Ex Parte Kitahara et al

Patent Trial and Appeal Board

Mar 31, 2016

12223990 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/223,990 04/09/2010
127226 7590 04/04/2016
Birch, Stewart, Kolasch & Birch, LLP
P.O. Box 747
Falls Church, VA 22040-0747
FIRST NAMED INVENTOR
Shizuo Kitahara
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.
5522-0l 13PUS 1 3629
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIZUO KIT AHARA and JUN ISHIHARA 1
Appeal2014-003493
Application 12/223 ,990
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHERL. OGDEN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 4, and 13-15 in the above-identified application.
We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellants' invention relates to an oxygen-absorbable resin for
preventing oxygen deterioration in foods and other items, designed to exhibit
1 According to Appellants, the real party in interest is ZEON
CORPORATION. Appeal Br. 1.
Appeal2014-003493
Application 12/223,990
good oxygen absorbability at room temperature. Spec. i-f 1. Claim 1, the
sole independent claim, is representative:
1. An oxygen-absorbable resin composition that includes
a cyclized product of a conjugated diene polymer having
an unsaturated bond reduction ratio of at least 60% (A)
and liquid paraffin (B) and has a glass transition
temperature of not higher than 30°C,
wherein the compounding ratio of the liquid paraffin
(B) is 15--40 wt% relative to the total amount of the
cyclized product of a conjugated diene polymer and the
liquid paraffin and wherein the oxygen-absorbable resin
composition has an oxygen absorption rate at 25°C of at
least 5 cc/ g· day.
Appeal Br. 11.
The Examiner rejects claims 1, 4, and 13-15 under 35 U.S.C. § 103(a)
as being unpatentable over WO 2005/053837 Al [hereinafter Kitahara]
(published June 16, 2005)2 in view of US 2005/0147778 Al [hereinafter
Tai] (published July 7, 2005). Final Act. 2--4.
Appellants argue claims 1, 4, and 13-15 as a group. See Appeal Br.
4--9. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv)
(2013), we limit our discussion to claim 1. All the claims stand or fall
together.
DISCUSSION
Appellants' arguments present two issues for appeal: (1) whether or
not the Examiner has made a prima facie case of obviousness, and (2)
2 The corresponding U.S. national stage entry, US 2007/0123647 Al
(published May 31, 2007), is used, without objection by Appellants, as the
English translation. Final Action 2.
2
Appeal2014-003493
Application 12/223,990
whether a prima facie case of obviousness has been rebutted by evidence of
unexpected results. Appeal Br. 3.
1. Prima Facie Case
The Examiner finds that Kitahara discloses "an oxygen absorber
which exhibits high oxygen absorbing ability and contains a cyclized
conjugated diene polymer as an active ingredient," and where the
unsaturated bond reduction ratio is 55-70%. Final Action 2 (citing Kitahara
i-f 64). The Examiner also finds that Tai teaches the addition of paraffin oil
to a conjugated diene polymer resin in order to enhance flexibility, and that
it would have been obvious to combine Tai with Kitahara in order to
enhance flexibility. Id. at 3 (citing Tai i-f 188).
Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness because the Examiner's findings "provide no
reason or rationale that would allow one of ordinary skill in the art to arrive
at the present invention as claimed," such as any of the rationales (A}-(G)
listed in MPEP § 2143. Appeal Br. 4, 8-9.
We disagree with Appellants' argument that the Examiner has
provided no reason or rationale for obviousness. According to the
Examiner, it would have been obvious at the time of invention "to include
paraffin oil as softener of Tai in the oxygen absorbable composition of
Kitahara motivated by the desire to provide enhanced flexibility and to make
the mixture plastically deform to a moderate degree." Id. The Examiner has
thus provided a motivation for one of ordinary skill in the art to have
combined the two references, and Appellants have not pointed to any
reversible error in the Examiner's determination. Therefore, we are not
3
Appeal2014-003493
Application 12/223,990
persuaded that the Examiner has failed to establish a prima facie case of
obviousness.
