Ex Parte Kaimori et al

Patent Trial and Appeal Board

May 31, 2016

13203209 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/203,209 08/24/2011
20277 7590 06/02/2016
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
FIRST NAMED INVENTOR
Shingo Kaimori
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.
050395-0501 5274
EXAMINER
BROOKS,KREGGT
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
ipdocketmwe@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIN GO KAIMORI,
JUN SUGA W ARA, AKIRA MIZOGUCHI, SYOUGO ASAI,
TAKUMA YOSHISAKA, and NAOTA UENISHI
Appeal2014-007679
Application 13/203,209
Technology Center 1700
Before TERRY J. OWENS, GEORGE C. BEST, and JULIA HEANEY,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 3-5, 7, and 8 of Application
13/203,209 under 35 U.S.C. § 103(a) as obvious. Final Act. (October 10,
2013). Appellants 1 seek reversal of this rejection pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b ).
For the reasons set forth below, we AFFIRM.
1 Sumitomo Electric Industries, Ltd. and Sumitomo Electrical Printed
Circuits, Inc. are identified as the real parties in interest. Appeal Br. 2.
Appeal2014-007679
Application 13/203,209
BACKGROUND
The '209 Application describes an adhesive resin composition that
can be used in a flexible printed wiring board. Spec. ii 1. Prior art adhesives
used for this purpose typically comprised a flame retardant mixed with a
blend of a thermosetting resin (e.g., an epoxy) and a thermoplastic resin
(e.g., an acrylic resin or a polyester resin). Id. at ii 2.
Claim 1 is the '209 Application's sole independent claim and is
reproduced below:
1. An adhesive resm composition for a flexible printed
wiring board comprising:
an epoxy resm;
a thermoplastic resin;
a benzoxazine compound;
a halogen-free flame retardant; and
a curing agent, wherein:
the epoxy resin is a phosphorus-containing epoxy resin,
the thermoplastic resin contains 10% to 70% by mass of a
phosphorus-containing polyester and the thermoplastic resin
further contains a polyamide in addition to the phosphorus-
containing polyester,
the content ratio between the epoxy resin and the
thermoplastic resin (thermoplastic resin:epoxy resin) in the
adhesive composition is 3: 1 to 1 :3,
the content of the benzoxazine compound is 5 to 25 parts
by mass,
the content of the halogen-free flame retardant is 1 to 30
parts by mass per 100 parts by mass of the resins in the adhesive
resin composition, and
the phosphorus content in the solid portion of the adhesive
resin composition is 2.5% by mass or more.
Appeal Br. 11 (Claims App.).
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Appeal2014-007679
Application 13/203,209
REJECTION
Claims 1, 3-5, 7, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Arai,2 Ikuta,3 and Fujikawa4 as
evidenced by Nakanishi.5 Final Act. 2.
DISCUSSION
Appellants only present substantive arguments for the reversal of the
rejection of claim 1. See Appeal Br. 4-9. Claims 3-5, 7, and 9 are alleged
to be patentable based upon their dependence from claim 1. Id. at 9.
Accordingly, we limit our analysis and discussion to claim 1.
The Examiner found that Arai describes each limitation of claim 1
except (A) Arai does not describe an epoxy resin composition containing 5-
25 parts by mass of a benzoxazine compound, Final Act. 4, and (B) Arai
does not describe a thermoplastic resin comprising 10%-70% by mass of a
phosphorus-containing polyester or that the resin further contains a
polyamide, id.
The Examiner found that Ikuta describes an epoxy resin adhesive
composition that includes between 0.5 and 30 weight percent (based on the
weight of the resins) of a benzoxazine compound. Id. The Examiner further
found that a person of ordinary skill in the art would have used Ikuta's
2 JP 2005-053989, published March 3, 2005. We cite the machine
translation that is of record in this application.
3 JP 2001-288339, published October 16, 2001. We cite the machine
translation that is of record in this application.
4 JP 2007-254659, published October 4, 2007. We cite the machine
translation that is of record in this application.
5 US 2006/0234045 Al, published October 19, 2006.
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Appeal2014-007679
Application 13/203,209
benzoxazine compound in Arni's epoxy resin-thermoplastic polyester
composition to optimize flame retardancy. Id. at 5.
The Examiner found that Fujikawa describes a flame retardant
adhesive composition comprising a polyamide thermoplastic resin and a
phosphorus-containing polyester fire retardant resin. Id. at 4-5. The
examiner further found that Fujikawa describes the use of 37.5% by mass of
the phosphorus-containing polyester and that the polyamide resin improves
the flexibility of the adhesive composition. Id. at 5. The Examiner
determined that a person of ordinary skill in the art at the time of the
invention would have modified the composition suggested by the
combination of Arai and Ikuta by including thermoplastic polyester and
