NITTO DENKO CORPORATION

Patent Trials and Appeals Board

Sep 16, 2020

14611502 - (D) (P.T.A.B. Sep. 16, 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.
14/611,502 02/02/2015 Takeshi IGARASHI P47146 1015
7055 7590 09/16/2020
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
WEYDEMEYER, ETHAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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):
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 TAKESHI IGARASHI, YASUNORI YAMAMOTO, and
NAO WAKAYAMA
Appeal 2019-005914
Application 14/611,502
Technology Center 1700
Before ERIC B. GRIMES, LINDA M. GAUDETTE, and LILAN REN,
Administrative Patent Judges.
REN, 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 1–8, 10–16, and 18–22. See Final Act.
2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 “NITTO DENKO
CORPORATION of Osaka, Japan.” Appeal Br. 3 (the Appeal Brief lacks
pagination and we therefore supply our own).
Appeal 2019-005914
Application 14/611,502
2
CLAIMED SUBJECT MATTER
“The present invention relates to a surface protective sheet substrate
and a surface protective sheet.” Spec. ¶ 2. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A surface protective sheet comprising a surface protective
sheet substrate and a pressure-sensitive adhesive layer,
wherein the substrate comprises a polyolefin resin which
accounts for more than 50 % by weight of the entire substrate,
the substrate comprises a layer X that is a resin layer
constituting a first surface being a back face of the substrate and
a layer Y that is a resin layer constituting the second surface of
the substrate, wherein the back face of the substrate is a release
face,
the pressure-sensitive adhesive layer is provided on the
layer Y,
the layer X is constituted with a resin composition having
a tensile elastic modulus (Ex (MPa)) of 400 MPa or greater, but
750 MPa or less,
the layer Y is constituted with a resin composition having
a tensile elastic modulus (Ey (MPa)) of 400 MPa or greater, but
750 MPa or less, and
when the layer X has a thickness tx (μm) and the layer Y
has a thickness ty (μm), the substrate satisfies the next inequality:
0.5≤tx⋅Ex/ty⋅Ey≤1.5; and
tx is equal to or smaller than ty.
Claims Appendix (Appeal Br. 17).
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Suzuki US 2011/0126983 A1 June 2, 2011

Appeal 2019-005914
Application 14/611,502
3
REJECTION
Claims 1–8, 10–16, and 18–22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Suzuki. Final Act. 3–5.
OPINION
The Examiner rejects claim 12 finding that Suzuki teaches a protective
sheet having the recited layers. Final Act. 3. Based on the structural identity,
the Examiner finds that the prior art product would have the properties
recited in claim 1. Id.
Appellant does not dispute the Examiner’s finding of structural
identity but instead argues that Examples 1 to 6 of Suzuki have been
evaluated and found to be lacking the recited properties. Appeal Br. 9, 14.
More specifically, Appellant points to “responses submitted on February 28,
2018 and August 11, 2018” as evidence supporting this argument. Id.3
Appellant’s response of February 28, 2018 states that “it is reasonably
expected that the tensile modulus of the back layer of Suzuki et al. is well
above 750 MPa” and “even higher than 785 MPa” based on factors such as
“the content of low-modulus material . . . in the back layer . . . is only half of
that of the back layer” of an example in the Specification at issue, “the
content of high-modulus [material] Novatec PP FY4 . . . is higher than that
of the back layer of” the example in the Specification, and the inclusion of
TiO2 in Suzuki “which has a much higher modulus than Novatec PP FY4.”
Response of February 28, 2018, 5–6.

2 Appellant does not raise separate arguments for claims 2–8, 10–16, and
18–22. Appeal Br. 6–16. These claims stand or fall with claim 1. See 37
C.F.R. 41.37(c)(1)(iv).
3 The Appeal Brief does not provide pin point citations to either of these
previous responses.
Appeal 2019-005914
Application 14/611,502
4
Appellant’s response of August 15, 2018 does not contain evidence
showing that the film in Suzuki lacks the recited properties despite the
structural identity. See Response of August 15, 2018, 1–6.4
Appellant’s statement in the response of February 28, 2018 is
insufficient to show that the prior art protective sheet lacks the recited tensile
modulus properties. The Specification provides that “the tensile elastic
modulus of a resin composition in the present description refers to a tensile
elastic modulus measured based on JIS K 7161, using as a measurement
sample a single-layer resin film formed with the resin composition.” Spec. ¶
34. Appellant’s statement in the response of February 28, 2018, on the other
hand, is not based on such a measurement for tensile elastic modulus – but
rather based on an approximation using the composition of the material. See
Response of February 28, 2018, 5–6. Moreover, Appellant’s statement in the
response of February 28, 2018 lacks evidence showing that a skilled artisan
would have approximated tensile elastic modulus as such. See id.
Where, as here, “the claimed and prior art products are identical or
substantially identical . . . the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics
of his claimed product. . . . [The] fairness [of the burden-shifting] is
evidenced by the PTO’s inability to manufacture products or to obtain and
compare prior art products.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
In this case, based on the undisputed structural identity between the recited
product and that of the prior art, the Examiner reasonably concludes that an
identical product would exhibit identical properties. See In re Papesch, 315

4 The response of August 15, 2018 lacks pagination and we therefore supply
our own.
Appeal 2019-005914
Application 14/611,502
5
F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a
compound and all of its properties are inseparable; they are one and the same
thing.”). As discussed supra, Appellant’s argument that the prior art product
does not possess the recited properties is unsupported by evidence and is
therefore unpersuasive.5
Appellant’s argument that Suzuki “does not disclose or suggest the
concept of balancing the rigidity between X and Y layers by means of
adjusting the tensile elastic modulus and the thickness of each layer”
(Appeal Br. 11) is unpersuasive because it is not based on the claim
language and does not structurally distinguish the prior art.
Appellant lastly argues that Table 2 of the Specification shows the
criticality of the recited correlation of tx⋅Ex/ty⋅Ey. Appeal Br. 15. To show
criticality of a claimed range, “it is not inventive to discover the optimum or
workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456
(CCPA 1955). “Only if the ‘results of optimizing a variable’ are
‘unexpectedly good’ can a patent be obtained for the claimed critical range.”
In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (internal citation
omitted).
In this case, Appellant does not show that the recited correlation
achieves unexpectedly superior results. See Appeal Br. 15; see also Bristol-
Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir.
2014) (“To be particularly probative, evidence of unexpected results must

5 Because Appellant’s argument lacks evidentiary support and does not show
that the tensile elastic modulus as recited is measured by the JIS K 7161
method specified by the Specification, we need not address Appellant’s
argument that the Examiner reversibly erred in concluding that 785 MPa is
sufficiently close to 750 MPa. See Appeal Br. 13–15.
Appeal 2019-005914
Application 14/611,502
6
establish that there is a difference between the results obtained and those of
the closest prior art, and that the difference would not have been expected by
one of ordinary skill in the art at the time of the invention.”). We sustain the
Examiner’s rejection as a result.

CONCLUSION
The Examiner’s rejection is affirmed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10–16,
18–22
103(a) Suzuki 1–8, 10–
16, 18–22

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED