KIM, TaeHa et al.

Patent Trials and Appeals Board

Sep 30, 2019

14686235 - (D) (P.T.A.B. Sep. 30, 2019)

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.
14/686,235 04/14/2015 TaeHa KIM 5706-0333PUS1 8726
2292 7590 09/30/2019
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
DUCHENEAUX, FRANK D
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAEHA KIM, HYUNGSUK LEE, HYEJUNG LEE,
SEUNGGI KIM, and SEUNGHYUN CHO

Appeal 2019-000623
Application 14/686,235
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LILAN REN, and
MICHAEL G. MCMANUS, Administrative Patent Judges.

MICHAEL G. McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1, 14, 17, 25, and 26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as LG
Display Co., Ltd. Appeal Br. 1.
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BACKGROUND

The present application generally relates to a protective film that may
be attached to the cover plate of a display module. Spec. ¶ 2. The protective
film is intended to prevent damage to the display module during
manufacture. Id. ¶¶ 3–4. The Application indicates that the subject
protective film embodies an improvement in at least one of “peel-off static,
hardness, reflectance and surface roughness.” Id. ¶ 10.
The Specification teaches that the protective film includes an anti-
static agent and “the anti-static agent can have a coordinate covalent bonding
of polyelectrolyte and fluorine-based conductive functional group so as to
obtain the peel-off static property required in the process of attaching the
protecting film to the cover plate.” Id. ¶ 11.
The Specification teaches that the “polyelectrolyte may include
[e]thylene glycol (C2H4(OH)2) or [e]thylene [o]xide (C2H4O).” Id. ¶ 68.
The Specification further teaches that the “conductive functional group of
fluorine-based ion liquid type may be formed of fluorine-based metallic salts
(ex, LiBF4).” Id. ¶ 69.
Claim 14 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:
14. A protecting film comprising:
an anti-static layer on one surface of a base layer; and
an adhesive layer on the other surface of the base layer,
wherein the adhesive layer comprises an anti-static
agent that comprises a polyelectrolyte and a fluorine-based
conductive functional group that are chemically bonded by
coordinate covalent bonding so as to obtain the peel-off static
property required in the process of attaching the protective film
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to a cover plate and reduce a problem of elution of the anti-
static agent toward the surface of the adhesive layer.

Appeal Br. (Claims App. 1) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections2:
1. Claims 14 and 17 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Kataoka et al. (US 2012/0202055 A1, published
Aug. 9, 2012) (“Kataoka”). Final Act. (Jan. 26, 2018) 6–7.
2. Claims 1, 25, and 26 are rejected under 35 U.S.C. § 103 as
unpatentable over Kataoka in view of Sugino et al. (US
2008/0158676 A1, published July 3, 2008) (“Sugino”). Id. at
9–11.
DISCUSSION
Rejection 1. The Examiner rejects claims 14 and 17 as anticipated by
Kataoka. Id. at 6–7. In support of this rejection, the Examiner finds that
Kataoka teaches a pressure sensitive adhesive (PSA) sheet including a
substrate layer having an antistatic layer on one side and an adhesive layer
on the other side. Id. at 6. The Examiner further finds that the adhesive
layer of Kataoka includes an antistatic agent which may be LiBF4. Id. The
Examiner additionally finds that Kataoka teaches that the adhesive layer
may contain “compounds having ethylene glycol and/or ethylene oxide

2 The Final Action included certain additional rejections. These rejections
were mooted by Appellant’s cancellation of claims 16, 19, 20, and 24. See
Amendment under 37 C.F.R. § 1.116, dated March 26, 2018, entered April
11, 2018.
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moieties (para[s.] 0127-0133), which is identical to the presently disclosed
compounds for the presently claimed polyelectrolyte.” Id. The Examiner
determines that “it is clear that the PSA would inherently provide that the
polyelectrolyte and the fluorine-based conductive functional group are
coordinate covalently bonded to each other.” Id. at 6–7. The Examiner
further determines that, “given that the reference teaches that the PSA layer
contains the presently claimed/disclosed compounds that experience the
recited coordinate-covalent bonding, it is reasonable to conclude that
disclosed compounds of Kataoka would interact identically.” Id. at 24.
The Examiner additionally finds that “Kataoka discusses that the
inclusion of the (poly)alkylene oxide compound may inhibit the bleeding of
the antistatic component, which is a benefit analogous to the elution property
presently claimed/disclosed.” Id. at 23 (citing Kataoka ¶ 119).
In the Answer, the Examiner determines that LiBF4 is specifically
listed as “one of the ten preferred lithium salts.” Answer 10 (citing
Kataoka ¶ 101) (emphasis in original). The Examiner further finds that
Kataoka specifically teaches use of the two exemplary polyelectrolytes listed
in the Specification. Id. In this regard, the Examiner relies, in part, upon the
following portion of Kataoka:
In a preferable aspect, the (poly)alkylene oxide
compound is a compound that has a (poly)ethylene oxide chain
in at least a portion thereof. Mixing of this compound
((poly)ethylene oxide chain-containing compound) improves
compatibility between the base polymer and the antistatic
component, and allows the obtaining of a PSA composition
having a low degree of pollution in which bleeding to the
adherend is preferably inhibited.

