Ex Parte Kim

Patent Trial and Appeal Board

Mar 27, 2015

11417132 (P.T.A.B. Mar. 27, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/417,132 05/04/2006 Jong M. Kim 054563.00002
(5788-108US)
8048
62282 7590 03/27/2015
LAW OFFICE OF PERRY M. FONSECA, PC
12 HAMILTON COURT
LAWRENCEVILLE, NJ 08648
EXAMINER
LAVARIAS, ARNEL C
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
03/27/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JONG M. KIM
____________

Appeal 2013-003184
Application 11/417,132
1

Technology Center 2800
____________

Before PETER F. KRATZ, ROMULO H. DELMENDO, and
WESLEY B. DERRICK, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant seeks our review under 35 U.S.C. § 134(a) of a final
decision of the Primary Examiner to reject claims 1–3, 5–8, 10, 11, and 13–
22. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART and REVERSE-IN-PART.

1
According to the Appellants, the real party in interest is Laser Energetics,
Inc. (Appeal Brief filed August 27, 2012, hereinafter “App. Br.,” 3).
Appeal 2013-003184
Application 11/417,132

2
BACKGROUND
The subject matter on appeal relates to an optical film and to a method
for making such an optical film (Specification, hereinafter “Spec.,” ¶ 2).
According to the Appellant, the optical film “couples and redirects light by
transmitting and/or reflecting and/or refracting received light such that the
received light is substantially redirected toward a desired output direction”
(id. at ¶ 27).
Representative claim 1 is reproduced from page 19 of the Appeal
Brief (Claims App’x), with bolding added to highlight key disputed
limitations, as follows:
1. An optical film comprising:
a plurality of structures formed from a first optical
material with each structure including:
a base;
a top surface;
a first side wall that forms, within said first optical
material, an acute angle with the base;
a second side wall that forms, within said first optical
material, an obtuse angle with the base;
wherein a first refractive index is lower between adjacent
structures than a second refractive index of the material of the
plurality of structures; and
a diffusing material that covers the top surface of each
structure opposite the base;
wherein h is equal to about a tan δ tan θ/(tan θ -tan δ),
where h is the height of the structures, a is the width of the base
of each structure, δ is the angle of light coming into the
plurality of structures, and θ is an acute angle.

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Application 11/417,132

3
THE REJECTIONS
The Examiner rejected the claims as follows:
I. Claims 11, 13–16, and 18 under 35 U.S.C. § 112, ¶ 1, as failing
to comply with the written description requirement;
II. Claims 1–3, 5, 6, 8, 11, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Katsura (WO 2004/085067 A1 published
October 7, 2004)
2
and Roest (US 2002/0014829 A1 published
February 7, 2002);
III. Claims 16 and 18 under 35 U.S.C. § 103(a) as unpatentable
over Katsura, Roest, and Milner (US 6,435,683 B1 issued
August 20, 2002);
IV. Claims 19 and 21 under 35 U.S.C. § 103(a) as unpatentable
over Katsura and Serizawa (US 4,778,256 issued October 18,
1988);
V. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over
Katsura, Serizawa, and Harada (US 2005/0018303 A1
published January 27, 2005);
VI. Claim 22 under 35 U.S.C. § 103(a) as unpatentable over
Katsura;
VII. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Katsura,
Roest, and Nagakubo (US 2004/0125592 A1 published July 1,
2004);
VIII. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over

2
Our citations to Katsura are to an English language equivalent––namely,
United States Patent 7,453,639 B2, which issued on November 18, 2008,
based on the national stage application of the Katsura PCT application (Final
Act. 6).
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Application 11/417,132

4
Katsura, Roest, and Ueda (US 5,767,935 issued June 16, 1998);
and
IX. Claims 13–15 under 35 U.S.C. § 103(a) as unpatentable over
Katsura, Roest, and Laude (US 5,080,465 issued January 14,
1992).
(Examiner’s Answer entered October 19, 2012, hereinafter “Ans.,” at 2;
Final Office Action entered July 25, 2011, hereinafter “Final Act.,” 4–21.)

DISCUSSION
I
A. Claim 11
Claim 11 recites: “The film of claim 1, wherein the diffusing material
is air” (App. Br. 20). The base claim, claim 1, was amended during
prosecution to recite that the diffusing material “covers the top surface of
each structure opposite the base” (Amendment filed September 23, 2010).
The Examiner found that the Specification and Drawings, as
originally filed, provide support for a diffuser medium of a clear material in
which light scattering particles are dispersed (e.g., element 1002 in Fig. 2)
but not for a diffusing medium that is air, as recited in claim 11 (Final Act.
5). The Appellant, on the other hand, contends that Paragraph 4 of the
Specification includes a description of “another material,” which may be air
and may include scattering particles, and therefore provides sufficient
written description for the subject matter of claim 11 (App. Br. 9).
Upon review, we agree with the Examiner that claim 11 violates the
written description requirement. The Appellant is correct that Paragraph 4
of the Specification includes a description of “another material,” which may
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Application 11/417,132

5
be air and may include scattering particles. In addition, the last sentence of
Paragraph 4 states that “[t]he another material may be between adjacent
structures of the plurality of the structures and may cover a surface of each
structure opposite the base” (emphasis added). But Paragraph 4 plainly
distinguishes the “another material” from the “diffusing material” (“The
optical film may further include a diffusing material that covers the another
material and a surface of each structure opposite the base.”). As found by
the Examiner (Ans. 3), Figure 10 shows a diffuser medium that may be a
clear material in which light scattering particles are dispersed (Spec. ¶ 38).
That disclosure, however, falls short of describing a “diffusing material that
covers the top surface of each structure opposite the base” and “is air,” as
now required by claim 11.
B. Claims 13–15
Claim 13 recites: “The film of claim 1, wherein each first side wall
[of each of the plurality of structures] is coated with a reflective coating”
(App. Br. 20).
The Examiner stated that “there does not appear to be sufficient
support for the optical film to include both a diffuser medium (as shown in
Figure 10) as well as a reflective coating located on each first side wall (as
shown in Figure 11) in a single optical film” (Final Act. 5). The Appellant
contends that the Examiner’s finding is incorrect because Paragraph 4
discloses the subject matter of claim 13 (App. Br. 9).
We agree with the Appellant on this issue. Paragraph 4 describes “a
diffusing material that covers the another material and a surface of each
structure opposite the base.” In addition, Paragraph 4 states that “[e]ach first
side wall [of the plurality of structures] may be coated with a reflective
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6
coating.” Therefore, we find that Paragraph 4––independent of Figures 10
and 11––includes a sufficient description of the subject matter of claim 13.
C. Claims 16 & 18
Claim 16 recites: “The film of claim 1, wherein another material is
between adjacent structures of the plurality of structures and covers a surface
of each structure opposite the base” (App. Br. 20). See also claim 18, which
depends from claim 17 and recites similar limitations (id. at 20–21).
The Examiner posited that “[t]here does not appear to be sufficient
support in the [S]pecification and [D]rawings of the instant application to
have more than a single kind of material cover a surface of each structure
opposite the base, particularly when a diffusing material already covers a
surface of each structure opposite the base” (Final Act. 5).
Again, we must agree with the Appellant. As we found above,
Paragraph 4 informs one skilled in the relevant art that “[t]he another
material may be between adjacent structures of the plurality of structures and
may cover a surface of each structure opposite the base.” Given the
previous description in the same paragraph that the “diffusing material . . .
covers the another material and a surface of each structure opposite the
base,” we find that the relied-upon disclosure would have reasonably
conveyed to one skilled in the relevant art that the Appellant had possession
of an embodiment in which (i) the another material is both adjacent to each
of the structures and covers a surface of each structure opposite the bases of
the structures and (ii) a diffusing material covers the another material (and
thus further covering each structure opposite the bases of the structures).

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VI
Regarding the art rejections, we start with Rejection VI––i.e., the
rejection of claim 22 over Katsura alone. Claim 22 recites, inter alia, that
each of the structures includes “a first side wall that forms an acute angle
with the base” and “a second side wall that forms an obtuse angle with the
base” (App. Br. 21–22).
The Examiner found that Katsura describes these limitations (Ans. 13)
(referring to id. at 6–10). The Appellant argues that the Examiner’s finding
is incorrect (App. Br. 14–15).
We discern no merit in the Examiner’s position that Katsura teaches
the disputed “second side wall that forms an obtuse angle with the base”
limitation. The Examiner relied on Katsura’s Figure 10 (Ans. 8), which we
reproduce below:

