Ex Parte Horio

Patent Trial and Appeal Board

Jun 14, 2018

13876952 (P.T.A.B. Jun. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/876,952 06/26/2013 Tomoyuki Horio
52835 7590 06/18/2018
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
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.
20162.0148USWO 3773
EXAMINER
ROBINSON, ELIZABETH A
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
06/18/2018 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):
PTOMail@hsml.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMOYUKI HORIO
Appeal2017-008520
Application 13/876,952
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter "Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner's decision to reject claims 1-21. 2 We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Appellant identifies the real party in interest as "Dai Nippon Printing
Co., Ltd." (Appeal Brief filed February 8, 2017, hereinafter "Appeal Br.,"
3).
2 Appeal Br. 7-11; Reply Brief filed May 22, 2017, hereinafter "Reply Br.,"
1--4; Non-Final Office Action entered September 8, 2016, hereinafter "Non-
Final Act.," 2-7; Examiner's Answer entered March 20, 2017, hereinafter
"Ans.," 2---6.
Appeal2017-008520
Application 13/876,952
I. BACKGROUND
The subject matter on appeal relates to an optical layered body, which
may be included in an image display device as an outermost surface
(Specification filed March 29, 2013, hereinafter "Spec.," ,r,r 1-5, 66). Figure
1 is illustrative and is reproduced from the Drawings as follows:
I
""""""'"" ···-·-···········································------- ~ ::::::: ~: ..:} 12 - - '"'"'
} Re,,;;:ion O i;
~
,.__ __________ __.,._ 11 U:,iht·-tnJtn~mitting bz,~e
Figure 1 above depicts a schematic cross-sectional view showing an optical
layered body 10 in accordance with the invention, wherein the optical
layered body 10 includes a hard coat layer 12, which is defined by an uneven
distribution of reactive, irregularly-shaped silica fine particles in three
divided regions (1 ), (2), and (3) in the layer's thickness direction, disposed
on a light-transmitting base or substrate 11 (id. ,r 11 ).
Representative claim 1, the sole independent claim on appeal, is
reproduced from the Claims Appendix to the Appeal Brief (Appeal Br. 13;
some formatting and emphasis added), as follows:
1. An optical layered body, comprising:
a light-transmitting substrate; and
a hard coat layer formed on the light-transmitting
substrate,
wherein the hard coat layer contains reactive irregularly
shaped silica fine particles and a binder resin, the reactive
irregularly shaped silica fine particles being unevenly distributed
at the side of the light-transmitting substrate in the hard coat
layer,
2
Appeal2017-008520
Application 13/876,952
the hard coat layer being divided in its thickness direction
into three equal regions, a region (1 ), a region (2), and a region
(3) in the order from the interface on the side of the light-
transmitting substrate,
the reactive irregularly shaped silica fine particles in the
region (1) exhibiting a ratio of 30 to 90% in area,
the reactive irregularly shaped silica fine particles in the
region (2) exhibiting a ratio of 25 to 80% in area,
the reactive irregularly shaped silica fine particles in the
region (3) exhibiting a ratio of 10 to 20% in area, and
the regions (1), (2), and (3) satisfying the following
relationship: the ratio in area of the reactive irregularly shaped
silica fine particles in the region (1) ~ the ratio in area of the
reactive irregularly shaped silica fine particles in the region (2)
> the ratio in area of the reactive irregularly shaped silica fine
particles in the region (3).
II. REJECTION ON APPEAL
On appeal, claims 1-21 stand rejected under 35 U.S.C. § I03(a) (pre-
AIA) as unpatentable over Horio et al. 3 (hereinafter Horio) (Ans. 2---6; Non-
Final Act. 2-7).
III. DISCUSSION
The Examiner finds that Horio describes a transparent (light-
transmitting) substrate provided with a hard coat layer comprising a binder
and reactive, irregularly-shaped silica fine particles (Non-Final Act. 2-3).
The Examiner acknowledges, however, that Horio does not describe the
disputed limitations highlighted above in reproduced claim 1 (id. at 3). The
Examiner finds, however, that "the optical article of Horio can be formed
from identical materials and identical or almost identical amounts in an
identical manner as in the instant application" and, therefore, "it would have
3 US 2010/0124656 Al, published May 20, 2010.
3
Appeal2017-008520
Application 13/876,952
been obvious to one of ordinary skill in the art ... that the teachings of
Horio encompass optical layered bodies that meet the claimed area ratios,
barring evidence to the contrary" (id. at 4; Ans. 3).
The Appellant contends that "Horio nowhere discusses any measures
to take in selecting materials and processing conditions to ensure that a
particle distribution in the thickness direction as reflected by the area ratios
required by claim 1 could be obtained" (Appeal Br. 8). Rather, according to
the Appellant, Horio' s Figure 2 "illustrates a distribution relationship
opposite to that required by claim 1" because "the region corresponding to
the region (3) of claim 1, which is the area between the reference numerals
10 and 20, has the highest area ratio" (id.). The Appellant points out that the
current Specification describes, for example, the need for "particular drying
conditions in order to achieve the distribution relationship of the reactive
irregularly shaped fine silica particles in the three equal regions of the hard
coat layer as required by claim 1" and that the working examples reported in
the Specification (Spec. ,r,r 75-102) demonstrate that mere similarities in
material and processing are insufficient to achieve the specified distribution
relationship (Appeal Br. 8-9).
We agree with the Appellant that the Examiner's rejection is not well-
founded. Horio describes an optical sheet in which at least a hard coat layer
is provided on a substrate, wherein the hard coat layer comprises reactive,
irregularly-shaped silica fine particles (Horio ,r,r 2, 8, 9). Consistent with the
Appellant's argument (Appeal Br. 8), however, Horio's "irregularly shaped
silica fine particles have a specific three-dimensional configuration and are
present on an interface on the side opposite to the substrate side of the hard
4
Appeal2017-008520
Application 13/876,952
coat layer" (Horio Abstract; emphasis added). Specifically, Horio's Figure 2
is reproduced as follows:
60 60 40
10
20
30
Horio' s Figure 2 is described as "a sectional view schematically showing an
example of cross-linking of irregularly shaped silica fine particles [ 60] on
the interface [10] on the side opposite to the substrate [70, shown in Fig. 3]
side of the hard coat layer [30] of the optical sheet" (id. ,r 27, emphasis
added; see also ,r 57). Therefore, the Appellant is correct that Horio's
teachings are contrary to the distribution requirements set forth in claim 1.
Moreover, the Examiner's inherency position based on identities of
materials, compositional amounts, and manner of making is flawed. As the
Appellant points out (Appeal Br. 8), the current Specification describes the
need for special processing conditions to achieve the specified distribution
requirements (Spec. ,r 43). The Examiner does not adequately take account
of such requirements. Therefore, we agree with the Appellant that the
Examiner fails to articulate a sufficient "reason to assume that the hard coat
layer of Horio would possess the area ratios and the distribution relationship,
as required by claim 1" (Appeal Br. 8).
5
Appeal2017-008520
Application 13/876,952
For these reasons, we cannot uphold the Examiner's rejection.
IV. SUMMARY
The Examiner's decision to reject claims 1-21 is reversed.
REVERSED
6