Ex Parte Moriguchi et al

Patent Trial and Appeal Board

Feb 6, 2019

12809462 (P.T.A.B. Feb. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/809,462 06/18/2010 Nobuhiro Moriguchi
22850 7590 02/08/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
361325USOPCT 8730
EXAMINER
ENGLISH, PATRICK NOLAND
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
02/08/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOBUHIRO MORIGUCHI, SHINICHI TORIGOE, and
KAZUKI TOKUCHI 1
Appeal2017-004820
Application 12/809 ,462
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 5, 7, 8, and 10-17. An oral hearing was held on
January 30, 2019. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is KURARAY CO.,
LTD. App. Br. 1.
2 Due to inclement weather, a court reporter was not present for the hearing.
Counsel for the Appellants agreed to proceed with the hearing without a
court reporter.
Appeal2017-004820
Application 12/809,462
BACKGROUND
The subject matter on appeal relates to thermoplastic polymer
compositions. E.g., Spec. ,r 1; Claim 1. Claim 1 is reproduced below from
page 3 5 ( Claims Appendix) of the Appeal Brief ( some paragraph breaks
added):
1. A thermoplastic polymer composition, comprising
a thermoplastic elastomer (A) and a polyvinyl acetal (B)
wherein the polyvinyl acetal (B) is polyvinyl butyral,
wherein the thermoplastic elastomer (A) is a hydrogenation
product of a block copolymer having a polymer block of an
aromatic vinyl compound and a polymer block of a
conjugated diene compound,
wherein the block copolymer contains from 5 to 7 5
weight% of structural units obtained from the aromatic
vinyl compound based on a total weight of the block
copolymer before hydrogenation,
wherein the thermoplastic elastomer (A) is at least one
member selected from the group consisting of polystyrene-
polyisoprene-polystyrene block copolymers, polystyrene-
poly(isoprene-butadiene )-polystryene [sic] block
copolymers and polystyrene-polybutadiene-polystyrene
block copolymers, and
wherein the polyvinyl acetal (B) is contained in an amount
from 5 to 70 parts by mass in terms of 100 parts by mass of
the thermoplastic elastomer (A),
wherein the thermoplastic elastomer (A) has a hydrogenation
ratio of 70 mol% or more,
wherein particles of the polyvinyl acetal (B) are dispersed in
a matrix of the thermoplastic elastomer (A),
wherein the thermoplastic polymer composition has a JIS-A
hardness according to JIS K6253 of 93 or less.
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Appeal2017-004820
Application 12/809,462
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
1. Claims 1, 5, 11, 12, and 17 over Cook (US RE28,688, reissued
Jan. 20, 1976), Shiraki (US 4,994,508, issued Feb. 19, 1991), and Kroggel
(US 5,559,175, issued Sept. 24, 1996);
2. Claims 7 and 8 over Cook, Shiraki, Kroggel, and Shibata (US
3,926,918 issued Dec. 16, 1975);
3. Claim 10 over Cook, Shiraki, Kroggel, and Adler (WO
2007/033790, published Mar. 29, 2007) 3;
4. Claims 12, 13, 15, and 16 over Cook, Shiraki, Kroggel, and Kanae
(US 2007/0276092 Al, published Nov. 29, 2007);
5. Claim 14 over Cook, Shiraki, Kroggel, Kanae, and Shibata.
ANALYSIS
The Examiner's rejection of claim 1 is repeated at pages 2-7 of the
Answer. The Examiner finds, inter alia, that Cook teaches a composition
comprising an elastomer and a polyvinyl acetal dispersed in the elastomer,
and that Cook teaches that the elastomer may be a butadiene-styrene
copolymer and that the polyvinyl acetal may be polyvinyl butyral. Ans. 2-3.
The Examiner acknowledges that Cook's styrene-butadiene copolymer is not
disclosed as being the hydrogenation product of a polystyrene-
polybutadiene-polystyrene block copolymer, but the Examiner finds that
Shiraki teaches or suggests a polystyrene-polybutadiene-polystyrene block
copolymer that meets the limitations of the thermoplastic elastomer (A) of
3 The Examiner relies on US 2009/0152488 as an English translation of
Adler. Ans. 10.
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Application 12/809,462
claim 1. Id. at 4. The Examiner finds that Shiraki teaches that its block
copolymer composition exhibits desirable "initial tackiness, adhesive
strength, creep resistance and treatment performance at high temperature."
Id. at 5. The Examiner determines that a person of ordinary skill in the art
would have substituted Shiraki' s polystyrene-polybutadiene-polystyrene
composition for the butadiene-styrene elastomer of Cook "to achieve the
creep resistance in the composition of Cook, as taught by Shiraki." Id.
Cook discloses elastomeric articles having heat-activated dimensional
memory characteristics. Cook at 1: 10-13. Consistent with the Examiner's
findings, Shiraki discloses hydrogenated block copolymers that are
"excellent in initial tackiness, adhesive strength, [and] creep resistance," and
that are "particularly suitably useful for adhesive tapes, labels, etc." Shiraki
at 1 :20-26. Although the Examiner finds that a person of ordinary skill in
the art would have combined Cook and Shiraki so that Cook's composition
would possess the creep resistance of Shiraki, Ans. 5, the Examiner provides
no persuasive reason to believe that a person of ordinary skill in the art
would have viewed Shiraki' s creep resistance ( or other properties) as
desirable in Cook's compositions. Although it may be evident that
tackiness, adhesive strength, and creep resistance is desirable in, e.g.,
adhesive tapes and labels, such as disclosed by Shiraki, it is not clear that
those properties would be desirable in compositions with heat-activated
dimensional memory characteristics.
For example, Cook discloses that its compositions can be prepared
using a process that involves molding. Cook at 7:25-30. As an example of
an article in accordance with Cook's disclosure, Cook describes tubing that
"can be placed inside of a pipe or tube, the brief application of heat causing
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Application 12/809,462
it to expand and to attempt to return to its original vulcanized or cross-linked
condition." Cook at 5:25-30. The Examiner does not persuasively address
why enhanced adhesion or creep resistance would be desirable in those
processes or articles, or why those properties would be desirable in any other
article or application described by Cook. The fact that those properties may
have been desirable in the compositions of Shiraki does not, of itself,
indicate that they also would have been desirable in the compositions of
Cook.
Therefore, consistent with the Appellants' argument that "[ t ]here is no
teaching in Cook or Shiraki that" Cook's articles would benefit from the
combination proposed by the Examiner, App. Br. 1 O; see also Reply Br. 9
("[I]mproved creep resistance appears to be inconsistent with improved heat
recoverability."), we are not persuaded that the Examiner has adequately
established that a person of ordinary skill in the art would have been
motivated to combine Shiraki with Cook. See In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability."); see also Belden Inc. v. Berk-TekLLC, 805 F.3d 1064,
1073 (Fed. Cir. 2015) ("[O]bviousness concerns whether a skilled artisan not
only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention." (emphases in original)). We reverse the Examiner's rejection of
claim 1.
Because the Examiner's rejection of claims 5, 7, 8, and 10-17 rely on
the combination of Cook and Shiraki described above, and the Examiner's
discussion of those claims does not remedy the defects described above, we
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Application 12/809,462
must likewise reverse the Examiner's rejections of claims 1, 5, 7, 8, and 10-
17.
CONCLUSION
We REVERSE the Examiner's rejections of claims 1, 5, 7, 8, and IO-
17.
REVERSED
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