DAIKIN INDUSTRIES, LTD.

Patent Trials and Appeals Board

Oct 13, 2021

2020006329 (P.T.A.B. Oct. 13, 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.
15/322,832 12/29/2016 Meiten KOH Q229936 9631
23373 7590 10/13/2021
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 9000
WASHINGTON, DC 20006
EXAMINER
FREEMAN, JOHN D
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
10/13/2021 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
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MEITEN KOH and KOUJI YOKOTANI
____________

Appeal 2020-006329
Application 15/322,832
Technology Center 1700
____________
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
GEORGE C. BEST, 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, 2, and 4–11 of Application
15/322,832. Final Act. (June 28, 2019). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Daikin Industries, Ltd., as the real party in interest. Appeal Br. 2.
Appeal 2020-006329
Application 15/322,832
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I. BACKGROUND
The ’832 Application describes transparent conductive films they can
be used in flexible displays and flexible touch screens. Spec. ¶ 2. Claim 1—
the only independent claim on appeal—is reproduced below from the
Appeal Brief’s Claims Appendix.
1. A film comprising
a fluorinated polyimide layer having a total haze value of
4 or lower, a yellowness index of 3 or lower, and a total
luminous transmittance of 90% or higher, and
which has at most 10 optical defects having a diameter of
0.15 mm or greater per square meter.
Appeal Br. 14.
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 4–6, and 9–11 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as
unpatentable over Hougham.2 Final Act. 2.
2. Claims 7 and 8 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Hougham and Kohn.3 Final Act. 4.

2 US 5,324,813, issued June 28, 1994. During prosecution, both the
Examiner and Appellant erroneously referred to this reference as
“Houghman.” See Answer 6 (noting mistake).
3 US 4,929,405, issued May 29, 1990.
Appeal 2020-006329
Application 15/322,832
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III. DISCUSSION
A. Rejection of claims 1, 2, 4–6, and 9–11 as anticipated by or, in the
alternative, unpatentable over Hougham
Appellant limits its arguments for reversal of this rejection to claim 1.
Appeal Br. 5–13. We, therefore, select claim 1 as representative of the
claimed subject to this ground of rejection and limit our discussion
accordingly. 37 C.F.R. § 41.37(c)(1)(iv) (2019).
The Examiner rejected claim 1 as anticipated by or, in the alternative,
obvious over Hougham. Final Act. 2. In doing so, the Examiner found that
Hougham describes fluorinated polyimides useful for forming films. Id. The
Examiner further found that Hougham was silent regarding the claimed
optical properties of the polyimide films. Id. The Examiner, however, found
that Hougham described manufacturing its polyimide by the same repeated
precipitation method used in the ’832 Application. Id. Based on this finding,
the Examiner found that Hougham’s fluorinated polyimide films inherently
possess the claimed optical properties. Id.
Appellant argues that Hougham does not produce its films by the
same method used in the ’832 Application and that, therefore, the
Examiner’s finding that Hougham’s fluorinated polyimide films possess the
claimed optical properties is erroneous. Appeal Br. 5–13.
Thus, resolution of this appeal turns on the single question of whether
the Examiner correctly found that Hougham describes manufacturing
fluorinated polyimide films by substantially the same method described in
the ’832 Application. Because Hougham does not describe or suggest
manufacturing fluorinated polyimide films in this manner, we reverse the
rejection of claim 1.
Appeal 2020-006329
Application 15/322,832
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The ’832 Application’s method for manufacturing fluorinated
polyimide films may be summarized as follows:
1. Produce the polyimide by a solution phase polymerization
reaction, using N-methyl-2-pyrrolidone (NMP) as a solvent,
2. Purify the polyimide by adding the NMP solution to water
dropwise, causing the polyimide to precipitate,
3. Collect the polyimide by filtration,
4. Dissolve the precipitated polyimide in NMP and repeat steps 2
and 3, reprecipitating the polyimide five times, and
5. Dissolve the purified polyimide in a suitable solvent and cast a
polymer film.
Spec. 32–34.
The Examiner relies upon Hougham’s method for bulk manufacture
of fluorinated polyimides. Final Act. 5 (citing Hougham 2:59 et seq.; 4:50 et
seq.; 5:24 et seq.; 13:30 et seq.). This method may be summarized as
follows:
1. Perform a solution phase oiligomerization reaction in NMP,
2. Evaporate the solvent, producing an oligomer film,
3. Heat the oligomer film to conduct a solid state chain extension
reaction,
4. Redissolve the film in a suitable solvent,
5. Precipitate and collect the polyimide,
6. Heat the collected polyimide to conduct a solid state chain
extension reaction,
7. Repeat steps 4–6 until a polymer of the desired length is
produced, and
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Application 15/322,832
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8. Dissolve the polyimide in a suitable solvent and cast a polymer
film.
Hougham 4:28–5:66; 13:31–44; Figs. 1, 2.
As set forth above, the ’832 Application’s method uses a re-
precipitation to purify the final product of the polymerization process. The
Specification describes this as an important step in the manufacturing
process. Spec. ¶ 92. According to the Specification, purification by re-
precipitation reduces the amount of ammonium ion present in the fluorinated
polyimide polymer, thereby improving the optical properties of the film
produced from the fluorinated polyimide. Id. In particular, the Specification
teaches that the total haze value and yellowness index are improved by
reducing the amount of ammonium ion present. Id. ¶¶ 92–93; 121 – 129.
Data presented in the Specification also shows that reducing the amount of
ammonium ion is correlated with the decrease in the number of defects in
the film made from the fluorinated polyimide. Id. ¶¶ 142 – 144.
Hougham, on the other hand, uses repeated precipitation of the
partially-synthesized polyimide to realign the end groups of the polymer
chains so that a subsequent additional curing step results in additional chain
extension. See Hougham 4:43–5:15. Hougham is silent as to whether its
precipitation processes purify the intermediate polyimide products prior to
each curing step. Hougham also is silent regarding any purification of the
final polyimide product prior to film formation. Finally, Hougham does not
describe the effects of any impurities present in the fluorinated polyimide
film on the film’s properties.
In view of the foregoing, we find that Hougham does not describe a
fluorinated polyimide film produced by the method described in the ’832
Application. Thus, Hougham does not anticipate claim 1. Nor does
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Application 15/322,832
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Hougham contain sufficient disclosure to suggest the use of re-precipitation
to purify a fluorinated polyimide prior to producing an optical film.
Hougham, therefore, does not render the subject matter of claim 1 obvious.
For the reasons set forth above, we determine that the Examiner
reversibly erred in rejecting claim 1 as anticipated by or, in the alternative,
obvious over Hougham. We, therefore, also reverse the rejection of claims 2,
4–6, and 9–11.
B. Rejection of claims 7 and 8 as unpatentable over the combination of
Hougham and Kohn
Appellant relies on its arguments with respect to claim 1 in arguing
for reversal of this rejection. See Appeal Br. 13. Because we have reversed
the rejection of claim 1 and Kohn does not cure the defects in that rejection,
we also reverse the rejection of claims 7 and 8.
IV. CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–6, 9–11 102(a)(1) Hougham 1, 2, 4–6, 9–11
1, 2, 4–6, 9–11 103 Hougham 1, 2, 4–6, 9–11
7, 8 103 Hougham, Kohn 7, 8
Overall Outcome 1, 2, 4–11
REVERSED