Haruhiko Ito

Patent Trials and Appeals Board

Sep 29, 2021

2020005911 (P.T.A.B. Sep. 29, 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.
12/523,276 07/15/2009 Haruhiko Ito Q114133 8364
23373 7590 09/29/2021
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 9000
WASHINGTON, DC 20006
EXAMINER
ROBINSON, ELIZABETH A
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
09/29/2021 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):
PPROCESSING@SUGHRUE.COM
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HARUHIKO ITO
____________________

Appeal 2020-005911
Application 12/523,276
Technology Center 1700
____________________

Before MAHSHID D. SAADAT, JOHN A. EVANS, and
BRIAN D. RANGE, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 seek our review3 under 35 U.S.C. § 134(a) from the final
rejection of Claims 1, 3–11, 13–18, and 24–29 all pending claims. Appeal
Br. 31. We have jurisdiction under 35 U.S.C. § 6(b).

1 Our Decision refers to Appellants’ Appeal Brief filed June 22, 2020
(“Appeal Br.”); Appellants’ Reply Brief filed August 14, 2020 (“Reply
Br.”); Examiner’s Answer mailed August 6, 2020 (“Ans.”); the Final
Rejection mailed October 31, 2019 (“Final Act.”), and the Specification filed
July 15, 2009 (“Spec.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appeal Brief identifies TEIJIN LIMITED of Osaka,
Japan, as the real party in interest. Appeal Br. 2.
3 We have considered in this decision only those arguments Appellant
actually raised in the Briefs. Any other arguments which Appellant could
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We AFFIRM IN PART.
STATEMENT OF THE CASE
INVENTION.
The claims relate to a transparent conductive multilayer body. See
Abstract. Claims 1 and 24 are independent. An understanding of the
invention can be derived from a reading of Claim 1, which is reproduced
below with some formatting added:
1. A transparent conductive multilayer body, comprising a
cured resin layer, a first transparent conductive layer, and a
second transparent conductive layer sequentially laminated on
at least one surface of a polymer film, characterized in that:
the first transparent conductive layer is a crystalline
transparent conductive layer free of an organic component; and
the second transparent conductive layer contains
alkoxysilane, and at least one kind of fine particles A formed of
crystalline ITO fine particles having an average primary particle
diameter of 100 nm or less;
wherein the transparent conductive multilayer body
further comprises a silicon oxide layer between the cured resin
layer and the first transparent conductive layer,
wherein the silicon oxide layer has a thickness at least 0.5
nm and less than 5.0 nm,
wherein the content of the fine particles A is at least 0.1
parts by weight and at most 400 parts by weight with respect to
100 parts by weight of the alkoxysilane,
wherein the cured resin layer is formed from a curable
resin which consists of an ionizing radiation curable resin or a
heat curable resin, and

have made but chose not to make in the Briefs are deemed to be forfeit. See
37 C.F.R. § 41.37(c)(1)(iv).
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wherein each crystalline ITO fine particle of the
crystalline ITO fine particles has a crystal phase of at least 50%.
Prior Art
Name4 Reference Date
Aikens US 6,416,818 B1 July 9, 2002
Yamaya US 2005/0227092 A1 Oct. 13, 2005
Hara US 2007/0224412 A1 Sept. 27, 2007
Miyashita5 JP 7 219 697 (A) Aug. 18, 1995
Minamino WO 2005/073763 A1 Jan. 28, 2005
Ito6 WO 2005/036565 A1 April 21, 2005

REJECTIONS7 AT ISSUE
1. Claims 1, 3–6, 8–11, 13–18, and 24–29 stand rejected under 35 U.S.C.
§ 112(1st ¶) as failing to comply with the written description
requirement. Final Act. 2–3.
2. Claims 1, 3–6, 14–18, 24, and 288 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ito, Miyashita, and Aikens. Final Act.
3–6.
3. Claims 8–11 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ito, Miyashita, Aikens, and Minamino. Final Act.
6–8.

4 All citations herein to the references are by reference to the first named
inventor/author only.
5 Miyashita and Minamino are read from machine translations.
6 Schreiber Translations, Inc.
7 The present application is being examined under the pre-AIA first to invent
provisions. Final Act. 2.
8 Neither the header, nor the body, of the rejections under § 103 mention
Claim 29. Therefore, we find Claim 29 does not stand rejected over the
prior art.
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4. Claims 1, 3–6, 14–18, 24–28 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Ito, Yamaya, and Aikens. Final Act. 8–11.
5. Claims 1, 3–6, 14–18, 24, and 28 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hara, Miyashita, and Aikens. Final
Act. 11–15.
6. Claims 8–11 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hara, Miyashita, Aikens, and Minamino. Final Act.
15–16.
7. Claims 1, 3–6, 14–18, 24–28 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Hara, Yamaya, and Aikens. Final Act. 16–19.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments which Appellants could have made but chose not to make in
the Briefs are deemed to be forfeit. See 37 C.F.R. § 41.37(c)(1)(iv). After
considering the evidence presented in this Appeal and each of Appellant’s
arguments, we are not persuaded that Appellant identifies reversible error
except where we otherwise indicate below. Thus, where we affirm the
Examiner’s rejections, we do so for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.

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GROUND ONE: CLAIMS 1, 3–6, 8–11, 13–18, AND 24–29: WRITTEN
DESCRIPTION.
Independent Claim 1 recites, inter alia, “wherein each crystalline ITO
fine particle of the crystalline ITO fine particles has a crystal phase of at
least 50%.” The Examiner finds:
the section of the Specification cited for support is a discussion
of the first conductive layer, not a discussion of the crystalline
ITO fine particles of the second transparent conductive layer.
Further, it is a discussion that the layer is at least 50% in the
crystalline phase (as opposed to amorphous), not that there are
crystalline particles in some particular phase. Thus, the
Specification does not provide support for this new limitation.
Final Act. 2. The Examiner finds Claims 3–6, 8–11, 13–18, and 24–29
depend from Claim 1. Id., at 3.
Appellant discloses:
as used herein, the “crystalline conductive layer” refers to
layers in which the crystal phase accounts for at least 50%,
preferably at least 75%, more preferably at least 95%, and
particularly preferably almost 100% of the dopant-containing
indium oxide layer.
Appeal Br. 7 (quoting Spec., 12, ll. 7–12) (emphasis omitted). Appellant
argues the phrase “as used herein” means the subsequent description of a
crystalline conductive layer applies generally to all disclosed crystalline
conductive layers. Id., at 7–8. Appellant further argues:
the use of the term “layers” in that disclosure means that the
subsequent description regarding the crystalline conductive
layer is not limited to a particular layer, such as the first
conductive layer, but rather applies to crystalline conductive
layers in general.
Appeal Br. 8. Appellant argues, for example, the second transparent
conductive layer contains both non-crystalline alkoxysilane and at least one
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kind of fine particles A formed of crystalline ITO fine particles thus,
reference to a layer in which the crystal phase accounts for at least 50%
refers to the crystalline particles in that layer having a crystal phase of at
least 50%. Id.
The Answer finds: “the limitation in question in claim 1 refers to the
crystalline phase of each of the crystalline ITO fine particles, not of a layer.
Thus, the cited section does not support the limitation present in the last two
lines of claim 1.” Ans. 4.
We find, given Appellant’s Specification disclosure, that a person of
ordinary skill in the art would understand the term “crystalline conductive
layer” to refer to a layer comprising an amorphous material, such as non-
crystalline alkoxysilane combined with a crystalline material. The claimed
crystalline ITO fine particles are an example of a crystalline material. In
view of the foregoing, we decline to sustain the rejection of Claims 1, 3–6,
8–11, 13–18, and 24–29 as lacking written description.
GROUND TWO: CLAIMS 1, 3–6, 14–18, 24, AND 28:
OBVIOUSNESS OVER ITO, MIYASHITA, AND AIKENS.
Claim 1 recites, inter alia, “wherein the content of the fine particles A
is at least 0.1 parts by weight and at most 400 parts by weight with respect to
100 parts by weight of the alkoxysilane.” The Examiner finds Miyashita
teaches an alkoxysilane layer having a dispersion of fine ITO particles.
Final Act. 3–4. The Examiner finds Miyashita teaches the particles function
to adjust a refractive index of the coating but does not teach an amount of
particles relative to alkoxysilane. Id., at 4. The Examiner finds the particle-
alkoxysilane ratio does not receive patentable weight because, absent a
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showing of unexpected results, the ratio is a result effective variable subject
to routine optimization. Id.
Appellant contends the claims optimize the claimed ratio, not based
on refractive index as suggested by the Examiner, but based on avoiding,
inter alia, an excessively large contact resistance. Appeal Br. 10–11 (citing
Spec., 15). Appellant also argues that Miyashita does not teach that particle
content (i.e. proportion of fine particles as compare to alkoxysilane as claim
1 recites) is result effective. Appellant’s argument persuades us of error.
The Examiner finds optimizing the particle ratio for refractive index
“would more likely than not result in a content of the fine particles within
the claimed range.” Ans. 5 (citing MPEP 2144.05 IIA) (“[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”
In re Aller, 220 F.2d 454, 456 (CCPA 1955)). In the present case, the prior
art does not set forth the “general conditions.” See In re Applied Materials,
Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (“because the prior art disclosed
values overlapping the claimed ranges, the ‘general conditions’ of the claim
are disclosed”). The Examiner finds Miyashita is silent as to the claimed
particle ratio. Final Act. 4 (“Miyashita does not state the amount of the
particles with respect to the amount of alkoxysilane.”). Thus, in view of the
Examiner’s explicit finding, the “general conditions” of the claim are not
disclosed. The Aller rule, that “it is not inventive to discover the optimum or
workable ranges by routine experimentation,” “is limited to cases in which
the optimized variable is a ‘result-effective variable.’” In re Applied
Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012). The Federal Circuit
has explained that a person of ordinary skill in the art would not always be
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motivated to optimize a parameter “if there is no evidence in the record that
the prior art recognized that [that] particular parameter affected the result.”
In re Antonie, 559 F.2d 618, 620 (CCPA 1977). In other words, to rely on a
rationale of a “result-effective variable,” the cited reference must recognize
that the claimed variable affects the given result. The Examiner fails to find
the prior art recognizes that optimizing a particle ratio with respect to
refractive index, necessarily achieves an optimum ratio with respect to
contact resistance.
In view of the foregoing, we decline to sustain the rejection of Claims
1, 3–6, 14–18, 24, and 28 over Ito, Miyashita, and Aikens.
GROUND THREE: CLAIMS 8–11 AND 13:
OBVIOUSNESS OVER ITO, MIYASHITA, AIKENS, AND MINAMINO.
The Examiner applies Miyashita, as discussed above. Final Act. 7.
In view of the foregoing, we decline to sustain the rejection of Claims
8–11, and 13 over Ito, Miyashita, Aikens, and Minamino.
GROUND FOUR: CLAIMS 1, 3–6, 14–18, AND 24–28:
OBVIOUSNESS OVER ITO, YAMAYA, AND AIKENS.
Claim 1 recites, inter alia, “the second transparent conductive layer
contains alkoxysilane, and at least one kind of fine particles A formed of
crystalline ITO fine particles having an average primary particle diameter of
100 nm or less.” The Examiner cites Yamaya for teaching this layer. Final
Act 8–9. However, the Examiner finds Yamaya fails to teach the crystal
structure of the layer. Id., at 9. The Examiner cites Aikens as teaching a
nanocrystalline particle dispersion which may be 100% crystalline ITO.
Final Act 10.
