3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Apr 21, 2021

2020003664 (P.T.A.B. Apr. 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.
15/814,482 11/16/2017 Andrew J. Ouderkirk 70226US011 6201
32692 7590 04/21/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
SHAFER, RICKY D
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
04/21/2021 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW J. OUDERKIRK and
JOSEPH C. CARLS
____________

Appeal 2020-003664
Application 15/814,482
Technology Center 2800
____________

Before JEFFREY T. SMITH, MICHELLE N. ANKENBRAND, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, 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 and 2. 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 “3M
Company (formerly known as Minnesota Mining and Manufacturing
Company) of St. Paul, Minnesota and its affiliate 3M Innovative Properties
Company of St. Paul, Minnesota.” Appeal Br. 2.
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The invention relates to a “multilayer optical film reflective polarizer
ha[ving] a surface roughness Ra of less than 45 nm or a surface roughness
Rq of less than 80 nm.” Spec. 4. According to the Specification, polarizing
beam splitter systems use beam splitter plates that incorporate multilayer
optical films to reflect imaged light towards a viewer or a viewing screen
with high effective resolution. Id. at 1. Moreover, the Specification,
through the incorporation by reference of Jonza (US 5,882,774 issued March
16, 1999) on page 5, recognizes that it is known to use birefringent
multilayer optical films having high reflectivity (for both planes of
polarization for any incident direction in the case of mirrors, and for the
selected direction, in the case of polarizers) over a wide bandwidth in light-
reflecting devices. See Jonza, Abstr., col. 1, l. 13. The Specification
describes new demands placed on polarizing beam splitter systems to
address new uses in three-dimensional projection and imaging. Id. at 5:6–
18. Appellant’s invention addresses these new demands. Claim 1 illustrates
the invention and is reproduced below:
1. A polymeric multilayer optical film reflective polarizer
configured to substantially reflect light having a first
polarization state and substantially transmit light having an
orthogonal second polarization state, the polymeric multilayer
optical film reflective polarizer having a surface roughness Ra
of less than 45 nm or a surface roughness Rq of less than 80
nm.

Appellant requests review of the Examiner’s rejection of claims 1 and
2 under 35 U.S.C. § 103(a) as unpatentable over Aastuen (US 7,357,511 B2,
issued April 15, 2008) and Martin (US 6,623,861 B2, issued September 23,
2003). Appeal Br. 2; Final Act. 4–5.
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Appellant relies on the same line of arguments to address the rejection
of claims 1 and 2. Appeal Br. 6. Accordingly, we decide the appeal based
on the arguments presented for claim 1.

