Ex Parte HAMANAKA

Patent Trial and Appeal Board

Nov 9, 2018

14771595 (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/771,595 08/31/2015
23474 7590 11/14/2018
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
FIRST NAMED INVENTOR
Hiroyoshi HAMANAKA
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.
4700.P0408US 9443
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
11/14/2018 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):
DOCKET@FL YNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROYOSHI HAMANAKA
Appeal 2018-007848
Application 14/771,595
Technology Center 1700
Before JAMES C. HOUSEL, A VEL YN M. ROSS, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claim 1 under 35 U.S.C. § 102(a)(l) as anticipated
by Hamanaka. 3 We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our decision refers to the substitute Specification ("Spec.") filed August
31, 2015, the Declaration under 37 C.F.R. § 1.132 ofHiroyoshi Hamanaka
("Hamanaka Declaration" or "Deel.") filed November 6, 2017, Appellant's
Appeal Brief ("Br.") filed February 23, 2018, and the Examiner's Answer
("Ans.") dated May 25, 2018.
2 Appellant is the Applicant, Boron Laboratory Co., Ltd., which is identified
in the Appeal Brief as the real party in interest (Br. 1 ).
3 JP 2011-079918 A, published April 21, 2011.
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Application 14/771,595
STATEMENT OF THE CASE
The invention relates to antistatic agents for insulating polymer
materials for molded articles (Spec. ,r 1 ). According to Appellant, the
antistatic agents include a donor-acceptor type molecular compound
obtained by melt-mixing and reacting a semi-polar organoboron compound
( donor component) with a basic nitrogen compound ( acceptor component)
(id. ,I 10).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is the only claim before us and is illustrative of the subject matter on
appeal. The limitation at issue is italicized.
1. An antistatic agent for insulating polymer materials,
characterized in that the antistatic agent is composed of a
donor-acceptor type molecular compound represented by the
general formula (1) below and obtained by mixing, melting
and reacting a donor component semi-polar organoboron
compound of the upper part in the general formula ( 1) below
with an acceptor component basic nitrogen compound of the
lower part in the general formula (1) below,
Chemical Formula 1
CfuO "-<-> /OfuC
! B <+) I
Rl-CHQ/ ~OHC-R2
<> +H ~,...
•
R3,
N-R5~ N-C-(ClhheCHs
R4/ I I!
H 0
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Application 14/771,595
wherein RI and R2 are each independently CH3(CH2)16-
CO-OCH2 or HOCH2 and at least one thereof is CH3(CH2)16-
CO-OCH2; R3 and R4 are each independently CH3, C2Hs,
HOCH2, HOC2H4, or HOCH2CH(CH3); and R5 is C2H4 or
C3H6.
ANALYSIS
After review of the opposing positions articulated by Appellant and
the Examiner, the applied prior art, and Appellant's claims and Specification
disclosures, we determine that Appellant's arguments are insufficient to
identify reversible error in the Examiner's anticipation rejection. In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the stated
rejection for substantially the fact findings and the reasons set forth by the
Examiner in the Examiner's Answer. We offer the following for emphasis
only.
The Examiner finds Hamanaka discloses an antistatic agent for non-
conductive or insulating polymer materials comprising a donor-acceptor
hybrid system obtained by mixing, melting and reacting a half-polarity
organic compound, i.e., a semi-polar organoboron compound having the
structure as shown in formula (2):
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Application 14/771,595
and a basic organic nitrogen compound having the structure as shown in
formula 1 7:
wherein the resulting antistatic agent is within the scope of the antistatic
agent recited in claim 1 (Ans. 3--4).
Appellant argues that, although both Hamanaka and claim 1 use a
semi-polar organoboron compound as a donor component and a basic
nitrogen compound as an acceptor component, the antistatic agents of
Hamanaka and claim 1 are different (Br. 4--5). Appellant urges that
Hamanaka's agent is not a reaction product of these two components
whereas claim 1 recites that these components are reacted (id.). In
particular, Appellant contends that Hamanaka simply separately mixes these
two components into the insulating polymer material without reacting them
in advance (id. at 5, 7). Appellant states that a reaction leading to the
formation of the claimed compound does not occur just by melting the two
components separately and mixing them (id. at 5). Appellant cites, for the
first time, an article published by the Inventor which Appellant contends
proves that after the two components are melted, mixed at 7 0-100 ° C,
immediately cooled and solidified, a molecular compound results, not a
mixture of the two components (Br. 9-10). As a result, Appellant argues
that the agent of formula (1) of claim 1 will not be formed in Hamanaka
(id.).
