NITTO DENKO CORPORATION

Patent Trials and Appeals Board

Dec 21, 2021

2021000601 (P.T.A.B. Dec. 21, 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.
15/301,194 09/30/2016 Tomoyuki Kimura P160887US00 3158
38834 7590 12/21/2021
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 LEESBURG PIKE
SUITE 7500
TYSONS, VA 22182
EXAMINER
DUCHENEAUX, FRANK D
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
12/21/2021 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOMOYUKI KIMURA, SATOSHI YAMAMOTO,
MASAKUNI FUJITA, and YUUSUKE TOYAMA

____________

Appeal 2021-000601
Application 15/301,194
Technology Center 1700
____________

Before JEFFREY T. SMITH, MERRELL C. CASHION, JR., and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s non-final rejection of claims 1, 3–18, and 21.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b).

1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies Nitto Denko Corporation as the real party in interest.
Appeal Brief filed July 6, 2020 (“Appeal Br.”), 2.
2 Non-Final Office Action entered March 17, 2020 (“Non-Final Act.”), 1.
Appeal 2021-000601
Application 15/301,194

2
CLAIMED SUBJECT MATTER
The Appellant claims a pressure-sensitive adhesive composition for an
optical film. Appeal Br. 2–3. Claim 1, the sole pending independent claim,
illustrates the subject matter on appeal, and reads as follows:
1. A pressure-sensitive adhesive composition for an optical
film, the pressure-sensitive adhesive composition comprising:
(A) a (meth)acryl-based polymer comprising (a1) 70% by
weight or more of a monomer unit derived from an alkyl
(meth)acrylate, (a2) 3 to 25% by weight of a monomer unit
derived from an aromatic ring-containing (meth)acrylate, (a3)
0.1 to 8% by weight of a monomer unit derived from an N-vinyl
group-containing lactam monomer, (a4) 0.01 to 2% by weight
of a monomer unit derived from a carboxyl group-containing
monomer, and (a5) 0.01 to 3% by weight of a monomer unit
derived from a hydroxyl group-containing monomer, the
(meth)acryl-based polymer (A) having a weight average
molecular weight (Mw) of 1,000,000 to 2,500,000 and a weight
average molecular weight (Mw)/number average molecular
weight (Mn) ratio of 1.8 to 10; and
(B) a crosslinking agent,
the pressure-sensitive adhesive composition containing
0.01 to 3 parts by weight of the crosslinking agent (B) based on
100 parts by weight of the (meth)acryl-based polymer (A).

Appeal Br. 30 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered September 4, 2020 (“Ans.”), 3:
Appeal 2021-000601
Application 15/301,194

3
I. claims 1, 3–9, 14–18, and 21 under 35 U.S.C. § 103 as
unpatentable over Toyama 8883 in view of Toyama 0544 and Schmidt5 as
evidenced by Satake,6 Kanner,7 and Aldrich;8 and
II. claims 10–13 under 35 U.S.C. § 103 as unpatentable over
Toyama 888 in view of Toyama 054, Schmidt, and Nishina.9
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of the Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1, 3–18, and 21 under 35 U.S.C. § 103, but we designate our
affirmance as including new grounds of rejection, for reasons discussed
below.
The Appellant presents arguments directed to claim 1 only, to which
we accordingly limit our discussion. 37 C.F.R. § 41.37(c)(1)(iv); Appeal Br.
4–29; see also Appeal Br. 29 (“[c]oncerning claims 3 to 18 and 21, for at
least their depend on claim 1, said claims would not have been obvious to
one of ordinary skill in the art.”). Claims 3–18 and 21 stand or fall with

3 Toyama et al., US 7,862,888 B2, issued January 4, 2011.
4 Toyama, et al., WO 2010/126054 Al, published November 4, 2010. On the
record before us, the Appellant does not contest the Examiner’s reliance on
US 2012/0121824 Al, published May 17, 2012, as an English equivalent of
WO 2010/126054 Al. Compare Final Act. 3, with Appeal Br. 4–29.
Citations to “Toyama 054” in this decision, therefore, refer to US
2012/0121824 Al.
5 Schmidt et al., US 2016/0032162 A1, published February 4, 2016.
6 Satake et al., US 5,814,685, issued September 29, 1998.
7 Kanner et al., US 7,070,051 B2, issued July 4, 2006.
8 Aldrich Data Sheet, Polymer Properties, Thermal Transitions of
Homopolymers: Glass Transition & Melting Point, 52–53 (2018).
9 Nishina, US 2009/0110849 A1, published April 30, 2009.
Appeal 2021-000601
Application 15/301,194

