Ex Parte Greener et al

Board of Patent Appeals and Interferences

Jun 22, 2009

10954330 (B.P.A.I. Jun. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEHUDA GREENER, CHARLES C. ANDERSON,
and MARCUS S. BERMEL
____________

Appeal 2008-005339
Application 10/954,330
Technology Center 1700
____________

Decided:1 June 22, 2009
____________

Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-005339
Application 10/954,330

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 28-46, 49, 53, 54, and 56-60 (Final Office
Action, mailed Apr. 19, 2007). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention is directed to a resin film for use in various optical
applications, including a protective cover in an optical device such as a
liquid crystal display. (Spec. 1:3-6.) Claims 28, 30, 38, and 46 are
illustrative of the subject matter on appeal, and are reproduced from the
Claims Appendix to the Amended Appeal Brief (“App. Br.”), filed Nov. 20,
2007:
28. A composite element comprising:

a resin film coated on a discontinuous carrier substrate, the resin film
having a thickness in the range of from 1 to 100 µm, the resin film having an
in-plane retardation that is less than 20 nm and an OPR less than 20 nm, the
resin film being adhered to the carrier substrate with an adhesive strength of
less than about 250 N/m.

30. A composite element as recited in claim 28 wherein:

the resin film has an in-plane retardation that is between 0.5 and 5 nm
and an OPR of between 0.5 and 5 nm.

38. A composite element comprising:

a polycarbonate resin film at least 10 meters in length coated on a
discontinuous carrier substrate, the resin film having a thickness in the range
of from 1 to 100 µm, the resin film having an in-plane retardation that is less
than 20 nm and an out of plane retardation less than 100 nm, the resin film
being adhered to the carrier substrate with an adhesive strength of less than
about 250 N/m.

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46. A resin film comprising:

a layer of resin formed by a coating operation, the resin film having a
thickness in the range of from 1 to 100 µm, the resin film having an in-plane
retardation that is between 0.5 and 5 nm and an out-of-plane retardation of
between 0.5 and 5 nm.

The Examiner relies on the following evidence to establish
unpatentability (Examiner’s Answer (“Ans.”), mailed Dec. 27, 2007, 3):
Aizawa 4,427,741 Jan. 24, 1984
Taketani 5,478,518 Dec. 26, 1995
Shiro 5,645,766 Jul. 08, 1997
Sumi 6,582,789 B1 Jun. 24, 2003
Saiki 6,697,132 B2 Feb. 24, 2004

Appellants request review of the following grounds of rejection (App.
Br. 3):
1. claims 28-32, 36, and 59 under 35 U.S.C. § 103(a) as
unpatentable over Shiro in view of Sumi;
2. claims 33 and 34 under 35 U.S.C. § 103(a) as unpatentable over
Shiro in view of Sumi as applied to claims 28-32 and 36 and further in view
of Dirk;
3. claim 35 under 35 U.S.C. § 103(a) as unpatentable over Shiro
in view of Sumi as applied to claims 28-32 and 36 and further in view of
Kobayashi;
4. claim 37 under 35 U.S.C. § 103(a) as unpatentable over Shiro
in view of Sumi as applied to claims 28-32 and 36 and further in view of
Saiki;
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5. claims 38-43, 45, and 60 under 35 U.S.C. § 103(a) as
unpatentable over Taketani in view of Sumi;
6. claim 44 under 35 U.S.C. § 103(a) as unpatentable over
Taketani in view of Sumi as applied to claims 38-43 and 45, and further in
view of Kobayashi; and
7. claims 46, 49, 53-54, and 56-58 under 35 U.S.C. § 103(a) as
unpatentable over Aizawa.
With respect to the first ground of rejection, Appellants argue the
patentability of the rejected claims on the basis of limitations found in
independent claim 28, and also present separate arguments in support of
patentability of dependent claim 30. (App. Br. 5-6.) In traversing the
second and third grounds of rejection, Appellants rely on the arguments
advanced in support of patentability of independent claim 28. (See App. Br.
7.) Appellants likewise contend that the arguments advanced in support of
patentability of independent claim 28 also apply to independent claim 38
and, therefore, warrant reversal of the fifth and sixth grounds of rejection.
(See App. Br. 8.) Appellants do not present separate arguments as to any
particular claim subject to the seventh ground of rejection. (See App. Br. 8-
9.) We decide the appeal as to the seventh ground of rejection on the basis
of independent claim 46.

