Ex Parte Ninomiya et al

Patent Trial and Appeal Board

Jul 25, 2018

12677861 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/677,861 03/12/2010
7055 7590 07/27/2018
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Kenji Ninomiya
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.
P48157 3609
EXAMINER
KRUER,KEVINR
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENJI NINOMIY A, KANAME KIDA, and
YOSHITAKA MATSUMURA
Appeal2017-003408
Application 12/677,861
Technology Center 3600
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kenji Ninomiya et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision, as set forth in the Final Office
Action dated December 18, 2015 ("Final Act."), rejecting claims 14 and 19
under 35 U.S.C. § 103(a) as being unpatentable over Itamura (US 5,492,953,
1 The Appeal Brief identifies The Nippon Synthetic Chemical Industry Co.,
Ltd. as the real party in interest. Appeal Br. 3.
Appeal2017-003408
Application 12/677,861
issued Feb. 20, 1996), Hirata (US 3,857,754, issued Dec. 31, 1974), and
Iyengar (US 2007/0087212 Al, published Apr. 19, 2007). We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
SUMMARY OF THE INVENTION
Appellants' disclosure relates to a resin composition blended with a
scrap laminate. Spec. 1. Claim 14, the sole independent claim on appeal, is
reproduced below from page 31 (Claims Appendix) of the Appeal Brief. 2
14. A method of producing a resin composition (II)
compnsmg:
blending a resin composition (I) with a scrap laminate
including a layer of a polyolefin resin (D) of polyethylene or
polypropylene, having a melt flow rate (MFR) of 0.5 to 30 g/10
minutes ( at 23 0°C with a load of 2160 g) and a layer of a
saponified ethylene-vinyl acetate copolymer (E) having an
ethylene content of 20 to 50 mol%, having a saponification
degree of not less than 90 mol% and having a melt flow rate
(MFR) of 1 to 3 5 g/10 minutes ( at 210°C with a load of
2160 g);
wherein the resin composition (I) comprises an
unsaponified ethylene-vinyl acetate copolymer (A) having a
vinyl acetate content of 3 to 30 mol% and having a melt flow
rate (MFR) of 1 to 30 g/10 minutes (at I90°C with a load of
2160 g); and
a saponified ethylene-vinyl acetate copolymer (B) having
an ethylene content of 80 to 95 mol%, having a saponification
degree of not less than 20 mol% and having a melt flow rate
2 Claim 14 is a method claim, but no step is associated with the saponified
ethylene-vinyl acetate copolymer (B) recitation. However, the penultimate
"wherein" clause clarifies that "the saponified ethylene-vinyl acetate
copolymer (B) [is] in the resin composition (I)." Thus, we understand the
saponified ethylene-vinyl acetate copolymer (B) recitation to further define
and limit the resin composition (I).
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Application 12/677,861
(MFR) of 2 to 30 g/10 minutes (at 190°C with a load of
2160 g);
wherein a ratio (x)/(y) of weight (x) of the scrap laminate
to weight (y) of the resin composition (I) is (x)/(y)=99.5/0.5 to
90/10;
wherein the saponified ethylene-vinyl acetate copolymer
(E) has a proportion of 0.1 to 20 wt% based on the overall
weight of the scrap;
wherein the saponified ethylene-vinyl acetate copolymer
(B) in the resin composition (I) is present in a proportion of
from 0.05 to a proportion of 0.25 parts by weight based on a
total of 100 parts by weight of the polyolefin resin (D) and the
saponified ethylene-vinyl acetate copolymer (E) in the scrap;
wherein the component (B) is present in a proportion of 1
to 30 parts by weight based on 100 parts by weight of the
component (A) in the resin composition (I).
ANALYSIS
The Rejection
The Examiner finds that Itamura discloses a method substantially as
recited in independent claim 14, including blending a scrap laminate with a
compatilizer comprising a saponified ethylene-vinyl acetate copolymer, but
does not disclose that the compatilizing resin comprises (unsaponified)
ethylene vinyl acetate ("EV A"). Final Act. 2--4. The Examiner finds that
Hirata discloses a composition comprising a saponified ethylene vinyl ester,
a polyolefin, and a compatilizer, which may be an ethylene vinyl acetate
copolymer. Id. at 4. The Examiner reasons that it would have been obvious
to one of ordinary skill in the art "to utilize a blend of an ethylene vinyl
acetate copolymer (as taught in Hirata) and the saponified ethylene vinyl
acetate copolymer (as taught in Itamura) as the compatilizer of Itamura"
because
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Application 12/677,861
EV A is taught to be functionally equivalent to the saponified
ethylene-vinyl acetate compatibilizing resin (D) and the courts
have held it is prima facie obvious to combine two
compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third
composition to be used for the very same purpose.
Id.; see also id. at 9 ("the examiner relied upon Itamura' s EV A to read on
claimed component (B) and Hirata's EV A to read on the claimed component
(A)"); Ans. 8. The Examiner relies on Iyengar to teach providing EVA with
a flow rate matching or similar to the flow rate of Itamura's resins. Final
Act. 5.
Appellants traverse, arguing, inter alia, that, although "[t]he examiner
is correct to characterize the S-EVOH of [Itamura] and the (unsaponified)
ethylene-vinyl acetate copolymer of [Hirata] as compatibilizers of the
respective compositions," "simply because they function as compatibilizers
in those respective compositions does not necessarily mean they are
equivalents." Appeal Br. 17 (emphasis added). According to Appellants,
if a saponified ethylene-vinyl acetate copolymer (e.g., S-EVOH
of [Itamura]) were the equivalent of an unsaponified ethylene-
vinyl acetate copolymer ( e.g., carbonyl group-containing
thermoplastic polymer of [Hirata]), then the same result would
be achieved by using either one in either [Itamura] or [Hirata].
It follows that if they are equivalent as the examiner asserts,
then they could serve as replacements for each other. But the
fallacy of this argument is immediately apparent: ... if
[Hirata's] unsaponified ethylene-vinyl acetate copolymer were
used in the place of [Itamura's] S-EVOH, it would render
useless [Itamura' s] inventive concept by removing a critical
