Ex Parte Pudleiner et al

Patent Trial and Appeal Board

Sep 20, 2016

11542267 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111542,267 10/03/2006
123223 7590 09/22/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Heinz Pudleiner
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
074033-0022-US-287245 5718
EXAMINER
FREEMAN, JOHN D
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
09/22/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEINZ PUDLEINER, KLAUS MEYER, JORG NICKEL, and
CLAUS RUDIGER
Appeal2015-004345
Application 11/542,267
Technology Center 1700
Before LINDA M. GAUDETTE, MARK NAGUMO, and JENNIFER R. GUPTA,
Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-004345
Application 11/542,267
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision2
finally rejecting claims 8, 10, and 12-14. We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.
The present Application relates to a high brightness, light-scattering plastics
composition and use thereof in flat screens. Title of the Invention. According to
the Specification, a backlight unit includes a housing having a lighting system
including a light-reflecting, inside surface and a number of fluorescent tubes
arranged therein. Specification filed October 3, 2006 ("Spec."), 4: 13-16. A
diffuser sheet having a thickness of from 1 to 3 mm is disposed on the lighting
system. Id. at 4: 16-17. The diffuser sheet includes a set of films that perform
functions such as light scattering (diffuser films) and focusing of light in the
forward direction (brightness enhancing films). Id. at 4: 17-21.
According to the Specification, "[l]ight-scattering plastics compositions for
optical applications conventionally comprise inorganic or organic particles having
a diameter of from 1 to 50 [µm ], ... i.e. they contain scattering centres which are
responsible for both the diffusive and the focusing properties." Id. at 5:3-6. The
inventors are said to have discovered that "plastics compositions that comprise
conventional micrometer-sized particles, in particular so-called coreshell acrylates,
and as few nano-scale particles as possible are suitable for backlight units on
account of their brightness properties and their simultaneous high degree of light
scattering." Id. at 5:20-24. More specifically, the inventors have discovered that
"very good brightness's of the backlight unit are obtained when the content of
1 Appellants identify the real party in interest as Bayer MaterialScience AG.
Appeal Brief filed September 9, 2014 ("Br."), 2.
2 Final Office Action mailed March 11, 2014.
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particles having a mean particle diameter of from 80 to 200 nm is ... particularly
preferably less than 5 particles per 100 µm2," and "the plastics composition
comprises . . . particularly preferably less than 100 ppm[] of these nano-scale
particles." Id. at 6:5-14. Claims 8 and 12 are representative of the claimed
invention, and read as follows (emphasis added):
8. A backlight-unit comprising: (i) a lighting system; (ii) a
diffuser sheet; and (iii) a diffuser film; the diffuser film comprising a
thermoplastic composition comprising 90 to 99 .95 percent by weight,
based on the composition, of a transparent first polymeric resin and
0.01to10 percent by weight, based on the composition, of particles of
a transparent second polymeric resin said particles having a mean
particle diameter of 1 to 100 µm and refractive index different from
that of the first polymeric resin, wherein after thermoplastic
processing not more than 100 ppm of said particles having particle
diameter in the range of 80 to 200 nm and wherein said particle
having a diameter in the range of 80 to 200 nm is less than 5 particles
per 100 µm 2 surface area of the diffuser film, and wherein said first
polymeric resin comprises a polycarbonate.
12. The backlight-unit according to claim 8, wherein the
diffuser film further comprises at least one coextruded layer.
The claims stand rejected as follows:
1. Claims 8, 10, 13, and 14 under 35 U.S.C. § 103(a) in view of each of:
(1) Applicant's own admission in view ofEiffler et al. (EP 0 634 445 Al, pub. Jan.
18, 1995 ("Eiffler")), (2) Fukuda et al. (US 2004/0100597 Al, pub. May 27, 2004
("Fukuda")) in view Eiffler, and (3) Hsieh et al. (US 2004/0032725 Al, pub. Feb.
19, 2004) in view of Eiffler; and, in the alternative, further in view of Etori et al.
