Haruhiko ItoDownload PDFPatent Trials and Appeals BoardSep 29, 20212020005911 (P.T.A.B. Sep. 29, 2021) Copy Citation 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. 12/523,276 07/15/2009 Haruhiko Ito Q114133 8364 23373 7590 09/29/2021 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 9000 WASHINGTON, DC 20006 EXAMINER ROBINSON, ELIZABETH A ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 09/29/2021 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): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte HARUHIKO ITO ____________________ Appeal 2020-005911 Application 12/523,276 Technology Center 1700 ____________________ Before MAHSHID D. SAADAT, JOHN A. EVANS, and BRIAN D. RANGE, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 seek our review3 under 35 U.S.C. § 134(a) from the final rejection of Claims 1, 3–11, 13–18, and 24–29 all pending claims. Appeal Br. 31. We have jurisdiction under 35 U.S.C. § 6(b). 1 Our Decision refers to Appellants’ Appeal Brief filed June 22, 2020 (“Appeal Br.”); Appellants’ Reply Brief filed August 14, 2020 (“Reply Br.”); Examiner’s Answer mailed August 6, 2020 (“Ans.”); the Final Rejection mailed October 31, 2019 (“Final Act.”), and the Specification filed July 15, 2009 (“Spec.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appeal Brief identifies TEIJIN LIMITED of Osaka, Japan, as the real party in interest. Appeal Br. 2. 3 We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could Appeal 2020-005911 Application 12/523,276 2 We AFFIRM IN PART. STATEMENT OF THE CASE INVENTION. The claims relate to a transparent conductive multilayer body. See Abstract. Claims 1 and 24 are independent. An understanding of the invention can be derived from a reading of Claim 1, which is reproduced below with some formatting added: 1. A transparent conductive multilayer body, comprising a cured resin layer, a first transparent conductive layer, and a second transparent conductive layer sequentially laminated on at least one surface of a polymer film, characterized in that: the first transparent conductive layer is a crystalline transparent conductive layer free of an organic component; and the second transparent conductive layer contains alkoxysilane, and at least one kind of fine particles A formed of crystalline ITO fine particles having an average primary particle diameter of 100 nm or less; wherein the transparent conductive multilayer body further comprises a silicon oxide layer between the cured resin layer and the first transparent conductive layer, wherein the silicon oxide layer has a thickness at least 0.5 nm and less than 5.0 nm, wherein the content of the fine particles A is at least 0.1 parts by weight and at most 400 parts by weight with respect to 100 parts by weight of the alkoxysilane, wherein the cured resin layer is formed from a curable resin which consists of an ionizing radiation curable resin or a heat curable resin, and have made but chose not to make in the Briefs are deemed to be forfeit. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-005911 Application 12/523,276 3 wherein each crystalline ITO fine particle of the crystalline ITO fine particles has a crystal phase of at least 50%. Prior Art Name4 Reference Date Aikens US 6,416,818 B1 July 9, 2002 Yamaya US 2005/0227092 A1 Oct. 13, 2005 Hara US 2007/0224412 A1 Sept. 27, 2007 Miyashita5 JP 7 219 697 (A) Aug. 18, 1995 Minamino WO 2005/073763 A1 Jan. 28, 2005 Ito6 WO 2005/036565 A1 April 21, 2005 REJECTIONS7 AT ISSUE 1. Claims 1, 3–6, 8–11, 13–18, and 24–29 stand rejected under 35 U.S.C. § 112(1st ¶) as failing to comply with the written description requirement. Final Act. 2–3. 2. Claims 1, 3–6, 14–18, 24, and 288 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ito, Miyashita, and Aikens. Final Act. 3–6. 3. Claims 8–11 and 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ito, Miyashita, Aikens, and Minamino. Final Act. 6–8. 4 All citations herein to the references are by reference to the first named inventor/author only. 5 Miyashita and Minamino are read from machine translations. 6 Schreiber Translations, Inc. 7 The present application is being examined under the pre-AIA first to invent provisions. Final Act. 2. 