feature.
Id. We are persuaded by Appellants' arguments.
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Application 12/677,861
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073-74 (Fed. Cir. 1988). In
so doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966), viz., (1) the scope and
content of the prior art; (2) the differences between the prior art and the
claims at issue; and (3) the level of ordinary skill in the art. "[T]he examiner
bears the initial burden, on review of the prior art or on any other ground, of
presenting a prim a facie case of unpatentability." In re Oetiker, 977 F .2d
1443, 1445 (Fed. Cir. 1992). To establish a prima facie case of obviousness,
all the claim limitations must be taught or suggested by the prior art. See In
re Royka, 490 F.2d 981 (CCPA 1974). Furthermore, although the analysis
need not identify explicit teachings directed to the claimed subject matter, "it
can be important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) ( emphasis added). As such, "'there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness."' Id. (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)).
Here, Itamura discloses a resin comprising a polyolefin (A), an EVOH
(B), an inorganic material (C1), and a specific saponified product of an
ethylene-vinyl acetate copolymer (D) referred to as S-EVOH. 3 Itamura,
3:14--4:44. Regarding the S-EVOH, Itamura explains:
3 "S-EVOH" refers to "a specific saponified product of an ethylene-vinyl
acetate copolymer ... having an ethylene content of 68 to 98 mol % and a
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The S-EVOH (D) is, in the present invention, a specific
EVOH suitably selected and newly developed for the purpose of
significantly improving compatibility of polyolefin (A), EVOH
(B) and inorganic material (C1), and is a saponified product of
an ethylene-vinyl acetate copolymer having an ethylene content
of 68 to 98 mol % and a saponification degree of vinyl acetate
component of at least 20%. Those particularly effective in
improving compatibility have an ethylene content of at least 70
mol %, and 96 mol % at most, more preferably 94 mol % at
most, and a saponification degree of vinyl acetate component of
at least 30%, more preferably at least 40%. The upper limit of
the saponification degree is not specifically restricted and a
saponification degree of substantially 100% can also be used.
With the ethylene content of less than 68 mol % or not
less than 98 mol %, or with the saponification degree of vinyl
acetate component of less than 20%, flow instability occurs
upon molding, whereby molded articles have bad appearance.
Id. at 4:25--44 (emphases added). Thus, Itamura specifies a specific ethylene
content (68-98 mol %) and saponification degree (at least 20%) of its
compatibilizer, with preferred values being 94 mol % ethylene content and
at least 40% saponification. Itamura explains that if a compatibilizer with a
lower ethylene content or with a lower saponification degree is used,
compatibility suffers and the resin becomes unstable upon molding.
The Examiner appears to appreciate Itamura' s requirement for a
specific compatibilizer: "[Itamura] teaches the addition of a second distinct
EVOH with a higher ethylene content (S-EVOH) improves the compatibility
of a blend comprising polyolefin and a lower ethylene content EVOH."
Ans. 9. Nonetheless, the Examiner proposes to modify Itamura's S-EVOH
by blending it with Hirata's compatibilizer, which the Examiner describes as
saponification degree of vinyl acetate component of at least 20%." Itamura,
2:53---62.
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Application 12/677,861
"unsaponified EVA" (Final Act. 9). Blending such an unsaponified EV A
into Itanmra's S-EVOH necessarily would reduce the degree of
saponification of the resulting composition. The Examiner, however, has
not explained adequately why one of ordinary skill in the art would desire to
lower the saponification degree of Itamura's S-EVOH, especially given
Itamura's disclosure of the importance of having a degree of saponification
of at least 20%. Indeed, the rejection fails to address in any manner the
saponification degree or the ethylene content of the unsaponified EV A to be
blended with Itamura's S-EVOH. Thus, the Examiner has not set forth an
articulated reasoning with adequate rational underpinning for the proposed
modification.
Furthermore, the Examiner's determination that "[Hirata's] EVA is
taught to be functionally equivalent to [Itamura's] saponified ethylene-vinyl
acetate compatibilizing resin (D)" (Final Act. 4) is unsupported by any
findings or reasoning. The Examiner fails to articulate a rational
underpinning for this additional reason.
Finally, the Examiner's stated rationale for modifying Itamura's
S-EVOH is "the courts have held it is prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition to be used for the very
same purpose." Id. Thus, the Examiner relies on a per se rule to support the
rejection. However, as our reviewing court has explained, "section 103
requires a fact-intensive comparison of the claimed process with the prior art
rather than the mechanical application of one or another per se rule." In re
Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995); see also id. at 1572
("[R ]eliance on per se rules of obviousness is legally incorrect and must
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Application 12/677,861
cease."). The Examiner has not explained adequately how any precedential
court holding is applicable to this case, nor has the Examiner properly
established that the compatibilizers of Itamura and Hirata are "for the same
purpose"-we note that the references use their respective compatibilizers to
combine differing components, and, thus, appear not to be for the same
purpose (see Itamura, 3: 14--4:24; Hirata, 3: 14--23; Appeal Br. 17-18). The
Examiner, therefore, fails to articulate a rational underpinning for this
additional reason.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 14 or its dependent claim 19 as being unpatentable over Itamura
and Hirata.
DECISION
The Examiner's decision to reject claims 14 and 19 is reversed.
REVERSED
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