4
claim 1.
The issue before us in this appeal is whether the Examiner errs in
determining that it would have been obvious to incorporate a monomer
derived from an N-vinyl group-containing lactam into a (meth)acryl-based
polymer included in a pressure-sensitive adhesive composition for an optical
film. We determine that the Examiner does not so err for reasons that
follow.
Toyama 888 discloses a pressure-sensitive adhesive composition for
an optical film comprising a (meth)acrylic polymer including (a) 34 to 94%
by weight of an alkyl (meth)acrylate monomer, (b) 5 to 50% by weight of an
aromatic ring-containing (meth)acrylate monomer, (c) 0.01 to 0.5% by
weight of an amino group-containing (meth)acrylate monomer, (d) 0.05 to
2% by weight of a hydroxyl group-containing (meth)acrylate monomer, and
(e) 0.05 to 3% by weight of a carboxyl group-containing (meth)acrylate
monomer; and 0.01 to 2 parts by weight of a peroxide crosslinking agent
based on 100 parts by weight of the (meth)acrylic polymer. Toyama 888
col. 3, ll. 12–21, 28–32. Toyama 888 discloses that the (meth)acrylic
polymer preferably has a weight average molecular weight of 1,600,000 to
3,000,000, and a degree of dispersion (Mw/Mn) of 1 to 10. Toyama 888 col.
3, ll. 24–27, 37–39; col. 8, ll. 5–10, 18–24.
Toyama 888 discloses that other monomers—in addition to monomers
(a)–(e) described above—may be used to form the (meth)acrylic polymer.
Toyama 888 col. 7, ll. 35–39. Toyama 888 discloses that such additional
monomers may be included in an amount of not more than 45% by weight of
the total amount of monomers used to form the (meth)acrylic polymer. Id.
Toyama 888 discloses numerous suitable additional monomers, including
Appeal 2021-000601
Application 15/301,194

5
vinyl monomers such as N-vinylcaprolactam. Toyama 888 col. 7, ll. 52–54.
Toyama 888’s disclosure of numerous suitable additional monomers
that may be used to form the (meth)acrylic polymer does not render any of
the additional disclosed monomers any less obvious. Rather, Toyama 888
would have suggested the suitability of using any of the described additional
monomers to form Toyama 888’s (meth)acrylic polymer. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ’813
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose.”); In re Susi, 440 F.2d
442, 445 (CCPA 1971) (obviousness rejection affirmed where the genus of
the prior art was “huge, but it undeniably include[d] at least some of the
compounds recited in appellant’s generic claims and [was] of a class of
chemicals to be used for the same purpose as appellant’s additives”).
Toyama 888, therefore, would have suggested using an N-vinyl
group-containing lactam monomer as recited in claim 1 to form Toyama
888’s (meth)acrylic polymer, in addition to using (a) an alkyl (meth)acrylate
monomer, (b) an aromatic ring-containing (meth)acrylate monomer, (c) an
amino group-containing (meth)acrylate monomer, (d) a hydroxyl group-
containing (meth)acrylate monomer, and (e) a carboxyl group-containing
(meth)acrylate monomer.
Moreover, similar to Toyama 888, Toyama 054 discloses a pressure-
sensitive adhesive composition for an optical film comprising a (meth)acryl-
based polymer including (a) an alkyl (meth)acrylate monomer, and (b) an
aromatic ring-containing alkyl (meth)acrylate monomer. Toyama 054 ¶¶ 47,
49. Toyama 054 discloses that “[i]n order to improve tackiness or heat
Appeal 2021-000601
Application 15/301,194