(US 6,348,960 Bl, iss. Feb. 19, 2002 ("Etori I")), Jinno et al. (US 6,798,572 B2,
iss. Sept. 28, 2004 ("Jinno")), and Etori et al. (US 6,804,053 B2, iss. Oct. 12, 2004
("Etori II")).
2. Claim 12 under 35 U.S.C. § 103(a) in view Maas et al.
(US 2003/0207082 Al, pub. Nov. 6, 2003 ("Maas")) in combination with each of
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(1), (2), and (3), above; and, in the alternative, further in view of Etori l, Jinno, and
Etori II.
Appellants' arguments raise the following issues on appeal:
(1) Did the Examiner reversibly err in finding Eiffler discloses a diffuser
film made from a composition "wherein after thermoplastic processing not more
than 100 ppm of said particles hav[ e] [a] particle diameter in the range of 80 to 200
nm and wherein said particle[ s] having a diameter in the range of 80 to 200 nm is
less than 5 particles per 100 µm2 surface area of the diffuser film" as recited in
claim 8?
(2) Did the Examiner adequately explain the motivation to modify the
primary references, based on the teachings of Maas, to include additional
coextruded layers as recited in claim 12?
Appellants do not present separate arguments in support of any dependent
claims other than claim 12. See generally Br. 4-10. Therefore, claims 10, 13, and
14 will stand or fall with claim 8.
Issue 1 (claim 8)
The Examiner relies on the above-cited disclosure on page 4 of the
Specification as admitted prior art. Final Act. 2 (Appellants "admit[] backlight
units having a lighting system, diffuser sheet, and diffuser film were known in the
art.") (citing Spec. 4: 11-22). The Examiner, in the alternative, relies on each of
Fukuda and Hsieh for a teaching of a conventional backlight unit having the
general features of "(i) a lighting system; (ii) a diffuser sheet; and (iii) a diffuser
film" as recited in claim 8. Id. at 5, 8-9; see Examiner's Answer mailed January 2,
2015 ("Ans."), 13. The Examiner finds Eiffler discloses a polymer composition
that can be used to make a diffuser film. Id. The Examiner finds one of ordinary
skill in the art would have been motivated to use Eiffler' s diffuser film as the
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diffuser film in a conventional backlight unit (as described in Appellants' admitted
prior art, Fukuda or Hsieh) in view ofEiffler's description of the film as having
improved color stability. Id. at 2, 5-6, 9.
The Examiner finds Eiffler's diffuser film is made from a composition
comprising a polycarbonate and 0.01-1.5% polymeric particles. Id. at 2. 3 The
Examiner further finds Eiffler discloses the mean diameter of the polymeric
particles is 2-50 µm and at least 95% of the polymeric particles have a diameter
greater than 2 µm (2000 nm). Id. at 2-3. The Examiner finds these ranges overlap
or fall within the ranges recited in claim 8. Id. at 3. The Examiner finds one of
ordinary skill in the art would have been motivated "to vary the amount of particles
having a diameter greater than 2 µm, including over the presently claimed
amounts, to adjust the level of light diffusion as required for a given end use." Id.
The Examiner finds "the size of particles after thermoplastic processing would be
the same as presently claimed because the particles are otherwise the same as
presently claimed." Id. The Examiner finds, in the alternative, that one of
ordinary skill in the art would have been motivated to ensure the diffuser film had
low amounts of particles having a particle size below 1000 nm (1 µm) based on the
teachings of Etori I, Jinno, or Etori II that particles of less than 1000 nm increase
backscattering of light. Id. at 3--4.
3 Appellants do not dispute the Examiner's findings with respect to the Applicant's
own admission, Fukuda, and Hsieh, but traverse each ground of rejection on the
basis that the Examiner erred in the findings relating to the teachings of Eiffler.
See Br. 4-9. The Examiner relies on the same findings with respect to Eiffler in
each ground of rejection. See generally, Final Act. 2-7, 9-10. Accordingly, for
convenience, we make reference only to the rejection based on Applicant's own
admission in view of Eiffler.
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Appellants argue the Examiner reversibly erred in finding Eitller describes a
diffuser film wherein particles having a diameter in the range of 80 to 200 nm are
present in the claimed amounts "after thermoplastic processing" (claim 8). Br. 6.
