Ex Parte Olson et al

Board of Patent Appeals and Interferences

Feb 23, 2010

11167953 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID B. OLSON,
BRANDON T. BERG, and
RANDY A. LARSON
____________

Appeal 2009-012244
Application 11/167,953
Technology Center 1700
____________

Decided: February 23, 2010
____________

Before EDWARD C. KIMLIN, TERRY J. OWENS, and MARK
NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 13-16, 18-25,
31, 32, 39, and 41-50. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6. Claim 13 is illustrative:
13. A brightness enhancing film comprising a linear array of regular
prisms wherein the prisms are prepared from the reaction product of a
solvent-free polymerizable resin composition consisting essentially of:
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a) at least 60 wt-% of one or more first monomers selected from the group
consisting of:

i) a monomer comprising a major portion having the structure

wherein R1 is independently hydrogen or methyl,

R2 is independently hydrogen or bromine,

Q is independently O or S, and

Z is independently –C(CH3)2-, -CH2-, -C(O)-, -S-, -S(O)-, or –S(O)2-;

ii) a monomer comprising a major portion having the structure

wherein R1 is independently hydrogen or methyl,
R2 is independently hydrogen or bromine,
Q is independently O or S,
Z is independently –C(CH3)2-, -CH2-, -C(O)-, -SO, -S(O)-, or –S(O)2[–], and
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L is a linking group independently selected from linear or branched C2-C12
alkyl groups wherein the carbon chain is optionally substituted with one or
more oxygen group and/or the carbon atoms are optionally substituted with
one or more hydroxyl groups;
and mixture of i and ii;
b) 5 wt-% to 30 wt-% of a crosslinking agent comprising at least three
(meth)acrylate functional groups; and
c) up to 35 wt-% of at least one monofunctional (meth)acrylate diluent.

The Examiner relies upon the following references as evidence of
obviousness:
Martens 4,576,850 Mar. 18, 1986
Lu 5,183,597 Feb. 2, 1993
Williams ('800) 5,626,800 May 6, 1997
Williams ('983) 5,855,983 Jan. 5, 1999
Olson 6,261,700 B1 Jul. 17, 2001
Chisholm 6,833,391 B1 Dec. 21, 2004
Kuntz 7,081,282 B2 Jul. 25, 2006

