Ex Parte Iijima

Board of Patent Appeals and Interferences

Jun 30, 2009

11012244 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TADAYOSHI IIJIMA
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Appeal 2009-003840
Application 11/012,244
Technology Center 1700
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Decided: 1June 30, 2009
Heard: June 10, 2009
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Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

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).
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1 and 3. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
Claims 1 is set forth below:
1. A transfer functional film comprising:
at least a functional layer formed on a substrate, which is
separable from the substrate, the functional layer being a compressed
layer of functional fine grains; and
an adhesive layer formed on the functional layer, made up of an
adhesive composition containing a curing component (A) and a
polyester polyurethane resin (P), wherein the adhesive composition
contains an acrylic monomer (M) as the curing component (A).

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Iijima 2002/0086138 A1 Jul. 4, 2002
Oya EP 11478822 Oct. 24, 2001
Oya CN 1320929 Nov. 7, 2001
Iijima 10/754,620 (‘620 application) Jan. 12, 2004
Iijima 10/521,780 (‘780 application) Jan. 21, 2005

SUMMARY OF THE DECISION
We affirm.
THE REJECTIONS
Claims 1 and 3 are rejected under 35 U.S.C. §103(a) as unpatentable
over Iijima in view of Oya.

2 On page 3 of the Answer, the Examiner states that EP 1147882 is used as
an English translation for CN 1320929. Appellant has not objected to the
use of EP 1147882 as an English translation.
Appeal 2009-003840
Application 11/012,244
Claims 1 and 3 are rejected under the judicially created doctrine of
obviousness-type double patenting over claims 1 and 3 of U.S. Patent
Application No. 10/754,620 (the “‘620 application”) in view of Iijima and
Oya.
Claims 1 and 3 are rejected under the judicially created doctrine of
obviousness-type double patenting over claims 1 and 3 of U.S. Patent
Application No. 10/521,780 (the “‘780 application”) in view of Iijima and
Oya.
ISSUE
Has Appellant shown that the Examiner reversibly erred in rejecting
claims 1 and 3 by showing that there is not a reasonable expectation of
success that the UV curable resin layer 12 of Oya would adhere functional
layer 4 of Iijima to object article 6 of Iijima?

PRINCIPLES OF LAW
Obviousness does not require absolute predictability, but a reasonable
expectation of success. In re Clinton, 527 F.2d 1226, 1228-1229 (CCPA
1976).
If a prima facie case of obviousness is established, the burden shifts to
the applicant to come forward with arguments and/or evidence to rebut the
prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692-693 (Fed. Cir.
1990). Rebuttal evidence and arguments can be presented in the
specification, In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995), by counsel, In re
Chu, 66 F.3d 292, 299 (Fed. Cir. 1995), or by way of an affidavit or
declaration under 37 C.F.R. § 1.132, e.g., Soni, 54 F.3d at 750; In re
Piasecki, 745 F.2d 1468, 1474 (Fed. Cir. 1984). However, arguments of
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Application 11/012,244
counsel cannot take the place of factually supported objective evidence. See,
e.g., In re Huang, 100 F.3d 135, 139-40, (Fed. Cir. 1996); In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984).
When considering whether proffered evidence demonstrates
patentability, a side-by-side comparison of the claimed invention with the
closest prior art which is commensurate in scope with the claims is needed,
with an explanation as to why the results would have been unexpected by
one of ordinary skill in the art. See In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d at 705; In re Grasselli,
713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035
(CCPA 1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
After evidence or argument is submitted by the Applicant in response,
patentability is determined on the totality of the record, by a preponderance
of evidence (that it is more likely than not), with due consideration to
persuasiveness of argument. In re Caveny, 761 F.2d 671, 674 (Fed. Cir.
1985); In re Johnson, 747 F.2d 1456, 1460 (Fed. Cir. 1984).

FINDINGS OF FACT
Paragraph [0177] of Iijima describes that functional layer 4 is stuck
onto the surface of the object article 6 through adhesive layer 5. Paragraph
[0153] explains that adhesive layer 5 is formed on functional layer 4. This is
depicted in Figure 4. Figures 10 and 11 show functional layer 4 stuck to
object article 6 through adhesive layer 5.
Iijima does not indicate that tackiness is required for sticking
functional layer 4 to object article 6 through adhesive layer 5.
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Application 11/012,244
Paragraph [0154] of Iijima describes suitable adhesive materials as
follows:
[0154] The adhesive layers (5) and (15) of the functional film in the
present invention and the adhesive layer formed on the transfer-object
article in advance are not particularly limited and various known
adhesives may be used, if the adhesive layers have affinity to both the
functional layers (4) and (14) of the functional film and a surface of
the transfer-object article, and can strongly glue the both. For
example, an acrylic type adhesive, an epoxy type adhesive, an
isocyanate type adhesive, a silicone type adhesive and the like may be
mentioned. The adhesive may be curable one by ultraviolet rays or
heat after transferring to the transfer-object article. Hot melt type may
be also used.

