Ex Parte Sugino et al

Patent Trial and Appeal Board

Oct 17, 2014

12114275 (P.T.A.B. Oct. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AKIKO SUGINO, KOHEI YANO,
TSUYOSHI CHIBA and MASAYUKI SATAKE
____________________

Appeal 2013-000180
Application 12/114,275
Technology Center 1700
____________________

Before ROMULO H. DELMENDO, JEFFREY T. SMITH,
and DONNA M. PRAISS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 2, and 4 through 15. We have jurisdiction under
35 U.S.C. § 6(b).
The claims are directed to a pressure sensitive adhesive optical film.
App. Br. 1–2. Claim 1 illustrates the subject matter on appeal and is
reproduced below:

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1. A pressure-sensitive adhesive optical film,
comprising:

an optical film; and

a pressure-sensitive adhesive layer laminated on at least
one side of the optical film,

wherein the pressure-sensitive adhesive layer is formed
from a pressure-sensitive adhesive containing a (meth)acrylic
polymer(A) and a resin component(B) having an aromatic ring
structure in its main chain,

wherein the resin component (B) having an aromatic ring
structure in its main chain is a polyurethane resin that is a
reaction product of a polyol component with a polyisocyanate
component, a polyimide resin and/or a polycarbonate resin.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Yamaya et al. US 4,960,809 Oct. 2, 1990
Goodman et al. US 5,997,682 Dec. 7, 1999
Sugino et al. US 6,277,481 Bl Aug. 21, 2001
Yu US 2002/0009569 Al Jan. 24, 2002
Okamoto et al. US 6,451,439 B2 Sep. 17, 2002
Ichinose et al. US 2003/0149222 Al Aug. 7, 2003
Toyama et al. US 2006/0121273 Al Jun. 8, 2006
Kuwabara et al. JP 2002-235052 A Aug. 23, 2002

Appellants (see Appeal Brief, generally) request review of the
following rejections from the Examiner’s Final Office action:
I. Claims 1, 2, 4–7 and 10–13 rejected under 35 U.S.C. § 103(a)
as unpatentable over Toyama, Sugino and Goodman.
II. Claims 8 and 9 rejected under 35 U.S.C. § 103(a) as
unpatentable over Toyama, Sugino, Goodman, Yamaya and Okamoto
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III. Claim 14 rejected under 35 U.S.C. § 103(a) as unpatentable
over Toyama, Sugino, Goodman and Ichinose.
IV. Claim 15 rejected under 35 U.S.C. § 103(a) as unpatentable
over Toyama, Sugino, Goodman, Kuwabara and Yu.

OPINION

Prior Art Rejections under 35 U.S.C. § 103(a)
Rejection I
The dispositive issue for this rejection is: Did the Examiner err in
determining that the combined teachings of Toyama, Sugino and Goodman
would have led one skilled in the art to a pressure sensitive adhesive optical
film comprising a pressure sensitive adhesive having a polyurethane resin
component that is a reaction product of a polyol component with a
polyisocyanate component, a polyimide resin and/or a polycarbonate resin as
required by the subject matter of independent claim 1?1
We AFFIRM for the reasons presented by the Examiner and add the
following for emphasis.
The Examiner found Toyama discloses a pressure-sensitive adhesive
optical film comprising a pressure-sensitive adhesive containing a
(meth)acrylic polymer (A) but lacking a resin component (B) as required by
the subject matter of independent claim 1. Final Act. 2–3; Toyama ¶¶ 21,
22. The Examiner found Sugino teaches a pressure-sensitive adhesive
having a pressure-sensitive adhesive (meth)acrylic polymer (A) component
and a thermosetting adhesive polyurethane resin component (B). Final Act.

1 Appellants have not presented separate arguments for dependent claims 2,
4–7 and 10–13 in discussing Rejection I. Therefore, we limit our discussion
to independent claim 1 and dependent claims 2, 4–7 and 10–13 stand or fall
together with this claim.
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3; Sugino col. 2, ll. 10–25, 55–63. The Examiner found Sugino discloses
this adhesive as useful for strongly bonding adherends while suppressing
shrinkage of the pressure-sensitive adhesive during the curing process. Final
Act. 3; Sugino col. 2, ll. 55–63, col. 6, ll. 61–col. 7, l. 1. The Examiner also
found Goodman teaches a polyurethane resin having an aromatic structure in
its main chain, that is a reaction product of a polyol component with a
polyisocyanate component to form structural assemblies having better
mechanical properties. Final Act. 3; Goodman col. 3, ll. 50–60, col. 9, ll.
10–15, 35–40, col. 10, ll. 1–6. The Examiner found it would have been
obvious to one of ordinary skill in the art to modify the pressure sensitive
adhesive of Toyama to incorporate a polyurethane resin component (B) in
view of Sugino’s teachings. Final Act. 3–4. The Examiner further found it
would have been obvious to use Goodman’s polyurethane resin component
(B) having an aromatic ring structure in its main chain as disclosed to
improve the mechanical properties of the adhesive over wider temperature
ranges. Final Act. 3-4; Goodman col. 3, ll. 50–60, col. 10, ll. 1–6.
Appellants argue Toyama is directed to an optical film for improving
display quality while Sugino is directed to an adhesive composition for
bonding primarily metals. App. Br. 3; Toyama ¶¶ 2, 4; Sugino col. 2, ll. 2–
26. Appellants also argue Goodman discloses a radiation curable
elastomeric adhesive formulation, for bonding structures such as automotive
and aircraft structural components, that cures at room temperature. App. Br.
5; Goodman col. 1, ll. 10–18, col. 3, ll. 43–55. Thus, Appellants argue one
of ordinary skill in the art would not expect the materials and properties of
an adhesive suitable for bonding metals would be suitable for use with a
pressure-sensitive adhesive optical film capable of improving image quality
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of a display. App. Br. 3–4. Further, Appellants argue that one of ordinary
skill in the art would not expect the materials in the adhesive composition of
Goodman to be suitable for use in the metal-bonding adhesive composition
of Sugino, which cures at 180°C, or the pressure-sensitive adhesive optical
film of Toyama, which is heated to 150° to 155°C during fabrication. Id. at
5–6.
We are unpersuaded by these arguments and agree with the
Examiner’s determination of obviousness. While Appellants argue that the
polyurethane containing adhesives of Sugino and Goodman would not be
suitable for use with an optical film capable of improving image quality of a
display (id. at 3–6), Toyama discloses pressure sensitive adhesives
containing an isocyanate-based compound comprising urethane prepolymer
type isocyanates obtained by addition reaction of an isocyanurate compound,
a burette type compound, in addition thereto a known polyether polyol, a
known polyester polyol, an acryl polyol, a polybutadiene polyol, a
polyisoprene polyol. Toyama ¶ 35. Thus, Toyama suggests the use of a
polyurethane resin component as part of the pressure sensitive adhesive that
is a reaction product of a polyol component with a polyisocyanate
component. Further, like Sugino, Toyama suggests the use of a polyurethane
resin component in a pressure sensitive adhesive. Sugino col. 2, ll. 10–25,
55–63. Consequently, we do not agree with Appellants that one skilled in
the art would not have modified Toyama’s pressure sensitive adhesive to
incorporate Goodman’s polyurethane resin component to arrive at the
subject matter of independent claim 1 given the disclosures of the cited art.
See Final Act. 4; Toyama ¶ 35; Sugino col. 2, ll. 10–25, 55–63; Goodman
col. 3, ll. 50-–60, col. 10, ll. 1–6.
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While Appellants argue that Goodman discloses a radiation-curable
adhesive that cures at room temperature (App. Br. 5), the Examiner correctly
noted that Goodman discloses that the adhesive also can be cured with heat
(Ans. 12; Goodman col. 3, ll. 52–60).
Accordingly, we sustain the Examiner’s prior art rejection of claims 1,
2, 4–7 and 10–13 for the reasons presented by the Examiner and given
above.
Rejections II-IV
The Examiner separately rejected claims 8 and 9 under 35 U.S.C.
§ 103 as unpatentable over the combined teachings of Toyama, Sugino and
Goodman in further view of Yamaya and Okamoto (Rejection II). Final
Act. 6–7. Claims 8 and 9 respectively require the addition of an antioxidant
in a specific amount to an undercoat layer and that the antioxidant be
selected from a phenolic antioxidant, a phosphorus antioxidant, a sulfur
antioxidant, and an amine antioxidant.
The Examiner found Yamaya teaches as conventional to add a
phenolic antioxidant or a phosphorus antioxidant to a pressure sensitive
primer layer to prevent oxidative degradation. Final Act. 6; Yamaya col. 7,
ll. 25-30, col. 8, ll. 65-67. The Examiner further found Okamoto teaches
antioxidants are generally added within a range of about 0.1 to 20 parts per
100 parts by weight of the polymer component. Final Act. 7; Okamoto col.
7, l. 1; col. 13, ll. 37–43.
Appellants argue Yamaya discloses a primer layer applied as an
undercoat to a silicone-based overcoating layer for an article of a plastic
resin. App. Br. 6. According to Appellants, one of ordinary skill in the art
would not expect the properties of a primer layer for an undercoat to a
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silicone-based overcoating to be suitable as an anchor coat between a
pressure sensitive adhesive layer and an optical film as taught in Toyama.
Id. at 7.
We are unpersuaded by this argument. The Examiner relied on
Yamaya to teach the desirability of preventing oxidative degradation in
anchor/primer layers. Final Act. 6; Yamaya col. 7, ll. 25–30, col. 8, ll. 65–
67. Appellants have not adequately explained why one skilled in the art
would not have added an antioxidant to the anchor layer of Toyama to
prevent oxidative degradation in view of Yamaya’s disclosure. See In re
Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of
one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA
1969).
The Examiner also separately rejected claims 14 and 15 under 35
U.S.C. § 103 as unpatentable over the combined teachings of Toyama,
Sugino and Goodman in further view of Ichinose and Kuwabara/Yu,
respectively (Rejections III and IV). Final Act. 7–9. Claims 14 and 15
require that the resin component be either a polyimide resin or a
polycarbonate resin, respectively.
The Examiner relied on Ichinose and Kuwabara/Yu as disclosing the
addition of a polyimide resin or polycarbonate resin to an adhesive to
provide a three-dimensional network structure which possesses good tear
strength. Final Act. 8–9; Ichinose ¶¶ 2, 16, 24, 66; Kuwabara ¶¶ 6, 50; Yu
¶¶ 41, 50.
Appellants argue there is nothing in the cited references to suggest
that a polyimide resin or a polycarbonate resin would be suitable as an
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adhesive component to be added to a (meth) acrylic polymer for a pressure
sensitive adhesive optical film as disclosed in Toyama. App. Br. 7–8.
We are unpersuaded. As noted by the Examiner, Sugino teaches the
resin component as providing a three-dimensional network structure to
strongly bond adherends. Ans. 14; Sugino col. 2, ll. 55–63. The Examiner
also noted that Sugino does not limit the thermosetting resin used. Ans. 14;
Sugino col. 2, ll. 55–65. The Examiner reasonably established that the
polyimide resin of Ichinose and the polycarbonate resin of Kuwabara/Yu are
used as components of adhesives to provide a three-dimensional network
structure to improve the adhesive properties. Final Act. 8–9; Ichinose ¶¶ 2,
16, 24, 66; Kuwabara ¶¶ 6, 50; Yu ¶¶ 41, 50. Appellants have not
adequately addressed the Examiner’s reasons for combining the references.
Accordingly, we also affirm the Examiner’s separate § 103 rejections
of claims 8, 9, 14 and 15 for the reasons given above and presented by the
Examiner.

ORDER
The Examiner’s prior art rejections of claims 1, 2, and 4–15 under 35
U.S.C. § 103(a) are affirmed.
TIME PERIOD
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).

AFFIRMED

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