Ex Parte Andou et al

Patent Trial and Appeal Board

Mar 17, 2017

12525864 (P.T.A.B. Mar. 17, 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.
12/525,864 08/14/2009 Hidehiko Andou P21379US00 2101
38834 7590 03/21/2017
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036
EXAMINER
CHANG, VICTOR S
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
03/21/2017 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 HIDEHIKO ANDOU, HIDEO SUGAWARA, and
TOMOTAKE NASHIKI
Appeal 2016-001815
Application 12/525,864
Technology Center 1700
Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
MONTE T. SQUIRE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001815
Application 12/525,864
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2
finally rejecting claims 1, 5—12, 14, and 15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
The invention relates to a pressure-sensitive adhesive layer-carrying
transparent conductive film that can be used, e.g., “for a transparent
electrode of an advanced display system such as a liquid crystal display or an
electroluminescence display, a touch panel or the like.” Specification filed Aug. 5,
2009 (“Spec.”), 1:7-14.
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. claims 1, 5, 7—12, 14, and 15 over JP 2001-332132 (pub. Nov. 30,
2001, machine translation (“JP 132”)) and Yamazaki et al. (US 6,351,068 B2, iss.
Feb. 26, 2002 (“Yamazaki”)); and
2. claim 6 over JP 132, Yamazaki and Isaki et al. (US 6,627,308 B2, iss.
Sept. 30, 2003).
Appellants argue the appealed claims as a group (see generally Appeal Br.
4—143), contending the limitations in claim 1 shown in italicized language, below,
patentably define over the applied prior art:
1. A pressure-sensitive adhesive layer-carrying transparent
conductive film, comprising:
an amorphous transparent conductive laminate comprising a
transparent plastic film substrate and an amorphous transparent
1 Appellants identity the real party in interest as Nitto Denko Corp. Appeal Brief
filed June 1, 2015 (“Appeal Br.”), 2.
2 Final Office Action mailed Dec. 3, 2014 (“Final Act.”).
3 Appellants’ mere assertions that the cited references fail to teach or suggest the
features of the dependent claims (see Appeal Br. 10, 14) do not amount to
arguments for separate patentability of these claims. See 37 C.F.R.
§41.37(c)(l)(iv) (2014).
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Application 12/525,864
conductive thin film provided on one side of the transparent plastic
film substrate;
a pressure-sensitive adhesive layer; and
a release film that is provided on another side of the transparent
plastic film substrate with the pressure-sensitive adhesive layer
interposed therebetween and comprises at least a film substrate,
wherein
the amorphous transparent conductive thin film is made of a
metal oxide comprising 95 to 98% by weight of indium oxide and 2 to
5% by weight of tin oxide;
the thickness of the amorphous transparent conductive thin film
is from 15 to 35 nm;
the transparent plastic film substrate has a thickness of 10 to 40
pm and the release film has a thickness of 50 to 100 /um;
the release film is thicker than the amorphous transparent
conductive laminate, and
a value obtained by subtracting the thermal shrinkage
percentage of the release film in the MD direction from the thermal
shrinkage percentage of the amorphous transparent conductive
laminate in the MD direction is from -0.3% to 0.45%.
Appeal Br. 16, Claims App’x (emphasis added).
We have fully considered Appellants’ arguments in support of patentability,
but concur in the Examiner’s determination that a preponderance of the evidence,
taking into account Appellants’ evidence of unexpected results, weighs in favor of
a conclusion that the claimed invention would have been obvious over the applied
prior art. See Examiner’s Answer mailed Sept. 15, 2015 (“Ans.”), 5—9. We add
the following to address Appellants’ arguments regarding the applicable case law.
Appellants do not dispute the Examiner’s findings (see Final Act. 2—3) that
JP 132 describes a pressure-sensitive adhesive layer-carrying transparent
conductive film comprising four layers (i.e., a release film, a pressure-sensitive
adhesive layer, and an amorphous transparent conductive laminate (a transparent
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Application 12/525,864
plastic film substrate + an amorphous transparent conductive thin film)) arranged
in the manner recited in claim 1. See generally Appeal Br. 4—14. Likewise,
Appellants do not dispute the Examiner’s finding that the indium oxide and tin
oxide contents recited in claim 1, though not described expressly in JP 132, would
have been a matter of routine optimization (Final Act. 3 4). See generally Appeal
Br. 4—14. Nor do Appellants argue the Examiner erred in finding Yamazaki
evidences that JP 132’s transparent conductive thin film is inherently amorphous
(Final Act. 3). See generally Appeal Br. 4—14. Appellants contend, however, that
the Examiner reversibly erred in finding JP 132 discloses or suggests that the
thickness of the release film is greater than the thickness of the amorphous
transparent conductive laminate (see Final Act. 4). See Appeal Br. 5—10.
For ease of discussion, the Examiner’s comparison of the layer thicknesses
recited in claim 1 and described in JP 132 (Final Act. 2—3; see also Appeal Br. 5) is
provided in the table below:
1 .aver Claim 1 .IP 132
Amorphous transparent conductive thin film
(Transparent conducting film (JP 132 111))
15—35 nm 8—500 nm
Transparent plastic film substrate
(Bright film (JP 132 19))
10-40 pm 3—300 pm
Release film
(Protective film (JP 132 114))
50-100 pm 5—100 pm
The Examiner contends a prima facie case of obviousness has been
established because JP 132’s ranges for the release film thickness and conductive
laminate (comprising the amorphous transparent conductive thin film and
transparent plastic film substrate) thickness overlap with the claimed ranges. See
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Application 12/525,864
Final Act. 6; Ans. 5—7. Appellants argue the Examiner did not satisfy the burden
to establish a prima facie case of obviousness because the Examiner did not
identify a reason why the ordinary artisan would have selected a release film
thickness of 50—100 pm (as recited in claim 1) from JP 132 ’s broad range of 5—100
pm, as well as a conductive laminate thickness of 10.015 to 40.035 pm (as required
by claim 1) from JP 132’s “even broader range of 3.008 to 300.5 pm.” Appeal Br.
8; see also id. at 7 (noting JP 132’s release film thickness (5—100 pm) is
“completely subsumed by the thickness of the conductive laminate (3.008 to 300.5
pm).”). In their Reply Brief (filed Nov. 16, 2015 (“Reply Br.”)), Appellants cite
Allergan, Inc. v. Sandoz, Inc., 796 F.3d 1293 (Fed. Cir. 2015) and Galderma Labs,
L.P. v. Tolmar, Inc., 737 F.3d 731 (Fed. Cir. 2013) in support of this argument.
Reply Br. 2.
We have reviewed Allergan and Galderma and determine these cases do not
support Appellants’ argument that the Examiner’s findings were insufficient to
support a prima facie case of obviousness. To the contrary, both cases clearly
support the Examiner’s position that the overlap in JP 132’s and claim 1 ’s ranges
shifted the burden of production to Appellants. See Allergan, 796 F.3d at 1304—
1305 (“As we explained in Galderma, where there is a range disclosed in the prior
art, and the claimed invention falls within that range, a relevant inquiry is whether
there would have been a motivation to select the claimed composition from the
prior art ranges. Galderma, 737 F.3d at 737—38. ... In those circumstances, ‘the
burden of production falls upon the patentee to come forward with evidence that
(1) the prior art taught away from the claimed invention; (2) there were new and
unexpected results relative to the prior art; or (3) there are other pertinent
secondary considerations.’ Id. at 738” (emphasis added).); see also In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003) (“Peterson’s application and Shah contain
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Application 12/525,864
overlapping ranges, as each range listed in Peterson’s claim 5 lies within the
corresponding range disclosed in Shah. Thus, Shah’s ranges encompass
Peterson’s. Peterson argues that, despite that overlap, it would not have been
prima facie obvious to select the claimed narrower ranges of rhenium and
chromium from Shah's broader ranges of those elements. We disagree. In cases
involving overlapping ranges, we and our predecessor court have consistently held
that even a slight overlap in range establishes a prima facie case of obviousness’ ''
(emphasis added).); id. at 1329-30 (“Selecting a narrow range from within a
somewhat broader range disclosed in a prior art reference is no less obvious than
identifying a range that simply overlaps a disclosed range. In fact, when, as here,
the claimed ranges are completely encompassed by the prior art, the conclusion is
even more compelling than in cases of mere overlap” (emphasis added).). Further,
we are not persuaded that the ranges in JP 132 are so broad as to “present a
situation analogous to [the] cases involving the failure of a very broad disclosed
genus of substances to render prima facie obvious specific substances within its
scope,” Peterson, 315 F.3d at 1330 n.l. Although the thickness ranges in JP 132
are broader than those recited in the claims, there are only three thickness ranges,
as compared to the multiple ranges involved in Peterson (see In re Harris, 409
F.3d 1339, 1342-43 (Fed. Cir. 2005) (discussing Peterson)), and Appellants have
not made a showing of criticality in the recited ranges, as further discussed below.
Appellants also contend the Examiner reversibly erred in failing to give
sufficient weight to their evidence that “the presently claimed conductive film, in
which the release film is thicker than the conductive laminate, provides
unexpected improvements in terms of productivity and processability over the
conductive films of the cited references” (Appeal Br. 10 (citing the Declaration
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Application 12/525,864
under 37 C.F.R. § 1.132 of Tomotake Nashiki (“Declaration” or “Decl.”))). See
Reply Br. 5—6.
[A]n applicant may overcome a prima facie case of obviousness by
establishing that the claimed range is critical, generally by showing
that the claimed range achieves unexpected results relative to the prior
art range. That same standard applies when, as here, the applicant
seeks to optimize certain variables by selecting narrow ranges from
broader ranges disclosed in the prior art. . . . [T]he applicant’s
showing of unexpected results must be commensurate in scope with
the claimed range.
Peterson, 315 F.3d at 1330 (internal citations and quotations omitted).
Mr. Nashiki testified that “[i]n a sputtering process in which an ITO film is
formed on a transparent plastic film substrate, as gases (mainly water) generated
from the film substrate work as impurities for formation of the ITO film, [a]
degassing process is required to obtain an ITO film having a good quality.” Decl.
