Ex Parte Oda et al

Board of Patent Appeals and Interferences

Mar 13, 2012

11220402 (B.P.A.I. Mar. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/220,402 09/07/2005 Takashi Oda 040302-0518 1647
22428 7590 03/13/2012
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
KOLLIAS, ALEXANDER C
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
03/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte Nissan Motor Co., Ltd.
__________

Appeal 2011-006843
Application 11/220,402
Technology Center 1700
___________

Before FRED E. McKELVEY, RICHARD E. SCHAFER, and
RICHARD TORCZON, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.
DECISION ON APPEAL
Nissan Motor Co., Ltd. (Applicant) appeals from the final rejection of
Claims 21, 22, 27-31, 45-47, 52, and 53. 35 U.S.C. §§ 6(b) and 134(a). We
affirm.
The Invention
Applicant claims a resin composition having two components: (1) a resin
matrix selected from polycarbonate, acrylic or methacrylate resins and (2) an
alumina particle “composite” filler. The particle is a composite of an alumina core
and alkylbenzenesulfonic acid chemically bonded to the core. Preferred
alkylbenzenesulfonic acids include paratoluenesulfonic acid and
dodecylbenzenesulfonic acid. Written Description,1 6:10-27. Suitable alumina
particles include boehmite and pseudoboehmite. Written Description, 7:22 – 8:6.

1 Original Specification of application 11/220,402, filed 26 October 2006.

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Claim 21 is representative and we reproduce it below:
A resin composition, consisting of:
resin including at least one thermoplastic resin selected
from the group consisting of polycarbonate, acrylic, and
methacrylic resins; and
an alumina particle composite contained in the resin as a
filler, the alumina particle composite comprising:
an alumina particle; and
an organic acid chemically bonded to a surface of
the alumina particle, the organic acid comprising
alkylbenzenesulfonic acid.
Brief 32.
The Rejections
In his Answer, the Examiner maintained two grounds of rejection, both
based upon 35 U.S.C. § 103(a): (1) Claims 21, 22, 28-31, 45-47, 52, and 53 were
held unpatentable over the combined teachings of Tang,2 Billmeyer,3 Bohnen,4 and
Warth;5 and (2) Claim 27 was held unpatentable over the combined teachings of
the same references with the addition of a Sasol Corporation Alumina Product
Information Sheet. Answer, 5-8.
The Examiner relied upon Tang’s teaching of a combination of a
thermoplastic polymer matrix with porous acicular boehmite particles as a filler.
Answer, 5, second paragraph. Bohnen was relied upon as suggesting the use of
alumina filler particles having an alkylbenzenesulfonic acid chemically bonded to

2 U.S. Patent Application Publication 2003/0197300.
3 Textbook of Polymer Science, 3rd Ed., Wiley Interscience Publications, pp. 417-18.
4 WO 2001/03824 with U.S. Patent 6,846,435 relied upon as the English language equivalent.
Answer, 5.
5 U.S. Patent Application Publication 2002/0147261.
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the surface. The examiner relied on Billmeyer for suggesting the use a
polycarbonate as the thermoplastic matrix. Warth was relied upon as teaching the
concept of surface modification of metal oxides to improve compatibility with a
polymer matrix. Answer, p. 6.
Analysis
Claim 21
Applicant’s principal argument for reversal focuses on the requirement in all
the claims that the alumina filler material is a composite having an alumina core
and a specified sulfonic acid “chemically bonded” to an alumina core. Applicant
repeatedly argues to the effect that neither the combined teachings of the references
nor the references individually disclose or suggest
an alumina particle having [alkylbenzenesulfonic acid,
paratoluenesulfonic acid or dodecylbenzenesulfonic acid]
chemically bonded to a surface of the alumina particle . . . .
Appeal Brief, 16-27 (numerous locations) ( bracketing added, underscore original).
The examiner found that Bohnen’s sulfonic acid-treated aluminum oxide
would have the sulfonic acid bonded to the surface. Answer, 13-14.
The Examiner’s finding is a reasonable inference from Bohnen’s teachings.6
Bohnen teaches the formation of modified metal oxides or metal aquoxides
(i.e., metal oxide hydrates) that are dispersible in organic solvents. Bohnen, 2:45-
49. The oxides or hydrates are reacted with organic sulfonic acid in the presence
of an aqueous or organic solvent. Bohnen, 2:49 – 3:5. Bohnen begins with metal
oxide or metal hydrate particles Bohnen, 2:50-58. Examples of suitable metal
oxides and hydrates include aluminas, and the aluminum hydrates boehmite, and
pseudoboehmite. Bohnen, 7:15-23. Bohnen teaches alkylbenzene sulfonic acids