ISSUES
Have Appellants shown reversible error in the Examiner’s finding
that:
1. Sumi suggests the use of an adhesive strength of less than about
250 N/m between a resin film and a carrier substrate?
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2. Shiro’s 30 μm film would be expected to have the same refractive
index difference as Shiro’s 100 μm film?
3. one of ordinary skill in the art would have had a reasonable
expectation of success in using a cellulose ester in place of a
polyethersulfone in Shiro’s film in view of Saiki’s disclosure?
4. it would have been within the level of skill of the ordinary artisan
to have modified Aizawa’s resin film to achieve the claimed in-plane and
out-of-plane retardations?
We answer each of these questions in the negative for the reasons
expressed in the Examiner’s Answer and below.
FINDINGS OF FACT (“FF”)
Claims 28-45, 59, and 60:
1. Independent claims 28 and 38 recite “[a] composite element
comprising . . . resin film . . . adhered to [a] carrier substrate with an
adhesive strength of less than about 250 N/m.”
2. Shiro (Abstract), Taketani (col. 1, ll. 8-17) and Sumi (Abstract)
disclose resin films for use in optical devices, such as liquid crystal displays
(LCDs).
3. Appellants do not dispute the Examiner’s finding that the
invention, as recited in claims 28 and 38, is disclosed or suggested by Shiro
and Taketani, respectively, with the exception of “the resin film [being]
adhered to the carrier substrate with an adhesive strength of less than 250
N/m” (Ans. 4-5 and 11). (See App. Br. 4-5 and 8.)
4. Appellants concede that Sumi discloses a composite film
having the following layers: Adhesive/Polyester/Protective (App. Br. 4) and
that Sumi’s Polyester and Protective layers correspond to Appellants’
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claimed Carrier Substrate and Resin layers, respectively (App. Br. 5).
Appellants further concede that when Sumi’s film is wound into a roll, “the
protective layer and adhesive layer contact each other.” (App. Br. 4.)
5. Sumi discloses that
[w]hen the peel force against the protective layer is less than
10 mN/25 mm, the surface protective film may not be rolled
up neatly. On the other hand, when the peel force is more
than 1,000 mN/25 mm, great tension is required when a wide
film is unrolled, and such great tension requires large-scale
facilities and increases peeling charge, whereby the surface
of the film may be damaged.

(Sumi, col. 11, l. 64-col. 12, l. 3.)
Claim 30:
6. Claim 30 depends from independent claim 28 and requires that
“the resin film has an in-plane retardation that is between 0.5 and 5 nm.”
7. The Examiner concedes that Shiro fails to explicitly teach a
resin film having an in-plane retardation that is between 0.5 and 5 nm. (Ans.
5.) However, the Examiner finds that a film having a 30 μm average film
thickness would be expected to have a refractive index difference of less
than 0.0001, the same value measured for a 100 μm film in Shiro’s Example
1. (Ans. 6 and 20.) Based on this finding, the Examiner calculates an in-
plane retardation of 3 nm for a 30 μm film, which falls within Appellants’
claimed range. (Ans. 6.)
8. The refractive index difference is a measure of optical
uniformity. (Shiro, col. 14, ll. 25-26.) According to Shiro, the refractive
index difference of the film must be 0.0010 or less in order to achieve the
desired optical properties. (See Shiro, col. 14, ll. 19-24.)
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9. Appellants concede that Shiro “suggest[s] a film thickness in
the range of from 30 to 300 μm” and that Shiro discloses an example in
which the refractive index difference of the film is 0.0001 at a film thickness
of 98 μm. (App. Br. 5-6; see Ans. 3 and 5 (citing Shiro, col. 13, l. 65), Ans.
4 (citing Shiro, col. 17, ll. 3-4) and Ans. 6 (citing Shiro, col. 17, ll. 12-15).)
Appellants also do not dispute the Examiner’s finding that in-plane
retardation is calculated by multiplying the in-plane refractive index
difference by the film thickness (see Ans. 6-7). (App. Br. 5.) However,
Appellants disagree with the Examiner’s finding that a 30 μm film would be
expected to have the same refractive index difference as a 100 μm film.
(App. Br. 6.)
10. Appellants contend that the refractive index difference of a 30
μm film would be higher than that of a 100 μm film, relying on the
following disclosure in Shiro to establish that the optical properties of films
having a thickness of at least 50 μm are preferred for enabling good optical
properties (App. Br. 6 (quoting Shiro, col. 14, ll. 42-50)):
The average thickness of the optically isotropic film of the
present invention is in the range of from 30 to 300 μm, preferably
50 to 200 μm. For a liquid crystal display device, preferred is the
film having an average thickness of 50 to 200 μm. When the
average thickness is larger than the above upper limit, it is
difficult to remove the residual solvent. When it is smaller than
the above lower limit, it is difficult to prevent the thickness
nonuniformity. Further, the thickness nonuniformity greatly
influences the optical properties.

