Ex Parte Brickey et al

Board of Patent Appeals and Interferences

Mar 27, 2012

11269298 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte CHERYL J. BRICKEY, ROBERT P. BOURDELAIS,
RICHARD D. BOMBA, MICHAEL R. BRICKEY,
JON A. HAMMERSCHMIDT, and ANDRE KUZIAK
________________

Appeal 2010-007421
Application 11/269,298
Technology Center 1700
________________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner finally rejected claims 1-8, 13-16, 20, and 21 of
Application 11/269,298. Appellants seek reversal by appealing pursuant to
36 U.S.C. § 134. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
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Background
The ’298 application discloses and claims a light redirecting film
which can be used in LCD display units. The film comprises a polymer base
layer and a thermoplastic polymer optical layer including a top surface
having a plurality of optical features.
Claim 1 is representative.
1. A light redirecting film, comprising:
a polymer base layer;
a thermoplastic polymer optical layer including top
surface having a plurality of optical features;
an adhesion layer between the base layer and the optical
layer, wherein the adhesion layer bonds to the base layer
and to the optical layer to form the light redirecting film;
and
wherein the optical features comprise individual
polycarbonate optical elements having an apex angle of
90 degrees, the adhesion layer comprises
polyacrylonitrile-vinylidene chloride -acrylic acid
copolymer, the base layer comprises oriented PET and
further comprising a continuous layer of polycarbonate
located on the side opposite the optical features.
(paragraphing added).
The Examiner entered a series of rejections pursuant to 35 U.S.C.
§ 103(a)1 against the claims of the ’298 application:
 Claims 1, 2, 6, 8, 13, and 20 were rejected over the
combination of published U.S. Patent Application
2004/0125592 A1 (“Nagakubo,” July 1, 2004) in view of

1 The Examiner also rejected claim 2 for failure to comply with 35 U.S.C.
§ 112, ¶ 2. This claim was subsequently amended and, the rejection
withdrawn. Br. 2.
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U.S. Patent No. 6,322,236 B1 (“Campbell,” issued Nov. 27,
2001), further in view of published U.S. Patent Application
2003/0215581 A1 (“Bermel,” Nov. 20, 2003), in further
view of published U.S. Patent Application 2002/0101549 A1
(“Katsu,” Aug. 1, 2002).
 Claims 3 and 4 were rejected over the combination of
Nagakubo, Campbell, Bermel, and Katsu further in view of
U.S. Patent No. 5,294,473 (“Kawamoto,” issued March 15,
1994);
 Claim 5 was rejected over the combination of Nagakubo,
Campbell, Bermel, and Katsu further in view of U.S. Patent
No. 5,337,179 (“Hodges,” issued Aug. 9, 1994);
 Claims 7, 16, and 21 were rejected over the combination of
Nagakubo, Campbell, Bermel, and Katsu further in view of
U.S. Patent No. 6,447,135 B1 (“Wortman,” issued Sept. 10,
2002); and
 Claims 14 and 15 were rejected over the combination of
Nagakubo, Campbell, Bermel, and Katsu further in view of
U.S. Patent No. 6,083,669 (“Bourdelais,” issued July 4,
2000).

