Ex Parte Hada et al

Patent Trial and Appeal Board

Jun 27, 2018

14130222 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/130,222 12/30/2013 KazuyaHada
38834 7590 06/29/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
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.
P24204USOO 9330
EXAMINER
V ARGOT, MATHIEU D
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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 KAZUY A HADA,
SATOSHI HIRATA, MASAKAZU MOCHIZUKI,
and SEIJI KONDO
Appeal2017-009053
Application 14/130,222 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
BRIAND. RANGE, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner's
decision finally rejecting claims 11-20 under 35 U.S.C. § 103(a) as unpatentable
1 According to the Appellants, the real party in interest is NITTO DENKO
CORPORATION. Appeal Brief dated November 30, 2016 ("App. Br."), at 2.
Appeal2017-009053
Application 14/130,222
over JP 827, 2 either alone or in combination with JP 907. 3 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
The claimed subject matter is directed to a method for manufacturing a
treated resin film and an apparatus for manufacturing a treated film. The claimed
method comprises treating a long resin film by bringing the film into contact with a
treatment liquid in a treatment tank while feeding the film. At least one of the
treatment steps is a one-side contact step that includes bringing a lower surface of
the film into contact with a surface of the treatment liquid in the treatment tank.
The treatment tank is inclined, wherein the downstream side of the treatment tank
is higher than the upstream side of the treatment tank with respect to the direction
that the long resin film is fed. See App. Br. 10 (claim 11); App. Br. 12 (claim 17).
The Appellants disclose:
In a preferred mode, the one-side treatment tank Y is horizontally
placed so that the surface of the treatment liquid X is kept horizontal,
and the resin film Wis also fed horizontally. Horizontal placement of
the one-side treatment tank Y is preferred. Alternatively, however,
the one-side treatment tank Y may be so inclined that its downstream
side is higher than its upstream side with respect to the direction in
which the film is fed. When the one-side treatment tank Y is placed
in such an inclined position that its upstream side is lowered, the resin
film can be brought into contact with the treatment liquid X being
always allowed to overflow.
Spec. ,r 30 ( emphasis added).
2 JP 2001-108827, published April 20, 2001 ("JP 827"). We refer to the English
language translation dated November 26, 2013, which is of record in the instant
app li cation.
3 JP 59059907 A, published April 5, 1984 ("JP 907"). We refer to the English
language translation of the Abstract dated March 20, 2016, which is of record in
the instant application.
2
Appeal2017-009053
Application 14/130,222
Claim 11 is reproduced below from the Claims Appendix of the Appeal
Brief. The limitation at issue is italicized.
11. A method for manufacturing a treated resin film from a long
resin film, the method comprising at least treatment steps each
including treating the long resin film by bringing the long resin film
into contact with a treatment liquid in a treatment tank, while feeding
the long resin film, wherein
at least one of the treatment steps is a one-side contact step
including bringing a lower surface of the resin film into contact with a
surface of the treatment liquid in the treatment tank that is filled with
the treatment liquid, and
nip rolls are placed downstream of at least one one-side
treatment tank for the one-side contact step, and the one-side
treatment tank is inclined that a downstream side of the one-side
treatment tank is higher than an upstream side of the one-side
treatment tank with respect to the direction in which the long resin
film is fed.
App. Br. 10.
The§ 103(a) rejection of claims 11-20 is sustained for the reasons
provided in the Non-Final Office Action dated March 25, 2016 ("Non-Final
Act."), the Final Office Action dated June 30, 2016 ("Final Act."), and the
Examiner's Answer dated March 21, 2017 ("Ans."). We add the following
for emphasis.
B. DISCUSSION
The Examiner finds that JP 827 discloses a method and apparatus for
manufacturing a treated resin film as claimed with the exception that JP 827 does
not disclose that the treatment tank is inclined. Non-Final Act. 2-3. JP 827
discloses that the treatment bath is in the horizontal position. See JP 827, Fig. 1.
Similar to the Appellants' treatment tank, however, JP 827 discloses that the
treatment tank is "always considered as the overflowing state." JP 827, at ,r 11.
3
Appeal2017-009053
Application 14/130,222
The Examiner finds that "JP -907 discloses a treatment tank that is inclined