17. Mr. Nashiki testified that he conducted experiments comparing the time
needed to degass plastic substrates having thicknesses of 25 pm and 125 pm at a
temperature of 150°C. Id. Appellants explain that a 25 pm thick plastic substrate,
which is within the claim 1 range of 10-40 pm (Appeal Br. 11), was compared
with “the closest specifically disclosed example of JP ’132, as required under
MPEP § 716.02(e)” (Appeal Br. 14 (emphasis omitted)), i.e., the example in
paragraph 16 of JP 132 wherein “the protective film (38 pm) is thinner than the
conductive laminate (125 pm)” {id. at 8 (emphasis omitted)). Based on the
respective 31 and 171 second degassing times for the inventive and JP 132
examples tested, Mr. Nashiki testified that productivity could be improved largely
by using a substrate thickness of 25 pm. Decl. 17. Mr. Nashiki testified that in
another test, 25 pm and 125 pm thick plastic substrates were degassed for 31
seconds. See id. at 8. The result was that crystallization of an ITO film formed on
the 125 pm thick plastic substrate was insufficient. Id. Mr. Nashiki testified his
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Application 12/525,864
conclusion from these experiments was that “in the present invention, it is possible
to accomplish a good balance between productivity and processability.” Id. at 9.
“For objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the evidence and
the merits of the claimed invention.” In re Kao 639 F.3d 1057, 1068 (Fed. Cir.
2011) (citation omitted). “Evidence of secondary considerations must be
reasonably commensurate with the scope of the claims.” Id. “If an applicant
demonstrates that an embodiment has an unexpected result and provides an
adequate basis to support the conclusion that other embodiments falling within the
claim will behave in the same manner, this will generally establish that the
evidence is commensurate with scope of the claims.” Id. (emphasis added).
As explained by the Examiner, Appellants’ evidence fails to meet the
foregoing requirements. See Ans. 7—9. Appellants allege unexpected
improvements are achieved by the claimed invention because the release film is
thicker than the conductive laminate. Appeal Br. 10. There is no evidence in the
Nashiki Declaration to support this allegation, however, because Mr. Nashiki only
compared a transparent plastic film substrate having a thickness within the range
recited in claim 1 to the transparent plastic film substrate used in JP 132’s example.
See Decl. 17; see also id. 1 5 (“Under my supervision and control, I conducted
experiments to obtain data for presenting an influence of the thickness of a
transparent plastic film substrate on productivity of the transparent conductive
film.”). The Nashiki Declaration is devoid of any discussion of the release layer
thicknesses in the tested materials. See generally Decl.; cf. Reply Br. 5
(contending the combined thicknesses of the tested substrate and thin film are “less
than the presently recited thickness for the release film”). We agree with the
Examiner (see Ans. 8) that the Nashiki Declaration is also insufficient to show
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Application 12/525,864
criticality in the recited thickness range for the transparent plastic film substrate,
because Mr. Nashiki’s testing merely establishes a superior result that is not
“unexpected.” See In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (Even though
“[a] modification results in great improvement and utility over the prior art, it may
still not be patentable if the modification was within the capabilities of one skilled
in the art, unless the claimed ranges produce a new and unexpected result which is
different in kind and not merely in degree from the results of the prior art.”). In
addition, Appellants’ evidence is not persuasive of criticality in the claimed ranges
because Appellants have not provided evidence that, or otherwise explained why,
other embodiments falling within the scope of the claims would be expected to
behave in the same manner as the tested embodiment. See In re Woodruff, 919
F.2d 1575, 1578 (Fed. Cir. 1990) (“The law is replete with cases in which the
difference between the claimed invention and the prior art is some range or other
variable within the claims . . . [and] in such a situation, the applicant must show
that the particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range.” (citations omitted).).
Any additional arguments raised by Appellants in support of patentability
have been fully addressed by the Examiner and are unpersuasive for the reasons
explained in the Answer. See Ans. 5—9. We agree with the Examiner that the
evidence does not support Appellants’ assertion that JP 132 “teaches away from
selecting a protective film that is thicker than the conductive laminate” (Appeal Br.
9). See Ans. 7; see also Final Act. 6. Appellants have not explained convincingly
why the working example in JP 132 (see JP 132 116) would have discouraged one
of ordinary skill in the art from following JP 132’s broader teaching of protective
film and conductive laminate thicknesses that fall within the scope of claim 1. See
Syntex (U.S.A.) LLCv. Apotex, Inc., 407 F.3d 1371, 1379-80 (Fed. Cir. 2005) (“A
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statement that a particular combination is not a preferred embodiment does not
teach away absent clear discouragement of that combination.”); In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed in the . . . application.”).
In sum, for the reasons stated above, and in the Final Office Action and the
Answer, we are not persuaded of error in the Examiner’s conclusion of
obviousness. Accordingly, we affirm the Examiner’s decision to reject claims 1,
5—12, 14, and 15.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. §1.136(a)(l)(iv).
AFFIRMED
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