Yoshiaki Higuchi et al.

Patent Trials and Appeals Board

Aug 19, 2019

14016581 - (D) (P.T.A.B. Aug. 19, 2019)

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.
14/016,581 09/03/2013 Yoshiaki HIGUCHI 419306US99DIV 1527
22850 7590 08/19/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
SMITH, JEREMIAH R
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
08/19/2019 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOSHIAKI HIGUCHI and
YASUMASA YUKAWA1
____________

Appeal 2018-000486
Application 14/016,581
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN and
SHELDON M. McGEE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This decides an appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Office Action (mailed Dec. 7, 2016, hereinafter “Final Act.”) rejection
of claims 8–27. An Oral hearing was held on July 16, 2019.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Asahi Glass Company, Limited is the Appellant and the real party in
interest. (App. Br. 2).
2 A written transcript of the Oral hearing will be entered into the record
when the transcript is made available.

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The following rejections are presented for appeal:
I. Claims 8–12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kawakubo (JP 2008-207450 (citations
taken from US 2010/0065983 A1)), Smith et al. (WO 93/06983; pub. Apr.
15, 1993, hereinafter “Smith”) and AAPA (Applicant Admitted Prior Art;
taken from paragraphs (0002–0008) of applicant's publication US
2014/0001661).
II. Claims 13, 15, 18, 20, 23, and 25 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kawakubo, Smith, AAPA
and Shimura (US 2005/0201101 A1; pub. Sept. 15, 2005).
III. Claims 16, 21, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kawakubo, Smith, AAPA and Ricking
et al. (US 2005/0127543 A1; pub. June 16, 2005, hereinafter “Ricking”).
IV. Claims 17, 22, and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kawakubo, Smith, AAPA and Seng et
al. (US 2002/0056942 A1 pub. May 16, 2002, hereinafter “Seng”).
V. Claims 13, 14, 16, 18, 19, 21, 23, 24, and 26 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Kawakubo,
Smith, AAPA, and Leu et al. (US 2005/0045898 A1; pub. Mar. 3, 2005,
hereinafter “Leu”).

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Appellant’s invention relates to a process for sealing a light emitting
element. (Spec. 4:5–13). Claim 8 is illustrative of the subject matter on
appeal and is reproduced below:
8. A process for sealing a light emitting
element, comprising:
providing a release film having a plurality of
convex portions and/or concave portions formed on at
least one surface of the release film;
subsequently placing the provided release film in a
cavity of a mold so as to cover the inner surface of the
cavity of the mold and so that the surface having the
convex portions and/or concave portions formed thereon
faces a space in the cavity;
placing the light emitting element in the cavity
after the release film in placed in the cavity; and
filling the cavity, in which the light emitting
element has been placed, with a transparent resin to seal
the light emitting element with the transparent resin.

OPINION3
We have reviewed each of Appellant’s arguments for patentability.
We will sustain the Examiner’s rejections for essentially those reasons
expressed in the Answer and the Final Action.
Rejection I
Appellant argues that Smith discloses films used in molds to prepare
large structures such as vehicle bumpers and therefore does not disclose or

3 Appellant’s arguments for the patentability of the independent claims are
substantially the same. Appellant has also not presented arguments specific
to every claim on appeal. Consequently, the non-argued claims will stand or
fall with independent claim 8. See 37 C. F. R. § 41.37(c)(1)(iv). We limit
our initial discussion to independent claim 8. Separately argued claims will
be addressed.
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suggest employing the disclosed films to prepare fine structures as required
by Kawakubo. (App. Br. 11). Appellant also argues the Examiner’s
rejection is premised on hindsight. (Id.).
Appellant’s arguments are not persuasive of reversible error. As
established by the AAPA, release liner film formed from fluororesins
elastomers were known to persons of ordinary skill in the art for the
preparation of light emitting elements. (AAPA ¶¶ 4–5). Smith describes
release films containing patterns placed within a mold to produce a product
that replicates the pattern from the film. (Smith 2–3). Smith discloses this
method allows a single mold to be more versatile by allowing products
having different textures being formed from the same mold. (Smith 3, ll.
13–25). Both Smith and Kawakubo disclose thermoplastic resins are
suitable for injection into the mold cavities. (Smith 3, ll. 1–4; Kawakubo
¶ 145). Consequently, due to the similarity in the suitable thermoplastic
mold materials, a person of ordinary skill in the art would have reasonably
expected that a mold release film having a pattern would have been suitable
for use in Kawakubo’s mold to prepare fine structures. See, e.g., KSR Int’l
Co. v. Teleflex, Inc., 550 US 398, 416 (2007) (“[W]hen 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.”); In re Siebentritt, 372 F.2d
566, 567–68 (CCPA 1967) (express suggestion to interchange methods
which achieve the same or similar results is not necessary to establish
obviousness); see also In re Kahn, 441 F.3d 977, 985–88 (Fed. Cir. 2006);
In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988) (“For obviousness
under § 103, all that is required is a reasonable expectation of success.”)
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(citations omitted); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[T]he
test [for obviousness] is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”); In re Sovish,
769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of
ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969)
(“Having established that this knowledge was in the art, the examiner could
then properly rely, as put forth by the solicitor, on a conclusion of
obviousness ‘from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion in a particular
reference.’”).
In arguing against the rejection of claims 8–12 Appellant relies on the
arguments presented with regard to independent claim 8. (App. Br. 11).
Appellant additionally argues claims 9 and 12 are patentable because the
Examiner has not established that it was obvious to use fluororesin films—
including films based on ethylene/tetrafluoroethylene copolymers— in the
methods disclosed by Kawakubo and Smith. (App. Br. 12–13).
As set forth above, both Kawakubo and Smith describe release film
suitable for thermoplastic resins. As pointed out by the Examiner, the use of
fluororesin films, including films based on ethylene/tetrafluoroethylene
copolymers, as release films was known by persons of ordinary skill in the
art. (Final Act. 5; AAPA ¶ 5). A person of ordinary skill in the art would
have reasonably expected that a fluororesin mold release film having a
pattern would have been suitable for use in Kawakubo’s mold to prepare
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fine structures because the AAPA discloses the fluororesin release films are
durable against the flow of a resin. (AAPA ¶ 5).

Rejection II
Claims 13, 15, 18, 20, 23, and 25 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kawakubo, Smith, AAPA
and Shimura. Appellant’s arguments group the claims as follows (I) claims
13, 18 and 23; and (II) claims 15, 20, and 25. (App. Br. 14–20). We will
address the claims as argued by Appellant.
The Examiner finds Kawakubo does not expressly teach the
convex/concave portion of the light guiding structure having inclination
angle of 20 to 75 degrees as required by claims 13, 18, and 23. The
Examiner relied upon Shimura for describing Fresnel lens that
conventionally contain protrusions that continuously varies from an angle
approaching 0° at a center to 90°. (Final Act. 6–7). The Examiner
concluded it would have been obvious “to include inclination angles lying
between 20 and 75 degrees for the benefit of redirecting the light from the
source in a preferred direction as is conventional in the design of Fresnel
lenses.” (Final Act. 7).
Claims 13, 18, and 23
Appellant argues by employing a release film having concavities
and/or convexities as recited in claims 13, 18, and 23 (having inclined
surfaces with an inclination angle of from 20 to 75°), it is possible to obtain
a light emitting device with improved front brightness compared to light
emitting devices made using release films including concavities and/or
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convexities with smaller or larger inclination angles. Appellant argues this
advantage is not recognized in the cited references. (App. Br. 17).
Appellant’s argument does not persuade us of reversible error. As set
forth above, we agree with the Examiner that it would have been obvious to
perform a process for sealing a light emitting element comprising providing
a release film having a plurality of convex portions and/or concave portions
formed on at least one surface of the release film. Appellant has not refuted
the Examiner’s position that it Fresnel lenses having inclination angles
between 20° and 75° for the benefit of redirecting the light from the source
was known to persons of ordinary skill in the art as exhibited by Shimura.
(See Shimura ¶¶ 41, 55). Consequently, a person of ordinary skill in the art
would have utilized a release film having an inclination angle lying between
0° and 90° for the production of light emitting devices having the benefit of
redirecting the light from the source as proposed by the Examiner.
Addressing this rejection, Appellant also relies on the experimental
results in the present Specification and the Higuchi Declaration filed on
October 5, 2016 (hereinafter “Decl.”), as providing evidence that light-
emitting device is produced from release films having an inclination angle
lying between 20° to 75° exhibit superior front brightness in comparison
with light emitting devices having concavities and/or convexities with
smaller or larger inclination angles. (App. Br. 17).
Appellant has not demonstrated that the data presented in the
Specification and the declaration exhibits unexpected results. We agree with
the Examiner that the evidence present in this record does not address the
inclination angles described by Shimura. (Ans. 14). We also agree with the
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Examiner that claim 13 is not limited to a specific pattern having grooves
with a V-form cross section and a depth as specified in the exemplary
embodiments of the Higuchi Declaration and Specification. (See Ans. 14;
see also generally Decl. ; Spec. 12–14 (Examples 2 and 3)). Appellant has
not explained how the narrow showing presented reveals information
regarding the breadth of the claimed invention that specifies an inclination
angle lying between 20° to 75°. Consequently, the alleged improvement in
brightness is not commensurate in scope with the claimed invention that is
not limited to V-form cross section and a depth as specified in the exemplary
embodiments. Thus, Appellant has failed to direct us to evidence that
establishes a patentable distinction is achieved utilizing an inclination angle
lying between 20° to 75° that is reasonably commensurate with the scope of
protection sought by the claims on appeal. Cf. In re Harris, 409 F.3d 1339,
1344 (Fed. Cir. 2005) (“Even assuming that the results were unexpected,
Harris needed to show results covering the scope of the claimed range.
Alternatively Harris needed to narrow the claims.”); In re Greenfield, 571
F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small number
of) species gives unexpected results is inadequate proof, for ‘it is the view of
this court that objective evidence of non-obviousness must be commensurate
in scope with the claims which the evidence is offered to support.’”)
(quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); In re Woodruff, 919
F.2d 1575, 1578 (Fed. Cir. 1990) (Indicating that in cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims, the applicant must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range.). In summary, Appellant
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has not adequately explained how the evidence presented in the Declaration
and the Specification is representative of the scope of the claimed invention.
Finally, we again emphasize that, although secondary considerations
of nonobviousness must be taken into account, they do not necessarily
control the obviousness conclusion. Pfizer, Inc. v. Apotex, 480 F.3d 1348,
1372 (Fed. Cir. 2007). Here, the record establishes the process of utilizing a
release film having an inclination angle lying between 0° and 90° for the
production of light emitting devices having the benefit of redirecting the
light from the source would have been recognized by persons of ordinary
skill in the art.

