MORI, Yoko et al.Download PDFPatent Trials and Appeals BoardOct 30, 201915108191 - (D) (P.T.A.B. Oct. 30, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/108,191 06/24/2016 Yoko MORI 22850 7590 11/18/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 472962US99PCT 8376 EXAMINER BROWN, COURTNEY A ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 11/18/2019 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): patentdocket@oblon.com OBLONPAT@OBLON.COM iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOKO MORI and MASAKI KA TO Appeal2018-008471 Application 15/108, 191 Technology Center 1600 Before DONALD E. ADAMS, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. KATZ, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review,2 under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1-7. (Appeal Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word "Appellant" as defined in 37 C.F.R. § 1.42. Appellant identifies the real party-in-interest as Kuraray Co., Ltd. of Okayama, Japan. ( Appeal Br. 1.) 2 We consider the Final Office Action issued June 5, 2017 ("Final Act."), the Appeal Brief filed March 27, 2018 ("Appeal Br."), the Examiner's Answer issued on July 12, 2018 ("Ans."), the Reply Brief filed August 23, 2018 Appeal2018-008471 Application 15/108, 191 The Examiner rejected Appellant's claims 1-7 under either 35 U.S.C. § 102(a)(2) or, alternatively, under§ 103(a) over Hirotoshi. 3 (See Final Act. 2---6.) Appellant's Specification is directed to water-soluble film containing a modified polyvinyl alcohol ("PV A") that can be used to package hazardous chemicals. (Specification ("Spec.") ,r,r 1-3.) The film reportedly allows one to prepare the chemical without touching it by throwing a package made of the film and containing the chemical into water. (See id.) Appellant's claim 1 recites4: A modified polyvinyl alcohol, comprising a (meth)acrylamide monomer unit having an ionic group, wherein the modified polyvinyl alcohol has a degree of saponification of from 50 to 99.99 mol% and a viscosity-average degree of polymerization of from 200 to 5000 and satisfies formulae (1) to (3): 0.8 < (Mwuv/MwRr) < 1.3 (1) 1 < (Mwuv/Mnuv) < 7 (2) 0.03 < A2so < 0.5 (3) Mwuv: weight-average molecular weight of the modified polyvinyl alcohol measured by an absorptiometer (measurement wavelength of 280 nm) in gel permeation chromatographic measurement of the modified polyvinyl alcohol after heating at 120°c for 3 hours, ("Reply Br.") and the oral argument held on October 2, 2019, in reaching our decision. 3 Hirotoshi, JPH07118407 A, published May 9, 1995 (English Translation submitted November 4, 2016). 4 Claim 1 has been modified by adding spacing to separate elements of the claim. 2 Appeal2018-008471 Application 15/108, 191 MwRr: weight-average molecular weight of the modified polyvinyl alcohol measured by a differential refractive index detector in gel permeation chromatographic measurement of the modified polyvinyl alcohol after heating at 120°C for 3 hours, Mnuv: number-average molecular weight of the modified polyvinyl alcohol measured by an absorptiometer (measurement wavelength of 280 nm) in gel permeation chromatographic measurement of the modified polyvinyl alcohol after heating at 120°C for 3 hours, A2so: absorbance ( optical path length of 10 mm, measurement wavelength of 280 nm) of a l mass% aqueous solution of the modified polyvinyl alcohol after heating at 120°c for 3 hours. (Appeal Br. 11.) The modified PV A of claim 1 has a (meth)acrylamide monomer unit with an ionic group. (See id.) The modified PV A is also limited by at least five additional characteristics: (i) having a degree of saponification of from 50 to 99.99 mol%; (ii) having a viscosity-average degree of polymerization of from 200 to 5000; (iii) satisfying formula (1) 0.8 < (Mwuv/MwRr) < 1.3; (iv) satisfying formula (2) 1 < (Mwuv/Mnuv) < 7; and (v) satisfying formula (3) 0.03 < A2so < 0.5. (See id.) Findings of Fact 1. Hirotoshi teaches a modified PV A with a 2- acrylamide-2- methylpropanesulfonic acid unit for packaging agrochemicals that is flexible, tough, and highly soluble in water. (See Hirotoshi abstract; see Final Act. 4---6.) 