MITSUBISHI GAS CHEMICAL COMPANY, INC.

Patent Trials and Appeals Board

Dec 23, 2021

2022000907 (P.T.A.B. Dec. 23, 2021)

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.
16/073,975 07/30/2018 Ken TAGUWA P54466 7309
7055 7590 12/23/2021
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
STRAH, ELI D
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
12/23/2021 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEN TAGUWA and NOBUYUKI KOIKE
____________

Appeal 2022-000907
Application 16/073,975
Technology Center 1700
____________

Before KAREN M. HASTINGS, JEFFREY B. ROBERSTON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 3–6, and 9–13. See Final Act. 1. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies Mitsubishi Gas Chemical Company, Inc. as the real party
in interest (Appeal Br. 3).
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CLAIMED SUBJECT MATTER
Claim 1 illustrates the subject matter on appeal (emphasis added to
highlight key disputed limitations):
1. A biaxially stretched multilayer thermoplastic resin film
comprising a layer containing a thermoplastic resin (B) on at least one
surface of a layer containing a thermoplastic resin (A), wherein
thermoplastic resin (A) comprises methyl methacrylate, and the
thermoplastic resin (B) comprises a (meth)acrylic acid ester structural
unit (a) represented by formula (1) below:

wherein R1 represents a hydrogen atom or a methyl group, and R2
represents a C1−C16 hydrocarbon group, and
an aliphatic vinyl structural unit (b) represented by formula (2)
below:

wherein R3 represents a hydrogen atom or a methyl group, and R4
represents a cyclohexyl group or a cyclohexyl group having a C1−C4
hydrocarbon substituent,
said biaxially stretched multilayer thermoplastic resin film having:
an intrinsic birefringence of each of the thermoplastic resin (A) and
the thermoplastic resin (B) of −0.005 to 0.005;
a glass transition temperature of the thermoplastic resin (B) of
120°C to 145°C;
a saturated water absorption rate of the thermoplastic resin (B) of
less than 1.1 wt%;
an in-plane retardation Re of 0.0 to 3.0 nm measured at a
wavelength of 590 nm and a thickness direction retardation Rth of
−10.0 to 10.0 nm measured at a wavelength of 590 nm; and
a magnification of stretching in at least one stretching direction is
1.1 to 3.0 times.
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REFERENCES
The Examiner relied upon the following prior art:
Name Reference Date
Saegusa et al. US 2008/0213606 A1 Sept. 4, 2008
Sato et al. US 2013/0095337 A1 Apr. 18, 2013
Kitayama et al. WO 2014/162369 A1 Sept. 10, 2014
Kitayama et al.
(Translation for
Kitayama WO above)
US 2016/0053104 Al Feb. 25, 2016
REJECTIONS ON APPEAL
Claims 1, 3–6, and 9–13 are rejected under 35 U.S.C. § 103 as
unpatentable over Sato in view of Saegusa and Kitayama (Final Act. 8).
OPINION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions as set forth in the Appeal Brief and Reply
Brief, we determine that Appellant has not identified reversible error in the
Examiner’s rejections (See generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejection for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
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thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant’s main argument focuses on the belief that one of ordinary
skill knows that stretching polymeric films may degrade their optical
properties such that one would not have predicted that biaxially stretching
the polymeric film of Sato/Saegusa would have yielded desirable properties
for an optical film (Appeal Br. 15–19; Reply Br. 2–5). Appellant also
contends that the Examiner improperly found the proffered evidence of an
article from the Journal of The Institute of Textiles unpersuasive2 (Reply Br.
4).
Appellant’s arguments are not persuasive of reversible error as they
fail to consider the breadth of the claim, the applied prior art as a whole, and
the inferences that one of ordinary skill would have made, as aptly explained
by the Examiner (Ans. 11–16).
There is no dispute that the materials used in Sato’s/Saegusa’s3
multilayer optical film are the same as used and claimed in the present
application (methyl methacrylate in resin (A) and formulas (1) and (2) in
resin (B)). Accordingly, one would have reasonably expected them to have
the same/similar properties as claimed. We agree with the Examiner that one
of ordinary skill would have reasonably been able to formulate an

