Ex Parte Ogawa et al

Patent Trial and Appeal Board

Feb 27, 2019

14490750 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/490,750 09/19/2014 Shun Ogawa
22850 7590 03/01/2019
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.
440841US99DIV 5418
EXAMINER
KAHN, RACHEL
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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 SHUN OGAWA,
SHINICHI A YUBA, TAKAHIKO SUMINO,
RISA YUKI KUWAHARA, and KENT ARO ISHII
Appeal2018-002701
Application 14/490,750 1
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
SHELDON M. McGEE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the non-final
rejection of claims 8, 10-12, 18 and 23-25 dated March 15, 2017. We have
jurisdiction under 35 U.S.C. § 6(b ).
1 The Appellant and the real party in interest is MITSUBISHI GAS
CHEMICAL COMPANY, INC. See App. Br. 2.
Appeal2018-002701
Application 14/490,750
The appealed invention relates to a method of producing a polyamide
resin containing a paraxylylenediamine unit and a linear aliphatic
dicarboxylic acid unit ( sebacic acid or azelaic acid), as main components.
Independent claim 8 is representative of the appealed subject matter and is
reproduced below:
8. A method for producing a polyamide resin, comprising
performing melt polycondensation of a diamine component
comprising 90 mol% or more of paraxylylenediamine and a
dicarboxylic acid component comprising 90 mol% or more of at
least one selected from the group consisting of sebacic acid and
azelaic acid,
wherein the melt polycondensation is attained in the presence of
a phosphorus atom-containing compound (A) and a
polymerization speed regulating agent (B),
wherein the phosphorus atom-containing compound (A) is at
least one selected from the group consisting of calcium
hypophosphite, calcium phosphite and calcium dihydrogen
phosphate,
wherein the resin comprises a diamine unit comprising 90
mol% or more of a paraxylylenediamine unit and a dicarboxylic
acid unit comprising 90 mol% or more of at least one selected
from the group consisting of sebacic acid unit and azelaic acid
unit, and
the resin has a phosphorous atom concentration of from 50 to
1,000 ppm mid a YI value of 10 or less in a color difference test
in accordance with JIS-K-7105.
Claims Appendix to App. Br.
Appellants (see App. Br., generally) request review of the following
rejection:
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Application 14/490,750
Claims 8, 10-12, 18, and 23-25 rejected under 35 U.S.C. §I03(a)
as unpatentable over the combination of Otaki et al (JP 2003-
26797, published January 29, 2003)2, Tanaka (WO 2007/010984,
published January 25, 2007)3, and Gray (US 2,510,777, issued
June 6, 1950).
The complete statement of the rejection on appeal appears in
the Non-Final Office Action dated March 15, 2017. (Non-Final Act.
2-9).
OPINI0N4
After consideration of Appellant's arguments and evidence and the
Examiner's position in the Non-Final Office Action and Answer, we
AFFIRM the obviousness determinations for the reasons provided by the
Examiner. We add the following.
Claim 8
The Examiner finds Otaki discloses polycondensation of an aliphatic
dicarboxylic acid having 4--12 carbon atoms and diamine containing 70
mol% or more of xylylene diamine, specifically meta-xylylene or para-
xylylene diamine (Non-Final Act. 3; Otaki ,r 9). The Examiner finds Otaki
2 We refer to the machine translation made of record.
3 We refer to US 2010/0120961 Al that has been cited as the English
language equivalent.
4 Appellant presents arguments principally directed to independent claim 8
(App. Br. 5-19). Appellant also addresses claims 10-12, 18, and 23-25 in
various groupings under separate headings (App. Br. 19-25). Appellant's
arguments for claims 8, 10-12, 18, and 23-25 will be addressed.
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teaches using sebacic acid and azelaic acid as suitable dicarboxylic acids
(Non-Final Act. 3; Otaki ,r 10). The Examiner concludes it would have been
obvious to a person of ordinary skill in the art to perform a method for
producing a polyamide resin, comprising performing melt polycondensation
of para-xylylene diamine and azelaic acid or sebacic acid as the dicarboxylic
acid component as disclosed by Otaki (Non-Final Act 3--4).
The Examiner finds Otaki is concerned with minimizing coloration at
high temperatures and discloses the use of highly pure monomers and a
coloration inhibitor for the protection of the polymer obtained (Non-Final
Act. 4; Otaki ,r 12). Otaki also recognizes the suitability of using
antioxidants (Otaki ,r 15). The Examiner finds Otaki is silent as to the
addition of phosphorus-atom-containing and speed regulating components to
the polyamide (Non-Final Act 4).