2. Hirotoshi teaches PV A with a saponification degree of the modified PVA is usually 40 to 100 mol%, preferably 60 to 100 mol%, more preferably 70 to 99.5 mol%. (Hirotoshi ,r 11; Final Act. 5---6.) 3. Hirotoshi teaches PV A with a viscosity-average degree of polymerization of 300 to 10,000 and more preferably 500 to 4000. (See id.) 3 Appeal2018-008471 Application 15/108, 191 Analysis As the Examiner finds, and Appellant does not dispute, Hirotoshi teaches a modified PV A polyvinyl alcohol, comprising a (meth)acrylamide monomer unit having an ionic group with the claimed degree of saponification and the claimed viscosity-average degree of polymerization. (See Final Act. 4---6.) The Examiner finds further that the modified polyvinyl alcohol of Hirotoshi satisfies formulas (1 }-(3) of instant claim 1 because it has the same components as the claimed compound and therefore would possess the same properties, including the properties characterized in formulas ( 1) through (3) of Appellant's claim 1. (See Final Act. 6.) The Examiner cites In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990), which provides that where there is apparent identity between a claimed compound and a compound in the prior art, an applicant is required to distinguish claimed compounds from the prior art. (See Final Act. 6.) Appellant argues that the Examiner erred because the modified PV A of Hirotoshi fails to meet the limitations of claim 1, particularly the requirements of formulas (1) and (2) recited in claim 1. (See Appeal Br. 5- 6.) In support, Appellant presents the declaration of Shinsuke Nii, submitted under 37 C.F.R. § 1.132 ("Nii Declaration"). Appellant argues that "[t]he Nii Declaration repeats the inventive example (Example 1) of the Hirotoshi disclosure and characterizes the Hirotoshi polymer according to the properties embodied in formulas (1)-(3) of present Claim 1." (Appeal Br. 5.) Dr. Nii states that "[a]lthough detailed polymerization conditions and saponification conditions are not described in Hirotoshi, Kuraray, who is the same applicant as Hirotoshi reference, reproduces the conditions at that 4 Appeal2018-008471 Application 15/108, 191 time." (Nii Declaration 2.) Thus, although Dr. Nii states that the conditions used in Hirotoshi were used to reproduce Example 1, he admits that those conditions are not provided in Hirotoshi. Dr. Nii seems to imply that because Kuraray is the same entity named on both the Hirotoshi Japanese application and the instant application and is also Dr. Nii' s employer (see id. at 1 ), Dr. Nii knew that the same procedure was used to make modified PVA. 5 (See id. at 2.) Appellant does not direct us to any evidence of the procedures or conditions used in Hirotoshi and our review of the English translation of Hirotoshi fails to reveal such information. Thus, we have no way to confirm that the conditions used to make the compound analyzed in Table X are the same as used in Hirotoshi. Nevertheless, Dr. Nii testifies that a modified PV A having a viscosity average degree of polymerization (1720) and a degree of saponification (98 mol %) within the claimed ranges was obtained. (Nii Declaration 2.) Dr. Nii testifies further that the compound fails to meet both formulas (1) and (2). (See id. at 2-3.) Specifically, Dr. Nii presents Table X, which is reproduced below: 5 To the extent we understand Dr. Nii's statement, he did not reproduce Hirotoshi' s Example or make the compound reported in Table X. Rather it was made by someone else employed by Kuraray. 5 Appeal2018-008471 Application 15/108, 191 (Id. at 3.) Because Table X reports the value of fornmla (1) to be 1.36 and the value of formula (2) to be 7.3, Dr. Nii concludes: As shown in Table X, the above objective [to demonstrate that a vinyl alcohol-based copolymer described in Hirotoshi does not satisfy any one of formulas (1) to (3)] has been proven, and thus it has been clarified that the vinyl alcohol-based copolymer obtained in example 1 of Hirotoshi does not satisfy the requirements of the formulas (1) and (2) of present claim 1 of the present application. (Id.) Although we cannot verify that Dr. Nii reproduced the results that would be obtained from the compounds taught in Hirotoshi, we credit Dr. Nii' s testimony as evidence to the extent that it shows at least one compound having a degree of saponification and polymerization within the scope recited in claim 1 does not meet the requirements of both formulas ( 1) and (2). 6 6 We note that Dr. Nii reports the values of formulas (1) and (2) with an extra decimal place than is recited in claim 1. That is, formula ( 1) is recited as a ratio greater than or equal to "0.8" and less than or equal to "1.3" in claim 1, but Dr. Nii reports the value of formula (1) in Table X as "1.36." (Nii Declaration 2.) Similarly, formula 2 is recited as a ratio greater than or equal to (1) and less than or equal to "7" in claim 1, but Dr. Nii reports the value of formula (2) as "7.3." (Id.) Dr. Nii does not explain and Appellant does not direct us to other evidence showing how one of ordinary skill in the art would interpret the results in Table X according to the ranges recited in claim 1. In the absence of evidence to the contrary, we assume that an ordinarily skilled artisan would round the values reported in Table X to the nearest larger or smaller decimal place, as appropriate. Therefore, we assume, absent evidence to the contrary, that one of ordinary skill in the art would round the value for formula (1) in Table X to "1.4" and the value for formula (2) in Table X to "7." If this is correct, the modified PVA produced by Dr. Nii fails to satisfy the requirements of claim 1 only because the value for formula ( 1) is higher by a factor of O .1. 6 Appeal2018-008471 Application 15/108, 191 The declaration shows that the degree of saponification and polymerization recited in Appellant's claim 1 does not necessarily produce a modified PVA meeting the requirements of both formulas (1) and (2). Thus, these requirements are not inherent properties of modified PV As with a degree of saponification and polymerization recited in claim 1. See Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268---69 (Fed. Cir. 1991) ( to establish inherency, the extrinsic evidence "must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill .... Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient."). Accordingly, we reverse the Examiner's rejection of claim 1 as being anticipated. The Examiner also rejected Appellant's claims as being obvious over Hirotoshi. (See Final Act. 3.) The Examiner fails, though, to provide a basis why one of ordinary skill in the art would have modified the compound taught in Hirotoshi to obtain the claimed compound. The analysis of obviousness may take into account factors such as demands in the market place or design community known to ordinary skilled artisans or the background knowledge in the art, but "this analysis should be made explicit." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). The Examiner fails to provide this analysis, asserting only that a composition that consists of the same components will possess the same properties and therefore lead to identical, desired results because products of identical chemical composition cannot have mutually exclusive properties. (See Ans. 7 Appeal2018-008471 Application 15/108, 191 11.) Thus, the Examiner's rejection under 35 U.S.C. § 103 is based on the assertion that the modified PVA of Hirotoshi inherently satisfy each of formulas (1 }-3). As explained above, we are not persuaded that compounds with the characteristics taught in Hirotoshi necessarily satisfy formula ( 1 ). Because the Examiner fails to provide any basis why one of ordinary skill in the art would modify the teachings of Hirotoshi to achieve a compound meeting this and the other limitations of claim 1, we are not persuaded that claim 1 is obvious under 35 U.S.C. § 103. Accordingly, we reverse the Examiner's rejection of claim 1 as being obvious. Because claims 2-7 ultimately depend on claim 1, we reverse the Examiner's rejection of those claims as being anticipated or obvious, as well. Conclusion Upon consideration of the record and for the reasons given, we reverse the Examiner's rejections. In summary: 1-7 102/103 Hirotoshi 1-7 REVERSED 8 Copy with citationCopy as parenthetical citation