Ex Parte Tsubouchi et al

Patent Trial and Appeal Board

Mar 8, 2019

12682832 (P.T.A.B. Mar. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/682,832 04/13/2010
46668 7590 03/08/2019
FILDES & OUTLAND, P.C.
20916 MACK AVENUE, SUITE 2
GROSSE POINTE WOODS, MI 48236
FIRST NAMED INVENTOR
Kenji Tsubouchi
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.
13006.161 6289
EXAMINER
FREEMAN, JOHN D
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
03/08/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte KENJI TSUBOUCHI, ATSUKO NODA, and HIDEKI KUWATA
Appeal2018-004247
Application 12/682,832
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
April 13, 2010 ("Spec."); Non-Final Office Action dated June 30, 2017 ("Non-
Final"); Appeal Brief filed Sept. 13, 2017 ("Br."); and Examiner's Answer dated
Jan. 10, 2018 ("Ans.").
Appeal2018-004247
Application 12/682,832
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision twice rejecting claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
The invention is directed to a process for producing a uniform, polyamide
resin film that is said to have an excellent quality stability using a biaxial tenter
stretching method. Spec. 6: 1-7. Such films are used, for example, as packaging
materials for various types of food. See id. at 1:14--29. Claim 1, the sole
independent claim on appeal, and dependent claim 7 are reproduced below.
1. A process for producing a polyamide resin film, wherein
an unstretched film is simultaneously biaxially, longitudinally
and transversely, stretched by a simultaneous biaxial tenter stretching
method, in which widthwise edges of the unstretched film are gripped
with clips,
the clips are attached to travelling supports guided by guide
rails at positions away from the guide rails, and
the travelling supports travel along a transverse stretching
section which contains
a curved orbit in an early stretching stage wherein an
inter-clip distance is variable due to an occurrence of a first
distortion of a movement orbit of the clips in such a manner
that the distance expands once in the first place and then gets
back as before,
a reversely curved orbit in a final stretching stage
wherein the inter-clip distance is variable due to an occurrence
of a second distortion of the movement orbit of the clips in such
a manner that the distance shrinks once in the first place and
then gets back as before, and
a gradually expanding-stretching travelling region
existing between the early stretching stage and the final
stretching stage,
2 The Appellants identify Unitika Ltd. as the real party in interest. Br. 3.
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Application 12/682,832
the process comprising:
in order to make a stress decrease in the film due to the
distortion of the movement orbit of the clips not to exceed an
allowable limit, from a start of a transverse stretching until a
maximum stretching magnification factor of the transverse stretching
is reached, controlling the traveling speed of each of the supports so
as to limit a decrease of a longitudinal stretching magnification factor
represented by a linear distance between adjacent clips to more than 0
but less than 5% of a maximum stretching magnification factor of a
longitudinal stretching.
7. A polyamide resin film obtained by the process of claim 1,
wherein a thickness unevenness augmentation factor of the film is 3.5
or less and a variation rate of a refractive index in a thickness
direction of the film over a whole surface of the film is 0.5% or less.
Br. 38--40 (Claims Appendix).
The Examiner relies on the following references as evidence of patentability:
Habozit us 3,890,421 June 17, 1975
Matsuda us 4,690,792 Sept 1, 1987
Hommes us 4,853,602 Aug. 1, 1989
Kwack us 4,862,564 Sept 5, 1989
Yamaguchi us 5,780,577 July 14, 1998
Nishi US 2009/0191369 Al July 30, 2009
Provost WO 98/32349 July 30, 1998
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Appeal2018-004247
Application 12/682,832
Claims 1-12 stand rejected as listed below.
1. Rejections based on Hommes:
a. claims 1, 2, 5, and 7-10 under 35 U.S.C. § 102(b) as anticipated
by Hommes;
b. claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over
Hommes; and
c. claims 6, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable
over Hommes in view of Yamaguchi.
2. Rejections based on Habozit:
a. claims 1-12 under 35 U.S.C. § 103(a) as unpatentable over
Habozit in view of Yamaguchi; and
b. claims 1-12 under 35 U.S.C. § 103(a) as unpatentable over
Habozit in view of Yamaguchi, and Kwack or Provost.
3. Rejection based on Matsuda:
a. claims 7-12 under 35 U.S.C. § 102(b) as anticipated by, and
under 35 U.S.C. § 103(a) as unpatentable over Matsuda.
4. Rejections based on Nishi:
a. claims 7-10 under 35 U.S.C. § 102(b) as anticipated by, and
under 35 U.S.C. § 103(a) as unpatentable over Nishi; and
b. claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Nishi in view of Matsuda.
Rejections Based on Hammes
The Appellants' arguments in support of patentability as to all claims subject
to the rejections based on Hommes are directed to limitations in claim 1. See Br.
11-1 7, 3 5. The Appellants argue Hommes does not disclose the claimed features
of the transverse stretching section (paragraphs 3---6 in the body of claim 1) or
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Application 12/682,832
controlling the travelling speed of the supports to achieve the features recited in the
last paragraph of claim 1. Br. 13.
The Examiner addresses Appellants' arguments in detail in the Answer, and
we agree with the Examiner that Appellants' arguments are not persuasive of
reversible error in the Examiner's finding of anticipation as to claim 1 for the
reasons stated on pages 17-21 of the Answer. To the extent Hommes fails to
explicitly disclose the argued claim limitations, the Examiner provides a factually
