Ex Parte Toyama et alDownload PDFPatent Trial and Appeal BoardAug 27, 201813993153 (P.T.A.B. Aug. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/993, 153 06/11/2013 Yuusuke Toyama 38834 7590 08/29/2018 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 8500 Leesburg Pike SUITE 7500 Tysons, VA 22182 UNITED ST A TES OF AMERICA 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. P23751USOO 4887 EXAMINER DUCHENEAUX, FRANK D ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 08/29/2018 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 YUUSUKE TOYAMA, ATSUSHI YASUI, TOMOYUKI KIMURA, MASAYUKI SATAKE, SHUSAKU GOTO, TAKEHARUKITAGAWA, MINORU MIYATAKE, TOMOHIRO MORI, and TAKASHI KAMIJO Appeal2017-009008 Application 13/993,153 Technology Center 1700 Before RAEL YNN P. GUEST, BRIAND. RANGE, and JANEE. INGLESE, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-5, 9, and 10. See Examiner's Non-Final Office Action, dated September 29, 2016 ("Non-Final Act."); Examiner's Answer, dated April 7, 2017 ("Answer"). We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 NITTO DENKO CORPORATION is identified as the real party in interest. App. Br. 2. Appeal2017-009008 Application 13/993,153 Appellants' invention is related to a product containing a pressure- sensitive adhesive for optical films wherein the pressure-sensitive adhesive contains a (meth)acryl-based polymer made from an alkyl (meth)acrylate, a ring-polymerizable monomer, a hydroxyl group-containing monomer, and a carboxyl group containing monomer and having a molecular weight of 300,000 to 950,000. Spec. ,r 15. Independent claim 1 is exemplary of the subject matter on appeal and is reproduced below: 1. A product comprising a pressure-sensitive adhesive composition for use on an optical film and an optical film, the pressure-sensitive adhesive composition for use on an optical film comprising: a (meth)acryl-based polymer obtained by copolymerization of 67 to 98.9% by weight of an alkyl (meth)acrylate, 1 to 30% by weight of an aromatic ring- containing polymerizable monomer, 0.1 to 10% by weight of a hydroxyl group-containing monomer, and Oto 4% by weight of a carboxyl group-containing monomer, the (meth)acryl-based polymer having a weight average molecular weight of 300,000 to 950,000 as measured by gel permeation chromatography; and a solvent, wherein the content of a solid including the (meth)acryl-based polymer is 20% by weight or more, and the content of the solvent is 80% by weight or less, wherein the pressure-sensitive adhesive composition for use of an optical film is formed on at least one side of the optical film, and wherein the optical film is a polarizing plate comprising a polarizer and a transparent protective film or films provided on one or both sides of the polarizer. App. Br. 20, Claims App 'x. 2 Appeal2017-009008 Application 13/993,153 The Examiner maintains the rejection2 of Claims 1-5, 9, and 10 under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Miyatake3 in light of evidence provided by Takizawa. 4 Unless otherwise indicated, we adopt the Examiner's findings in the Answer as our own and add any additional findings of fact appearing below for emphasis. II. Discussion The Examiner finds that Miyatake teaches all of the elements of the claimed pressure-sensitive adhesive composition and in overlapping ranges to that recited in the claims. Ans. 3-5. The Examiner relies on Takizawa for teaching that the selection of molecular weight for an acrylic polymer in a pressure-sensitive adhesive is a balance of rigidity and strength and, thus, concludes that it would have been obvious to use the amounts of the elements recited in the claims, including the molecular weight of the (meth)acryl-based polymer to obtain a desired rigidity and strength. Ans. 5- 6. Appellants do not dispute the Examiner's findings or reasoning. Rather, Appellants argue that it is the combination of low or no carboxyl 2 The Examiner further maintains a provisional rejection of claims 1-5, 9, and 10 under the doctrine of obviousness-type double patenting over claims 1-10 of U.S. Application 13/993,256. Non-Final Action 7-8; Ans. 6-8. However, the '256 application was abandoned on July 19, 2017, rendering a rejection based thereon moot. Accordingly, we decline to opine on the merits of the obviousness-type double patenting rejection. 