Ex Parte 7018704 et al

Patent Trial and Appeal Board

Nov 8, 2013

95001707 (P.T.A.B. Nov. 8, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,707 08/15/2011 7018704 111039RX 8559
38834 7590 11/12/2013
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
11/12/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SKC KOLON PI, INC.
Requester

v.

KANEKA CORPORATION
Patent Owner and Appellant
____________

Appeal 2013-007390
Reexamination Control 95/001,707
Patent 7,018,704 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL

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This is a decision on appeal by the Patent Owner from the Patent
Examiner’s decision to reject pending claims 1-11 in an inter partes
reexamination of U.S. Patent 7,018,704 B2. The Board’s jurisdiction for
this appeal is under 35 U.S.C. §§ 6(b), 134, and 315.
We AFFIRM.
I. BACKGROUND
The patent in dispute in this appeal is U.S. Patent 7,018,704 B2
(hereinafter, “the ’704 Patent”), which issued March 28, 2006. The claims
are drawn to a polyimide film for use as an insulating material for a flexible
printed circuit. ’704 Patent, col. 1, ll. 17-60.
A request for inter partes reexamination under 35 U.S.C. §§ 311-318
and 37 C.F.R. §§ 1.902-1.997 for the ‘704 Patent was filed August 12, 2011
by a Third-Party Requester (Request for Inter Partes Reexamination). The
Third-Party Requester is SKC Kolon PI, Inc. Requester Respondent Brief 1,
dated January 28, 2013 (hereinafter “Req. Res. Br.”). The Patent Owner is
the Kaneka Corporation. Patent Owner Appeal Brief 2, dated December 26,
2012 (hereinafter “PO App. Br.”). Claims 1-11 are pending and stand
rejected. An oral hearing was held September 11, 2013. A transcript of the
hearing will be entered into the record in due course.
Patent Owner appeals the Examiner’s decision to reject claims 1-11
under 35 U.S.C. § 102 and § 103 and the rejection of claims 4 and 5 under
35 U.S.C. § 112 and 314, as set forth below.
II. REJECTIONS
The Examiner maintains the following rejections:
1. claims 4 and 5 under 35 U.S.C. § 112, second paragraph for being
indefinite. RAN 7-8.
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2. claims 4 and 5 under 35 U.S.C. § 112, first paragraph, for failing to
comply with the written description and enablement requirements.
RAN 9-10.
3. claims 4 and 5 under 35 U.S.C. § 314(a) for enlarging the scope of the
originally patented claims. RAN 10.
4. claims 1-2, 4 and 6-11 under 35 U.S.C. § 102(b) as anticipated by or,
in the alternative, under 35 U.S.C. § 103(a) as obvious over Akahori.1
RAN 11-15.
5. claims 1-2, 4 and 6-11 under 35 U.S.C. § 103(a) as obvious over
Sawasaki2 in view of Yuyama.3 RAN 18-22.
6. claims 1-2, 4 and 6-11 under 35 U.S.C. § 103(a) as obvious over Ono
’8444 in view of Yuyama. RAN 25-28.
7. claims 1-2, 4 and 6-11 under 35 U.S.C. § 103(a) as obvious over
Uhara ’0545 in view of Ono ’844. RAN 31-34.
8. claims 1-2, 4 and 6-11 under 35 U.S.C. § 103(a) as obvious over
Yuyama in view of Uhara ’054. RAN 36-39.
9. claims 1-2, 4, 6-11 under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, with respect to only claims 7-10 under 35 U.S.C. §
103(a) as obvious over Hino, as evidenced by Ono ’844. Ran 42-45.
10. claims 1-2, 4, and 6-11 are unpatentable under 35 U.S.C. § 103(a) as
obvious over Ono ’844 in view of Yamaguchi. RAN 50-52.
11. claims 1-2, 4, and 6-11 are unpatentable under 35 U.S.C. § 103(a) as
obvious over Ono ’844 in view of Uhara ’179. RAN 55-57.