6 All references to Bohnen are to U.S. Patent 6,846,435 which has been relied upon by Applicant
and the Examiner as the English language equivalent of the German Language WO 2001/03824.
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as suitable organic sulfonic acids. Bohnen, 2:59-67. Bohnen’s Examples 1 and 3
describe the reaction of alumina hydrates with dodecylbenzenesulfonic acid
(Bohnen, 5:13-16) and paratoluenesulfonic acid (Bohnen, 4:45-52). The resultant
sulfonic acid-treated alumina particles are highly dispersible in organic solvents
with a dispersibility of greater than 95%. Bohnen, 4:38-42. Dispersibility in
tetrahydrofuran (THF) was reported as 99%.
Applicant’s alumina composites are similarly formed by reacting alumina or
alumina hydrates with a sulfonic acid in an aqueous or organic solvent. Applicant
begin with “alumina” particles. Suitable alumina particles are represented by the
formula Al2O3·nH2O. Writtten Description, 7:23-25 ¶ 34. The formula
encompasses aluminum oxide (n = 0), boehmite (n = 1), pseudoboehmite (n > 1
and < 3) and other aluminum hydrates (n > 3). Writtten Description, 7:27 – 8:2.
The alumina particles are dispersed in an organic or aqueous solvent. Written
Description, 15:20 – 16:8. Organic acid is added to this mixture. Written
Description, 15:20 – 16:8. Suitable organic acids include alkylbenzenesulfonic
acids such as dodecylbenzenesulfonic acid and paratoluenesulfonic acid. Written
Description, 6:10-27. An aqueous solvent is suggested when the organic acid does
“not [dissolve] into the organic solvent and does not react with the alumina
particles.” Written Description, 15: 29 – 16:1 (emphasis and bracketing added).
Applicant’s examples indicate that the treated alumina particles could be
“dispersed in THF substantially quantitatively.” Written Description, 25:11-13.,
¶¶ 27:22-24, and 29:7-9.
Thus, Bohnen and Applicant each teach alumina treated filler particles made
by reacting alumina particles with organic sulfonic acids in the presence of organic
or aqueous solvents to obtain alumina particles that are highly dispersible in
organic liquids such as THF. In light of this correspondence in materials, method,
and result, it was appropriate for the Examiner to infer that the reaction described
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by Bohnen would have sulfonic acid “chemically bonded to the surface of the
alumina particle.”
In this appeal applicant has neither argued nor directed us to evidence that
Bohnen’s particles are in fact different than Applicant’s , i.e., that Bohnen’s
alumina particles do not have sulfonic acid chemically bonded to the surface.
Rather, Applicant’s simply argue that the Bohnen reference does not express this
concept. Brief, 17 (“However, Bohnen does not disclose or suggest that these
products result in alkylbenzenesulfonic acid chemically bonded to a surface of an
alumina particle . . . .”). Showing that a characteristic or property of Bohnen’s
particles is not expressly described is insufficient to establish that Bohnen’s
sulfonic acid-treated alumina is different than applicant’s. See In re Dillon, 919
F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“the discovery that a claimed
composition possesses a property not disclosed for the prior art subject matter,
does not by itself defeat a prima facie case”). On this record it was reasonable for
the Examiner to infer that Bohnen’s alumina particles would have sulfonic acid
chemically bonded to the surface.
For the most part, Applicant’s remaining arguments merely attack the
references individually by identifying certain claim elements not described in each
of the references. However, the examiner’s rejection relies on the combined
teachings of the references. One cannot show non-obviousness by attacking
references individually where the rejections are based on a combination of
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Applicant does not
challenge the examiner’s findings related to the concepts taught in the references
or the conclusions drawn from the references’ teachings. For example, with respect
to Tang, Billmeyer and Warth, Applicant argues that each of these references do
not disclose or suggest “an alumina particle having alkylbenzenesulfonic acid
