Ex Parte KIMURA et al

Board of Patent Appeals and Interferences

Jun 17, 2009

09508771 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JINKO KIMURA, CHIKARA ISHIKAWA, YOUJI TANAKA,
SHINJI TAKANO, and YOSHITAKA MINAMI
____________

Appeal 2009-003250
Application 09/508,771
Technology Center 1700
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Decided:1 June 17, 2009
____________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

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).

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Application 09/508,771

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-10, 12-19, 21-25, 27-38, and 42-46 (Final
Office Action, mailed Mar. 13, 2006), the only claims pending in the
application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal and is
reproduced from the Claims Appendix to the Revised Appeal Brief (“App.
Br.”), filed May 4, 2007:

1. A photosensitive film which comprises a support film (A), a
photosensitive resin composition-containing photosensitive resin layer (B)
formed on said support film (A), and a protecting film (C) stuck onto said
photosensitive resin layer (B), wherein:

the number of fish eyes having a diameter of at least 80 µm included in
said protecting film (C) does not exceed 5 fish eyes/m2 when measured
under a microscope at a multiplication of 100; and

said photosensitive resin composition-containing photosensitive resin
layer (B) has a film thickness of 5 to 30 µm, and whereby

generation of air voids between the photosensitive layer (B) and a
substrate after lamination of the photosensitive film on the substrate while
removing the protecting film (C) from the photosensitive film is reduced.

The Examiner relies on the following evidence to establish
unpatentability (Examiner’s Answer (“Ans.”), mailed Aug. 9, 2007):
Taguchi 4,360,582 Nov. 23, 1982
Hoffmann 4,710,446 Dec. 1, 1987
Mannion 5,198,484 Mar. 30, 1993

2 An oral hearing was held on June 10, 2009.
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Takahashi 5,589,306 Dec. 31, 1996

Appellants request review of the following grounds of rejection (App.
Br. 18):
1. claims 1-10, 13-19, 21-25, 28-38, and 44-46 under 35 U.S.C. §
103(a) as unpatentable over Taguchi in view of Mannion;
2. claims 12 and 27 under 35 U.S.C. § 103(a) as unpatentable over
Taguchi in view of Mannion and further in view of Hoffmann; and
3. claims 42 and 43 under 35 U.S.C. § 103(a) as unpatentable over
Taguchi in view of Mannion and further in view of Takahashi.

