Ex Parte Murashige et al

Patent Trial and Appeal Board

Aug 30, 2018

13501056 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/501,056 04/09/2012 Takeshi Murashige
38834 7590 09/04/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
UNITED ST A TES OF AMERICA
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.
P22799USOO 7083
EXAMINER
PLESZCZYNSKA, JOANNA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKE SHI MURASHIGE, DAISUKE HATTORI,
YOSHIMASA SAKATA, TAKASHI YAMAOKA, and
TATSUKINAGATSUKA
Appeal2017-006367
Application 13/501,056
Technology Center 1700
Before JEFFREY T. SMITH, JEFFREY W. ABRAHAM, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-15, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 In explaining our Decision, we refer to the Specification filed April 9, 2012
("Spec."); Final Office Action dated March 30, 2016 ("Final Act."); Appeal
Brief filed August 29, 2016, as corrected October 6, 2016 ("Appeal Br.");
Examiner's Answer dated January 13, 2017 ("Ans."); and Reply Brief filed
March 10, 2017 ("Reply Br.").
2 Appellants identify Nitto Denko Corporation as the real party in interest.
Appeal Br. 2.
Appeal2017-006367
Application 13/501,056
The Claimed Invention
Appellants' disclosure relates to a transparent substrate. Spec. ,r,r 1,
61 (Abstract). According to the Specification, the claimed transparent
substrate significantly prevents the progress of a crack in a thin-plate glass
and the rupture of the glass, and is excellent in bending property and
flexibility. Id.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from Appendix A to the Appeal Brief, as corrected
October 6, 2016 (key disputed claim language italicized and bolded):
1. A transparent substrate, comprising:
a thin-plate glass having a thickness of 10 µm to
100 µm; and
a resin layer on at least one side of the thin-plate
glass,
wherein the resin layer comprises a thermoplastic
resm,
wherein a shrinkage stress of the resin layer on
the thin-plate glass is 5 MPa to 25 MPa, and
wherein the resin layer has a thickness of 5 µm to
80 µm.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Verlinden et al., US 6,287,674 Bl
(hereinafter "Verlinden")
Burroughes et al., US 6,592,969 B 1
(hereinafter "Burroughes 2")
Yamaguchi et al., US 2003/0178082 Al
(hereinafter "Yamaguchi")
Randa et al., US 2005/0236985 Al
(hereinafter "Randa")
Burroughes et al., US 2006/0134394 Al
(hereinafter "Burroughes")
2
Sep. 11, 2001
July 15, 2003
Sept. 25, 2003
Oct. 27, 2005
June 22, 2006
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Application 13/501,056
Kiefer et al., US 2007/0102361 Al May 10, 2007
(hereinafter "Kiefer")
Murashige et al., US 2010/0062234 Al Mar. 11, 2010
(hereinafter "Murashige")
Murashige JP 2008-107510 A May 8, 2008
(hereinafter "Murashige '51 O")
The Rejections
On appeal, the Examiner maintains (Ans. 2) the following rejections3:
1. Claims 1-3, 6-8, 10, and 13 are rejected under
35 U.S.C. § I03(a) as being unpatentable over Murashige '5104 in view of
Yamaguchi ("Rejection 1 "). Ans. 4; Final Act. 4.
2. Claim 4 is rejected under 35 U.S.C. § I03(a) as being
unpatentable over Murashige '510 in view of Yamaguchi, as discussed
above with respect to claim 1, and further in view of Kiefer ("Rejection 2").
Ans. 6; Final Act. 6.
3. Claims 5, 11, 12, 14, and 15 are rejected under
35 U.S.C. § I03(a) as being unpatentable over Murashige '510 in view of
Yamaguchi, as discussed above with respect to claim 1, and further in view
of Burroughes ("Rejection 3"). Ans. 6-7; Final Act. 7.
4. Claim 9 is rejected under 35 U.S.C. § I03(a) as being
unpatentable over Murashige '510 in view of Yamaguchi, as discussed
3 The Examiner's rejection of claims 1-11, 13, and 14 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-3, 7, and 9-12 of copending Application No. 12/988716 (Final Act.
3) is withdrawn at page 11 of the Answer.
4 For each of Rejections 1 through 4, the Examiner uses and cites to the
Murashige reference (US 2010/0062234 Al) as the English translation of the
Murashige '510 reference (JP 2008-107510 A).
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Application 13/501,056
above with respect to claim 1, and further in view of Burroughes and Randa
("Rejection 4"). Ans. 8; Final Act. 8.
5. Claim 1 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burroughes 2 in view of Yamaguchi ("Rejection 5").
Ans. 9; Final Act. 9.
6. Claim 1 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Verlinden in view of Yamaguchi ("Rejection 6").
Ans. 10; Final Act. 10.
7. Claims 1-10 and 13 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-7 of
U.S. Patent No. 8,241,735. ("Rejection 7"). Ans. 3; Final Act. 3.
OPINION
With respect to the Examiner's rejection of claims 1-10 and 13 on the
ground of nonstatutory obviousness-type double patenting, i.e., Rejection 7
stated above, Appellants offer no substantive argument on the merits in the
Appeal briefing. However, Appellants filed a terminal disclaimer on March
9, 2017.
Accordingly, the rejection is moot.
Re;ection 1
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we reverse the Examiner's
Rejection 1 for principally the same reasons provided by Appellants at pages
8-10 of the Appeal Brief and pages 8-10 of the Reply Brief. We add the
following.
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Application 13/501,056
The Examiner determines that the combination of Murashige '510 and
Yamaguchi suggests a transparent substrate satisfying all of the limitations
