Ex Parte FUJIMOTO et al

Patent Trial and Appeal Board

Sep 26, 2018

13484514 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/484,514 05/31/2012
42798 7590 09/26/2018
FITCH, EVEN, TABIN & FLANNERY, LLP
120 South LaSalle Street, Suite 2100
Chicago, IL 60603-3406
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Daisuke FUJIMOTO
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.
20371-134924 2447
EXAMINER
FUNG, CHING-YIU
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
09/26/2018 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 DAISUKE FUJIMOTO, KUNPEI YAMADA,
NOBUYUKI OGAWA, and HIKARI MURAI 1
(Applicant: Hitachi Chemical Company, Ltd.)
Appeal2018---000360
Application 13/484,514
Technology Center 1700
Before BEYERL YA. FRANKLIN, CHRISTOPHER C. KENNEDY, and
SHELDON M. McGEE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Hitachi Chemical Company,
Ltd., of Tokyo, Japan.
Appeal2018---000360
Application 13/484,514
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 1, 2, 4--7, 16-20, and 22. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. A primer layer for plating process formed of a resin composition
for primer layer comprising (A) an aralkyl novolak epoxy resin, (B) a phenol
resin selected from a group consisting of a cresol novolak phenol resin, a
phenol novolak resin, and a bisphenol A novolak resin, and (C) a phenolic
hydroxyl group-containing polybutadiene-modified polyamide resin having
structural units represented by the following formulae (i), (ii) and (iii),
wherein a blending amount of the aralkyl novolak epoxy resin (A) is from 40
to 70 % by mass of the resin composition for primer layer, a blending
amount of the phenol resin (B) is from 0.5 to 1.5 equivalents of epoxy
groups in the aralkyl novolak epoxy resin (A), and a blending proportion of
the phenolic hydroxyl group-containing polybutadiene-modified
polyamide resin (C) in the resin composition for primer layer is 5.3 parts
by mass or more and 17 .5 parts by mass or less based on 100 parts by mass
of a total sum of the aralkyl novolak epoxy resin (A) and the phenol resin
(B):
(i)
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Application 13/484,514
(ii)
(iii)
VR'"-C-~-R .. -it g z
wherein each of a, b, c, x, y, and z represents an average degree of
polymerization; a represents an integer of from 2 to 1 O; b represents an
integer of from Oto 3; c represents an integer of from 3 to 30; when xis 1,
then (y + z) represents an integer of from 2 to 300; when y is 1, then z is 20
or more; each of R, R', and R" independently represents a divalent group
derived from an aromatic diamine or an aliphatic diamine; and each R"'
independently represents a divalent group derived from an aromatic
dicarboxylic acid, an aliphatic dicarboxylic acid, or an oligomer having a
carboxyl group at both ends thereof.
The Examiner relies on the following references as evidence of
unpatentability:
Lin
Kawai
Yamada
Endo '472 2
US 2007/0231581 Al
US 2007 /0295607 Al
US 2008/0020231 Al
WO 2010/050472 Al
Oct. 4, 2007
Dec. 27, 2007
Jan.24,2008
June 5, 2010
2 The Examiner notes on page 7 of the Answer that when relying upon WO
2010/0504 72, the disclosure of this reference is based on US
2011/0205721 (Endo '721) which is an English language equivalent of
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Appeal2018---000360
Application 13/484,514
Endo'72I
Kmnano
US 2011/0205721 Al
US 2016/0297951 Al
THE REJECTIONS
Aug. 25, 2011
Oct. 13, 2016
1. Claims 1 and 22 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claim 3 of copending Application No. 14/123,140.
2. Claims 1, 2, 4, 7, 16-20, and 22 are rejected under pre-AIA 35
U.S.C. § I03(a) as being unpatentable over Endo '721 in view of Kawai
taken in view ofKumano.
3. Claims 5 and 6 are rejected under pre-AIA 35 U.S.C.§ I03(a) as
being unpatentable over Endo in view of Kawai as applied to claim 1 above,
and further in view of Lin.
ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claims on appeal, we will
address them separately consistent with 37 C.F.R. § 4I.37(c)(l)(iv).
Upon consideration of the evidence on this record and each of the
respective positions set forth in the record, we find that the preponderance of
evidence supports the Examiner's findings and conclusion that the subject
matter of Appellants' claims is unpatentable over the applied art.
this reference. The Examiner states that the column and line numbers
cited with respect to WO 2010/0504 72 are found in US 2011/0205721
(Endo '721).
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Application 13/484,514
Accordingly, we sustain each of the Examiner's rejections under 35 U.S.C.
§ 103(a) on appeal essentially for the reasons set forth in the Final Office
Action and in the Answer, and add the following as emphasis.
Rejection 1
Copending Application No. 14/123,140 is abandoned (abandoned on
February 12, 2018). Hence, this rejection is moot.
Rejection 2
Claims 1, 2, 4, 7, 16-20, and 22 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Endo '721 in view of Kawai taken
in view ofKumano. We refer to pages 7-15 of the Answer regarding the
Examiner's position in the record for this rejection.
Appellants first argue that Kumano "does not qualify for
application in a rejection of claims under the provisions of pre-AIA
35 USC § 102." Appeal Br. 7-8. Appellants submit that reliance upon
the disclosure in Kumano beyond evidence pertaining to SN-485 cited in
paragraph [0078] of Kawai is improper.
However, we agree with the Examiner's response made on page 18
of the Answer wherein the Examiner states that Kumano is properly used
as an evidence reference, and additionally refers to MPEP 2124 stating
"references cited to show a universal fact need not be available as prior
art before applicant's filing date. In re Wilson, 311 F .2d 266 ( CCP A
1962)." No reply brief in dispute thereof has been filed.
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Application 13/484,514
Next, Appellants state that the Examiner relies on the teaching
of SN-485 in ,r [0078] of Kawai in an effort to remedy the deficiency
of Endo with respect to the claimed (B) phenolic resin. Appellants
argue that Kawai's SN-485 has an a-naphthol skeleton. Appellants
discuss several publications having examples of structures that do
not include an a-naphthol skeleton. Appeal Br. 8-12.
However, as the Examiner correctly points out, the claim
language and Appellants' Specification do not exclude the "cresol
phenol novolak resin" and/or "phenol novolak resin" from having
the presence of a-naphthol skeleton, and thus, we agree with the
Examiner that the broadly claimed "cresol novolak phenol resin"
and "phenol novolak resin" encompass the cresol novolak phenol
resin and/or the phenol novolak resin containing a-naphthol skeleton
disclosed in Kawai. Ans. 18-19. Also, the Examiner refers to
several references evidencing that SN-485 falls within the broadly
claimed "cresol phenol novalak resin" and/or "phenol novolak
resin". Ans. 19-20.
Next, on pages 12-17 of the Appeal Brief, Appellants discuss
alleged unexpectedly superior results with regard to the subject matter of
claims 1, 4, 5, 7, and 22. We are unpersuaded by such rebuttal evidence
for the reasons provided by the Examiner on pages 20-28 of the Answer.
Therein, the Examiner sufficiently explains how the data is not
commensurate in scope with the claims. We note that Appellants can
rebut a prima facie case of obviousness by showing "unexpected results,"
i.e., showing that the claimed invention possesses a superior property or
advantage that a person of ordinary skill in the art would have found
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Application 13/484,514
surprising or unexpected. See In re Geisler, 116 F.3d 1465, 1469 (Fed.
Cir.1997) (quoting In re Soni, 54 F.3d 746,750 (Fed. Cir. 1995). However,
the burden rests with Appellants to establish, inter alia, (I) that the
comparisons are to the disclosure of the closest prior art, and (2) that the
supplied evidentiary showing is commensurate in scope with the claimed
subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Appellants have not carried that burden in this case.
In view of the above, we affirm Rejection 2
Rejection 3
We affirm this rejection for the reasons that we affirm Rejection 2
because Appellants do separately argue this rejection. Appeal Br. 17-18.
DECISION
Rejection 1 is moot.
Rejections 2 and 3 are affirmed.
TIME PERIOD
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).
ORDER
AFFIRMED
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