Murashige, Takeshi et al.

Patent Trials and Appeals Board

Jan 2, 2020

14389849 - (D) (P.T.A.B. Jan. 2, 2020)

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.
14/389,849 10/01/2014 Takeshi Murashige P24007US00 6172
38834 7590 01/02/2020
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 LEESBURG PIKE
SUITE 7500
TYSONS, VA 22182
EXAMINER
UTT, ETHAN A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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 TAKESHI MURASHIGE,
DAISUKE HATTORI, and TADAYUKI KAMEYAMA
____________

Appeal 2019-003834
Application 14/389,849
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8 of Application 14/389,849. Final
Act. (December 26, 2017).2 We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Nitto Denko Corp., as the real party in
interest. Appeal Br. 2.
2 Claim 9 is withdrawn from consideration and, thus, is not subject to the
appealed rejections. Final Act. 2; Appeal Br. 2.
Appeal 2019-003834
Application 14/389,849
2
I. BACKGROUND
The ’849 Application describes a transparent sheet, comprising a glass
substrate, for use in a flat panel display or a solar cell. Spec. ¶ 2. The ’849
Application describes that the sheet is thin and flexible to allow for roll-to-
roll manufacturing. Id. According to the Specification, a resin film bonded to
the glass substrate by an adhesion layer prevents the glass from cracking,
while maintaining its flexibility. Id. at ¶¶ 3, 5, 6.
Claim 1 is representative of the ’849 Application’s claims and is
reproduced below from the Claims Appendix A of the Appeal Brief
(emphasis added).
1. A transparent sheet, comprising:
an inorganic glass; and
a resin film bonded onto one side, or each of both sides,
of the inorganic glass through an adhesion layer,
wherein:
the inorganic glass has a thickness of from 35 μm to 100
μm;
the adhesion layer has a single-layer thickness of more
than 10 μm and (the thickness of the inorganic glassx0.3) μm or
less;
the adhesion layer has a modulus of elasticity at 25°C of
from 2.0 GPa to 10 GPa; and
a ratio of a total thickness of the resin film to the
thickness of the inorganic glass is from 0.9 to 4.
Appeal Br. 7 (Claims Appendix A) (emphasis added).
Appeal 2019-003834
Application 14/389,849
3
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claim 1 is rejected on the grounds of nonstatutory obviousness-
type double patenting (OTDP) as unpatentable over the
combination of claims 1 and 9–11 of Hattori ’869,3 Murashige,4
and Hattori ’277.5 Final Act. 3–5.
2. Claims 1–8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Murashige and Hattori ’277. Final Act. 6–
10.
3. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Murashige, Hattori ’277, and Burroughes.6
Final Act. 10.
III. DISCUSSION
Appellant argues for reversal of all of the rejections at issue based
upon the limitations recited in claim 1. See Appeal Br. 4–5; Reply Br. 3–5.
We, therefore, select claim 1 as representative of the claims subject to these
grounds of rejections and limit our discussion to this claim. 37 C.F.R.
§ 41.37(c)(1)(iv).