1 US Patent 5,081,229, issued January 14, 1992, to Kiyokazu Akahori et al.
(“Akahori”).
2 US 6,277,495 B1, issued August 21, 2001, to Koichi Sawasaki et al.
(“Sawasaki”).
3 US Published Application 2002/0012780 A1, published January 31, 2002,
in the name of Masahiro Yuyama (“Yuyama”).
4 US 6,350,844 B1, issued February 26, 2002, to Kazuhiro Ono et al.
(“Ono ’844”).
5 US Published Application 2002/0045054 A1, published April 18, 2002, in
the name of Kenji Uhara et al. (“Uhara ’054”).
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Claims 3 and 5 stand rejected over the above identified prior art
further in view of Kataoka,6 as evidenced by Apical NP, 7 or further in view
of Merchant.8 Claim 11 stands rejected over the above identified prior art
further in view of either Ono ’7399 or JP ’442.10 Patent Owner has not
advanced separate, substantive arguments against the rejections of claims 3,
5, and 11. See PO App. Br. 23, 25, 27, 28-29, 30, 32-33. Accordingly, these
claims stand or fall together with the rejections of claims 1 and 6.
Patent Owner relies on the Declaration of Kousuke Kataoka dated
December 27, 2011 (hereinafter “Kataoka Decl.”). Mr. Kataoka is
employed by the Patent Owner and is a named inventor of the Kataoka
reference, which is directed to printed circuit having a polyimide film.
Kataoka Decl. ¶ 1-2; see also Kataoka, Abstract. We find Mr. Kataoka
qualified to testify as to the state of the art of using polyimide films for
printed circuit applications at the time of the invention.
Patent Owner also relies on the Declaration of Dr. Frank W. Harris
dated July 30, 2012 (hereinafter “Harris Decl.”). Dr. Harris testifies as to
being “an expert on the polyimide compositions and methods relevant to the

6 US 5,637,382, issued June 10, 1997, to Kosuke Kataoka et al. (“Kataoka”).
7 Kaneka Corporation, product data sheet for Apical®NP, undated
(“Apical NP”). We note that Patent Owner does not contest that Apical NP
represents prior art.
8 H.D. Merchant, “Fatigue Life Statistics for 18µm Foil Based Flexible
Circuits,” Flexcon ’98, Sunnyvale, CA, September 1998 (“Merchant”).
9 US 6,207,739 B1, issued March 27, 2001, to Kuzuhiro Ono et al.
(“Ono ’739”).
10 JP 2000-326442A, published November 28, 2000 (“JP ’422”). The
Examiner references US 6,586,081 B1, issued July 1, 2003, to Masaru
Nishinaka et al. as an English language equivalent disclosure.
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’704 patent.” Harris Decl. ¶ 2. Dr. Harris’s curriculum vitae demonstrates
direct experience with structures and properties of polyimide films, but does
not demonstrate any particular experience regarding using polyimide films
for printed circuits. See generally Harris Decl., Exhibit A. Accordingly, we
find Dr. Harris qualified to testify as to the state of the art of polyimide
structures, properties, and processing.
The Requester relies on the Declaration of Dr. Edwin L. Thomas
dated January 27, 2012 (hereinafter “First Thomas Decl.”) and a second
Declaration of Dr. Thomas dated August 29, 2012 (hereinafter “Second
Thomas Decl.”). Dr. Thomas testifies to experience in polymer-property-
processing relationships. First Thomas Decl. ¶ 2 and Exhibit A (curriculum
vitae).11 We find Dr. Thomas qualified to testify as to the state of the art of
polymer structures, properties and processing, and their relationship to each
other generally. However, we note that Dr. Thomas has provided no
indication of any particular experiences directed to polyimide films,
particularly polyimide films for use in printed circuits.

III. CLAIMS
Claim 1 is an original claim and is representative of the subject matter
on appeal (indentations added for clarity):
1. A polyimide film for flexible printed circuit, having
an average coefficient of thermal expansion of 1.0xl0-5 to
2.5xl0-5 cm/cm/°C. in temperature range of 100°C. to 200°C.
and
a stiffness value of 0.4 to 1.2 g/cm

11 See Req. Res. Br., Evidence App’x 2, Exhibits Q.
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where the polyimide is obtained from diamine containing
4,4'-oxydianiline and paraphenylenediamine
in a mole ratio of 9/1 to 4/6.
PO App. Br. 35, Claim App’x.
Claim 4 is an amended dependent claim, which reads as follows (with
underlining showing language added by amendment):
4. A polyimide film for a flexible printed circuit comprising
an adhesive layer and/or a conductor layer and an insulation
material, wherein the polyimide film of claim 1 is used as said
insulation material.
Id.
Claim 6 is a new independent claim, which reads as follows (with
indentations for clarity):
6. A polyimide film for flexible printed circuit, having
an average coefficient of thermal expansion of 1.0xl0-5 to
2.5xl0-5 cm/cm/°C. in temperature range of 100°C. to 200°C.
and
a stiffness value of 0.4 to 1.2 g/cm, the stiffness value
being measured using a loop stiffness tester,
where the polyimide is obtained from diamine containing
4,4'-oxydianiline and paraphenylenediamine
in a mole ratio of 9/1 to 4/6.
Id. at 36.

