Ex Parte IIDA et al

Patent Trial and Appeal Board

Aug 29, 2017

13530351 (P.T.A.B. Aug. 29, 2017)

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.
13/530,351 06/22/2012 Toshiyuki IIDA P21647US01 1611
38834 7590 08/31/2017
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036
EXAMINER
BURKHART, ELIZABETH A
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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 TOSHIYUKIIIDA,
TOMOYUKI HIRAYAMA, YUTAKA OHMORI,
MIYUKI KUROGI, and HISAE SHIMIZU
Appeal 2017-001712
Application 13/530,351
Technology Center 1700
Before GEORGE C. BEST, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
September 17, 2015 decision finally rejecting claims 1-3 and 5-10. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Nitto Denko Corporation
(Appeal Br. 1).
Appeal 2017-001712
Application 13/530,351
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a method of preparing a resin
solution for use in the production of an optical compensation film for liquid
crystal displays (Spec. ^ 1). Independent claim 1 is representative and is
reproduced below from the Claims Appendix of the Appeal Brief (emphasis
added)'.
1. A method for producing an optical compensation film,
comprising the steps of:
preparing a resin solution comprising an ester-based
polymer represented by formula (IV) and a solvent;
applying the resin solution on a substrate; and
drying the resin solution to form a film on the substrate;
wherein, in formula (IV), B and B' each independently
represent hydrogen, halogen, an alkyl group of 1 to 6 carbon
atoms, or a substituted or unsubstituted aryl group;
b and b' represent the number of the substituents B and the
number of the substituents B', respectively, each of which is an
integer of 0 to 4;
R1 and R3 are a methyl group;
R2 and R4 represent a straight-chain or branched alkyl
group of 2 to 4 carbon atoms; and
1 and m represent an integer of 2 or more;
wherein the solvent is at least one non-halogen solvent
selected from the group consisting of toluene, xylene,
cyclohexanone, and cyclopentanone;
wherein the drying is performed while the temperature is
gradually or stepwise raised or lowered; and
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Application 13/530,351
wherein the polymer has a glass transition temperature of
100°C or more.
(Appeal Br. 8 (Claims App.)).
REJECTIONS
I. Claims 1,3,5, 9, and 10 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Lee2 and further in view of Kato.3
II. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lee, Kato, and further in view of Greener.4
III. Claims 2 and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Kato, and further in view of Murakami.5
IV. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lee, Kato, Murakami, and further in view of Ohmori.6
Appellants’ arguments are directed to limitations recited in
independent claim 1 (see Appeal Br. 2-6; Reply Br. 2-A). Accordingly, our
discussion will focus on Rejection I. Dependent claims 2, 3, and 5-10
(subject to Rejections I-IV) will stand or fall with claim 1. 37 C.L.R.
§ 41.37(c)(l)(iv) (2016).
2 Lee et al., WO 2006/033554 Al, published March 30, 2006.
3 Kato et al., JP 2003-082078, published March 19, 2003. We will refer to
the machine translation, as do both Appellants and the Examiner, because
Kato is in Japanese.
4 Greener et al., US Patent Pub. No. 2006/0068128 Al, published March 30,
2006.
5 Murakami et al., US Patent Pub. No. 2006/0055853 Al, published March
16, 2006.
6 Ohmori et al., US Patent Pub. No. 2006/0177607 Al, published August 10,
2006.
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Appeal 2017-001712
Application 13/530,351
DISCUSSION
Rejection I
The Examiner finds that Lee teaches all of the steps for producing an
optical compensation film, including preparing a resin solution comprised of
a polyarylate and a solvent (Ans. 2-3). The Examiner further finds that
Lee’s Formula 1 suggests the claimed formula (IV) polyarylate because
more than two polymers may be used and the —OOCYCO— portion can be
terephthalic acid or isophthalic acid {id., citing Lee 5:7-21). Lee’s Formula
1 is reproduced below:
0 0
o—U—
jn
(Lee 5:7-10). The Examiner finds Lee does not disclose the limitations in
claim 1 requiring that R1 and R3 in formula (IV) are methyl groups while
R2 and R4 in the same formula are straight or branched alkyl groups of 2—4
carbon atoms (Ans. 3). The Examiner further finds that Lee is silent to the
claimed non-halogen solvent {id.)
The Examiner relies on Kato for disclosing that the solvent may be
toluene, xylene, or cyclohexanone {id., citing Kato ^ 82). The Examiner
further finds that “Kato discloses forming an optical film using a polyester
R1
-0-
N
R2
R3
N
■w- \\
R4
4
Appeal 2017-001712
Application 13/530,351
resin similar to claimed formula (IV)” (Ans. 3 (citation omitted), citing Kato
^ 56). Chemical formula 4 of Kato is reproduced below:
(Kato ^ 14). The Examiner finds Kato discloses that, in formula 4: (i) X can
be —CR9R10—; (ii) Ri-Rs can be hydrogen; and (iii) at least one of R1-R10 is
a straight-chained or branched alkyl group having 2-9 carbon atoms (Ans. 6,
citing Kato 14, 15). According to the Examiner, Kato discloses that the
solubility in a solvent afforded by (iii) is improved over the solubility
provided in the instance that all R1-R10 are hydrogen and methyl groups (id.
at 6-7, citing Kato 15, 28; see also id. at 3).
The Examiner determines that it would have been obvious to the
ordinary skilled artisan to “incorporate the [X] group of Kato as the W group
in the polyarylate of Lee since it provides high solubility in a solvent and to
use the solvent of Kato to form the poly[ar]ylate solution of Lee since it was
a suitable alternative to the solvents disclosed by Lee” (Ans. 3).
There is no dispute that Lee discloses compounds, such as BP A ((2,2-
bis( 4-hydroxyphenyl)propane)) and 2,2-bis(4-hydroxyphenyl)heptane, in
which R groups corresponding to R1 and R3 in the claimed formula (IV) are
methyl groups (Ans. 6; Appeal Br. 3).
Appellants argue that neither of the aromatic dihydroxy portions
derived from the BPA or 2,2-bis(4-hydroxyphenyl)heptane compounds of
Lee would result in the polymer of claimed formula IV because: (i) BPA has
all R1-R4 as methyl groups and (ii) 2,2-bis(4-hydroxyphenyl)heptane has
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Application 13/530,351
R1 and R3 groups as methyl groups and R2 and R4 groups as straight alkyl
groups having 5 carbon atoms (Appeal Br. 3—4).
Appellants further argue that the Examiner’s reliance on Kato’s
formula 4 is misplaced because paragraph 20 discloses that “-CR9R10- is,
e.g., -CH2- (both R9 and Rio are hydrogen atoms), -C(CEh)2- (both R9 and
Rio are methyl groups), -CHR10- (R9 is a hydrogen atom)” (id. at 5).
Appellants contend that in order to render claim 1 obvious, Kato must
disclose that “one of R9 and Rio would have to be methyl, the other of R9
and Rio would have to be an alkyl group of 2 to 4 carbon atoms, and Ri-Rs
would have to be hydrogen,” but, “[n]one of the examples listed in
paragraph 20 of Kato for -CR9R10- corresponds with R1-R4 as recited in
claim 1” (id.).
Appellants assert that because 2,2-bis(4-hydroxyphenyl)heptane
“satisfies [Kato’s] requirement that at least one of R1-R10 is straight chain
shape or a branched alkyl group of the carbon numbers 2-9” for improved
“solubility,” one of ordinary skill in the art would have been motivated to
combine the teachings of Lee and Kato to select 2,2-bis(4-
hydroxyphenyl)heptane, which does not result in the polymer of claimed
formula IV (id.). Thus, Appellants conclude that when viewing the applied
prior art “as a whole, the specific combination for formula (IV) of claim 1
would not have been obvious to one or ordinary skill in the art” (id. at 5-6).7
7 Appellants argue for the first time in the Reply Brief that “[o]ne of
ordinary skill in the art of compensator films as disclosed in Lee would not
look to the teachings of Kato which discloses electrophotographic
photoreceptors” (Reply Br. 3). We will not consider this new argument
because it is not accompanied by a showing of good cause explaining why
the argument could not have been presented in the Appeal Brief. 37 C.F.R.
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Application 13/530,351
It is well established that a reference is good for all it fairly teaches a
person having ordinary skill in the art, even when the teaching is a cursory
mention. E.g., In re Mills, 470 F.2d 649, 651 (CCPA 1972).
As the Examiner found, Kato explicitly discloses aromatic dihydroxy
portions which correspond to claimed formula IV, such as [A-4] and [A-5]
depicted below:
(Ans. 7-8; Kato ^ 35). The Examiner is correct that [A-4] and [A-5] teaches
or suggests Appellants’ formula (IV) because in each compound, Ri-Rs are
hydrogen, R9 (corresponding to R1 and R3 of the claimed formula IV) is
methyl, and Rio (corresponding to R2 and R4 of the claimed formula IV) is a
straight alkyl having 2 or 4 carbon atoms, respectively (see Ans. 7-8).
Furthermore, Kato explicitly discloses BPA alternatives and aromatic
dihydroxy portions that correspond to claimed formula IV compounds, such
as 2,2-bis(4-hydroxyphenyl)butane; 2,2-bis(4-hydroxyphenyl)pentane; and
2,2-bis(4-hydroxyphenyl)hexane) (see id. at 8, citing Kato ^ 39).
Appellants’ arguments do not identify reversible error in the
Examiner’s determination that it would have been obvious for the ordinary
skilled artisan to combine these familiar elements according to known
methods to yield predictable results. See KSR Int 7 Co. v. Teleflex Inc., 550
§ 41.41(b)(2); see also Ex parte Borden, 93 USPQ2d 1473, 1476-77 (BPAI
2010) (informative).
CIl
[A4]
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Appeal 2017-001712
Application 13/530,351
U.S. 398, 416 (2007). Thus, we agree with the Examiner that it would have
been obvious to the ordinary skilled artisan “to use the aromatic dihydroxy
portion[s] disclosed by Kato to form the polymer of Lee since they were
suitable alternatives to BPA and provide better solubility in a solvent” (Ans.
8). The Supreme Court has made clear that an 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.” See KSR, 550
U.S. at 418. That is because “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” Id. at 421.
Therefore, Appellants have not persuasively argued that the facts and
reasons relied on by the Examiner are insufficient to establish a prima facie
case of obviousness as to claim 1.
Accordingly, we affirm the rejections of claims 1-3 and 5-10 for the
reasons set forth above and explained in the Examiner’s Answer.
CONCLUSION
We AFFIRM the rejection of claims 1, 3, 5, 9, and 10 under
35 U.S.C. § 103(a) as unpatentable over Lee and further in view of Kato.
We AFFIRM the rejection of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Lee, Kato, and further in view of Greener.
We AFFIRM the rejection of claims 2 and 6 under 35 U.S.C. § 103(a)
as unpatentable over Lee, Kato, and further in view of Murakami.
We AFFIRM the rejection of claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Lee, Kato, Murakami, and further in view of Ohmori.
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Application 13/530,351
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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