Hada, Hiroyuki et al.Download PDFPatent Trials and Appeals BoardApr 30, 202012746126 - (D) (P.T.A.B. Apr. 30, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 12/746,126 06/03/2010 Hiroyuki Hada 1248-1171PUS1 6677 127226 7590 04/30/2020 BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER JACKSON, MONIQUE R ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 04/30/2020 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROYUKI HADA and KOICHI YANAI Appeal 2018-009050 Application 12/746,126 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 3–5, 8, 10–13, and 15. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 An oral hearing was conducted on April 3, 2020. A copy of the hearing transcript will be made of record upon its availability. 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Zeon Corporation. Appeal Brief (“Appeal Br.”) filed June 13, 2018, 1. Appeal 2018-009050 Application 12/746,126 2 CLAIMED SUBJECT MATTER The invention relates to a vinyl chloride resin composition for powder molding and a method of producing this composition. Spec. 1:10–20. Appellant discloses that an object of the invention is to provide a vinyl chloride resin composition having excellent powder flowability and results in a molded object having excellent heat aging resistance and low- temperature resistance. Id. at 3:13–17. Appellant discloses that a vinyl chloride resin composition including vinyl chloride resin particles and a trimellitate plasticizer, wherein the particles having a particular size and a large average degree of polymerization and a particular trimellitate plasticizer meets the invention’s objective. Id. at 4:1–7. In particular, Appellant discloses that the composition comprises vinyl chloride resin particles have an average particle size of 50–500 µm and an average degree of polymerization of 1500 or more, and a trimellitate plasticizer whose R1– R3 groups have 0–10 mol% of 7 carbons or less, 0–85 mol% of 8–9 carbons, 15–100% of 10 carbons, and 0–10 mol% of 11 or more carbons. Id. at 4:9– 5:8. Independent claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the claimed subject matter: 1. A vinyl chloride resin composition for powder molding, comprising: 100 parts by mass of vinyl chloride resin particles made of vinyl chloride resin whose average degree of polymerization is 2000 or more, the vinyl chloride resin particles having an average particle size ranging from 100 to 500 μm; 110 to 150 parts by mass of a trimellitate plasticizer represented by general formula (1) Appeal 2018-009050 Application 12/746,126 3 wherein R1to R3 represent an alkyl group and may be identical with each other or different from each other, a linear chain ratio of R1 to R3 is 95 mol% or more, a ratio of an alkyl group having 7 carbons or less to whole alkyl groups of R1 to R3 ranges from 0 to 10 mol%, a ratio of an alkyl group having 8 or 9 carbons to whole alkyl groups of R1 to R3 ranges from 35 to 65 mol%, a ratio of an alkyl group having 10 carbons to whole alkyl groups of R1 to R3 ranges from 35 to 65 mol%, a ratio of an alkyl group having 11 or more carbons to whole alkyl groups of R1 to R3 ranges from 0 to 10 mol%, and the linear chain ratio is a ratio of a linear chain alkyl group to whole alkyl groups of R1 to R3; and further including 10 to 25 parts by mass of a dusting agent with respect to 100 parts by mass of the vinyl chloride resin particles, the dusting agent being made of vinyl chloride resin fine particles of 0.1 to 10 μm in average particle size, which vinyl chloride resin fine particles are made from vinyl chloride resin having an average degree of polymerization ranging from 500 to 2000. Claim 10 recites a molded object made by powder molding the composition of claim 1. Claim 11 recites a laminate including a surface of the molded object of claim 10 and polyurethane foam. Claim 12 recites a vehicle interior material having a surface made of the molded object of claim 10. Claim 13 recites a method of producing the composition of claim 1. Appeal 2018-009050 Application 12/746,126 4 REFERENCES The Examiner relies on the following prior art: Name Reference Date Masuda et al. (“Masuda”) US 5,994,439 Nov. 30, 1999 Mitsudera et al. (“Mitsudera”) US 7,361,704 B2 Apr. 22, 2008 Matsumoto et al. (“Matsumoto”) JP 3-195756 A Aug. 27, 1991 Ichikawa JP 11-130,926 A May 18, 1999 Cadogan et al. (“Cadogan”) David F. Cadogan and Christopher J. Howick, Plasticizers, Ullmann’s Encyclopedia of Industrial Chemistry, Wiley Online Library, 1–4 (2002) (“Cadogan”). 