MUGURUMA, Shinichi

Patent Trials and Appeals Board

Aug 20, 2019

14854105 - (D) (P.T.A.B. Aug. 20, 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.
14/854,105 09/15/2015 Shinichi MUGURUMA KURA0141PUS 5107
22045 7590 08/20/2019
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
KHATRI, PRASHANT J
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHINICHI MUGURUMA
____________

Appeal 2019-000849
Application 14/854,105
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, MICHAEL G. McMANUS, and
JANE E. INGLESE, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–18. (Appeal Br. 1.) We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

1 This Decision includes citations to the following documents:
Specification filed September 15, 2015, citations to Specification published
as US 2016/0101595 A1 on April 14, 2016 (“Spec.”); Final Office Action
mailed February 16, 2018 (“Final Act.”); Appeal Brief filed August 9, 2018
(“Appeal Br.”); Examiner’s Answer mailed September 27, 2018 (“Ans.”);
and Reply Brief filed November 13, 2018 (“Reply Br.”).
2 Appellant/Applicant is Kuraray Europe GmbH, which is also identified in
the Appeal Brief as the real party in interest. (Appeal Br. 1.)
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THE INVENTION
Appellant states the invention relates to a plasticizer-containing film
composed of at least two individual films based on plasticizer-containing
polyvinyl acetals, each individual film including a photochromic compound
and each film having a different glass transition temperature (Tg). (Spec.
¶ 3.)
Claim 1 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
1. A photochromic interlayer film for laminated glass, comprising
at least two individual films of plasticizer-containing polyvinyl
acetal, each of said at least two individual films comprising at
least one photochromic compound, wherein the at least two
individual films have glass transition temperatures which differ
by at least by 5 K.
(Appeal Br. (Claims Appendix) 1.)

REJECTIONS
1. The Examiner rejected claims 1–18 under 35 U.S.C. § 103 as obvious
over Steuer et al. (US 2010/0028642 A1; published February 4, 2010,
hereinafter “Steuer”) and Kyoko Kojima et al. (Photochromism of
Spirooxazine in Polymer Matrices, 8 JOURNAL OF PHOTOPOLYMER
SCIENCE AND TECHNOLOGY 47–54 (1995), hereinafter “Kojima”).
2. The Examiner rejected claims 1–18 under 35 U.S.C. § 103 as obvious
over Steuer and Baltzer (US 3,508,810; issued April 28, 1970).
3. The Examiner rejected claims 1–18 under 35 U.S.C. § 103 as obvious
over Steuer and Rickwood et al. (US 4,913,544, issued April 3, 1990,
hereinafter “Rickwood”).
(Final Act. 2–5; Ans. 3–6.)
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Appellant does not argue any particular claim on appeal. (See Appeal
Br. 1–17.) Accordingly, we select independent claim 1 as representative for
disposition of this appeal. 37 C.F.R. § 41.37(c)(1)(iv).
Rejection over Steuer and Rickwood
ISSUE
The Examiner found Steuer discloses a multilayered interlayer film
having first and second layers each including polyvinyl acetal. (Final Act.
4–5.) Regarding the Tg difference recited in the claims, the Examiner found
“since the films have the same PVOH group contents and plasticizer
difference, the Tg would differ by at least 5 Kelvin.” (Id. at 5.) The
Examiner found that Steuer, although disclosing the film can include
additives, does not disclose photochromic compounds. (Id.) The Examiner
found Rickwood discloses a plastic organic photochromic article obtained by
adding spiro-oxazine compounds to polymer matrices such as PVB. (Id.)
The Examiner determined: “Given that Rickwood establishes the suitability
of spiropyrans in PVB, there is a reasonable expectation of success and
further, one of ordinary skill in the art would have selected spiropyrans as a
photochromic compound for providing each polyvinyl acetal (i.e. PVB)
layer of Steuer, a photochromic effect for applications that require
photochromic effects. See MPEP 2144.07.” (Id.)
Appellant argues Steuer is non-analogous art because it is in a
different field of endeavor and the problem addressed by Steuer is different
than the problem addressed by Appellant. (Appeal Br. 3–4.) Appellant
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argues none of the references discloses any dependence on bleaching3 time,
and as such, the references cannot render the claims obvious. (Id. at 5–7.)
Appellant argues that the claims recite polyvinyl acetal films with a different
Tg whereas Steuer only discloses Tg of polyvinyl acetal polymers, and
further Steuer does not disclose that the Tg of at least two films must differ
by at least 5 degrees C. (Id. at 8–13; Steuer ¶ 34.) Appellant argues one of
ordinary skill in the art would not equate “dyes” as disclosed in Steuer with
“‘photochromic substances.’” (Id. at 15.) Although Appellant
acknowledges that Rickwood discloses photochromic substances may be
added to polyvinyl acetal films, Appellant argues there is no discussion in
Rickwood that there is any temperature dependence on the bleaching rate of
the films or solving the temperature dependence problem, and as such, there
is no predictability of success. (Id. at 16–17.)
Accordingly, the dispositive issues with respect to this rejection are:
Has Appellant identified a reversible error in the Examiner’s
determination that Steuer is analogous art?
Has Appellant identified a reversible error in the Examiner’s
determination that it would have been obvious to have produced a
photochromic interlayer film including at least two individual films of
plasticizer-containing polyvinyl acetal, each individual film including at
least one photochromic compound and having glass transition temperatures
that differ by at least 5 K in view of Steuer and Rickwood?