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IV. REJECTION OF CLAIMS 4 AND 5
UNDER 35 U.S.C. § 112 and 35 U.S.C. § 314
Claims 4 and 5 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description and enablement
requirements and under 35 U.S.C. § 112, second paragraph, as being
indefinite. RAN 6-10.
The issue with respect claims 4 and 5 turns on claim interpretation.
The Requester takes the position that the amendment to claim 4 has two
possible interpretations depending upon whether the term “comprising”
refers back to the “polyimide film” or whether it refers back to the “printed
circuit.” Req. Res. Br. 2.
If the word “comprising” modifies the “printed circuit,” Requester
argues that the claim is directed to a generic polyimide film that is suitable
for use in a printed circuit having the recited properties. Id. Under such an
interpretation, Requester contends that the claims would lack written
descriptive support and not be enabled because the Specification of the ’704
Patent does not describe or enable all polyimide films for use with a printed
circuit, but rather only a film with the properties recited in claim 1. Id. at 3.
Further, Requester argues that a generic polyimide film is broader in scope
that the original claims, which only recited a polyimide film having the
properties of claim 1. Id. at 4.
If the word “comprising” modifies the “polyimide film,” Requester
argues that the claim is directed to a polyimide film having an adhesive layer
and/or conductive layer and an insulation material, as recited in the claims.
Id. at 2. Under such an interpretation, the claim would lack written
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descriptive support because the Specification does not describe a multi-
layered polyimide film only a multi-layered printed circuit. Id. at 3. Further,
Requester argues that a multi-layered polyimide film is broader in scope that
the original claims, which only recited a polyimide film having the
properties of claim 1. Id. at 4.
The Examiner adopts the Requester’s interpretations and determines
that claim 4 is indefinite (for having two interpretations), lacks written
descriptive support, and has an enlarged scope. RAN 7-10.
Patent Owner contends that claim 4, as amended, recites that the
printed circuit has an adhesive layer and/or conductive layer and an
insulating material. According to the Patent Owner, “the ‘polyimide film’ is
further defined as being suitable for the insulation layer and as having the
properties recited in claim 1.” PO App. Br. 6.
We cannot agree with the Patent Owner’s interpretation of the
amendment to claim 4. Under Patent Owner’s interpretation, the printed
circuit includes an adhesive layer and/or conductive layer and a insulating
material wherein the recited polyimide film is suitable for use as the
insulation material of the printed circuit and has the properties in claim 1.
Patent Owner’s position is inconsistent with the shift in focus from the
printed circuit to the polyimide film by the amended language of claim 4.
We adopt Requester’s alternative interpretation as being the most
reasonable interpretation of claim 4 as amended, i.e., that the film comprises
the recited layers and insulation material which are separate from the printed
circuit. This interpretation is also logical because otherwise the amendment
to the claim would have been superfluous because the scope would have
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been substantially unchanged. Accordingly, we agree with Requester that
amended claim 4 is contrary to the disclosure in the ‘704 Patent, which only
discusses the polyimide film as an insulating material and discusses the
flexible printed circuit as including the adhesive and/or conductor layer and
an insulating material (Col. 1, ll. 53-57). Thus, we agree with the Requester
and the Examiner that the amendment to claim 4 renders the claim indefinite
and, as interpreted on its face, lacking in written descriptive support, lacking
enablement and expanded in scope for the reasons identified by Requester.
Claim 5, which is dependent upon claim 4, suffers from the same
problems as claim 4.
Accordingly, we affirm the rejections of claims 4 and 5 under 35
U.S.C. § 112 and 35 U.S.C. § 314.

