Ex Parte Kojima et al

Board of Patent Appeals and Interferences

May 29, 2012

12153309 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/153,309 05/16/2008 Hideaki Kojima YOS-0054/DIV 6157
23353 7590 05/29/2012
RADER FISHMAN & GRAUER PLLC
LION BUILDING
1233 20TH STREET N.W., SUITE 501
WASHINGTON, DC 20036
EXAMINER
WALKE, AMANDA C
ART UNIT PAPER NUMBER
1722
MAIL DATE DELIVERY MODE
05/29/2012 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)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIDEAKI KOJIMA, HIDEKAZU MIYABE,
SHOUJI MINEGISHI, NAOKI YONEDA, and
YOSHITAKA HIRAI
__________

Appeal 2010-012514
Application 12/153,309
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-012514
Application 12/153,309

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-7. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to a method of storing a
photocurable and thermosetting composition where the photocurable
composition is incorporated in a composition separate from the carboxyl
group-containing composition and reactive diluent composition (Claim
App’x 1).
Claim 1 is illustrative:
1. A method of storing a multi-part photocurable and
thermosetting resin composition in the form of a multi-part
system comprising in combination at least two compositions,
which comprises: preparing a composition containing (A) a
carboxyl group-containing resin having at least one carboxyl
group in its molecule and (C) a reactive diluent, and a
composition containing (D) an epoxy compound having two or
more epoxy groups in its molecule, and further comprising (B)
a photopolymerization initiator having an oxime linkage
represented by the following general formula (I), said
photopolymerization initiator (B) being incorporated into a
composition which is different from the composition into which
said carboxyl group-containing resin (A) and said reactive
diluent (C) are incorporated, and storing said compositions in
individual states.

Appeal 2010-012514
Application 12/153,309

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Appellants appeal the following rejection:
Claims 1-7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Kunimoto (US 6,949,678 B2 issued Sept. 27, 2005) in view of Iida (US
6,316,528 B1 issued Nov. 13, 2001).
Though Appellants argue that the claims do not stand or fall together
(App. Br. 11), Appellants’ arguments focus on claim 1 only (id. at 6-10).

ISSUE
Did the Examiner reversibly err in determining that subject matter of
claim 1 which includes separating the photopolymerization initiator from the
carboxyl group-containing resin and reactive diluent would have been
obvious in view of the teachings of Kunimoto and Iida as a whole? We
decide this issue in the negative.

FINDINGS OF FACT AND ANALYSES
Appellants argue the prior art would not have been combined to solve
Appellants’ disclosed problem concerned with oxime linkage-containing
photopolymerization initiator deterioration and gelation of
photopolymerizable composition (App. Br. 8-9). Appellants contend that
the prior art taught separating the hardener solution containing the epoxy
resin from the carboxyl group containing resin, but not separating the
photopolymerizable initiator from the carboxyl group containing
photosensitive resin (id. at 8).
Appellants do not dispute the Examiner’s findings regarding
Kunimoto (id. at 6-9). Contrary to Appellants’ arguments, the Examiner’s
reason for combining the teachings of Kunimoto and Iida does not have to
Appeal 2010-012514
Application 12/153,309

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be the same as Appellants’ reason. KSR Int’l Co. v. Teleflex Inc., 550 US
398, 420 (2007) (“[A]ny need or problem known in the field of endeavor at
the time of the invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.”).
We understand the Examiner’s rejection to state that one of ordinary
skill in the art would have modified Kunimoto’s process by separating the
photopolymerizable initatior and curing agent from carboxyl group
containing photosensitive polymer and reactive diluent because Iida teaches
to separate a curing agent and the material being cured so as to isolate an
activator from a resin being activated (Ans. 3-5).
The Examiner finds that Iida teaches to separate an activator from the
resin being activated (id. at 5). Though Appellants argue that the Examiner
improperly expands Iida’s teachings to include any activator which
Appellants contend is beyond the scope of Iida’s fair teachings (Reply Br.
3), we disagree. Based on Iida’s teaching to separate an activator from a
resin to be activated/polymerized, one of ordinary skill would have
understood that separation of an activator from the resin being activated
avoids premature activation or polymerization. KSR, 550 US at 421 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). An activator or initiator starts the particular process of
polymerization, for example. Accordingly, if an activator or initiator is
separated from the material it is meant to activate or initiate polymerization,
then no activation or polymer initiation would have resulted. A more shelf
stable photopolymerizable resin would have reasonably been expected.
Based on the Examiner’s findings, we agree with the Examiner that
the applied prior art would have suggested to one of ordinary skill in the art
Appeal 2010-012514
Application 12/153,309

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to separate the activators (i.e., curing agent and photopolymerizable
initiator) from the resin to be activated (i.e., the epoxy resin and the carboxyl
group containing resin and diluent, respectively).
Appellants further argue that the results contained in the Specification
show unobvious results (Reply Br. 3-5; App. Br. 6 and 9-11). Absent from
Appellants’ arguments and evidence is any allegation that the results shown
in the Specification were “unexpected.” In re Nolan, 553 F.2d 1261, 1267
(CCPA 1977). The Appellants merely allege that the results were
“improved”, which is not the same as being “unexpected” (App. Br. 6).
Based on the foregoing, the weight of the evidence supports the
Examiner’s conclusion of obviousness.
We affirm the Examiner’s § 103 rejection over Kunimoto in view of
Iida.

DECISION
The Examiner’s decision 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.
ORDER
AFFIRMED

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