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Appellant contends the teachings of Yamaya are incompatible with
the teachings of Aikens. Appeal Br. 20–21. Appellant argues Yamaya
discloses a layer comprising particles at 0.1 to 100% by weight of the
organosilicon compound. Appeal Br. 20–21 (citing Yamaya, ¶ 197) (cited
by the Examiner). Appellant argues Yamaya teaches the weight of the
particles should be at most the weight of the organosilicon because Yamaya
discloses: “[t]oo smaller amounts of fine particles may fail to exert the
intended properties whereas in too larger amounts, the cured coat may
become too hard and likely to crack.” Appeal Br. 21 (quoting Yamaya, ¶
197). Appellant argues that in contrast, Aikens discloses “[t]he film-forming
agent is preferably added to the dispersion at up to 25% by weight of the
nanocrystalline material content.” Appeal Br. 21 (quoting Aikens, col. 3, l.
66–col. 4, l. 1). Appellant argues Yamaya teaches the weight of the
dispersion should be at most equal to the weight of the film-forming agent
and that greater quantities would result in a coating that is too hard and
would tend to crack, but that Aikens teaches the weight of dispersion should
be four times that of the film-forming agent, well beyond the range from
which Yamaya teaches away. Appeal Br. 21.
The Examiner finds Aikens was cited only for the type of particles,
but not for the amount thereof. Ans. 11.
Appellant cites the MPEP for the proposition that “[a] prior art
reference must be considered in its entirety, i.e., as a whole, including
portions that would lead away from the claimed invention.” Reply Br. 7
(quoting MPEP 2141.02 VI) (alteration in original).
We agree with the Examiner’s finding that, Yamaya teaches a
transparent conductive layer containing alkoxysilane, and at least one kind
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of fine particles formed of crystalline metal oxide having an average primary
particle diameter of 100 nm or less. Final Act. 8–9. Yamaya teaches a
range of metal oxide compositions, including indium oxide and tin oxide,
but does not specifically teach indium tin oxide (ITO). Yamaya, ¶ 196. The
Examiner finds Aikens was cited only for the type of particles, i.e., ITO, but
not for the amount thereof. Ans. 11. Appellant (Appeal Br. 20) and the
Examiner (Final Act. 9) agree that Yamaya discloses a layer comprising
particles at 0.1 to 100% by weight of the organosilicon compound. See
Yamaya, ¶ 197. The particle weight range disclosed by Yamaya, i.e., 0.1 to
100 parts by weight of organosilicon, substantially overlaps the claimed
range, i.e., 0.1 to 400 parts by weight of organosilicon. Thus, we agree with
the Examine that the claimed limitations are taught. In view of the
foregoing, we sustain the rejection of Claims 1, 3–6, 14–18, and 24–28 over
Ito, Yamaya, and Aikens.
GROUND FIVE: CLAIMS 1, 3–6, 14–18, 24, AND 28:
OBVIOUSNESS OVER HARA, MIYASHITA, AND AIKENS.
The Examiner applies Miyashita, as discussed above. Final Act. 12.
In view of the foregoing, we decline to sustain the rejection of Claims
1, 3–6, 14–18, 24, and 28 over Hara, Miyashita, and Aikens.
CLAIMS 8–11 AND 13:
GROUND SIX: OBVIOUSNESS OVER HARA, MIYASHITA, AIKENS, AND
MINAMINO.
The Examiner applies Miyashita, as discussed above. Final Act. 15.
In view of the foregoing, we decline to sustain the rejection of Claims
8–11 and 13 over Hara, Miyashita, Aikens, and Minamino.
GROUND SEVEN: CLAIMS 1, 3–6, 14–18, AND 24–28:
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OBVIOUSNESS OVER HARA, YAMAYA, AND AIKENS.
The Examiner applies Yamaya and Aikens, as discussed above. Final
Act. 17–18.
For the reasons discussed above, we sustain the rejection of Claims 1,
3–6, 14–18, and 24–28.
DECISION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–6, 8–
11, 13–18,
24–29
112 Written Description 1, 3–6, 8–
11, 13–18,
24–29
1, 3–6, 14–
18, 24, 28
103 Ito, Miyashita,
Aikens
1, 3–6,
14–18, 24,
28
8–11, 13 103 Ito, Miyashita,
Aikens, Minamino
8–11, 13
1, 3–6, 14–
18, 24–28
103 Ito, Yamaya, Aikens 1, 3–6, 14–
18, 24, 28

1, 3–6, 14–
18, 24, 28
103 Hara, Miyashita,
Aikens
1, 3–6,
14–18, 24,
28
8–11, 13 103 Hara, Miyashita,
Aikens, Minamino
8–11, 13
1, 3–6, 14–
18, 24–28
103 Hara, Yamaya,
Aikens
1, 3–6, 14–
18, 24–28

Overall
Outcome
1, 3–6, 8–
11, 13–18,
24–28
8–11, 13,
29

AFFIRMED IN PART