3 US 8,911,869 B2, issued Dec. 16, 2014.
4 WO 2011/048861 A1, published April 28, 2011. We cite US
2012/0196103 A1, published Aug. 2, 2012, as the English-language
equivalent.
5 WO 2011/136327 A1, published Nov. 3, 2011. We cite US 2013/0032277
A1, published Feb. 7, 2013, as the English-language equivalent.
6 US 2003/0124341 A1, published July 3, 2003.
Appeal 2019-003834
Application 14/389,849
4
A. Rejection of claim 1 as unpatentable over the combination of
Hattori ’869’s claims 1 and 9–11, Murashige, and Hattori
’277.
According to Appellant, the combination of Murashige and Hattori
’277 does not describe or suggest the following limitations of claim 1: (1)
“the adhesion layer has a modulus of elasticity at 25°C of from 2.0 GPa to
10 GPa” and (2) “the adhesion layer has a single-layer thickness of more
than 10 μm.” See generally Appeal Br. 4–5; Reply Br. 3–5.
We note that Appellant does not dispute the Examiner’s findings with
respect to Hattori ’869’s claims 1 and 9–11. Neither does Appellant dispute
the Examiner’s findings that the combination of Murashige and Hattori,
either with or without Hattori ’869’s claims 1 and 9–11, describes or
suggests that the requisite modulus of elasticity is measured at 25°C. Final
Act. 5, 7; see generally Appeal Br. 4–5; Reply Br. 3–5.
For the reasons set forth below, we are not persuaded by Appellant
that Murashige’s and Hattori ’277’s combined teachings do not describe or
suggest the disputed limitations of claim 1.
First, the Examiner found Murashige teaches that resin film 11, 11′ is
bonded onto a side or both sides of inorganic glass 10 through an adhesion
layer 13, 13′. Final Act. 5 (citing Murashige ¶¶ 14, 27, 90–93; Figs. 2(a),
2(b)). The Examiner further found that Murashige’s adhesion layer 13, 13′
has a modulus of elasticity of from 1–15 GPa, which transfers stress from
resin film 11, 11′ to inorganic glass 10. Final Act. 5 (citing Murashige ¶ 93).
In other words, Murashige’s preferred modulus of elasticity for adhesion
layer 13, 13′ overlaps the claimed adhesion layer’s modulus of elasticity of
from 2.0–10 GPa.
Appeal 2019-003834
Application 14/389,849
5
Second, the Examiner found Hattori ’277 discloses that resin film 21
is bonded onto a side or both sides of inorganic glass 30 through an adhesion
layer 41 having a thickness of 0.001–20 µm. Final Act. 5 (citing Hattori ’277
¶¶ 35–43, 46–66, 82, 93). The Examiner further found Hattori ’277 teaches
that an adhesion layer 41 having this thickness possesses greater adhesive
strength over conditions in which the temperature and humidity are high.
Final Act. 5 (citing Hattori ’277 ¶ 93)).
The Examiner determined that it would have been obvious to one of
ordinary skill in the art at the time of the invention to employ the thickness
of Hattori ’277’s adhesion layer 41 for Murashige’s adhesion layer 13, 13’ in
a modified transparent sheet. Final Act. 5. The Examiner found that the
ordinarily skilled artisan would have been motivated to incorporate Hattori
’277’s adhesion layer’s thickness because doing so provides “greater
adhesive strength over high-temperature and high-humidity conditions.” Id.
(citing Hattori ’277 ¶ 93)).
Appellant argues that it would not have been obvious to one of
ordinary skill in the art at the time of the invention to combine Hattori ’277’s
and Murashige’s teachings. See generally Appeal Br. 4–5. In particular,
Appellant argues that Hattori ’277 only teaches that a thermoplastic resin
adhesive layer having a low modulus of elasticity possesses a favorable
thickness of 0.001–20 μm. Id. Appellant contrasts these teachings with
Murashige’s. According to Appellant, Murashige only teaches that a UV-
cured adhesive layer having a high modulus of elasticity possesses a
favorable thickness of less than or equal to 10 μm. Id.; see Murashige ¶ 114.
These arguments are not persuasive.
In an obviousness inquiry, the fact that a specific embodiment is
taught to be preferred is not controlling, since all disclosures of the prior art,
Appeal 2019-003834
Application 14/389,849
6
including unpreferred embodiments, must be considered. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (citing In re
Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976)); see also
In re Inland Steel Co., 265 F.3d 1354, 1361 (Fed. Cir. 2001) (explaining that
a preferred embodiment does not necessarily teach away from a non-
preferred embodiment); In re Boe, 355 F.2d 961, 965 (CCPA 1966) (all of
the disclosures in a reference, including non-preferred embodiments, “must
be evaluated for what they fairly teach one of ordinary skill in the art”).
In this case, Appellant has not identified reversible error in the
Examiner’s consideration that Murashige’s adhesion layer may be modified
to possess an unpreferred thickness greater than 10 μm. See Merck, 874 F.2d
at 807. As the Examiner found, Murashige’s preferred adhesion layer
thickness of 10 μm or less confers excellent adhesion without impairing
bending properties. Answer 12 (citing Murashige ¶ 92). Like Murashige, the
Examiner found that Hattori ’277 similarly teaches an adhesive layer with
desirable bending properties. Answer 12 (citing Hattori ’277 ¶ 8). We agree
with the Examiner that an adhesion layer having a thickness greater than 10
μm, which maintains excellent adhesion without impairing bending
properties, would have been “within the purview of Murashige’s transparent
sheet.” Answer 12; see Murashige ¶ 92.
Appellant, therefore, has not persuaded us that the Examiner
reversibly erred in determining that the ordinarily skilled artisan would have
been motivated to modify Murashige’s adhesion layer with Hattori ’277’s
