Ex Parte Saitou et al

Board of Patent Appeals and Interferences

May 31, 2012

11921865 (B.P.A.I. May. 31, 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.
11/921,865 12/10/2007 Maki Saitou SHI-029 1451
32628 7590 05/31/2012
KANESAKA BERNER AND PARTNERS LLP
1700 DIAGONAL RD
SUITE 310
ALEXANDRIA, VA 22314-2848
EXAMINER
DOLLINGER, MICHAEL M
ART UNIT PAPER NUMBER
1766
MAIL DATE DELIVERY MODE
05/31/2012 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 MAKI SAITOU, SHINICHIROU KANAI,
MOTOHIRO SEKI, SATORU YAMAMOTO, IKKOU
HANAKI, KEIJI HAYASHI, and KAZUHITO OKUMURA
________________

Appeal 2011-006958
Application 11/921,865
Technology Center 1700
________________

Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006958
Application 11/921,865

2

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 2 and 4 through 13. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ claimed invention relates to a release resin composition
for use in an adhesive tape. Spec. 1. Claim 1 is illustrative:
1. A release resin composition comprising:
a release agent (A) containing, as a main component , a polymer compound
having a weight average molecular weight of 10000 to 1000000 and
containing an aliphatic group having 8 to 30 carbon atoms; and
a thermoplastic polymer (B) containing an olefin monomer and/or a
polar monomer as a constitutional unit, wherein
an amount of the release agent (A) is 0.1 to 20 parts by weight to 100
parts by weight of the thermoplastic polymer (B); and
the release agent (A) shows a 2% weight loss temperature in a range
of 260 C° or higher but lower than 275 C° and a 5% weight loss temperature
in a range of 275 C° or higher but lower than 330 C° in thermogravimetric
analysis; and
wherein the release resin (A) includes a compound represented by a
following general formula [1] and a compound represented by a following
general formula [2] at 0.01% by weight or more but less than 1% by weight
in total:
R-NHCO-NH-R [1]
R-N (CO-NH-R) 2 [2]
wherein R represents a linear or branched aliphatic group having 8 to
30 carbon atoms; when a plurality of R’s is present in one molecule, the R’s
may be the same or different; and the compounds may be each a mixture of
two or more different kinds of compounds of which R’s are different.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Yano (as translated) JP 11-043655 Feb. 1999
Kaifu US 7,193,028 Mar. 2007

Appeal 2011-006958
Application 11/921,865

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The Examiner maintains, and Appellants appeal, the rejection of:
1. Claims 1, 2 and 4 through 13 under 35 U.S.C. § 102(b) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Yano.
2. Claims 1, 2 and 4 through 13 under 35 U.S.C. § 103(a) as
unpatentable over Yano in view of Kaifu.

OPINION1
The dispositive issue for the prior art rejections is: Did the Examiner
err in determining that Yano discloses the same “release agent (A)” recited
in the claims because Yano discloses the same preferred reactants and one of
ordinary skill in the art would expect the reaction product formed therefrom
to inherently possess the same physical properties and chemical impurities
recited in the claims?
After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm the stated rejections.

Rejection 1
The Examiner finds that Yano describes the same release resin as
claimed because the release resin of Yano contains a polyolefin resin and an
adhesion reduction agent that is the reaction product of an ethylene/vinyl
alcohol copolymer reacted with a long chain alkyl isocyanate with 8 or more
carbon atoms. (Ans. 4). In addition, the amount of the adhesion reduction

1 Appellants have not presented separate substantive arguments addressing
claims 1, 2 and 4 through 13. In accordance with 37 C.F.R. §
41.37(c)(1)(vii), we select claim 1 as representative for deciding the issue on
appeal.
Appeal 2011-006958
Application 11/921,865

