Ex Parte Hayashida et al

Board of Patent Appeals and Interferences

Oct 28, 2009

10505020 (B.P.A.I. Oct. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NAOKI HAYASHIDA, KENJI YONEYAMA,
and KAZUSHI TANAKA
____________

Appeal 2009-006747
Application 10/505,020
Technology Center 1700
____________

Decided: October 28, 2009
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHARLES F. WARREN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-3 and 9-11. We
have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:

Appeal 2009-006747
Application 10/505,020

1. An article with a composite hard coat layer comprising a hard
coat layer on a surface of the article and an anti-staining surface layer on a
surface of the hard coat layer, wherein

the hard coat layer comprises a cured product of a hard coat agent
composition comprising an active energy ray-curable compound,

the anti-staining surface layer comprises a cured product of a surface
material comprising a fluorine-containing polyfunctional (meth)acrylate
compound and a fluorine-containing monofunctional (meth)acrylate
compound,

the anti-staining surface layer is fixed on the hard coat layer,
wherein the weight ratio (P/M) of the fluorine-containing polyfunctional
(meth)acrylate compound (P) to the fluorine-containing monofunctional
(meth) acrylate compound (M) is from 0.05/1.0 to 10/1.0, and

wherein the composite hard coat layer is produced by a process
comprising simultaneously irradiating with active energy rays the hard coat
agent composition and the surface material while the hard coat agent
composition is in direct contact with the surface material.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
Strepparola 4,681,925 Jul. 21, 1987
Mizuno 5,219,074 Jun. 15, 1993
Kuwahara 5,580,633 Dec. 03, 1996
Wu 6,617,011 B2 Sep. 09, 2003

Appellants’ claimed invention is directed to an article having a hard
coat layer on its surface and an anti-staining layer on the hard coat layer.
The hard coat layer is cured by radiation, as is the anti-staining layer. The
anti-staining layer is the cured product of a fluorine-containing
polyfunctional (meth)acrylate compound and a fluorine-containing
monofunctional (meth)acrylate compound. The hard coat layer and the anti-
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staining layer are cured simultaneously by radiation to produce a composite
hard coat layer.
Appealed claims 1-3 and 9-11 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kuwahara in view of Wu, Strepparola, and
Mizuno.
Appellants do not separately argue any particular claim on appeal.
Accordingly, all the appealed claims stand or fall together with claim 1.
We have thoroughly reviewed Appellants’ arguments for
patentability, including the Specification and Declaration evidence relied
upon in support thereof. However, we are in complete agreement with the
Examiner that the claimed subject matter would have been obvious to one of
ordinary skill in the art within the meaning of § 103 in view of the applied
prior art. Accordingly, we will sustain the Examiner’s rejection for
essentially those reasons expressed in the Answer.
There is no dispute that Kuwahara discloses an article, a magneto-
optical recording disc, comprising the presently claimed hard coat layer on a
substrate. As acknowledged by the Examiner, Kuwahara does not teach a
surface layer on the hard coat layer comprising Appellants’ fluorine-
containing polyfunctional compound and fluorine-containing
monofunctional compound. However, Wu discloses a lubricant top coat for
a magnetic recording medium that may comprise a copolymer of the
presently claimed fluorine-containing polyfunctional (meth)acrylate
compound and fluorine-containing monofunctional (meth)acrylate
compound. Accordingly, since both Kuwahara and Wu are directed to
magnetic recording articles, we agree with the Examiner that it would have
been obvious for one of ordinary skill in the art to apply the lubricating top
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coat of Wu to the hard coat layer of Kuwahara to provide greater wear
resistance, particularly since Wu’s top coat is applied to a carbon-containing
layer and Kuwahara’s hard coat layer comprises carbon. We note that
Appellants advance no argument that it would have been non-obvious to
coat the hard coat layer of Kuwahara with the lubricating top coat layer of
Wu.
Appellants acknowledge that Wu exemplifies a fluorine-containing
polyfunctional (meth)acrylate compound and a fluorine-containing
monofunctional (meth)acrylate compound for the lubricant top coat, but
submit that Wu does “not specifically disclose that the fluorine-containing
polyfunctional (meth)acrylate compound is used together with the fluorine-
containing monofunctional (meth)acrylate compound” (App. Br. 6, first
para.). However, Wu expressly teaches that the lubricant composition has
the formula A-Rf-B wherein one of or both A and B may be polymerizable
acrylate groups which produce copolymers (see col. 5, ll. 19-55).
Accordingly, we find no error in the Examiner’s finding that Wu provides a
clear teaching and suggestion of a lubricant top coat comprising both of
Appellants’ fluorine-containing polyfunctional and monofunctional
compounds. As for the broad range of ratios between the monofunctional
and polyfunctional compounds, we agree with the Examiner that it would
have been obvious for one of ordinary skill in the art to resort to no more
than routine experimentation to determine the optimum, workable ratios for
the monofunctional and polyfunctional compounds taught by Wu,
particularly since Strepparola evidences that it was known in the art that the
properties of the resultant copolymer are contingent upon the ratios of the
monofunctional and polyfunctional monomers. In re Boesch, 617 F.2d 272,
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276 (CCPA 1980). Appellants have proffered no objective evidence which
establishes criticality for the claimed ratios.
Concerning the product-by-process language that calls for
simultaneously irradiating the hard coat layer and the anti-staining layer, we
agree with the Examiner that Appellants have not presented objective
evidence which demonstrates that simultaneous irradiation of the broad
classes of hard coat and anti-staining layers within the scope of the appealed
claims produces an article that is patentably distinct from what is suggested
by the prior art. While Appellants rely upon the Tanaka Declaration for
showing that
simultaneous[ly] irradiating the uncured surface material
when it is direct contact with the uncured (Example 1 and 6)
or half-cured (Example 2) hard coat layer results in a
significant increase in adhesion between the surface layer
and the hard coat layer as compared to irradiating the
uncured surface material when it is in direct contact with the
completely cured hard coat layer (Comparative Example 5
and 6)[]

