12230691 (B.P.A.I. Jan. 11, 2012)

Ex Parte Ozasa et al

Board of Patent Appeals and InterferencesJan 11, 2012

12230691 (B.P.A.I. Jan. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 12/230,691 09/03/2008 Akio Ozasa 12480-000055/US/DVA 3456 30593 7590 01/11/2012 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 EXAMINER KHARE, ATUL P ART UNIT PAPER NUMBER 1742 MAIL DATE DELIVERY MODE 01/11/2012 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 AKIO OZASA, AKIHISA HASHIMOTO, and SHINJI TANAKA ________________ Appeal 2010-010024 Application 12/230,691 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and KAREN M. HASTINGS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 13-34, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a method for making a biodegradable molded article. Claim 13 is illustrative: Appeal 2010-010024 Application 12/230,691 2 13. A method for producing a biodegradable molded article, comprising the steps of: directly heating a molding material by dielectric heating to form a biodegradable expanded molded article, the biodegradable expanded molded article being molded in a specified shape with an irregular surface by steam expansion molding of the molding material, and simultaneously thermally softening a coating film and attaching the thermally softened coating film to the irregular surface of the biodegradable expanded molded article so as to maintain the irregular surface of the biodegradable expanded molded article, wherein the coating film is mainly made of a biodegradable plastic and having at least hydrophobicity, the molding material is a slurry or dough molding material mainly made of a starch or a starch derivative and prepared by adding water to the starch or the starch derivative, and the starch or the starch derivative contains high-amylose starch or high-amylose starch derivative. The References Altieri 5,153,037 Oct. 6, 1992 Ando 5,639,518 Jun. 17, 1997 Doane 5,861,216 Jan. 19, 1999 Bradt 5,888,599 Mar. 30, 1999 Shogren 6,146,573 Nov. 14, 2000 Lörcks CA 2,143,432 Nov. 28, 2000 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 13, 16, 18-24, 27, and 29-34 over Lörcks in view of Doane and Ando, claims 14 and 15 over Lörcks in view of Doane, Ando, and Altieri, claims 17 and 28 over Lörcks in view of Doane, Ando, and Bradt, and claims 25 and 26 over Lörcks in view of Doane, Ando, and Shogren. Appeal 2010-010024 Application 12/230,691 3 OPINION We reverse the rejections. We need to address only the independent claims, i.e., claims 13 and 24.1 Those claims require heating a molding material to form a biodegradable expanded molded article having an irregular surface, and simultaneously thermally softening a coating film and attaching it to the irregular surface so as to maintain the irregular surface. For that claim requirement the Examiner relies upon Lörcks (Ans. 4). Lörcks foams and cures starch to form a layer and simultaneously combines it with an additional layer of a further laminate material in an expansion molding apparatus at 180-270ºC to obtain a laminated composite material (pp. 2, 5-6, 10). The further laminate material can be a synthetic or biopolymeric film (pp. 3, 7). The Examiner argues that “although Lorcks does not explicitly disclose thermal softening of the laminate composite material, the Lorcks molding temperature of 220ºC is sufficient to cause softening of many or all of the laminate composite materials of Lorcks, including synthetic films” (Ans. 13). Lörcks does not disclose any particular synthetic film materials. Thus, Lörcks does not appear to provide a basis for the Examiner’s argument that a molding temperature of 220ºC is sufficient to soften many or all of Lörcks’ synthetic film materials, and the Examiner has not established such a basis. 1 The Examiner does not rely upon any disclosure in Altieri, Bradt or Shogren which remedies the deficiency in the references applied to the independent claims (Ans. 8-10). Appeal 2010-010024 Application 12/230,691 4 The Examiner argues that the Appellants’ Specification states that “the softening point of the coating film 12 is preferably not less than 130ºC, and more preferably not less than 150ºC” (Spec. 56:1-3), and that Lörcks’ “laminate material can be made from a synthetic film, and is included in the mold during the foaming process, which would inherently thermally soften the film as required by the claim (page 3)” (Ans. 4) An inherent characteristic must be inevitable, and not merely a possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). The Examiner has not established that Lörcks discloses the coating film in the relied-upon portion of the Appellants’ Specification or that Lörcks’ synthetic coating film inevitably thermally softens instead of remaining unsoftened at the molding temperature. Hence, the Examiner has not established a prima facie case of obviousness of the Appellants’ claimed method. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 13, 16, 18-24, 27, and 29-34 over Lörcks in view of Doane and Ando, claims 14 and 15 over Lörcks in view of Doane, Ando, and Altieri, claims 17 and 28 over Lörcks in view of Doane, Ando, and Bradt, and claims 25 and 26 over Lörcks in view of Doane, Ando, and Shogren are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED sld