LG CHEM, LTD.

Patent Trials and Appeals Board

Aug 27, 2020

2019005803 (P.T.A.B. Aug. 27, 2020)

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.
14/442,301 05/12/2015 Sang Uk RYU 29137.01806.US00 9713
30827 7590 08/27/2020
Dentons US LLP
1900 K. Street, N.W.
Washington, DC 20006
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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):
mlaip@dentons.com
mlapto@mckennalong.com
paul.fugitt@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANG UK RYU, DONG RYUL KIM, and JONG MIN MOON
Appeal 2019-005803
Application 14/442,301
Technology Center 1700
Before JOSEPH L. DIXON, DONNA M. PRAISS, and BRIAN D. RANGE,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 6–10, and 15. See Final Act. 1.
Claims 2, 3, 5, and 11 are canceled. Claims 12–14 and 16 are withdrawn
from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2018). Appellant identifies the real party in interest as LG CHEM,
LTD. Appeal Br. 2.
Appeal 2019-005803
Application 14/442,301

2
CLAIMED SUBJECT MATTER
The claims are directed to a gas barrier film with protective coating
layer containing inorganic particles. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A gas barrier film consisting of:

a substrate layer;

a barrier layer;

an intermediate layer between the barrier layer and the
substrate layer, the intermediate layer having a thickness of
0.3 μm to 2 μm and comprising a silica component comprising a
hydrolysis reaction product of tetraethyl orthosilicate or
tetraethoxy orthosilicate and a silane containing a substituent
selected from the group consisting of vinyl, phenyl, gamma-
glycidoxypropyl, gamma-methacryloxypropyl and methyl; and

a cured protective layer formed on the barrier layer so as
to be in contact with the barrier layer,

wherein the cured protective layer is a curing reaction
product of a coating composition that contains spherical
nanoparticles, an initiator and a binder, wherein:

the nanoparticles are present in an amount of
40 wt% to 70 wt% based on the total weight of the
nanoparticles and the binder;

the nanoparticles have an average diameter of 10 to
20 nm; and

the binder is selected from the group consisting of
1,6-hexanediol diacrylate, neopentyl glycol diacrylate,
diethylene glycol diacrylate, tripropylene glycol
diacrylate, dicyclopentanyl diacrylate, butylene glycol
diacrylate, pentaerythritol diacrylate, trimethylolpropane
Appeal 2019-005803
Application 14/442,301

3
triacrylate, propionoxide modified trimethylolpropane
triacrylate, pentaerythritol triacrylate,
ditrimethylolpropane tetraacrylate, dipentaerythritol
hexaacrylate, caprolactone modified dipentaerythritol
hexaacrylate, tetramethylolmethane tetraacrylate,
polyester acrylate, polyether acrylate, urethane acrylate,
epoxy acrylate, polyol acrylate and a combination thereof.
REFERENCES
The prior art relied upon by the Examiner is:
Rotenberg et al US 4,229,228 Oct. 21, 1980
Vanheusden et al. US 2006/0189113 A1 Aug. 24, 2006
Adachi US 2014/0154504 A1 June 5, 2014
Hara et al. US 2015/0285972 A1 Oct. 8, 2015

REJECTION2
Claims 1, 4, 6–10, and 15 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Adachi in view of Rotenberg,
Vanheusden, and Hara. Final Act. 6–7.
OPINION
35 U.S.C. § 103(a)
Claim 1
Appellant contends that the combination of the teachings of Adachi,
Rotenberg, Vanheusden, and Hara does not result in the instantly claimed
gas barrier films. Appeal Br. 22. Appellant further contends that the Adachi
reference does not teach any gas barrier film in which a cured protective

2 The Examiner withdrew the obviousness rejections based on the
combination of the Lewis, Rotenberg, Vanheusden, Mikuni, and Lee
references. Ans. 6; see also Reply Br. 3.
Appeal 2019-005803
Application 14/442,301

