Ex Parte Stover et al

Patent Trial and Appeal Board

Feb 23, 2017

12124726 (P.T.A.B. Feb. 23, 2017)

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.
12/124,726 05/21/2008 Carl A. Stover 60727US011 3191
32692 7590 02/27/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
VARGOT, MATHIEU D
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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 CARL A. STOVER, TIMOTHY J. HEBRINK,
MARTIN E. DENKER, JEFFERY N. JACKSON, and
KRISTOPHER J. DERKS
Appeal 2016-000587
Application 12/124,726
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 11—14 and 16—22. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 We refer to the Specification (“Spec.”) filed May 21, 2008; Final Office
Action (“Final Act.”) dated Sep. 25, 2014; Appellants’ Appeal Brief (“App.
Br.”) dated March 19, 2015; Examiner’s Answer (“Ans.”) dated Aug. 10,
2015; and Appellants’ Reply Brief (“Reply Br.”) dated Oct. 9, 2015.
2 Appellants identify 3M Company and its affiliate 3M Innovative Properties
Company, collectively, as the real party in interest. App. Br. 2.
Appeal 2016-000587
Application 12/124,726
BACKGROUND
The subject matter on appeal relates to methods of processing optical
bodies formed from optical films. Spec. 1, 2. Sole independent Claim 11 is
reproduced below from the Claims Appendix of the Appeal Brief (emphasis
added to show the disputed recitation):
11. A method for processing an optical body, comprising:
providing an optical body comprising a first optical film,
a second optical film and at least one strippable boundary layer
disposed between the first and second optical films',
conveying the optical body into a stretching region;
stretching the optical body to increase a transverse
dimension of the optical body while conveying the opposing
edges of the optical body along generally diverging paths in a
machine direction, wherein the generally diverging paths are
configured and arranged to provide a machine direction draw
ratio (MDDR), a normal direction draw ratio (NDDR) and a
transverse direction draw ratio (TDDR) that approach the
following relationship:
MDDR = NDDR = (TDDR)'1/2
during the stretching;
wherein in the stretched optical body at least one of the
first and second optical films comprises a reflective polarizer.
Claims 11—14 and 16—22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Merrill3 4 5and Hebrink.4,5
3 US 2002/0190406 Al, published Dec. 19, 2002 (“Merrill”).
4 US 2004/0219338 Al, published Nov. 4, 2004 (“Hebrink”).
5 Claims 23—28 stand withdrawn from consideration. Final Act. 1. An
alternative ground of rejection under 35 U.S.C. § 103 set forth in the Final
Office Action also has been withdrawn. Ans. 4.
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Appeal 2016-000587
Application 12/124,726
DISCUSSION
Appellants argue the rejected claims as a group. App. Br. 3—5; Reply
Br. 2—6. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 11
as representative and decide the appeal based on the representative claim
alone.
Appellants do not dispute the Examiner’s findings that Merrill
discloses a method for processing an optical body in which a multilayer film,
including a reflective polarizer, is stretched in accordance with the claimed
directional draw ratios, differing from the process recited in claim 11 in that
Merrill does not provide a strippable boundary layer between two film layers
during the stretching operation. Compare Final Act. 2; Ans. 2, 3 with App.
Br. 3—5; Reply Br. 2—6. The Examiner found that Hebrink teaches non-
optical layers, including strippable protective skin layers, in an optical film
stack to be stretched, and determined that one of ordinary skill would have
had reason to include such strippable layers in Merrill’s process “to facilitate
the formation of multiple optical films that have been stretched.” Final Act.
2-3.
Appellants argue that Hebrink does not teach the use of strippable
boundary layers. App. Br. 4. Appellants further argue that Hebrink
“implicitly discourages the use of a strippable boundary layer” because,
according to Appellants, Hebrink’s only example describes boundary layers
having the same composition as an optical layer and does not have a
strippable skin layer. Id. We disagree.
Hebrink teaches that a multilayer optical film to be processed by
stretching advantageously includes non-optical layers. Hebrink 139. The
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Appeal 2016-000587
Application 12/124,726
disclosed non-optical layers include internal layers which “give the
multilayer film structure” and external “sacrificial protective skins, wherein
the interfacial adhesion between the skin layer(s) and the optical stack is
controlled so that the skin layers can be stripped from the optical stack
before use.” Id. Hebrink’s disclosed example involves a multi-layer film
that includes 825 alternating first and second optical films, along with both
internal non-optical layers and external skin layers, all of which are
processed together by stretching. Id. 178. Appellants’ contentions that
Hebrink does not disclose strippable layers, or does not include such
strippable layers in the provided example, are inconsistent with the plain
teachings in Hebrink.
The Examiner’s obviousness determination relies on Hebrink’s
teaching that protective strippable skin layers may be included in a multi­
layered film stack during a stretching operation. See Ans. 3 (finding that
“Hebrink et al discloses stretching a multilayer optical body . . . wherein the
optical body would contain non-optical layers such as sacrificial, strippable
skin layers”). In light of that teaching, we understand the Examiner’s
rationale as involving a determination that one skilled in the art would have
been motivated to simultaneously process multiple film stacks, e.g., for
production efficiency, such that the strippable skin layers taught by Hebrink
would have been positioned between respective stacks. See Final Act. 3
(referring to “the formation of multiple optical films that have been
stretched” (emphasis added)). Appellants have not persuaded us of
reversible error in the Examiner’s factual findings underlying that
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Appeal 2016-000587
Application 12/124,726
determination.6 Nor are we persuaded by Appellants’ argument in the Reply
Brief that neither Merrill nor Hebrink expressly describes employing
strippable boundary layers to produce multiple optical films. Reply Br. 3^4.
The fact that neither reference alone teaches simultaneous processing of
multiple optical film stacks does not negate a finding that one skilled in the
art would have recognized the efficiency advantage in doing so, or the
reasonable expectation of success given Hebrink’s teaching that protective
strippable skin layers may be provided during the stretching process. See
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009) (explaining that an analysis of obviousness “may include recourse to
logic, judgment, and common sense available to a person of ordinary skill
that do not necessarily require explication in any reference or expert
opinion”).
For the foregoing reasons, we sustain the rejection.
DECISION
The Examiner’s decision rejecting claims 11—14 and 16—22 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.
AFFIRMED
6 We recognize that Appellants’ arguments might also be directed against the
Examiner’s alternative rationale based on a finding that the internal non-
optical layers taught by Hebrink inherently would have been strippable. See
Final Act. 3 (finding that Hebrink’s internal boundary layer “would
inherently be strippable”). We need not adopt or rely upon this alternative
rationale in reaching our decision in this appeal.
5