Ex Parte Horio et alDownload PDFPatent Trial and Appeal BoardJan 4, 201812209366 (P.T.A.B. Jan. 4, 2018) Copy Citation 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. 12/209,366 09/12/2008 Tomoyuki Horio 21581-00431-USl 4366 52835 7590 01/08/2018 HAMRE, SCHUMANN, MUELLER & LARSON, P.C. 45 South Seventh Street Suite 2700 MINNEAPOLIS, MN 55402-1683 EXAMINER SHOSHO, CALLIEE ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 01/08/2018 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): PTOMail @hsml. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOMOYUKI HORIO, YUKIMITSUIWATA, TAKASHI KODAMA, MARIKO HAYASHI, KENJIUENO, ATSUHIRO KOBAYASHI, YOSHIMASA OGAWA, YUICHI TAKAURA, JUNYA EGUCHI, and KIYOTAKA MATSUI Appeal 2016-005326 Application 12/209,366 Technology Center 1700 Before CATHERINE Q. TIMM, BRIAN D. RANGE, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-005326 Application 12/209,366 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection2 of claims 1—3, 5, 6, 8—16, and 19-22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED SUBJECT MATTER The claims are directed to an optical layered body generally used in image display devices such as liquid crystal displays and plasma displays. Spec. 1:7, 11—12.3 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An optical layered body comprising a light-transmitting substrate and a hard coat layer formed on the light-transmitting substrate, wherein the light-transmitting substrate is made from triacetyl cellulose, wherein the hard coat layer is a resin layer formed from a hard coat layer-forming composition containing a quaternary ammonium salt having a weight average molecular weight of 1000 to 50000, a tri- or more functional (meth)acrylate compound having a weight average molecular weight of 700 or less, and a permeable solvent and a hexa- or more functional (meth)acrylate compound having a weight average molecular weight of 1000 or more; and wherein the content of the quaternary ammonium salt in the hard coat layer is 0.5 to 18% by weight; 1 The real party in interest is identified as Dai Nippon Printing Co. Ltd. (Appeal Brief, filed May 21, 2015 (“App. Br.”), 2.) 2 Final Office Action mailed December 12 2014 (“Final Act.”). 3 Application 12/209,366, Optical Layered Body, Method of Producing the Same, Polarizer, and Image Display Device, filed December 4, 2008. We refer to the “’366 Specification,” which we cite as “Spec.” 2 Appeal 2016-005326 Application 12/209,366 wherein the hard coat layer-forming composition is applied onto the light-transmitting substrate, and the tri- or more functional (meth)acrylate compound is penetrated into the substrate , and the quaternary ammonium salt is biased in the vicinity of the surface of the hard coat layer, and wherein the hard coat layer is one layer. Claims Appendix, App. Br. 13 (emphasis added). REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Morita Mizuno Muramatsu US 6,986,941 B2 Jan. 17,2006 US 2006/0269733 A1 Nov. 30, 2006 US 2007/0058250 A1 Mar. 15, 2007 A print out from http://www.chemicalbook.com describing dipentaerythritol hexaacrylate (“Chemical Book”).4 4 Appellants do not dispute that the Chemical Book reference is prior art. It is therefore not an issue before us and we do not reach this issue. To prevail in an appeal to this Board, Appellants must adequately explain or identity reversible error in the Examiner’s rejection. See 37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining that it has long been the Board's practice to require an appellant to identity the alleged error in the examiner's rejections). We do not reply on the Chemical Book reference in reaching our decision on appeal. See Reply Brief (“Reply Br.”), 1 (“For this appeal only, Appellant is not challenging the rejection’s interpretation of Morita and Chemical Book for this purpose.”). 