thermoplastic polyamide in amounts recited by claim 1 to provide the
resulting composition with improved flexibility while maintaining the
mechanical strength and fire resistance provided by the phosphorus-
containing polyester. Id.
Relying on these findings of fact, the Examiner concluded that the
differences between the prior art and the subject matter of claim 1, taken as a
whole, would have been obvious to a person of ordinary skill in the art at the
time of the invention. Id.
Appellants argue that the rejection of claim 1 should be reversed
because the Examiner erred by (1) combining Arai and Ikuta, Appeal Br. 4-
6 and 8-12; (2) finding that Ikuta's disclosure renders the amount of the
benzoxazine compound recited in claim 1 prima facie obvious, id. at 6-8;
(3) finding that a person of ordinary skill in the art would have been
motivated to combine the teachings of Arai and Ikuta, id. at 5-6; and
(4) finding that Fujikawa's description of a mixture of a polyamide and a
phosphorous-containing polyester rendered the corresponding limitations of
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Appeal2014-007679
Application 13/203,209
claim 1 prima facie obvious, id. at 12-13. As explained below, we are not
persuaded by these arguments. We, therefore, affirm the rejection of claims
1, 3-5, 7, and 8.
First, Appellants assert that the Examiner erred by combining Arai
and Ikuta. Appellants advance several arguments in support of this
contention. None of these arguments are persuasive.
Appellants argue that the combination of Arai and Ikuta is improper
because "Ikuta essentially discloses a technique for flame retarding an epoxy
resin composition for the resin of sealing electronic parts." Id. at 5-6 (citing
Ikuta, Abstract). This argument is not persuasive because - as Appellants
admit - Ikuta states that its compositions may be used as adhesives. Id.
(citing Ikuta ,-i 95). As prior art, the Ikuta is useful for all it contains. See In
re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) ("Chen is, like all prior art,
relevant for all it contains.").
Appellants further argue that the combination of Arai and Ikuta is
improper because "[t]he object of the present application 1s m response to a
demand that comes from the industry/market, [sic] and is different from that
of Ikuta or Arai." Appeal Br. 8-9. This argument is not persuasive because
the motivation to combine prior art descriptions in an obviousness rejection
need not be the same as the motivation that led to creation of the claimed
invention.
Second, Appellants argue that the Examiner erred by finding that a
person having ordinary skill in the art at the time of the invention would
have arrived at the claimed benzoxazine content based upon Ikuta's
disclosure. Id. at 6. This argument is not persuasive for the reasons
discussed by the Examiner. See Answer 10. Ikuta describes the use of
between 0.5 and 30 weight percent benzoxazine, which overlaps the claimed
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Appeal2014-007679
Application 13/203,209
range. Thus, the claimed range is prima facie obvious. Appellants have not
rebutted the Examiner's findings regarding this (or any other) element of
claim 1. Furthermore, benzoxazine compounds are known fire retardants.
It, therefore, would have been within the level of ordinary skill in the art to
optimize the amount ofbenzoxazine in the composition to achieve an
optimal trade-off between flame retardants and other properties of the
composition.
Third, Appellants argue that the Examiner erred by finding that a
person having ordinary skill in the art would have been motivated to
combine Arai and Ikuta at the time of the invention. Appeal Br. 5-6. As the
Examiner explained, a person of ordinary skill in the art at the time of the
invention would have been motivated to modify Arai's composition by
adding the benzoxazine compounds described in Ikuta in order to optimize
flame retardancy. Answer 5. Therefore, Appellants' argument is not
persuasive.
Fourth, Appellants argue that the Examiner erred by finding that
Fujikawa's description of a mixture of a polyamide and a phosphorous-
containing polyester rendered the corresponding limitations of claim 1 prima
facie obvious. Appeal Br. 7. In particular, Appellants argue that Fujikawa's
phosphorus-containing polyester has an average molecular weight of 2000-
20,000, while Appellants use phosphorus-containing polyester that has an
average molecular weight in excess of 20,000. Id. (citing Fujikawa ii 7 and
Spec. ii 26). This argument is not persuasive because claim 1 is silent
regarding the average molecular weight of the phosphorus-containing
polyester.
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Application 13/203,209
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1, 3-
5, 7, and 8 as unpatentable over the combination of Arai, Ikuta, and
Fujikawa, as evidenced by Nakanishi.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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