chemically bonded to a surface of the alumina particle . . . .” Brief, 16-18. This is
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of course correct. However, the Examiner relied upon Bohnen for teaching
boehmite particles having alkylbenzenesulfonic acid chemically bonded to the
alumina particle surface. Answer, 6. Tang was relied upon for teaching the
combination of a thermoplastic polymer matrix with alumina boehmite filler
particles. Answer, 5. Warth was relied upon as teaching the concept that surface
treatment of metal oxide particles results in improved compatibility of metal oxides
with a polymer matrix thus providing additional motivation for using Bohnen’s
improved surface modified alumina as fillers. Answer, 6. The Examiner relied on
Billmeyer to establish that the beneficial properties of polycarbonates were known
to those skilled in the art, and that it would have been obvious to use polycarbonate
as a thermoplastic matrix. Answer, 5-6. Merely identifying reasons why each of
the combined references is not an anticipation, is not sufficient to overcome an
obviousness rejection based upon the combined teachings of the references.
Keller, 642 F.2d at 425.
With respect to the Warth reference, Applicant additionally argues that
Warth’s composition
does not consist of a resin and an alumina particle composite
contained in the resin as a filler . . . .Warth’s composition
includes “a silicone acrylate graft rubber in addition to an
aromatic polycarbonate and/or polyester carbonate and a
mineral filler.”
Brief, 18, first full paragraph.
We do not understand the point of this argument. The fact that Warth may
disclose additional polymer components arguably excluded from the claimed
subject matter by the transitional phrase “consisting of,” does not disqualify that
reference as evidence of the level of ordinary skill and the scope and content of the
prior art in the context of an obviousness rejection. Applicant has not directed us
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to any authority that supports such a basis for disqualifying a reference. Nor has
Applicant argued that Warth is not prior art or that it is not analogous art. As noted
above, the Examiner relied on Warth as evidence that the concept of surface
treating metal oxides to improve compatibility with the polymeric matrix was
known in the art:
Warth is utilized as an evidence reference supporting the
Examiner's position that surface modification of inorganic
powders results in greater compatibility of the powder with
polymeric resins.
Answer, 12.
Applicant has failed to show any reversible error in the Examiner’s rejection
of Claim 21, under 35 U.S.C. § 103(a) over the combined teachings of Tang,
Billmeyer, Bohnen, and Warth.
Claims 22 and 28-31
Claims 22 and 28-31 depend from Claim 21. Applicant has not provided
separate arguments for patentability on the subject matter of these claims. We
sustain the rejection of Claims 22 and 28-31 for the reasons stated with respect to
Claim 21. 37 CFR § 41.37(c)(1)(vii).
Claims 45-47, 52 and 53
Applicant has included separate sections in its brief directed to Claims 45,
46, 47 and 52 and 53. With respect to Claims 46, 47, 52 and 53 Applicant merely
repeats the arguments made with respect to Claim 21. Brief, 18-27. These claims
do not require further discussion and fall with Claim 21. 37 CFR 41.37(c)(1)(vii).
With respect to the subject matter of Claim 45, Applicant argues that the
resin compositions exhibit unpredictable and unexpectedly improved results.
Brief, 20. Applicant relies on Examples 8-11, 15-18, Comparative Examples 1-8
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and Figures 8 and 9 as evidence. Brief 20. Based upon the examples, Applicant
argues that the subject matter of Claim 45
Exhibit[s] a combination of excellent light transmittance as well
as excellent bending strength and flexural modulus. The liner
expansion coefficient of these examples was also low, which
demonstrates a good thermal stability for these examples. In
addition, in comparison to Comparative Examples 1-8 in Figure
9 of Applicant's application, Examples 8-11 and 15-18 exhibit
an improved combination of excellent light transmittance and
strength.
Brief, 20.
The Examiner did not find this evidence convincing. The Examiner held
that the comparison between applicant’s Example 8-11 and 15-18 and Comparative
