Ex Parte Boyd et al

Patent Trials and Appeals Board

Feb 5, 2019

13634587 - (D) (P.T.A.B. Feb. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/634,587 09/13/2012
32692 7590 02/07/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Gary T. Boyd
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
66400US005 1835
EXAMINER
JOHNSON, NANCY ROSENBERG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
02/07/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY T. BOYD, WILLIAM F. EDMONDS,
VIVIAN W. JONES, KEITH M. KOTCHICK, TRI D. PHAM,
and JOHN F. VAN DERLOFSKE III
Appeal 2018-003483
Application 13/634,587
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1, 2, 11, and 24--34. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision, we refer to the Specification filed September 13, 2012
("Spec."); the Final Office Action dated October 31, 2016 ("Final Act."); the
Appeal Brief filed August 31, 2017 ("App. Br."); the Examiner's Answer
dated December 11, 2017 ("Ans."); and the Reply Brief filed February 12,
2018 ("Reply Br.").
2 Appellants identify 3M Company as the real party in interest. App. Br. 2.
Appeal2018-003483
Application 13/634,587
The claims are directed to optical stacks for use in, e.g., flat panel
displays. The optical stacks comprise, among other elements, an optical
adhesive layer disposed on a light directing film, wherein the peel strength
between a light redirecting film and an optical adhesive layer is greater than
about 30 grams/inch. Claim 1, reproduced below from the Claims Appendix
of the Appeal Brief with key limitations italicized, illustrates the broadest
claimed embodiment:
1. An optical stack comprising:
a light redirecting film comprising a first structured
major surface comprising a plurality of unitary discrete
structures; and
an optical adhesive layer disposed on the light directing
film, at least portions of at least some unitary discrete structures
in the plurality of unitary discrete structures penetrating into the
optical adhesive layer, at least portions of at least some unitary
discrete structures in the plurality of unitary discrete structures
not penetrating into the optical adhesive layer, at least portions
of the at least some unitary discrete structures designed to
recycle light through total internal reflection, a peel strength of
the light redirecting film and the optical adhesive layer being
greater than about 3 0 grams/inch, an average effective
transmission of the optical stack not being less or being less
than by no more than about 4 % as compared to an optical stack
that has the same construction except that no unitary discrete
structure penetrates into the optical adhesive layer.
An annotated version of FIG. 20 of the instant '587 application, edited
to better illustrate the elements of importance to the issues here, is
reproduced below:
2
Appeal2018-003483
Application 13/634,587
optical
light directing
fiJrn 2010
.,
,.'\.-;,.
t
':A·····c*X
.,., .................................. ., .................................................................................................................. .,.., ................ , ........ , .... .,, .•. ,.,..,., ........ ,
optical adhesive !ayer 2060 : .. , .... i ..... : ... optic.a] layer 2070
~ ,./ '
' f' ,fl, 1--- 'l>-tnC--'Lr:-'---1bonding portion 2050
) \ ,) \ · T""? '>\" ... H«ht directil_,o pe""'i·,n '"'fl4(l
/ .. / ""-,. .,,···''/~ ), . ..}····/ ' ' '• ~: ' " . ' -,':' ·' ·~' ,. -~ . . ...
( "-.,., \ ·in>·> "--·' .. }. / ~' · umtar,,., discrete ::-tructure 2tbu
~·········································f····~·.:·.~-.~ ....... ~~y~~ .. ~······~·············i ~
L _ _ ____ izx:x~B __ ~\nt:~ :J ...... substrnte 2{H)5
\
, .. .,,,,,,,.--. "'< '} .f .,, ~J .. ,._,: C
·,~2n<;;:~
FIG. 20 is a schematic side-view of an optical stack that includes
optical film 20903 disposed on light directing film 2010. Spec. 20, 11. 30-31.
A first structured major surface of light directing film 2010 includes a
plurality of unitary discrete structures 2030 that are disposed on substrate
2005. Spec. 20, 1. 32-21, 1. 3. Each of at least some unitary discrete
structures include a light directing portion 2040 primarily for directing light
and a bonding portion 2050 primarily for bonding the light directing film to
optical film 2090. Spec. 21, 11. 3-5. At least portions of at least some
bonding portions 2050 of light directing film 2010 penetrate into optical film
2090 and at least portions of at least some light directing portions 2040 of
light directing film 2010 do not penetrate into optical film 2090. Spec. 21,
11. 6-9.
Optical film 2090 includes an optical layer 2070 that is disposed on an
optical adhesive layer 2060. Spec. 21, 11. 23-24. The portions of bonding
portions 2050 of light directing film 2010 that penetrate into the optical film
penetrate into the optical adhesive layer. Spec. 21, 11. 24-25. Optical
3 Labels to elements are presented in bold font, regardless of their
presentation in the original document.
3
Appeal2018-003483
Application 13/634,587
adhesive layer 2060 attaches or bonds light directing film 2010 to optical
layer 2070 or major surface of optical layer 2070. Spec. 21, 11. 25-26.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Tolbert et al.
("Tolbert")
Ohta et al. ("Ohta")
Tanabe, et al.
("Tanabe")
US 2008/0049330 Al
US 2008/0259243 Al
WO 2008/047855 Al
REJECTIONS
Feb.28,2008
Oct. 23, 2008
Apr. 24, 2008
The Examiner maintains the following rejections under 35 U.S.C.
§ I03(a)4: (1) claims 1, 2, 11, and 25-34 over Ohta in view of Tanabe; and
(2) claim 24 over Ohta in view of Tanabe, and further in view of Tolbert.
Final Act. 2-7; App. Br. 2-7.
OPINION
Rejection of claims 1, 2, 11, and 25-34 as obvious
Appellants argue claims 1, 21, 11, and 25-34 as a group. App. Br. 4--
7. We select claim 1 as representative of the group. 37 C.F.R.
§ 4I.37(c)(l)(iv). Claims 2, 11, and 25-34 will stand or fall with claim 1.
With respect to claim 1, the Examiner finds that Ohta discloses the
limitations of claim 1 except that Ohta does not specifically disclose a peel
4 Because this application was filed before the March 16, 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
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Appeal2018-003483
Application 13/634,587
strength of 30 grams/inch. Final Act. 2-3. The Examiner finds that Tanabe
discloses a surface light source element comprising a fixing layer ( adhesion
layer) and an exit light control plate comprising projected parts with fixing
parts inside the fixing layer. Id. at 3.
Figure 1 of Tanabe is reproduced below:
Tanabe' s Figure 1 is a schematic sectional view diagram showing a
partial sectional surface of the surface light source element according to
Tanabe's invention. Tanaba ,r 28. The surface light source element is
formed from light guide body 3 and exit light irradiation control plate 4. Id.
Numerous protruded parts 7 are formed on light exit irradiation control plate
4, and fixing parts 8, which contain the top parts of protruded parts 7, are
buried into fixing layer 9 and intimately adhered. Id.
The Examiner determines that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have added Tanabe's
fixing part (having a flat part) to the irregularities of the prism sheet in Ohta
with the limitations described in Tanabe to increase the adhesion surface
area of the fixing part to obtain high adhesion strength while maintaining
optical performance. Final Act. 3.
In the alternative, the Examiner concludes that it would have been
obvious to design an optical stack with the claimed peel strength because
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Appeal2018-003483
Application 13/634,587
Ohta and Tanabe teach the importance of good adhesion strength and how
the structure can be manipulated to achieve higher levels of adhesion. Id. at
4. The Examiner determines that the amount of surface contact with
adhesive is a result effective variable that the skilled artisan would have
optimized through routine experimentation to obtain the claimed peel
strength. Ans. 4--5.
Appellants argue that Ohta and Tanabe have contradicting objectives,
thus one of ordinary skill in the art at the time of the invention would not
have been motivated to apply the teachings of Tanabe to Ohta, or have had
any reasonable expectation of success in so doing. App. Br. 6; Reply Br. 2.
Appellants contend that Ohta is concerned with minimizing "wetout," which
Appellants describe as the condition occurring when prism tips are buried in
adhesive and suffer from decreased luminance. App. Br. 5. According to
Appellants, Ohta considers good optical performance to mean high front
luminance from its light condensing sheet. Id.