3 Photochromic compounds in interlayer films change color or “darkness”
depending on the intensity of sunlight radiation applied to the film. The
change of color from dark to transparent or lightly colored is termed
“bleaching.” (Spec. ¶ 7.)
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DISCUSSION
Analogous Art
We are not persuaded by Appellant’s argument that Steuer is non-
analogous art. In particular, we are not persuaded by Appellant’s
characterization of the field of endeavor.
Two criteria are relevant in determining whether prior art is
analogous: “(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still
is reasonably pertinent to the particular problem with which the
inventor is involved.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343,
1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed.
Cir. 1992)). Whether a reference in the prior art is “analogous” is a
fact question. In re Clay, 966 F.2d at 658.

Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010). The field
of endeavor can be correctly determined “by consulting the structure and
function of the claimed invention as perceived by one of ordinary skill in the
art” with “reference to explanations of the invention’s subject matter in the
patent application.” In re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004)
(affirming Board’s finding that prior art toothbrush was in same field of
endeavor as patentee’s hairbrush where Board concluded that “the structural
similarities between toothbrushes and small brushes for hair would have led
one of ordinary skill in the art working in the specific field of hairbrushes to
consider all similar brushes including toothbrushes”).
In the instant case, we agree with and adopt the Examiner’s
determination that “the field of endeavor is a plasticizer-containing film
suitable as an interlayer in a laminated glass.” (Ans. 7.) We do not
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subscribe to Appellant’s view that the field of endeavor is limited to
interlayers for laminated glass that are “photochromic.” (Appeal Br. 4;
Reply Br. 3.) Rather, in consulting the Specification, we find one of
ordinary skill in the art would have understood the “laminated glass” recited
in claim 1 is “laminated safety glass” used “as windshields or side windows
in the automotive sector and as safety glass in the construction sector.”
(Spec. ¶ 5; claim 18.) Similarly, Steuer discloses “laminated safety glass”
used “as windshields or side windows in the automotive sector and as safety
glass in the construction sector.” (Steuer ¶ 4, claim 15.)
In this regard, Appellant’s “paraphras[ing]” of In re Clay to argue the
situation here is similar thereto is inapt. (Reply Br. 3.) In Clay, the Federal
Circuit stated the prior art reference, Sydansk, operated at different
conditions and related to different parts of the petroleum industry than Clay.
Clay, 966 F.2d at 659. In contrast, the interlayer films recited in the present
claims have similar structure and are used in the same applications as the
interlayer films disclosed in Steuer as discussed above. Thus, we are not
persuaded by Appellant’s argument that Steuer is non-analogous art.