Katsura’s Figure 10 above depicts a sectional view showing an example of a
rear projection screen with diffusion sheets 101–107 including, inter alia,
unit lens portions 11, light absorbing portions 12, and a support plate
containing a diffusion agent 21 (col. 13, ll. 62–64; col. 24, l. 27–col. 26, l.
7). Specifically, the Examiner considered Katsura’s unit lens portions 11 as
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8
the “structures” recited in claim 22 (Ans. 8). According to the Examiner, a
second side wall of a structure forms an obtuse angle “c” when that angle is
measured relative to a base external to the structure (id.).
As shown in Katsura’s Figure 10, each of the side walls for a
particular unit lens portion 11 forms an acute angle with respect to the base
of that same unit lens portion. The Examiner’s construction of the phrase
“the base” in the disputed limitations to read on two different bases of two
different structures in order to support a finding that one side wall of one of
the structures forms an acute angle while the other side wall of the same
structure forms an obtuse angle, Ans. 8, is unreasonable. In re Suitco
Surface, Inc., 603 F.3d 1255, 1259–1260 (Fed. Cir. 2010).
Therefore, we cannot affirm Rejection VI.

II, III, & VII–IX
Rejections II, III, VII–IX are also based, in part, on the finding that
Katsura describes a side wall of a structure as forming an obtuse angle with
the base of that structure, which is required by all the claims subject to these
rejections (Final Act. 7–8, 16). For the reasons discussed in VI, we cannot
affirm on the basis of this flawed finding.
The Examiner further relied on the teachings of Roest to account for
the “obtuse angle” limitation (Final Act. 8). Specifically, the Examiner
found that Roest discloses a light redirecting film including a plurality of
structures in which the side walls of the structures are angled in the same
direction (id.). The Examiner concluded from these findings that a person of
ordinary skill in the art would have modified the structures in Katsura to
have side walls angled in the same direction as shown in Roest “to allow for
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any desired angle of deflection of the incident light beam, while minimizing
shadow effects and maintaining a relatively compact optical film” (Final
Act. 8). The Appellant contends that a person of ordinary skill in the art
would not have combined selected features disclosed in Roest into Katsura’s
design because the resulting diffusion sheet would cease functioning as
designed (App. Br. 12).
We agree with the Appellant that the Examiner failed to articulate a
sufficient reason with some rational underpinning to support the conclusion
that a person of ordinary skill in the art would have combined Roest and
Katsura in the manner claimed. Roest describes an illumination device
comprising at least one separating layer which has at least one flat surface
extending parallel to the light modulation panel and a serrated surface
situated on a side which faces away from the flat surface (Abst.). Although
Roest teaches a plurality of juxtaposed projections 10 with separating
surfaces 11 and 12 forming an acute interior angle α and an obtuse interior
angle β with flat surface 13, respectively, light is introduced from the side of
Roest’s device (Figs. 1–4; ¶ 20). The Examiner, however, failed to provide
a meaningful rebuttal to the Appellant’s argument based on this key
operational difference between the devices of Roest and Katsura (Ans. 9–
10). Therefore, we cannot uphold any of the rejections based on the factual
findings and reasoning provided by the Examiner. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (“a patent composed of several elements is
not proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.”).

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IV & V
Claim 19 is reproduced below (App. Br. 21) (emphases added):
19. A method of making an optical film comprising:
depositing a photopolymerizable material on a surface;
selectively polymerizing part of the photopolymerizable
material such that a plurality of polymerized structures is
formed in the photopolymerizable material with another
material between adjacent polymerized structures, the another
material having a lower refractive index than the material of the
plurality of polymerized structures, each polymerized structure
having:
a top surface;
a first side wall that forms an acute angle with the
surface;
a second side wall that forms an obtuse angle with the
surface;
a diffusing material that covers the another material and a
surface of each structure; and
removing the photopolymerizable material not
polymerized.

The Examiner relied on Serizawa solely for the last recited step
(“removing the photopolymerizable material not polymerized”) (Final Act.
12; Ans. 11). The Appellant does not dispute the Examiner’s reliance on
Serizawa (App. Br. 13). The Appellant argues, however, that neither
Katsura nor Serizawa teaches the “obtuse angle” limitation (id. at 13–14).
Because the Examiner’s reliance on Katsura for the “obtuse angle” is
misplaced, as we discuss above, we cannot uphold Rejections IV and V.

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Application 11/417,132

11
SUMMARY
Rejection I is affirmed as to claim 11 but reversed as to claims 13–16
and 18.
Rejections II–IX are reversed.
Therefore, the Examiner’s decision to reject the claims is affirmed as
to claim 11 but reversed as to claims 1–3, 5–8, 10, and 13–22.
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).

AFFIRMED-IN-PART & REVERSED-IN-PART
sl