Ex Parte Kishioka et al

Patent Trial and Appeal Board

Mar 28, 2018

14128442 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/128,442 06/16/2014 Hiroaki Kishioka
22429 7590 03/30/2018
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
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.
5070-0036 2973
EXAMINER
DICKE, CHAD M
ART UNIT PAPER NUMBER
2693
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
EAnastasio@IPFirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROAKI KISHIOKA, TOMOHIDE BANBA,
MITSURU HONJO, NAOKI NAGAOKA, KAZUMASA IGARASHI,
YUKI HASEGAWA, HIROSHI WADA, YUKI TSUBAKI, and
TOMOTAKE NASHIKI
Appeal2017-009297
Application 14/128,442
Technology Center 2600
Before ERIC S. FRAHM, JOHNNY A. KUMAR, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 12 appeal under 35 U.S.C. § 134(a) from the non-final
rejection of claims 1-20, which constitute all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify the real party in interest as NITTO DENKO
CORPORATION, OSAKA, JAPAN. App. Br. 2.
2 Mayumi Banba is identified as Legal Representative, presumably for
Tomohide Banba.
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Application 14/128,442
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to "a
capacitive touch panel with enhanced detection sensitivity, and an image
display panel having the capacitive touch panel." Spec. 1: 8-10. 3
Claim 1 is illustrative and reproduced below:
1. A capacitive touch panel comprising:
a window;
a first transparent film having a first transparent
conductive electrode pattern formed on one surface thereof;
a second transparent film having a second transparent
conductive electrode pattern formed on one surface thereof and
disposed with respect to the first transparent film in such a
manner as to allow a capacitance to be formed there between,
are stacked in tum;
a first transparent inter-layer resin provided between the
window and the first transparent film, the first transparent inter-
layer resin is in direct contact with the first transparent film, and
a surface of the first transparent conductive electrode pattern
farthest from the window is coplanar with a surface of the first
transparent inter-layer resin farthest from the window; and
a second transparent inter-layer resin provided between
the first transparent film and the second transparent film,
wherein
3 Our Decision refers to the Non-Final Action mailed Oct. 12, 2016 ("Non-
Final Act."); Appellants' Appeal Brief filed Mar. 9, 2017 ("App. Br.") and
Reply Brief filed June 21, 2017 ("Reply Br."); the Examiner's Answer
mailed Apr. 21, 2017 ("Ans."); and, the original Specification filed Dec.
20, 2013 ("Spec.").
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Application 14/128,442
the first transparent inter-layer resin has a dielectric
constant greater than that of the second transparent inter-layer
resm.
App. Br. 16 (Claims App'x.).
Rejections on Appeal
Claims 1---6, 12, 13, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nakajima (US 2010/0013798 Al;
published Jan. 21, 2010) and Hatakenaka (US 2010/0196669 Al; published
Aug. 5, 2010).
Claims 7-10 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nakajima, Hatakenaka, and Yurugi (US 2003/0199655
Al; Oct. 23, 2003).
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nakajima, Hatakenaka, and Yurugi, and Wigdorski (US
2003/0168166 Al; published Sept. 11, 2003).
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nakajima, Hatakenaka, and Yurugi, and Takahashi
(WIPO 2010/134474 Al; published Nov. 25, 2010).
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nakajima, Hatakenaka, and Yurugi, and Kobayashi (US
2012/0241199 Al; published Sept. 27, 2012).
ANALYSIS
The dispositive issue raised by Appellants' arguments is whether the
combination of Nakajima and Hatakenaka teaches or suggests "the first
transparent inter-layer resin has a dielectric constant greater than that of the
second transparent inter-layer resin," as recited in claim 1.
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The Examiner finds Nakajima teaches a capacitive touch panel having
two transparent pressure-sensitive adhesive inter-layers 4 and 4a. Ans. 3
(citing Nakajima i-f 51). The Examiner also finds Nakajima teaches that
these two layers can be selected from any of the materials identified in
paragraph 41 of Nakajima, including "polymers such as acrylic polymers,
silicone polymers, polyester, polyurethane, polyamide, polyvinyl ether, vinyl
acetate-vinyl chloride copolymers, modified polyolefins." Id. The
Examiner finds Hatakenaka teaches that a pressure-sensitive adhesive layer
can be made of a resin of the following materials: "polyethylene
terephthalate sheet, a polybutylene terephthalate sheet, and a polyethylene
naphthalate sheet, polyolefin-based resin sheets, such as polyethylene and
polypropylene, a polyvinyl alcohol sheet, and a polyvinylidene chloride
sheet. A polyester-based resin sheet is preferable, and a polyethylene
terephthalate sheet .... " Id. at 4 (citing Hatakenaka i-f 55). The Examiner
further finds as follows:
Using these materials, wherein either the first or second
transparent inter-layer resins is made of Polyethylene and the
other layer is made of Polybutylene Terephthalate, overcomes
the claim limitation, which recites "the first transparent inter-
layer resin has a dielectric constant greater than that of the second
transparent inter-layer resin" as the dielectric constant of
Polyethylene is 2.2 and the dielectric constant of Polybutylene
Terephthalate is 2.8 or higher as cited by
http://members.tm.net/lapointe/plastics.htm, titled Electrical
Properties of Plastics.
Based on the listing of materials that can be used for the
first and second transparent inter-layer resins, the Prior Art has
identified a finite number of possible combinations of materials
that can be used for the inter-layer resins and it would be well
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within the skill set of one of ordinary skill in the art to use at least
one combination of the above materials which would result in a
first transparent inter-layer resin which has a dielectric constant
greater than that of the second transparent inter-layer resin.
Furthermore, since such a material combination, absent any
criticality (i.e., unobvious and/or unexpected result(s)), is
generally achievable through routine
optimization/experimentation, the optimum or workable
configuration, where the general conditions of a claim are
disclosed in the prior art, involves only routine skill in the art.
Id. at 5.
Notably, in the Non-Final Office Action, the Examiner relied on an
"obvious to try" rationale and found "the combination of Nakajima and
Hatakenaka provides a capacitive touch panel in which the first transparent
inter-layer resin is made of Polyethylene terephthalate[,] which is a polyester
based material (Nakajima, [0041 ], Hatakenaka, [0055]) [with a known
dielectric constant of 3.2], and the second transparent inter-layer resin is
made of Polyethylene [Nakajima, [0041], Hatakenaka, [0055]) [with a
known dielectric constant of 2.2]." See Non-Final Act. 7.
Regardless of the Examiner's rationale, we are persuaded by
Appellants' arguments that the Examiner erred. Regarding the Examiner's
original "obvious to try" finding, the Supreme Court held "obvious to try"
may apply when "there are a finite number of identified, predictable
solutions" to a known problem. KSR International Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). The Court explained that when the path has been
identified and "leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense." Id. Our reviewing
court has elaborated that the identified path must "present a finite (and small
in the context of the art) number of options easily traversed to show
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obviousness." Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d
1358, 1364 (Fed. Cir. 2008). As illustrated in In re 0 'Farrell, 853 F.2d 894,
903 (Fed. Cir. 1988), it would not be "obvious to try" when "the prior art
gave either no indication of which parameters were critical or no direction as
to which of many possible choices is likely to be successful."
Here, as discussed further infra, a critical parameter is the dielectric
constants and the relationship of the dielectric constants of the first and
second transparent inter-layer resins. As Appellants argue, however, and we
agree, the Examiner "failed to identify a 'recognized problem or need in the
art' and apply the allegedly 'finite number of identified, predictable potential
solutions to the recognized need or problem."' App. Br. 1 O; Reply Br. 6.
We also agree with Appellants' following arguments:
The mere statement in Nakajima that the layers "may" be
made of the same material, and the mere provision of a vast list
of materials in Hatakenaka can hardly be considered to amount
to a "recognized problem or need in the art." At best, the
references describe example materials that could be used as a
pressure-sensitive adhesive layer, which does not provide any
particular problem or need that would motivate one of ordinary
skill to pursue the known options to solve the recognized
problem or need.
App. Br. 10.
Regarding the Examiner's "routine experimentation" finding,
"[ w ]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). One
exception to this rule is that the discovery of the optimum or workable range
of a variable will not be deemed to have been obvious unless the variable
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was known to be "result-effective." See In re Antonie, 559 F.2d 618, 620
(CCPA 1977). Here, Appellants argue, and we agree, "the Examiner did not
identify that a particular order of layers having the claimed relationship
between dielectric constants is a result-effective variable which achieves a
recognized result." Reply Br. 11-12. Appellants' also argue, and we agree,
that although the Specification states that where the dielectric constant of the
first inter-layer resin is greater than the dielectric constant of the second
inter-layer resin, "the sensitivity of the capacitive touch panel is enhanced"
(see Reply Br. 12, citing Spec. 4:6-11),4 "neither Nakajima nor Hatakenaka
recognize any result that would arise from the claimed 'the first transparent
inter-layer resin has a dielectric constant greater than that of the
second transparent inter-layer resin." Id. at 12. Thus, for the reasons set
forth by Appellants, we are persuaded by Appellants' arguments that "[ t ]he
Examiner's conclusion of obviousness is one that could only be reached by
way of the impermissible application of hindsight reasoning based on the
roadmap set forth in Appellants' disclosure." Reply Br. 13; see also App.
Br. 11.
Based on this record, we are persuaded the Examiner erred in finding
the combination of Nakajima and Hatakenaka teaches or suggests the
disputed limitation of claim 1. Accordingly, we do not sustain the
Examiner's rejection of claim 1, and dependent claims 2-20, under§ 103(a).
4 Appellants mistakenly cite to paragraph 10 of the Specification for this
disclosure.
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DECISION
We reverse the Examiner's decision rejecting claims 1-20 for
obviousness under 35 U.S.C. § 103(a).
REVERSED
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