The Examiner finds Tanaka discloses phosphorus acid antioxidants
including calcium hypophosphite, calcium phosphite, or calcium dihydrogen
phosphate for use in polyamide resins comprising a phosphorous-atom-
containing compound (Non-Final Act 5; Tanaka i-f26). Tanaka discloses
adding antioxidant (thermal stabilizers) during polycondensation in the
molten state or preparation of the material in order to prevent yellow
discoloration of polyamides during preparation (Tanaka ,r 2). The Examiner
finds Tanaka discloses the addition of the phosphorus acid antioxidant to a
reaction system during the melt polymerization process. (Non-Final Act 5.)
Tanaka discloses suitable phosphorus acid antioxidants include calcium
hypophosphite, calcium phosphite, and calcium phosphate (Tanaka ,r 26).
The Examiner finds Gray further teaches that hypophosphorous acid
derivatives used to reduce discoloration of nylon tend to decompose at the
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temperatures necessary to melt nylon (Non-Final Act 5; Gray, col. 3, 11. 18-
31).
The Examiner concludes it would have been obvious to include
phosphorus acid antioxidants during Otaki's melt polycondensation of
polyamide resin in order to prevent yellow discoloration and prevent gels
and fisheyes in the produced polyamide (Non-Final Act 5---6). The Examiner
specifically states:
It would have been obvious to one having ordinary skill in the
art at the time the present invention was made, therefore, to
have prepared polyamide from p-xylylenediamine as the
diamine monomer and azelaic or sebacic acid as the
dicarboxylic acid monomer component, as disclosed in Otaki,
by melt polycondensation in the presence of calcium
hypophosphite or calcium phosphite at any concentration within
the range of 30-400 ppm phosphorus, as taught by Tanaka,
including a concentration which results in a resin having a P
atom concentration within the presently recited range of 50-
1000 ppm ( or 77 to 310 ppm, as recited in claim 25).
(Non-Final Act 6.)
Appellant argues Otaki is directed to the polycondensation of aliphatic
dicarboxylic acid and a diamine component that utilizes and exemplifies
meta-xylylene diamine as the main diamine component (App. Br. 7; Otaki ,r
03). Appellant argues Otaki includes azelaic acid and sebacic acid in a
listing of possible acids, and clearly prefers the use of adipic acid as the
dicarboxylic acid component (App. Br. 7; Otaki ,r,r 03 and 10). Appellant
argues Tanaka describes the polycondensation of aliphatic dicarboxylic acid
and a diamine component that also prefers the use of meta-xylylene diamine
as the main diamine component and adipic acid as the acidic component
(App. Br. 7-8; Tanaka ,r 24). Appellant argues Tanaka includes para-
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xylylene diamine and azelaic and sebacic acids in long listings of possible
other diamines and acids (App. Br. 8; Tanaka ,r 25). Thus, Appellant argues
the combination of Otaki and Tanaka does not render the claimed method
obvious (App. Br. 10-11).
Appellant argues they have demonstrated that the polyamide resin
produced by the claimed method obtains unexpected superior properties
(App. Br. 11-18). Appellant argues the evidence demonstrates the resulting
product "contains few gel and has good color tone, compared to a polyamide
resin produced by performing melt polycondensation of metaxylylene
diamine in the presence of sodium hypophosphite" (App. Br. 11 ). Appellant
argues the examples presented in the Specification and the Declaration filed
March 30, 2016 demonstrates that both the use of para-xylylene diamine and
sebacic acid obtain unexpected superior results compared to the use of meta-
xylylene diamine and adipic acid (App. Br 12-13). Appellant argues the
Declaration filed December 5, 2016 provides technical reasoning explaining
why the superior results shown in the Specification are unexpected (App. Br.
16). Appellant also argues the Declaration filed December 5, 2016
demonstrates it would have been unexpected to obtain polyamide resin
having little gel and excellent color tone obtained by use in calcium
hypophosphite (App. Br. 17).
Appellant's arguments lack persuasive merit. A person of ordinary
skill in the art would have reasonably expected that in the polycondensation
of aliphatic dicarboxylic acid and a diamine component that selecting para-
xylylene diamine and azelaic and sebacic acids as suitable diamine and acids
components was known. Otaki and Tanaka both disclose the suitability of
utilizing para-xylylene diamine and azelaic and sebacic acids as suitable
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diamines and acids for the polycondensation of aliphatic dicarboxylic acid
and a diamine component (Otaki ,r,r 3 and 10; Tanaka ,r 24). While Otaki
and Tanaka each describes the polycondensation of aliphatic dicarboxylic
acid and a diamine component produced by performing melt
polycondensation of meta-xylylene diamine and other suitable acids, this
disclosure does not detract from the disclosure that para-xylylene diamine
and azelaic and sebacic acids is known for use the polycondensation of
aliphatic dicarboxylic acid and a diamine component. A reference is
available for all that it teaches to a person of ordinary skill in the art. See
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
Consequently, the evidence of record establishes that a person of ordinary
skill in the art would have recognized the suitability of performing the melt
polycondensation of para-xylylene diamine and azelaic and sebacic acids
such as described by both Otaki and Tanaka.