Appellants' claimed invention is directed to a brightness enhancing
film comprising a linear array of regular prisms. The prisms are prepared
from the reaction product of a solvent-free polymerizable resin composition
comprising the recited monomers.
The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 13-16, 18-25, 32, 39, 41, 43, 44, and 47 over Olson in view
of Williams’983 and Martens,
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(b) claims 31, 42 and 48 over Olson in view of Williams’800,
Martens, and Lu;
(c) claims 45, 46, 49, and 50 over Olson in view of Williams’983,
Martens, and Kuntz, and
(d) claims 13-16, 18-25, 31, and 39 over Chisholm in view of Olson.
Appellants present separate arguments only for claims 47-50, as a
group. Accordingly, with the exception of claims 47-50, the groups of
claims separately rejected by the Examiner stand or fall with claim 13.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejections for the reasons set
forth in the Answer, and we add the following primarily for emphasis.
Appellants do not dispute the Examiner's factual determination that
Olson, like Appellants, discloses a binder composition for coating an optical
element which is the reaction product of brominated, aromatic monomers
that are encompassed by the claimed formula, a cross-linking agent
comprising at least three (meth)acrylate functional groups, and a
monofunctional (meth)acrylate diluent. Appellants acknowledge that
Examples 1 and 3 of Olson use a monomer designated as RDX-51027,
which monomer is embraced by the formula recited in claim 13, § a). Olson
also teaches that the brominated monomer can be present in an amount of
about 10 to about 80 parts by weight, which meets the claimed amount of at
least 60 wt-% (claim 13) and at least 50 wt-% (claim 47). In addition, Olson
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teaches that the amount of non-brominated monomer can be about 20 to 80
parts by weight, which range overlaps the claimed range.
As acknowledged by the Examiner, Olson does not teach a brightness
enhancing film comprising a linear array of regular prisms, as presently
claimed. However, Williams’983 and Martens teach making a linear array
of prisms from polymeric materials similar to those disclosed by Olsen and
presently claimed. Appellants have not refuted the Examiner's finding that
Williams and Olson disclose substantially identical compositions suitable for
making polymeric films (Ans. 23, first para.). Martens also teaches that the
prisms can be made by molding solvent-free polymerizable compositions.
Martens teaches that the use of solvents is disadvantageous because they
take a long time to evaporate, require long cure cycles and result in
replicated articles which have limited toughness and dimensional stability
along with severe shrinking. Accordingly, we agree with the Examiner that
it would have been obvious for one of ordinary skill in the art to use a
solvent-free form of Olson's polymerizable composition to make a linear
array of prisms.
A principal argument of Appellants is that Olson, Williams, and
Martens are not combinable because Olson is non-analogous art with respect
to Williams and Martens. Appellants concede that Williams and Martens
are directed to polymerizable resin compositions suitable for forming prism
structures, but Olson relates to a ceramer hard coat composition suitable for
coating an optical substrate (Br. 5, third para.). However, as pointed out by
the Examiner, Olson expressly teaches that the hard coat compositions can
be used in optically functional composites having reflective or antireflective
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properties (col. 2, ll. 11-13), and such coating compositions may be used to
reduce reflectance at the interface and enhance transmission of light through
a composite structure (col. 20, ll. 15-20). Hence, we find no merit in
Appellants' argument that Olson is not related to the art of brightness
enhancing films.
Appellants also point out that all the exemplified compositions of
Olson contain appreciable amounts of solvent and that the Declaration of
David B. Olson, one of the present inventors, establishes that "it is not
possible to prepare prisms from any of the exemplified polymerizable
compositions of Olson et al." (Br. 5, penultimate para.). However, the
Declaration does not address the obviousness of using the polymerizable
composition of Olson in solvent-free form in light of Martens' teaching of
the benefits of using a solvent-free composition. The Declaration provides
no rationale why it would have been nonobvious for one of ordinary skill in
the art to eschew the use of a solvent based on the state of the prior art.
As for Appellants' argument directed to the claimed amounts of first
monomer, crosslinking agent and diluent, Appellants' emphasis on the
preferred amounts disclosed by Olson is of no avail. It is well settled that a
reference must be considered for all that it fairly teaches, including non-
preferred embodiments as well as preferred ones. As set forth by the
Examiner, Olson provides a clear teaching that the three claimed
components may be formulated into a polymerizable composition in
amounts that fall within the claimed ranges.
Appellants invite our attention to Table I in their Specification.
Appellants submit that the tabulated results demonstrate a surprising result
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that the particular claimed non-aromatic crosslinkers, such as PETA and
TMPTA, can be substituted for the more expensive aromatic crosslinkers
and yet still provide brightness enhancing films of comparable gain.
However, the burden of demonstrating unexpected results rests on the party
asserting them and such a showing must be commensurate in scope with the
degree of protection sought by the appealed claims. Here, the polymerizable
compositions used in Samples 1-8 are hardly commensurate in scope with
the breadth of compositions embraced by the appealed claims. The
inventive samples were limited to the use of one first monomer in an amount
of 62.5 – 70 wt-%, one monofunctional diluent (PEA), and seven of the
eight samples used only one crosslinking agent (PETA). Appellants have
not demonstrated that the exemplified results would be reasonably expected
to translate to the myriad of other polymerizable compositions encompassed
by the appealed claims. Nor have Appellants established that the reported
results would be considered truly unexpected by one of ordinary skill in the
art. In re Merck & Co., 800 F.2d 1091, 1099 (Fed. Cir. 1986); In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972).
Turning to the rejection over Chisholm in view of Olson, Appellants
simply rely upon the same non-persuasive arguments advanced against the
rejections using Olson as a primary reference. Appellants have not rebutted
the Examiner's reasoning that it would have been obvious for one of
ordinary skill in the art to use a crosslinking agent comprising at least three
(meth)acrylate functional groups, as disclosed by Olson, in the
polymerizable composition of Chisholm to make microstructured films
comprising prisms. We also hold that it would have been obvious for one of
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ordinary skill in the art to resort to nothing more than routine
experimentation to determine the optimum concentrations for the
brominated monomer, crosslinking agent, and diluent. In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA
1955).
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner's decision rejecting the appealed claims 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)(1)(iv).
AFFIRMED

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