OPINION
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we affirm the Examiner’s prior art rejection of claims 1 and 2
based on the fact-finding and the reasons the Examiner provides. We add
the following.
Independent claim 1
Claim 1 recites polymeric multilayer optical film reflective polarizer
having a surface roughness Ra of less than 45 nm or a surface roughness Rq
of less than 80 nm. The polymeric multilayer optical film reflective
polarizer is also “configured to substantially reflect light having a first
polarization state and substantially transmit light having an orthogonal
second polarization state.” Appeal Br. 7 (Claims App’x).
The Examiner finds Aastuen teaches a polymeric multilayer optical
film reflective polarizer to transmit light in the orthogonal polarization state
for use in optical systems that rely on the polarization of the light, such as a
reflective liquid crystal display (LCD) panel. Final Act. 4; Aastuen col. 1, ll.
14–20, col. 7, ll. 26–55. The Examiner finds Aastuen’s polymeric
multilayer optical film reflective polarizer differs from the subject matter of
claim 1 in that Aastuen does not disclose the claimed surface roughness of
Ra less than 45 nm or Rq less than 80 nm. Final Act. 4. Appellant does not
dispute substantively these findings. See generally Appeal Br. The
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Examiner turns to Martin for teaching the missing feature. Martin is
directed to multilayer plastic substrates having improved light transmittance
for use in visual display devices. Martin col. 1, ll. 5–11. The Examiner
finds Martin teaches it is known to use multilayer plastic substrates having a
surface roughness of generally less than about 10 nm in the field of visual
display devices. Final Act. 4; Martin col. 3, ll. 1–3, col. 4, l. 62–col. 5, l. 10.
The Examiner determines it would have been obvious to one of ordinary
skill in the art to modify Aastuen’s polymeric multilayer optical film
reflective polarizer so it has the surface roughness Martin teaches to increase
optical performance of Aastuen’s visual display device. Id. at 5.
Appellant argues the polymeric reflective polarizer of Aastuen is a
reflective polarizer due to birefringence of polymeric layers and the
polymeric layers of Martin are formed by flash evaporation of polymeric
precursors, which are then cross-linked to form a substantially isotropic
polymer layer. Appeal Br. 4. According to Appellant, the Examiner has not
shown that it is possible, much less would have been obvious, to form a
reflective polarizer by flash evaporation of polymeric precursors. Id.
Appellant contends one of ordinary skill in the art would have recognized
that Martin’s flash evaporation would not result in a reflective polarizer that
relies on the birefringence of polymeric layers as Aastuen teaches. Id. at 4–
5.
Appellant’s arguments do not identify reversible error in the
Examiner’s determination of obviousness.
We have fully considered Appellant’s arguments with respect to
Martin’s flash evaporation process for making a reflective film. However,
Martin discloses flash evaporation as one method for making the desired
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film when seeking to attain polymer coatings having a very low surface
roughness on the order of less than about 10 nm. Martin col. 5, ll. 4–7, 23–
25 (“The thin film layers that form the multilayer substrate can be deposited
by any suitable method, including vacuum flash evaporation, extrusion, or
casting.”). There is no disclosure that flash evaporation is limited to the
recited materials Martin uses, nor does Appellant direct us to any such
disclosure. See Ans. 4. Appellant also does not direct us to other objective
evidence in support of these arguments. Thus, Appellant’s arguments are
merely attorney’s arguments that cannot take the place of evidence. See In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d
303, 315 (CCPA 1979).
Aastuen discloses polymeric multilayer optical film reflective
polarizers for optical display devices that transmit incident light in a
matched polarization state and reflect light in an unmatched polarization
state. Aastuen col. 1, ll. 14–31; col. 7, ll. 33–36. In other words, Aastuen’s
multi-layer optical film has light reflection and light transmission properties.
Like Aastuen, Martin is also directed to multilayer polymeric films for use in
display applications, where the films have a surface roughness of less than
10 nm to provide exceptional smoothness that results in specular (light
reflection2) properties with high light transmittance. Martin col. 2, ll. 44–54,

2 According to the article Image Formation using Mirrors
(idol.union.edu/malekis/CVision2003/MainPage/Course Content/
Geometrical Optics/ImagingMirrors.htm (last updated September 23, 2003)
(accessed April 15, 2021)) (“Image”), “[l]ight reflects from objects in two
distinct ways: specular or diffuse. Well polished surfaces, particularly shiny
metals, cause specular reflection. Rough surfaces lead to diffuse reflections.”
Image 1. Referring to specular reflection, Image further explains that “when
the surface is smooth so that there is no difference between different sections
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col. 4, l. 62–col. 5, l. 10. Based on this disclosure, one skilled in the art
would have inferred reasonably that Martin discloses the same or a similar
type of multi-layer optical film as Austen discloses. Therefore, there would
have been a reasonable basis for one skilled in the art to have modified
Aastuen’s multilayer optical film reflective polarizer by providing it with a
low surface roughness, as Martin discloses, and a reasonable expectation
that such a modified film would have been suitable for Aastuen’s purposes.
In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under
§ 103, all that is required is a reasonable expectation of success.”).
Appellant fails to explain adequately why Martin’s multi-layer optical film
having a surface roughness in the order of less than 10 nm would not have
been suitable for Aastuen’s device.
Arguments not specifically addressed are deemed not persuasive for
the reasons the Examiner presents.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1
and 2 for the reasons the Examiner presents and we give above.

DECISION SUMMARY

In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2 103 Aastuen, Martin 1, 2

of the surface, then parallel rays are all reflected in the same direction.” Id.
The Image article is made of record with this decision.
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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