Ex Parte Kang et al

Patent Trial and Appeal Board

Nov 13, 2018

13805224 (P.T.A.B. Nov. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/805,224 03/08/2013
30827 7590 11/15/2018
Dentons US LLP
1900 K. Street, N.W.
Washington, DC 20006
FIRST NAMED INVENTOR
Byoung-Il Kang
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
29137 .00980.USOO 5578
EXAMINER
BROOKS,KREGGT
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
11/15/2018 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):
mlaip@dentons.com
paul.fugitt@dentons.com
mlapto@mckennalong.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL
BOARD
Ex parte BYOUNG-IL KANG and CHANG-HUN HAN
Appeal2017-009453
Application 13/805,224
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
DEBRA L. DENNETT, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-3, 12, and 19-24 under 35 U.S.C. § 103(a) over
the combination of Fischer et al. (US 4,906,696, issued Mar. 6, 1990), and
Faris (WO 02/085980 Al, published Oct. 31, 2002). We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 LG Chem. Ltd. is stated to be the real party in interest (Appeal Br. 3).
Appeal2017-009453
Application 13/805,224
Claim 1 is representative of the claimed invention ( emphasis added to
highlight key disputed limitations):
1. A resin composition containing an acrylic copolymer
polymerized from monomers comprising:
(1) 50 - 98.9 wt% of an alkyl(meth)acrylate-based
monomer excluding a tert-butyl(meth)acrylate-based monomer;
(2) 1 - 49.9 wt% of a (meth)acrylate-based monomer
including an aromatic ring selected from the group consisting of
phenyl methacrylate, 4-t-butylphenyl methacrylate, and 4-
methoxyphenyl methacrylate; and
(3) 0.1 - 10 wt% of a tert-butyl(meth)acrylate-based
monomer, wherein the resin composition comprises
polycarbonate resin mixed therein;
wherein the resin composition comprises 95 wt% to 99 .9
wt% of the acrylic copolymer and 0.1 wt% to 5 wt% of the
polycarbonate resin based on a total weight of the resin
composition, and
wherein a weight-average molecular weight of the acrylic
copolymer is within a range of 50,000 to 150,000,
wherein a glass transition temperature (Tg) of the acrylic
copolymer is l 22°C or more.
Appellants rely upon the arguments for claim 1 for all the claims,
however, they separately argue the patentability of claim 24 as it further
limits the Tg limitation in dispute to "130°C or more" (Claims Appendix;
Appeal Br. 14).
ANALYSIS
Upon consideration of the relied-upon evidence on this record and
each of Appellants' contentions, we find that the preponderance of evidence
on this record supports the Examiner's conclusion that the subject matter of
Appellants' independent claim 1 is unpatentable over the applied prior art.
We sustain the Examiner's 103(a) rejection based on the findings of fact,
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Application 13/805,224
conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Answer.
We add the following for emphasis.
Appellants' first argue that, contrary to the Examiner's position,
Fischer does not teach the required glass transition temperature (Tg) of
122°C or more for its methacrylate copolymers (Appeal Br. 1 O; Reply Br.
2). Appellants argue that the Examiner has misread the relied upon passage
of Fischer (Fischer, col. 7, 11. 41-50; reproduced on p. 10 of the Appeal Br.)
and that it only teaches that the Vicat softening points, VET, may be
approximately 110° to 130°C. The Examiner says a plain reading of the
passage with its word "and" means that both the VET and Tg temperatures
may be in this range (Ans. 8). Appellants' argument is not persuasive of
showing reversible error in the Examiner's position that Fischer teaches or
suggests the claimed range.
Even assuming Appellants are correct that it is only the VET
temperature that is expressly taught to be approximately 110-130 C there is
no dispute that Fischer teaches "and the glass transition values Tg correlated
with this" (Fischer, col. 7, 11. 40-41 ). A review of the VET and Tg values in
the examples of Fischer2 shows that the Tg value is always within a few
degrees of the VET, and may be even up to 7 degrees higher. The Tg of
2 While Appellants point out that some of the examples Fischer are blends
with a polycarbonate, not the acrylic copolymers themselves (Appeal Br. 10,
11 ), these examples still evince that the glass transition temperature
correlated with a VET is no more than two degrees less than the VET, and
more frequently higher than the VET temperature ( e.g., 3 to 7 degrees
higher). Notably claim 1 need only contain 0.1 wt. percent of the
po 1 ycarbonate material.
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Application 13/805,224
Example 10 which is admittedly methacrylate copolymers is indeed 5
degrees higher than its VET ( col. 10, 11. 30-31; Appeal Br. 10). In light of
these circumstances, one of ordinary skill in the art would have readily
inferred that the Tg value may be in a range as recited in each of claims 1
(122°C or more) and 24 (130°C or more). It is well settled that a reference