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Application 14/771,595
Appellant asserts that this position is also supported by Specification
paragraph 32, which relates to Hamanaka's Example 17, and paragraphs 58-
63 for Appellant's Comparative Example 19, which again corresponds to
Hamanaka's Example 17 (Br. 5). Specifically, Appellant asserts that
comparing Figures 2 and 3 shows that the mixed composition is not a donor-
acceptor molecular compound (id. at 6). Also, Appellant asserts that
Comparative Example 19 clearly shows that the specific surface resistance is
significantly higher than for the present invention and the charge attenuation
rate is extremely low (id.). Appellant further asserts that the claimed
antistatic agent is a reaction product, not a mixed composition, obtained by
stirring and mixing while heating, and heating and stirring are stopped when
they have dissolved in each other, followed by cooling and solidification (id.
at 5---6, citing Spec. ,r,r 38-57).
In addition, though Appellant concedes that Hamanaka discloses that
it is possible to melt-mix the two components, Appellant asserts that the
resulting product is a mixed crystal in which the two components exist
separately and do not react together (Br. 6-7). Appellant argues that while
Hamanaka's antistatic agent cannot be crystallized, the donor-acceptor type
molecular compound of claim 1 can be crystallized to maintain the structure
stably (id.). Appellant asserts that the Inventor declares this to be true (id. at
11 ).
Appellant also urges that the Hamanaka Declaration conclusively
proves that the donor-acceptor type compound cannot be obtained by merely
melt-mixing the two components together (Br. 13). Instead, Appellant
contends that "[ t ]he special heating and treating conditions in order to cause
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Application 14/771,595
a reaction must be present ... for the donor-acceptor type molecular
compound to be formed" (id.).
Appellant's arguments are not persuasive of reversible error in the
Examiner's finding of anticipation by Hamanaka. As the Examiner notes
(Ans. 6), claim 1 fails to recite any special heating and treating conditions
different from those taught in Hamanaka that would produce an antistatic
agent that is different from Hamanaka. Nor does claim 1 recite any specific
surface resistance or charge attenuation rate for the recited antistatic agent
(id. at 7). Also, claim 1 does not recite that the antistatic agent is crystalline.
Further, even if Hamanaka's product is a mixed crystal, as the Examiner also
notes (Ans. 7-8), Appellant fails to evince that a mixed crystal is distinct
from the claimed antistatic agent either by an evidentiary showing or by
persuasive technical reasoning. Therefore, Appellant fails to distinguish the
claimed antistatic agent from Hamanaka's on the basis of these features
because they are simply not limitations of the claimed agent. See In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (rejecting appellants'
nonobviousness argument as based on limitation not recited in claim); In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) ("Many of appellant's arguments
fail from the outset because, as the solicitor has pointed out, they are not
based on limitations appearing in the claims.").
Appellant also fails to rebut the Examiner's findings that Hamanaka
would necessarily produce at least some of the reaction product between the
donor and acceptor components. The Examiner responds, "given that the
components are melt-mixed, there will necessarily be a reaction leading to at
least some formation of the donor-acceptor type molecular compound"
absent evidence to the contrary (Ans. 5). The Examiner finds, because
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Appellant argues that the "molecular compound will be almost nonexistent"
and discloses that "there is almost no formation of the donor-acceptor type
molecular compound," that Appellant supports the Examiner's position (id.).
In addition, the Examiner finds that Appellant fails to show that Hamanaka
has no formation of the molecular compound (id.). Though the Examiner
notes Appellant compares IR spectrum of the present invention, i.e., Figures
1 and 2, with Hamanaka's Example 17, i.e., Figure 3, the Examiner finds
such evidence insufficient to establish that there is no formation of the
molecular compound in Hamanaka (id. at 5---6).
Hamanaka teaches that the antistatic agent may be obtained by "melt
mixing" the donor and acceptor components before they are added to the
insulating polymer material (Hamanaka ,r,r 20, 31, 35, 45, 71). Thus,
Hamanaka supports the Examiner's findings. Further, as we previously
noted, although claim 1 recites "mixing, melting and reacting," this claim
fails to recite any specific conditions that distinguish the claimed process
from Hamanaka's melt mixing process. Nor has Appellant directed our
attention to any disclosure providing a clear distinction between "mixing,
melting and reacting" of claim 1 and Hamanaka's "melt mixing."
Turning to Appellant's IR absorption spectra of Figures 1-3,
Appellant contends that the Specification and Declaration confirm that the
molecular compound represents, and Comparative Example 19 does not
represent, the reaction of the donor and acceptor compounds (Br. 5---6). The
Specification discloses the absence of a peak at 835 cm-1 in the IR spectrum
for the molecular compound (Fig. 2) and the presence of this peak in the IR
spectrum for Comparative Example 19 (Spec. i-f28).
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However, this evidence is not persuasive that Hamanaka fails to teach
a molecular compound within the scope of claim 1. First, Comparative
Example 19 is disclosed to correspond to Hamanaka's Example 17, wherein
the donor and acceptor components are melt-mixed into a low-density
polyethylene ( compare Spec. ,r 46 with Hamanaka ,r 63). This comparison
does not address the previously discussed alternative teaching in Hamanaka
of melt-mixing the donor and acceptor components prior to mixing into the
insulating polymer material.
Second, the IR spectra of Figure 3 represents the product of melt
mixing the donor compound, the acceptor compound, and the low-density
polyethylene (Spec. ,r,r 12, 46). On the other hand, the IR spectra of Figure
2 represents the product of melt mixing only the donor and acceptor
compounds (id. ,r 12, 27-28). Appellant and Declarant fail to direct our
attention to any explanation as to what affect the low-density polyethylene
has on the IR spectra. Thus, any differences between Figures 2 and 3 cannot
be reliably parsed between the presence of a molecular reaction product
between the donor and acceptor compounds and the low-density
polyethylene.
Third, the IR spectra of Figures 2 and 3 both differ significantly from
the IR spectrum for the donor component alone of Figure 1. Yet both share
a similar shift in the peak at 3300 cm-1 which Appellant discloses is a
confirmation "that intermolecular forces are acting between the semi-polar
organoboron compound moiety and the tertiary amine moiety" (Spec. ,r 28).
Thus, at least based on the presence of a shift in the peak at 3300 cm-1, there
is support for concluding that the molecular reaction product between the
donor and acceptor compounds is present in Hamanaka's Example 17.
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Turning to the Hamanaka Declaration, 4 we note the IR spectrum of
Figure 4 (Deel. 7) also includes a shift in the peak at 3300 cm-1. Declarant
notes that the Figure 4 shift, at 3312 cm-1, is nearly identical to that of Figure
2, representing the acceptor compound only, whereas the Figure 3 shift, at
3316 cm-1, differs slightly from that of Figure 2 (id. at 8). Declarant
concludes that the reason for this difference in shift "is that there is a dipole-
dipole interaction working between a bond formed through the formation of
the molecular compound . . . and the amide bond of the acceptor
component" (id.). However, Declarant fails to provide a persuasive
explanation supporting this conclusion, especially considering that the shift
is so slight and both Experiments 3 and 4 entail melt mixing of the two
compounds alone. Further, Appellant fails to explain why the melt mixing
conditions in each experiment were selected. For example, Declarant fails to
explain why the melt-mixing for Experiment 3 involved mixing first,
followed by melting at 70-80 °C, then stir-mixing for an hour at 80 °C,
followed by cooling and solidification, while the melt-mixing for
Experiment 4 involved separately melting the two compounds at different
temperatures, then mixing (no time period given) without stir-mixing for an
hour at 80 °C, followed by cooling and solidifying (see Deel. 2 and 3).
Claim 1 does not recite any particular order for mixing, melting and reacting
the two compounds, nor any particular conditions for these steps. In
4 We note that the Declaration improperly includes statements by two non-
declarant individuals, Takeo Suzuki and Chisato Obana, regarding
preparation of additional test data (Deel. 1, "I, Takeo SUZUKI and Chisato
OBANA, both employed at Y okozeki Oil & Fat Industries Co., Ltd. have
prepared additional test data ... "). Notwithstanding this issue, we treat the
declaration as if Declarant had direct knowledge of the experiments
described in the Declaration.
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addition, we note that Hamanaka appears, in one example (Hamanaka ,r 63),
to suggest melt mixing at 120 °C for four hours, which is higher than the 70-
80 °C used in Experiment 3 and the 80-90 °C disclosed in Examples 2 and 3,
paragraphs 29 and 30 of the Specification. Appellant does not direct our
attention to any disclosure setting forth that the melt-mixing conditions are
critical to the production of the antistatic agent of claim 1, nor do we find
any. Therefore, the Hamanaka Declaration fails to distinguish the antistatic
agent of claim 1 from that of Hamanaka.
Appellant next argues that Hamanaka does not suggest the donor and
acceptor components of claim 1 (Br. 9). Appellant contends that
Hamanaka's donor component is a linear saturated hydrocarbon group of 11
to 22 carbon atoms and is not limited to those having 17 carbon atoms (id.).
Moreover, Appellant contends that Hamanaka fails to use a glycerol triester
as the structural skeleton of the donor (sic, acceptor) component (id.).
Appellant also contends that Hamanaka's acceptor component may be free
of amide bonds, the linear saturated hydrocarbon groups may have 11 to 22
carbon atoms, and the carbon chains are not limited to those having 17
carbon atoms (id.).
This argument also is not persuasive of reversible error. Although
Hamanaka's donor component has a linear saturated hydrocarbon group of
11 to 22 carbon atoms, Hamanaka specifically teaches that the donor
component may be limited to a 17 carbon atom group as represented by
formula ( 17), which is one of the species of the genus of donor components
recited in claim 1 (Hamanaka ,r 29). Moreover, Hamanaka teaches an
acceptor component, formula (2), that is a species of the genus of acceptor
components recited in claim 1 (id. ,r 12). As such, Appellant fails to identify
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reversible error in the Examiner's finding that Hamanaka teaches donor and
acceptor compounds within the scope of claim 1.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Examiner's Answer, the decision of the Examiner rejecting claim 1
under 35 U.S.C. § 102(a)(l) as anticipated by Hamanaka 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 ).
AFFIRMED
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