Ex Parte Koyama et al

Board of Patent Appeals and Interferences

May 30, 2012

10535242 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/535,242 05/18/2005 Masuo Koyama TAD-C560 5781
7590 05/31/2012
George A. Loud, Esquire
BACON & THOMAS
Fourth Floor
625 Slaters Lane
Alexandria, VA 22314-1176
EXAMINER
SAMPLE, DAVID R
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
05/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte MASUO KOYAMA, KEIICHI KITAHARA, MASATO SAITO,
JUNJI ICHINOKAWA, and YOSHIHISA KIMURA

_________________

Appeal 2010-012138
Application 10/535,242
Technology Center 1700
_________________

Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
DEBORAH KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-012138
Application 10/535,242

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Appellants1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1, 3-7, and 10-15. (App. Br. 2.)
Claims 2, 8, and 9 have been cancelled. (Id.) We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
The Examiner rejected claims 1, 3-5, 7, 10, 11, 14, and 15 under
35 U.S.C. § 103(a) over Amimori2 in view of Takahaski.3 (Ans. 4-5.) The
Examiner also rejected claims 6, 11, and 13 under 35 U.S.C. § 103(a) over
Amimori and Takahashi, and further in view of Hasuo.4 (Ans. 6.)
Appellants’ claims are directed to films from which fingerprints can
be easily erased and which can be applied to the surface of liquid crystal
display monitors. (See Spec. 1.) Appellants’ claim 1, the only independent
claim on appeal, recites5:
A fingerprint easily erasable film,

wherein one surface of the film is matted, and

the matted surface shows a wet tension of 25 mN/m
or higher,

wherein the matted surface has a surface roughness
of 0.2 to 2.0 µm in terms of ten point mean roughness Rz.

(App. Br. 12, Claims App’x.)

1 The real party in interest is said to be Kimoto Co., Ltd. (App. Br. 1.)
2 Amimori, et al., U.S. Patent No. 6,559,915 B1, issued May 6, 2003.
3 Takahashi, et al., U.S. Patent No. 6,265,133 B1, issued July 24, 2001.
4 Hasuo, et al., U.S. Patent No. 6,716,513 B1, issued April 6, 2004.
5 Claim 1 has been modified by adding indentations to separate elements of
the claimed film. See 37 C.F.R. § 1.75(i).
Appeal 2010-012138
Application 10/535,242

3
The Examiner finds that Amimori teaches a matted optical film for
liquid crystal displays with a surface roughness in terms of ten point mean
roughness Rz within the claimed range. (Ans. 4, citing Amimori, col. 3, ll.
54-60, and col. 31, ll. 17-20.) Amimori does not teach a surface with a wet
tension of 25mN/m or higher. (Ans. 4.)
The Examiner finds that Takahashi teaches a radiation curable resin
composition that adheres to substrates and demonstrates fingerprint
attachment resistance. (Ans. 4, citing Takahashi, col. 1, ll. 11-16.)
Takahaski teaches surface tensions of the cured coating film of 25 mN/m or
higher. (Takahaski, col. 9, ll. 43-45 (wherein 1 N= 105 dyne).) The
Examiner finds that Table 2 of Takahashi demonstrates that if the wet
tension is below 20 mN/m, the coating does not resist fingerprints. (Ans. 4.)
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to have made Amimori’s surface with a wet tension of 25
mN/m or higher in order to make Amimori’s film resistant to fingerprints.
(Id.)
We agree with Appellants that Takahashi does not demonstrate that if
the wet tension is below 25 mN/m, the coating does not resist fingerprints.
As reported in Table 2, Comparative Example 4 had a critical surface
tension of 25 and showed fingerprints. (App. Br. 9; Takahashi, Table 2.) In
contrast, Examples 5, 6, and 7 and Comparative Examples 2 and 3 had
values for critical surface tension below 25 mN/m, yet did not show
fingerprints.6 (Id.) Thus, we agree with Appellants that the data in Table 2

6 Appellants note that Takahashi attributes fingerprint resistance to the
presence of silica particles in the coating film, citing column 6, ll. 15-23.
Appeal 2010-012138
Application 10/535,242

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of Takahashi does not support the Examiner’s finding that those of skill in
the art would have considered it obvious to have made a surface as in
Amimori with a wet tension of 25mN/M or higher to obtain a film resistant
to fingerprints from the teaching of Takahaski.
The Examiner also cites Takahashi at column 9, lines 43-57, as
teaching that wet/surface tension is associated with the ability of a surface to
adhere substances, including fingerprints and oil marks. (Ans. 8.) This
portion of Takahaski correlates the critical surface tension to the ability of
printing ink to coat the surface. Without further support or explanation, we
do not find that the coatability with printing ink is necessarily indicative of
whether a surface is fingerprint resistant.
Because the Examiner failed to state a reason, supported by sufficient
evidence, why those of skill in the art would have used the claimed wet
tension in the film taught in Amimori, the Examiner erred in rejecting
Appellants’ claim 1.
Because the Examiner relied on the same reasoning to combine the
references for the rejection of dependent claims 6, 11, and 13 (Ans. 6), the
Examiner also erred in rejecting these claims.

(App. Br. 9.) In support, Comparative Examples 1 and 4 of Takahashi Table
1 are the only compositions that did not contain silica and were also the only
compositions that were recorded to show fingerprints in Table 2. (App. Br.
9, Takahashi Tables 1 and 2.)

Appeal 2010-012138
Application 10/535,242

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Conclusion
Upon consideration of the record and for the reasons given, we do not
sustain the rejections of the claims.
Therefore, we reverse the decision of the Examiner.

REVERSED

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