6
resistance, one or more copolymerizable monomers having an unsaturated
double bond-containing polymerizable functional group such as a
(meth)acryloyl group or a vinyl group may be introduced into the
(meth)acryl-based polymer (A) by copolymerization.” Toyama 054 ¶ 50.
Toyama 054 discloses that “[e]xamples of such copolymerizable monomers
include [d] hydroxyl group-containing monomers . . . [and] [e] carboxyl
group-containing monomers.” Toyama 054 ¶ 50. Toyama 054 discloses
that vinyl monomers such as N-vinylcaprolactam “may also be used.”
Toyama 054 ¶ 52.
One of ordinary skill in the art seeking to improve the tackiness or
heat resistance of Toyama 888’s (meth)acrylic polymer reasonably would
have been led by these disclosures in Toyama 054 to incorporate a vinyl
monomer such as N-vinylcaprolactam into the polymer, particularly in view
of Toyama 888’s explicit disclosure of the suitability of N-vinylcaprolactam
as an additional monomer that may be used to form Toyama 888’s
(meth)acrylic polymer. Toyama 888 considered in view of Toyama 054,
therefore, would have suggested a pressure sensitive adhesive composition
for an optical film comprising a (meth)acrylic polymer including monomers
corresponding to monomer units (a1)–(a5) recited in claim 1 in amounts
overlapping the respective recited ranges, and having a weight average
molecular weight, and a weight average molecular weight/number average
molecular weight ratio, which each overlap the respective ranges recited in
claim 1, and further including a crosslinking agent in an amount overlapping
the range recited in claim 1, rendering the claimed composition prima facie
obvious. In re Peterson, 315 F.3d 1325, 1329–330 (Fed. Cir. 2003) (“In
cases involving overlapping ranges, we and our predecessor court have
Appeal 2021-000601
Application 15/301,194

7
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness . . . .”).
We note that an amino group-containing (meth)acrylate monomer (c)
as disclosed in Toyama 888 is not excluded from the (meth)acryl-based
polymer recited in claim 1 due to the recitation in claim 1 that the polymer
“comprises” the recited monomer units. In re Baxter, 656 F.2d 679, 686–87
(CCPA 1981) (“As long as one of the monomers in the reaction is [the
claimed] propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”).
The Appellant presents numerous arguments challenging the
Examiner’s reliance on Toyama 054, Schmidt, Aldrich Data Sheets, and
Kanner in the Examiner’s rejection of claim 1. Appeal Br. 4–6, 16–29. We,
however, affirm the Examiner’s rejection of claim 1 for reasons that differ
materially from those expressed by the Examiner, and, therefore, do not
reach these arguments for purposes of deciding this appeal. We do designate
our affirmance as a new ground of rejection, however, as discussed below.
The Appellant also argues that “[t]he specification as filed provides a
plethora of working and comparative examples (28 working examples and
14 comparatives) showing an impressive and significant trend of durability,
resistance and reworkability that can ‘reasonably’ be extended to the scope
of the presently claimed invention.” Appeal Br. 11–12. The Appellant
argues that “this trend must be considered unexpected when taken in
combination with the comparatives.” Appeal Br. 15. The Appellant argues
that results presented in the Declaration of Tomoyuki Kimura filed
September 7, 2018 “further illustrate the unexpected results of the present
invention.” Appeal Br. 15–16; Kimura Declaration ¶¶ 7, 8.
Appeal 2021-000601
Application 15/301,194

8
The burden of establishing unexpected results rests with the
Appellant. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of
showing unexpected results rests on he who asserts them”). To meet this
burden, the Appellant must provide objective evidence of results
commensurate in scope with the claimed subject matter that would have
been unexpected by one of ordinary skill in the art relative to the closest
prior art. In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)
(“Establishing that one (or a small number of) species gives unexpected
results is inadequate proof, for ‘it is the view of this court that objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support.’”) (quoting In re Tiffin, 448
F.2d 791, 792 (CCPA 1971)); In re Baxter Travenol Labs., 952 F.2d 388,
392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”).
As discussed above, Toyama 888 is the closest prior art to the
pressure-sensitive adhesive composition of claim 1 because Toyama 888’s
disclosures would have suggested a pressure-sensitive adhesive having all
the features recited in the claim. Neither the Appellant nor the Declarant
explains why the experimental results provided in the Specification and in
the Declaration would have been unexpected relative to the disclosures of
Toyama 888, particularly Toyama 888’s pressure-sensitive adhesive
embodiment in which the adhesive includes a (meth)acrylic polymer formed
from N-vinylcaprolactam monomers in addition to monomers (a)–(e)
(discussed above). In re Case, No. 98–1531, 1999 WL 682875, at 6–7 (Fed.
Cir. Aug. 31, 1999) (To demonstrate unexpected results, it is not sufficient
Appeal 2021-000601
Application 15/301,194