of claim 1 and thus, concludes that the combination would have rendered the
claim obvious. Ans. 4--5.
Appellants argue that the Examiner's rejection should be reversed
because Yamaguchi is non-analogous art. Appeal Br. 8-10; see also Reply
Br. 8-10. In particular, Appellants argue that Yamaguchi is not from the
same field of endeavor as the claimed invention and not reasonably pertinent
to the particular problem with which the inventors are involved. Appeal
Br. 9-10.
We agree with Appellants' argument. Two separate tests define the
scope of analogous prior art: ( 1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is not
within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved. In re Klein, 647 F.3d. 1343, 1348 (Fed. Cir. 2011) (citing In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
"A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem." In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992).
As Appellants correctly point out (Appeal Br. 9), the claimed
invention is directed to a transparent substrate that significantly prevents the
progress of a crack in a thin-plate glass and the rupture of the glass, and is
excellent in bending property and flexibility. Spec. ,r,r 1, 6. The
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Application 13/501,056
Specification discloses that the transparent substrate is used in display
devices, such as flat panel display (FPDs) and liquid crystal displays, and
solar cells. Id. ,r 2. The Specification further discloses that the transparent
substrate comprises "a thin-plate glass having a thickness of 10 µm to 100
µm" and "a resin layer on at least one side of the thin-plate glass." Id. ,r 7,
Fig. l(a).
Yamaguchi, on the other hand, is directed to high-pressure composite
pipes to be used as high-pressure pipes or hoses that require a high-strength
against internal pressure for transporting water, gas, and like medium, and as
a replacement for steel pipes. Yamaguchi ,r,r 1-2. In particular, Yamaguchi
discloses that the high-pressure composite pipes comprise:
an inner layer pipe made of a synthetic resin, and a reinforcing
layer formed by spirally winding a stretched polyolefin resin
sheet on an external circumferential surface of the inner layer
pipe, wherein the inner layer pipe and the stretched polyolefin
resin sheet are fused together.
Id. ,r 9; see also id. Fig. 1.
As Appellants note (Appeal Br. 9; Reply Br. 8-9), although
Yamaguchi's high-pressure composite pipe includes a "reinforcing layer"
formed by "a stretched polyolefin resin sheet" (Yamaguchi ,r 9), the
structure, materials, properties, and technical field of the high-pressure
composite pipe are vastly different than those of the claimed invention.
Thus, we do not find that Yamaguchi is from "the same field of
endeavor" as the claimed invention.
We also do not find that Yamaguchi is reasonably pertinent to the
particular problem with which the inventors are involved. In particular, for
the reasons provided by Appellants at pages 9-10 of both the Appeal Brief
and the Reply Brief, we agree with Appellants that Yamaguchi' s disclosure
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Application 13/501,056
regarding the shrinkage stress of the stretched polyolefin resin sheet when
heated in order to fill the synthetic resin into a gap during manufacturing to
prevent weeping or fracture of the high-pressure composite pipe (see
Yamaguchi ,r,r 8, 24--26, 149, 199) would not logically have commended
itself to the present inventors' attention in considering the problem of
preventing the progress of a crack in the thin-plate glass and the rupture of
the glass in a transparent substrate to which the claim invention is directed
(see Spec. ,r,r 1, 4).
The Examiner's comments at pages 16-17 of the Answer do not
meaningfully address Appellants' arguments regarding the differences
between Yamaguchi' s high-pressure composite pipes and the claimed
transparent substrate or provide an adequate technical explanation for why
one of ordinary skill in the art would have been led to Yamaguchi.
The Examiner's assertions that "Yamaguchi is reasonably pertinent to
the particular problem of ... providing reinforcement to an adjacent layer to
improve its resistance against damage" (Ans. 16) and "Yamaguchi teaches
composite pipes including a stretched polyolefin sheet which serves to
improve the resistance of the pipe against internal pressure" (id. at 17) are
conclusory and do not satisfactorily address Appellants' arguments in this
regard. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (holding "rejections
on obviousness grounds cannot be sustained by mere conclusory
statements").
We therefore cannot sustain the Examiner's rejection.
Accordingly, we reverse the Examiner's rejection of claims 1-3, 6-8,
10, and 13 under 35 U.S.C. § 103(a) as obvious over the combination of
Murashige '510 and Yamaguchi.
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Application 13/501,056
Re;ections 2-6
Because we find that Yamaguchi is non-analogous art and the
Examiner's Rejections 2 through 6 are based on combinations of references
that include Yamaguchi, we also reverse the Examiner's Rejections 2---6 for
the same reasons discussed above for reversing Rejection 1.
DECISION/ORDER
The Examiner's rejections of claims 1-15 under 35 U.S.C. § 103(a)
(Rejections 1 through 6, stated above) are reversed.
It is ordered that the Examiner's decision with respect to Rejections 1
through 6, stated above, is reversed.
REVERSED
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