Ex Parte Ozawa et al

Patent Trial and Appeal Board

Aug 23, 2017

13421931 (P.T.A.B. Aug. 23, 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.
13/421,931 03/16/2012 Hiroki Ozawa 120317 4746
38834 7590 08/25/2017
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036
EXAMINER
PLESZCZYNS KA, JOANNA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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 HIROKI OZAWA, HIROYUKI TAKAO,
MINORU KANATANI, and WATARU NAGATAKE1
Appeal 2015-007428
Application 13/421,931
Technology Center 1700
Before CHUNG K. PAK, WILSON, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 rejecting claims 1 and 3-7, which are all of the claims
pending in the above-identified application. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as “NITTO DENKO
CORPORATION[.]” Appeal Brief filed January 22, 2015 (“App. Br.”) 2.
2 Final Action entered August 21, 2014 (“Final Act.”) 2-6; and the
Examiner’s Answer entered June 5, 2015 (“Ans.”) 2-5.
Appeal 2015-007428
Application 13/421,931
STATEMENT OF THE CASE
The subject matter of the claims on appeal relates to
a transparent conductive film having a transparent polymer
substrate and a transparent conductive layer on one [of the]
main surfaces of the transparent polymer substrate and in which
a cured resin layer with surface irregularities is formed at least
one of: between the transparent polymer substrate and the
transparent conductive layer; and on the main surface opposite
to the surface with the transparent conductive layer formed
thereon of the transparent polymer substrate.
Spec. ^ 10; App. Br. 15 (claim 1) (Claims Appendix). Figures 1-3, which
are illustrative of the embodiments of such transparent conductive films
embraced by the claims on appeal, are reproduced below:
Figures 1-3 show transparent conductive films 101, 102, 103, each having
transparent conductive layer 4 formed on a first main surface of transparent
polymer substrate 1, cured resin layers 2 and/or 3 containing resin
composition 21,31 and fine particles 22, 32 placed on a second main surface
of transparent polymer substrate 1 that is opposite to the first main surface
and/or between transparent polymer substrate 1 and transparent conductive
layer 4. Spec. ^ 16. This transparent conductive film is said to have “good
2
Appeal 2015-007428
Application 13/421,931
transparency and a good external appearance while having anti-blocking
properties” and is suitable for “touch panel applications.” Spec. 1,9.
Details of the appealed subject matter are recited in representative
claim 1, the broadest claim on appeal, which is reproduced below from the
Claims Appendix of the Appeal Brief (with disputed limitations in italicized
form):
1. A transparent conductive film having a transparent
polymer substrate and a transparent conductive layer on one
main surface of the transparent polymer substrate, wherein
a cured resin layer with surface irregularities is formed at
least one of: between the transparent polymer substrate and the
transparent conductive layer; and on the main surface opposite
to the surface with the transparent conductive layer formed
thereon of the transparent polymer substrate,
the thickness of the cured resin layer is 1 pm or more and
3 pm or less,
the cured resin layer contains: a resin composition
containing at least two components; and 0.01 to 5 parts by
weight offine particles to 100 parts by weight of the solid
content of the resin composition,
the resin composition undergoes phase separation,
the average particle size of the fine particles is 25 to 80%
of the thickness of the cured resin layer, and
the average particle size of the fine particles is 250 to
2400 nm.
App. Br. 15 (Claims Appendix).
The Examiner maintains, and Appellants seek review of, the
Examiner’s rejection of claims 1 and 3-7 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Ito (US 2010/0260986 Al;
3
Appeal 2015-007428
Application 13/421,931
published Oct. 14, 2010), Keizo3 (JP 10-323931; published Aug. 12, 1998),
and Noguchi (US 2009/0029151 Al; published Jan. 29, 2009). Final Act. 2-
5; Ans. 2-13; App. Br. 6-14; Reply Brief filed August 5, 2015 (“Reply Br.”)
1^1.
DISCUSSION
Upon consideration of the evidence and arguments advanced by the
Examiner and Appellants, we concur with Appellants that the Examiner has
not demonstrated a prima facie case of obviousness regarding the subject
matter recited in claims 1 and 3-7 within the meaning of 35 U.S.C. § 103(a)
for the reasons set forth in the Appeal Brief and Reply Brief. We add the
following for emphasis.
As evidence of obviousness of the subject matter recited in claims 1
and 3-7 under 35 U.S.C. § 103(a), the Examiner relies upon the collective
teachings of Ito, Keizo, and Noguchi. Final Act. 2. The Examiner finds that
Ito teaches a transparent electroconductive laminate (corresponding to the
claimed transparent conductive film) having a transparent polymer substrate
(polymer film (2)), a transparent conductive layer (transparent
electroconductive layer (5)) on one of the main surfaces of the transparent
polymer substrate, and a cured resin layer (3) having an uneven surface
provided between the transparent polymer substrate and the transparent
conductive layer. Final Act. 2-3; see also Ito 18, 19, 27-33, 43^46,
Figs. 1—4. The cured resin layer (3) having an uneven surface taught by Ito
can be formed either by fine particles for imparting a surface unevenness or
3 Our reference of Keizo is to the English translation of record relied upon
by the Examiner in the above-identified application.
4
Appeal 2015-007428
Application 13/421,931
by phase separation of two components (a polymer and a monomer), without
using fine particles for imparting a surface unevenness. Final Act. 2-3; see
also Ito 27-33, 145-160 (especially ^ 160, “the cured resin layer has a
surface unevenness formed by the phase separation of two components, and
does not contain a fine particle for imparting surface unevenness.”). The
fine particles used for imparting a surface unevenness taught by Ito can be at
least one fine particle C having an average primary particle diameter of more
than 0.1 micrometer which is equal to or greater than 1.2 times of the film