supported basis for finding Hommes inherently discloses these limitations. See
Non-Final 3--4; Ans. 17-21.
When the Examiner establishes a reasonable assertion of inherency and
thereby evinces that a claimed process appears to be identical to a process
disclosed by the prior art and/or that the products claimed by the applicant and
disclosed in the prior art appear to be the same, the burden is properly shifted to the
applicant to show that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1254--56 (CCPA 1977). The Appellants have not
provided persuasive evidence and/or argument to satisfy this burden.
Accordingly, we sustain the rejection of claim 1 and its dependent claims 2,
5, and 7-10 as anticipated by Hommes. As noted above, the Appellants rely on the
same arguments in support of patentability of all claims subject to rejections based
on Hommes, and do not identify evidence of secondary considerations in support
ofpatentability of the dependent claims rejected under 35 U.S.C. § 103(a).
Therefore, we also sustain the rejection of claims 3 and 4 as obvious over Hommes
and the rejection of claims 6, 11, and 12 as obvious over Hommes in view of
Yamaguchi.
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Appeal2018-004247
Application 12/682,832
Rejections based on Habozit
The Appellants' arguments in support of patentability as to all claims subject
to the rejections based on Habozit are directed to limitations in claim 1. See Br.
21-35. The Appellants argue the references, alone or in combination, do not
disclose the claimed features of the transverse stretching section (paragraphs 3-6 in
the body of claim 1) or controlling the travelling speed of the supports to achieve
the features recited in the last paragraph of claim 1. Br. 23, 29.
The Examiner addresses the Appellants' arguments in detail in the Answer,
and we agree with the Examiner that the Appellants' arguments are not persuasive
of reversible error in the Examiner's conclusion of obviousness as to claim 1 for
the reasons stated on pages 23-31 of the Answer. To the extent the references fail
to explicitly disclose or suggest the argued claim limitations, the Examiner
provides a factually supported basis for finding the references necessarily include
the claimed features. See Non-Final 8-9 (regarding the curved orbit of the rails and
the stress decrease). The Appellants have not provided persuasive evidence and/or
argument to refute the Examiner's findings with respect to features that are
necessarily present in the method resulting from the combination of Habozit and
the secondary references, nor do the Appellants rely on evidence of secondary
considerations in support of patentability. Therefore, we sustain the rejections of
claims 1-12 under 35 U.S.C. § 103(a) as unpatentable over Habozit in view of
Yamaguchi, and as upatentable over Habozit in view of Yamaguchi, and Kwack or
Provost.
Rejection Based on Matsuda and Rejections Based on Nishi
The Examiner determines, and the Appellants do not dispute, that claims 7-
12 are product-by-process claims that depend from process claim 1. Non-Final 5-
7; see generally Br. 17-20. The Examiner and the Appellants also agree that
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Application 12/682,832
neither Matsuda nor Nishi anticipates or renders obvious claim 1. Non-Final 5-7;
Br. 17-19. The Examiner finds, however, that Matsuda describes a product as
recited in claims 7-12 and Nishi describes a product as recited in claims 7-10.
Non-Final 4--7. The Examiner thus determines that Matsuda anticipates claims 7-
12 and Nishi anticipates claims 7-10. Id. The Examiner also determines claims 11
and 12 are unpatentable over Nishi in view of Matsuda. Id. at 15.
The Appellants contend that because claims 7-12 are dependent claims, they
cannot be anticipated or rendered obvious by references that do not disclose or
suggest the method of the independent claim from which they depend, i.e., claim 1.
Br. 18-20, 36. The Appellants' argument is not supported by the case law and,
therefore, is not persuasive of error in the Examiner's finding of anticipation and
conclusion of obviousness. In In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985), the
appellants appealed the Board's decision to affirm the Examiner's rejections of
product-by-process claims under 35 U.S.C. §§ 102, 103. Id. at 696. The product-
by-process claims depended from an allowed process claim. Id. The court affirmed
the Board's decision, explaining that "even though product-by-process claims are
limited by and defined by the process, determination of patentability is based on
the product itself." Id. at 697 (citations omitted); see Ans. 22.
The Appellants' arguments in support of patentability of claims 7-12 are
limited to contentions that Matsuda and Nishi fail to disclose or suggest the process
recited in independent claim 1. See Br. 17-20, 36. The Appellants have not
provided evidence or otherwise explained how the products of claims 7-12 differ
from the products described in Matsuda and Nishi. See id.; Ans. 22-23.
Accordingly, we sustain the Section 102 and Section 103 rejections of claims 7-12
over Matsuda and Nishi. See Thorpe, 777 F .2d at 698 ("We also agree that on the
entirety of the record the PTO had correctly adduced a prima facie case, and that
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Application 12/682,832
the burden had shifted to Thorpe, 'to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product."'
( citations omitted)).
In conclusion, for the reasons stated in the Non-Final Office Action, the
Answer, and above, we sustain all grounds of rejection. The Examiner's decision
to reject claims 1-12 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)(l )(iv).
AFFIRMED
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