11. It is unclear whether the phrase “above lower limit” (FF 10) is
intended to refer to 30 μm or 50 μm. (See Ans. 20.)
Claim 37:
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12. Claim 37 depends from independent claim 28 and requires that
“the resin film comprises cellulose ester.”
13. Saiki discloses an optical material (Abstract) for use in an LCD
(col. 1, ll. 8-10) comprising a protective film (col. 4, l. 24) which may be
made of a polymer such as cellulose acetate or polyethersulfone (col. 4, ll.
27-28). (See Ans. 10.)
Claims 46, 49, 53-54, and 56-58:
14. The Examiner finds that Aizawa discloses the claim 46 resin
film with the exception of an explicit teaching of in-plane and out-of-plane
retardations between 0.5 and 5 nm. (Ans. 15.) The Examiner finds that
Aizawa teaches that the resin film has a retardation of 5 nm (Ans. 23 (citing
Aizawa, col. 3, ll. 50-59)) and that “Aizawa establishes both the in-plane and
the out-of-plane retardations as result-effective variables, which are to be
minimized to a retardation of 0 in theory” (Ans. 24).

PRINCIPLES OF LAW
When a second reference identifies the benefits of adding a feature to
the primary reference, an obviousness rejection is proper. In re Thrift, 298
F.3d 1357, 1365 (Fed. Cir. 2002). See KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 417-18 (2007) (An obviousness analysis “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.”).
Where . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on ‘inherency’ under
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35 U.S.C. § 102, on ‘prima facie obviousness' under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is
the same, and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art
products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (internal citations omitted).
See also, In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
The substitution of one known element for a known equivalent is
prima facie obvious. In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997).
The “‘normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a
disclosed set of percentage ranges is the optimum combination of
percentages.’” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1168 (Fed.
Cir. 2006) (citing In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)).
When patentability is predicated upon a change in a condition of a prior art
composition, such as a change in concentration or the like, the burden is on
appellant to establish with objective evidence that the change is critical, i.e.
it leads to a new, unexpected result. See In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955).

ANALYSIS
Claims 28-45, 59, and 60: Have Appellants shown reversible error in
the Examiner’s finding that Sumi suggests the use of an adhesive strength of
less than about 250 N/m between a resin film and a carrier substrate?
Appellants’ request for reversal of the rejections of claims 28-45, 59,
and 60 is based on their contention that the Examiner mischaracterized the
adjacent layers of Sumi’s wound film roll (i.e.,
Protective/Adhesive/Polyester) as corresponding to a “composite element”
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comprising Carrier Substrate/Adhesive/Resin layers. (App. Br. 4-5; Reply
Brief (“Rep. Br.”), filed Feb. 27, 2008, 2.) According to Appellants, Sumi’s
“composite element” is the unwound film in which the layers are
Adhesive/Polyester/Protective, i.e., Adhesive/Carrier Substrate/Resin.
Appellants argue that the Polyester and Protective layers (i.e., Carrier
Substrate and Resin layers) of Sumi’s unwound film, while disclosed as
being adjacent, are neither described as having any particular adhesive
strength between them nor indicated as peelable from one another. (App.
Br. 4-5.)
Appellants’ argument fails to persuade us of reversible error on the
part of the Examiner because Appellants’ argument misapprehends the facts
and reasons relied on by the Examiner in rejecting the claims. Contrary to
Appellants’ contention, the Examiner’s rejection is not based on a finding
that Sumi discloses a composite element which corresponds to Appellants’
claimed composite element. Rather, the Examiner relies upon Shiro and
Taketani for a teaching of a “composite element.” (See Ans. 3-4 and 11.)
Sumi is relied upon solely for a disclosure of the adhesive strength necessary
to adhere two layers of the same types of materials used in Shiro’s and
Taketani’s composite elements. (See Ans. 5 and 11-12.) Appellants have
not explained why the Examiner erred in determining that it would have
been obvious to have employed an adhesive strength of less than about 250
N/m between the resin film and carrier substrate in the Shiro and Taketani
composite elements “in order to maintain the structural integrity of the resin
film, as taught by Sumi” (Ans. 5 and 12). (See FF 2-5.)
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Claim 30: Have Appellants shown reversible error in the Examiner’s
finding that Shiro’s 30 μm film would be expected to have the same
refractive index difference as Shiro’s 100 μm film?
Appellants contend that the Examiner’s rejection of claim 30 should
be reversed because it is based on an incorrect finding that a film having a
30 μm average film thickness would be expected to have a refractive index
difference of less than 0.0001, the same value measured for a 100 μm film.
We have considered Appellants’ arguments, but do not agree that the relied-
upon disclosure in Shiro establishes that the Examiner’s finding is incorrect.
Appellants have provided arguments in support of an alternative
interpretation of Shiro (FF 10), but have not persuasively argued that the
Examiner’s findings were unreasonable or insufficient to support the
Examiner’s determination that the composite element of Shiro, as modified
by Sumi, is substantially the same as the composite element recited in
Appellants’ claim 30 (see FF 7-9 and 11).2 Therefore, Appellants have not
shown that the Examiner failed to establish a prima facie case of
obviousness as to appealed claim 30.
Appellants concede that they have not submitted evidence to establish
that the Examiner’s proposed combination of Shiro and Sumi would not
necessarily or inherently possess the characteristics of the claimed composite
element. (Rep. Br. 3.) Absent such evidence, we conclude that a

