Ex Parte Sherman et al

Patent Trial and Appeal Board

Sep 20, 2016

13119111 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/119,111 03/15/2011
32692 7590 09/22/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Audrey A. Sherman
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.
64740US006 8949
EXAMINER
CHANG, VICTORS
ART UNIT PAPER NUMBER
1788
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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AUDREY A. SHERMAN
and KEVIN R. SCHAFFER
Appeal2015-005508
Application 13/119,111
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner's
decision finally rejecting claims 1, 3-8, 10, 12-14, 16, 18-21, and 23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims on appeal are directed to an optical adhesive and to an optical
article and an optical laminate comprising the optical adhesive. The optical
adhesive comprises silicone resin particles dispersed within an optically clear
pressure sensitive adhesive matrix wherein the silicone resin particles have a
Appeal2015-005508
Application 13/119,111
refractive index less than the refractive index of the pressure sensitive adhesive
matrix. In addition, the 180° peel adhesion strength of the optical adhesive is
essentially the same or greater than the 180° peel adhesion strength of the optically
clear pressure sensitive adhesive matrix without the dispersed silicone resin
particles.
Representative claim 1 is reproduced below from the Claims Appendix of
the Appeal Brief dated December 23, 2014 ("App. Br.").
1. An optically transmissive adhesive comprising:
an optically clear pressure sensitive adhesive matrix; and
silicone resin particles dispersed within the matrix with a
refractive index less than the refractive index for the pressure sensitive
adhesive matrix, and wherein the 180° Peel Adhesion Strength of the
optically transmissive adhesive is essentially the same or greater than
the 180° Peel Adhesion Strength of the optically clear pressure
sensitive adhesive matrix without the dispersed silicone resin
particles.
Ann Rr 0
11_l-'_l-'•_L..l_I_·/·
The claims on appeal stand rejected as follows:
(1) claims 1, 4--8, 10, 12-14, 16, 18-21, and 23 under 35 U.S.C. § 103(a)
as unpatentable over the combination of JP 480 1 and Ishiharada et al. 2 and
(2) claim 3 under 35 U.S.C. § 103(a) as unpatentable over the
combination of JP 480 and Ishiharada, further in view ofNaruse.3
1 JP 2000-147480, published May 26, 2000 ("JP 480"). We refer to the English
translation dated November 2013, which of record in the instant Application.
2 US 5, 7 44,534, issued April 28, 1998 ("Ishiharada").
3 US 6,677,404 Bl, issued January 13, 2004 ("Naruse").
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Application 13/119,111
The rejections are sustained for the reasons set forth in the Final Office
Action dated July 30, 2014 ("Final") and the Examiner's Answer dated March 6,
2015 ("Ans."). We add the following for emphasis.
B. DISCUSSION
The Examiner finds JP 480 discloses a liquid crystal display device
comprising, inter alia, an adhesive layer comprising an adhesive matrix (I) and
particles (II) dispersed therein. The Examiner finds JP 480 discloses that the
particles have a refractive index different from the refractive index of the adhesive.
Final 3 (citing JP 480, i-f 8). JP 480 also discloses that "[t]he refractive index of
particles (II) normally differs by at least 0.02 from the refractive index of adhesive
(I)." JP 480, i-f 10. The Examiner finds:
[S]ince JP '480 teaches that the refractive indices of the matrix (I) and
particles (II) are different (not the same), and expressly teaches that
the useful range of the refractive index difference is from 0.02 to 0.2,
it is plainly interpreted as meaning that either refractive index of the
matrix and the particles can be greater or lesser than the other; as long
as the refractive index difference is from 0.02 to 0.2.
Final 3.
The Appellants argue that the Examiner's interpretation "is not a reasonable
interpretation because all of the examples in the '480 reference have particles
which have a higher refractive index than the matrix." App. Br. 4.
We disagree. It is well settled that "the disclosure of a reference is not
limited to specific working examples contained therein." In re Fracalossi, 681
F .2d 792, 794 n.1 (CCP A 1982). Moreover, in this case, JP 480 expressly
discloses that "the present invention is not limited to the application examples."
JP 480, i-f 21; see also Ans. 7. Thus, a preponderance of the evidence supports the
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Application 13/119,111
Examiner's finding that the refractive index of the particles disclosed in JP 480 can
be greater or less than the refractive index of the adhesive matrix.
The Examiner also finds:
[I]t is notoriously well known that a light scattering material can be
obtained by dispersing particles in a transparent matrix material, with
either one of the refractory index of the particles and matrix to be
greater or lesser than the other (the refractory indices are different), as
evidenced by Ishiharada.
Final 3--4 (emphasis omitted). The Examiner's finding is supported by the record.
See Ishiharada, col. 4, 11. 28-29 ("Either one of ni [index of refraction of the
transparent elastomer] and n2 [index of refraction of the transparent material
