Ex Parte Takada et al

Patent Trial and Appeal Board

Sep 26, 2017

13877138 (P.T.A.B. Sep. 26, 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.
13/877,138 03/29/2013 Katsunori Takada 130415 2067
38834 7590 09/28/2017
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036
EXAMINER
VAZQUEZ, ELAINE M
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
09/28/2017 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 KATSUNORI TAKADA,
DAIGORO NAKAGAWA, HIROYUKI TAKAO,
TAKAYUKI ADACHI, and HIROKI KURAMOTO
Appeal 2017-001761
Application 13/877,138
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal the Non-Final Rejection of claims 1—9, 12, and
14—24 under 35 U.S.C. § 134(a). We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as “Nitto Denko Corporation.”
(Appeal Br. 2).
Appeal 2017-001761
Application 13/877,138
Appellants’ invention relates to the field of touch panels, particularly
resistive touch panels configured to include a transparent conductive film
(Spec. 113—4).
Claim 1 is illustrative (emphasis added):
1. A laminated film comprising a resin film with pressure-
sensitive adhesive layer and a second transparent resin film
bonded thereto with the pressure-sensitive adhesive layer of the
resin film with pressure-sensitive adhesive layer interposed
therebetween,
wherein the resin film with pressure-sensitive adhesive
layer, comprises, a first transparent resin film, an oligomer
blocking layer, and a pressure-sensitive adhesive layer
laminated in this order,
wherein the oligomer blocking layer is a cured layer
formed by curing a composition containing a curable
compound and inorganic oxide particles,
the oligomer blocking layer has a thickness of 120 nm or
more,
the oligomer blocking layer has a refractive index
difference of 0.04 or less from the pressure-sensitive adhesive
layer, and
an anchoring strength between the oligomer blocking
layer and the pressure-sensitive adhesive layer is 1 N/25 mm or
more,
a weight average particle size of the inorganic oxide
particles is in the range of 1 nm to 200 nm,
wherein the second transparent resin film is a transparent
conductive film comprising a transparent conductive layer
provided, directly or with an undercoat layer interposed
therebetween, on one side of the second transparent resin film
opposite to the second transparent resin film side where the
pressure-sensitive adhesive layer is bonded.
Appeal Br. 14 (App. A: Claims).
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Application 13/877,138
Appellants appeal the rejection of claims 1—9, 12, and 14—24 under
35 U.S.C. § 103(a) as unpatentable over Yasui,2 Otsuka,3 Toyama,4 and
further in view of Tsuno5 (Non-Final Act. 2—11).
Appellants’ arguments focus on the subject matter of independent
claim 1 (Appeal Br. 4—12; Reply Br. 2—7). We select claim 1 as
representative. Any claim not argued separately will stand or fall with our
analysis regarding the present independent claim 1.
FINDINGS OF FACT & ANALYSIS
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s prior art rejection under
35 U.S.C. § 103(a) for the reasons presented by the Examiner and add the
following for emphasis.
The Examiner’s findings and conclusions regarding Yasui, Otsuka,
Toyama, and Tsuno are located on pages 2 to 16 of the Answer (filed Sept.
12, 2016 (“Ans.”)). The Examiner found, inter alia, that the claimed
laminated film component of a resin film, an oligomer blocking layer, and a
pressure-sensitive adhesive layer are disclosed by Yasui (Ans. 2).
Although Yasui does not disclose the claimed order of the resin film,
the oligomer blocking layer, and the pressure-sensitive adhesive layer, the
Examiner found that Yasui discloses that the oligomer blocking layer is
preferably between the first transparent plastic film substrate and the
pressure-sensitive adhesive layer {id. at 2—3). The Examiner further found
2 US 2010/0143634 A1 to Yasui et al., published June 10, 2010.
3 US 2010/0101719 Al to Otsuka et al., published April 29, 2010.
4 US 2009/0279030 Al to Toyama et al., published Nov. 12, 2009.
5 US 2009/0244710 Al to Tsuno et al., published Oct. 1, 2009.
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Application 13/877,138
that Yasui teaches that configuring the oligomer blocking layer in this
fashion prevents oligomers in the first transparent plastic film substrate from
migrating into the pressure-sensitive adhesive layer {id. at 2—3).
The Examiner determined that it would have been obvious to one of
ordinary skill in the art to also include an oligomer blocking layer between
Yasui’s second transparent plastic film substrate and the pressure-sensitive
adhesive layer in order to prevent oligomers in that film substrate from
migrating into the pressure-sensitive adhesive layer {id. at 3).
Appellants argue, inter alia, that the Examiner has failed to establish a
prima facie case of obviousness because “Yasui does not disclose, teach or
suggest the structural configuration of the resin film with pressure-sensitive
adhesive layer, as recited in clam 1 . . . (first transparent resin film/oligomer
blocking layer/ pressure-sensitive adhesive layer)” (Appeal Br. 6; see also
id. at 1). Appellants further argue that the Examiner reversibly erred
because “one skilled in the art would not recognize a migration problem that
would motivate such a person to shift the position of the oligomer layer”
(Reply Br. 4).
We are unpersuaded by these arguments and agree with the
Examiner’s determination of obviousness (Ans. 3, 11). The Examiner’s
proposed modification of Yasui provides the same configuration, with
respect to the presence and location of an oligomer blocking layer, as the
presently claimed laminated film {see id. at 11—12).6 As found by the
6 There is no dispute that “that the first transparent resin film, as recited in
claim 1 of the present application, corresponds to the second transparent
plastic film substrate of Yasui, and the second transparent resin film, as
recited in claim 1 of the present application, corresponds to the first
transparent plastic film substrate of Yasui” (Appeal Br. 6).
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Application 13/877,138
Examiner, Yasui discloses that the first and second transparent plastic films