V. ANTICIPATION AND OBVIOUSNESS BASED ON AKAHORI
Claims 1, 2, 4, and 6-11 stand rejected as anticipated under 35 U.S.C.
§ 102(b) or, alternatively, as obvious under 35 U.S.C. § 103(a) over
Akahori. RAN 11-15.
The ’704 Patent is the subject matter of a litigation in U.S. District Ct.
for the Central District of California styled Kaneka Corp v. SKC Kolon PI
and SKC Inc., Case No. 2:11-cv-03397-JHN-RZX. Req. Res. Br. 1. The
Central District of California case was stayed pending the resolution of a
matter before the International Trade Commission (ITC) styled In the Matter
of Certain Polyimide Films, Products Containing Same, and Related
Methods - Inv. No. 337-TA-772. See Litigation Search Report entered into
the record on August 15, 2011. On May 10, 2012, an Administrative Law
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Judge at the ITC entered an Initial Determination finding that claim 1 of the
’704 Patent was indefinite under 35 U.S.C. § 112, second paragraph,12 and
that Akahori did not anticipate or render obvious claim 1. See Initial
Determination 54-61 and 141-144.13 On June 11, 2012, the ITC entered a
Commission Opinion but did not review the Judge’s conclusions regarding
the ’704 Patent. See Commission Opinion 3. Upon resolution of the ITC
action, the Central District of California has lifted the stay but has entered no
final judgment that might affect our decision.

