Ex Parte Tanaka et al

Patent Trial and Appeal Board

Mar 14, 2016

11126181 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111126,181 05/1112005 Y oshikazu Tanaka
38834 7590 03/16/2016
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT A VENUE, NW
SUITE 700
WASHINGTON, DC 20036
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.
052543 2839
EXAMINER
LEE, LAURA MICHELLE
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
03/16/2016 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 YOSHIKAZU TANAKA, TOSHIROU NISHIKUBO,
KAZUO KITADA, NORIAKI HARA, and SADAJI SUTOU
Appeal2013-009296
Application 11/126, 181
Technology Center 3700
Before: EDWARD A. BROWN, CHARLES N. GREENHUT, and
LYNNE H. BROWNE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2 and 19-21. An oral hearing was scheduled for December 17, 2015,
attendance at which was waived by Appellants. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appeal2013-009296
Application 11/126, 181
The claims are directed to a laminate-cutting method, cutting device,
and laminate-cutting pedestal. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. An optical-film-cutting method for cutting an optical film with
a cutting edge, wherein layers are laminated through a pressure-
sensitive adhesive, which is not solidified after the adhesive is
used for adhesion of the layers to each other, wherein the cutting
of the optical film with the cutting edge is applied into a film
region where the pressure-sensitive adhesive is present, when the
optical film is cut with the cutting edge, the optical film is placed
onto a placing face of a pedestal to adhere closely to the placing-
face, the placing-face being a continuous convex curved face
having a central axis extending along the width direction of the
optical film, and having a curvature radius R of 3 to 250 mm, and
the optical film is made into the state that tensile stress is applied
to the front face side of the optical film and compressive stress is
applied to the rear face side thereof, thereby decreasing the
compressive stress applied to the front face of the optical film by
the cutting edge, the film region where the film is to be cut is
rendered a region where tensile stress acts in forward and reverse
directions substantially perpendicular to the direction of the
cutting, and tensile stress is caused to act on the optical film in
the forward and reverse directions substantially perpendicular to
the direction of the cutting also after the optical film is cut,
thereby separating the cutting edge from faces of the optical film
generated by the cutting, wherein a lower plate forms a
continuous convex surface and is interposed between the optical
film and the pedestal, wherein the lower plate is placed along the
continuous convex curved surface of the pedestal, and wherein
the cutting edge is a single straight edge.
2
Appeal2013-009296
Application 11/126, 181
REJECTION1
Claims 1, 2, and 19-21 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takuo (JP2002-219686, pub. Aug. 6, 2002), Shibuya (JP
02-250798, pub. Oct. 8, 1990), Cane (U.S. Patent 5,468,081, iss. Nov. 21,
1995), Prentice (U.S. Patent 3,975,976, iss. Aug. 24, 1976), Gerber (U.S.
Patent 3,495,492, iss. 3,495,492), and Applicants' Admitted Prior Art
("AAP A").
OPINION
The rejected claims are argued as a group. Appeal Br. 4--7. We select
the sole independent claim, claim 1, as representative. 37 C.F.R.
§ 41.37(c)(iv). Appellants do not raise any issues concerning the
Examiner's findings or conclusions relating to Takuo. Appellants note that
"Takuo is a document exemplified as the problem of the present invention."
We agree with the Examiner's summarization of Appellants' arguments as
ra1smg two mam ISsues. See Ans. 9. First, is the alleged absence of the
"compressive stress" aspect of claim 1. It is unclear why Appellants believe
such compressive stress to be absent from Shibuya, as it is expressly
discussed. Ans. 9-10 (quoting Shibuya Abst.). The stress, according to
Shibuya, is attributable to the tension created by curved surface of the die 11
and rollers 19, 20. Id. This force would therefore not be attributable to, or
negated by (to the extent that is Appellants' argument), the hollow portion of
Shibuya. We note that the claim, consistent with Appellants' own disclosure
(see, e.g., Fig. 2(b)), recites no requirement for the compressive stress to be
1 The Examiner indicated Appellants' amendment cancelling claim 21 would
be entered for purposes of appeal, thereby rendering the§ 112 rejection of
claim 21 moot. Adv. Act. Dec. 26, 2012.
3
Appeal2013-009296
Application 11/126, 181
collocated with the hollow area in Shibuya. In any case, the Examiner
concluded that it would have been obvious to replace this hollow area.
This brings us to the next issue raised by Appellants, that the hollow
portions protecting the cutting blade in Shibuya and Cane essentially render
unnecessary the different form of protection in the form of a plate as
employed by Prentice, Gerber and AAP A. Appeal Br. 6. As noted above,
however, the Examiner concluded that it would have been obvious to
substitute these forms of protection, not to combine them. See Non-Final
Act. pp. 7-8 ("penetrable sheet ... instead of a penetrable hole")( emphasis
added); Ans. 10-11 ("[ o ]ne apprised of the art, would understand that the
mating hollow portion, also known as the slot to receive the blade in the
anvil, does not need to be incorporated into the Takou reference to
incorporate the benefits of the curved anvil surface as taught by Shibuya and
Cane."); see also e.g., KSR Intern. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740
(2007)("when 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")( discussing United States v. Adams, 86 S. Ct. 708 (1966)); In re
Nievelt, 482 F .2d 965, 968 (CCP A 1973). ("[ c ]ombining the teachings of
references does not involve an ability to combine their specific structures.").
Thus, Appellants' arguments fail to address the rejection set forth by the
Examiner.
The Examiner's Answer thoroughly and comprehensively addresses
the issues raised by Appellants. We adopt the Examiner's factual findings,
analysis, and legal conclusions (Non-Final Act. 4-9; Ans. 5-12) as our own.
See, e.g., In re Paulsen, 30 F. 3d 1475, 1478 n. 6.
4
Appeal2013-009296
Application 11/126, 181
We note that in the Reply Brief Appellants provide a general
discussion relating to some alleged differences between the cited references,
considered individually, and the arrangement and benefits described in
Appellants' Specification. These remarks are neither relevant to the
rejection of claim 1 set forth by the Examiner (see, e.g., 37 C.F.R.
§ 41.37(c)(iv)("[t]he arguments shall explain why the examiner erred as to
each ground of rejection"); In re Hiniker Co., 150 F. 3d 1362, 1369 (Fed.
Cir. 1998)( "[t]he invention disclosed in [Appellant's] written description
may be outstanding in its field, but the name of the game is the claim.")); nor
are they timely (see 37 C.F.R. § 41.41 ("[a]ny argument raised in the reply
brief which was not raised in the appeal brief, or is not responsive to an
argument raised in the examiner's answer ... will not be considered by the
Board for purposes of the present appeal, unless good cause is shown.")).
DECISION
The Examiner's 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
5