Ex Parte Tokumaru et al

Patent Trial and Appeal Board

Jul 23, 2018

14348753 (P.T.A.B. Jul. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/348,753 08/05/2014
7055 7590 07/25/2018
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Terutaka Tokumaru
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.
P45343 7520
EXAMINER
PASKO, NICHOLAS R
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
07/25/2018 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERUTAKA TOKUMARU, HIDEAKI KIMURA,
MASA YUKI AKAKI, and KYOUSUKE NAKAMURA
Appeal2017-009151
Application 14/348,753
Technology Center 2800
Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 3 and 4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision, we refer to the Specification filed March 31, 2014
("Spec."); the Final Office Action mailed September 6, 2016 ("Final Act.");
the Advisory Action mailed November 30, 2016 ("Adv. Act."); the Appeal
Brief filed February 6, 2017 ("Appeal Br."); the Examiner's Answer mailed
March 23, 2017 ("Ans."); and the Reply Brief filed May 23, 2017 ("Reply
Br.").
2 Appellants identify MITSUBISHI GAS CHEMICAL COMPANY, INC.
and MGC FILSHEET CO., LTD. as the real parties in interest. App. Br. 3.
Appeal2017-009151
Application 14/348,753
The claims are directed to a polarizing lens comprising a polyvinyl
alcohol film and first and second aromatic polycarbonate sheets bonded
thereto via adhesive layers. Claim 3, reproduced below, is illustrative of the
claimed subject matter and is copied from the Claims Appendix to the
Appeal Brief ( disputed limitation is italicized):
3. A polarizing lens, comprising
a polyvinyl alcohol film having a first and second surface
separated by a thickness, wherein the polyvinyl alcohol film
having been dyed with a dichroic dye in a thickness direction to
no more than one quarter of the thickness of the polyvinyl
alcohol film,
a first aromatic polycarbonate sheet bonded to a first
surface of the polyvinyl alcohol film via an adhesive layer, and
a second aromatic polycarbonate sheet bonded to a
second surface of the polyvinyl alcohol film via an adhesive
layer to form a polarizing sheet,
wherein the polarizing sheet is bent to have a spherical or
aspherical surface.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Kawaki et al.
("Kawaki")
Ito
Kobuchi et al.
("Ko buchi")
Hayashi (machine
translation)
us 5,051,309
US 7,787,084 B2
US 2011/0205627 Al
JP 2002-082222 A
2
Sept. 24, 1991
Aug. 31, 2010
Aug. 25, 2011
March 22, 2002
Appeal2017-009151
Application 14/348,753
REJECTIONS 3
The Examiner maintains and Appellants seek review of the rejections
of claims 3 and 4 under 35 U.S.C. § 103(a) over (1) Kawaki in view of Ito;
(2) Kawaki in view of Hayashi; (3) Kobuchi in view of Ito; and (4) Kobuchi
in view of Hayashi. Final Act. 9-32; App. Br. 9-15.
OPINION
Appellants raise no challenge to the Examiner's findings regarding
Kawaki or Kobuchi. App. Br. 9-15.
Rejections that include Ito
With respect to the rejections that include Ito as prior art (Kawaki in
view of Ito and Kobuchi in view of Ito), Appellants argue only that Ito fails
to teach or suggest the claim limitation "dichroic dye is infiltrated no more
than one quarter the thickness of the film." App. Br. 9-13. Appellants'
argument is based on interpretation of the claim limitation "wherein the
polyvinyl alcohol film having been dyed with a dichroic dye in a thickness
direction to no more than one quarter of the thickness of the polyvinyl
alcohol film" as meaning that the aggregate thickness of the dichroic dye
from the combination of two surfaces is no more than one quarter of the
thickness of the polyvinyl alcohol film, leaving the central 75% of the film
absent of dye. See id. at 11; Reply Br. 2.
During prosecution, an application's claims are given their broadest
reasonable scope consistent with the specification. In re Am. A cad. of Sci.
3 The Examiner entered Appellants' Amendment After Final, filed
November 30, 2016. See Adv. Act. 2. In the Answer, the Examiner
withdrew the rejection of claims 3 and 4 under 35 U.S.C. § 112(b) as
indefinite. Ans. 2.
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Application 14/348,753
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as it would have been interpreted
by one of ordinary skill in the art at the time of the invention. Id.
The Examiner interprets the limitation to require that the polyvinyl
alcohol film is dyed with a dichroic dye in a thickness directionfrom a
surface to no more than one quarter of the thickness of the polyvinyl alcohol
film. Final Act. 6. In other words, the Examiner construes the limitation as
allowing dichroic dye to penetrate each of the two surfaces of the film up to
one quarter of the thickness of the film, thus the total penetration of the
dichroic dye must be no more than half of the thickness of the film, leaving
at least the central 50% of the film absent of dye. See id.; Ans. 3--4. The
Examiner cites paragraph 23 of the Specification, which states "wherein the
area in which the dichroic dye seeps from the surface of the polyvinyl
alcohol film is not more than a quarter of the thickness of the polyvinyl
alcohol film," as supporting the interpretation. Ans. 4 ( citing Spec. ,r 23
( emphasis added)). The Examiner also further finds that various samples of
Examples 1-3 in the Specification are described as inventive. Id. ( citing
Spec. ,r 26).
Appellants contend that the Examiner's interpretation of the limitation
conflicts with the Specification, arguing:
All of the Examples and Comparative Examples illustrate films
that are dyed from both directions, and it is the aggregate
thickness that is evaluated in the specification to determine
whether ' ... the polyvinyl alcohol film having been dyed ... in
a thickness direction to no more than one quarter of the
thickness of the polyvinyl alcohol film.
App. Br. 11-13. In particular, Appellants identify the Comparative Example
in Figure 2 as supporting that the thickness of the dyed portion of the
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Application 14/348,753
polyvinyl alcohol film is the total of the thickness of dye seepage or
penetration from both of the two surfaces. Id. at 11-12.
Figure 2[A] of the application is reproduced below:
7
8
9
8
Figure 2 show photographs of cross-sectional surfaces of polarizing
films to be used in an aromatic polycarbonate polarizing lens according to
the invention. Spec. ,r 26. Figure 2[A] corresponds to Sample No. [1] of
Comparative Example 1. Id. Table 1 of the Specification indicates that the
film thickness of Comparative Example 1 is 29.7 µm and the "area in which
dye seeps" is 13.7 µm. Id. ,r 57.
Appellants contend that the "area where dye seeps" is the combination
of the two bands labeled "8," with each band being 6.85 µm (13.7 µm/2).
App. Br. 12. However, we find nothing in the Specification that states or
even suggests that it is the thickness of the combination of the two bands "8"
that is provided in Table 1. Appellants proffer only attorney argument as
support for their interpretation of Figure 2 and the information in Table 1. It
is well settled that arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139--40
(Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellants also contend that the Examiner's claim interpretation is
flawed when applied to a hypothetical claim. App. Br. 10-11; Reply Br. 2.
Appellants argue the Examiner's interpretation would be unreasonable for a
hypothetical claim reciting "a film dyed in a thickness direction to no more
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Application 14/348,753
than one half of its thickness" because the interpretation would permit the
film to be dyed 100% through its thickness. Reply Br. 2. As an initial
matter, the hypothetical claim is not before us, therefore is irrelevant.
Moreover, the Examiner's interpretation of the claim language does not
eliminate Appellants' hypothetical, as it permits penetration of dichroic dye
no more than 50% from both film surfaces.
After consideration of the evidence and arguments of Appellants and
the Examiner, we agree with the Examiner. The Examiner's interpretation
of the limitation "wherein the polyvinyl alcohol film having been dyed with
a dichroic dye in a thickness direction to no more than one quarter of the
thickness of the polyvinyl alcohol film" as reading on a thickness of the
dichroic dye of no more than one quarter of the thickness of the polyvinyl
alcohol film from each of the two surfaces of the film, when having been
dyed in a thickness direction of the two surfaces, is both reasonable and
consistent with the Specification. Using this interpretation, we tum to
consideration of Ito.
The Examiner finds that Ito teaches a polarizing film of stretched
polyvinyl alcohol that is dyed with dichroic dye wherein the dichroic dye
infiltrates into the polyvinyl alcohol film in a thickness direction in a range
that overlaps the claimed "no more than one quarter of the thickness of the
polyvinyl alcohol film." Final Act. 6; Ans. 4. Ito teaches that "the dichroic
dye is distributed in about 4 µm from the polymer surface (sum of both sides
is about 8 µm)" and that the thickness of the film is between 10 µm and 30
µm. Ito col. 21, 11. 40-54. The Examiner calculates the range of dye
thickness taught by Ito to be from 13% (4 µm/30 µm) to 40% (4 µm/10 µm).
Ans. 4. The Examiner finds that this range overlaps the claimed range of no
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more than one quarter (25%) of the thickness of the polyvinyl alcohol film.
Id.
