, UV radiation has different effects on the silicon substrates of
Ogoshi and Harvey. As a consequence, the ordinary skilled worker would
not have reasonably expected that Nishide’s silicon dioxide layer could be
reduced from 3 μm to less than 0.6 μm utilizing UV radiation because
Ogoshi teaches that UV raises the layer, while Harvey teaches that UV
decreases the layer’s thickness. As a result, the skilled worker would not
have known what to expect.
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The Examiner argues that Ogoshi also teaches that UV decreases the
substrate thickness, pointing to the description of Drawing 9 of Ogoshi
which states that “it is an explanatory view showing that the surface carries
out a flattening with the formation of SiO2 of a reforming layer.” Ogoshi 7–
8. However, this passage refers to flattening the “surface,” and is not
inconsistent with the teaching in Ogoshi that the UV irradiation raises the
SiO2 to form an upheaval layer.
For the foregoing reason, we reverse the obviousness rejections of
independent claims 1, 6, and 11, each of which requires a region having a
thickness less than 0.6 μm, and claims 2–5, 8, 12–16, 18, and 19 which
depend from them.
SECTION 112 REJECTIONS
Claim 19 is directed to the method of claim 1, “wherein the region is
irradiated with an energy density of about 17 mJ/cm2.” The Examiner found
that claim 19 is indefinite under 35 U.S.C. § 112, second paragraph, because
the claim is “confusing whether this irradiation is the same irradiation of
Claim 1 or . . . another irradiation.” Non-Final Rej. 5. We do not agree.
Claim 1 calls for “irradiating a region of the hard-coat layer.” Claim 19
defines the energy density of the irradiation. A skilled worker would readily
understand that claim 19 further modifies the “irradiating” step of claim 1.
The Examiner also rejected claim 19 as failing to comply with the
written description requirement of § 112, first paragraph, because the
“application as originally filed does not appear to provide support for
irradiating the region with an energy density of about 17 mJ/cm2 other than
that as described at ¶ 0056 [sic, ¶ 38] for a particular laser, wavelength,
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pulse frequency, irradiation time and dimension and thickness of the
region.” Id., 4.
While paragraph 38 refers to specific conditions at which the energy
density of 17 mJ/cm2 is applied, there is no indication that the energy density
is restricted to these disclosed conditions. The Examiner did not adequately
explain why, in view of the express disclosure of 17 mJ/cm2, claim 19 lacks
written descriptive support. Accordingly, we find that the Examiner did not
meet the burden of showing that the inventors did not possess the subject
matter of claim 19. In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996); Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).
The rejections under Section 112 are reversed.

REVERSED