Kataoka ¶ 131 (emphasis added).
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In regard to the Examiner’s finding that Kataoka inherently teaches
that the LiBF4 and (poly)ethylene oxide containing (poly)alkylene oxide
would have formed a coordinate covalent bond (Final Act. 6–7; Answer 4),
the Examiner determines as follows:
given that Kataoka conspicuously teaches a PSA composition
that comprises antistatic compound(s) and (poly)electrolyte
compound(s) that are identical to those presently disclosed for
the presently claimed compounds that undergo coordinate
covalent bonding, it is the presence of these compounds in the
same composition that provides the inherent “reason or
rationale” or “technical reasoning”, and not some “logical
leap”, for said compounds with their “own unique functional
properties” to combine with each to form “into one new
chemical compound with its own unique functional properties.”

Answer 11.
Appellant argues that one of ordinary skill in the art would not have
been led to the claimed invention. Appeal Br. 5–6. Appellant argues that
Kataoka discloses “thousands of possible compounds that could be included
in the pressure-sensitive adhesive layer (PSA).” Id. at 5. Appellant further
argues that Kataoka lacks any teaching to “chemically bond these particular
compounds together by coordinate covalent bonding.” Id. Appellant cites to
precedent requiring that a theory of inherency must be supported by facts or
reasoning sufficient to shown that the allegedly inherent characteristic
necessarily flows from the prior art. Id. at 6. Appellant argues that “there
are no facts or technical reasoning that supports the determination that the
inherent chemical structure necessarily flows from the teachings of
Kataoka.” Id.
We are not persuaded of error in the Examiner’s rejection. Federal
Circuit law provides that specific enumeration of a claim element may be a
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sufficient teaching for purposes of anticipation. The Court has “reject[ed]
the notion that [an] ingredient[] cannot anticipate because it appears without
special emphasis in a longer list.” Perricone v. Medicis Pharm. Corp., 432
F.3d 1368, 1376 (Fed. Cir. 2005); see also Merck & Co. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [reference] discloses a
multitude of effective combinations does not render any particular
formulation less obvious.”).
Here, Kataoka teaches a PSA layer that “contains an acrylic polymer
as a base polymer and an ionic compound as an antistatic component.”
Kataoka ¶ 67. Kataoka further teaches that “[t]ypically, the PSA layer
contains at least one of an ionic liquid and an alkaline metal salt as the ionic
compound.” Id. In the portion of Kataoka concerning alkaline metal salts,
the reference teaches that “[t]ypical examples of the alkaline metal salt
include lithium salts, sodium salts and potassium salts” and that
“[p]referable specific examples of lithium salts include . . . LiBF4.” Id. ¶
101.
Kataoka also teaches that “[i]n a preferable aspect of the technology
disclosed herein, the PSA layer contains a (poly)alkylene oxide chain.” Id. ¶
119. Kataoka further teaches that “[i]n a preferable aspect, the
(poly)alkylene oxide compound is a compound that has a (poly)ethylene
oxide chain in at least a portion thereof.” Id. ¶ 131.
Accordingly, Kataoka includes a clear teaching to use LiBF4 as an
antistatic agent thereby teaching the “fluorine-based conductive functional
group” of claim 1. Kataoka further includes a clear teaching to use a
compound that has a (poly)ethylene oxide chain.
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The Examiner sets forth a rational basis why the LiBF4 and
(poly)ethylene oxide would be “chemically bonded by coordinate covalent
bonding” as recited by claim 1. Specifically, the Examiner reasons that
Kataoka teaches to use the same compounds as taught by the Specification.
Final Act. 24. As a consequence, “it is reasonable to conclude that [the]
disclosed compounds of Kataoka would interact identically.” Id. The
Examiner bolsters this reasoning by pointing out that the Specification
teaches that “when the anti-static agent is formed by the coordinate covalent
bonding of the ion type conductive functional group to the polyelectrolyte, it
is possible to minimize elution of the anti-static agent toward the surface of
the adhesive layer.” Spec. ¶ 70. This is similar to Kataoka’s teaching that it
is possible that “bleeding of the antistatic component is inhibited by the
presence of a (poly)alkylene oxide chain.” Kataoka ¶ 119. We discern no
error in the foregoing.
Accordingly, Appellant has not shown reversible error in the rejection
of claims 14 and 17 as anticipated by Kataoka.

Rejection 2. The Examiner rejects claims 1, 25, and 26 as obvious
over Kataoka in view of Sugino. Final Act. 9–11.
Appellant argues that such rejection is in error for essentially the same
reasons advanced in regard to its appeal of the rejection of claims 14 and 17.
Appeal Br. 8–9. As we have not found such arguments to be persuasive, we
determine that Appellant has not shown error in the rejection of claims 1, 25,
and 26 on this basis.
Appellant additionally argues that it has demonstrated unexpected
results relative to the prior art. Id. at 9. Appellant relies upon a document
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titled “Experimental Document 1” as demonstrating “that an EAS anti-static
additive, which is a fluorine-based ion liquid having a coordinate covalent
bond, exhibited a lower resistance and better anti-static effect as compared
to an HAS anti-static additive, which is a normal ion liquid without a
coordinate covalent bond.” Id. (underscoring in original). Appellant further
asserts that “[s]ince the EAS anti-static agent represents the closest
embodiment of Kataoka, Appellant has demonstrated unexpected results
over the closest prior art of record.”
The Examiner determined that this argument is not persuasive because
Appellant’s showing is not commensurate with the scope of the claims.
Answer 19–20. The Examiner further determined that such argument is not
relevant to an anticipation analysis. Id. at 20.
Rebuttal evidence may include evidence of “secondary
considerations,” such as “commercial success, long felt but unsolved needs,
[and] failure of others.” Graham v. John Deere Co., 383 U.S. 1, 694 (1966).
Rebuttal evidence may also include evidence that the claimed invention
yields unexpectedly improved properties not present in the prior art. In re
Fenn, 639 F.2d 762, 765 (CCPA 1981) (“Although it is well settled that
comparative test data showing an unexpected result will rebut a prima facie
case of obviousness, the comparative testing must be between the claimed
invention and the closest prior art.”).
The burden of establishing unexpected results rests on the Appellant.
Appellant may meet this burden by establishing that the difference between
the claimed invention and the closest prior art was unexpected. See In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). A showing of unexpected
results supported by factual evidence must be reasonably commensurate in
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scope with the degree of protection sought by the claims on appeal. In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980); Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 965
(Fed. Cir. 2014) (“It is the established rule that objective evidence of non-
obviousness must be commensurate in scope with the claims which the
evidence is offered to support.”) (citations omitted).
Here, as best understood, Appellant argues that testing of the
resistance and antistatic properties of a single compound is sufficient to
demonstrate that any compound falling within the scope of the term “a
polyelectrolyte and a fluorine-based conductive functional group that are
chemically bonded by coordinate covalent bonding” would exhibit superior
properties relative to the prior art. Given the breadth of the claim term at
issue, Appellant has failed to adduce factual evidence reasonably
commensurate in scope with the degree of protection sought by the claims.
Accordingly, Appellant has not shown reversible error in the rejection
of claims 1, 25, and 26 as obvious over Kataoka in view of Sugino.

CONCLUSION

In view of the findings and analysis set forth by the Examiner in the
Final Action and the Answer as well as the reasoning set forth above, the
rejections of claims 1, 14, 17, 25, and 26 are affirmed.

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In summary:
Claims
Rejected
Basis Affirmed Reversed
14 and 17 § 102(a)(1), Kataoka 14 and 17
1, 25, and 26 § 103, Kataoka and
Sugino
1, 25, and 26
Overall Outcome 1, 14, 17, 25,
and 26

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