Claims 15, 20, and 25
In arguing against the rejection of claims 15, 20, and 25, Appellant
essentially relies on the arguments presented with regard to claims 13, 18,
and 23 regarding the inclusion of concavities and/or convexities patterns in
the release film. (App. Br. 19). As stated above, the arguments regarding
including concavities and/or convexities in the release film presented against
the rejection of independent claims 8, 10, and 11 were not found persuasive.
Additionally as explained above, a person of ordinary skill in the art would
have recognized the suitability of modifying the concavities and/or
convexities patterns in the release film to produce a light emitting device
having the benefit of redirecting the light from the source in a preferred
direction as is conventional in the design of Fresnel lenses. Accordingly, for
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the reasons we stated above, we determine Appellant’s arguments are not
persuasive of reversible error.

Rejections III and IV
Claims 16, 21, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kawakubo, Smith, AAPA and
Ricking; and claims 17, 22, and 27 are rejected under 35 USC § 103(a) over
Kawakubo in view of Smith, AAPA, and Seng.
In arguing against the rejections III and IV, Appellant relies on the
same arguments presented against the combination of Kawakubo, Smith, and
AAPA for independent claims 8, 10, and 11 additionally arguing that the
additional reference Ricking and/or Seng fails to suggest providing a release
film having a plurality of convex portions and/or concave portions on a
surface, placing the release film in a cavity of a mold, and sealing a light
emitting element in the mold. (App. Br. 21–22). As stated above, the
arguments regarding including concavities and/or convexities in the release
film presented against the rejection of independent claims 8, 10, and 11 were
not found persuasive. Additionally, as explained above, a person of ordinary
skill in the art would have recognized the suitability of modifying the
concavities and/or convexities patterns in the release film to produce a light
emitting device having the benefit of redirecting the light from the source in
a preferred direction as is conventional in the design of Fresnel lenses.
Accordingly, for the reasons we stated above and those presented by the
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Examiner, we determine that Appellant’s arguments are not persuasive of
reversible error.
Claims 17 and 27
Appellant argues claims 17 and 27 describe the thickness of the
release film is at most 150 µm. Appellant also argues that films having this
thickness having improved capability to conform to the shape of the mold
cavity. (App. Br. 23).
Appellant acknowledges that the Examiner cited Seng for describing
release films having a thickness ranging from 10 to 100 µm. (App. Br. 23).
We agree with the Examiner that Appellant has not established the criticality
of the thickness of the release film. (Ans. 19). It is well settled that where
patentability is predicated upon a change in a condition of a prior art
composition, such as a change in size, concentration or the like, the burden
is on the Appellant to establish with objective evidence that the change is
critical, i.e., it leads to a new, unexpected result. In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955).