Appellant has not disputed the Examiner's determination the
polycondensation of aliphatic dicarboxylic acid and a diamine component in
the presence of calcium hypophosphite or calcium phosphite antioxidant was
known as taught by Tanaka. A person of ordinary skill in the art would have
reasonably expected that calcium hypophosphite or calcium phosphite would
have been suitable for utilization as the antioxidant in the polycondensation
of aliphatic dicarboxylic acid and a diamine component as described by the
combination of Otaki and Tanaka. Appellant also has not disputed the
Examiner's finding that Gray evidences that hypophosphorous acid
derivatives used to reduce discoloration of nylon tend to decompose at the
temperatures necessary to melt nylon.
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Appellant also argues the Declaration filed December 5, 2016
provides evidence that there would have been little motivation for one of
ordinary skill in the art to use calcium hypophosphite, which has poor
solubility, rather than sodium hypophosphite in the production of
polyamides, even if it is known that hypophosphorous acid tends to
decompose at the temperatures necessarily to melt nylon as described by
Gray (App. Br. 16).
Appellant's arguments lack persuasive merit. We agree with the
Examiner that
Appellant has not explained why a difference in solubility
between calcium hypophosphite and sodium hypophosphite in
sebacic acid alone at temperatures up to 205 C establishes that
calcium hypophosphite is unsuitable for use in a process
wherein the reaction mixture contains both diacid and diamine,
and, wherein the reaction mixture reaches temperatures higher
than 205 C.
(Ans. 17.)
A person of ordinary skill in the art would have recognized that the
reaction conditions would have an effect on the selection of components
used in the reaction. In other words, a person of ordinary skill in the art
would not have used a reactant that was known to decompose at the
temperature at which the reaction was taking place. Appellant and the
Declarant have not explained why a person of ordinary skill in the art in the
production of polyamides would have selected a hypophosphorous acid that
decomposes at the temperatures necessary to melt nylon. Contrary to
Appellant's arguments, a skilled artisan would have sought to avoid
components that are not suitable for the reaction conditions.
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Secondary Considerations5
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of prima facie obviousness was based. In re Rinehart, 531
F.2d 1048, 1052 (CCPA 1976).
Appellant argues they have presented evidence of nonobviousness
which demonstrates the method of claim 8 obtains unexpected superior
properties.
Appellant specifically states
Appellants have demonstrated that the polyamide resin
produced by the claimed method obtains unexpected superior
properties, e.g., contains few gel and has good color tone,
compared to a polyamide resin produced by performing melt
polycondensation of metaxylylenediamine in the presence of
sodium hypophosphite.
The Declaration filed March 30, 2016 demonstrates that the
molded articles of Comparative Examples C and D comprising
polyamides obtained with meta-xylylenediamine-based
diamines and adipic acid-based dicarboxylic acids had high
equilibrium water absorption and low tensile elongation as
compared with Examples 201 to 203 of the Specification
(which are according to instant Claim 8 using para-
xylylenediamine and sebacic or azelaic acid) and Comparative
Examples A and B comprising polyamides obtained with meta
xylylenediamine based diamines and sebacic acid. Thus, the
Declaration filed March 30, 2016 demonstrates that both the
use of para-xylylenediamine and sebacic acid obtain
unexpected superior results compared to the use of meta
xylylenediamine and adipic acid. (App. Br. 10-11).
5 Appellants rely on the same evidence of unexpected results to overcome
the rejection of claims 10-12, 18, and 23-25. (App. Br. 19-25).
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We adopt the Examiner's analysis of the evidence present in this
record (Ans. 15-16). We agree with the Examiner's determination that the
references cited in the rejection (e.g., Tanaka) would have suggested the
results obtained in Table 2. Appellant has not explained how the evidence
presented in Table 2 reveals information regarding gelling of the individual
exemplary embodiments. Consequently, alleged improvement in the
combination of gelling and color tone is not commensurate in scope with the
claimed invention that does not limit the gelling of the formed composition.
Appellant has failed to direct us to evidence that establishes a patentable
distinction is achieved utilizing a UV absorbing agent that is reasonably
commensurate with the scope of protection sought by the claims on appeal.
Cf In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that
the results were unexpected, Harris needed to show results covering the
scope of the claimed range. Alternatively Harris needed to narrow the
claims."); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)
("Establishing that one ( or a small number of) species gives unexpected
results is inadequate proof, for 'it is the view of this court that objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support."') ( quoting In re Tiffin, 448
F.2d 791, 792 (CCPA 1971)); In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990) (indicating that in cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims, the applicant must show that the particular range is critical, generally
by showing that the claimed range achieves unexpected results relative to the
prior art range.). Appellant has not adequately explained how the evidence
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presented in the Specification is representative of the scope of the claimed
invention.
Finally, we again emphasize that, although secondary considerations
of nonobviousness must be taken into account, they do not necessarily
control the obviousness conclusion. Pfizer, Inc. v. Apotex, 480 F.3d 1348,
1372 (Fed. Cir. 2007). Here, the record establishes the case of obviousness
established by the Examiner is so strong that Appellant's alleged superior
results are ultimately insufficient.
Claims 10 and 18
Appellant argues claims 10 and 18, which further limit the molar ratio
of the agent (B) to the phosphorus atom of compound (A) to values in
particular ranges, are representative of the ratios used in the inventive
Examples of the Specification. Appellant argue these claims are patentable
because of the substantially improved results exhibited. (App. Br. 19.)
Appellant's argument is not persuasive of reversible error. Appellant
has not explained with any reasonable degree of specificity how the
evidence presented in the present record establishes that the molar ratio
ranges specified by claims 10 and 18 exhibit unexpected results. Appellant
has failed to identify the specific examples that are representative and
commensurate in scope with the subject matter of claims 10 and 18. Thus,
Appellant has not explained how the evidence establishes the claimed molar
ratios result in alleged unexpected results.
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Claims 11 and 12
Appellant argues claims 11 and 12 further defines the speed regulating
agent (B) utilized in the claimed method of producing a polyamide resin
described by independent claim 8. (App. Br. 20-21 ).
Appellant's argument is not persuasive of reversible error. Appellant
has not established that Otaki and Tanaka fail to disclose the speed
regulating agents required by the claimed invention. Appellant has again
failed to explain how the evidence presented in the present record establishes
the molar ratio specified by claims 11 and 12 - each dependent from claim
10 discussed above - is the basis of the alleged unexpected results.
Appellant has failed to identify the specific examples that are representative
and commensurate in scope with the subject matter of claims 11 and 12.
Claim 24
Appellant argues claim 24 further defines the molar ratio of the speed
regulating agent (B) to the phosphorus atom of compound (A) and the
specific speed regulating agent (B) utilized in the claimed method of
producing a polyamide resin described by independent claim 8. (App. Br.
21-22.)
Appellant's argument is not persuasive of reversible error. Appellant
has not established that Otaki and Tanaka fail to disclose the speed
regulating agents required by the claimed invention. Appellant has failed to
explain how the evidence in the present record establishes the specific speed
regulating agent and/or the molar ratio specified by claim 24 are the basis of
the alleged unexpected results. Appellant has again failed to identify the
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specific examples that are representative and commensurate in scope with
the claimed subject matter.
Claim 25
Appellant argues claim 25 describes the a phosphorous atom
concentration of from 77 to 310 ppm and a YI value of 8.5 or less which are
features representative of the inventive Examples in the Specification.
Appellant argues these claims are patentable because of the substantially
improve results exhibited. (App. Br. 22-23.)
Appellant's argument is not persuasive of reversible error. Appellant
has not explained how the evidence presented in the present record
establishes that the phosphorous atom concentration of from 77 to 310 ppm
and a YI value of 8.5 or less specified by claim 25 exhibit the alleged
unexpected results. Specification Table 2 indicates achieving a YI value of
8.5 or less does not necessarily require the phosphorous atom concentration
to be within the range of 77 to 310 ppm. Specification Table 2 also does not
contain information regarding gelling. Appellant has not explained how the
evidence establishes the claimed phosphorous atom concentration of from 77
to 310 ppm and a YI value of 8.5 or less results are the basis of the alleged
unexpected results.
Claim 23
Appellant argues the method of claim 23 requires that sodium
hypophosphite is not present in the melt polycondensation (App. Br. 24).
Appellant argues the present record demonstrates unexpected results
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compared to sodium hypophosphite as preferred by Tanaka (App. Br. 13-
14).
We have previously addressed the obviousness of utilizing the
phosphorus-containing antioxidant required by the claimed invention above
when addressing independent claim 8. As discussed above, Tanaka was
cited by the Examiner for describing the suitability of utilizing calcium
hypophosphite as an antioxidant in the process described by Otaki. A person
of ordinary skill in the art would have reasonably expected that calcium
hypophosphite could have been utilized as the antioxidant in the absence of
sodium hypophosphite.
DECISION
The Examiner's rejections of claims 8, 10-12, 18 and 23-25 under 35
U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1136 (a)(l)(iv).
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TIME PERIOD
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).
AFFIRMED
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