thickness of the cured resin layer and/or at least one fine particle D of metal
oxide or metal fluoride having an average primary particle diameter of
lOOnm or less. Ito 27, 28, 29, 148, 150. The cured resin layer has
preferably a thickness of 10 micrometers or less, more preferably 5
micrometers or less. Final Act. 3; see also Ito ^ 144. According to
paragraph 44 of Ito, the transparent electroconductive laminate
(corresponding to the claimed transparent conductive film) also has optional
hardcoat layer (1) which is placed on the other surface of the transparent
polymer substrate.
The Examiner acknowledges that
Ito does not teach that the cured resin that undergoes phase
separation comprises fine particles [having the average particle
size of 250 to 2400 nm (0.25 to 2.4 micrometers) which is equal
to 25 to 80% of the thickness of the cured resin layer] in the
amount of from 0.01 to 5 parts by weight to 100 parts by weight
of the solid content of the resin composition
as recited in claim 1. Final Act. 3. To remedy these deficiencies in Ito, the
Examiner relies upon Keizo to teach a conductive film that employs fine
particles having an average particle size of 1 micrometer to 4 micrometer in
the recited amount to obtain better haze control and eliminate Newton rings
5
Appeal 2015-007428
Application 13/421,931
and relies upon Noguchi to teach “a transparent conductive film comprising
a hard coating layer [containing fine particles having the average particle
size of from 30% to 75% of the thickness of the hard-coating layer to
provide sufficient hardness and scratch resistance].” Final Act. 3—4 (citing
Keizo, Abstract, 24; Noguchi ]fl[ 8, 14-17, 59).
However, we concur with Appellants that the collective teachings of
Ito, Keizo, and Noguchi do not teach or would not have suggested forming a
cured resin layer having an uneven or roughened surface by using both the
phase separation and fine particles having the average particle size of 250 to
2400 nm (0.25 to 2.4 micrometers) which must constitute 25 to 80% of the
thickness of the cured resin layer, as recited in claim 1, to obtain better haze
control and eliminate Newton rings. As indicated supra, Ito teaches using
fine particles having a larger average particles size that includes the average
particle size recited in claim 1, provided that such average particle size is 1.2
time or more of the film thickness of the cured resin layer to eliminate
Newton rings and obtain better haze control that corresponds to the
roughened surface, i.e., “more preferably from 1% to less than 3%” haze
(less than 1% can create a Newton ring). See also Ito 148, 156. Keizo,
like Ito, teaches using fine particles having a larger average particle size that
includes the average particle size recited in claim 1, provided that such
average particle size is about 1 or 2 times of the cured resin layer (coating
layer) thickness to eliminate Newton rings and obtain better haze control that
corresponds to the roughened surface. Keizo ^ 23 (“Since a filler will be
buried into a coating agent if mean particle diameter shall be less than 1
micrometer, effective unevenness is not formed and Newton rings cannot be
made ... to eliminate thoroughly .... As for the mean particle diameter of
6
Appeal 2015-007428
Application 13/421,931
a filler, since it is preferred to suppress a haze rate to 5% or less and 3
more% or less .... It is preferred to carry out by 1 to 2.0 times the coating
layer thickness.”), ^ 24 (“If quantity of a filler is increased, it is effective in
elimination of Newton rings, but since a haze rate also increases with the
increase in the amount of fillers, it is preferred to make number average
density per unit area into below 3000 piece [of] [/mm]2 and below 2500
more piece [/mm]2.”). Keizo and Ito do not teach or suggest using fine
particles having the average particle size of 250 to 2400 nm (0.25 to 2.4
micrometers), which must constitute 25 to 80% of the thickness of the cured
resin layer, as required by claim 1. Nor does Keizo contradict Ito’s
disclosure of using either the phase separation without using fine particles or
fine particles having an average particle size of larger than 0.1 microns
(corresponding to about 100% or more of the film thickness of the cured
resin layer) to form a cured resin layer having an uneven surface that
provides desired haze control and eliminate Newton rings. Compare Keizo
Tflj 23, 24, with Ito 30, 60.
As also acknowledged by the Examiner, Noguchi teaches using “a
transparent conductive film comprising a hard coating layer . . . [containing]
fine particles having an average particle size of from 30% to 75% of the
thickness of the hard-coating layer” to provide sufficient hardness and
scratch resistance. Final Act. 3. Moreover, as Appellants correctly explain,
Noguchi shows that such particles provide an increased haze rate above 30%
which is undesirable in the cured resin layer taught by Ito. App. Br. 11;
compare also Noguchi, Table 1, with Ito ]fl[ 156, 159. This showing in
Noguchi is also consistent with the teachings of Ito and Keizo, which
recommend the use of fine particles having the average particle size of about
7
Appeal 2015-007428
Application 13/421,931
1,1.2 times, or more of the thickness of the cured resin layer if the desired
haze control is to be obtained as indicated supra. Thus, from our
perspective, one of ordinary skill in the art would have been led to use the
fine particles taught by Noguchi in the optional hardcoat layer of the
transparent conductive film taught by Ito, rather than the cured resin layer of
the transparent conductive film taught by Ito. To do so would destroy the
invention on which Ito is based. Ex parte Hartmann, 186 USPQ 366, 367
(BPAI 1974) (“Reynolds cannot properly be combined with Graham et al.
relative to the employment of continuous monofilaments, since to do so
would destroy that on which the invention of Graham et al. is based, namely,
the use of very short fibers.”)
Accordingly, on this record, we reverse the Examiner’s decision
rejecting claims 1 and 3-7 under 35 U.S.C. § 103(a).
DECISION
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1 and 3-
7 under 35 U.S.C. § 103(a) is REVERSED.
REVERSED
8