In the instant case, based on our interpretation of the claim language,
the polyvinyl alcohol film may be dyed with a dichroic dye in a thickness
direction to no more than one quarter of the thickness of the polyvinyl
alcohol film from each of the two surfaces. Ito teaches dyeing a film
between 13% and 40% in a thickness direction from each of the two
surfaces. "A prima facie case of obviousness typically exists when the
ranges of a claimed composition overlap the ranges disclosed in the prior
art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (citing In re
Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990); In re Malagari, 449 F.2d 1297, 1303 (CCPA
1974)); see also, In re Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005). Ito's
disclosure (dyeing 13%---40% in the thickness direction) overlaps the
claimed range (no more than one quarter of the thickness of the film).
Therefore, in combination with the undisputed disclosures of either Kawaki
or Kobuchi, Ito renders claims 3 and 4 obvious.
Rejections that include Hayashi
The Examiner finds that Hayashi teaches a polyvinyl alcohol film
having a thickness of 50-150 µm and absorption thickness of a dichroic dye
in the film of greater than or equal to 4 µm. Ans. 8 ( citing Hayashi ,r,r 10
and 11 ). The Examiner finds that Hayashi therefore discloses a polarizing
film comprising a polyvinyl alcohol that is dyed with a dichroic dye from a
surface in a thickness direction greater than or equal to 2.7% of the thickness
of the polyvinyl alcohol (4 µm/150 µm), which overlaps the claimed
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Application 14/348,753
thickness range of "no more than one quarter of the thickness" of the film.
Id.
Appellants argue that Hayashi fails to meet the claim limitation of a
dichroic dye in a thickness direction no more than one quarter of the
thickness of the polyvinyl alcohol film. App. Br. 14. According to
Appellants, Hayashi's disclosure of a polyvinyl alcohol film having a
thickness of 50-150 µm applies to a film prior to stretching, and "it is clear
that the stretched film has a thickness a fraction of its original 50 to 150 µm,
by the time it is dyed." Id. Appellants rely on Hayashi's Example 1, which
describes a polyvinyl alcohol film of 7 5 µm that is stretched "to 5 times,"
then dyed to a thickness of 6 µm. Id. Appellants argue that the resulting
film would have a dye thickness greater than one quarter of the thickness of
the polyvinyl alcohol film, and therefore, not meet the claim limitation. Id.
Hayashi discloses a polyvinyl alcohol film with a thickness of 50-150
µm, as well as a dye layer with a thickness of 4 µm or more. Hayashi ,r,r 10
and 11. As the Examiner points out, Hayashi teaches that the film may be
dyed before, during, or after stretching. Ans. 8-9 ( citing Hayashi ,r 37).
Accordingly, Appellants fail to show that Hayashi's disclosure is limited to
polyvinyl alcohol films wherein the dye adsorbed layer has a thickness
greater than one quarter of the thickness of the polyvinyl alcohol film.
Hayashi in combination with the undisputed teachings of either Kawaki or
Kobuchi consequently renders claims 3 and 4 obvious.
Appellants also contend that Hayashi teaches away from a polyvinyl
alcohol film being dyed with a dichroic dye in a thickness direction to no
more than one quarter of the thickness of the polyvinyl alcohol film. Id.;
Reply Br. 4. According to Appellants, Comparative Example 1 of Hayashi
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Application 14/348,753
teaches a dye adsorbed layer of 3 µm, and Comparative Example 1 is
inferior to Example 1 (with a dye thickness of 6 µm) in light resistance.
App. Br. 14--15. Consequently, Appellants contend that one of ordinary skill
in the art would not have been motivated by Hayashi to design the thickness
of the layer in which the dye is adsorbed as less than 6 µm. Id. at 15.
Teaching away requires that a reference "criticize, discredit, or
otherwise discourage the solution claimed" by Appellants. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004); see also In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994) ("A known or obvious composition does not become
patentable simply because it has been described as somewhat inferior to
some other product for the same use."). "[A]ll of the relevant teachings of
the cited references must be considered in determining what they fairly teach
to one having ordinary skill in the art." In re Mercier, 515 F .2d 1161, 1165
(CCP A 197 5); see also In re Susi, 440 F .2d 442, 446 n.3 (CCP A 1971)
(Disclosed examples do not constitute a teaching away from a broader
disclosure.).
Appellants' reference to Hayashi's Example and Comparative
Example fail to constitute criticism, discredit, or discouragement regarding
the claimed solution. See, e.g., App. Br. 14. Hayashi does not teach away
from a polyvinyl alcohol film with a dichroic dye layer having a thickness
direction to no more than one quarter of the thickness of the polyvinyl
alcohol film.
We sustain the Examiner's rejection of claims 3 and 4 over each of
the combinations of prior art.
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Application 14/348,753
DECISION
The rejection of claims 3 and 4 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) (2015).
AFFIRMED
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