2. Unexpected Results
Appellants argue that evidence on this appeal record establishes "that
the present invention has achieved unexpected results, whereby such results
rebut any asserted prima facie case of obviousness," Appeal Br. 5, and that
the results "strongly evidence that the prior art does not produce the results
of the present invention," id. at 7. In particular, Appellants refer to Table 1
of the Specification, id. at 6; see also Spec. i-f 92 tbl. 1, which is reproduced
below.
lABLE.1
Cmn1l<1r:&tiw C\1rnp;~X\1tive C{>mpRl:'t.i::ive
li~~:>.~np}e J J~-:i::-rtrnp]e .2 E~<~'ttr~pl~: 3: fIB.alTt.pl-t"'~ 4 :Ex::uap.l~~ 1 Ex.nnJpJ~. 2. E:x .. t:n~~l~ 3
P.e.fj{:~ts
Cy<.~.liud ptc.."Xfo>-t ,.,f
conj ll:§iah:d Jl(>...'li:l
p]lyfSl(:I ( q
Cyli:OH<:~'<-1 ;rm;duct .:if
oe>t1}:~wted di~lle
p-i._1Jyrr~c~ .no
r.,iqu~d parnff~n (05 l)
Liquid pat>i.t1!1i \~2,
'"4}
LLDPE ("''3, "4)
(~h1$'S: t::.a~~~~tlo.~1
~:t~tnpt:~·atsui;:. (':. C.}
(}xyg~}}··a!m\jrbfl.ble: HkE~
~)~·yg,~~1 ;;1;bs<:fsptSc~ m..te
(~~tg ·: dB.y~t
Smd! levill
Pl
75
"!2
4S:
:is
f.2
5 '1 ...
1.5
P3
so 5.0
10
iG
4t)
20 ;~s
F3 F4
9 .. 5 5r1
1..5 L'l
~·n
WO
76
FCl
0
I.S
(~p.µ~ar-a:t:v~
nx~u:~p.lt' 5 I~~~.rnpl-c 6 E~mn'P~-~ 7 E=x~t~Bp~-t ~ J:~~a.fB_pli;S 4
O~;;ygi:m--nl'i~\'.irl~J<;;
rm1ltihye~ rnn~
()::{yger~ .i::~s:i:i.cr.:l~Ttrat~c:Il. ~u
pondi (%')
MF1
ll
MF3 Mf'4.
4.SJ ·.PC>1~·-::,~yr~~~ =-~ tr:acltt u&.'1.~*' ~·J·(f~-4'~ ..
(~.4-}: Adtfod .;t~ :..).f.J.!:~?tJ:::.;:rc -:..d'X.lJ):~~~;,.:H·~u:irlr--ar:dti~:! :--:i.: ~~'Z!).
FC3
1 7
Cc ti
According to Appellants, Table 1 summarizes the results of
comparative testing of Examples 1-8 and Comparative Examples 1--6. Id. at
4
Appeal2014-003493
Application 12/223,990
5---6. Appellants also argue that Comparative Example 1 corresponds to the
Kitahara reference. Id. at 5. According to the Specification, each of
Comparative Examples 1---6 has "poor oxygen absorbability at 25°C" either
because it "does not contain a softener (B)" (Comparative Examples 1, 2, 4,
and 5) or because it has a softener (B), but has "a glass transition
temperature of higher than 30°C" (Comparative Examples 3 and 6). Id. at 6;
Spec. i-f 93. By contrast, Appellants argue that Examples 1-8 contain
softener (B) and have a glass transition temperature not higher than 30°C,
and therefore show "excellent oxygen absorbability at 25°C." Id.
Appellants also refer to a table of additional data set forth in a
Declaration by inventor Jun Ishihara, which is reproduced below:
Cl~··· ·=--= ·---·-··· --- 1~;: 1 ~7~!,
l'(J';;;itz;_d_p;~d~ct of conjugated dlene polymer (I) -------ii. 60 1
'~~~::.:~~i.1~f ooaju~~ene po~r(IQ : ~: m4"ii -1
l--~~,1~!~J~-~r-~!!l:! .. ~:!;~-~!1t_____________ __ _______________ L ________ -!
LLDPE(*3,*4) t
Glass transition Temperature(O) 29 -21 ....................... _.._._._.._.._.._._._._._._._._._._._._._. _____ ,_ ............................................. _ .................. _ ..................................................... ____ ........._ ................ ......_ ..... _ ....................... _ ... _ .......................................................... __..~- .................................................... ...............
Oxygen-absorbable: film ----------------------------- . FAl FA.2
_:Q_~ygen-a~~!Jlti on rate( cc/ g· • ~~YL ...... ·--···-·-····------··----··--·-·-----· ------~~-~----+----J~:-~-----·--·
Smell 1evel 1.6 _______ J ___ ~--1_!__ ________
r--·····-------~--- ·------------.~ .. -· ·-· -----------------------------~~------------------------------·--···········1··Addiii~-;;;r-- ''Ad~lti;~~;1·····1
i
!~!.~·~..............=··-:·.···.···· -----~~i..a __ E~e4 Oxygen-absorbable multilayer film ~ MFA 1 I MFA2 • __ ._ ............................. --~. ·-·····--·-~"""w·-·•••••••••••-'••"""'"""-·••'-•'-••••••••••••••···········•••••••••••• """""~"""""""""'"'''''"""• Oxygen concentration in pouch (%) • 6 ' 3.5 • ~"-""'-"-"-"-'"'"'''"""-''-""""""""""~~~"-"-"-"-"-"-"-"-U"-"-"-"-"-'>'"-"-"-" •
5
Appeal2014-003493
Application 12/223,990
According to the declaration, the data for Additional Examples 1 and 2 in
the above table was prepared in the same way as the data in Table 1. See
Ishihara Deel. of Sept. 16, 2013 at 1.
The Examiner finds that the data presented in the Specification and
the Ishihara Declaration is "not persuasive and not ... commensurate in
scope with the ... claimed invention." Answer 3. In particular, the
Examiner finds that based on the Ishihara Declaration, at the levels of liquid
paraffin (B) required by claim 1, "the oxygen absorption rate at 25 C should
be between 9.8 cc/g·day-12.3 cc/g·day," Id. at 2, which is well above the
level of 5 cc/ g· day required by claim 1, See id. at 3. Therefore, the
Examiner suggests that Appellants amend the claims to include an amount of
LLDPE, so that the oxygen absorption levels will be similar to the 5.1 or
5.2 cc/g· day levels shown in Examples 2 and 4. See id. In response,
Appellants argue that claim 1 is open-ended, and that the addition of some
amount of LLD PE is within the scope of claim 1. Appeal Br. 7-8.
We have carefully considered the evidence of unexpected results
submitted by Appellants. However, we are not persuaded that this evidence
either (1) shows that the prior art does not produce the results of claim 1, or
(2) shows unexpected results commensurate with the scope of the claim 1.
First, Appellants have presented only a single data point, Comparative
Example 1, as representing the prior art. See Appeal Br. 5. However,
Comparative Example 1 does not appear to include any liquid paraffin, as
taught by Tai. Moreover, the data for Comparative Example 1 reflects only
a single glass transition temperature of 7 6°C (outside the claimed range),
whereas Kitahara teaches that the glass transition temperature of a cyclized
conjugated diene polymer may have a broad range that overlaps the range
required by claim 1. See Kitahara i-f 7 4. Furthermore, Kitahara describes a
6
Appeal2014-003493
Application 12/223,990
variety of cyclized conjugated diene polymers, see, e.g., Kitahara i-fi-134--39,
and Comparative Example 1 only represents data for one polymer. Thus,
Appellants have not presented sufficient data to show that embodiments in
the prior art will not exhibit the proposed unexpected results.
Second, the data presented by Appellants appears to show
embodiments outside the scope of claim 1 that exhibit the same properties
that Appellants are proposing as unexpected results. Examples 2 and 4
include 12% and 10% liquid paraffin, respectively, which is outside the
range 15--40% required by claim 1. Nevertheless, Table 1 indicates that
their oxygen absorption rates are 5 .2 and 5 .1 cc/ g· day, which is within the
range required by claim 1. Thus, Appellants' data shows that embodiments
outside the range of claim 1 may also exhibit the same results that
Appellants argue are unexpected.
Because Appellants have failed to rebut the Examiner's prima facie
case of obviousness by presenting evidence of unexpected results that is
commensurate with the scope of claim 1, we find no reversible error in the
Examiner's rejection of claims 1, 4, and 13-15.
DECISION
The Examiner's decision 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 )(iv).
AFFIRMED
7