ISSUE
Have Appellants shown reversible error in the Examiner’s finding that
preparation of Taguchi’s protecting film in the manner taught by Mannion
would inherently result in a protecting film having Appellants’ claimed
features?
We answer this question in the affirmative.
FINDINGS OF FACT (“FF”)
1. The Examiner finds that Taguchi discloses a photosensitive
film which includes a photosensitive resin layer, a support film and a
polypropylene protecting film. (Ans. 3-4.) The Examiner concedes that
“Taguchi is silent on fish eyes.” (Ans. 4.)
2. The Examiner finds that Mannion discloses a method of adding
clarifying agents to polyolefin resins, including polypropylene, to reduce
haze in articles manufactured from the resins. (Ans. 4.) The Examiner
maintains that it would have been obvious to the ordinary artisan to have
prepared Taguchi’s protective film by adding clarifying agents as taught by
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Mannion to achieve higher transparency and better coating properties by
eliminating bubbles/fish eyes. (Ans. 6.)
3. According to the Examiner, Mannion “specifically mentions
that bubbles/n [sic] fish eyes are ‘eliminated’, thus the addition of the
compounds to the polymers results in a number of fish eyes meeting the
instant claim limitations (zero).” (Ans. 6.) The Examiner specifically relies
on the “Background of the Invention” section in which Mannion discusses a
prior art “approach used to eliminate bubbles or ‘fish eyes’ with sorbitol
acetal clarified polyolefins . . . described by Kobayashi, et al., U.S. Pat. No.
4,954,291” (Mannion, col. 2, ll. 36-38). (Ans. 8-9 (citing Mannion, col. 2,
ll. 36-47).)
4. Appellants contend that “Mannion . . . is directed solely to the
elimination of ‘white point’ defects and not to the elimination of ‘fish eyes’
defects.” (Reply Brief (“Rep. Br.”), filed Oct. 9, 2007, 5 (emphasis
omitted); see also, App. Br. 5.) According to Appellants, “white point”
defects are “bubbles formed on the sides of molds by gas released during
injection molding” and are “a substantially different defect than . . . ‘fish
eyes.’” (App. Br. 14.)
5. Appellant’s characterization of “white point” defects is
consistent with Mannion’s disclosure. (See, e.g., col. 5, ll. 23-27 and col. 6,
ll. 39-45.)
6. Mannion describes “[t]he present invention” as “provid[ing] a
technique to process sorbitol and xylitol acetal clarifiers so they can be
compounded with polyolefin resins to produce fabricated parts without
‘white points’ or bubbles” (col. 3, ll. 8-13). When discussing the problem of
“‘white points’ or bubbles” (col. 2, ll. 5-6), Mannion notes that “[s]mall
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bubbles in the side walls of injection molded housewares and medical
devices are considered a major defect” (col. 2, ll. 7-9).
7. In Example 4, Mannion conducts testing of compositions
prepared in accordance with the disclosed method for the purpose of
assessing bubble formation. Mannion states only that a visual analysis was
conducted (col. 9, ll. 8-9).
8. The term “fish eyes” is used only once in the Mannion patent,
and is used solely in connection with Kobayashi’s method. (See, supra, FF
3.) The Kobayshi patent is not identified in the list of “Evidence Relied
Upon” by the Examiner. (See Ans. 2.)
9. The term “fish eye,” as used in the Specification, refers to an
“unmelted or deteriorated region of the raw material which has been taken
into film at the time of thermally melting the raw material and forming it
into a film by kneading, extrusion, stretching or casting.” (Spec. 13:20-24.)
According to the Specification, “[a] protecting film of good fish eye level
which can successfully be used in th[e] invention can be produced by
modifying the production method of film, for instance, in such a manner as
filtering the raw material resin after thermal melting.” (Spec. 14:12-16.)
10. Mannion does not disclose a step of filtering the raw material
resin. (See generally, Mannion in its entirety.)
PRINCIPLES OF LAW
“Obviousness under 35 U.S.C. § 103(a) is ultimately a legal question,
based on underlying factual determinations.” Eisai v. Teva, 553 F.3d 1353,
1356 (Fed. Cir. 2008) (citing Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d
1476, 1479 (Fed. Cir. 1997)). The Examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie
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case of unpatentability. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir.
1984).
ANALYSIS
We have carefully considered the respective positions advanced by
the Examiner and the Appellants. Based on our review of the record in this
appeal, we are in agreement with Appellants that the evidence fails to
support the Examiner’s finding that preparation of Taguchi’s protecting film
using Mannion’s method would inherently result in a protecting film having
no more than the size and quantity of fish eyes recited in the appealed
claims.
Appellants argue, and the Examiner does not dispute, that white point
defects originate from trapped gases (FF 4, 5), while fish eyes are created by
unmelted or deteriorated regions of the raw material (FF 4, 9). While the
Examiner contends that Mannion is directed to eliminating fish eyes as well
as white points (Ans. 8-9), we are in agreement with Appellants that the
Examiner has taken the referenced portion of Mannion out-of-context. More
specifically, like Appellants, we read Mannion’s disclosure as
acknowledging the known prior art problem of fish eye defects, but
describing a method directed solely to eliminating the trapped gases
responsible for creating white point defects. (Compare FF 3 with FF 6-8.)
The Examiner has not explained why a method directed to eliminating
trapped gases, i.e., Mannion’s method, would necessarily result in the
elimination of the unmelted or deteriorated regions of raw material
responsible for creating fish eyes. (Compare FF 9 with FF 10.)
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CONCLUSION
Appellants have persuasively shown that the Examiner reversibly
erred in finding that preparation of Taguchi’s protecting film in the manner
taught by Mannion would inherently result in a protecting film having
Appellants’ claimed features. Because this finding is necessary to support
the Examiner’s obviousness determination as to all of the appealed claims,
we cannot sustain any of the Examiner’s rejections under 35 U.S.C. §
103(a). Therefore, the decision of the Examiner rejecting claims 1-10, 12-
19, 21-25, 27-38, and 42-46 is reversed.

REVERSED

PL Initial:
sld

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