4
layer is “formed on the barrier layer so as to be in contact with the barrier
layer” as instantly claimed. Appeal Br. 23.
The Examiner bases the rejection upon a broad interpretation of the
claimed term “cured protective layer formed on the barrier layer so as to be
in contact with the barrier layer.” (Emphasis added). Ans. 7–8. The
Examiner finds that Adachi’s paragraph 150 explicitly discloses a gas barrier
layer between the outermost layer, i.e. cured protective layer, and the silver
layer. Ans. 7. The Examiner further finds that it is clear that the cured
protective layer is in contact with the gas barrier layer, as presently claimed.
The Examiner further finds the Appellant is taking a narrow construction of
the present claim to require direct contact
between the cured protective layer and the barrier layer where the broadest
reasonable interpretation of the term “contact” encompasses both direct
contact and indirect contact. Ans. 7.
The Examiner concludes the lack of guidance in both the present
claims and originally filed Specification concerning the definition of the
term “contact” is a reasonable basis to interpret the term “contact” to include
indirect contact because nothing in the present claims requires direct contact
between the cured protective layer and gas barrier layer. Ans. 7. The
Examiner finds Adachi’s paragraph 150 teaches the functional film
comprises an order of layers as follows: outermost layer, gas barrier layer,
and silver layer, it is clear that the outermost layer, i.e. cured protective
layer, is in contact (in at least indirect contact) with the gas barrier layer
since all recited layers are present in the functional film, and thus meets the
presently claimed limitation. Id. at 7–8.
Appeal 2019-005803
Application 14/442,301

5
We agree with Appellant that the Examiner’s claim interpretation is
unreasonable in light of the plain language of independent claim 1 and the
disclosed embodiment in Figure 1, which evidences “a gas barrier film 10
according to one embodiment of the present invention sequentially includes
a substrate layer 14, an intermediate layer 13, and a barrier layer 12. Also, a
protective layer 11 is attached on the barrier layer 12 to further improve
durability and a gas barrier property.” Spec. 18: 3–8; Appeal Br. 7; Reply
Br. 4–6. Because the Examiner’s “indirect contact” claim interpretation is
unreasonable, we determine the language of claim 1 to require the “cured
protective layer formed on the barrier layer so as to be in contact with the
barrier layer,” thereby a direct contact between the protective layer and the
barrier layer.
Additionally, Appellant generally argues that nothing in the
Rotenberg, Vanheusden or Hara references cures these defects in the Adachi
reference. Appeal Br. 23–24. Appellant further argues that the Examiner’s
combination is based upon “hindsight” reconstruction and the ordinarily
skilled artisan would not and could not have been led by the teachings of
Rotenberg, which is directed to solving the problem of abrasion resistance of
a plastic surface, to include an intermediate layer as instantly claimed
between a substrate and a barrier layer. Reply Br. 8. Appellant contends
there is no reasonable basis on which one of ordinary skill in the art would
have included the silica component of Rotenberg as the intermediate layer of
Adachi in order to impart abrasion resistance, since Rotenberg teaches
including its coating on the outermost surface in order to impart abrasion
resistance. Reply Br. 8–9. We agree with Appellant that the Examiner’s
Appeal 2019-005803
Application 14/442,301

6
proffered combination is based upon hindsight reconstruction of independent
claim 1.
Because the Examiner has not shown a teaching in the prior art
applied or proffered a suggestion why it would have been obvious to one of
ordinary skill in the art at the time of the invention based upon the prior art
applied to provide a “cured protective layer formed on the barrier layer so as
to be in contact with the barrier layer,” i.e. a direct contact between the
protective layer and barrier layer, we cannot sustain the Examiner
obviousness rejection of illustrated independent claim 1.

Dependent claims 4, 6–10, and 15
Appellant sets forth separate arguments for patentability and these
arguments generally rely upon the arguments advanced with respect to
independent claim 1. Appeal Br. 24–27. We cannot sustain the Examiner’s
obviousness rejection of claims 4, 6–10, and 15 for the same reasoning.
CONCLUSION
The Examiner’s obviousness rejection is reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1, 4, 6–10,
15 103(a)
Adachi, Rotenberg,
Vanheusden, Hara
1, 4, 6–10,
15

REVERSED