Discussion
Appellants challenge all of these rejections on a single basis—alleged
defects in the Examiner’s proposed combination of Nagakubo, Campbell,
Bermel, and Katsu. For this reason, all of the claims stand or fall on question
of whether these references can be properly combined.
I. The Prior Art
A. Nagakubo
Nagakubo describes a backlight device for use in a liquid crystal
display. The backlight device includes a light redirecting sheet (referred to
as a “light directivity adjusting sheet”), which is shown in Figure 6:
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Figure 6 shows a perspective view of the light redirecting sheet
described in Nagakubo. Nagakubo ¶ 46. The light redirecting sheet is
comprised of base layer 17a formed from polyester or PET plastic. Id. ¶ 103.
Optical features 17b are located on the top surface of the base layer, id., and
have the form of square pyramids with apical angles between 80 and 100
degrees, id. at ¶ 105. The optical features are formed from polycarbonate or
acrylic resin. Id. at ¶ 103.
Nagakubo does not disclose an adhesive layer between the base layer
and the optical features, nor does it discuss the properties of the PET that is
used as a base layer.
B. Campbell
Campbell describes an optical film that reduces the incidence of
perceptible defects in displays incorporating the film. Campbell, col. 2, ll. 2-
4. In particular, Campbell’s films can be used as part of a wide range of
optical devices, including brightness enhancers, light diffusers, and
collimators. Col. 5, ll. 3-8. Campbell teaches that bi-axially oriented PET is
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a preferred material for use in optical devices because of its mechanical and
optical properties. Col. 6, ll. 11-13.
C. Bermel
Bermel teaches methods for manufacturing optical films. In particular,
Bermel teaches a method for producing polycarbonate films that can be
peeled from a sacrificial substrate layer such as PET. Bermel ¶¶ 22-26. In a
comparative example, a layer of poly(acrylonitrile-co-vinylidene chloride-
co-acrylic acid) was used between the polycarbonate and PET layers. Id. at
¶ 66. In this comparative example, the PET and polycarbonate layers could
not be separated. Id.
D. Katsu
Katsu describes a light diffuser used in an LCD display. In particular,
Katsu describes a light diffuser that uses a polycarbonate base layer. Katsu
¶ 45. The polycarbonate base layer is located on the opposite side of a
polymer prism sheet from the optical features, id. at Fig. 2, ¶ 46, and
includes acrylic beads that serve to diffuse light passing through the layer,
id. at ¶ 45.
II. The Evidence Supports the Examiner’s Combination of
Nagakubo, Campbell, Bermel, and Katsu
Appellants advance two reasons why Nagakubo, Campbell, Bermel,
and Katsu may not be properly combined to serve as the basis for a § 103(a)
rejection. First, Appellants argue that the Examiner has not provided an
adequate reason to combine these references. Br. 3-5. Second, Appellants
argue that a person of ordinary skill in the art would not have had a
reasonable expectation that the combination of references would work for its
intended purpose. Br. 5.
We have considered these arguments and do not find them persuasive.
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A. The evidence supports the Examiner’s proposed reason to
combine the references
To create a prima facie case of obviousness, the Examiner started with
the optical structure shown in Nagakubo, and modified it with the teaching
of bi-axially oriented PET from Campbell, the particular adhesive taught in
Bermel, and the additional polycarbonate layer located on the side of a
polymer prism sheet from the optical features that is taught in Katsu.
When it is necessary to select elements of various teachings in order
to form the claimed invention, we ascertain whether there is any reason,
suggestion, or motivation in the prior art to make the selection made by
applicant. Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed.
Cir. 1985). There are “three possible sources for a motivation to combine
references: the nature of the problem to be solved, the teachings of the prior
art, and the knowledge of persons of ordinary skill in the art.” In re Rouffet,
149 F.3d 1350, 1358-59 (Fed. Cir. 1998). The existence of a reason to
combine references, however, is not a rigidly applied test. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 415-16 (2007).
The Examiner explained that a person of skill in the art would have
been motivated to create this combination to access the improved
mechanical and optical properties of the bi-axially oriented PET film, as
taught in Campbell, Final Office Action (“FOA”) 3 (Jan. 22, 2009); Ans. 4,
11. The Examiner found that the use of adhesives to provide a well-bonded
laminate was well known in the art, and that Bermel taught a useful example
of an adhesive for bonding polycarbonate to PET. FOA 4; Ans. 4-5, 13-14.
Thus a person of skill in the art would have been motivated to add an
adhesive layer to the combination of Nagakubo and Campbell. Finally, the
skilled artisan would have been motivated to add the continuous
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polycarbonate diffuser layer to the side of the device opposite the optical
features as shown in Katsu in order to achieve a uniform dispersion of light.
FOA 4-5; Ans. 5-6, 12-13.
In this case, the Examiner has properly identified an adequate reason
to combine the teachings of Nagakubo, Campbell, Bermel, and Katsu, each
of which deals with laminates used in optical devices. Appellants have not
identified any error in the Examiner’s proffered reasons.
B. The evidence supports the Examiner’s determination that
there would have been a reasonable expectation of success
Appellants further complain that a person of ordinary skill in the art
would not have expected the Examiner’s proposed combination of
references to work for their intended purpose. We disagree.
The law requires that there be a reasonable expectation of successfully
combining the cited references in the manner required by the claimed
invention. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir.
2006). “[O]nly a reasonable expectation of success, not a guarantee, is
needed.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007)
Appellants argue that there would not have been a reasonable
expectation of success in creating a combination of elements from the
disparate types of optical devices taught in the various references relied upon
by the Examiner:
Each of the diffusers, light redirecting films and polarizers are
uniquely different from each other in terms of its specifications,
materials, compositions and methods for making them. In other
words, a feature of a diffuser cannot reasonably be imputed to
work in a light redirecting film or a polarizer, and vice versa.
Hence, there is no credible rationale or motivation for
combining the features found in, for example, a diffuser and

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imputing that feature to be operable or pertinent in, for
example, a light redirecting film or a polarizer.
Br. at 4-5.
We are not persuaded by this argument. As the Examiner points out,
Campbell and Bermel are cited and relied upon for very limited teachings—
a type of material and a type of adhesive, respectively—and are not used for
the particular type of optical device they ultimately describe. Ans. 11, 13-14.
Furthermore, each of the cited types of optical devices are known to be
common in LCD displays. Ans. 12-14. Indeed, Appellants’ own
specification is consistent with that knowledge in that it teaches both the
incorporation of a light diffuser into a collimator, id. at 12 (citing Spec. 19),
and cites references that contain the same teaching, id. at 14 (citing Spec. 2).
Furthermore, Nagakubo discusses the use of a large number of components
in a LCD back light device, and describes the need to reduce this number to
make the device lighter and cheaper. Nagakubo, ¶¶ 3-16.
In other words, each of the references teaches a component of an
optical system that is well known in the art, and each of these components is
used for its normal purpose and yields a predictable result. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, 550 U.S.
at 416. That is the case here. Our review of the record indicates that the
Examiner correctly determined that a person of ordinary skill would have
had a reasonable expectation of success.
Conclusion
The evidence supports the Examiner’s findings with regard to the
combination of the Nagakubo, Campbell, Bermel, and Katsu references to
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create a prima facie case of obviousness. Appellants’ arguments against this
combination are not persuasive, and we sustain the rejections.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

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