Appellants argue the particle diameters recited in claim 8 refer to those of the
particles after thermoplastic processing. Br. 6. Appellants assert that, in contrast,
the particle diameters described in Eiffler are those of particles in the polymeric
powder, i.e., before the particles are mixed into the polymer composition and
processed. Id. Appellants contend the content of small particles in Eiffler' s
composition after processing would be much higher than in the described powder,
and much higher than 100 ppm as recited in claim 8, citing page 7, lines 4-6 of the
Specification in support of their argument that the undesired nano-scale particles
having diameters in the range of 80 to 200 nm are formed by shear during the
process of forming (mixing) the polymer composition or later during extrusion of
the films. Id.
We have compared the disclosure of Eiffler with that of the Specification
and find the Examiner's position is supported by a preponderance of the evidence.
The Specification discloses the use of the same polymer particles having the same
average particle diameters as those used in Eiffler. See Spec. 10:25-28 ("The
preferred acrylate-based polymeric particles having core-shell morphology that are
to be used in accordance with the invention are, for example and preferably, those
as disclosed in EP-A 634 445 [(Eiffler)]."); compare Eiffler 5:57-58 with Spec. 11:
26-28 (both of which state: "The polymeric particles b) generally have an average
particle diameter of at least 0.5 [µm ], ... more preferably from 2 to 50 [µm ].").
Eiffler discloses that 0.01 to 1.5 wt.% of the polymer particles, the inorganic
particles, and optional additives may be premixed before blending with the
thermoplastic polymer or mixed separated with the thermoplastic polymer. Eiffler
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9: 14-18. Eift1er discloses the manner of mixing is not critical, but should result in
a great degree of dispersion of all additives throughout the thermoplastic polymer,
and that it is advisable to mix the inorganic particles, polymer particles, and
optional additives with the thermoplastic polymer, before the thermoplastic
polymer is compounded to granules or pellets. Id. at 9:25-29. Eiffler describes
compounding the composition to granules or pellets using known extrusion
techniques, e.g., by extruding the composition at temperatures from 260 to 3 80 °C
using, e.g., a twin-screw compounding extruder. Id. at 9:32-34. As noted by the
Examiner (Ans. 16, 18), it is unclear from the Specification how the "thermoplastic
processing" (claim 8) used by Appellants differs from the processing conditions
used in Eiffler' s method and, therefore, it is reasonable to conclude that the size
and content of particles in a diffuser film formed from Eiffler' s thermoplastic
composition would be the same as those in a diffuser film formed from the claimed
thermoplastic composition. See, e.g., Spec. 7:4-6 ("The plastics compositions
according to the invention are preferably prepared and processed thermoplastically.
The nano-scale polymeric particles are formed by shear during the thermoplastic
processing."); id. at 13:2-3 ("The plastics compositions according to the invention
may be prepared by extrusion."); see also Ans. 16 ("Appellant has failed to explain
how the generic limitation of 'after thermoplastic processing' necessarily equates
to 'after mixing' the polymer and polymer particle components as asserted in the
Brief. The claim limitation can simply refer to the thermoplastic processing
required in the production of the polymer particles themselves (e.g., see Eiffler at
page 6, lines 4-12). Nothing in the claim sets forth 'mixing,' nor does the claim set
forth the 'thermoplastic processing' is conducted on both the thermoplastic
composition and the polymeric particles.").
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Where the Examiner establishes a reasonable assertion of inherency and
thereby evinces that a claimed process appears to be identical to a process
disclosed by the prior art and/or that the products claimed by the applicant and
disclosed in the prior art appear to be the same, the burden is properly shifted to the
applicant to show that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977).
Appellants contend Specification Example 3 provides evidence that the
claimed nano-scale particle content is not inherent in a diffuser film formed from
Eiffler's thermoplastic composition. Br. 7. Appellants argue Example 3, a
composition made with the same core/shell particles used in the examples of
Eiffler (Paraloid EXL 513 7 from Rohm and Haas), contained nine 80 to 200 nm
diameter particles per 100 µm2 surface area of diffuser film, which is outside the
claim 8 recited range of "less than 5 particles per 100 µm2 surface area." Br. 7.
