Ex Parte Umemoto et al

Patent Trial and Appeal Board

Jul 22, 2016

13028770 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/028,770 02/16/2011 Seiji Umemoto
38834 7590 07/26/2016
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT A VENUE, NW
SUITE 700
WASHINGTON, DC 20036
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.
110138 9395
EXAMINER
CAILLOUET, CHRISTOPHER C
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
07/26/2016 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PA TENT TRIAL AND APPEAL BOARD
Ex parte SEIJI UMEMOTO, 1
Satoshi Hirata, and Takuya Nakazono
Appeal2014-0055522
Application 13/028,770
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
JEFFREY R. SNAY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Seiji Umemoto, Satoshi Hirata, and Takuya Nakazono ("Umemoto")
timely appeal under 35 U.S.C. § 134(a) from a non-final rejection3 of
claims 10-17.4 We have jurisdiction. 35 U.S.C. § 6. We affirm.
1 The Real Party in Interest is identified as Nitto Denko Corporation.
(Appeal Brief, filed 11 December 2013 ("Br."), 2.)
2 Heard 9 July 2016. The Official Transcript has been made of record.
3 Office action mailed 11 July 2013 ("Office Action," cited as "OA"), in
response to the Request for Continued Examination under 3 7 C.F .R. § 1.114
filed 1 March 2013.
Appeal2014-005552
Application 13/028,770
A. Introduction5
OPINION
The subject matter on appeal relates to methods of making optical
display devices by applying an optical film, such as a polarizing film, to, for
example, a liquid crystal display. The optical film is drawn from a sheet of
material stored on a roll, the sheet is cut, a release layer is peeled from one
side of the optical film, exposing a layer of pressure-sensitive adhesive, and
the optical film is then adhered to a substrate. A protective film adhered to
the other side of the optical film is subsequently peeled, together with its
adhering pressure-sensitive adhesive, from the optical films. Thus, the sheet
material comprises an optical film having an adhered release layer ("first
base film") on one side, and an adhered surface-protecting film ("second
base film") on the other.
According to the '770 Specification, problems arise, especially during
transport of the rolls, due to "lifting" (i.e., separation) of the base films from
the optical film. The lifting of the film is said to lead to changes in the
thickness of the pressure sensitive adhesive, and to deformation of the
optical film itself, resulting in defective products. (Spec. 5 [0009].) The
Specification reveals that these problems may be avoided by taking two
measures. First, the adhesive strengths of the pressure-sensitive adhesives to
4 Remaining copending claims 1-9 have been withdrawn from
consideration by the Examiner (Notice of Panel Decision from Pre-Appeal
Brief Review (15 November 2013), and are not before us.
5 Application 13/028,770, Material roll and system and method for
manufacturing optical display device, filed 16 February 2011, claiming the
benefit of an application filed in Japan on 5 August 2010. We refer to the
'"770 Specification," which we cite as "Spec.," and to the '770 Application.
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Application 13/028,770
the optical film, the release layer, and the protective layer are adjusted so the
release layer may be removed first without disturbing the surface protective
layer. (Id. at 7, 1. 18, to 8, 1. 2.) Second, the material is rolled onto a
cylinder with the release layer, i.e., the first base film, facing out. (Id. at 8,
11. 3-5.) The release film is stripped from the optical film, which is then
adhered to a substrate, e.g., a liquid crystal display. Later, the surface-
protecting film, with its pressure-sensitive adhesive layer, is removed.
Figure 6, shown below, illustrates the geometry of the sheet on the
roll, and indicates the desired adhesive properties of the layers.
6 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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Application 13/028,770
Release layer ("first base film") F12 faces out on the roll and is
stripped from optical film Fil, leaving first pressure sensitive adhesive
layer F14 on optical film Fil. Optical film Fil is then adhered to a
substrate (not shown). Subsequently, surface protective layer ("second base
film") F13, along with second pressure sensitive adhesive layer FIS, is
peeled from optical film Fil, leaving surface Fllb exposed.
Claim 10 is representative of the dispositive issues and reads:
A method for manufacturing an optical display device using a
material roll by bonding an optical film to a surface of an
optical display unit, comprising:
a cutting and bonding step comprising
cutting at least the optical film of a sheet material drawn
from the material roll into a predetermined length and
bonding a cut piece of the optical film to a surface of the
optical display unit,
wherein the material roll comprises a roll of the sheet
material comprising the optical film having a first surface and
a second surface,
a first base film provided on the first surface of the optical
film with a first pressure-sensitive adhesive layer
interposed therebetween, and
a second base film provided on the second surface of the
optical film with a second pressure-sensitive adhesive
layer interposed therebetween,
wherein the sheet material has a width corresponding to the
length of any one side of the optical display unit,
adhering strengths A, B, C, and D satisfy relationships
A< B andA < C < D,
when the first pressure-sensitive adhesive layer has a first
base film-side interface with an adhering strength A,
the first pressure-sensitive adhesive layer has an optical
film-side interface with an adhering strength B,
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Application 13/028,770
the second pressure-sensitive adhesive layer has an optical
film-side interface with an adhering strength C,
and the second pressure-sensitive adhesive layer has an
second base film-side interface with an adhering strength D,
the sheet material is wound in such a manner that
the first base film is located on an outer side and that
the second base film is located on an inner side, and
the optical film comprises a laminated film comprising at
least one of a polarizing film, a retardation film, and a
brightness enhancement film.
(Claims App., Br. 9-1 O; some indentation, paragraphing, and emphasis
added.)
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Application 13/028,770