2 Moreover, even assuming Appellants’ interpretation is correct, Appellants
have not addressed the Examiner’s contention that “it would have been
obvious to one of ordinary skill . . . to have optimized the process of forming
the composite element of Shiro” to obtain the claimed in-plane and out-of-
plane retardations “in order to provide a highly isotropic resin film” (Ans.
7).

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preponderance of the evidence favors the Examiner’s obviousness
determination as to claim 30.
Claim 37: Have Appellants shown reversible error in the Examiner’s
finding that one of ordinary skill in the art would have had a reasonable
expectation of success in using a cellulose ester in place of a
polyethersulfone in Shiro’s film in view of Saiki’s disclosure?
Appellants request reversal of the rejection of claim 37 on the basis
that the Examiner erred in concluding that one of ordinary skill in the art
would have had a reasonable expectation of success in using a cellulose ester
in place of a polyethersulfone. (App. Br. 7.) Appellants argue that Shiro
and Sumi fail to disclose or suggest the use of materials other than
polyethersulfones. (App. Br. 7.)
Appellants’ fail to persuade us of reversible error on the part of the
Examiner because they have not addressed the Examiner’s rationale in
rejecting claim 37. Specifically, Appellants have not explained why the
Examiner erred in finding that the ordinary artisan would have had a
reasonable expectation of success in using a cellulose ester in place of a
polyethersulfone based on Saiki’s explicit teaching that cellulose ester may
be used in lieu of polyethersulfone for an optical film used in a liquid crystal
display. (See Ans. 10-11; FF 13; FF 2 (use of Shiro’s film as a substrate for
an LCD).)
Claims 46, 49, 53-54, and 56-58: Have Appellants shown reversible
error in the Examiner’s finding that it would have been within the level of
skill of the ordinary artisan to have modified Aizawa’s resin film to achieve
the claimed in-plane and out-of-plane retardations?
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Appellants do not dispute the Examiner’s finding that the in-plane and
out-of-plane retardations are result-effective variables (FF 14). (See App.
Br. 8-9; Rep. Br., generally). Because this finding is uncontested, the
burden is on Appellants to establish, with objective evidence, that the
claimed ranges for the in-plane and out-of-plane retardations are critical, i.e.,
lead to a new and unexpected result. Appellants have not presented such
evidence, and cannot meet this burden simply by arguing that “there is no
teaching as to how in fact optimize any process disclosed [in Aizawa] so as
to be able to achieve the claimed out-of-plane retardation values.” (App. Br.
8.)

CONCLUSION
Appellants have not identified reversible error in the Examiner’s
obviousness determination as to appealed claims 28-46, 49, 53, 54, and 56-
60. Therefore, we sustain all seven grounds of rejection.

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)(v).
AFFIRMED

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PAUL A. LEIPOLD
PATENT LEGAL STAFF
EASTMAN KODAK COMPANY
343 STATE STREET
ROCHESTER, NY 14650-2201
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