Ex Parte Yoshihara et al

Patent Trial and Appeal Board

Aug 3, 2018

14314728 (P.T.A.B. Aug. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/314,728 06/25/2014 Toshia Yoshihara
52835 7590 08/07/2018
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
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.
20162.0150USD1 3620
EXAMINER
BURKHART, ELIZABETH A
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
08/07/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIO YOSHIHARA,
TOMOYUKI HORIO, and MA YU YOUKI
Appeal2017-009382
Application 14/314,728
Technology Center 1700
Before RAEL YNN P. GUEST, GEORGE C. BEST, and
JANEE. INGLESE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 11-15 and 17-20 of Application
14/314,728 under 35 U.S.C. § 103(a) as obvious. Final Act. (June 24,
2016). Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.
1 Applicant Dai Nippon Printing Co., Ltd. is identified as the real party in
interest. Appeal Br. 2.
Appeal2017-009382
Application 14/314,728
BACKGROUND
The '728 Application describes an optical layered body that can be
used as the outer surface of an image display device such as an LCD display
or a touch panel. Spec. ,r,r 1, 2. The layers of the optical layer body perform
various functions, including providing anti-reflection and antistatic
properties. Id. ,r 3. For example, an antistatic layer is often provided to
prevent adhesion of dust and dirt to the display screen. Id. One type of
antistatic layer is formed by using quaternary ammonium salt-based
conductive materials. Id. Another type of functional layer is a hard coat
layer that strengthens the optical layered body. Id. ,r,r 1-2.
Although the antistatic layer and hard coat layer may be formed
separately, forming them as a single layer simplifies the production process
and lowers production costs. Id. ,r 2. Processes that form a combined hard
coat and antistatic layer are not without problems. As the Specification
explains:
However, there been problems: imparting sufficient
antistatic properties to the hard coat layer reduced the
transparency of the hard coat layer, while imparting sufficient
transparency to the hard coat layer resulted in insufficient
antistatic properties. Additionally, imparting sufficient
antistatic properties to the hard coat layer disadvantageously
resulted in insufficient adhesion of the hard coat layer to
another layer provided thereon.
As described above, when the hard coat layer and the
antistatic layer are formed as a single layer, it has been difficult
to obtain an optical layered body having excellent antistatic
properties, optical characteristics, and adhesion to other layers.
Id. ,I 5.
The methods described in the '728 Application are said to address the
problems described above.
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Appeal2017-009382
Application 14/314,728
Claim 11 is representative of the '728 Application's claims and is
reproduced below from the Claims Appendix.
11. A method for localizing a quaternary ammonium salt-
containing polymer in a hard coat layer provided on a
triacetylcellulose substrate of an optical layered body, which
method comprises:
applying a resin composition to the triacetylcellulose
substrate for forming the hard coat layer, the resin composition
containing a quaternary ammonium salt-containing polymer, a
binder resin, and a solvent, wherein the solvent is a mixed
solvent containing two or more solvents having different
hydrophilicities and wherein less than 50% by mass of the
mixed solvent is a hydrophilic solvent,
selecting the quaternary salt-containing polymer to have
a higher hydrophilicity than the binder resin, and
selecting the binder resin to contain two or more resin
components having different hydrophilicities,
wherein the quaternary ammonium salt-containing
polymer is localized in an upper part of the formed hard coat
layer.
Appeal Br. 9 ( emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 11, 13-15, and 17-20 are rejected under 35 U.S.C. § I03(a)
as unpatentable over the combination of Horio2 and Furui. 3 Final
Act. 2.
2 US 2009/0075074 Al, published March 19, 2009.
3 WO 2008/020613 Al, published February 21, 2008. Without objection
from Appellants, the Examiner cited US 2010/0165460 Al, published July
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Appeal2017-009382
Application 14/314,728
2. Claim 12 is rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Horio, Furui, and Terauchi. 4 Final Act. 4--5.
DISCUSSION
Rejection 1. Appellants argue for the reversal of the rejection of
claims 11, 13-15, and 17-20 on the basis of limitations found in
independent claim 11. See generally Appeal Br. 4--7. Appellants also
present additional arguments for the reversal of the rejection of claim 19.
Id. at 7. For the purpose of deciding this appeal, however, we need only
discuss the rejection of claim 11.
In rejecting claim 11, the Examiner found that Horio describes or
suggests each limitation of claim 11 except for the use of a mixed solvent
comprising two or more solvents having different hydrophilicities. Final
Act. 3. The Examiner also found that Furui discloses a hard coat
composition comprising a binder resin and a mixed solvent comprising an
alcohol. Id. (citing Furui ,r,r 41--45). The Examiner further found that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to use Furui's mixed solvent system in Horio's method of making
a layered optical device "to prevent the occurrence of interference fringes
and increase adhesion." Id.
We determine that the Examiner erred in finding that a person of
ordinary skill in the art would have been motivated to use Furui's alcohol-
containing mixed solvent in Horio' s method. Furui describes the use of a
1, 2010, as the English-language equivalent. All citations in this opinion are
to the '460 Publication.
4 US 2003/0129421 Al, published July 10, 2003.
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Appeal2017-009382
Application 14/314,728
mixed solvent comprising a penetrating (hydrophobic) solvent and an
alcohol. Horio describes the use of a penetrating solvent. Thus, the
Examiner has to explain why a person of ordinary skill in the art would have
been motivated to add an alcohol to Horio's method of making a layered
optical material. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
("[R ]ejections 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."). The Examiner's proffered reason is insufficient.
The Examiner found that a person of ordinary skill in the art would
have added alcohol to Horio "to prevent the occurrence of interference
fringes and increase adhesion." Final Act. 3; see also Answer 7 ("Thus, it
would have been obvious to incorporate the alcohol with the penetrating
solvent of Horio to form a mixed solvent as suggested by Furui in order to
improve adhesion and prevent interference fringes."). Furui, however,
teaches that it is the addition of the penetrating (permeable) solvent to the
alcohol that prevents interference fringes and increases adhesion. Furui
,r 44. The portions ofFurui cited by the Examiner do not describe any
benefit obtained by using alcohols as part of a mixed solvent. See id. at
,r,r 41--45. The Examiner, therefore, has not provided an adequate reason for
a person of ordinary skill in the art to add an alcohol to the penetrating
solvent used in Horio.
In view of the foregoing, we reverse the rejection of claim 11 as
unpatentable over the combination of Horio and Furui. Thus, we also
reverse the rejection of claims 13-15 and 17-20 because these claims
depend from claim 11.
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Appeal2017-009382
Application 14/314,728
Rejection 2. For the purposes of this appeal, Appellants stipulate that
claim 12 stands or falls with claim 11. Appeal Br. 4. For the reasons set
forth above, we have reversed the rejection of claim 11. Because claim 12
depends from claim 11, we also reverse the rejection of claim 12.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 11-
15 and 17-20 of the '728 Application.
REVERSED
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