Ex Parte GOTO et al

Patent Trial and Appeal Board

Aug 30, 2016

13595532 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/595,532 08/27/2012 Shusaku GOTO
22429 7590 09/01/2016
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
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.
5070-0022DIV 9658
EXAMINER
ENGLISH, PATRICK NOLAND
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
EAnastasio@IPFirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHUSAKU GOTO, MINORU MIYATAKE,
TOMOHIRO MORI, KENTARO YOSHIDA, and
TAKEHARUKITAGAWA
Appeal2015-003027
Application 13/595,532
Technology Center 1700
Before ROMULO H. DELMENDO, WESLEY B. DERRICK, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1-30 of Application 13/595,532.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the real party in interest as Nitto Denko Corporation.
App. Br. 2.
Appeal2015-003027
Application 13/595,532
BACKGROUND
The subject matter on appeal relates to a polarizing film having a
thickness of 7 µm or less. App. Br. 5. Claim 1, reproduced below from the
Claims Appendix of the Appeal Brief, is representative of the claims on
appeal:
1. A polarizing film comprising:
a layer of polyvinyl alcohol resin having a dichroic
material impregnated therein in a molecularly oriented state,
wherein the polarizing film has a thickness of 7 µm or
less and exhibits optical properties of a single layer
transmittance of 42.0% or higher and a polarization rate of
99.95% or higher.
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Land et al.
Sugino et al.
us 4,895,769 Jan.23, 1990
(hereinafter "Land")
US 2003/0137732 July 24, 2003
(hereinafter "Sugino")
THE REJECTIONS
1. Claims 1-17 and 26-30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Land.
2. Claims 18-25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Land and Sugino.
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Appeal2015-003027
Application 13/595,532
Rejection 1
DISCUSSION
Appellants' arguments focus on limitations common to all of the
independent claims and do not present distinct argument for any of the
dependent claims. App. Br. 6-14. We select claim 1 as representative; all
other claims stand or fall with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv).
Land discloses a polarizer comprising a film of polyvinyl alcohol
(PVA). Land, Abstract, 5:46-47. The film is formed by coating a plastic
sheet material with a PV A composition to a dry thickness of about 0.0064--
0.0762 mm, i.e. 6.4--76.2 µm (id. at 6: 13-16), stretching the PVA-coated
sheet material in an amount sufficient to orient the PV A molecules to a
condition suited to conversion to a light polarizer, i.e., about 300-700% of
its original dimension (id. at 6:65-7:9) (in addition to further stretching, id.
at 7: 15-9: 18), and staining "according to known methods using a dichroic
substance" such as a stain comprising iodine and an iodide salt (id. at 9:25-
36). The Examiner determines that because the range of thicknesses taught
by Land overlaps the range of thicknesses recited in claim 1, and the
material composition is the same, it would have been obvious to a person of
ordinary skill in the art to select a thickness within the range disclosed by
Land and including the claimed range. Ans. 3, 17. The Examiner further
determines that without a showing of unexpected results by Appellants, a
person of ordinary skill in the art would have optimized the amount of
stretching of Land's PVA film to obtain the desired film thickness and
strength (Ans. 3--4), and that the optical properties of transmittance and
polarization rate recited in claim 1 are inherent properties of the polarizer
film. Ans. 4.
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Appeal2015-003027
Application 13/595,532
Appellants argue that the claimed optical properties are not inherent
to Land's polarizer film, and submit the co-inventor's Declaration dated
November 18, 2013 ("Declaration") to show that "the composition described
in Land does not always produce the recited optical properties." App. Br. 8.
Appellants further argue that the Declaration shows "Land fails to provide
an enabling description of the range which the Examiner asserted as
overlapping with the recited claim language." Id. at 9.
Appellants' arguments do not persuade us of reversible error. As the
Examiner correctly finds, the Declaration is based on Examples 1 and 2 of
Land, which describe production of films having initial thicknesses of 25-38
µm. Ans. 17-18. That range of thicknesses is outside the range of overlap
identified by the Examiner, and thus the Declaration evidence relating to
these examples does not rebut the Examiner's findings. Further, there is no
data in the Declaration to support Appellants' non-enablement argument as
to Land. A prior art patent is presumptively enabling barring any showing to
the contrary by a patent applicant. In re Antor Ji;fedia Corp., 689 F.3d 1282,
1287 (Fed. Cir. 2012). For these reasons, we are not persuaded by
Appellants' arguments for reversal of the rejection. 2
Rejection 2
Claims 18-25 additionally recite a transfer resin film on the surface of
the PV A layer, which the Examiner finds is taught by Sugino. Claims
Appx.; Final Act. 11-12. Appellants do not present argument against the
Examiner's findings as to Sugino, and merely argue that Sugino fails to
2 We have not considered the co-inventor's Experimental Report attached
to Appellants' Reply Brief, or any data presented in that report. 37 C.F.R.
§ 41.41.
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Appeal2015-003027
Application 13/595,532
teach the recited optical properties. App. Br. 14--15. As discussed above,
we determine that the Examiner did not reversibly err in finding that the
recited optical properties are inherent to Land's polarizer film. Accordingly,
we also affirm the rejection of claims 18-25 as unpatentable over the
combination of Land and Sugino.
SUMMARY
We affirm the rejection of claims 1-30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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