9
to compare the claimed invention to any embodiment disclosed in the closest
prior art reference; instead, a comparison should be made to the prior art
disclosure that is the closest to that which is claimed.).
As discussed above, the Appellant argues that the relied-upon
experimental results show a trend in durability, resistance, and reworkability
that reasonably extends to the “full scope of the claimed invention.” Appeal
Br. 11–12. The pressure-sensitive adhesive compositions encompassed by
claim 1 are far broader than the compositions that were tested to generate the
relied-upon results, however. Although a trend may be discernable in the
results obtained for the limited compositions tested, the Appellant does not
explain why any such trend would extend to the full scope of pressure-
sensitive adhesive compositions encompassed by claim 1.
More specifically, the experimental examples presented in the
Specification describe producing 28 inventive and 14 comparative10
pressure-sensitive adhesive compositions, attaching the compositions to
polarizing films, and evaluating various properties of the resulting pressure-
sensitive adhesive layer attached polarizing films. Spec. ¶¶ 132–146. The
Specification indicates that each of the tested pressure-sensitive adhesive
compositions—except the composition of Example 11, discussed below—
included a (meth)acryl-based polymer formed from a single type of
monomer derived from an alkyl (meth)acrylate (butyl acrylate), a single type
of monomer derived from an aromatic ring-containing (meth)acrylate
(phenoxy acrylate), one of two types of monomers derived from an N-vinyl
group-containing lactam monomer (N-vinyl-pyrrolidone or N-vinyl-

10 The Appellant indicates that experimental example 11 is comparative
rather than inventive. Appeal Br. 6.
Appeal 2021-000601
Application 15/301,194

10
caprolactam), a single type of monomer derived from a carboxyl group-
containing monomer (acrylic acid), and a single type of monomer derived
from a hydroxyl group-containing monomer (4-hydroxybutyl acrylate).
Spec. Table 1. The (meth)acryl-based polymer included in the composition
of Example 11 was formed from butyl acrylate, phenoxy acrylate, acrylic
acid, and 4-hydroxybutyl acrylate monomers, but, unlike the other tested
(meth)acryl-based polymers (discussed above), was formed from acrylamide
monomers rather than N-vinyl-pyrrolidone or N-vinyl-caprolactam
monomers. Id.
The (meth)acryl-based polymers included in the tested pressure-
sensitive adhesive compositions, therefore, are far more limited in scope
than the (meth)acryl-based polymers encompassed by claim 1. The
Appellant does not provide an explanation grounded in objective evidence or
technical reasoning for why the results generated from the limited pressure-
sensitive adhesive compositions tested are representative of the full scope of
the compositions encompassed by claim 1. In re Lindner, 457 F.2d 506, 508
(CCPA 1972) (explaining that “objective evidence of nonobviousness must
be commensurate in scope with the claims,” meaning that the relied-upon
evidence must provide a reasonable basis for concluding that untested
embodiments encompassed by the claims would behave in the same manner
as the tested embodiments).
The Appellant, therefore, does not meet the burden of establishing
unexpected results commensurate in scope with claim 1 that would have
been unexpected relative to the closest prior art—Toyama 888. Considering
the totality of the evidence relied upon in this appeal, therefore, a
preponderance of the evidence weighs in favor of a conclusion of
Appeal 2021-000601
Application 15/301,194

11
obviousness.
We, accordingly, sustain the Examiner’s rejections of claims 1, 3–18,
and 21 under 35 U.S.C. § 103. We, however, designate our affirmance as
including new grounds of rejection pursuant to our authority under 37 C.F.R.
§ 41.50(b) because our reasons for affirmance differ materially from those
expressed by the Examiner. Non-Final Act. 3–9; In re Leithem, 661 F.3d
1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory basis and
the same prior art references, alone, is insufficient to avoid making a new
ground of rejection where the Board relies on new facts and rationales not
previously raised to the applicant by the examiner.”).

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed New
Ground
1, 3–9,
14–18, 21
103 Toyama 888,
Toyama 054,
Schmidt,
Satake,
Kanner,
Aldrich
1, 3–9,
14–18, 21
1, 3–9,
14–18, 21
10–13 103 Toyama 888,
Toyama 054,
Schmidt,
Nishina
10–13 10–13
Overall
Outcome
1, 3–18, 21 1, 3–18,
21

Appeal 2021-000601
Application 15/301,194

12
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that a “new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), to preserve the right to seek review
under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection(s), the
effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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).
Appeal 2021-000601
Application 15/301,194

13
AFFIRMED; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)