Ex Parte Nomura et al

Patent Trial and Appeal Board

Jul 31, 2017

13059542 (P.T.A.B. Jul. 31, 2017)

United States Patent and Trademark Office
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.
13/059,542 05/12/2011 Satoyuki Nomura 20369-134822 1165
42798 7590 07/31/2017
FITCH, EVEN, TAB IN & FLANNERY, LLP
120 South LaSalle Street, Suite 1600
Chicago, IL 60603-3406
EXAMINER
SHAH, SAMIR
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
07/31/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte SATOYUKI NOMURA, YOSHII MORISHITA,
TOORU TANAKA, and SHIGESHI OHNO
Appeal 2015-006753
Application 13/059,542
Technology Center 1700
Before: CHUNG K. PAK, PETER F. KRATZ, and MONTE T. SQUIRE,
Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35U.S.C. § 134 from the
Examiner’s Final rejection of claims 1—23. We have jurisdiction pursuant to
35 U.S.C. § 6. Oral arguments were presented on July 25, 2017.
We REVERSE.
Appeal 2015-006753
Application 13/059,542
Appellants’ claimed invention is directed to a light control film (Spec.
11.)
Claim 1, the sole independent claim on appeal, is illustrative and
reproduced below:
1. A light control film, comprising: two transparent
electroconductive resin substrates; and a light control layer
sandwiched between the two transparent electroconductive
resin substrates, the light control layer comprising: a resin
matrix; and a light control suspension dispersed in the resin
matrix,
wherein at least one of the transparent
electroconductive resin substrates has, on the light control
layer side thereof, a primer layer, and
the primer layer is made of a film comprising a
material containing a urethane acrylate containing a
pentaerythritol skeleton.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
REFERENCES
Check, III US 5,463,491 Oct. 31, 1995
(“Check”)
Iiyama et al. US 5,935,683 Aug. 10, 1999
(“Iiyama”
Sasaki et al. US 2004/0115445 June 17, 2004
(“Sasaki”)
UV Cure Resin Coatings, Dow Corning Toray AY 42-150, AY 42-151,
Product Information, Dow Corning Corporation, Ref. No. 26-1537-01
(2006) (hereinafter “AY 42-51”).
Goto et al. JP 2002-189123 May 7, 2002
(“Goto”)
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Application 13/059,542
The Examiner maintains the following grounds of rejection:
1. Claims 1—5, 7—14, and 21—23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Goto in view of Check, and product
brochure AY 42-51.
2. Claims 6 and 15—20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Goto in view of Check, product brochure AY 42-51,
and Sasaki.
3. Claims 1—5, 7—14, and 21—23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Goto in view of Iiyama and product
brochure AY 42-51.
4. Claims 6 and 15—20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Goto in view of Iiyama, product brochure AY 42-51
and Sasaki.
5. Claims 1—5 and 7—14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Check in view of product brochure AY 42-151.
6. Claims 6 and 15—20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Check in view of product brochure AY 42-151 and
Sasaki.
We reverse the stated rejections. Our reasoning follows.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984).
Rejections 1 and 5
Here, the Examiner’s fact findings respecting the teachings of Check
and rationale for combining Goto with Check and product brochure AY 42-
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Application 13/059,542
51 (Rejection 1) and for combining Check and product brochure AY 42-51
(Rejection 5) are insufficient to make out a prima facie case of obviousness
for the subject matter required by claim 1, the only independent claim on
appeal (Final Act. 2—3, 7—8). In particular, the Examiner finds that “Goto
fails to disclose primer layer containing a urethane acrylate having a
pentaerythritol skeleton, IPDI skeleton and metal oxide fine particles” (Final
Act. 2) “Check discloses light valve employing film, i.e. light control film,
comprising a hard coating primer (column 12, lines 49-50) to reduce
abrasion and environmental attack (col. 12, lines 45-47)” {id.), Check
discloses “the coating is useful with other embodiments (column 12, lines
54-55)” (id.); however, “Check does not disclose primer layer composition
as presently claimed” (Final Act. 8).
The Examiner maintains that the “hard coating primer layer of Check”
may be used “anywhere in the light control film including on the light
control layer of Goto to reduce abrasion and environmental attack” (Final
Act. 3).
As argued by Appellants, the Examiner fails to establish that the cited
disclosures in column 12 of Check that are relied upon by the Examiner
disclose “any apparent reason to provide a primer layer between a
transparent electroconductive resin substrate and a light control [layer]'1'’
and the Examiner’s reliance on the disclosure of Check with respect to the