stands for all of the specific teachings thereof as well as the inferences one
of ordinary skill in the art would have reasonably been expected to draw
therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir. 1992).
Next, Appellants' argue that the Examiner's position that Faris
suggests that the addition of tert-butyl(meth)acrylate (TMBA) may increase
the Tg is not a correct interpretation of Faris (Appeal Br. 11, 12). This is not
persuasive of reversible error. Faris explicitly states that
a copolymer of methyl methacrylate and t-butyl methacrylate
that has been pyrolyzed to provide a copolymer having an
increased glass transition temperature and can be blended with
poly(methyl methacrylate) to provide a clear plastic material
having an increased heat distortion temperature.
Faris ,r 21.
Faris ,r 24 is clearly referring to the high Tg methacrylate copolymer
comprising TMBA that has been pyrolyzed as discussed in ,r 23 and ,r 21. 3
Thus one of ordinary skill in the art would have reasonably inferred that the
addition of TMBA to the methacrylate copolymers of Fischer with pyrolysis
would have been appropriate for increasing the Tg. Even assuming that
3 Claim 1 does not appear to exclude pyrolysis. Nonetheless, Faris still
fairly suggests use of TMBA as a component of a blend with methacrylate
copo 1 ymers.
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Appeal2017-009453
Application 13/805,224
Faris does not explicitly teach increasing the Tg by the use of TMBA, both
Fisher and Faris nonetheless exemplify that a high Tg is desirable and Faris
exemplifies that TMBA may be used in a blend with methacrylate
copolymers (Faris, e.g., ,r,r 21, 24). KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) ("The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results."). Appellants have not shown that the use of TMBA in the
methacrylate blend of Fisher would have been "more than the predictable
use of prior art elements according to their established functions." Id. at
417. Notably, claim 1 encompasses the use of as little as 0.1 wt% TMBA.
Appellants' arguments that Faris teaches away from use of
polycarbonate as disclosed in Fisher and required by the claims because
Farris states polycarbonate with acrylates cannot be blended to produce a
clear material (Appeal Br. 12, 13; Reply Br. 4, 5) are also unpersuasive of
error. Whether the prior art teaches away from the claimed invention is a
question of fact, In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). As
aptly pointed out by the Examiner, Fisher teaches, contrary to Appellants'
argument, that these materials may be blended to produce a clear film (Ans.
9, 10). Furthermore, claim 1 encompasses as little as 0.1 wt% polycarbonate
up to 5 wt%. Fisher teaches as little as 0.9 wt% polycarbonate may be used
(Fisher col. 4, 11. 34- 39). Fisher's statement that it prefers blends with more
than 5 wt% (see, Reply Br. 4) does not detract from its broader disclosure
that less may be used. An artisan of ordinary skill would have weighed the
advantages and disadvantages of how much to use of each component. "The
fact that the motivating benefit comes at the expense of another benefit,
however, should not nullify its use as a basis to modify the disclosure of one
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Application 13/805,224
reference with the teachings of another. Instead, the benefits, both lost and
gained, should be weighed against one another." Winner Int'! Royalty Corp.
v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000).
Furthermore, under the flexible inquiry set forth by the Supreme
Court, the PTO must take account of the "inferences and creative steps," or
even routine steps, that an ordinary artisan would employ. Ball Aerosol and
Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed.
Cir. 2009) ( citation omitted). See In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003) ("In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range establishes a
primafacie case of obviousness."). "Obviousness does not require absolute
predictability of success ... all that is required is a reasonable expectation
of success." In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re
O'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988)).
Significantly, Appellants have not directed us to any evidence
demonstrating that the claimed blend exhibits unexpected results. See In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (where the difference
between the claimed invention and the prior art is some range, 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 light of all the above principles, a preponderance of the evidence
supports the Examiner's rejection of the claims. "A person of ordinary skill
is also a person of ordinary creativity, not an automaton." KSR Int'!. Co. v.
Teleflex Inc., 550 U.S. 398,421 (2007).
Appellants do not rely upon any evidence of unexpected results.
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The decision of the Examiner is 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).
AFFIRMED
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