(App. Br. 11, second para.), we concur with the Examiner that the
Declaration evidence is hardly commensurate in scope with the degree of
protection sought by the appealed claims. In re Grasselli, 713 F.2d 731, 743
(Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). As
pointed out by the Examiner, the Examples of the Declaration are limited to
a single, specific hard coat composition (DESOLITE Z7503), whereas
appealed claim 1 encompasses any and all hard coat agent compositions
comprising an active energy ray-curable compound. We agree with the
Examiner that since the hard coat composition of the Declaration is a hybrid
organic/inorganic material obtained by introducing photosensitive acryloyl
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groups into silica particles of small particle size, Appellants must
demonstrate that the reported results would translate to the extensive class of
hard coat compositions presently claimed. Also, the Examiner properly
points out that the Declaration Examples are limited to polycarbonate
substrates, whereas the appealed claims are not limited to any particular
substrate. Furthermore, the Declaration is limited to a specific anti-staining
layer, i.e., a combination of perfluoropolyether diacrylate and 3-
perfluorooctyl-2-hydroxypropyl acrylate.
Appellants also refer us to the Specification Examples for a showing
that a combination of monofunctional and polyfunctional acrylate
compounds in the anti-staining layer is superior to a composition comprising
a monofunctional acrylate compound. However, not only is the
Specification data not commensurate in scope with the appealed claims, but
Examples 1-5 and Comparative Example 1 of the Specification fail to
provide a meaningful side-by-side comparison. While Examples 1-5 of the
present invention use 3-perfluorooctyl-2-hydroxypropyl acrylate as the
monofunctional compound, Comparative Example 1 uses 2-(perflourodecyl)
ethyl acrylate, a substantially different monofunctional compound.
Consequently, any superiority demonstrated by Examples 1-5 cannot
necessarily be attributed to a combination of monofunctional and
polyfunctional acrylate compounds.
In conclusion, based on the foregoing, it is our judgment that the
evidence of obviousness presented by the Examiner outweighs the evidence
of non-obviousness proffered by Appellants. Accordingly, the Examiner’s
decision rejecting the appealed claims is affirmed.

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Appeal 2009-006747
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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) (2008).

AFFIRMED

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OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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