Oya’s Figure 13 shows a transparent conductive thin film 13 attached
to transparent plastic film base 11 through UV curable resin film 12.
The Examiner correctly finds that the curable layer 12 of Oya is a
material that includes a UV curable polyester polyurethane, formed of a
polyfunctional urethane acrylic resin and a polyester resin dispersed therein,
and a curable monomer, such as methyl methacrylic. Oya, paras. [0033]-
[0035].3 Ans. 3-4.
ANALYSIS
As an initial matter, Appellants have not separately argued dependent
claim 3 in the Brief with any reasonable specificity, and accordingly

3 Oya teaches that curable resin layer 12 is applied to the transparent plastic
film base 11 as a prepared coating liquid. This coating is dried and then the
UV curable resin is cured by UV rays. Oya, para. [0042]. Thereafter,
transparent conductive thin film 13 is formed on the cured layer. Oya, paras.
[0046]- [0055]. To provide greater adhesion between transparent conductive
film 13 and cured layer 12, the cured layer is finished via a discharge
method. Oya, para. [0050].
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Application 11/012,244
dependent claim 3 stands or falls with independent claim 1. Therefore, our
analysis focuses on claim 1.
It is the Examiner’s position that it would have been obvious to have
substituted the adhesive layer 5 of Iijima with the UV curable resin 12 of
Oya “because the selection of a known equivalent material based on its
suitability for its intended use [supported] supports a prima facie obvious
determination”. Ans. 4. The Examiner also states that “it would have been
obvious to one of ordinary skill in the art of UV curable adhesive[s] to
substitute the curable adhesive resin of Iijima with the curable adhesive resin
of Oya”. Ans. 6-7.
Beginning on page 5 of the Brief, Appellant argues that in layer 12 of
Oya, a polyester-polyurethane resin is selectively synthesized as an
ultraviolet-curable resin and, even when acrylic monomer is included in the
resin, the resulting cured layer 12 includes irregularities in its surface.4 Oya,
para. [0033]. Appellant states that these irregularities are derived from the
presence of a non-mutually soluble resin, such as a polyester resin. Oya,
paras. [0033] to [0035]. Appellant also states that Oya discloses that the
non-mutually soluble resin causes a phase separation in the curable resin, the
non-mutually soluble resin is dispersed in a particulate state, and the
particulates form the irregularities on the surface of the cured layer 12. Oya,
para. [0033]. Appellant asserts that this structure prevents layer 12 of Oya
from having tackiness, which is essential to adhesion. Appellant states that
in their embodiments of the transfer functional film of claim 1, tackiness is
possible because the employed polyester-polyurethane resin and acrylic
monomer are mutually soluble, providing the tackiness that is required to

4 Appellant similarly discusses that protrusions form on the surface of the
UV curable resin of Oya on page 2 of the Reply Brief.
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Application 11/012,244
obtain adhesion. Appellant concludes that a skilled artisan would therefore
not employ the curable layer 12 of Oya in place of adhesive layer 5 of
Iijima. Br. 5-6.
Assuming, arguendo, that curable layer 12 of Oya would not have
tackiness as asserted by Appellant, Iijima does not indicate that tackiness is
required for sticking functional layer 4 to object article 6 through adhesive
layer 5.5 Iijima teaches that the adhesive layer is “not particularly limited
and various known adhesives may be used” and that the adhesive layer has
an “affinity” for both the functional layer 4 and object article 6. Iijima,
paragraph [0154]. Appellant’s do not argue that layer 12 of Oya does not
have an affinity for both the functional layer 4 and object article 6 of Iijima.
On the other hand, it is the Examiner’s position that the material of
layer 12 of Oya has such an affinity because one UV curable resin would
function the same as another UV curable resin. Ans. 6-7.
Appellant argues on pages 1-3 of the Reply Brief that the Examiner
does not articulate a reason why one of ordinary skill in the art would
believe that the UV curable resin of layer 12 of Oya is interchangeable with
adhesive layer 5 of Iijima. Appellant points to paragraphs [0156] to [0161]
of Iijima regarding specific adhesive compositions that are suitable for use in
Iijima and argues that the resin in Oya cannot be interchangeable with the
material of layer 5 of Iijima. Reply Br. 2-4.