8 Neither the header, nor the body, of the rejections under § 103 mention Claim 29. Therefore, we find Claim 29 does not stand rejected over the prior art. Appeal 2020-005911 Application 12/523,276 4 4. Claims 1, 3–6, 14–18, 24–28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ito, Yamaya, and Aikens. Final Act. 8–11. 5. Claims 1, 3–6, 14–18, 24, and 28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hara, Miyashita, and Aikens. Final Act. 11–15. 6. Claims 8–11 and 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hara, Miyashita, Aikens, and Minamino. Final Act. 15–16. 7. Claims 1, 3–6, 14–18, 24–28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hara, Yamaya, and Aikens. Final Act. 16–19. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). We have considered in this decision only those arguments Appellants actually raised in the Briefs. Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be forfeit. See 37 C.F.R. § 41.37(c)(1)(iv). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error except where we otherwise indicate below. Thus, where we affirm the Examiner’s rejections, we do so for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Appeal 2020-005911 Application 12/523,276 5 GROUND ONE: CLAIMS 1, 3–6, 8–11, 13–18, AND 24–29: WRITTEN DESCRIPTION. Independent Claim 1 recites, inter alia, “wherein each crystalline ITO fine particle of the crystalline ITO fine particles has a crystal phase of at least 50%.” The Examiner finds: the section of the Specification cited for support is a discussion of the first conductive layer, not a discussion of the crystalline ITO fine particles of the second transparent conductive layer. Further, it is a discussion that the layer is at least 50% in the crystalline phase (as opposed to amorphous), not that there are crystalline particles in some particular phase. Thus, the Specification does not provide support for this new limitation. Final Act. 2. The Examiner finds Claims 3–6, 8–11, 13–18, and 24–29 depend from Claim 1. Id., at 3. Appellant discloses: as used herein, the “crystalline conductive layer” refers to layers in which the crystal phase accounts for at least 50%, preferably at least 75%, more preferably at least 95%, and particularly preferably almost 100% of the dopant-containing indium oxide layer. Appeal Br. 7 (quoting Spec., 12, ll. 7–12) (emphasis omitted). Appellant argues the phrase “as used herein” means the subsequent description of a crystalline conductive layer applies generally to all disclosed crystalline conductive layers. Id., at 7–8. Appellant further argues: the use of the term “layers” in that disclosure means that the subsequent description regarding the crystalline conductive layer is not limited to a particular layer, such as the first conductive layer, but rather applies to crystalline conductive layers in general. Appeal Br. 8. Appellant argues, for example, the second transparent conductive layer contains both non-crystalline alkoxysilane and at least one Appeal 2020-005911 Application 12/523,276 6 kind of fine particles A formed of crystalline ITO fine particles thus, reference to a layer in which the crystal phase accounts for at least 50% refers to the crystalline particles in that layer having a crystal phase of at least 50%. Id. The Answer finds: “the limitation in question in claim 1 refers to the crystalline phase of each of the crystalline ITO fine particles, not of a layer. Thus, the cited section does not support the limitation present in the last two lines of claim 1.” Ans. 4. We find, given Appellant’s Specification disclosure, that a person of ordinary skill in the art would understand the term “crystalline conductive layer” to refer to a layer comprising an amorphous material, such as non- crystalline alkoxysilane combined with a crystalline material. The claimed crystalline ITO fine particles are an example of a crystalline material. In view of the foregoing, we decline to sustain the rejection of Claims 1, 3–6, 8–11, 13–18, and 24–29 as lacking written description. GROUND TWO: CLAIMS 1, 3–6, 14–18, 24, AND 28: OBVIOUSNESS OVER ITO, MIYASHITA, AND