We agree with the Examiner that Appellants have not provided sufficient
evidence to establish that the Example 3 composition is necessarily representative
of the compositions disclosed in Eiffler, because Appellants have not shown that
the processing steps and conditions used to prepare the Example 3 composition are
the same as those used by Eiffler in preparing thermoplastic compositions.
Ans. 19. As noted by the Examiner, Eiffler discloses "a wide variety of polymers
suitable for making the particles." Id. at 20. Thus, Appellants' testing of a diffuser
film comprising a thermoplastic composition made from one of these polymers is
not persuasive evidence that Eiffler fails to disclose a diffuser film having the
claimed nano-scale particle content. See id. Moreover, Appellants have not
addressed the Examiner's finding that Eiffler, alone or in combination with Etori I,
Jinno, or Etori II, suggest that the amount of nano-scale particles in the diffuser
film should be limited and, therefore, the ordinary artisan would have been
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motivated to manufacture Eitller' s diffuser film in such a manner that would result
in a nano-scale particle content as claimed. See Ans. 1 7.
Appellants also rely on the Specification Examples as evidence that an
unexpected, substantial improvement in brightness is achieved when a diffuser film
has the claimed nano-scale particle content (Example 5 having 3 particles per
100 µm2 surface area) as compared to a nano-scale particle content outside the
claimed range (Example 3 having 9 particles per 100 µm2 surface area). Br. 6-7.
As explained by the Examiner, this evidence is not persuasive of unexpected
results because it is not commensurate in scope with the claims. See Ans. 18-19.
In sum, for the reasons stated in the Final Office Action, the Examiner's
Answer, and above, a preponderance of the evidence, taking into account
Appellants' evidence of unexpected results, favors the Examiner's conclusion of
obviousness as to claims 8, 10, 13, and 14. Accordingly, we affirm the rejections
of claims 8, 10, 13, and 14 under 35 U.S.C. § 103(a) in view of each of:
(1) Applicant's own admission and Eiffler, (2) Fukuda and Eiffler, and (3) Hsieh
and Eiffler. We also affirm the rejections of claims 8, 10, 13, and 14 under
35 U.S.C. § 103(a) in view of each of (1), (2), and (3), further in view of Etori I,
Jinno, and Etori II.
Issue 2 (claim 12)
The Examiner finds "Eiffler is silent with regard to additional, coextruded
layers disposed on the [diffuser] film." Final Act. 5, see id. at 8, 11. The
Examiner finds such additional layers were well known in the art at the time of the
invention, and that Maas, for example, teaches a light diffusing sheet having a
coextruded UV protective layer. Id. at 5, 8, 11 (citing Maas ,-i 30). The Examiner
finds that, based on Maas' disclosure, one of ordinary skill in the art would have
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been motivated to coextrude a UV protective layer onto the Eitller's diffuser film
for the purpose of providing UV protection. Id. at 5, 8, 11.
Appellants argue the Examiner's rejections of claim 12 are based on an
assertion "that the skilled artisan would [have found] it obvious to combine ...
Eiffler with Maas' UV layer merely because it is disclosed in the art" and "this is
an inadequate rationale for combining prior art references." Br. 8; see id. at 9-10.
We are not persuaded by Appellants' argument because Appellants have not
explained why the Examiner's finding that the ordinary artisan would have been
motivated to include a UV protective layer "to provide UV protection to [Eiffler' s
diffuser] film" (Final Act. 5, 8, 11) is unreasonable or not supported by the
evidence of record in this appeal. See Ans. 20. Accordingly, we affirm the
rejections of claim 12 under 35 U.S.C. § 103(a) in view of Maas and each of: (1)
Applicant's own admission and Eiffler, (2) Fukuda and Eiffler, and (3) Hsieh and
Eiffler. We also affirm the rejections of claim 12 under 35 U.S.C. § 103(a) in view
of Maas and each of (1), (2), and (3), further in view ofEtori I, Jinno, and Etori II.
No time period for taking any subsequent action in connection with this
appeal maybe extended under 37 C.F.R. §1.136(a)(l)(iv).
AFFIRMED
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