Hada, Hiroyuki et al.

Patent Trials and Appeals Board

Apr 30, 2020

12746126 - (D) (P.T.A.B. Apr. 30, 2020)

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):
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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.
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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)
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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.

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Application 12/746,126

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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
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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
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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
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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
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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,
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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
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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
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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
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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.
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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.

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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).