DEXERIALS CORPORATION

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.

15/538,088 06/20/2017 Shunichi KAJIYA 29-201-0018 2885

139544 7590 07/01/2025 EXAMINER

Paratus Law Group, PLLC

1765 Greensboro Station Place

UTT, ETHAN A

Suite 320 Tysons Corner, VA 22102

ART UNIT PAPER NUMBER

1783

MAIL DATE DELIVERY MODE

07/01/2025 PAPER

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. PTOL-90A (Rev. 04/07)

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UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte SHUNICHI KAJIYA

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Appeal 2024-002189

Application 15/538,088

Technology Center 1700

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Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and MERRELL C. CASHION, JR., Administrative Patent Judges. TORNQUIST, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant¹appeals from the Examiner's decision to reject claims 1, 3-6, 10-15, and 33. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

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Appeal 2024-002189 Application 15/538,088

CLAIMED SUBJECT MATTER

The claims are directed to an optical body. Claim 1, reproduced below, illustrates the claimed subject matter:

1. An optical body, comprising:

an optical film provided with a first concave-convex structure formed on one surface of the optical film, and a second concave-convex structure formed on an other surface of the optical film; and

a master film that covers the first concave-convex structure, wherein

an average period of concavities and convexities of the first concave-convex structure is less than or equal to visible light wavelengths, and

the master film is provided with a third concave-convex structure which is formed on a surface that faces the first concave-convex structure, and which has a reverse shape of the first concave-convex structure, wherein

the optical film and the master film are separable from each other at an interface between the first concave-convex structure and the third concave-convex structure by virtue of a following condition applying:

(a) an elastic modulus of the optical film is different from an elastic modulus of the master film, and the elastic modulus of the optical film is from 300 MPa to 700 MPa, and the elastic modulus of the master film is from 700 MPa to 1500 MPa, and wherein an aspect ratio of the second concave-convex structure is smaller than an aspect ratio of the first concave- convex structure,

the aspect ratio of the first concave-convex structure is a ratio of a height of convexities constituting the first concave- convex structure and a diameter of a bottom face of concavities constituting the first concave-convex structure, and the aspect ratio of the second concave-convex structure is a ratio of a height of convexities constituting the second concave-convex structure and

a diameter of a bottom face of concavities constituting the second concave-convex structure.

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Appeal 2024-002189 Application 15/538,088 Appeal Br. 21 (Claims App.).

REFERENCES²

The Examiner relies on the following references to reject the claims:

REJECTIONS

The Examiner maintains the following rejections³:

OPINION

In both grounds of rejection, the Examiner relies on Matsumoto as disclosing an optical film and a master film that are separable from each

2 The Examiner relies on foreign references of WO 2012/157717 A1 to Matsumoto (Matsumoto '717) and WO 2014/065136 A1 to Nakai (Nakai '136) in the grounds of the rejection. However, in the discussion of these references, the Examiner cites to their respective English equivalents (US

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Appeal 2024-002189 Application 15/538,088 other at an interface. Final Act. 14. With respect to the elastic modulus of these films, the Examiner contends that Matsumoto discloses that the optical film preferably has an elastic modulus of less than 2000 MPa (2 GPa), e.g., 200 to 1300 MPa, and contends that the fact that the optical film is peeled from the master film implies that the master film has an elastic modulus that is greater than that of the optical film. Id. The Examiner also contends that one of ordinary skill in the art would have selected an elastic modulus for the optical film of between 300 MPa to 700 MPa and an elastic modulus of the master film of between 700 MPa to 1500 MPa to "provide an optical film with desirable releasability from the master film, surface scratch resistance, limiting strain adhesion, and allowing for easy removal of stains and a master film suitable for the releasability" of the optical film. Id. at 14- 15 (citing Matsumoto ¶¶ 33, 91, 92, 101, 106, 107, 129, 131, 175-187, 203). Appellant contends that Matsumoto does not disclose the elastic modulus of the master film and the Examiner provides no support for the position that the peeling of the optical film from the master film implies that the master film has an elastic modulus that is greater than that of the optical film. Appeal Br. 17-18. Appellant also contends that "[t]here is no disclosure or suggestion in Matsumoto that altering the elastic modulus of a mold or master film is relevant at all." Id. at 17.

We find that Appellant identifies reversible error in the Examiner's determination of obviousness.

The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

"[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning

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Appeal 2024-002189 Application 15/538,088 with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Examiner concedes that Matsumoto does not expressly disclose a master film having an elastic modulus falling within the claimed range. Indeed, the master film (or mold) of Matsumoto is preferably made of aluminum or an aluminum alloy, and there is no suggestion in the record that such a material would have an elastic modulus within the claimed range, or that the elastic modulus recited in claim 1 would be suitable for Matsumoto's master film (or mold). Final Act. 14; Matsumoto ¶ 193. The Examiner asserts that one of ordinary skill in the art would have been able to determine a suitable elastic modulus for the master film based on "the motivation to satisfy the properties of both the optical film and the master film as discussed in the rejections, e.g.[,] releasability, surface scratch resistance, stain adhesion, and stain removability." Ans. 17; Final Act. 14. This argument is not persuasive because, as noted by Appellant, these properties are attributed in Matsumoto to the elastic modulus of the optical film, not the master film (or a combination of the two structures). Appeal Br. 18. Indeed, we are directed to no teaching or disclosure in the art that the elastic modulus of the master film interacts with the elastic modulus of the optical film such that it would provide particular properties (such as surface scratch resistance) to the optical film upon separation. Id.; Matsumoto ¶¶ 33, 52, 92.

The Examiner asserts that "'where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.'" Final Act 18 (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955)). This reasoning is not persuasive

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Appeal 2024-002189 Application 15/538,088 because the elastic modulus range of the master film of Matsumoto is not disclosed, nor does the Examiner identify the "general conditions" used in the art for similar master films or molds.

Therefore, the Examiner fails to provide an adequate "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." Kahn, 441 F.3d at 988.

In view of the foregoing, we do not sustain the rejections of claims 1, 3-6, 10-15, and 33.

CONCLUSION

The Examiner's rejections are REVERSED.

DECISION SUMMARY

The following table summarizes our decision:

Claim(s) 35 U.S.C. Rejected § Reference(s)/ Basis Affirmed Reversed

1, 3, 4, 6, 10- 103 Matsumoto, Uchida 1, 3, 4, 6, 10-

12, 33 12, 33

5, 13-15 103 Matsumoto, Uchida, 5, 13-15 Nakai

Overall 1, 3-6, 10-15,

Outcome 33

REVERSED

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