3 Minoru Miyatake et al., US 2010/0039590 Al, published February 18, 2010 ("Miyatake"). 4 Youichi Takizawa et al., US 2003/0017332 Al, published January 23, 2003 ("Takizawa"). 3 Appeal2017-009008 Application 13/993,153 group-containing monomer and the precise molecular weight range recited in the claims that leads to unexpected results. App. Br. 7. Molecular weight Appellants contend that the ranges of the molecular weight taught by Miyatake (500,000 to 3 million) only overlap the claimed range (300,000 to 950,000) and that the Specification shows unexpected results for the narrower claimed range. App. Br. 7 ( citing Spec. ,r 41 ). Indeed, paragraph 40 of the Specification states that "[i]f its weight average molecular weight does not fall within the range of 300,000 to 1,200,000, bonding ability or adhesive strength can be reduced." The Specification further states that too high of a molecular weight can cause the product to form undesirable microgel. Spec. ,r,r 8, 14. Appellants further point to Table 1 of the Specification (Spec. ,r 23) and comparative Examples H, I, and J. App. Br. 10-11. The Examiner determines that the evidence of unexpected results is not commensurate with the scope of the claims, particularly the upper molecular weight limit of 950,000 recited in the claims. Ans. 20. We agree with the Examiner that Appellants have not provided sufficient evidence commensurate with the range of molecular weight recited in the claims to have established unexpected results. It is true that a routine variable change sometimes causes an unexpected effect. In such a situation, the claimed subject matter will be unobvious under the law if Appellants present a showing of criticality of the recited range for unexpected beneficial results. See In re Boesch, 617 F .2d 272,276 (CCPA 1980); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454,456 (CCPA 1955). To establish 4 Appeal2017-009008 Application 13/993,153 unexpected results over a claimed range, an applicant should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the limits of the claimed range. In re Hill, 284 F.2d 955, 958-59 (CCPA 1960). Appellants present no convincing evidence of unexpected results on this record. Indeed, paragraph 40 of the Specification indicates no criticality to the upper limit of 950,000. Rather, the paragraph suggests that similar successful results can be achieved up to 1,200,000, which is outside of the range recited in the claims. Moreover, while successful results are shown using an acryl polymer C having a molecular weight of 950,000 (Examples 6 and 7), the next highest molecular weight tested is acryl polymer J having a molecular weight of 2,200,000 (Comparative Example 3), which is not sufficiently close to the range recited in the claim to adequately show criticality of the narrower range. In other words, no data is provided between molecular weights of 950,000 and 2,200,000 to show criticality to 950,000 being an upper limit. We further note that the acryl polymer J, having the molecular weight of 2,200,000, has a solids content of 12%, which is below the claimed requirement of 20%. Thus, it is unclear from the record whether the lack of successful results is from the higher molecular weight or from too low of a solids content. In other words, Appellants' allegation of unexpected results cannot be traced, with reasonable certainty, to the molecular weight range argued to be critical. In re Dunn, 349 F.2d 433, 439 (CCPA 1965) ("While we do not intend to slight the alleged improvements, we do not feel it an unreasonable burden on appellants to require comparative examples relied 5 Appeal2017-009008 Application 13/993,153 on for non-obviousness to be truly comparative. The cause and effect sought to be proven is lost here in the welter of unfixed variables."). Similarly, though not addressed by the Examiner, the lower end of the recited molecular weight range (300,000) is not shown to be critical because the evidence provides no data between molecular weights of 250,000 and 430,000 to establish that a lower limit of 300,000 is critical. The statement in paragraph 40 regarding a lower limit of 300,000, without supporting evidence, is not sufficient to establish unexpected results as to a lower critical limit. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) ("[i]t is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice."). As a final note, even if Appellants were to establish an optimal molecular weight range for acryl polymers, Appellants' Specification does not assert and Appellants have not shown that this range's results are unexpected. Indeed, the Examiner notes that the prior art recognized that too low a molecular weight could result in insufficient strength ( as taught by Takizawa). Ans. 5. Similarly, the Background section of the Specification suggests that it was known that microgel formation and the associated problems therewith were known when the molecular weight of the acryl polymer used was too high. Spec. ,r 8. Thus, we have insufficient evidence to show that the discovery of an optimal range to balance these two known drawbacks would have been unexpected in the art. In re Applied Materials, Inc., 692 F.3d 1289, 1297-98 (Fed. Cir. 2012) ("Evidence that the variables interacted in an unpredictable or unexpected way could render the combination nonobvious, but Applied failed to show anything unpredictable 6 Appeal2017-009008 Application 13/993,153 or unexpected in the interaction of the variables.") (internal citation omitted). Amount of carboxyl group-containing monomer According to Appellants, Miyatake teaches a carboxyl-containing monomer in an amount between O .1 and 10% by weight, with Example 3 teaching 5% by weight. App. Br. 12. Appellants contend that Miyatake is not limited to the claimed range (0 to 4% by weight) of the carboxyl group- containing monomer and that the Specification shows unexpected results for the narrower claimed range. App. Br. 9 (citing Spec. ,r,r 37 and 38). Indeed, paragraph 3 8 of the Specification states To reduce the formation of microgel in the pressure- sensitive adhesive layer, however, the content of the monomer unit derived from the carboxyl group-containing monomer in the (meth)acryl-based polymer is preferably as low as possible. Thus, it is preferably 10% by weight or less, more preferably 1 % by weight or less, even more preferably 0.5% by weight or less. Most preferably, no carboxyl group-containing monomer is used. Spec. ,r 38. Appellants argue that unexpected results have been shown by the Specification examples in that Polymer H, which has 5% of a carboxyl group-containing monomer, is shown to be unacceptable. App. Br. 10. The Examiner states that Miyatake teaches that the carboxyl group- containing monomer, as well as the more preferred hydroxyl group- containing monomer are employed to provide the (meth)acryl-based polymer with crosslinking sights and, therefore, states that one skilled in the art would immediately recognize adjusting the proportion of the carboxyl monomer would serve to adjust the gel fraction which affects the adhesive's 7 Appeal2017-009008 Application 13/993,153 durability and cohesion. Ans. 17-18. The Examiner also points out that although Example 3 contains 5% of the carboxyl group-containing monomer, Example 1 does not contain the carboxyl group-containing monomer at all. Ans. 18. The claimed concentration range of the carboxyl group-containing monomer is from Oto 4%. Because the range includes 0%, a composition that does not contain the monomer reads on the claimed concentration. See also Spec. ,r 3 8 ("Most preferably, no carboxyl group-containing monomer is used."). Therefore, Miyatake teaches a composition having no carboxyl group-containing monomer as a preferred embodiment. Unexpected results must be compared to the closest prior art. In this case, the closes prior art is the exemplified composition of Miyatake having no carboxyl group-containing monomers, and falling squarely within the range set forth in the claim. "[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Because here, the prior art expressly teaches an embodiment having no carboxyl group-containing monomers, Appellants have not established that improvements from a low concentration or no carboxyl group-containing monomers was unexpected. III. CONCLUSION On the record before us and for the reasons discussed above, we sustain the rejection of claims 1-5, 9, and 10 as unpatentable under (pre- AIA) 35 U.S.C. § 103(a) over Miyatake, as evidenced by Takizawa. IV ORDER We affirm the Examiner's decision to reject claims 1-5, 9, and 10. 8 Appeal2017-009008 Application 13/993,153 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 )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation