Ex Parte KITAGAWA et al

Patent Trial and Appeal Board

Jun 25, 2018

14448313 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/448,313 07 /31/2014 Takeharu KITAGAWA
22429 7590 06/27/2018
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.
5070-0039 8187
EXAMINER
DUNNING, RYANS
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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 TAKEHARU KITAGAWA and SHUSAKU GOTO
Appeal2017-008698
Application 14/448,313
Technology Center 2800
Before ROMULO H. DELMENDO, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter "Appellant") 1 appeals under 35 U.S.C.
§ 13 4( a) from the Primary Examiner's final decision to reject claims 1, 2,
and 4--9. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant is the Applicant, "NITTO DENKO CORPORATION,"
which, according to the Brief, is the real party in interest (Appeal Brief filed
February 23, 2017, hereinafter "Appeal Br.," 2).
2 Appeal Br. 5-15; Reply Brief filed May 24, 2017, hereinafter "Reply Br.,"
3-15; Final Office Action entered July 29, 2016, hereinafter "Final Act.," 2-
9; Examiner's Answer entered March 24, 2017, hereinafter "Ans.," 4--11.
Appeal2017-008698
Application 14/448,313
I. BACKGROUND
The subject matter on appeal relates to a polarizing film, an optical
film laminate including the polarizing film, and an organic EL 3 display
device having the polarizing film (Specification filed July 31, 2014,
hereinafter "Spec.," i-f 1 ). According to the Specification, "the inventors
found that [the polarizing film's] durability is improved by increasing a mole
ratio (I/K) of elemental iodine to elemental potassium contained in [the]
polarizing film" (id. i-f 28).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief (Appeal Br.), with key limitations emphasized, as follows:
1. A polarizing film in the form of a continuous web, the
polarizing film being comprised of a polyvinyl alcohol-based
resin containing potassium and molecularly-oriented iodine,
wherein the polarizing film has a thickness of 7 µm or less, and
exhibits a single transmittance of 44.0% or more, and wherein a
mole ratio (l/K) of elemental iodine (I) to elemental potassium
(K) contained in the polarizing film is 1.8 or more and 3.0 or
less.
3 "EL" appears to be an abbreviation for "electro-luminescent" (Saiki et al.,
hereinafter "Saiki," US 2006/0227423 Al, published Oct. 12, 2006, i-f 1).
2
Appeal2017-008698
Application 14/448,313
II. REJECTION ON APPEAL
On appeal, the Examiner maintains a rejection under 35 U.S.C. § 103 4
of claims 1, 2, and 4--9 as unpatentable over Nishida et al. 5 (hereinafter
"Nishida") in view of Saiki (Final Act. 2-9).
III. DISCUSSION
The Appellant relies on the same arguments for all claims on appeal
(Appeal Br. 6-14). Therefore, we confine our discussion to claim 1, which
we select as representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). As
provided by this rule, claims 2 and 4--9 stand or fall with claim 1.
The Examiner finds that Nishida describes a polarizing film including
all the limitations recited in claim 1 except for the specified I/K molar ratio
(Final Act. 2-3). The Examiner finds, however, that Saiki discloses a
polarizer with a mole ratio that is calculated to be within the range recited in
claim 1, including a mole ratio of 2.5 (id. at 3). The Examiner concludes:
It would have been obvious to one of ordinary skill in the
art at the time of invention to select the mole ratio (I/K) of Saiki
(2.5) for the polarizing film of Nishida, because such mole ratio
(I/K) is an ideal balance between the competing interests of
sufficient durability and avoiding discoloration versus polarizing
efficiency, as taught in paragraph [0019] of Saiki.
The Examiner also finds that Saiki' s disclosures are sufficient to
anticipate claim l's subject matter (Final Act. 9; Ans. 5). Referring to the
4 Although the Examiner's rejection mistakenly cites to pre-AIA 35 U.S.C.
§ 103, the Examiner correctly states that the application is being examined
under the first inventor to file provisions of the AIA (Final Act. 2). The
Examiner's findings and conclusions do not depend on which statute is
applicable.
5 US 2003/0151813 Al, published Aug. 14, 2003.
3
Appeal2017-008698
Application 14/448,313
Appellant's own calculations on Saiki's disclosure and working examples
(Appeal Br. 8), the Examiner finds that Saiki describes two working
examples (Examples 4 and 5) in which the I/K mole ratio falls within the
range recited in claim 1 (Ans. 5).
The Appellant acknowledges that "[t]he converted numerical range of
the mole ratio (I/K) discussed in Saiki is 0.77 to 3.85" (Appeal Br. 8). The
Appellant urges, however, that "[a]lthough the converted range of 0.77 to
3.85 of Saiki partly overlaps with the claimed range of 1.8 or more and 3.0
or less, the broad range of Saiki includes the comparative examples
discussed therein" (id. at 9). The Appellant argues that "Saiki, therefore,
fails to recognize the criticality of the claimed 'mole ratio (I/K) ... is 1.8 or
more and 3.0 or less" (id. (relying on a table presented as Figure 7 in the
Drawings of the subject application)). The Appellant argues that the
specified mole ratio has not been shown to be a result-effective variable
because the "'ideal' balance [in Saiki], if calculated properly, would have
resulted in a 'mole ratio (I/K)' that is only 0. 77----outside the claimed range,
wherein the 'mole ratio (I/K) ... is 1.8 or more and 3.0 or less"' (id. at 10).