AIKENS. Claim 1 recites, inter alia, “wherein the content of the fine particles A is at least 0.1 parts by weight and at most 400 parts by weight with respect to 100 parts by weight of the alkoxysilane.” The Examiner finds Miyashita teaches an alkoxysilane layer having a dispersion of fine ITO particles. Final Act. 3–4. The Examiner finds Miyashita teaches the particles function to adjust a refractive index of the coating but does not teach an amount of particles relative to alkoxysilane. Id., at 4. The Examiner finds the particle- alkoxysilane ratio does not receive patentable weight because, absent a Appeal 2020-005911 Application 12/523,276 7 showing of unexpected results, the ratio is a result effective variable subject to routine optimization. Id. Appellant contends the claims optimize the claimed ratio, not based on refractive index as suggested by the Examiner, but based on avoiding, inter alia, an excessively large contact resistance. Appeal Br. 10–11 (citing Spec., 15). Appellant also argues that Miyashita does not teach that particle content (i.e. proportion of fine particles as compare to alkoxysilane as claim 1 recites) is result effective. Appellant’s argument persuades us of error. The Examiner finds optimizing the particle ratio for refractive index “would more likely than not result in a content of the fine particles within the claimed range.” Ans. 5 (citing MPEP 2144.05 IIA) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955)). In the present case, the prior art does not set forth the “general conditions.” See In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (“because the prior art disclosed values overlapping the claimed ranges, the ‘general conditions’ of the claim are disclosed”). The Examiner finds Miyashita is silent as to the claimed particle ratio. Final Act. 4 (“Miyashita does not state the amount of the particles with respect to the amount of alkoxysilane.”). Thus, in view of the Examiner’s explicit finding, the “general conditions” of the claim are not disclosed. The Aller rule, that “it is not inventive to discover the optimum or workable ranges by routine experimentation,” “is limited to cases in which the optimized variable is a ‘result-effective variable.’” In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012). The Federal Circuit has explained that a person of ordinary skill in the art would not always be Appeal 2020-005911 Application 12/523,276 8 motivated to optimize a parameter “if there is no evidence in the record that the prior art recognized that [that] particular parameter affected the result.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977). In other words, to rely on a rationale of a “result-effective variable,” the cited reference must recognize that the claimed variable affects the given result. The Examiner fails to find the prior art recognizes that optimizing a particle ratio with respect to refractive index, necessarily achieves an optimum ratio with respect to contact resistance. In view of the foregoing, we decline to sustain the rejection of Claims 1, 3–6, 14–18, 24, and 28 over Ito, Miyashita, and Aikens. GROUND THREE: CLAIMS 8–11 AND 13: OBVIOUSNESS OVER ITO, MIYASHITA, AIKENS, AND MINAMINO. The Examiner applies Miyashita, as discussed above. Final Act. 7. In view of the foregoing, we decline to sustain the rejection of Claims 8–11, and 13 over Ito, Miyashita, Aikens, and Minamino. GROUND FOUR: CLAIMS 1, 3–6, 14–18, AND 24–28: OBVIOUSNESS OVER ITO, YAMAYA, AND AIKENS. Claim 1 recites, inter alia, “the second transparent conductive layer contains alkoxysilane, and at least one kind of fine particles A formed of crystalline ITO fine particles having an average primary particle diameter of 100 nm or less.” The Examiner cites Yamaya for teaching this layer. Final Act 8–9. However, the Examiner finds Yamaya fails to teach the crystal structure of the layer. Id., at 9. The Examiner cites Aikens as teaching a nanocrystalline particle dispersion which may be 100% crystalline ITO. Final Act 10. Appeal 2020-005911 Application 12/523,276 9 Appellant contends the teachings of Yamaya are incompatible with the teachings of