Examples was insufficient to show that the claimed filled resins achieved
unexpected results. Answer, 17-18. Specifically, the examiner found that the
compared resins used alumina particles that differed in features not required by the
claims:
Inventive Examples 8-11 and 15-18 (Figure 8) are not proper
side by side comparisons of Comparative Examples 1-8 (Figure
9).
Answer, 17. In other words, the examiner found that applicant had not established
an adequate nexus between the invention of Claim 45 and the alleged unexpected
results.
A review of the data in the tables depicted in Applicant’s Figures 8 and 9
shows significant differences in particle properties of the compared resins. For
example, filler materials in the compared resins differ in both aspect ratio and in
the relative amount of filler. The aspect ratios of the alumina particles of
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Applicant’s Examples 8-11 and 15-18 was either 20-30 or 45-80. The aspect ratios
of the alumina in Comparative Examples 1-8 is significantly less at 1, 3-7 or 5-8.
The blended weight percentage of the alumina included in the resins was also
lower for the examples said to represent the invention compared to the “prior art”
examples. Examples 8-11 included 8.7–9.1% alumina while Comparative
Examples 1-4 included 9.4-10.6 % alumina. The same was true with respect to
Applicant’s Examples 15-18 which included 9.0-9.2 weight percent alumina,
compared to Comparative Examples 5-8 which included 9.8-10.1 weight percent.
Claim 45 requires but two components: (1) a matrix of polycarbonate,
acrylic, or methacrylic resin and (2) a filler of composite particles having an
alumina core with paratoluenesulfonic acid chemically bonded to its surface. The
claim does not specify the particle aspect ratio or the amount of alumina in the
resin. We have not been directed to evidence showing that the differences in
aspect ratio and the amount of filler would not account for the differences in
properties. Thus Applicant has not established a nexus between the claimed
subject matter and the merits of the invention. Where the offered secondary
consideration actually results from something other than what is both claimed and
novel in the claim, there is no nexus to the merits of the claimed invention. In re
Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
Applicant’s brief argues that the results are unexpected. Brief, 20.
Applicant, however, has not directed us to evidence showing that the results
obtained would have been unexpected by those skilled in the art. “Mere
improvement in properties does not always suffice to show unexpected results.” In
re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). Attorney argument, however, is not a
substitute for evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A.,
129 F.3d 588, 595 (Fed. Cir.1997).
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Applicant argues that the Examiner’s criticism of its unexpected results
evidence “appears to require the Applicant to compare Applicant's invention to
itself rather than comparing the invention to conventional resin compositions.”
Reply Brief, 5. Applicant is simply incorrect. Applicant could have compared the
properties of resins filled with the comparable amounts of commercial alumina
particles of the type used in the Comparative Examples with a resin having the
same amounts of the same commercial alumina particles but that had
alkylbenzenesulfonic acid chemically bonded to the surface. Applicant could also
have compared resins filled the alumina of its Examples 1-4 with resins filled with
the same amounts of those alumina particles that did not have alkylbenzenesulfonic
acid chemically bonded to the surface. In this regard, we again note that Claim 45
only requires a resin and an aluminum filler having sulfonic acid chemically
bonded to the surface.
We affirm the rejection of Claim 45.
Claim 27
Applicant traverses the rejection for the same reasons as independent Claim
21. Brief, 27. We affirm the rejection of Claim 27 for the reasons stated with
respect to Claim 21, above.
DECISION
The Examiner’s rejections of Claims 21, 22, 28-31, 45-47, 52, and 53 and of
Claim 27 are affirmed.
AFFIRMED

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