particles] may be higher than the other although it is preferred that ni be higher
than n2. ").
According to the Appellants, the particles in Ishiharada Example 7 have a
lower refractive index than the matrix, as recited in claim 1. App. Br. 6.
Nonetheless, the Appellants argue that the matrix in Ishiharada Example 7
is a high refractive index rubber, not a pressure sensitive adhesive,
and is of a much higher refractive index than typical pressure sensitive
adhesives. So if one used PMMA particles [as in Ishiharada Example
7] with a typical pressure sensitive adhesive matrix, the resulting
adhesive would have the particles of a higher refractive index than the
matrix ....
App. Br. 7.
Significantly, the Appellants do not direct us to any evidence showing that
the high refractive index rubber disclosed in Ishiharada Example 7 has "a much
higher refractive index" than the adhesive matrix disclosed in JP 480. See In re
Schulze, 346 F.2d 600, 602 (CCPA 1965) ("Argument in the brief does not take the
place of evidence in the record."). Therefore, the Appellants' argument is not
persuasive of reversible error.
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Application 13/119,111
As for the claimed silicone resin particles, the Examiner finds that
Ishiharada discloses that "[a] wide variety of inorganic and organic materials can
be used to make the transparent particles, including silicone resin, etc." Final 4
(citing Ishiharada, col. 4, 11. 30-52). Thus, in the rejection on appeal, we
understand the Examiner to have modified the particles in the adhesive matrix of
JP 480 with the silicone resin particles disclosed in Ishiharada. See JP 480, i-f 13
("The particle material is not specifically limited as long as it meets the
requirements for the refractive index stipulated in accordance with the present
invention, and either organic particles or inorganic particles can be used.").
The Appellants argue there is no motivation to combine JP 480 with
Ishiharada because Ishiharada discloses light guide rods, not an adhesive. App.
Br. 6. However, the Examiner finds, and the Appellants do not dispute, that JP 480
and Ishiharada "relate to the same field of light scattering material based on
dispersed particles in a matrix material." Final 4. Thus, one of ordinary skill in the
art would have found the teachings of Ishiharada useful in selecting suitable
alternatives for the particle material in the adhesive layer of JP 480.
The Appellants also argue that "[ o ]ne of skill in the art would ... expect that
the addition of silicone resin particles to an optically clear pressure sensitive
adhesive matrix would cause a loss in adhesive properties, such as peel adhesion."
App. Br. 6. For support, the Appellants direct our attention to column 2, lines 26-
29 of US 5,536,778 to Kreckel et al. ("Kreckel"), which is said to state:
"One of the drawbacks of adding particular [sic, particulate] fillers to
pressure sensitive adhesives is that the presence of the filler in cost-
saving quantities often causes unacceptable changes in the adhesive
properties."
App. Br. 6. Significantly, the Appellants have failed to show that the "particulate
fillers" disclosed in Kreckel include silicone resin particles.
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Application 13/119,111
As for the claimed 180° Peel Adhesion Strength, the Appellants argue that
neither JP 480 nor Ishiharada teach that "silicone resin particles will generate an
adhesive that has peel adhesion that is the same or greater than the peel adhesion of
the matrix without the silicone resin particles." App. Br. 7.
The Examiner finds the peel adhesion strength recited in claim 1 is inherent
in the combination of JP 480 and Ishiharada. That is, Ishiharada's silicone resin
particles dispersed in JP 480's adhesive matrix necessarily results in a peel
adhesion strength as recited in claim 1. In the alternative, the Examiner concludes
that the claimed peel adhesion strength would have been obvious to one of
ordinary skill in the art. Final 5. More specifically, the Examiner finds "JP '480
teaches that the amount of particles is preferably 0.1 - 30 parts by weight to 100
parts by weight of the adhesive. When the amount of particles is greater than 30
parts by weight, the adhesive strength becomes insufficient." Ans. 4; see also
JP 480, i-f 12. The Examiner concludes that it would have been obvious to optimize
the amount of particles to obtain the desired adhesive strength. Ans. 4, 8.
The Appellants do not direct us to any error in the Examiner's factual
findings or legal conclusions. Rather, the Appellants argue:
[T]here is no teaching or suggestion in either [JP] '480 or Ishiharada
that silicone resin particles are special and give the unexpected result
that when dispersed in a pressure sensitive adhesive matrix the
resulting adhesive will have the same or even higher peel adhesion as
the matrix without the particles.
App. Br. 7.
The Appellants, however, do not direct us to any evidence of unexpected
results. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) ("unexpected
results must be established by factual evidence[; m]ere argument ... does not
suffice").
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C. DECISION
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)(l).
AFFIRMED
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