12 The judge in the ITC decision provided an extensive explanation as to
why the phrase “average coefficient of thermal expansion” is indefinite. See
Initial Determination 54-61. The issue of indefiniteness of claim 1 is not
before us for determination, as reexamination for originally issued claims is
limited to prior art issues. 35 U.S.C. §§ 311(a), 301. (2002), (1980). Thus,
despite the ITC determination, we render an opinion on the patentability of
claim 1 based on the application of prior art under 35 U.S.C. §§ 102(b) and
103(a).
13 The ITC does not apply the broadest reasonable interpretation standard to
claim interpretation and operates under a heightened evidentiary standard.
See Initial Determination 5-9 and 82. We are not bound by, and it would not
be appropriate for us to defer to, the ITC initial determination. See In re
Baxter Intern., Inc., 678 F.3d 1357, 1364 (Fed. Cir. 2012) (“[T]he PTO in
reexamination proceedings and the court system in patent infringement
actions ‘take different approaches in determining validity and on the same
evidence could quite correctly come to different conclusions.’ In particular,
a challenger that attacks the validity of patent claims in civil litigation has a
statutory burden to prove invalidity by clear and convincing evidence.
Should the challenger fail to meet that burden, the court will not find the
patent ‘valid,’ only that ‘the patent challenger did not carry the ‘burden of
establishing invalidity in the particular case before the court.’ In contrast, in
PTO reexaminations ‘the standard of proof—a preponderance of the
evidence—is substantially lower than in a civil case’ and there is no
presumption of validity in reexamination proceedings.”) (internal citations
omitted).
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Claim 1 and 6 are directed to a polyimide film made from a particular
mole ratio of 4-4'-oxydianiline and paraphenylenediamine having two
properties (1) an average coefficient of thermal expansion of 1.0x10-5 to
2.5x10-5 cm/cm/°C. in temperature range of 100°C. to 200°C. and (2) a
stiffness value of 0.4 to 1.2 g/cm. Claim 6 particularly requires the property
of a stiffness value of 0.4 to 1.2 g/cm as measured using a loop stiffness
tester.
The Requester’s proposed rejections, adopted by the Examiner,
including the rejection based on Akahori, are based on a statement in the
’704 Patent that “[t]he stiffness value is determined by kx(film
thickness)3x(elastic modulus of the film) (k is a proportional constant).” See
RAN 12, Req. Res. Br. 5; ’704 Patent, col. 2, ll. 7-8. From this statement,
the Respondent used the stiffness loop testing data, the elastic modulus and
the “average thickness,” Xave (µm), reported in the examples of the ’704
Patent and calculates a “k” value using linear regression of 1.85 x 10-7
without the comparative examples and a “k” value of 1.75 x 10-7 including
the comparative examples. RAN 12 and 63; Req. Res. Br., Evidence App’x,
App’x 1 and Updated App’x 1. Using the linear regressed “k” values, the
Requester calculated stiffness values based on the thickness and elastic
moduli disclosed in the prior art. See e.g., RAN 63 and Req. Res. Br.,
Evidence App’x, App’x 2 and Revised App’x 2.
Patent Owner argues that the stiffness value is a property which can
only be measured experimentally by methods such as the loop stiffness tester
described in the ’704 Patent and that the Examiner erred in creating a “k”
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value from the data of the ’704 Patent to determine a stiffness value for the
polyimide films of the prior art. PO App. Br. 8.
Even if the stiffness value of a film is a property of a polyimide film
that is experimentally measured by a loop stiffness tester, every polyimide
film, provided that it was placed on a stiffness loop tester as described for
the films in the ’704 Patent, inherently would have a measured stiffness
value property. However, since the Patent and Trademark Office does not
have before it the means to test a polyimide film in the prior art to determine
if a polyimide film having the claimed stiffness value was, in fact, already
present in polyimide films described in the prior art, the Office routinely
relies on alternative evidence in order to determine whether an inherent
property is present in the prior art.
In general, a limitation is inherent if it is the “natural result flowing
from” the explicit disclosure of the prior art. Schering Corp. v. Geneva
Pharms., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Where the Examiner has
reason to believe that a claimed property may, in fact, be an inherent
characteristic of the prior art product, an Examiner possesses the authority to
require applicant to prove that the subject matter shown to be in the prior art
does not in fact possess the property. In re Best, 562 F.2d 1252, 1254-55
(CCPA 1977). However, before applicant can be put to this burdensome
task, the Examiner must provide enough evidence or scientific reasoning to
establish that the Examiner’s belief that the property is inherent is a
reasonable belief. Ex parte Levy, 17 USPQ2d 1461, 1464-65 (BPAI 1990);
Ex parte Skinner, 2 USPQ2d 1788, 1789 (BPAI 1986). We determine that
the Requester’s calculations based on the data from the ’704 Patent is
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sufficient factual evidence and scientific reasoning to support a finding
regarding an unstated property of the prior art polyimide films.
Though the inventors of the ’704 Patent may have been the first to
recognize that a polyimide film having a loop stiffness value of between 0.4
and 1.2 g/cm is particularly desirable for use in a flexible printed circuit, the
evidence supports the Examiner’s determination that polyimide films that
inherently have such a loop stiffness value were known in the art for use in
printed circuits prior to the inventor’s recognition. The inventors chose to
claim a polyimide film having a particular property that was inherently
present but not recognized in the prior art. The new realization alone does
not render what is taught in the prior art patentable. In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (“[i]nherency is not
necessarily coterminous with knowledge of those of ordinary skill in the art.
Artisans of ordinary skill may not recognize the inherent characteristics or
functioning of the prior art.”); Atlas Powder Co. v. Ireco, Inc., 190 F.3d
1342, 1347 (Fed. Cir. 1999) (“[T]he discovery of a previously unappreciated
property of a prior art composition, or of a scientific explanation for the
prior art’s function, does not render the old composition patentably new to
the discoverer.”).
We agree with the Requester that it was reasonable for the Examiner
to rely on the data of the ’704 Patent in calculating a “k” value and using
that “k” value to produce additional evidence that the polyimide films in the
prior art relied upon inherently have a stiffness value falling within the
claimed range. Requester presents sufficient evidence that the Requester’s
linear regression is an appropriate way to determine a proportionality
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constant from a scattering of data. See e.g. Tomioka, “Bend stiffness of
copper and copper alloy foils,” J. Mat. Proc. Tech., Vol. 146, pp. 232, Figure
10 (2004).14 Indeed, even Patent Owner’s expert, Dr. Harris states that “I
agree with Dr. Thomas’ general approach” to determine a regressive slope of
a line of the plotted data to determine a proportionality constant. Harris
Decl. ¶¶ 15-17.
Patent Owner argues that, despite the express statement in the ’704
Patent that “k is a proportional constant,” “k” is not a true constant. PO
App. Br. 9; PO Reb. Br. 3. The evidence does not support Patent Owner’s
position. The ’704 Patent states that “[t]he stiffness value is determined by
kx(film thickness)3x (elastic modulus of the film) (k is a proportional
constant).” ’704 Patent, col. 2, ll. 7-8. The ’704 Patent expressly defines
“k” as a “proportional constant.” Further, Requester produced evidence that
the formula presented in the ’704 Patent was a general formula known in the
art not only for polymer film stiffness but also for determining stiffness for
other materials as well. See First Thomas Decl. ¶¶ 7-8 and attached Exhibits
B-D.15 Accordingly, we credit the express statement in the ’704 Patent that
“k” is a constant, which is supported by a preponderance of the evidence.
Patent Owner, relying on the statements of Dr. Harris, argues that
materials and process conditions affect the elastic modulus, and as a result
would affect the calculated “k” value. See PO App. Br. 13 and 16-19 (citing
Harris Decl. ¶¶ 7-8, 17, and 20-22).