2002 REJECTIONS The Examiner maintains, and Appellant requests our review of, the following rejections under 35 U.S.C. § 103(a): 1. Claims 1, 3–5, 8, 10–13, and 15 as unpatentable over Masuda; 2. Claims 1, 3–5, 8, 10–13, and 15 as unpatentable over Matsumoto in view of Cadogan; and 3. Claims 1, 3–5, 8, 10–13, and 15 as unpatentable over Matsumoto in view of Cadogan, and further in view of Mitsudera, Ichikawa, or Masuda. OPINION After review of the opposing positions articulated by Appellant and the Examiner, the applied prior art, and Appellant’s claims and Specification Appeal 2018-009050 Application 12/746,126 5 disclosures, we determine that the Appellant’s arguments are insufficient to identify reversible error in the Examiner’s obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). However, because Rejection 3 relies on the same primary and secondary references as Rejection 2, but adds tertiary reference evidence, we deem Rejection 2 as cumulative to Rejection 3. Therefore, we do not separately reach Rejection 2. Accordingly, we affirm Rejections 1 and 3 for substantially the fact findings and the reasons set forth by the Examiner in the Examiner’s Answer which we adopt as our own. We offer the following for emphasis only. Rejection 1: Obviousness over Masuda The Examiner rejects all the claims on appeal under 35 U.S.C. § 103(a) as unpatentable over Masuda. Ans. 3–6. Appellant argues the claims under this rejection as a group, focusing on the limitations of claim 1 only. In accordance with 37 C.F.R. § 41.37(c)(1)(iv), claims 3–5, 8, 10–13, and 15 stand or fall with claim 1, which we select as representative. There is no dispute that Masuda discloses a vinyl chloride resin composition for powder molding comprising: (1) 100 parts by weight of a vinyl chloride resin powder having an average polymerization degree of 600–3000, preferably 1000–2500; (2) 80–150 parts by weight of a trimellitate plasticizer having an average principle chain carbon number of the alkyl groups, R1–R3, within the range of 6–9, including mixtures thereof; and (3) 5–25 parts by weight of a fine vinyl chloride resin dusting agent having an average polymerization degree of 400–1300 with a primary bimodal grain size including a main, larger mode of 0.9–1.4 μm and a Appeal 2018-009050 Application 12/746,126 6 smaller, sub-mode of 0.1–0.4 μm. Compare Ans. 3 with Appeal Br. 7 and Reply Br. 2–3; see also, Masuda 2:23–38. The issue on appeal for this rejection is whether Appellant has identified a reversible error in the Examiner’s finding that Masuda’s teaching suggests the use of a trimellitate plasticizer whose principle chain length is 10 (C10 alkyl group) in a mixture of trimellitate plasticizers as recited in claim 1. Appellant has not identified such an error. Appellant argues that Masuda teaches away from a trimellitate plasticizer containing a C10 alkyl group. Appeal Br. 7. In this regard, Appellant asserts that Masuda teaches that a trimellitic ester (trimellitate) having an alkyl group with a principle or actual chain length of larger than 9 is inferior in absorptivity into the vinyl chloride resin and provides a bad powder property. Id. Appellant contends that Masuda’s teaching that a longer alkyl chain in the trimellitate plasticizer causes decreased absorptivity into the vinyl chloride resin relates not to the average alkyl chain length, but to the principle alkyl chain length. Reply Br. 3. Appellant’s argument is not persuasive of reversible error because it fails to consider the entirety of Masuda’s teaching. When the prior art teaches away from a combination, that combination is more likely to be nonobvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). But to teach away, a reference must discourage one of ordinary skill in the art from following the path set out in the reference, or lead that person in a direction divergent from the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “Although a reference that teaches away is a significant factor to be considered in determining unobviousness, the nature of the teaching is Appeal 2018-009050 Application 12/746,126 7 highly relevant, and must be weighed in substance.” Id. Further, it has been held that “[w]hat the prior art teaches and whether it teaches toward or away from the claimed invention . . . is a determination of fact.” Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). As Appellant correctly asserts, Masuda teaches that a trimellitate plasticizer having a principle alkyl chain length of larger than 9 is inferior in absorptivity into the vinyl chloride resin and provides a bad powder property. Masuda 3:55–60. But we do not ignore the modifications that one of ordinary skill in the art would make to Masuda’s composition based on the entirety of Masuda’s teaching. Optivus Tech., Inc. v. Ion Beam Applications, S.A., 469 F.3d 978, 989–90 (Fed. Cir. 2006). Masuda also teaches that a trimellitate plasticizer having a long alkyl chain may be used in order to provide a vinyl chloride resin composition having a high coldproof property. Masuda 3:3–8. However, Masuda teaches that employment of this method reduces absorptivity of the plasticizer into the resin, thereby reducing the powder and depowdering properties. Id. at 3:8– 12. Masuda, therefore, teaches that the porosity of the resin has to be increased to improve the plasticizer absorptivity in such cases. Id. at 3:12– 14. Masuda discloses that resin porosity is related to the polymerization degree, and that higher porosities tend to be higher for higher polymerization degrees. Id. at 3:16–19. In addition, Masuda teaches an actual example employing a mixture of trimellitate plasticizers including one having a C10 alkyl group. Masuda 6, Table 2, Ex. III. Masuda teaches that a vinyl resin composition including this mixture yields acceptable depowdering property, melt property, and air bag Appeal 2018-009050 Application 12/746,126 8 expansion test, as well as good low temperature resistance (elongation after degradation) and a low fogging property. Id. at 8–9, Table 5, Ex. 6. Thus, contrary to Appellant’s teaching away argument, Masuda is not “teaching away” from the inclusion of a trimellitate plasticizer having a principle C10 alkyl chain length, but instead teaches that such a plasticizer may be used in a trimellitate plasticizer mixture, provided the average principle alkyl chain length falls in the range of 6–9 in order to get a desired balance of properties. In addition, Masuda teaches that increasing polymerization degree, which increases porosity, addresses the lower absorptivity of higher alkyl chain plasticizers. Our reviewing court has recognized that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to modify a prior art composition, much less constitute teaching away from the modified composition. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“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 reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Thus, even if a person of ordinary skill in the art would have recognized some potential downsides to longer principle alkyl chain lengths, particularly C10 alkyl chains, in a trimellitate plasticizer, that person would have weighed those downsides against the advantages taught by Masuda. Appellant does not argue that the Examiner erred in determining that Masuda suggests ratios of trimellitate plasticizers, within the claimed ranges, Appeal 2018-009050 Application 12/746,126 9 to arrive at acceptable plasticizers having an average principle alkyl chain length between 6–9, nor are we persuaded that Masuda teaches away from including, in such mixtures, a trimellitate plasticizer having a principle C10 alkyl chain length. Further, Appellant does not argue that the amount of trimellitate plasticizer having a C10 alkyl chain length recited in claim 1 is critical, provides unexpected results, or is otherwise unobvious over Masuda. In sum, a preponderance of the evidence supports the Examiner’s stated reasons for modifying Masuda’s composition, but does not support Appellant’s teaching away argument. For these reasons and those set forth in the Examiner’s Answer, we sustain the Examiner’s obviousness rejection over Masuda. Rejection 3: Obviousness over Matsumoto and Cadogan, and any of Mitsudera, Ichikawa, and Masuda The Examiner rejects all the claims on appeal under 35 U.S.C. § 103(a) as unpatentable over Matsumoto in view of Cadogan, and further in view of