primer coating being “useful with other embodiments” in column 12, lines
55 and 56 of Check has not been shown by the Examiner to suggest
“something used between a substrate and a light control layer such as the
present invention” (App. Br. 3—4). Moreover, Appellants urge that the
Examiner has not established that the product brochure AY 42-151 would
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Application 13/059,542
have suggested the use of its material to one of ordinary skill in the art as a
coating layer for “use between a substrate and a light control layer’'' (App.
Br. 4—5).
In this regard, the Examiner’s rebuttal position, wherein the Examiner
reiterates the rejection position in asserting that Check teaches “the primer
coating is useful with other embodiments, particularly where the film is
sandwiched between hard plastic substrate (col. 12, lines 54-57)” as a basis
for a suggestion “to use [the] primer coating anywhere in the light control
film including on a light control layer” falls short in establishing an apparent
reason to locate the [primer] coating of Check on the light control layer side
of the transparent electroconductive resin substrates as required by
Appellants’ claim 1 (Ans. 3—4).
For reasons argued by Appellants, the Examiner’s reiterated
obviousness position as submitted in the Answer falls short in establishing
an apparent reason to locate the referenced coatings of Check as required for
the primer coating as set forth in Appellants’ independent claim 1 (Reply Br.
1-5).
Thus, the Examiner has not carried the burden to establish that Check
alone or taken with the product brochure AY 42-151 would have suggested
the use of the material of AY 42-151 to one of ordinary skill in the art as a
coating layer for “use between a substrate and a light control layer” in the
light control film of Goto (Rejection 1) or in Check (Rejection 5) in order to
“reduce abrasion and environmental attack” (Final Act. 3) and to obtain
properties such as a hard film, water repellency, and antifouling properties
based on the Examiner’s references to certain disclosures in column 12 of
Check, wherein Check briefly mentions other embodiments, for reasons as
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Application 13/059,542
urged by Appellants (App. Br. 4—5; see also Reply Br. 2—5; Final Act. 3, 8—
9).
In this regard, “rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness” being asserted. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007)). After all, rejections based on § 103(a) must rest on a factual
basis with these facts being interpreted without hindsight reconstruction of
the invention from the prior art. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967).
On this record, we reverse the Examiner’s obviousness Rejections 1
and 5 of the appealed claims.
Rejection 3
In Rejection 3, the Examiner relies on a combination of Goto in view
of Iiyama and product brochure AY 42-51 in rejecting certain claims
including sole independent claim 1. Goto and product brochure AY 42-51
were discussed above. The Examiner finds that “Iiyama, which is drawn to
light shielding film, discloses waterproof multilayer sheet containing primer
layer (14, figure 3, column 10, lines 39-46)” (Final Act. 5).
The Examiner maintains, inter alia, that “[i]t would have been
obvious to one of ordinary skill in the art at the time of the invention to use
primer layer of Iiyama in the light control film of Goto” (Final Act. 5).
Appellants argue that Iiyama (App. Br. 7):
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Application 13/059,542
relates to a waterproof material for civil engineering works and
buildings, the material of liyama et al. is totally different from
the present invention and from Goto et al. both in terms of
technical field and film structure (including the articles to be
adhered). Therefore, there would not have been any apparent
reason to use a primer layer made of the material disclosed in
liyama et al. in the light control film of Goto et al.
liyama appears to support Appellants’ argument (liyama, Abstract,
col. 1,11. 8-54, col. 4,11. 37-49).
Consequently, we concur with Appellants that Rejection 5 is not well-
founded.
Accordingly, we reverse Rejection 5.
Rejections 2, 4, and 6
Rejections 2, 4 and 6 concern certain dependent claims wherein the
Examiner employs Sasaki, as an additionally applied reference, to address
certain features of the so rejected dependent claims. The Examiner does not
articulate how Sasaki would or may, in Appellants view, overcome the
deficiencies in the separate base Rejections 1,3, and 5, respectively. It
follows that, on this record, we shall also reverse Rejections 2, 4, and 6.
CONCLUSION
In view of the foregoing, the decision of the Examiner to reject the
appealed claims under 35 U.S.C. § 103(a) is reversed.
REVERSED
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