Aikens. Appeal Br. 20–21. Appellant argues Yamaya discloses a layer comprising particles at 0.1 to 100% by weight of the organosilicon compound. Appeal Br. 20–21 (citing Yamaya, ¶ 197) (cited by the Examiner). Appellant argues Yamaya teaches the weight of the particles should be at most the weight of the organosilicon because Yamaya discloses: “[t]oo smaller amounts of fine particles may fail to exert the intended properties whereas in too larger amounts, the cured coat may become too hard and likely to crack.” Appeal Br. 21 (quoting Yamaya, ¶ 197). Appellant argues that in contrast, Aikens discloses “[t]he film-forming agent is preferably added to the dispersion at up to 25% by weight of the nanocrystalline material content.” Appeal Br. 21 (quoting Aikens, col. 3, l. 66–col. 4, l. 1). Appellant argues Yamaya teaches the weight of the dispersion should be at most equal to the weight of the film-forming agent and that greater quantities would result in a coating that is too hard and would tend to crack, but that Aikens teaches the weight of dispersion should be four times that of the film-forming agent, well beyond the range from which Yamaya teaches away. Appeal Br. 21. The Examiner finds Aikens was cited only for the type of particles, but not for the amount thereof. Ans. 11. Appellant cites the MPEP for the proposition that “[a] prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention.” Reply Br. 7 (quoting MPEP 2141.02 VI) (alteration in original). We agree with the Examiner’s finding that, Yamaya teaches a transparent conductive layer containing alkoxysilane, and at least one kind Appeal 2020-005911 Application 12/523,276 10 of fine particles formed of crystalline metal oxide having an average primary particle diameter of 100 nm or less. Final Act. 8–9. Yamaya teaches a range of metal oxide compositions, including indium oxide and tin oxide, but does not specifically teach indium tin oxide (ITO). Yamaya, ¶ 196. The Examiner finds Aikens was cited only for the type of particles, i.e., ITO, but not for the amount thereof. Ans. 11. Appellant (Appeal Br. 20) and the Examiner (Final Act. 9) agree that Yamaya discloses a layer comprising particles at 0.1 to 100% by weight of the organosilicon compound. See Yamaya, ¶ 197. The particle weight range disclosed by Yamaya, i.e., 0.1 to 100 parts by weight of organosilicon, substantially overlaps the claimed range, i.e., 0.1 to 400 parts by weight of organosilicon. Thus, we agree with the Examine that the claimed limitations are taught. In view of the foregoing, we sustain the rejection of Claims 1, 3–6, 14–18, and 24–28 over Ito, Yamaya, and Aikens. GROUND FIVE: CLAIMS 1, 3–6, 14–18, 24, AND 28: OBVIOUSNESS OVER HARA, MIYASHITA, AND AIKENS. The Examiner applies Miyashita, as discussed above. Final Act. 12. In view of the foregoing, we decline to sustain the rejection of Claims 1, 3–6, 14–18, 24, and 28 over Hara, Miyashita, and Aikens. CLAIMS 8–11 AND 13: GROUND SIX: OBVIOUSNESS OVER HARA, MIYASHITA, AIKENS, AND MINAMINO. The Examiner applies Miyashita, as discussed above. Final Act. 15. In view of the foregoing, we decline to sustain the rejection of Claims 8–11 and 13 over Hara, Miyashita, Aikens, and Minamino. GROUND SEVEN: CLAIMS 1, 3–6, 14–18, AND 24–28: Appeal 2020-005911 Application 12/523,276 11 OBVIOUSNESS OVER HARA, YAMAYA, AND AIKENS. The Examiner applies Yamaya and Aikens, as discussed above. Final Act. 17–18. For the reasons discussed above, we sustain the rejection of Claims 1, 3–6, 14–18, and 24–28. DECISION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–6, 8– 11, 13–18, 24–29 112 Written Description 1, 3–6, 8– 11, 13–18, 24–29 1, 3–6, 14– 18, 24, 28 103 Ito, Miyashita, Aikens 1, 3–6, 14–18, 24, 28 8–11, 13 103 Ito, Miyashita, Aikens, Minamino 8–11, 13 1, 3–6, 14– 18, 24–28 103 Ito, Yamaya, Aikens 1, 3–6, 14– 18, 24, 28 1, 3–6, 14– 18, 24, 28 103 Hara, Miyashita, Aikens 1, 3–6, 14–18, 24, 28 8–11, 13 103 Hara, Miyashita, Aikens, Minamino 8–11, 13 1, 3–6, 14– 18, 24–28 103 Hara, Yamaya, Aikens 1, 3–6, 14– 18, 24–28 Overall Outcome 1, 3–6, 8– 11, 13–18, 24–28 8–11, 13, 29 AFFIRMED IN PART Copy with citationCopy as parenthetical citation