Ex Parte Mukunoki et al

Patent Trial and Appeal Board

Jul 8, 2016

12342686 (P.T.A.B. Jul. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/342,686 12/23/2008
21839 7590 07112/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Y asuo Mukunoki
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.
1019519-000726 3104
EXAMINER
HON, SOW FUN
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
07/12/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ASUO MUKUNOKI
and MAMO RU SAKURAZA WA
Appeal2014-000663
Application 12/342,686
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
uECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 1-3, 5, and 7-13 under 35 U.S.C. § 102(b) as anticipated by Michihata et
al., 1 as evidenced by Howie et al.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to a polymer film comprising a
polymer and a high molecular weight plasticizer. The Appellants disclose:
1 US 2006/0045992 Al, published March 2, 2006 ("Michihata").
2 US 2002/0143137 Al, published October 3, 2002 ("Howie").
Appeal2014-000663
Application 12/342,686
The high molecular weight plasticizer used in the invention is
obtained by a reaction of a mixture of an aliphatic dicarboxylic acid
having 2 to 20 carbon atoms and an aromatic dicarboxylic acid having
8 to 20 carbon atoms with at least one diol selected from an aliphatic
diol having 2 to 12 carbon atoms, an alkyl ether diol having 4 to 20
carbon atoms and an aromatic diol having 6 to 20 carbon atoms.
Although both ends of the reaction product may be left as they are, a
monocarboxylic acid, a monoalcohol or a phenol may be further
allowed to react therewith to perform so-called blocking of the ends.
This end blocking is effective in terms of storage stability and the like,
particularly when performed for preventing a free carboxylic acid
from being contained.
Spec. 12-13 (emphasis added).
Independent claim 1 is reproduced below from the Claims Appendix of the
Appeal Brief dated July 17, 2013 ("App. Br."). The limitation at issue is italicized.
1. A polymer film comprising:
a polymer; and
a high molecular weight plasticizer that has a number average
molecular weight of 700 to 10,000 and has a repeating unit derived
from a dicarboxylic acid and a diol,
wherein
the dicarboxylic acid for forming the high molecular weight
plasticizer comprises at least one aliphatic dicarboxylic acid having 2
to 20 carbon atoms and at least one aromatic dicarboxylic acid having
8 to 20 carbon atoms, and
the diol comprises at least one diol selected from the group
consisting of an aliphatic diol having 2 to 12 carbon atoms, an alkyl
ether diol having 4 to 20 carbon atoms and an aromatic ring-
containing diol having 6 to 20 carbon atoms,
wherein
both ends of the high molecular weight plasticizer aee [sic, are]
at least one selected from the group consisting of an aliphatic group
having 1 to 22 carbon atoms, an aromatic ring-containing group
having 6 to 20 carbon atoms, an aliphatic carbonyl group having 1 to
2
Appeal2014-000663
Application 12/342,686
22 carbon atoms, and an aromatic carbonyl group having 6 to 20
carbon atoms, and
wherein
the high molecular weight plasticizer is contained in an amount
of 2 to 30% by mass based on an amount of the polymer.
App. Br. 11.
B. DISCUSSION
The Examiner finds Michihata discloses a polymer film comprising a
polymer and a high molecular weight polyester polyol. Ans. 2. 3 The Examiner
relies on Howie to show that polyester polyols were known to be used as
plasticizers. Ans. 3.
The sole issue on appeal is whether the Examiner reversibly erred in finding
that both ends of the plasticizer (i.e., polyester polyol) described in Michihata are
blocked as recited in claim 1, i.e., "both ends of the high molecular weight
plasticizer aee [sic, are] at least one selected from the group consisting of an
aiiphatic group having 1 to 22 carbon atoms, an aromatic ring-containing group
having 6 to 20 carbon atoms, an aliphatic carbonyl group having 1 to 22 carbon
atoms, and an aromatic carbonyl group having 6 to 20 carbon atoms." App. Br. 11.
The Examiner relies on Michihata paragraph 62 to show that, in one
embodiment, Michihata teaches that both ends of the plasticizer are blocked as
recited in claim 1. Ans. 3. More specifically, the Examiner finds:
Michihata teaches that both ends of the high molecular weight
plasticizer are preferably ended with a monovalent organic acid such
as an acetic acid or a propionic acid, via polycondensation ([0061])
[sic, i-f 62]. The condensation of a hydroxy group -OH and a
propionic acid CH3-CH2-COOH produces an ester bond-OOC-CH2-
CH3 with the release of water H20 (hence the term "condensation").
3 Examiner's Answer dated August 16, 2013.
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Appeal2014-000663
Application 12/342,686
The end-result is that the aliphatic group of the both ends of the high
molecular weight plasticizer is blocked on via an ester bond.
Ans. 3--4.
The Appellants contend that Michihata paragraph 62 describes a method for
obtaining a polyester polyol wherein the terminals are not blocked as claimed but
rather are primarily hydroxide groups. App. Br. 5---6 (citing Michihata i-fi-1 58, 60).
Michihata paragraph 62 states, in relevant part:
Polycondensation of the polyester polyol is carried out using a
conventional method. Examples methods by which the synthesis can
be easily carried out include direct reaction of the dibasic acid and the
glycol . . . . [I]t is preferable that direct reaction is used for polyester
polyols whose number average molecular weight is not particularly
high. . . . The method for adjusting the molecular weight is not
particularly limited and any method known heretofore may be used.
For example, although this also depends on the polymerization
conditions, by using a method of ending the molecule terminal with a
monovalent acid or a monovalent alcohol, control can be achieved by
the amount of these monovalent substances added. In this case, the
rrzorzovalerzt acid is preferable irz vievv of tlze stability of tlze polyrrzer . .
. . [A] monovalent acid in which distillation is easily performed when
the polycondensation reaction is stopped and the monovalent acid is
removed externally without external distillation during the
polycondensation reaction is selected, and these monovalent acids
may be mixed and used. [Emphasis added.]
According to the Appellants, "although the monovalent acid is added to the
terminals in order to control the molecular weight during polymerization, it is
apparent that the monovalent acid is removed from the terminals after the
production of the polyester, and is not remained in the polyester." App. Br. 7. The
Appellants propose a reaction scheme whereby the monovalent acid is removed
from the terminals. App. Br. 8.
In response, the Examiner finds:
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Appeal2014-000663
Application 12/342,686
[N]owhere in Michihata is described a method or reaction that targets
only the terminal ester groups to unblock the terminals of the polymer
to convert the terminals back to hydroxy groups without destabilizing
the rest of the polycondensate .... Thus Michihata does not teach the
removal of monovalent acid generated by hydrolysis of the ester
terminals which involves depolymerization. Instead, Michihata
teaches the removal of excess end-capping monovalent acid upon
stopping the polycondensation reaction ([0062]).
Ans. 12.
"To anticipate a claim, a prior art reference must disclose every limitation of
the claimed invention, either explicitly or inherently." In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997). "Anticipation is a question of fact" and "factual
determinations by the PTO must be based on a preponderance of the evidence." In
re Baxter Travenol Lab., 952 F.2d 388, 390 (Fed. Cir. 1991); In re Oetiker, 977
F.2d 1443, 1449 (Fed. Cir. 1992). A "preponderance of evidence" is defined as
"evidence which as a whole shows that the fact sought to be proved is more
probable than not." Black's Law Dictionary 1064 (5th ed. 1979).
In one exemplary embodiment, Michihata describes "a method of ending the
molecule terminal with a monovalent acid or a monovalent alcohol," wherein a
monovalent acid is preferred. Michihata i-f 62. Michihata then discloses that "the
monovalent acid is removed." Michihata i-f 62. On the one hand, the Examiner
finds that only the excess end-capping monovalent acid is removed when the
polycondensation reaction stops, resulting in both ends of the molecule remaining
blocked as in the claimed invention. Ans. 12. On the other hand, the Appellants
argue that "the monovalent acid is removed from the terminals after the production
of the polyester" to obtain a polyester polyol having terminal hydroxyl groups.
App. Br. 7. The Appellants base their argument on Michihata's disclosure in
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Appeal2014-000663
Application 12/342,686
paragraph 62, in combination with Michihata's disclosure in paragraphs 58 and 60.
See App. Br. 5.
According to Michihata, "[the] invention is a cellulose ester film which is
formed by using a cellulose ester including polyester polyol obtained from the
glycol (a) and the (anhydrous) dibasic acid (b )." Michihata i-f 38. Michihata
discloses that "[t]he polyester polyol obtained from the glycol (a) and the dibasic
acid (b) basically uses a hydroxide group terminal polyester having a number
average molecular weight of 1,000-200,000." Michihata i-f 58 (emphasis added).
The polyester polyol is also said to contain a small amount of carboxyl group
terminals, i.e., "preferably below 1/40 of the number of mole[ s] of the hydroxide
group terminal." Michihata i-f 60 (emphasis added).
Michihata paragraph 62 describes exemplary methods "by which the
synthesis [of the disclosed polyester polyol] can be easily carried out." It is clear
that the exemplary methods described in Michihata paragraph 62 are referring to
the polyester polyols described in iviichihata paragraphs 58 and 60 which are used
to form the inventive cellulose ester film. Thus, it is reasonable to interpret the
exemplary method relied on by the Examiner as forming a polyester polyol having
hydroxide group terminals as contended by the Appellants.
Based on the foregoing, a preponderance of the evidence does not support
the Examiner's finding that Michihata describes a plasticizer wherein both ends of
the molecule are blocked as recited in claim 1. Therefore, we cannot sustain the
§ 102(b) rejection on appeal.
C. DECISION
The decision of the Examiner is reversed.
REVERSED
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