in the [claimed] manner." Non-Final Act. 3. The Examiner finds that "based on
JP -907, one of ordinary skill in the fluid treating art would recognize that tilting
the tank in the [ claimed] manner would afford a countercurrent flow of fluid
against the material being treated, and such would be understood to be beneficial in
providing fresh fluid for the treatment."4 Final Act. 3; see also Adv. Act. 2
(finding that the flow in the inclined tank of JP 907 "would facilitate the contact of
fresh fluid with the film"); 5 Ans. 5 (finding that fresh fluid during the treatment
would increase the effectiveness of the treatment). Based on the teachings in JP
907, the Examiner concludes that it would have been obvious to one of ordinary
skill in the art to incline the treatment tank in JP 827, as claimed. Non-Final
Act. 3.
The Appellants argue that "[ t ]he purpose and the process of the dyeing step
in JP-827 are very different from those of the counter current washing step in JP-
907." App. Br. 7. In particular, the Appellants argue that a film is immersed in the
washing step of JP 907, whereas one side of the film is treated in JP 827. App. Br.
7. Therefore, the Appellants argue that it would not have been obvious to combine
JP 827 and JP 907 as proposed by the Examiner. App. Br. 8.
4 The Examiner also finds:
[I]t is well known in the art-and in fact everyday experience-that
tilting a vat so that it is inclined would clearly allow flow of a liquid
in the vat in the direction of the tilt. Hence, it is ... common
sense ... that tilting the tank in JP -827 would facilitate the flow of
treatment fluid so that a countercurrent flow of fluid would be
obtained.
Final Act. 2. It is not necessary to address the Examiner's finding in view of our
affirmance based on the combination of JP 827 and JP 907.
5 Advisory Action dated September 15, 2016.
4
Appeal2017-009053
Application 14/130,222
To the extent that the dyeing step disclosed in JP 827 and the washing step
disclosed in JP 907 are different, JP 827 and JP 907, nonetheless, both disclose
methods for circulating a treatment solution. See JP 82 7, at ,r 12 ( disclosing that
solutions overflowed from bath 5 are collected by overflow bath 6 and returned
and reused by bath 5 via circulating piping system 7); JP 907, Abstract ( disclosing
a counter current washing device). For that reason, one of ordinary skill in the art,
exploring alternative ways to circulate the treatment solution in JP 827, would have
found the inclined treatment bath in JP 907 to be useful. See Final Act. 2-3
(finding that"[ o ]ne of ordinary skill would realize that JP -907 is presenting a
similar solution in a similar operation").
The Appellants recognize that the countercurrent flow in JP 907 is made
possible by inclining the tank. Reply Br. 5. 6 Nonetheless, the Appellants argue
that "other designs or parameters in JP-907 are also essential in achieving the
countercurrent flow." Reply Br. 5. Therefore, the Appellants argue that "one of
ordinary skill in the art would not have recognized that an inclined tank in JP-827
would naturally provide a countercurrent flow that would benefit the treatment."
Reply Br. 5.
Significantly, the Appellants do not identify the "other designs or parameters
in JP 907" that are "essential in achieving the countercurrent flow." See Reply Br.
5. Likewise, the Appellants do not explain, in any detail, why one of ordinary skill
in the art would not have included designs or parameters necessary for achieving
the countercurrent flow disclosed in JP 907 when modifying the method and
apparatus of JP 827, as proposed by the Examiner. See KSR Int'! Co. v. Teleflex
6 Reply Brief dated May 19, 2017.
5
Appeal2017-009053
Application 14/130,222
Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a person of
ordinary creativity, not an automaton.").
Finally, the Appellants argue that neither JP 827 nor JP 907 discloses the
benefit of the instant application, which is "reducing the occurrence of scratches,
dents, and other defects of the treated film." App. Br. 8 (citing Spec. ,r 10).
According to the Appellants' Specification, the one-side contact step, not the
inclined treatment bath, reduces the occurrence of scratches or dents. 7 Spec. ,r 25.
JP 827 discloses a one-side contact step. Therefore, we find that the method of JP
827 necessarily reduces the occurrence of scratches or dents to some degree.
The§ 103(a) rejection of claims 11-20 is sustained. 8
C. DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
7 The Appellants also disclose that the placement of liquid removal means P (see,
e.g., Figure 3) prevents scratching or denting. Spec. ,r 35. Neither claim 11 nor
claim 17, however, recites a liquid removal means.
8 The Appellants do not present arguments in support of the separate patentability
of any of dependent claims 12-16 and 18-20.
6