Obviousness
Regarding Appellant’s argument that none of the references disclose
any temperature dependence on bleaching time, and therefore there is no
predictability of success such that the prior art cannot render an invention
obvious (Appeal Br. 5, 16–17), we are not persuaded. As stated by the
Supreme Court in KSR, “[i]n determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective reach of the
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claim. If the claim extends to what is obvious, it is invalid under § 103.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Thus, whether the
prior art discloses a temperature dependence on bleaching time does not
mean the interlayer film recited in the claims would not have been obvious.
In the instant case, the Specification discloses that the selection of
interlayer films having glass transition temperatures that differ by at least
5 K provides the desired temperature independence. (Spec. ¶ 11.) The
Specification discloses also that difference in glass transition temperature
may be accomplished by a different plasticizer content of the individual
films as well as a different chemistry of the polyvinyl acetal in each
individual film. (Spec. ¶¶ 12, 13.)
As the Examiner found, Steuer discloses first and second polyvinyl
acetal layers, where the first layer includes a polyvinyl acetal that has a
portion of polyvinyl alcohol groups of 17–22% by weight and the second
layer includes a polyvinyl acetal that has a portion of polyvinyl alcohol
groups of less than 14% by weight. (Final Act. 4–5; Steuer ¶¶ 21, 69–81,
Tables 1–6.) The portion of polyvinyl alcohol groups in the polyvinyl acetal
of the first polyvinyl acetal layer disclosed in Steuer is the same as described
in the instant Specification and claimed for the first polyvinyl acetal layer.
(Spec. ¶ 24, claims 5–8.) Similarly, the portion of polyvinyl alcohol groups
in the polyvinyl acetal of the second polyvinyl acetal layer disclosed in
Steuer is the same as described in the instant Specification and claimed for
the second polyvinyl acetal layer. (Spec. ¶ 24, claims 3–4; Steuer ¶ 21.)
Steuer discloses also that polyvinyl acetate groups are present in 0.1 to
11 mol% with respect to the first layer and 5 to 8 mol% with respect to the
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second layer.4 (Steuer, Abs., ¶ 15.) The Specification describes the first
individual film contains a portion of polyvinyl acetate groups of 0.1 to 11
mol% and the second individual film contains a portion of polyvinyl acetate
groups of between 5 and 8 mol%, which are the same as disclosed in
Steuer.5 (Spec. ¶ 13.)
As found by the Examiner, Steuer discloses that the first and second
layers have a plasticizer difference of at least 5 wt%, which is the same
difference preferred for the plasticizer content between the two layers
disclosed in the Specification. (Final Act. 2; Steuer ¶ 23; Spec. ¶ 12.)
Moreover, Steuer discloses an interlayer film having a substantially
similar chemical composition to the Example film in Appellant’s
Specification. (Compare Steuer Example 6A ¶¶ 62, 68, Tables 1–5 with
Example 1, ¶¶ 60–63; Tables 1–2; Ans. 9, Table.) In this regard, we are not
persuaded by Appellant’s position that the Examiner’s position is
unsupported because the individual films have different plasticizer and
different plasticizer contents. (Reply Br. 13–14.) In our view, the
substantial similarity between the films is sufficient to support the
Examiner’s position as discussed above regardless of whether Steuer
discloses that the films contain photochromic substances.