Regarding Nishida, the Appellant argues that Nishida teaches that "if the I/K
is less than 4.1, optical characteristics would be degraded" and, therefore,
modification of Nishida in the manner claimed would have been
unsatisfactory for its intended purpose (id. at 11-12).
The Appellant's arguments fail to identify any reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Saiki describes a polarizer comprising a polyvinyl alcohol-based film,
which contains iodine and potassium in specified amounts and is stretched
uniaxially to have a thickness of about 5 to about 80 µm, a single
4
Appeal2017-008698
Application 14/448,313
transmittance of 43% or more, a polarizing efficiency of 99.9% or more, and
a dichroic ratio of 30 or more (Saiki Abstract and i-fi-f 10, 16, 17, 19, 36, 48,
100, 103-104 (Examples 4 and 5), and Table 1). Regarding the amounts for
iodine (I) and potassium (K), Saiki teaches that the polarizer preferably has
an I content of 1.5-2.5% by weight and a K content of 0.2---0.6% by weight
(id. i-f 17), which, according to the Appellant's own calculations, convert to
an I/K molar ratio of 0.77-3.85 (Appeal Br. 8). Saiki describes the effects of
varying I and K contents as follows (Saiki i-f 19 (emphases added)):
In this point of view, the content of iodine in the polarizer
is preferably from 1.5 to 2.5% by weight, more preferably from
1.7 to 2.4% by weight, still more preferably from 1 to 2.3% by
weight. If the iodine content is too high, the polarizing plate
has insufficient durability and is easily discolored red at high
temperatures. If the iodine content is too low, the polarizing
efficiency is easily lowered. The content of potassium in the
polarizer is preferably from 0.2 to 0.6% by weight, more
preferably from 0.3 to 0.58% by weight, still more preferably
from 0.4 to 0.57% by weight. If the potassium content is too
high, the polarizing plate has insufficient durability and is
easily discolored red at high temperatures. If the potassium
content is too low, the polarizing efficiency is easily lowered.
In both Examples 4 and 5, Saiki teaches contents for I and K that calculate to
a molar ratio of 1.87 (Saiki Table 1; Appeal Br. 8).
Given Saiki's disclosure, we discern no reversible error in the
Examiner's finding (Ans. 5) that Saiki describes-with sufficient
specificity-a polarizer film in which the I/K molar ratio is 1.87-a value
that falls squarely within the range recited in claim 1. The fact that other
working examples in Saiki's Table 1 describe polarizers having an I/K molar
ratio outside the range specified in claim 1 does not alter our analysis. As
the Examiner explains (id.), "[i]t is ... an elementary principle of patent law
5
Appeal2017-008698
Application 14/448,313
that when, as by a recitation of ranges or otherwise, a claim covers several
compositions, the claim is 'anticipated' if one of them is in the prior art."
Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 782 (Fed. Cir.
1985). Furthermore, a prior art reference may disclose embodiments outside
the scope of a claim and yet anticipate something that falls within the
claimed subject matter. Cf In re Petering, 301F.2d676, 681(CCPA1962).
Here, as we found above, the calculated molar ratio of 1.87 in Saiki's
Examples 4 and 5 falls squarely within the molar ratio range (1.8-3.0)
recited in claim 1. Therefore, Saiki' s Examples 4 and 5 "anticipate" the
molar ratio range specified in claim 1. Titanium Metals, 778 F. 2d at 781
(one data point---out of 15 data points-anticipated specified molybdenum
and nickel contents in claims where the calculated6 molybdenum and nickel
amounts of the prior art's data point fell within the ranges recited in the
claim). In view of this "anticipation," the evidence on this record shows that
the recited molar ratio range would have been obvious. Cf In re Fracalossi,
681 F.2d 792, 794 (C.C.P.A. 1982) ("evidence establishing lack of all
novelty in the claimed invention necessarily evidences obviousness").
Moreover, even if we assume that Saiki's Examples 4 and 5 do not
constitute a description of a molar ratio within the range specified in claim 1,
Saiki teaches that the iodine and potassium contents are result-effective
variables that affect durability, discoloration, and polarizing efficiency
(Saiki i-f 19). Therefore, a person having ordinary skill in the art would have
determined-through nothing more than routine experimentation---optimum
6 In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1990)
("[E]xtrinsic evidence may be considered when it is used to explain, but not
expand, the meaning of a reference.").
6
Appeal2017-008698
Application 14/448,313
amounts for iodine and potassium that provide, e.g., maximum durability. In
re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) ("'[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."' (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955))).
Having determined that Saiki's Examples 4 and 5 constitute the
closest prior art, we next consider whether the data presented in a table
labeled as Figure 7 in the subject application establish any unexpected
criticality or result, as alleged by the Appellant. Although the Appellant
does not explain how and why "the benefits of the claimed range" would
have been considered unexpected by one of ordinary skill in the art (Appeal
Br. 9), 7 we reproduce Figure 7 as follows:
THICKNESS I/K
OF IODINE (RATIO OF
POLARIZING TRANSMITT ANGE CONCENTRATION IODINE TO EVALUATION
FILM POTASSIUM)
[µ] [%] [wt%] [MOLE RATIO] THINNESS BRIGHTNESS DURABILITY
INVENTIVE 5 45 4.2 1.8 GOOD GOOD GOOD EXAMPLE 1
INVENTIVE
5 45 3 2.3 GOOD GOOD GOOD EXAMPLE 2
INVENTIVE
5 45 27 26 GOOD GOOD GOOD EXAMPLE 3
COMPARATIVE
NG DUE TO
5 45 5.1 1.6 GOOD GOOD APPEARANCE EXAMPLE DEFECT
REFERENCE NG DUE 5 42,8 8.2 2 GOOD TO LOW GOOD EXAMPL 1 TRANSMITT ANGE
REFERENCE
NG DUE TO
23 45 u 1.4 LARGE GOOD GOOD EXAMPL 2 THICKNESS
7 See, e.g., In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("[I]t is not
enough to show that results are obtained which differ from those obtained in
7
Appeal2017-008698
Application 14/448,313
The table above summarizes "GOOD" results (thinness, brightness,
and durability) for polarizing films identified as Inventive Examples 1-3,
each having a 5 µm thickness, a transmittance of 45%, and I/K mole ratios
of 1.8, 2.3, and 2.6, respectively. Inventive Examples 1-3 are compared
against: (1) a polarizing film identified as "COMPARATIVE EXAMPLE"
in which a film having a 5 µm thickness, a transmittance of 45%, and an I/K
mole ratio of 1.6 exhibited a durability characterized as "NG DUE TO
APPEARANCE DEFECT"; (2) a polarizing film identified as
"REFERENCE EXAMPL [sic] 1" in which a film having a 5 µm thickness,
a transmittance of 42.8%, and a I/K mole ratio of 2 exhibited brightness
characterized as "NG DUE TO LOW TRANSMITTANCE"; and (3) a
polarizing film identified as "REFERENCE EXAMPL [sic] 2" in which a
film having a 23 µm thickness, a transmittance of 45%, and a I/K mole ratio
of 1.4 exhibited a thinness that is characterized as "NG DUE TO LARGE
THICKNESS" (Fig. 7).
Consistent with the Examiner's position (Ans. 5), we find that the
Appellant's proffered evidence is insufficient because the Appellant does not
explain-with any degree of specificity-how and why the comparative data
shown in Figure 7 constitute a showing involving a fair comparison between
the claimed film and the closest prior art, which is either Saiki's Example 4
or 5 in which the I/K molar ratio was 1.87 and the transmittance was 44.0%,
both of which values are within the scope of claim 1 (Saiki Table 1; Appeal
Br. 8). Baxter Travenol, 952 F.2d at 392 ("[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
the prior art: that difference must be shown to be an unexpected
difference.").
8
Appeal2017-008698
Application 14/448,313
unexpected compared with the closest prior art ... Here, the closest prior art
was the Becker system, utilizing a DEHP primary bag.").
Although the data characterizes a film with a thickness of 23 µm as
being thick compared to a film with a thickness of 5 µm, it can hardly be
said that such a result would have been considered unexpected. Klosak, 455
F.2d at 1080.
Lastly, we find no merit in the Appellant's position that modifying
Nishida in view of Saiki would render Nishida's film unsatisfactory for its
intended purpose. As we stated above, Saiki independently discloses, or
would have suggested to one of ordinary skill, a film that falls within the
scope of claim 1. Moreover, we find nothing in Nishida's disclosure
(Nishida i-f 12), 8 which relates to effects at high temperature, as being
inconsistent with Saiki (Saiki i-f 19).
For these reasons, and those well-stated by the Examiner, we sustain
the Examiner's rejection.
IV. SUMMARY
The Examiner's rejection under 35 U.S.C. § 103 of claims 1, 2, and
4--9 as unpatentable over Nishida and Saiki is sustained. Therefore, the
Examiner's final decision to reject claims 1, 2, and 4--9 is affirmed.
8 Nishida teaches (id.):
When an element content ratio (K/I) of iodine (I) and potassium
(K) is controlled to 0.24 or less, a polarizer may be obtained in
which coloring is suppressed, change of transmittance and
polarizing degree, etc. at high temperature is small, superior in
durability, and moreover polarizing degree is high. When the
element content ratio (K/I) is more than 0.24, it is not preferable
because optical characteristics when being heated at high
temperature fall.
9
Appeal2017-008698
Application 14/448,313
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
10