Ex Parte Suzuki et al

Patent Trial and Appeal Board

Jan 9, 2018

12990577 (P.T.A.B. Jan. 9, 2018)

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.
12/990,577 11/01/2010 Mitsuru Suzuki P22150US00 1605
38834 7590 01/11/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
01/11/2018 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):
patentmail @ whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSURA SUZUKI, SHOUJI YAMAMOTO, KENTAROU
TAKEDA, KOUZOU NAKAMURA, and YUU SUGIMOTO
Appeal 2017-002644
Application 12/990,577
Technology Center 1700
Before JULIA HEANEY, BRIAN D. RANGE, and MERRELL C.
CASHION JR., Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seek our review pursuant to 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1, 4, and 13—17 of Application 12/990,577 as
1 This Decision includes citations to the following documents: Specification
filed Nov. 1, 2010 (“Spec.”); Final Office Action dated Feb. 11, 2016
(“Final Act.”); Appeal Brief filed July 7, 2016 (“Appeal Br.”); Examiner’s
Answer dated Oct. 6, 2016 (“Ans.”); and Reply Brief filed Dec. 6, 2016
(“Reply Br.”).
2 Appellants identify the real party in interest as Nitto Denko Corp. Appeal
Br. 2.
Appeal 2017-002644
Application 12/990,577
unpatentable under 35 U.S.C. § 103(a) over at least the combination3 of
Nakano4 and Inagaki.5 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
The subject matter on appeal relates to a pressure-sensitive adhesive
polarizing plate. Appeal Br. 2. According to the Specification, the pressure-
sensitive adhesive is used to bond the polarizing plate to a liquid crystal cell
or other components in a liquid crystal display. Spec. 1:19-20, 31—32.
Claim 1, the sole independent claim on appeal, is illustrative of the
claimed subject matter:
1. A pressure-sensitive adhesive polarizing plate, comprising:
a polarizer (P);
a transparent protective film (E) provided on only one side of
the polarizer (P) with an adhesive layer (G) interposed
therebetween;
a pressure-sensitive adhesive layer (B) provided on another side
of the polarizer (P) with a protective layer (H) having a tensile
modulus of 1,000 to 2,000 MPa interposed therebetween,
wherein the protective layer (H) is directly provided on the
polarizer (P),
3 The Examiner applied additional references to dependent claims 14—17.
Final Act. 2—5. Appellants’ arguments are all directed to the basic
combination of Nakano and Inagaki.
4 Nakano et al. US 2007/0269616 Al; Nov. 22, 2007 (“Nakano”).
5 Inagaki et al. US 6,913,820 B2; July 5, 2005 (“Inagaki”).
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Application 12/990,577
wherein the protective layer (H) is made from a protective
layer-forming agent (H') that is a cyanoacrylate-based layer­
forming agent, or an isocyanate-based layer-forming agent.
Appeal Br. 10, Claims App’x. Claim 13 depends from claim 1 and
additionally recites that the thickness of protective layer (H) is from 0.01 to
3 pm.
DISCUSSION
The Examiner finds that Nakano teaches a pressure-sensitive adhesive
polarizing plate comprising the layers recited in claim 1, except that Nakano
does not teach that protective layer (H) is “made from a protective layer­
forming agent (H') that is a cyanoacrylate-based layer-forming agent, or an
isocyanate-based layer-forming agent.” Final Act. || 5—6, providing
citations to Nakano. The Examiner determines, however, that it would have
been obvious to a person of ordinary skill in the art to modify Nakano’s
protective layer to include a cyanoacrylate-based layer forming agent, in
view of Inagaki’s teaching of a polarizing plate comprising a protective layer
made from a cyanoacrylate-based layer forming agent, “in order to improve
the coating layer properties.” Final Act. || 7—8, providing citations to
Inagaki.6
Appellants argue that the rejection does not provide a rationale for a
person of ordinary skill in the art to combine Nakano and Inagaki because
6 The Examiner erroneously refers to Inagaki as “Nakanishi et al.” Final
Act. | 8; Ans. 11 5, 9. Because there is no dispute as to what references are
at issue, we treat this as a harmless, typographical error and determine the
merits of the rejection as if the Examiner correctly referred to Inagaki.
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Application 12/990,577
there is no disclosure in the references that Nakano’s layer-forming agent in
its curing resin layer is interchangeable with Inagaki’s cyanoacrylate-based
ultraviolet absorbent. Appeal Br. 5—6. Appellants assert that the Examiner’s
finding that Nakano’s and Inagaki’s layers are “interchangeable” because
they are both active energy-ray curing-type materials having an acryloyl
group is incorrect because the layers are “completely different in materials”
and further, the material of protective layer (H) in claim 1 is not an active
energy-ray curing type material having an acryloyl group. Id.
Appellants’ argument is not persuasive of reversible error because it is
not responsive to the rejection. The Examiner does not find that Nakano’s
and Inagaki’s layers are interchangeable but rather finds that they both are
drawn to a polarizing plate comprising polarizer and protective film that is
curable, and that both protective layers are energy-ray curable comprising
acryloyl and scratch resistance. Final Act. 130; Ans. 123. Moreover, the
Examiner’s rationale for modifying Nakano with Inagaki’s material is
supported by the references. The Examiner’s finding that the protective
layers of both references are energy-ray curable materials comprising
acryloyl is sufficient to support the determination of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”). Further, Appellants’ argument in the Reply Brief that
Inagaki provides only a UV absorber but not a layer-forming agent is not
persuasive because both references teach a curable protective layer for a
polarizing plate, and a person of ordinary skill in the art is presumed to have
skills apart from what a reference expressly discloses. In re Sovish, 769
F.2d 738, 743 (Fed. Cir. 1985).
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Application 12/990,577
Appellants further argue that “the coating layer” in Inagaki is not
“directly provided on the polarizer” as is “protective layer (H)” recited in
claim 1, but Inagaki’s layer rather is provided on the surface of a laminate
film that is to be bonded to a polarizing film. Appeal Br. 6. This argument
is not persuasive because the Examiner relies on Inagaki only for its
teaching of a cyanoacrylate-based material and not for the position of the
layer. Ans. 125. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(nonobviousness cannot be shown by attacking references individually where
the rejection is based on combination of the references).
With regard to claim 13, the Examiner finds that Inagaki teaches the
thickness of its protective layer is from 0.01 to 3 pm, which overlaps the
claimed range, and that Nakano teaches a range of 5—30 pm in a preferred
embodiment. Final Act. || 4—7, citing Inagaki 6:50—52, Nakano 152. The
Examiner also finds Nakano teaches that “the higher the thickness [of the
protective layer], the greater the hardness but also the greater chance of
cracking.” Final Act. 4; Nakano 152. The Examiner determines that it
would have been obvious to a person of ordinary skill in the art to optimize
the thickness of the protective layer based on Nakano’s teachings, or choose
a thickness within the range taught by Inagaki, to thereby optimize the
desired hardness to minimize formation of cracks to arrive at the thickness
recited in claim 13.
Appellants argue that Inagaki’s coating layer as relied upon by the
Examiner is not “directly provided on the polarizer” as claim 1 requires for
“protective layer (H),” and therefore Inagaki’s teaching is irrelevant.
Appeal Br. 7. This argument is not persuasive for the reasons discussed
supra. Appellants further argue that Nakano 152 discloses a thickness
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range significantly higher than the claimed range and further teaches toward
increasing the thickness of the layer. Appeal Br. 7. This argument is not
persuasive of reversible error because it is not supported by Nakano, which
teaches optimization of desired hardness to minimize formation of cracks,
and not solely increasing thickness. Nakano | 52. The Examiner’s finding
that nothing in Nakano precludes lower thickness of the layer is well
supported. Accordingly, we sustain the rejection of claim 13.
Appellants do not separately argue any other dependent claims.
Therefore, we sustain the rejections as applied to all dependent claims.
37 C.F.R. § 41.37(c)(l)(iv) (2013).
SUMMARY
We affirm the rejections of claims 1, 4, and 13—17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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