14 The Tomioka article was attached as Exhibit D of the Thomas
Declaration. See Req. Res. Br., Evidence App’x 2, Exhibit T.
15 See Req. Res. Br., Evidence App’x 2, Exhibits R-T.
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Even accepting Dr. Harris’s testimony, the formula provided in the
’704 Patent defines the elastic modulus to be a different contributing
variable in determining stiffness apart from the “k” value, which is defined
as a “proportional constant.” Patent Owner has not explained why the
differences in elastic modulus would not adequately account for the
differences in various polyimide products and processing conditions in the
formula provided in the ’704 Patent.
Patent Owner also argues that “the k value is not unvarying” because
it “depends on starting materials and preparation process conditions,” the
“k” value only would be reflective of the particular type of stiffness loop
tester and the precise procedures used to determine a stiffness value
described in the ’704 Patent, and, thus, the “k” value would not be indicative
of stiffness testing using different procedures or devices. PO App. Br. 9 and
14-15; PO Reb. Br. 3.
The evidence shows that a particular “k” value may change depending
upon the equipment and stiffness loop tester procedure. For example, Dr.
Thomas testifies that
[T]he proportionality constant “k” is a constant for a particular
test protocol. Thus, the value for “k” will depend only on the
details of the test, such as the film geometry, sample size, etc. A
person of ordinary skill in the art would understand that in order
to conduct a test to calculate the stiffness among a variety of
thin films, one would have to take efforts to ensure that certain
testing variables remain constant. For example, when
conducting a loop stiffness test for a thin film, these variables
include the sample size of the film, i. e., the width and the
length, and the operating conditions of the test, such as the size
of the loop and squash distance.
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First Thomas Decl. ¶ 10. Patent Owner’s expert agrees with the statement.
Harris Decl. ¶ 12.
Thus, because the “k” value was calculated using loop stiffness tester
data collected using the precise protocols stated in the ’704 Patent (see ’704
Patent, col. 6, ll. 1-6), the calculations performed by the Requester reflect
what the stiffness value of the polyimide film of Akahori would be if
performed to the exact same stiffness loop tester procedures stated therein.
Accordingly, without having available stiffness loop testing data using the
precise specifications described in the ’704 Patent, using the calculated “k”
value provides the best evidence of a film’s stiffness tested under such
conditions. Accordingly, the Requester’s calculations are also sufficient
evidence that the polyimide films suggested by Akahori inherently have the
stiffness loop value recited in claim 6 as measured on a stiffness loop tester
using the protocols of the ’704 Patent.
Patent Owner also argues that the elastic modulus and thickness are
values that are experimental in nature and thus the data used to derive “k”
and the data from the prior art cannot be compared, since the prior art is
silent as to how the elastic modulus is determined. PO App. Br. 15-16. For
example, Dr. Harris testifies that “one cannot compare an elastic modulus
given in another patent to that given in the ’704 when there is no way to
determine if they were obtained using the same equipment, variables and
procedures.” Harris Decl. ¶ 13.
However, Patent Owner has presented no persuasive evidence to
suggest that the recitation of elastic modulus values in the ’704 Patent and in
the prior art are not in fact comparable, even if determined experimentally.
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To the contrary, Requester has presented evidence that measurements of
elastic modulus are standard in the prior art. Second Thomas Decl. ¶ 4 and
Exhibit A (citing ASTM-D88216).
The ’704 Patent further defines the “thickness” as being “the average
of ten points measured in equal intervals in the longitudinal direction from
the center area by a constant thickness meter.” Id., col. 2, ll. 16-23. The
’704 patent uses the value “Xave” as being this experimentally determined
average thickness. Id., col. 2, l. 32. In other words, the ’704 Patent
recognizes the thickness variations in a particular sample of polyimide film.
The ’704 Patent further provides Xave data, elastic modulus and stiffness
loop testing data for twelve example polyimide films and two comparative
example polyimide films, having different compositions. Id. col. 6, l. 35 to
col. 42; Table 1; PO App. Br. 16.
Patent Owner contends that Akahori does not teach average
thicknesses as taught by the ’704 Patent. PO App. Br. 11 and 19-22; see
generally Akahori. Rather Akahori teaches that the polyimide films of the
examples have a thickness of 15 to 25 µm. Id., col. 8, ll. 26-28 and col. 9, ll.
46-48. The Examiner found that for an average thickness of 20 µm and an
elastic modulus of 380 kg/mm2 as taught by Akahori’s Example 7, that the
polyimide film would inherently have a stiffness value of either 0.56 g/cm or
0.53 g/cm, depending up whether the comparative examples were included
in calculating the “k” value, respectively.17 Further, the Examiner concluded