5 Paragraph [0155] of Iijima teaches, in a preferred embodiment, that the
adhesive layer has a “tacky feeling”. We note, however, that a reference
may be relied upon for all that it would have reasonably suggested to one
having ordinary skill the art, including nonpreferred embodiments. Merck &
Co. v. Biocraft Laboratories, 874 F.2d 804, 806 (Fed. Cir.), cert. denied, 493
U.S. 975 (1989).
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However, as recognized by the Examiner, the types of materials
taught as being suitable by Iijima are not limited to only the types discussed
by Appellant, and include:
. . . various known adhesives may be used, if the adhesive layers have
affinity to both the functional layers (4) and (14) of the functional film
and a surface of the transfer-object article, and can strongly glue the
both. For example, an acrylic type adhesive, an epoxy type adhesive,
an isocyanate type adhesive, a silicone type adhesive and the like may
be mentioned. The adhesive may be curable one by ultraviolet rays or
heat after transferring to the transfer-object article. Hot melt type may
be also used.

Iijima, para. [0154].

In view of the totality of the record and the preponderance of the
evidence before us, Appellant has not convinced us that there is not a
reasonable expectation of success that the UV curable resin layer 12 of Oya
would be able to stick functional layer 4 of Iijima to object article 6 of
Iijima. Clinton, 527 F.2d at 1228-1229. Hence, we determine that the
Examiner has presented a proper prima facie case of obviousness.
In an effort to rebut the prima facie case, Appellant refers to an
Example and a Comparative Example in the Specification. See generally
Specification, paragraphs [0119] to [0132]. Br. 7.
Appellant explains that the only difference between the Example and
the Comparative Example is that the adhesive layer of the Example includes
a polyester polyurethane polymer component and an acrylic monomer
component (as recited in claim 1), while the adhesive layer of the
Comparative Example includes an acrylic polymer component and an acrylic
monomer component (as in Iijima). Specification, paras. [0127] and [0132].
Br. 7.
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Application 11/012,244
Appellant asserts that the results show that a transfer conductive film
including an adhesive layer according to claim 1 provides superior adhesion
characteristics as compared to a known transfer functional film having the
adhesive layer of Iijima. Specification, paras. [0131 ], [0132]. Br. 7.
We are not convinced by the above-mentioned rebuttal evidence. In
the instant case, Appellant does not explain how the adhesive layer as
described in paragraph [0127] of the Specification is commensurate in scope
with appealed claim 1. For example, claim 1 does not recite a “cured”
adhesive, whereas paragraph [0128] describes a cured adhesive. The
electrical resistance and adhesion evaluation as set forth in paragraphs
[0130] and [0131] apply to the cured adhesive. Also, claim 1 is not limited
to the particular materials of the adhesive layer coating liquid described in
paragraph [0127]. Further, Appellant does not explain how the results are
unexpected. When considering whether proffered evidence demonstrates
patentability, a side-by-side comparison of the claimed invention with the
closest prior art which is commensurate in scope with the claims is needed,
with an explanation as to why the results would have been unexpected by
one of ordinary skill in the art. Baxter Travenol Labs., 952 F.2d at 392; De
Blauwe, 736 F.2d at 705; Grasselli, 713 F.2d at 743; In re Clemens, 622
F.2d at 1035; Freeman, 474 F.2d at 1324; Klosak, 455 F.2d at 1080. As
such, the comparison set forth in Appellant’s Specification is insufficient to
rebut the prima facie case of obviousness.
In view of the above, we affirm the rejection of claims 1 and 3 under
35 U.S.C. §103(a) Iijima in view of Oya.
Further, Appellant has not established that the Examiner erred in
rejecting claims 1 and 3 under the judicially created doctrine of obviousness
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type double patenting over claims 1 and 3 of the ‘620 or ‘780 Applications.6
We therefore affirm these rejections as well.

CONCLUSIONS OF LAW
Appellant has not shown that the Examiner reversibly erred in
rejecting claims 1 and 3 because Appellant did not convincingly show that
there is not a reasonable expectation of success that the UV curable resin
layer 12 of Oya would adhere functional layer 4 of Iijima to object article 6
of Iijima.
DECISION
All of the rejections are affirmed.
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

tc

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

6 Appellant sets forth identical arguments for this rejection on pages 8-9 of
the Appeal Brief.
10