4 In this regard, the Examiner’s statement that Steuer discloses a first layer
with polyvinyl alcohol groups of 0.1 to 11 mol% and a second layer with
polyvinyl alcohol groups of 5 to 8 mol% is harmless as the Examiner
correctly identifies the polyvinyl acetate content of each layer in the Answer.
(Final Act. 2; citing Steuer, Abs.; Ans. 9, Table.)
5 We observe that claims 9–11 recite the portion polyvinyl acetal groups of
the second individual film is 0.1 to 11 mol% and claims 13 and 14 recite the
portion polyvinyl acetal groups of the first individual film is between 5 and 8
mol%, which appear to be opposite to what is described in the Specification.
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“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(citing In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Ludtke, 441
F.2d 660, 664 (CCPA 1971).
“[T]he PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the
characteristics of his claimed product. . . . Whether the rejection
is based on ‘inherency’ under 35 U.S.C. s [sic] 102, on ‘prima
facie obviousness’ under 35 U.S.C. s [sic] 103, jointly or
alternatively, the burden of proof is the same . . . (footnote
omitted).”
In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting In re Best, 562 F.2d
1252, 1255 (CCPA 1977)).
Here, we are of the view that the Examiner has provided a sound basis
for the position that the individual films disclosed and preferred in Steuer
would have the Tg difference between the films recited in claim 1, based on
the similarity between the difference in plasticizer content and the chemistry
of the polyvinyl acetal of each film in Steuer and the claims on appeal. As
such, we are not persuaded by Appellant’s arguments that Steuer discloses
only the Tg of the polymers and does not require the Tg of each individual
film to differ by at least 5 K.
As to Appellant’s argument that the use of dyes in Steuer does not
equate to photochromic substances, we observe, as does the Examiner, that
Steuer discloses additives including “colorants” and not “dye[s]” as alleged
by Appellant. (Ans. 12–13; Steuer ¶ 31.) Moreover, Appellant’s argument
that one of ordinary skill in the art would not recognize photochromic
substances as dyes is belied by Appellant’s own Specification, which
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expressly discloses that “[t]he photochromic compound used in the present
invention may be an organic dye or an inorganic pigment.” (Spec. ¶ 22.)
We are not persuaded by Appellant’s argument that it would not have
been obvious to have added a photochromic compound to both films,
because Steuer discloses expressly that “all individual films comprise the
additives mentioned [including colorants] in largely the same
concentration.” (Steuer ¶¶ 31, 32.) In addition, Rickwood discloses
expressly that photochromic compounds are added as additives in
architectural windows and vehicle windows, the same applications disclosed
in Steuer. (Rickwood, col. 14, ll. 11–12; Steuer ¶ 4.)
As a result, we affirm the Examiner’s rejection of the claims as
obvious over Steuer and Rickwood.

Rejection over Steuer and Kojima
The Examiner made similar findings with respect to Steuer as
discussed above. (Final Act. 2.) The Examiner found Kojima discloses
spiro-oxazine compounds added to polymer matrices such as PVB, where
the spiro-oxazines have a quick response to light and good fatigue
resistance. (Id. at 3.) The Examiner set forth a similar rationale with respect
to the combination of Steuer and Kojima as discussed above for Steuer and
Rickwood. (Id.)
Appellant’s arguments with respect to Steuer have been addressed
above. Appellant argues additionally that Kojima does not disclose films
have different fading times at different temperatures, but rather discloses
differences in fading times with respect to non-polar matrices, and Kojima
would lead the skilled artisan away from using polyvinyl acetal polymers,
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which Kojima discloses need a long time to build up darkness and a long
time to bleach. (Appeal Br. 14–15.)
Although we agree with Appellant that Table 2 of Kojima shows
differences in fading times with respect to non-polar matrices (Kojima, 53),
we disagree with Appellant that this disclosure means that including
photochromic compounds as disclosed in Steuer would not have been
obvious. As discussed above, neither the particular motivation nor the
avowed purpose of the patentee controls, but rather, what matters is the
objective reach of the claim. KSR, 550 U.S. at 419.
We also disagree with Appellant that Kojima would direct the skilled
artisan away from the use of photochromic compounds with polyvinyl acetal
polymers.6 That is, although Appellant argues that Kojima discloses a long
time to build up darkness and a long time to bleach, as the Examiner points
out, none of the claims recite any specific range of fade time. (Ans. 12.) In
determining whether prior art references teach away from the claimed
combination, the nature of the teachings is highly relevant. In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). “A known or obvious composition does not
become patentable simply because it has been described as somewhat
inferior to some other product for the same use.” Id. As Appellant points
out, Kojima does not disclose the specifics of the polymers employed and
whether there is plasticizer included therein (Reply Br. 18), and as such we
are not persuaded that one of ordinary skill in the art would have been led

6 Appellant’s new evidence and argument associated therewith presented in
the Reply Brief (20–21) has not been considered as they have not been
timely presented. See 37 C.F.R. § 41.41(b).
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away from employing photochromic compounds with polyvinyl acetal films
as a class based on the disclosure in Kojima.

Rejection over Steuer and Baltzer
Appellant does not provide additional argument with respect to the
combination of Steuer and Baltzer beyond those discussed above for the
combination of Steuer and Rickwood. (See Appeal Br. 16.) Accordingly,
we affirm the Examiner’s rejection of the claims over Steuer and Baltzer for
similar reasons as discussed above.

DECISION
We affirm the Examiner’s decision rejecting claims 1–18.
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