16 See Req. Res. Br., Evidence App’x 2, Exhibit W.
17 The Requester used a small sample of data in calculating the “k” value,
and we appreciate that with additional data points, the actual “k” value may
vary somewhat from the “k” value determined with the limited data
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that it would have been obvious to one of ordinary skill in the art at the time
of the invention to have prepared the polyimide film of Akahori’s Example 7
such that it has an average thickness of 20 µm and an elastic modulus of 380
kg/mm2, as it is clearly within the scope of Akahori’s disclosure, and that
such a film would inherently have a stiffness value within the range claimed.
RAN 14.
Because Akahori does not disclose an average thickness, based on the
measurement of 10 points on a film sheet, exactly in the manner described in
the ’704 Patent, we cannot find that Akahori teaches an average thickness, or
Xave, as recited in the ’704 Patent. Accordingly, Akahori does not support a
finding that Akahori describes with sufficient specificity a polyimide film
having an average thickness of 20 µm that would inherently have a stiffness
value within the range claimed.
However, based on the teaching in Akahori of an actual thickness
ranging from 15 to 25 µm, we find that sufficient evidence that a polyimide
film prepared using the process taught by Example 7 of Akahori having an
average thickness measured as directed by the ’704 Patent of approximately
20 µm would have been obvious to one of ordinary skill in the art. See
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (discovery

available in the ’704 Patent. However, the Requester’s calculations, which
use a “k” value both with and without the data from the comparative
examples, show that minor difference in the “k” value does not substantially
change the stiffness value for a polyimide film having an average thickness
of 20 µm and an elastic modulus of 380 kg/mm2. Thus, even if the “k” value
would be somewhat different with the inclusion of additional data points, we
find sufficient evidence that the actual stiffness value for a polyimide film
having an average thickness of 20 µm and an elastic modulus of 380 kg/mm2
would nonetheless still fall within the range recited in the claims.
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of an optimum value of a variable in a known process is usually obvious); In
re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[I]t is not inventive to discover
the optimum or workable ranges by routine experimentation.”).
Further, the calculations provided by Requester are sufficient
evidence and reasoning to conclude that a film with such an average
thickness would have a stiffness value falling within the scope of the
claimed range. See In re Skoner, 517 F.2d 947, 950-51 (CCPA 1975)
(“Appellants have chosen to describe their invention in terms of certain
physical characteristics.... Merely choosing to describe their invention in this
manner does not render patentable their method which is clearly obvious in
view of [the reference].”) (internal citation omitted).
The polyimide films disclosed or suggested by the prior art have a
stiffness value as a property of the film. That stiffness value is a measured
value using a specific protocol described in the ’704 Patent. The ’704 Patent
and Patent Owner’s experts identify that the recited stiffness value is
affected by the elastic modulus, the thickness of the film and the particular
testing protocol. Because the prior art suggests a film having an average
thickness of approximately 20 µm and having an elastic modulus of 380
kg/mm2, the calculations of Requester, for the reasons discussed above,
provide sufficient evidence and reasoning to support a finding that the
polyimide films suggested by the prior art inherently have a stiffness value
within the claimed range and to shift the burden to Patent Owner to show
that the actual measured stiffness value of the film suggested by the prior art
does not have the stiffness value claimed. In re Spada, 911 F.2d 705, 708
(Fed Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the
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products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.”).
Patent Owner further contends that Akahori fails to disclose a
polyimide film having an average coefficient of thermal expansion of
1.0x10-5 to 2.5x10-5 cm/cm/°C. in a temperature range of 100°C. to 200°C.
PO App. Br. 21-22. Dr. Harris testifies that if the coefficients of thermal
expansion had been determined over the range of 100°C. to 200°C, instead
of only at 200°C, “their values would have been lower.” Harris Decl. ¶ 26.18
Akahori generally teaches copolyimide films having a linear thermal
expansion coefficient of 2.5 x 10-5 or less at 50 to 300°C. Akahori, col. 4, ll.
18-23 and col. 7, ll. 52-54. Additionally, Example 7 of Akahori also teaches
a polyimide film having a coefficient of thermal expansion at 200°C of 1.87
x 10-5 cm/cm/°C and an elastic modulus of 380 kg/mm2. Id., col. 13-14,
Table 1.
While the polyimide of Example 7 may have an average coefficient of
thermal expansion over the range of 100 °C to 200 °C that is lower than
when measured only at 200 °C, Patent Owner has provided no meaningful
evidence to support a conclusion that the lower average coefficient of
thermal expansion would be significantly lower than the disclosed 1.87 x 10-
5 cm/cm/°C that it would fall outside of the claimed range.

