Mayu Youki et al.

Patent Trials and Appeals Board

Oct 15, 2020

2020000116 (P.T.A.B. Oct. 15, 2020)

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.
13/823,971 06/14/2013 Mayu Youki 20162.0149USWO 2792
52835 7590 10/15/2020
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
Minneapolis, MN 55402-1683
EXAMINER
LOWREY, DANIEL D
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
10/15/2020 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):
PTOMail@hsml.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAYU YOUKI, TOMOYUKI HORIO, YOSHIHIRO
NISHIMURA, MARIKO HAYASHI, YUYA INOMATA, and HIROSHI
NAKAMURA

Appeal 2020-000116
Application 13/823,971
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY R. SNAY, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–8, 10, 11, 13, 15, 16, and 18–20.
We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as DAI
NIPPON PRINTING CO., LTD. Appeal Br. 2.
Appeal 2020-000116
Application 13/823,971

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to an antistatic hard coat
film. Spec. ¶ 1. The film could be used, for example, for various image
display devices such as LCD displays. Id. ¶ 2. The film seeks to avoid
“white muddiness” and have good antistatic properties while inhibiting
interference fringe patterns. Id. ¶ 7. Claim 1 is the only independent claim
on appeal, and we reproduce it below with emphases added to certain key
recitations:
1. An antistatic hard coat film comprising
a triacetyl cellulose substrate, and
a hard coat layer formed on the triacetyl cellulose
substrate,
wherein the hard coat layer comprises an antistatic
agent, a (meth)acrylate resin, and a polymer of a
(meth)acrylate monomer,
wherein the hard coat layer is a cured product of a film
formed by applying a composition for producing the hard coat
layer on the triacetyl cellulose substrate, the composition
comprising the antistatic agent, the (meth)acrylate resin, and the
(meth)acrylate monomer,
the triacetyl cellulose substrate comprises a
permeation layer formed by permeation of the
(meth)acrylate monomer from the hard coat layer side of an
interface toward the side opposite from the hard coat layer,
the antistatic hard coat film satisfies Formulas (1), (2),
and (3):
3 μm≤T≤18 μm Formula (1)

2 In this Decision, we refer to the Final Office Action dated September 17,
2018 (“Final Act.”), the Appeal Brief filed March 11, 2019, corrected April
22, 2019 (“Appeal Br.”), the Examiner’s Answer dated August 7, 2019
(“Ans.”), and the Reply Brief filed October 4, 2019 (“Reply Br.”).
Appeal 2020-000116
Application 13/823,971

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0.3 T≤t≤0.9 T Formula (2)
2 μm≤T-t≤11 μm Formula (3)
where T denotes the total thickness (μm) of the
permeation layer and the hard coat layer, and t denotes the
thickness (μm) of the permeation layer,
the antistatic hard coat film exhibits a haze of less than
0.5%, and
the antistatic hard coat film exhibits good white
muddiness resistance
the antistatic hard coat film being prepared by drying the
film under the drying conditions below, the drying of the film
starting within 20 seconds from completion of the application
of the composition;
the drying conditions being:
Drying temperature: 40 to 80°C;
Drying time: 20 to 70 seconds; and
Air velocity for drying: 5 to 20 m/min.

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Iwata et al.
(“Iwata”)
US 2009/0015926 A1 Jan. 15, 2009
Horio et al.
(“Horio”)
US 2009/0075074 A1 Mar. 19, 2009
Suzuki et al.
(“Suzuki”)
US 2010/0027117 A1 Feb. 4, 2010
Yoshihara US 2010/0208350 A1 Aug. 19, 2010

Appeal 2020-000116
Application 13/823,971

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REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1, 2, 4–8, 10, 11, 13, 15, 16, and 18–20 under 35 U.S.C. § 103
as obvious over Horio in view of Yoshihara as evidenced by Iwata
and optionally in view of Suzuki. Ans. 3.
B. Claims 1, 2, 5–8, 10, 13, 16, 19, and 20 under 35 U.S.C. § 103 as
obvious over Yoshihara optionally in view of Suzuki. Id. at 7.

OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies. For
both rejections A and B, the Examiner finds that Yoshimoto suggests claim
1’s thickness Formula (3). Ans. 3–4 (“Yoshihara discloses . . . thicknesses
excluding the mixed layer T-t of at least 2 microns”), 7 (same). In particular,
the Examiner determines that only mixed layer 12a of Yoshihara
Appeal 2020-000116
Application 13/823,971

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corresponds to claim 1’s permeation layer (having thickness t) while
intermediate layer 12b and localized layer 12c of Yoshihara combine to
correspond to claim 1’s hard coat layer (having thickness T-t). Ans. 10; see
also Yoshihara Fig. 2 (depicting layers).
Appellant does not dispute that Yoshihara’s mixed layer 12a
corresponds to claim 1’s permeation layer or that Yoshihara’s localized layer
12c corresponds to claim 1’s top layer. Appeal Br. 5–7. Appellant argues,
however, that the Examiner errs in determining that Yoshihara’s
intermediate layer 12b is not a permeation layer. Id. at 7; Reply Br. 2–3.
Appellant’s argument is persuasive.
We begin our analysis by considering the meaning of claim 1’s terms
“permeation layer” and “hard coat layer.” The Specification states that “the
permeation layer is a layer in which the cured (meth)acrylate monomer and
the materials of the triacetyl cellulose substrate are mixed.” Spec. 8:14–16.
In contrast, the Specification indicates that the hard coat layer should
exclude substrate materials because the hard coat layer “is interfered by the
components of the triacetyl cellulose substrate.” Id. at 7:5–11; see also
Reply Br. 2.
Yoshihara teaches that its “mixed layer 12a includes the binder matrix
and transparent substrate component.” Yoshihara ¶ 73. Yoshihara also refers
to its mixed layer 12a as an “other layer . . . in which the binder matrix
component of the antistatic hard coat layer and the transparent substrate
component are mixed.” Id. ¶ 80. Thus, mixed layer 12a corresponds to a
permeation layer in the parlance of claim 1, consistent with the Examiner’s
findings. Ans. 10.
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Application 13/823,971

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Yoshihara states that intermediate layer 12b, like mixed layer 12a, is
also an “other layer.” Yoshihara ¶ 86. Most importantly, Yoshihara explains
that intermediate layer 12b and mixed layer 12a contain the same type of
materials. Id. ¶ 91. Thus, Yoshihara is best understood as teaching that
intermediate layer 12b, like mixed layer 12a, is a binder matrix component
of the antistatic hard coat layer and transparent substrate components. Id. ¶
80. Yoshihara intermediate layer 12b, therefore, is a permeation layer in the
parlance of claim 1 and Appellant’s Specification. Spec. 8:8–16.
Although Yoshihara refers to the intermediate layer as having hard
coat functionality (Ans. 11; Yoshihara ¶ 84), Yoshihara makes these
statements when referring to the term “hard coat” more broadly than claim 1
uses the term “hard coat.” In particular, Yoshihara refers to layers 12a, 12b,
and 12c collectively as forming antistatic hard coat layer 12. Yoshihara
¶¶ 77, 82–84, Fig. 2. In other words, Yoshihara distinguishes layers 12a,
12b, and 12c while each of these layers form portions of a hard coat layer
rather than distinguishing, as claim 1 does, between a hard coat layer and
permeation layer that each form portions of an antistatic hard coat film.
We next assess whether Yoshihara teaches a film that satisfies claim
1’s Formula (3). The “T-t” of Formula (3) is the thickness of the permeation
layer and the hard coat layer together (“T”) minus the thickness of the
permeation layer alone (“t”). Appeal Br. 10 (Claims App.). The “T-t” is,
therefore, the thickness of the hard coat layer alone. Because Yoshihara’s
intermediate layer 12b is a permeation layer (for the reasons explained
above), Yoshihara’s only hard coat layer is localized layer 12c. Yoshihara
suggests that localized layer 12c should have a thickness of 50–400 nm.
Appeal Br. 6 (citing Yoshihara ¶¶ 108–109). The Examiner does not provide
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Application 13/823,971

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a reason why a person of skill in the art would have modified Yoshihara’s
localized layer 12c to be at least 2000 nm (i.e., 2 µm) as Formula (3)
requires.
Because the Examiner does not adequately explain why the teachings
of the combined references meet all recitations of claim 1 (considering
Formula (3) in particular), we do not sustain the Examiner’s rejections of
claim 1. Because the Examiner’s treatment of the dependent claims does not
cure this error, we also do not sustain the Examiner’s rejection of those
claims.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–8,
10, 11, 13,
15, 16, 18–
20
103 Horio, Yoshihara,
Iwata, Suzuki
1, 2, 4–8,
10, 11, 13,
15, 16, 18–
20
1, 2, 5–8,
10, 13, 16,
19, 20
103 Yoshihara, Suzuki 1, 2, 5–8,
10, 13, 16,
19, 20
Overall
Outcome
1, 2, 4–8,
10, 11, 13,
15, 16, 18–
20

REVERSED