Rejection V
Claims 13, 14, 16, 18, 19, 21, 23, 24, and 26 are rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Kawakubo, Smith,
AAPA and Leu. Appellant’s arguments group the claims as follows: (I)
claims 13, 18, and 23; (II) claims 14, 19, and 24; and (III) claims 16, 21, and
26. (App. Br. 25–27). We will address the claims as argued by Appellant.
The Examiner finds Kawakubo does not expressly teach the
convex/concave portion of the light guiding structure having inclination
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angle of 20° to 75° as required by claims 13, 18, and 23. The Examiner
relied upon Leu for its teaching that the shape of the encapsulation is
selected so the LED may emit light at a wide emission angle. (Final Act. 10;
Leu ¶ 6 ). The Examiner concluded it would have been obvious “to have an
encapsulant of the shape described by Leu for the benefit of producing a
device having a broad angle of emission.” (Final Act. 10).
Claims 13, 18, and 23
Appellant argues that the Examiner has not provided an adequate
explanation why the skilled artisan would have made the proposed
modification. (App. Br. 25).
Appellant’s arguments are not persuasive of reversible error. The
prior art cited in this record establishes that it would have been obvious to
perform a process for sealing a light emitting element comprising providing
a release film having a plurality of convex portions and/or concave portions
to provide a light emitting device having varied angles of emission. As
stated above, Leu was cited for its teaching that the shape of the
encapsulation is selected so that the LED may emit light at a wide emission
angle. (Final Act. 10; Leu ¶ 6 ). Leu further states the V-shaped members
can instead be Fresnel lens or convex protrusions. (Leu ¶ 24). The
Examiner explains that “the properties of emission are an engineering design
element which would have been considered by a skilled artisan at the time of
invention. (Ans. 18). Appellant has not argued that Leu does not teach the
convex/concave portion of the light guiding structure having an inclination
angle of 20° to 75°. Furthermore, Appellant’s argument (Reply Br. 8) that
Leu itself does not suggest the Examiner’s proffered modification to
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Kawakubo is not persuasive. Here, we emphasize that the “obviousness
analysis cannot be confined by a formalistic conception of the words
teaching, suggestion, and motivation, or by overemphasis on the importance
of published articles and the explicit content of issued patents.” KSR, 550
U.S. at 419.
Claims 14, 19, and 24 and claims 16, 21, and 26
Addressing claims 14, 19, and 24, Appellant argues:
Each of these claims, in addition to the features of the claims from
which they depend, requires that an average interval of adjacent local
peaks of the convex portions or an average interval of adjacent local
bottoms of the concave portions is from 4 to 200 µm, and an average
height of the convex portions or an average depth of the concave
portions is from 2 to l 00 μm.
(App. Br. 25).
Addressing claims 16, 21. And 26, Appellant argues “[e]ach of these
claims, in addition to the features of the claims from which they depend,
requires that the convex portions are pyramid projections, and the concave
portions are pyramid gaps.” (App. Br. 27).
Addressing both of these groupings of claims, Appellant argues the
Examiner has not provided an adequate explanation of the rejection. (App.
Br. 25 and 27).
The Examiner cited Leu teaching light emitting device having
concave portions and convex portions that results in the device is having the
benefit of a broad angle of emission. As stated above, the prior art cited in
this record establishes that persons of ordinary skill in the art would have
recognized that varying the concave portions and the convex portions results
in light emitting device is having varied angles of emission. Appellant has
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not established the claimed three-dimensional appearance of the concavity or
convexity or the claimed average interval of adjacent local peaks or average
interval of adjacent local bottoms results in a light emitting device having
unexpected results. It is well settled that where patentability is predicated
upon a change in a condition of a prior art composition, such as a change in
size, concentration or the like, the burden is on the Appellant to establish
with objective evidence that the change is critical, i.e., it leads to a new,
unexpected result. See Woodruff and Aller, supra.

CONCLUSION
For the reasons given above, we sustain the Examiner’s obviousness
rejections of claims 8–27.
DECISION
The Examiner’s obviousness rejections are 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)(1).

AFFIRMED