18 In the ITC Action, the Judge’s determination that Akahori did not
anticipate or render obvious claim 1 was based in part on testimony by Dr.
Harris that “The CTE of the polymer in example 7 would also fall outside
the claimed range if it were determined between 100°Cand 200°C.” See
Initial Determination 143. However, Dr. Harris provided no such testimony
in this proceeding, and we do not consider evidence that is not of record in
our determination.
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Accordingly, we reverse the rejection of claims 1, 2, 5, and 6-11 under
35 U.S.C. § 102, as anticipated by Akahori, but affirm the rejections of
claims 1, 2, 5, and 6-11 under 35 U.S.C. § 103(a) as obvious over Akahori.
As discussed above, claims 3, 5, and 11 stand or fall with claims 1 and
6 from which they depend. Accordingly, we further affirm the rejections of
claims 3, 5, and 11 under 35 U.S.C. § 103(a) as obvious over Akahori in
combination with additional prior art of record as identified by the
Examiner.

VI. REMAINING REJECTIONS
Because our decision is dispositive regarding the unpatentability of all
the claims based on Akahori alone or in combination with additional art, we
need not reach the merits of the cumulative obviousness rejections based on
other references.19 See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009)
(holding that obviousness rejections need not be reached upon affirming a
rejection of all claims as anticipated).

VII. SUMMARY
In sum, we:
affirm the rejection of claims 4 and 5 under 35 U.S.C. § 112, second
paragraph for being indefinite;

19 We note in passing, that Patent Owner’s arguments directed to the
remaining rejections are similarly directed to the Requester’s calculated “k”
value being used to provide evidence of the stiffness values of obvious
polyimide films where the prior art reflects reported thickness and elastic
modulus.
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affirm the rejection of claims 4 and 5 under 35 U.S.C. § 112, first
paragraph 1 for failing to comply with the written description and
enablement requirements;
affirm the rejection of claims 4 and 5 under 35 U.S.C. § 314(a) for
enlarging the scope of the originally patented claims;
reverse the rejection of claims 1-2, 4 and 6-11 under 35 U.S.C. §
102(b) as anticipated by Akahori;
affirm the rejection of claims 1-2, 4 and 6-11 under 35 U.S.C. §
103(a) as obvious over Akahori;
affirm the rejection of claims 3 and 5 under 35 U.S.C. §103 (a) as
obvious over Akahori in view of Kataoka, as evidenced by Apical NP;
affirm the rejection of claims 3 and 5 under 35 U.S.C. §103 (a) as
obvious over Akahori in view of Merchant;
affirm the rejection of claim 11 under 35 U.S.C. §103 (a) as obvious
over Akahori in view of either Ono ’739 or JP ’442; and
decline to reach the remaining rejections on appeal.

TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
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of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED

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PATENT OWNER:
Westerman, Hattori, Daniels & Adrian, LLP
1250 Connecticut Avenue, NW
Suite 700
Washington, D.C. 20036

THIRD-PARTY REQUESTER:
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
901 New York Avenue, N.W.
Washington, D.C. 20001-4413

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