The Examiner maintains the following grounds of rejection7' 8
A. Claims 10, 11, and 14-1 7 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Satake 9, 10 JP '110 11 , 12 either JP '039 13 or Chen 14 and
' ' '
N akahira. 15
Al. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Satake, JP '110, either
JP '039 or Chen, Nakahira, and Kitada. 16
7 Examiner's Answer mailed 28 January 2014 ("Ans.").
8 Because the '770 Application was filed before 16 March 2013, we refer to
the pre-AIA version of the statute.
9 Masayuki Satake and Fumiaki Shirafuji, Surface protection film-attached
optical film and image display, U.S. Patent No. 7,658,992 B2 (2010).
10 Since 8 May 2012, when Satake was first cited, this reference has been
mislabeled by both the Examiner (see PTOL 892 mailed 8 May 2012) and
Umemoto, as U.S. Patent No. 7,658,922, which was issued to Yarnell et al.
("Monoclonal antibodies ... ").
11 Kazunori ~vfizutani et al., Tacky polarizing plate, JP 55-117110 (1980)
(JPO machine translation, abstract and figures).
12 Although accurately cited as JP '110 in the text of the rejections, this
reference is uniformly mis-cited as JP '100 in the heading of the rejections.
13 Yasushi Takahashi et al., Protective film for protecting surface of optical
member, JP 2002-019039 (2002) (Patent Abstract of Japan Abstract) (Nitto
Denko Corp.).
14 Janglin Chen et al., Guarded cover film for LCD polarizers, U.S. Patent
No. 7,279,060 B2 (2007).
15 Yasushi Nakahira and Hideo Abe, System and method for manufacturing
optical display, U.S. Patent Application Publication 2009/0159175 Al
(2009) (Nitto Denko Corp), abandoned.
16 Kazuo Kitada et al., Manufacturing system and manufacturing method for
optical display device, PCT/JP2008/072093 (2008) (Nitto Denko Corp.);
U.S. Patent Application Publication 2010/0282406 Al (2010), the
publication of application 12/677,395 [U.S. Patent No. 8,002,010]
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Application 13/028,770
B. Claims 10, 11, and 14-17 stand rejected under [provisional]
obviousness-type double patenting in view of claim 5 of
Takeda 17 and N akahira.
B 1. Claim 12 stands rejected under [provisional] obviousness-
type double patenting in view of claim 5 of Takeda,
Nakahira, and Kitada.
B2. Claim 13 stands rejected under [provisional] obviousness-
type double patenting in view of claim 5 of Takeda,
Nakahira, Kitada, and Satake.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Rejections A: Obviousness
In Umemoto's view, a difficulty with Rejections A, based on Satake
and the other cited references, is that "none of the references, alone or in
combination, discloses a sheet material wound in such a manner that a first
base film is located on an ... inner side, as recited in claim 10." (Br. 5, 2d
full para.)
The Examiner reasons that there are only two ways to roll the sheet
material onto a cylinder, and concludes that "it would have been obvious ...
(23 August 2011), which is the national stage under 35 U.S.C. § 371 of
PCT '093, has been used, without objection, as an English language
translation of the Japanese-language original document.
17 Kentarou Takeda and Michihito Ooishi, Material roll and method for
manufacturing material roll, now U.S. Patent No. 8,808,821 B2
(issued 19 Aug 2014; filed as application 12/990,908, as the national stage
under 35 U.S.C. § 371 of PCT/JP2010/050874, which was
filed 25 January 2010).
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Application 13/028,770
to try to wind the material ... into a roll wherein the first layer is on an outer
side ... because a person with ordinary skill has good reason to pursue the
known option within his or her technical grasp." (Ans. 6, 11. 5-11.)
As our reviewing court has explained repeatedly, "section 103 ...
according to Graham and its progeny, entitles an applicant to issuance of an
otherwise proper patent unless the PTO establishes that the invention as
claimed in the application is obvious over cited prior art, based on the
specific comparison of that prior art with claim limitations. We once again
hold today that our precedents do not establish any per se rules of
obviousness, just as those precedents themselves expressly declined to create
such rules." In re Ochiai, 71F.3d1565, 1572 (Fed. Cir. 1995). What
matters are the facts of each case.
In this case, the weight of the evidence, as shown by the Examples
and the Comparative Examples in the Specification (Spec. 68, Table, and
following descriptions) is that whether the most weakly adhered film (i.e.,
the release film) is facing to the outside of the roll or facing to the inside of
the roll makes a difference in the number of defects in the final product. The
Comparative Examples, which position the first base film on the inner side,
have conspicuously more defects. If there were substantially no more
defects one way or the other, the weight of the evidence would be that the
two positions are equivalent, and thus the choice of orientation would be
irrelevant to the quality of the product. Assuming, as in the present case, no
other process advantage was demonstrated, the Examiner's analysis would
be upheld. In the present case, however, in which the prior art does not
suggest any difference, we reverse the obviousness rejections over the prior
art of record. Whether cast as an absence of a reasonable expectation of
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Application 13/028,770
success, a lack of recognition of a solution to a problem, or an unexpected
result, the evidence in this case supports non-obviousness over
obviousness. 18
We reverse the rejections for obviousness.
Rejections B: Obviousness-type double patenting
Because Umemoto does not advance substantive arguments against
the provisional obviousness-type double patenting rejections, which have
become obviousness-type double patenting rejections due to the issuance of
the patent to Takeda, we summarily affirm Rejections B.
C. Order
It is ORDERED that Rejections A of claims 10-17 under
35 U.S.C. § 103(a) are reversed.
It is FURTHER 0 RD ERED that Rejections B of claims 10-1 7 under
obviousness-type double patenting are affirmed
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
18 A second difficulty, according to Umemoto, is that the references do not
inherently or implicitly disclose or suggest the relative adhesive strengths
required between the pressure-sensitive adhesives and the layers to which
they are adhered. (Id. at 6, 1st full para.) We need not, and do not, reach
this issue.
9