Appeal No. 2006-1872
Application No. 09/769,376
invention are encompassed within the patented claim for comparison to the embodiments
encompassed by the rejected claim.
Looking to the specification to determine the scope of rejected claim 1 and the
embodiments encompassed therein, we conclude as did the Examiner, that the claim
encompasses embodiments also encompassed by patented claim 1 of Sugawa and that these
claims are not patentably distinct. This is because both claims are directed to epoxy optical
sheets useful for liquid-crystal cell substrates (Sugawa, col. 7, ll. 1-3). Both of the multilayer
sheets are made by a process of forming a strippable or peelable layer on a support having a
smooth surface, spreading an epoxy resin coating solution onto the resin layer, and hardening
(Compare specification, p. 3, ¶ 1 with Sugawa, col. 1, l. 64 to col. 2, l. 6). The similarities in the
starting materials and processing provide a reasonable basis to conclude that the claimed
“smooth surface” of Sugawa’s claim 1 encompasses a surface with a surface roughness, Ra, of
0.8 nm or lower as claimed. This is so particularly because Sugawa describes using a support
with the same surface roughness (Ra of 0.02 µm or less) as the support Appellants describe
(compare Sugawa, col. 3, ll. 38-41 with specification, p. 6, ll. 21-25). It appears that the
formation of the free surface obtained by the coating method results in the surface smoothness,
Ra, of 0.8 nm or less (specification, p. 3, ll. 6-20). Under these circumstances, it is appropriate to
conclude that the differences are so insubstantial that there is no patentable distinction.
Appellants point out that the measurement of surface roughness of Ra of 0.02 µm or less
disclosed in Sugawa is directed to the surface roughness of the support and not to the surface
roughness of the epoxy optical sheet (Brief, p. 12). We agree. However, we do not agree that
the difference in magnitude between this measurement of the support roughness and the claimed
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