may be made of the same material {id. at 3, 11). Thus, modifying Yasui’s
second transparent plastic film substrate to incorporate the known oligomer
migration-preventing layer would achieve the desired prevention of
oligomer migration from Yasui’s second transparent plastic film substrate to
the pressure-sensitive adhesive layer with predictable results and a
reasonable expectation of success. See KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007) (“The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”); id. at 417 (“[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”). Appellants
have not adequately explained why one skilled in the art, using no more than
ordinary creativity, would not have been capable of adapting Yasui’s
oligomer migration-preventing layer to prevent oligomer migration from
either of Yasui’s transparent resin films. See In re Sovish, 769 F.2d 738, 743
(Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the
art); In reBozek, 416 F.2d 1385, 1390 (CCPA 1969).
The Examiner found, inter alia, that the combination of Yasui,
Otsuka, and Toyama fails to teach that the weight average particle size for
Yasui’s inorganic oxide particles is in the range of 1—200 nm (Ans. 5).
The Examiner found Tsuno teaches that a multi-layered film for use
with liquid crystal displays includes an antiglare layer, which contains
inorganic oxide particles {id.). The Examiner further found Tsuno teaches
that the weight average particle size of these particles is in the range of 1 nm
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Application 13/877,138
to 200 nm “in order to prevent the scattering of light, a decrease in
transmittance, and coloring” (id.; see Tsuno 151).
The Examiner determined that
[i]t would have been obvious to one of ordinary skill in the art at
the time the invention was made to have the inorganic oxide
particles in Yasui in view of Otsuka and Toyama to have a weight
average particle size in the range of 1 nm to 200 nm as taught by
Tsuno in order to prevent coloring and a decrease in
transmittance. One of ordinary skill in the art would have been
motivated to have the inorganic oxide particles to have a weight
average particle size in the range of 1 nm to 200 nm in order to
prevent the scattering of light.
(Ans. 5).
Appellants argue, inter alia, that Tsuno would not have motivated
modification of Yasui because Tsuno’s anti-glare layer is technically
different from the claimed oligomer blocking layer (Appeal Br. 9).
Appellants allege that the “anti-glare layer (hard coating layer) of Tsuno is
disposed on the outermost surface, and Tsuno aims to suppress glare
(preventing light diffusion, and the like) by containing particles in the anti­
glare layer (hard coating layer),” whereas “the oligomer migration­
preventing layer of Yasui is disposed on one side of the pressure-sensitive
adhesive layer of the film substrate, and aims to block the release of the
oligomer from the film substrate” (id. at 11). Thus, according to Appellants,
“[t]he articulated reason for combining the disclosure of Yasui with the
disclosure of Tsuno does not support a legal conclusion of obviousness of
the presently claimed invention” (id. at 12).
We are unpersuaded by these arguments and discern no reversible
error in the Examiner’s determination of obviousness (Ans. 5, 16). As found
by the Examiner, the layers in Yasui and Tsuno contain the same resins and
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Application 13/877,138
the same inorganic particles for use in multi-layer films in image display
devices {id. at 15). We note that Tsuno explicitly discloses that suitable
inorganic oxide particles include “silicon oxide, titanium oxide, aluminum
oxide, zinc oxide, tin oxide, and zirconium oxide,” which are the same
inorganic oxides disclosed as suitable in the Specification {compare Tsuno
136, with Spec. 137). We further note that Tsuno discloses that the known
weight average particle size range of 1—200 nm provides transparency {see
Tsuno 151; Ans. 5).
Thus, modifying Yasui’s oligomer migration-preventing layer to
incorporate the known inorganic oxide particles in the known size range
would achieve the desired invention, in terms of transparency, prevention of
light scattering and coloring, and decrease in transmittance, regardless of
whether the layer is on the inside or on the outside of the multilayer film,
with predictable results and a reasonable expectation of success. See KSR,
550 U.S. at 416 (“[W]hen a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result.” (citing United States v. Adams, 383 U.S. 39, 50-51 (1966))).
Appellants have not adequately explained why one skilled in the art, using
no more than ordinary creativity, would not have been capable of adapting
Tsuno’s adequately sized inorganic oxide particles as a transparent material
for Yasui’s oligomer migration-preventing layer. See KSR, 550 U.S. at 418
(“[A] court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”); id. at 421 (That is
because “[a] person of ordinary skill is also a person of ordinary creativity,
not an automaton.”).
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Appellants further argue that “Yasui does not disclose interference
unevenness due to the oligomer blocking layer, which is the problem
addressed by the present invention” (Reply Br. 6—7).
Appellants’ argument is not persuasive because the applied prior art
need not be combined to address Appellants’ problem. KSR, 550 U.S. at 420
(“[A]ny need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.”). As noted above, the Examiner has
provided sufficient reasoning for making the proposed combination of
Yasui, Otsuka, Toyama, and Tsuno.
Therefore, on this record, we affirm the Examiner’s § 103 rejection of
claims 1—9, 12, and 14—24 over the cited references.
Thus, based on this record, we sustain this rejection.
CONCLUSION
Accordingly, on this record and for the above reasons, we sustain the
35 U.S.C. § 103(a) rejection of 1—9, 12, and 14—24 over the cited prior art.
DECISION
The Examiner’s § 103(a) rejection is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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