Mitsudera, Ichikawa, or Masuda. Ans. 9–10; see also id. at 6–8. Appellant argues the claims under this rejection as a group, focusing on the limitations of claim 1 only. In accordance with 37 C.F.R. § 41.37(c)(1)(iv), claims 3–5, 8, 10–13, and 15 stand or fall with claim 1, which we select as representative. There is no dispute that Matsumoto discloses a vinyl chloride resin composition for powder molding substantially as recited in claim 1, except for the use of a trimellitate plasticizer. Compare Ans. 6–7 with Appeal Br. 8 and Reply Br. 3–4. There is also no dispute that Cadogan teaches that mixed trimellitate plasticizers were known, including a mixture of such plasticizers Appeal 2018-009050 Application 12/746,126 10 having C8 and C10 alkyl chain lengths, and that plasticizer efficiency decreases, while high and low temperature performance improves, as the alkyl chain length increases. Compare Ans. 7–8 with Appeal Br. 8 and Reply Br. 3–4. The Examiner further finds that Cadogan teaches that these trimellitate plasticizers are known functionally equivalent plasticizers to those disclosed in Matsumoto. Ans. 7. Therefore, the Examiner concludes that it would have been obvious to substitute Cadogan’s trimellitate plasticizer mixtures for the plasticizer in Matsumoto’s vinyl chloride resin composition, and to determine the optimum ratio of plasticizers having C8 and C10 alkyl chain lengths by routine experimentation. Id. at 8. The Examiner further finds that Mitsudera discloses a similar vinyl chloride resin composition comprising trimellitate plasticizer having C8, C9, and C10 principle alkyl chain lengths in order to obtain molded products with excellent fog and cold resistance. Ans. 9. The Examiner also finds that Ichikawa discloses a similar vinyl chloride resin composition comprising a plasticizer having a molecular weight of at least 410, including trimellitate plasticizers having C8, C10, and mixed C8/C10 principle alkyl chain lengths, in order to obtain molded products with low fogging properties. Id. The Examiner additionally finds that Masuda discloses a similar vinyl chloride resin composition including a mixed alkyl chain length trimellitate plasticizer with an average principle chain length of 6–9. Id. Therefore, the Examiner further concludes that it would have been obvious to substitute any of the mixed alkyl chain length trimellitate plasticizers of Mitsudera, Ichikawa, and Masuda in Matsumoto’s composition as modified in view of Cadogan and determine the optimum ratio of this mixture by routine Appeal 2018-009050 Application 12/746,126 11 experimentation to provide the desired properties with a reasonable expectation of success. Id. at 9–10. Appellant argues that “selecting the claimed trimellitate plasticizer from an encyclopedic reference regarding plasticizers such as Cadogan would have required a great amount of trial and error or could have only been determined by impermissible hindsight.” Appeal Br. 8. Appellant contends that “even if one of ordinary skill in the art were to arrive at a trimellitate ester plasticizer from a catalog of plasticizers such as Cadogan, Appellants submit that he or she would still not arrive at the claimed feature regarding alkyl chain length.” Reply Br. 3. Appellant asserts that the cited references provide no proper reason, rationale, or motivation to select the claimed alkyl chain lengths from Cadogan. Id. Moreover, Appellant asserts that Ichikawa fails to disclose or suggest a trimellitate plasticizer having C7– C11 alkyl groups, and that Mitsudera, although disclosing a trimellitate plasticizer having C7–C10 alkyl groups, fails to disclose or suggest the ratios at which these alkyl groups are used. Appeal Br. 9. Appellant’s arguments are not persuasive of reversible error because Appellant does not assert that the Examiner erred in any of the findings underpinning the rejection nor explain in any detail why the Examiner’s articulated reasoning in support of the legal conclusion of obviousness is deficient. Initially, we do not find Appellant’s improper hindsight argument persuasive because the Examiner’s reasons for combining the teachings of Matsumoto and Cadogan are supported by the reference disclosures themselves. Here, as the Examiner explains, the skilled artisan would have understood from Cadogan that mixed trimellitate plasticizers were known alternatives to the plasticizers disclosed in Matsumoto. Although Appellant Appeal 2018-009050 Application 12/746,126 12 alleges that selecting the claimed trimellitate plasticizer from Cadogan would have required a great amount of trial and error, we disagree. As the Examiner finds, Cadogan specifically discloses a mixed trimellitate plasticizer having both C8 and C10 alkyl chain lengths. Cadogan 602, Section 2.4. Moreover, Cadogan discloses that plasticizer efficiency decreases as the alkyl chain length increases, but can be offset by increasing the amount of plasticizer. Id. at 608, Section 4.2.1. Cadogan also discloses that trimellitate plasticizers have superior high-temperature performance in terms of volatilization and degradation. Id. at 608–9, Section 4.2.2. Cadogan further discloses that low-temperature performance increases with both linearity and length of the alkyl chain. Id. at 609, Section 4.2.3; see also id. at 612, Table 2, for additional properties of the known plasticizers. These disclosures provide guidance in the selection of trimellitate plasticizers for use in Matsumoto’s vinyl chloride resin compositions. Appellant fails to address these disclosures or otherwise explain in any detail why Cadogan’s teachings would not have guided the ordinary artisan to the use of known mixed trimellitate plasticizers to provide their known benefits. In response to the Examiner’s findings that Mitsudera suggests that any ratio or mixture of trimellitate plasticizers may be used, Appellant asserts that even in view of Mitsudera, a skilled artisan would not have been able to arrive at the claimed alkyl chain length. Reply Br. 4. This argument is not persuasive because Appellant fails to explain in any detail why a skilled artisan would not have been able to arrive at the ratios of alkyl chain length for the mixed trimellitate plasticizers taught in Cadogan and Mitsudera. Appeal 2018-009050 Application 12/746,126 13 In response to the Examiner’s findings that Ichikawa discloses, as an example, trimellitate plasticizer having mixed C8/C10 principle alkyl chain lengths, Appellant merely contends that “such a plasticizer would not fall within the scope of the claimed invention in terms of the claimed alkyl chain length ratios.” Reply Br. 4. This argument is not persuasive because Appellant fails to explain in any detail why a skilled artisan would not have been able to arrive at the ratios of alkyl chain length for the mixed trimellitate plasticizers taught in Cadogan and Ichikawa. Appellant does not discuss Masuda as applied in this rejection. Accordingly, this aspect of the Examiner’s rejection remains unchallenged. Accordingly, for the reasons given above and in the Examiner’s Answer, we sustain the Examiner’s obviousness rejection over Matsumoto in view of Cadogan, and further in view of Mitsudera, Ichikawa, or Masuda. CONCLUSION The Examiner’s decision to reject claims 1, 3–5, 8, 10–13, and 15 under 35 U.S.C. § 103(a) as unpatentable over Masuda alone, or alternatively over a combination of Matsumoto, Cadogan, and any of Mitsudera, Ichikawa, and Masuda, is affirmed. However, we do not reach the merits of the Examiner’s rejection of claims 1, 3–5, 8, 10–13, and 15 under 35 U.S.C. § 103(a) as unpatentable over Matsumoto and Cadogan as this rejection is cumulative to the Examiner’s alternative rejection above. Appeal 2018-009050 Application 12/746,126 14 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5, 8, 10–13, 15 103(a) Masuda 1, 3–5, 8, 10–13, 15 1, 3–5, 8, 10–13, 15 103(a) Matsumoto, Cadogan3 1, 3–5, 8, 10–13, 15 103(a) Matsumoto, Cadogan, Mitsudera, Ichikawa, Masuda 1, 3–5, 8, 10–13, 15 Overall Outcome 1, 3–5, 8, 10–13, 15 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 3 As explained above, we do not reach this alternative obviousness rejection of claims 1, 3–5, 8, 10–13, 15, for it is merely cumulative. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching an obviousness rejection of certain claims after affirming an alternative anticipation rejection of those claims); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC’s determination based on a single dispositive issue, and not reaching other issues not decided by the lower tribunal). Copy with citationCopy as parenthetical citation