Ex Parte Ozawa et al

Patent Trial and Appeal Board

Apr 13, 2017

13380214 (P.T.A.B. Apr. 13, 2017)

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.
13/380,214 12/22/2011 Hitoshi Ozawa 111639 9000
38834 7590 04/17/2017
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
04/17/2017 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):
patentmail @ whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HITOSHI OZAWA, TATSUO OHTANI, and YO YAMAUCHI
Appeal 2016-002717
Application 13/380,214
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner rejecting claims 1,3,5, and 62 of Application
13/380,214 under 35 U.S.C. § 103(a) as unpatentable over the combination
1 Appellants identify the real party in interest as Sumitomo Seika Chemicals
Co., Ltd. Appeal Brief dated July 6, 2015 (“App. Br.”) 1.
2 Final Rejection dated Oct. 1, 2014 (“Final Act.”) 2—3. This Decision also
refers to the Examiner’s Answer dated Nov. 5, 2015 (“Ans.”), and the Reply
Brief dated Jan. 5, 2016 (“Reply Br.”).
Appeal 2016-002717
Application 13/380,214
of Miyazaki3 and Vreeland.4 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
The subject matter on appeal relates to a resin composition comprising
a water-soluble polyethylene oxide (“PEO”), a modified polyalkylene oxide
(“PAO”), and a thermoplastic resin. App. Br. 1; Specification dated Dec.
12, 2011 (“Spec.”) 11. The resin composition may be attached to a razor
blade cartridge to provide lubrication when shaving under wet conditions.
Spec. 115, 8.
Claim 1, the sole independent claim, is illustrative of the subject
matter on appeal:
1. A resin composition comprising a water-soluble
polyethylene oxide having a viscosity average molecular weight
of 1,000,000 to 6,000,000, a modified polyalkylene oxide, and a
thermoplastic resin, wherein the modified polyalkylene oxide is
a modified polyalkylene oxide obtained by reacting a
polyalkylene oxide, a diol compound, and a diisocyanate
compound together,
wherein the ratio of the water-soluble polyethylene
oxide is 80 to 120 parts by mass relative to 100 parts by
weight of the thermoplastic resin.
3 Miyazaki et al., JP 08-280952 A, published Oct. 29, 1996 (“Miyazaki”).
4 Vreeland et al., WO 93/16135, published Aug. 19, 1993 (“Vreeland”).
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Appeal 2016-002717
Application 13/380,214
DISCUSSION
Appellants do not separately argue any of the dependent claims. App.
Br. 2—5. We therefore limit our discussion to claim 1 as argued by
Appellants; claims 3, 5, and 6 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv) (2013).
The Examiner finds that Miyazaki, a water-soluble shaving aid
attached to a razor blade, teaches a composition comprising a thermoplastic
resin and a modified PAO, and also suggests using 3—15% of a water-soluble
resin. Final Act. 2 (providing citations to Miyazaki). Miyazaki does not
explicitly disclose that the water soluble resin is PEO. The Examiner
acknowledges that Miyazaki fails to teach a water-soluble PEO, but
determines it would have been obvious to a person of ordinary skill in the art
to use polyethylene as the water-soluble resin in Miyazaki’s composition
because Vreeland teaches adding a PEO with molecular weight of about
5,000,000 as a water-soluble polymer for a shaving aid composition
comprising polystyrene. Final Act. 3, citing Vreeland 2:25—27, 3:25—33.
The Examiner further notes that Miyazaki discloses polystyrene as a
thermoplastic resin in its composition. Final Act. 2, citing Miyazaki 118.
Appellants argue that it would not have been obvious to a person of
ordinary skill in the art to substitute the PEO of Vreeland for the water-
soluble resin taught in Miyazaki, because Miyazaki teaches away from using
a water-soluble polyethylene oxide. App. Br. 2. Appellants further argue
that the Examiner has provided “no evidence or reasoning regarding why
one of ordinary skill in the art would use ‘polyethylene oxide’ and ‘modified
polyalkylene oxide’ as recited in claim 1” based on Miyazaki’s teaching. Id.
at 5.
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Appeal 2016-002717
Application 13/380,214
Having considered Appellants’ arguments in light of this appeal
record, we are not persuaded that Appellants identify reversible error.
Accordingly, we affirm the rejections for the reasons set forth by the
Examiner (Final Act. 2—3; Ans. 2-4), which we adopt as our own. We add
the following primarily for emphasis.
Appellants’ argument that Miyazaki teaches away from a composition
comprising water-soluble PEO is not persuasive because it relies solely on a
portion of Miyazaki and thus fails to properly consider the reference as a
whole. App. Br. 2—3. Appellants rely on Miyazaki 14 which indicates that
desired properties of high water solubility and low viscosity cannot be
satisfied sufficiently by a prior art composition using water-soluble PEO;
Appellants argue that this teaches avoiding PEO due to its inferior
properties. App. Br. 2—3. Miyazaki, however, does not discourage the use
of PEO in compositions such as claim 1, but rather teaches that the main
component of its inventive composition is a modified PEO, combined with
polystyrene and another water-soluble resin adjuvant. Miyazaki || 9, 18—
20, 27. Therefore, the Examiner’s finding that Miyazaki 14 refers to a
composition containing only PEO (not Miyazaki’s inventive composition) is
reasonable, as is the Examiner’s finding that Miyazaki does not teach away
from the composition of claim 1.
We also are not persuaded that Appellants identify reversible error in
the Examiner’s reasoning for combining Miyazaki and Vreeland.
Appellants do not sufficiently explain why modification of Miyazaki’s
composition by substituting the PEO taught by Vreeland for Miyazaki’s
water-soluble resin adjuvant would not have been reasonably suggested to a
person of ordinary skill in the art. Both Miyazaki and Vreeland teach water-
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Appeal 2016-002717
Application 13/380,214
soluble shaving aids containing polystyrene and a water-soluble polymer.
Indeed, Vreeland’s composition includes all of the basic components of the
composition of claim 1, except for a modified polyalkylene oxide. Vreeland
2:25—30. In view of the teachings of both references, the Examiner’s
reasoning to combine Miyazaki and Vreeland provides more than the
requisite of “some rational underpinning to support the legal conclusion of
obviousness” necessary to support a determination of obviousness. KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
SUMMARY
We affirm the rejection of claims 1,3,5, and 6.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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