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agent component in Yano is 0.01 to 20 % by weight, which overlaps with
the recited range in the claims for the release agent. Id.
The Examiner also calculates, and Appellants do not contest the
calculations, that the preferred content of the vinyl alcohol copolymer
component of Yano corresponds to a range of molecular weight of 14,800 to
127,200 and overlaps with the molecular weight range recited in the claims
for the polymer component of the release agent. Id. The Examiner finds
that the weight loss temperature of the adhesion reduction agent would
inherently be the same as recited in the claims because the composition is
the same. Id. at 4-5.
The Examiner finds that the compounds of general formula [1] and
general formula [2] recited in claim 12 are inherently present in the
composition of Yano because they are identified in the Appellants’
specification as impurities formed in the preparation of the release agent
from the reaction of an aliphatic isocyanate and an ethylene/vinyl alcohol
copolymer in the Specification. (Ans. 5-6). The Examiner further finds that
the amount present of these impurities in Yano are within the range recited
by Claim 1 because (1) the amount is not substantial enough to adversely
affect adhesion, and (2) less than 0.01% is substantially difficult to achieve
according to Appellants’ Specification. (Ans. 5-6).
Appellants primarily argue that because Yano does not explicitly
disclose compounds of general formulae [1] and [2], the prior art reference

2 General formula [1] and general formula [2] recited in Claim 1 correspond
to general formula [2] and general formula [3] recited in Claim 9. Therefore
we will refer to the Examiner’s findings with respect to general formula [2]
and general formula [3] as findings regarding general formula [1] and
general formula [2].
Appeal 2011-006958
Application 11/921,865

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does not disclose the same identical chemical composition as claimed.
(App. Br. 6-7). Appellants reason that since the prior art chemical
composition is not identical, the same properties recited in claim 1 are not
necessarily present and therefore not anticipated. Id. at 7.
Appellants also argue that using the Appellants’ Specification for the
disclosure of the impurities and the amount of impurities below which it is
difficult to remove is tantamount to using the Specification as a reference.
Id.
We are unpersuaded the Examiner is in error. Appellants presented
no evidence to refute the Examiner’s finding that the product of the same
reactants would produce a chemical composition that is the same or
substantially the same chemical composition. In this case, the preferred
reactants exemplified by both the Appellants’ Specification and the Yano
prior art reference are an ethylene/vinyl alcohol co-polymer and an
isocyanate with an aliphatic group having 8 or more carbon atoms.
Therefore, we find that based on the Examiner’s findings regarding the
identity of reactants and the overlapping amounts of ethylene content in the
ethylene/vinyl alcohol and amount of isocyanate, it is reasonable to conclude
that the compounds of general formulae [1] and [2] are present at the same
amount and the reaction product possesses the same chemical properties.
Thus, we will sustain the Examiner’s rejections for essentially those reasons
expressed in the Answer. In re Spada, 911 F.2d 705, 708-09 (Fed. Cir.
1990) (Board correctly found that the prior art monomers and procedures
were virtually identical to claimed composition and Spada failed to show
that the claimed products and prior art are not the same.)
Appeal 2011-006958
Application 11/921,865

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For the foregoing reasons, we affirm the rejection of claims 1, 2 and 4
through 13 under 35 U.S.C. § 102(b) as being anticipated by Yano.

Rejection 2
The Examiner cites Kaifu for disclosing a peel-treating agent
containing the reaction product of an aliphatic isocyanate, having an
aliphatic group of at least 8 carbon number, with an ethylene/vinyl alcohol
copolymer wherein bisureas formed therefrom correspond to the compounds
of general formulae [1] and [2] and in an amount that does not lower the
adhesive force of the adhesive layer. (Ans. 6-7; Kaifu, abstract, col. 8, ll.
21-28). Appellants do not dispute the Examiner’s finding that the bisureas
disclosed in Kaifu correspond to the compounds of the general formulae [1]
and [2] recited in claim 1. Rather, Appellants contend that the general
formulae [1] and [2] as well as the recited range of 0.01 to 1% by weight is
not disclosed verbatim in Kaifu. App. Br. 7.
Because anticipation is the epitome of obviousness and Kaifu does not
negate the conclusion that Yano discloses the same chemical composition of
claim 1, we also sustain the rejection of claims 1, 2 and 4 through 13 as
obvious in view of Yano in combination with Kaifu.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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