Ex Parte Sasaki

Patent Trial and Appeal Board

Jul 5, 2017

13488993 (P.T.A.B. Jul. 5, 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.
13/488,993 06/05/2012 Haruo SASAKI 398741US99CONT 9229
22850 7590 07/07/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
07/07/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARUO SASAKI
Appeal 2016-005237
Application 13/488,9931
Technology Center 1700
Before PETER F. KRATZ, ROMULO H. DELMENDO, and
WESLEY B. DERRICK, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter “Appellant”) appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1, 2,
and 9—17.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as “Mitsubishi Chemical
Corporation” (Appeal Brief filed September 16, 2015, hereinafter “Appeal
Br.,” 2).
2 Appeal Br. 6—25; Final Office Action entered March 20, 2015, hereinafter
“Final Act.,” 2—8; Examiner’s Answer entered February 11, 2016,
hereinafter “Ans.,” 2—16.
Appeal 2016-005237
Application 13/488,993
BACKGROUND
The subject matter on appeal relates to a polycarbonate resin
composition (X) comprising: a specified polycarbonate resin (A) that
contains a particular dihydroxy compound; and an aromatic polycarbonate
resin (B) (Specification, hereinafter “Spec.,” 118). According to the
Appellants, “the polycarbonate resin composition (X) not only has excellent
light resistance but also has excellent transparency, hue, heat resistance,
thermal stability, moldability, and mechanical strength” (id.).
Representative claim 1 is reproduced from page 26 of the Appeal
Brief (Claims Appendix), with key limitations highlighted in bold italicized
text, as follows:
1. A polycarbonate resin composition which is a
polycarbonate resin composition (X) comprising a polycarbonate
resin (A) that contains structural units (a) derived from a
dihydroxy compound having the portion represented by the
following formula (1) as part of the structure thereof and an
aromatic polycarbonate resin (B), wherein the content of the
aromatic polycarbonate resin (B) is 30% by weight or higher
and 70% by weight or lower based on the polycarbonate resin
composition (X),
wherein the portion represented by the formula (1) as part
of-CH2-0-H is excluded,
wherein polycarbonate resin (A) contains no structural
units derived from an aromatic dihydroxy compound and
contains other structural units derived from aliphatic dihydroxy
compounds and/or dihydroxy compounds of alicyclic
hydrocarbons,
wherein the proportion of structural units each derived
from a dihydroxy compound having an aromatic ring to all
(!)
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Application 13/488,993
structural units each derived from a dihydroxy compound in the
aromatic polycarbonate resin (B) is 100% by mole,
wherein the dihydroxy compound having the portion
represented by the formula (1) as part of the structure thereof is
a dihydroxy compound represented by the following formula (2):
and wherein a molded object having a thickness of 3 mm
formed from the polycarbonate resin composition, after having
undergone a 500-hour irradiation treatment with a sunshine
carbon arc lamp at a discharge voltage of 50 V and a discharge
current of 60 A at a black panel temperature of 63 °C in an
environment having a relative humidity of 50% and a rainfall
spray period per hour of 12 minutes, has a difference in
yellowness index (YI) value between before and after the
irradiation treatment of 10 or less.
On appeal, the Examiner maintains two rejections:
I. Claims 1,2, and 9-17 under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Fuji et al.3 (hereinafter “Fuji”) in
view of Miura et al.4 (hereinafter “Miura”); and
II. Claims 1, 2, and 9—17 provisionally under the judicially-
created doctrine of obviousness-type double patenting as
3 WO 2007/148604 Al, published December 27, 2007. The Appellant does
not contest the Examiner’s reliance on the corresponding United States
published application—namely, US 2010/0190953 Al, published July 29,
2010—as an English language translation. Therefore, we also rely on and
cite to the corresponding United States application.
4 EP 0 837 086 A2, published April 22, 1998.
HO y n
REJECTIONS ON APPEAL
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Application 13/488,993
unpatentable over claims 1—20 of copending Application
13/618,368 (hereinafter “’368 Application”) in view of
Fuji and Miura.
(Final Act. 2—8; Ans. 2—16.)
DISCUSSION
I
Rejection I. The Appellant provides various arguments under
multiple sub-headings identified by certain claim(s). As provided under 37
C.F.R. § 41.37(c)(l)(iv), however, we focus our discussion on claim 1,
which we select as representative, and consider other claims only to the
extent that they have been argued separately within the meaning of the rule.
Merely pointing out what a claim recites and/or merely asserting that the
prior art does not disclose or suggest a claim limitation is not an argument
that requires our separate consideration. See, e.g., In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”).
The Examiner finds that Fuji describes every limitation recited in
claim 1, including an aromatic polycarbonate resin, except for the amount of
the aromatic polycarbonate resin (i.e., the limitation highlighted in
reproduced claim 1 above) (Final Act. 2). To resolve this difference, the
Examiner relies on Miura (id.). Specifically, the Examiner finds that Miura
teaches the amount of aromatic polycarbonate in polycarbonate resin
compositions for optical articles should be 10-90 wt.% and that a person
having ordinary skill in the art would have optimized the amount to achieve
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a desired impact resistance, heat resistance, and other physical properties
(id.). Based on these findings, the Examiner concludes that a person having
ordinary skill in the art would have found the subject matter recited in claim
1 obvious (id. at 3).
The Appellant provides three main arguments (Appeal Br. 7—21).
First, the Appellant contends that “the evidence shows that there was no
reasonable expectation that [the] modification [of Fuji in view of Miura]
would have accomplished the goals set forth in Fuji” (Appeal Br. 7).
According to the Appellant, no reasonable expectation of success would
have existed “[bjecause the character of the non-aromatic/aliphatic
polycarbonate copolymers of Fuji would be expected to be materially
different from that of the aromatic/aliphatic copolycarbonate resin of
Miura” (id. at 18). Second, the Appellant argues:
The Examiner committed reversible error by concluding
that motivation would have existed to combine the teachings of
Miura with Fuji, because the evidence shows that these
references are directed toward different optical materials
possessing divergent optical properties.
(Appeal Br. 7). Third, the Appellant argues that “[t]he Examiner committed
reversible error by disregarding the comparative experimental data provided
by the Applicants” (id. at 19). In support, the Appellant relies on the data
provided in Table la of the Appellant’s Declaration filed on July 29, 2014
(id. at 19-20, referring to discussion at 7—11).
The Appellant’s arguments fail to identify a reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
The Examiner must provide some articulated reasoning with some
rational underpinning to support a conclusion that a person having ordinary
skill in the art would have combined known elements in the prior art in the
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manner claimed by the Appellant. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (cited with approval in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007)). In addition, the Examiner must establish that the person having
ordinary skill in the art would have combined the known elements with a
reasonable expectation of success. Institut Pasteur & Universite Pierre et
Marie Curie v. Focarino, 738 F.3d 1337, 1334 (Fed. Cir. 2013) (“The
Supreme Court’s reference to ‘predictable solutions’ and ‘anticipated
success’ [in KSR, 550 U.S. at 421] accords with this court’s longstanding
focus on whether a person of ordinary skill in the art would . . . have had a
‘reasonable expectation of success’ in pursuing the possibility that turns out
to succeed and is claimed.”). Also, evidence of secondary considerations,
when offered, must be considered. KSR, 550 U.S. at 406 (quoting Graham
v. John Deere Co. of Kansas City, 383 U.S. 1, 17—18 (1966)).
The Examiner’s rejection does not run afoul of these requirements.
We discuss each requirement below, taking account the Appellant’s
arguments provided in the Appeal Brief.
A. Motivation or Reason to Combine
The Appellant does not dispute the Examiner’s finding that Fuji
describes a polycarbonate resin composition including a polycarbonate resin
having the same structure as “polycarbonate resin (A)” recited in claim 1
(Final Act. 2; Appeal Br. 11—12). Nor does the Appellant contest the
Examiner’s finding (Final Act. 2) that Fuji teaches explicitly that a synthetic
resin such as aromatic polycarbonate may be added to form a polymer alloy
(Fuji, 1124). Indeed, the Appellant admits as much in stating that
“[although ‘aromatic poly-carbonate’ is mentioned as a synthetic resin that
may be compounded with the polycarbonate copolymers of Fuji, no
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Application 13/488,993
illustration of a polymer alloy containing an aromatic polycarbonate is
provided.” (Appeal Br. 13). Rather, the Appellant’s position appears to be
that Miura’s teachings concerning the aromatic polycarbonate and its content
are inapt for polycarbonate resin compositions of the type disclosed in Fuji
(Appeal Br. 11—15).
We do not agree with the Appellant. Consistent with the Examiner’s
findings (Final Act. 2, Ans. 6), Fuji teaches adding an aromatic
polycarbonate to a polycarbonate resin composition including a
polycarbonate resin that is indistinguishable from the Appellant’s
“polycarbonate resin (A)” (Fuji, 32, 124, 163—208). Although Fuji’s
disclosure pertaining to the addition of an aromatic polycarbonate
component is not in the form of a described working example, a person
having ordinary skill in the art would have considered all disclosures found
in Fuji—not merely the working examples. Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[I]n a section 103 inquiry,
‘the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’”) (Quoting In re Lamberti, 545 F.2d
747, 750 (CCPA 1976)).
Considering Fuji as a whole, we find that Fuji discloses adding some
amount of an aromatic polycarbonate to a polycarbonate resin of a type
encompassed by the Appellant’s specified “polycarbonate resin (A).” Miura
teaches adding an aromatic polycarbonate resin, preferably in an amount of
10-90% by weight—a range that overlaps the range recited in claim 1, to a
copolycarbonate resin to obtain a balance of various properties (Miura at 8,
1. 57—9,1. 7). According to Miura, “[i]f the proportion of the aromatic
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polycarbonate resin contained in the resin composition D is less than 10
wt%, the impact resistance and heat resistance and the like of the aromatic
polycarbonate resin will not be reflected on the resulting composition” {id.
at 8,1. 58—9,1. 2) (emphasis added). Consistent with the Examiner’s
findings (Ans. 10-11), a person having ordinary skill in the art would have
drawn a reasonable inference from Miura’s disclosure that the aromatic
polycarbonate contributes certain properties of its own (e.g., impact
resistance and heat resistance) to the overall composition. Therefore, in
view of Miura’s disclosure, a person having ordinary skill in the art would
have reasonably expected that adding 10—90% by weight of an aromatic
polycarbonate to Fuji’s polycarbonate resin composition would similarly
improve various properties such as impact resistance and heat resistance.
Although Miura’s copolycarbonate resin is not identical to Fuji’s
polycarbonate resin, both references relate to polycarbonate compositions,
and the Appellant does not direct us to sufficient evidence or persuasive
technical reasoning that would explain why such a difference would negate
the known effects attributed to the aromatic polycarbonate. In re Mayne,
104 F.3d 1339, 1343 (Fed. Cir. 1997) (“Structural relationships often
provide the requisite motivation to modify known compounds to obtain
new compounds.”).
Accordingly, we determine that the Examiner provided sufficient
articulated reasoning with some rational underpinning to support a
conclusion that a person having ordinary skill in the art would have
combined Fuji and Miura in the manner claimed.
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B. Reasonable Expectation of Success
The Appellant argues that “the respective polycarbonate resins
described in [Fuji and Miura] are too different to provide the reasonable
expectation of success that is required under Section 103(a)” (Appeal Br.
11). As the Examiner points out (Ans. 2), Fuji teaches adding an aromatic
polycarbonate in some suitable amount, and, therefore, a person having
ordinary skill in the art would have had a reasonable expectation of success
in adding 10-90% by weight of an aromatic polycarbonate to improve
impact resistance and heat resistance, as suggested by Miura. Only a
reasonable expectation of success—not absolute predictability—is required
to establish obviousness under 35 U.S.C. § 103(a). In re O’Farrell, 853
F.2d 894, 904 (Fed. Cir. 1988).
C. Secondary Considerations
The Appellant relies on experimental results summarized in Table la
of the Declaration filed on July 29, 2014 (Appeal Br. 19-21). According to
the Appellant, those results show “that the proportion of the aromatic
polycarbonate resin (B) is critical—such that including less than 30% by
weight adversely affects both the initial YI [yellowness index] value and the
YI value after [a] 500-hour treatment [with a sunshine weatherometer]” (id.
at 21).
We do not find the proffered evidence persuasive. As the Examiner
finds (Ans. 4), the showing is not commensurate in scope with claim 1. The
results support—at most—an aromatic polycarbonate resin (B) content range
of 40-60% by weight (Decl. 2, Table la), whereas the range recited in claim
1 is considerably broader (i.e., “30% by weight or higher and 70% by weight
or lower”). In re Inland Steel Co., 265 F.3d 1354, 1365—66 (Fed. Cir. 2001)
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(holding that Inland failed to overcome a prima facie case of obviousness
where “the examiner expressed concern that insufficient data had been
presented to prove the unexpectedly favorable results in the . . . claimed
antimony ranges, because Inland offered only a few data points from one
experiment comparing antimony within and below its claimed ranges.”); 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 addition, the experimental results are based on compositions that
are limited to a specific combination of “PCI” (a polycarbonate with
stmctural units derived from isosorbide and 1,4-cyclohexanedimethanol in a
40/60 mol% ratio and a reduced viscosity of 0.63 dL/g) and “PC3”
(“Novarex 7022J” manufactured by Mitsubishi Engineering-Plastics Corp.,
which is described as an aromatic polycarbonate resin having, as the only
units, structures derived from 2,2-bis(4-hydroxyphenyl)propane and having
a viscosity-average molecular weight of 22,000) (Decl. 2, Table la; Spec.
208—209). By contrast, claims 1 (and separately argued claims 10—12)
are considerably broader in scope. In re Grasselli, 713 F.2d 731, 743 (Fed.
Cir. 1983) (“With respect to appellants’ broad claims to a catalyst with ‘an
alkali metal, ’ the experiments detailed in Friedrich III, being limited to
sodium only, are not commensurate in scope, and are, therefore, insufficient
to rebut the prima facie case.”).
Moreover, the Appellant does not direct us to sufficient evidence
indicating that a person having ordinary skill in the art would have
considered the results to have been unexpected. In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (burden of showing unexpected results rests on the
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applicant who asserts them). See also Harris, 409 F.3d at 1344 (“The 32—
43% increase in stress-rupture life . . . does not represent a ‘difference in
kind’ that is required to show unexpected results.”) (Quoting In re Huang,
100 F.3d 135, 139 (Fed. Cir. 1996)).
For these reasons, we sustain Rejection I.
Rejection II. Relying on MPEP § 804, the Appellant’s sole argument
is that the current application was filed before the ’368 Application and,
therefore, the current application should be permitted to issue without a
terminal disclaimer (Appeal Br. 21—22). That argument lacks merit because
the relied-upon provision of the MPEP relates to situations in which the
provisional double patenting rejection is the only rejection remaining in the
earlier filed application. Here, Rejection I is affirmed, and, therefore, the
procedure discussed in the relied-upon MPEP provision is inapplicable.
SUMMARY
Rejections I and II are sustained. Therefore, the Examiner’s final
decision to reject claims 1, 2, and 9-17 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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