2 The Examiner found the article unpersuasive because the article admittedly
only tested PMMA homopolymers, and did not test any combinations with
other copolymers which are permitted in claim 1 (e.g., Ans. 17–18).
3 Saegusa is merely relied upon as evidence that the materials of Sato (same
assignee of Mitsubishi as the present appeal) for resin (B) as recited in claim
1 would have a water absorption rate within the claimed range (e.g., Final
Act. 10). Cf. In re Papesch, 315 F.2d 381 (CCPA 1963) (a compound and its
properties are inseparable).
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appropriate film including the claimed materials for biaxially stretching.
Neither Kitayama nor any other publication relied upon teaches away from
this. To the contrary, Appellant admits that Kitayama teaches stretching
methods such that a film will have good optical quality upon biaxial
stretching (Appeal Br. 16 (achieved by “at least one layer . . . opposite in
sign of a photoelastic constant . . . of the different resin.”); see also Final
Act. 12; Ans. 13).
It is well established that a prior art reference must be considered in
its entirety, i.e., as a whole, when determining if it would lead one of
ordinary skill in the art away from the claimed invention. W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983); In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (whether a reference teaches
away from a claimed invention is a question of fact). There is no doubt that
one of ordinary skill would have readily inferred from the overall teachings
of the applied prior art that a biaxially stretched thermoplastic resin laminate
film may be useful as an optical article/film. See e.g., Final Act. 12, citing
Kitayama ¶¶ 21, 22,126, 127, 325–330; also Final Act. 11, citing Kitayama
¶¶ 84, 113, 114, 305, 324–348.
Appellant’s argument that one would have known of disadvantages
from stretching PMMA polymers on optical properties (generally Appeal
Br.) are not persuasive of reversible error. Notably, claim 1 is open ended
and permits the inclusion of other copolymers. Claim 1 does not even
require any specific minimum amount of the claimed materials (A) and (B)
respectively for each layer. Thus, contrary to Appellant’s position, one of
ordinary skill in the art would have readily appreciated that one may
biaxially stretch a film including the claimed materials with a reasonable
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expectation of success (e.g., Ans. 13−15). As we “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ,” we find a person of ordinary skill in the art would have, within
their level of skill, modified Sato as needed based on the combined teachings
of the applied prior art for reasons articulated by the Examiner (see
generally Ans.). KSR Int’l, 550 U.S. at 418; see also id. at 421 (“A person
of ordinary skill is also a person of ordinary creativity, not an automaton”);
Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the
Supreme Court, the PTO must take account of “the inferences and creative
steps,” as well as routine steps, that an ordinary artisan would employ)).
Appellant has not shown reversible error in the Examiner’s
determination that one of ordinary skill in the art, using no more than
ordinary creativity, would have used the materials of Sato/Saegusa in a
biaxially stretched film (in combination with other copolymers as needed),
and would have reasonably expected to obtain the properties claimed within
the claimed ranges, based on the known desirable overlapping/encompassing
ranges of Kitayama for these properties for a biaxially stretched film; and
because one of ordinary skill in the art would have appreciated that they
amounts and types of polymers were known result effective variables to
obtain the properties desired and exemplified in Kitayama for a biaxially
stretched polymer laminate optical film. One of ordinary skill would have
readily inferred and appreciated from the applied prior art as a whole that
using the techniques of Kitayama for the polymers/resin film exemplified in
Sato/Saegusa would have been within the skill and creativity of one of
ordinary skill in the art.
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Furthermore, it has been held that when, as is the case here, the
Examiner establishes a reasonable basis that the products or processes
claimed by the applicant and disclosed or suggested by the prior art appear
to be the same or substantially similar, the burden is properly shifted to the
applicant to show that they are not. See In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254–56 (CCPA 1977). Cf. In
re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“In particular, the
statement [in In re Wright] that a prima facie obviousness rejection is not
supported if no reference shows or suggests the newly-discovered properties
and results of a claimed structure is not the law.” (overruling-in-part In re
Wright, 848 F.2d 1216 (Fed. Cir. 1988). Appellant has not met this burden,
especially in light of Kitayama’s teachings.
In view of the above discussion, Appellant has not explained
sufficiently why the claimed subject matter is any more than the predictable
use of a known stretching technique, inclusive with adjusting copolymer
materials and amounts as necessary (exemplified in Kitayama) with known
materials (exemplified in Sato/Saegusa) to form a biaxially stretched resin
film useful as an optical film. Moreover, Appellant does not rely upon any
objective evidence of criticality or unexpected results in the Appeal Brief or
Reply Brief.
Appellant does not present arguments in support of any of the
dependent claims. Accordingly, we sustain the Examiner’s rejection on
appeal.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1, 3–6,
9–13 103
Sato, Saegusa,
Kitayama
1, 3–6,
9–13
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED