Ex Parte Iwamoto et al

Patent Trial and Appeal Board

Oct 18, 2017

14098037 (P.T.A.B. Oct. 18, 2017)

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.
14/098,037 12/05/2013 Tatsuya Iwamoto MIY-0348/CON 3872
74384 7590
Cheng Law Group, PLLC
1133 13th St. N.W.
Suite C2
Washington, DC 20005
EXAMINER
ROBINSON, ELIZABETH A
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
10/18/2017 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 TATSUYAIWAMOTO and KOHEI KANI
Appeal 2017-001430
Application 14/098,0371
Technology Center 1700
Before GEORGE C. BEST, AVELYN M. ROSS, and BRIAN D. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3, 6, 7, 9, 10, and 12—20. We have jurisdiction.
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the applicant, Sekisui Chemical Co., Ltd, which, according to
the Appeal Brief, is also the real party in interest. Appeal Br. 2.
Appeal 2017-001430
Application 14/098,037
STATEMENT OF THE CASE2
Appellant describes the invention as relating to interlayer film for
laminated glass with good sound insulation. Spec. 1 6. Claim 1, reproduced
below with emphases added to key recitations, is the only independent claim
on appeal and is illustrative of the claimed subject matter:
1. An interlayer film for a laminated glass, comprising
a first layer that contains a polyvinyl acetal resin and a
plasticizer,
a second layer that contains a polyvinyl acetal resin and a
plasticizer and is laminated on one face of the first layer, and
a third layer that contains a polyvinyl acetal resin and a
plasticizer and is laminated on the other face of the first layer,
wherein the polyvinyl acetal resin in the first layer has a
degree of acetylation of 8 mol% or higher or the polyvinyl acetal
resin in the first layer has a degree of acetylation of lower than 8
mol% and a degree of acetalization of 60 mol% or higher,
wherein the plasticizer in each of the first layer, the second
layer and the third layer includes an organic ester plasticizer,
wherein the first layer arranged between the second layer
and the third layer has 50 parts by weight or more of the
plasticizer in the first layer for each 100 parts by weight by
weight of the polyvinyl acetal resin in the first layer, and
wherein in the case of measuring viscoelasticity of a
resin film formed from the first layer, the resin film, having
a glass transition temperature of Tg(°C), has ml elastic
modulus of G'(Tg + 80) at (Tg + 80)°C and an elastic modulus
of G’(Tg + 30) at (Tg + 30)°C, and provides a ratio (G’(Tg +
80)/G’(Tg + 30)) of 0.65 or higher.
Appeal Br. 18 (Claims App’x).
2 In this opinion, we refer to the Final Office Action dated November 9,
2015 (“Final Act.”), the Appeal Brief filed May 10, 2016 (“Appeal Br.”), the
Examiner’s Answer dated September 7, 2016 (“Ans.”), and the Reply Brief
filed November 4, 2016 (“Reply Br.”).
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Application 14/098,037
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Wiehe et al.
(hereinafter “Wiehe”)
Mont et al.
(hereinafter “Mont”)
Miyai
Ueda
US 2,229,781 Jan. 28, 1941
US 4,027,069 May 31,1977
US 2009/0294212 Al Dec. 3, 2009
JP 11-255827 A Sep. 21, 1999
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 3, 9, 10, 12—15, 19, and 20 under 35 U.S.C.
§ 103 as unpatentable over Miyai. Final Act. 2.
Rejection 2. Claims 6 and 7 under 35 U.S.C. § 103 as unpatentable
over Miyai in view of Ueda. Id. at 4.
Rejection 3. Claim 16 under 35 U.S.C. § 103 as unpatentable over
Miyai in view of Wiehe. Id.
Rejection 4. Claims 17 and 18 under 35 U.S.C. § 103 as unpatentable
over Miyai in view of Mont. Id. at 5.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellant and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
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the evidence presented in this Appeal and each of Appellant’s arguments, we
are not persuaded that Appellant identifies reversible error. Thus, we affirm
the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Appellant argue all rejections and all claims as a group. See Appeal
Br. 13. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(l)(iv) (2013), we limit our discussion to claim 1, and all other
claims on appeal stand or fall together with claim 1.
The Examiner finds that Miyai teaches the layers recited by claim 1
and teaches property ranges overlapping those recited by claim 1. Final Act.
2—3 (providing citations to Miyai). The Examiner finds that Miyai does not
explicitly disclose the elastic modulus ratio recited in claim 1. Id. at 3. The
Examiner finds, however, that Miyai teaches identical resins and concludes
that “it would have been obvious to one of ordinary skill in the art at the
time of the invention that the teachings of Miyai ’212 encompass resins that
would meet the claimed ratio and elastic modulus values.” Id.
Appellant argues that Miyai does not teach the claimed ratio of 0.65
or higher. Appeal Br. 8. Our reviewing court has held, however, that where
“the claimed and prior art products are identical or substantially identical, or
are produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.” In re Best,
562 F.2d 1252, 1256 (CCPA 1977). Here, the preponderance of the
evidence supports the Examiner’s finding that the Miyai resins are identical
or substantially identical to those within the scope of claim 1, and Appellant
makes no persuasive argument to the contrary. Accordingly, the burden
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shifts to Appellant to prove that the Miyai product does not necessarily or
inherently possess the recited ratio characteristic. Id.
Attempting to meet this burden, Appellant cites Comparative
Examples 1—12 of the Specification. Appeal Br. 8. In particular, Appellant
argues that despite (1) being arranged between a second and third layer,
(2) having 50 parts by weight or more of plasticizer in the first layer for each
100 parts by weight of polyvinyl acetal resin in the first layer, and
(3) containing polyvinyl acetal resin meeting claim 1 ’s degree of
acetalization requirements, the Comparative Examples do not have the
recited ratio. Appeal Br. 9. The Examiner, however, finds that Miyai
teaches polymerization of the vinyl alcohol of more than 3000 and finds that
none of the Comparative Examples have polymerization of more than 3000.
Ans. 3; see also Miyai 127 (teaching upper polymerization limit of 5000).
Meanwhile, most of Appellant’s successful examples have polymerization
above 3000. Spec. Tables 1—5. The Examiner thus correctly determines that
Appellant has not met its burden under Best to establish that products within
the scope of Miyai’s teachings would not meet the recitations of claim 1.
Ans. 3.
Appellant also argues that Miyai does not recognize the criticality of
claim 1 ’s recitations. Appeal Br. 9. The Examiner correctly explains,
however, that recognition of another advantage that would flow naturally
from following the prior art cannot be the basis of patentability when the
differences between the prior art and claim recitations would otherwise be
obvious. Ex parte Obiaya, 227 U.S.P.Q. 58, 60 (BPAI July 23, 1985).
Appellant also argues that the bubble suppression is an unexpected
result as compared to the foam suppression of Miyai. Appeal Br. 9—13. A
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party asserting unexpected results as evidence of nonobviousness has the
burden of proving that the results are unexpected. In re Geisler, 116 F.3d
1465, 1469-70 (Fed. Cir. 1997). The evidence of unexpected results also
must also be reasonably commensurate with the scope of the claims. In re
Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003) (explaining that
applicant may overcome a prima facie case of obviousness by showing
unexpected results but the showing of unexpected results “must be
commensurate in scope with the claims which the evidence is offered to
support”) (internal quotes and citation omitted). “If an applicant
demonstrates that an embodiment has an unexpected result and provides an
adequate basis to support the conclusion that other embodiments falling
within the claim will behave in the same manner, this will generally
establish that the evidence is commensurate with scope of the claims.” In re
Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). We have carefully
considered Appellant’s evidence and arguments, but the proffered evidence
is ultimately unpersuasive.
In particular, even setting aside the issue of whether, as Appellant
urges, a distinction exists between bubble suppression and foam suppression
(see, e.g., Reply Br. 4), we agree with the Examiner that Appellant’s
proffered evidence is not commensurate with the scope of claim 1. Ans. 4.
Claim 1, for example, broadly permits any polyvinyl acetal resin for its
second and third layers and permits any polyvinyl acetal resin subject to
certain parameters for its first layer. Appeal Br. 18 (Claims App’x). Claim
1 also permits any “organic ester plasticizer.” Id. In contrast, Appellant’s
examples only use polyvinyl butyral resin for its layers (a subset of possible
polyvinyl acetal resins) and only use triethylene glycol di-2-ethylhexanoate
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(3GO) or glycol di-2-ethylbutyrate (3GH) as the plasticizer. Spec. Tables 1—
5; see also id. at 113, 53 (defining 3GO and 3GH). Appellant does not
provide an adequate basis to support a determination that other embodiments
falling within the scope of the claim (i.e., using other polyvinyl acetal resins
or using other organic ester plasticizers) will behave in the same manner.
Accordingly, Appellant does not meet the burden of providing unexpected
results commensurate with the scope of claim 1.
Because Appellant does not identify reversible error, we sustain the
Examiner’s rejections.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims 1,
3, 6, 7, 9, 10, and 12-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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