Appellants argue that, in contrast to Ohta, Tanabe considers "optical
performance" to be light throughput. Id. at 6. Appellants argue that in
Tanabe light is extracted from the lightguide 3 through the fixing parts 8,
and out the exit light control plate 4. Id. Appellants argue that Tanabe
teaches fixing parts that are flat surfaces parallel to the exit surface of the
lightguide that allow for maintaining optical performance. Id. ( citing
Tanabe ,r 18). Appellants contend that Tanabe teaches flat surfaces allow for
better contact between the fixing sections (parts) and the lightguide, and,
therefore, would increase wetout, whereas Ohta seeks to minimize wetout.
Id.
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Appeal2018-003483
Application 13/634,587
We do not view the teachings of the prior art so narrowly. Randall
Mfg. v. Rea, 733 F.3d 1355, 1362---63 (Fed. Cir. 2013). "[T]he test for
combining references is not what the individual references themselves
suggest but rather what the combination of disclosures taken as a whole
would suggest to one of ordinary skill in the art." In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971). All disclosure of the prior art must be
considered. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).
Both Ohta and Tanabe disclose optical sheet stacks with an adhesive
layer. Ohta Abstract; Tanabe Abstract. Ohta teaches adjusting the width of
bonding (Pw) of the apex of the irregularities in contact with the adhesive
layer to be no larger than 20% of the pitch of arrangement (P) of the
irregularities. Ohta ,r 15. Tanabe teaches improving adhesive strenth of the
fixing parts and fixing layer by extending and flattening the tops of the
fixing parts. Tanabe Fig. 1, ,r 18.
One of ordinary skill in the art at the time of the invention would have
considered Tanabe's flat-topped fixing parts to improve adhesion, at the
same time limiting the width of the bonding (Pw) of the apex of the
irregularities in contact with the adhesive layer to be no larger than 20% of
the pitch of arrangement (P) of the irregularities, in accordance with Ohta.
Thus, the skilled artisan would have been motivated to apply Tanabe's
teaching to Ohta with a reasonable expectation of success. See In re Kubin,
561 F.3d 1351, 1360 (Fed. Cir. 2009) ("Obviousness does not require
absolute predictability of success ... all that is required is a reasonable
expectation of success.") (citing In re O 'Farrell, 853 F.2d 894, 903---04 (Fed.
Cir. 1988)).
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Appeal2018-003483
Application 13/634,587
In response to the Examiner's determination that the skilled artisan
would have been able to optimize adhesive strength through routine
experimentation, Appellants contend that MPEP § 2144.05(II)(B) 5
referenced by the Examiner refers exclusively to optimizing ranges of
temperature and solution concentration in chemical cases. Id.
As a matter of fact, it does not. See, e.g., In re Cieisler, 116 F .3d 1465
(Fed. Cir. 1997) (concerning claims to a reflective article having a multilayer
coating held obvious over prior art disclosing a protective layer of a certain
l · 1 ) KPJ• r 'l (-' J' 1 7 J ~.;;() ly '-' 1(,.-. 416- '"00""') t11c(ness,; 0 \1.nt. ,o. v. e1eJ.ex nc., :, __ i.0. _.10, · (.-:.. I
(identifying "the need for caution in granting a patent based on the
combination of elements found in the prior art.''),
Appellants contend that adjusting peel strength is not as trivial as
adjusting temperature or solution concentration. App. Br. 6. However, it is
well settled that arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40
(Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellants provide no evidence to counter the Examiner's determination that
it would have been obvious to optimize the adhesive strength and peel
strength.
We sustain the rejection of claim 1. For the same reasons as given for
claim 1, we sustain the rejection of claims 2, 11, and 25-34.
Rejection of claim 24 as obvious
Appellants argue that claim 24, which depends from claim 1, is
patentable for the same reasons as claim 1. App. Br. 7. Appellants contend
5 The Examiner referred to MPEP § 2144.05(II), and not specifically
subsection (B). Final Act. 4.
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Appeal2018-003483
Application 13/634,587
that the additional reference against claim 24, Tolbert, does not cure the
deficiencies present in the combination of Ohta and Tanabe. Id.
We sustain the rejection of claim 24 over Ohta in view of Tanabe, and
further in view of Tolbert for the reasons given with respect to claim 1.
DECISION
The rejections of claims 1, 2, 11, and 24--34 are affirmed.
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
9