adhesion layer’s thickness up to 20 μm in order to maintain flexibility and
adhesive strength under conditions of high temperature and humidity.
Answer 13 (citing Hattori ’277 ¶¶ 8, 93).
Appeal 2019-003834
Application 14/389,849
7
Appellant asserts that the Examiner’s applied prior art would not have
rendered obvious the claimed adhesive layer because the ordinarily skilled
artisan would have understood “that mechanical properties of [Hattori
’277’s] adhesive layer formed of a thermoplastic resin are quite different
from that of [Murashige’s] adhesive layer formed of a curable resin.” Appeal
Br. 4. Appellant argues that Hattori ’277: (i) discloses that the “adhesive
composition preferably contains a thermoplastic resin (B) exhibiting
compatibility with the thermoplastic resin (A)” and (ii) provides “[s]pecific
examples of the thermoplastic resin (B).” Reply Br. 3–4 (citing Hattori ’277
¶ 54). Appellant argues, on the other hand, that Murashige discloses specific
examples of an active energy ray-curable resin and a thermosetting resin as
“material[s] for constructing the adhesion layer.” Reply Br. 3 (citing
Murashige ¶ 91).
We, however, find that the Examiner’s proposed modification is
reasonable because Hattori ’277’s teachings do not limit the adhesive layer’s
material to only the preferred thermoplastic resin. See Merck, 874 F.2d at
807. Likewise, Murashige’s teachings do not limit forming the adhesive
layer from only a curable resin material. Rather, Murashige explicitly
discloses that “[a]ny appropriate resin can be adopted as a material for
constructing the adhesion layer.” Murashige ¶ 91; see In re Fritch, 972 F.2d
1260, 1264–65 (Fed. Cir. 1992) (a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in the art
would have reasonably been expected to draw therefrom).
Appellant, therefore, has not identified reversible error in the
Examiner’s determination that it would have been obvious to one of ordinary
skill in the art at the time of the invention to employ the thickness of Hattori
Appeal 2019-003834
Application 14/389,849
8
’277’s adhesion layer 41 for Murashige’s adhesion layer 13, 13’ in a
modified transparent sheet.
In view of the foregoing, we determine that the Examiner did not
reversibly err in rejecting claim 1 as unpatentable over the combination of
Hattori ’869’s claims 1 and 9–11, Murashige, and Hattori ’277.
B. Rejection of claims 1–8 as unpatentable over the combination
of Murashige and Hattori ’277.
Appellant essentially proffers the singular argument discussed above
that the combination of Murashige and Hattori ’277 does not describe or
suggest the claimed adhesion layer’s disputed limitations. See generally
Appeal Br. 4–5; Reply Br. 3–5. The Examiner understood that Appellant’s
singular argument applies to the OTDP and the § 103(a) rejections. Answer
12. Appellant does not dispute the Examiner’s understanding.
Appellant, thus, implicitly argues that the rejection of claim 1 as
unpatentable over the combination of Murashige and Hattori ’277 should be
reversed for the reasons set forth in arguing for reversal of the rejection
claim 1 as unpatentable over the combination of Hattori ’869’s claims 1 and
9–11, Murashige, and Hattori ’277.
As discussed above, we have affirmed the rejection of claim 1 as
unpatentable over the combination Hattori ’869’s claims 1 and 9–11,
Murashige, and Hattori ’277. Moreover, the Examiner also found that
the thickness for the adhesion layer 13, 13′ Murashige discloses
overlaps that for Hattori ’277’s adhesion layer 41, namely in the
range of 10 μm or less. [See Murashige ¶ 92.] Therefore, the
remainder of the broad range Hattori ’277 discloses for the
adhesion layer 41, namely more than 10 μm to 20 μm, can be
viewed as an improvement on Murashige’s disclosure in that
the additional thickness in the adhesion layer provides greater
adhesive strength in the specified conditions than a lesser
Appeal 2019-003834
Application 14/389,849
9
thickness. As such, it would have been further obvious to
modify the adhesion layer . . . Murashige discloses to have a
thickness from more than 10 μm and 20 μm or less to obtain
said increase in adhesive strength without over-compromising
transparency.
Final Act. 8 (citing Hattori ’277 ¶ 93).
The Appeal Brief does not address this finding in any way. See
Appeal Br. 4–5.
In view of the foregoing, we determine that the Examiner did not
reversibly err in rejecting claim 1 as unpatentable over the combination of
Murashige and Hattori ’277. Accordingly, we also affirm the rejection of
claims 2–8, which depend from claim 1.
C. Rejection of claim 8 as unpatentable over the combination of
Murashige, Hattori ’277, and Burroughes.
For the reasons set forth above, Appellant implicitly relied upon the
same unpersuasive arguments that the rejection of claim 8 as unpatentable
over the combination of Murashige, Hattori ’277, and Burroughes should be
reversed because the Examiner has not established a prima facie case of
obviousness with respect to independent claim 1. See generally Appeal Br.
4–5; Reply Br. 3–5. As discussed above, we have affirmed the rejections of
claim 1. We, therefore, also affirm the rejection of claim 8, which depends
from claim 1.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1
Hattori ’869’s claims 1, 9–11,
Murashige, Hattori ’277
Obviousness Type Double
Patenting
1
Appeal 2019-003834
Application 14/389,849
10
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8 103(a) Murashige, Hattori ’277 1–8
8 103(a) Murashige, Hattori ’277, Burroughes 8
Overall Outcome 1–8
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