3 Appeal 2016-005326 Application 12/209,366 REJECTIONS5 Claims 1—3, 5, 6, 8—16, and 19-22 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Muramatsu, Mizuno, Morita, and Chemical Book. Final Act. 4. OPINION6 Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Appellants acknowledge that Muramatsu describes an “optical film” having “a light-diffusing layer” and “a functional layer” such as ““a hardcoat layer, an antistatic layer.” App. Br. 10 (citing Muramatsu 129); see also Muramatsu 128. Appellants argue that Muramatsu does not teach or suggest “adding the antistatic compound to a light-diffusing layer and does not teach that the light-diffusing layer may function as a hard coat layer.” App. Br. 10; see Reply Br. 2. While claim 1 recites “the hard coat layer-forming composition is applied onto the light-transmitting substrate ... the hard coat layer is one layer” and not “the light-diffusing layer may function as a hard coat layer” as argued in the Appeal Brief, to the extent that this argument is directed to that particular claim limitation, 5 Claims 1—3, 5, 6, 8—16, and 19—22 were rejected under pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2—3. This rejection has been withdrawn and is not before us in this appeal. Examiner’s Answer filed February 26, 2016 (“Ans.”) 2. 6 Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), claims 2—3, 5, 6, 8—16, and 19-22 stand or fall with claim 1 with respect to the obviousness rejection because Appellants do not make separate arguments for these claims. See App. Br. 9—12. 4 Appeal 2016-005326 Application 12/209,366 Appellants do not address (much less identify error in) the Examiner’s finding that the prior art teaches materials for the various layers may be used interchangeably. For example, Appellants do not identify error in the Examiner’s finding that Muramatsu teaches materials for forming a light-diffusing layer that may also be used to form a hard coat layer. Compare App. Br. 10 with Final Act. 6 (citing Muramatsu 45, 244); see also Reply 2. Appellants also do not identify error in the Examiner’s finding that Mizuno describes “mixing . . . antistatic agent in the coating liquid for hardcoat layer formation or anti-dazzling layer formation” in an antireflective laminate. Compare App. Br. 10, with Final Act. 6 (citing Mizuno 142, 144); see Reply 2 (citing Mizuno 1144) (acknowledging that Mizuno recognizing mixing an antistatic agent with the coating liquid). Appellants further acknowledge that “Mizuno discloses antistatic agents” which “include quaternary ammonium salts” as recited in claim 1. App. Br. 10. Appellants do not dispute the Examiner’s finding that Morita discloses the recited molecular weight of quaternary ammonium salts. Compare id., with Final Act. 6 (citing Morita 9:21—32). Appellants, however, argue that there is no motivation to combine the references and that “Mizuno does not disclose using a quaternary ammonium salt having the specific molecular weight as an antistatic agent, the specific tri- or more functional (meth) acrylate compound, the specific hexa- or more functional (meth) acrylate compound and the specific solvent at same time.” App. Br. 10, 11. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in 5 Appeal 2016-005326 Application 12/209,366 isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants’ arguments directed to Mizuno alone do not address the Examiner’s finding that all limitations recited in claim 1 are known in the art and do not address the Examiner’s rationale that a skilled artisan would have applied the “polymer-type quaternary ammonium salts as effective antistatic compounds as taught by Muramatsu, Mizuno, and Morita” to a prior art optical film in order to reach a predictable result. Compare App. Br. 10-11 (arguing that the prior art “fails to provide the degree of predictability” without explaining why and without supporting evidence), with Final Act. 7—8. “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). Appellants’ attorney arguments, without evidentiary support, fail to show that the optical layered body recited in claim 1 “is more than the predictable use of prior art elements according to their established functions,” id. at 417, and no reversible error has been identified in this aspect of the obviousness analysis. In the Reply Brief, Appellants raise, for the first time on appeal, an argument that appears to contend that the recited optical layered body exhibits unexpected results using various examples in the ’366 Specification. Reply Br. 3—5. “Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.” Ex parte Borden, 2010 WL 191083 at *2 (BPAI 2010) (informative). We therefore decline to consider arguments not raised in the opening brief. 6 Appeal 2016-005326 Application 12/209,366 DECISION The Examiner’s rejection of claims 1—3, 5, 6, 8—16, and 19-22 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation