Ex Parte Suzuki et al

Board of Patent Appeals and Interferences

Jun 30, 2009

10530480 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHIGERU SUZUKI, TAKESHI ODA,
and NORIHIRO SHIMIZU
____________

Appeal 2009-002641
Application 10/530,480
Technology Center 1700
____________

Decided:1 June 30, 2009
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 23, 28, and 29. Claims 24 through 27, the

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 10/530,480

other pending claims in the above-identified application, stand withdrawn by
the Examiner. We have jurisdiction under 35 U.S.C. § 6(b).2
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
The subject matter on appeal is directed to a heat shrinkable film
comprising 50 to 95 mass% of a block copolymer containing an aromatic
vinyl compound and a conjugated diene and having a micro phase separation
structure comprising a soft phase and hard phase, 5 to 50 mass% of a styrene
type polymer having a syndyotactic structure and 0 to 45 mass% of a styrene
type polymer different from the aromatic vinyl compound (Spec. 5). “The
block copolymer preferably has a structure in which the aromatic vinyl
compound and the conjugated diene are bonded at random . . . .” (Spec. 6).
The aromatic vinyl compound employed includes, inter alia, “styrene, o-
methylstyrene, p-methylstyrene, p-tert-butylstyrene, 2, 4-dimethylstyrene,
[and] 2, 5-dimethylstyrene” (Spec. 7-8). The conjugated diene employed
includes, inter alia, “1, 3-butadiene, 2-methyl-1, 3-butadiene (isoprene), 2,
3-dimethyl-1, 3-butadiene, 1, 3-pentadiene or 1, 3-hexadiene” (Spec. 8).
Examples 1 through 8 at pages 45 through 53 of the Specification are
directed to preparing “[a] styrene/styrene butadiene random
copolymer/styrene block copolymer” (a block copolymer having an aromatic
vinyl compound and a conjugate diene) (Spec. 45). These Examples show
that the timing and number of the addition of monomers can determine the
formation of a micro phase separation structure comprising soft and hard

2 An oral hearing was held on May 13, 2009.
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phases in block copolymers (Spec. 45-53 and 65). Example 1 shows anionic
polymerization of a mixture of a polymerization solvent (cyclohexane), a
styrene monomer, and a polymerization catalyst solution containing
cyclohexane and n-butylithium (Spec. 45). “After the rate of polymerization
of the styrene monomer exceeded 99%, while keeping the temperature in the
reaction system at 80oC,” a styrene monomer and butadiene were
simultaneously added at a constant rate and held for 5 minutes after
completion of the addition (Spec. 45-46). Subsequently, an additional
amount of a styrene monomer was added all at once to complete the
polymerization (Spec. 46). Water was then added to deactivate all the
polymerizable active terminals and obtain a polymer liquid containing a
polymer having a polystyrene block portion and a random structure of
styrene and butadiene (id). The resulting polystyrene block copolymer,
however, has no micro phase separation structure (Spec. 65, Table 1). On
the other hand, Examples 2 through 8 form block copolymers having micro
phase separation structures by repeating essentially the same preparation
steps as Example 1, with an additional step of adding a substantial amount of
additional butadiene all at once after the simultaneous constant addition of a
styrene monomer and butadiene, but before the addition of the additional
amount of the styrene monomer (Spec. 46-53 and 65). According to page 7,
lines 14-22, of the Specification:
The block copolymer having a micro phase separation
structure comprising a soft phase and a hard phase
comprises a hard phase with a high styrene mass ratio and
a soft phase with a low styrene mass ratio, and such a
micro phase separation structure can be judged by
employing a means of image analysis by a transmission
electron microscope or by two or more glass transition
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temperatures obtained by DSC or dynamic viscoelasticity
spectrum measurement being observed.
Details of the appealed subject matter are recited in representative
claim 1 reproduced below:
1. A heat shrinkable film comprising a resin composition
comprising the following components (A), (B) and (C), obtained by
orientation at least in monoaxial direction, and having a heat shrinkage ratio
at 80°C for 10 seconds of at least 20%:

(A) 50 to 95 mass% of a block copolymer comprising an aromatic
vinyl compound and a conjugated diene in a proportion of the aromatic vinyl
compound of from 50 to 90 mass%, and having a micro phase separation
structure comprising a soft phase and a hard phase,

(B) 5 to 50 mass% of a styrene type polymer having a syndyotactic
structure, and

(C) 0 to 45 mass% of a styrene type polymer different from the
components (A) and (B).

The Examiner relied upon the following as evidence of
unpatentability:
Shiraki US 4,386,125 May 31, 1983
Lind US 6,074,715 Jun. 13, 2000
Teranishi US 6,184,289 B1 Feb. 6, 2001
Matsui US 6,841,261 B2 Jan. 11, 2005
The Board newly relies upon the following prior art:
Appellants’ admission at pages 2 and 3 of the Specification (hereinafter
referred to as “the admitted prior art”).

The Examiner rejected the claims on appeal as follows (Ans. 3-13):
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1) Claims 1 through 20, 22, 23, 28, and 29 under 35 U.S.C.
§ 103(e) as unpatentable over Matsui in view of Lind with evidence of
Shiraki; and
2) Claim 21 under 35 U.S.C. § 103(a) as unpatentable over Matsui
in view of Lind with evidence of Shiraki and Teranishi.
The Examiner relied on Matsui to teach, inter alia, a heat shrinkable
film comprising the claimed amount of a block copolymer having an
aromatic vinyl compound and a conjugated diene in the claimed proportion
and a micro phase separation structure comprising soft and hard phases, and
the claimed amount of a styrene type polymer (Ans. 3-12). The Examiner
relied on the written description at column 8, line 64 to column 10, line 51 of
Matsui for the micro phase separation structure (Ans. 3 and 13). The styrene
type polymer generically taught by Matsui, according to the Examiner, is
inclusive of a styrene type polymer having a syndiotactic structure (Ans. 14).
However, the Examiner recognized that Matsui does not specifically
mention a syndiotactic styrene type polymer (Ans. 3-5).
To remedy this deficiency, the Examiner relied on Lind to show that
the use of a styrene type polymer having a syndiotactic structure imparts
certain benefits to heat shrinkable films (Ans. 4-5 and 14). The Examiner
then concluded (Ans. 5):
[I]t would have been obvious to one having ordinary skill
in the art to substitute a syndyotactic polystyrene for a styrene
polymer of Lind (‘715) [sic., Matsui] in order to provide a
strong heat shrinkable multilayered structure.

The Examiner also relied on Shiraki to show that the claimed heat
shrinkage factor is necessarily or obviously present in Matsui’s heat
shrinkable film (Ans. 4). Further, the Examiner relied on Teranishi to show
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that the rubber particles recited in claim 21 are known to have optimal
strength and transparency (Ans. 12-13).
Appellants traverse the Examiner’s rejections, arguing, among other
things, that no block copolymer having a micro phase separation structure is
described at column 8, line 64 to column 10, line 51 of Matsui (App. Br. 6
and Reply Br. 1).
ISSUE AND CONCLUSION
Have Appellants identified reversible error in the Examiner’s finding
that a block copolymer having the claimed micro phase separation structure
is described at column 8, line 64 to column 10, line 51 of Matsui? On this
record, we answer this question in the affirmative.

RELEVANT FINDINGS OF FACT
1. Matsui teaches, at column 8, line 64 to column 10, line 51, a block
copolymer comprising a vinyl aromatic hydrocarbon and a conjugated diene.
2. Matsui teaches (col. 9, ll. 28- 40) that:
As the vinyl aromatic hydrocarbon used in each of the
block copolymers (A), (A2) and (A3) . . . styrene, o-
methylstyrene, p-methylstyrene, p-tert-butylstyrene, 2, 4-
dimethylstyrene, 2, 5-dimethylstyrene . . . .

Further, the conjugated diene may, for example, be 1,3-
butadiene, 2-methyl-1,3-butadiene (isoprene), 2,3-dimethyl-1,3-
butadiene, 1,3-pentadiene or 1,3-hexadiene, and particularly
preferably 1,3-butadiene or isoprene may be mentioned.

3. Matsui teaches that the block copolymer has a weight average
molecular weight of preferably from 50,000 to 500,000 and more preferably
from 100,000 to 300,000 (col. 9, ll. 47-56).
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4. Matsui teaches (col. 9, ll. 42-46) that the weight ratio of the vinyl
aromatic hydrocarbon and the conjugated diene in the block copolymer
is not particularly limited, however, the weight ratio of the
conjugated diene is preferably within a range of from 5 to
40% [i.e., a proportion of the aromatic vinyl hydrocarbon of
from 60 to 95 mass%], more preferably from 7 to 30% [a
proportion of the vinyl aromatic hydrocarbon of from 70 to
93 mass%].

5. Matsui teaches (col. 10, ll. 5-13) that:
[T]he molecular weight and the molecular structure of the
copolymer in the present invention can be controlled depending
upon the purpose, by optionally changing the charge amount,
the timing of addition and the number of addition of the
monomers, the polymerization initiator, the randomizing agent,
and the proton donating substance used for deactivation of
active terminals (hereinafter referred to as “polymerization
terminator”).

6. Matsui does not expressly describe or mention anywhere at column 8,
line 64 to column 10, line 51, the claimed micro phase separation structure.
7. Nor has the Examiner shown that the relied upon columns and lines of
Matsui inherently or impliedly describe a block copolymer having the
claimed micro phase separation structure (Ans. 3-16)
8. Appellants rely upon Specification Examples 1 through 8 to show that
the use of the same aromatic vinyl hydrocarbon and conjugated diene in an
anionic polymerization would not necessarily result in the formation of a
block copolymer having the claimed micro phase separation structure (App.
Br. 4-5)
9. The Examiner does not discuss the propriety of Specification
Examples 1 through 8 relied upon by Appellants (Ans. 3-16).
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PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966).
As stated in KSR Int’l Co., v. Teleflex, Inc., 550 U.S. 398, 417-18
(2007):
“[A]nalysis [of whether the subject matter of a claim
would have been prima facie obvious] need not seek out precise
teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.”

Nevertheless, "‘rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.’" Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
ANAYLSIS
The columns and lines of Matsui relied upon by the Examiner do not
expressly describe a block copolymer having the claimed micro phase
separation structure. Nor has the Examiner demonstrated that the relied
upon columns and lines of Matsui inherently or impliedly describe a block
copolymer having the claimed micro phase separation structure.
It follows that the Examiner reversibly erred in finding that a block
copolymer having the claimed micro phase separation structure is described
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at column 8, line 64 to column 10, line 51 of Matsui. Accordingly, we
reverse the Examiner’s rejections of the claims on appeal under 35 U.S.C.
§ 103(a).

NEW GROUND OF REJECTION
We enter a new ground of rejection pursuant to our authority under 37
C.F.R. § 41.50(b).
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Matsui and the admitted prior art.
ADDITIONAL RELEVANT FINDINGS OF FACT
10. Matsui teaches forming a heat shrinkable (multilayer) film containing
at least one block copolymer (A and B2) having a vinyl aromatic
hydrocarbon and a conjugated diene and a vinyl aromatic hydrocarbon
polymer (B1), such as polystyrene or a high-impact polystyrene (col. 14, ll.
14-63).
11. Matsui teaches (col. 14, ll. 59-62) that:
polystyrene may be used together in order to increase the
rigidity of the obtained film, a high-impact polystyrene may be
used together with a purpose of improving blocking properties.

12. Matsui teaches (col. 15, l. 64 to col. 16, l. 10) that:
In the present invention, the amount of the vinyl aromatic
hydrocarbon polymer (B1) to (B3) is preferably at most 100
parts by weight based on 100 parts by weight of the block
copolymer (A) . . . .

Further, in a case where the vinyl aromatic hydrocarbon
polymer (B1) is an opaque high-impact polystyrene, its amount
is at most 20 parts by weight . . . .

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13. Matsui teaches that the heat shrinkable film may be obtained by
extruding a film and orienting the film uniaxially, biaxially or multi-axially
(col. 17, ll. 28-38).
14. Matsui teaches that “[w]hen such a film is used as a heat shrinkable
label or a packaging material, the heat shrinkage factor is at least 15% at
80o C” (col. 17, ll. 43-50).
15. Matsui exemplifies a heat shrinkable film having a heat shrinkage
factor of greater than or equal to 20% at 80oC for 30 seconds (cols. 35 and
36, Table 1).
16. Matsui exemplifies forming block copolymers in processes identical
to or substantially identical to Specification Examples 2 through 8, which,
according to Appellants, are responsible for the formation of the claimed
micro phase separation structure having soft and hard phases (Compare
Spec. 46-54 and 65 with Matsui, col. 26, Reference Examples 20 and 21).
17. Matsui does not mention that its styrene type polymer has a
syndyotactic structure. (See generally Matsui).
18. Appellants do not dispute the Examiner’s finding that the styrene type
polymer taught by Matsui generically includes a polystyrene polymer having
a syndyotactic structure (Compare Ans. 14 with Reply Br. 2).
19. Appellants acknowledge that the use of a polystyrene type polymer
having a syndyotactic structure in forming a heat shrinkable film was well
known at the time of the invention (Spec. 2, 1.8 to 3, l. 1).
20. Appellants acknowledge that using a styrene polymer having a
syndyotactic structure, together with a styrene/diene type block copolymer,
to form a multilayered oriented laminated film was well known at the time
of the invention (Spec. 3, ll. 2-8).
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21. Appellants acknowledge that specific ranges of the melting point and
the crystallization temperature were known to be important in forming the
film discussed above (Spec. 3, ll. 8-16).

PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any.
Graham, 383 U.S. at 17-18.
As stated in KSR, 550 U.S. at 417-18:
“[A]nalysis [of whether the subject matter of a claim
would have been prima facie obvious] need not seek out precise
teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.”

“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
KSR also instructs “that when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” Id. at 416.
The admitted prior art in applicant’s Specification may be used in
determining the patentability of a claimed invention. In re Nomiya, 509 F.2d
566, 570-71 (CCPA 1975); In re Davis, 305 F.2d 501, 503 (CCPA 1962).
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According to In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003):
In cases involving overlapping ranges, we and our
predecessor court have consistently held that even
a slight overlap in range establishes a prima facie
case of obviousness. . . . We have also held that a
prima facie case of obviousness exists when the
claimed range and the prior art range do not
overlap but are close enough such that one skilled
in the art would have expected them to have the
same properties. Titanium Metals Corp. v.
Banner, 778 F.2d 775, 783, 227 USPQ 773, 779
(Fed. Cir. 1985).

ANALYSIS
Matsui teaches forming a heat shrinkable (multilayer) film containing
the claimed amount of at least one block copolymer having a vinyl aromatic
hydrocarbon and a conjugated diene in the claimed proportion and the
claimed amount of a vinyl aromatic hydrocarbon polymer (corresponding to
the claimed styrene type polymer), such as polystyrene or a high-impact
polystyrene. Matsui teaches (col. 10, ll. 5-13) (emphasis added) that:
[T]he molecular weight and the molecular structure of the
copolymer in the present invention can be controlled depending
upon the purpose, by optionally changing the charge amount,
the timing of addition and the number of addition of the
monomers, the polymerization initiator, the randomizing agent,
and the proton donating substance used for deactivation of
active terminals (hereinafter referred to as “polymerization
terminator”).

Consistent with the above disclosure, Reference Examples 20 and 21 of
Matsui produce block copolymers using the same timing and number of
addition of the same monomers used in Specification Examples 2 through 8
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in the presence of the polymerization initiator (catalyst) and solvent used in
Specification Examples 2 through 8 at the same temperature employed in
Specification Examples 2 through 8. These block copolymers, according to
Appellants at pages 45 to 54 and 65 of the Specification, contain the claimed
micro phase separation structure having soft and hard phases.
Matsui teaches that the heat shrinkable film may be obtained by
extruding a film and orienting the film uniaxially, biaxially or multi-axially
(corresponding to the claimed requirement of orienting the film with at least
a monoaxial direction). Matsui also teaches at col. 17, ll. 43-50, that
“[w]hen such a film is used as a heat shrinkable label or a packaging
material, the heat shrinkage factor is at least 15% at 80o C”. Further, Matsui
exemplifies a heat shrinkable film having a heat shrinkage factor of greater
than or equal to 20% at 80oC for 30 seconds.
Matsui does not mention that its styrene type polymer has a
syndyotactic structure. However, Appellants do not dispute the Examiner’s
finding at page 14 of the Answer that the styrene type polymer taught by
Matsui generically includes a polystyrene polymer having a syndyotactic
structure. More importantly, Appellants acknowledge that the use of a
polystyrene type polymer having a syndyotactic structure in forming a heat
shrinkable film was well known at the time of the invention. Moreover,
Appellants acknowledge that using a styrene polymer having a syndyotactic
structure, together with a styrene/diene type block copolymer, to form a
multilayered oriented laminated film was well known at the time of the
invention.
Given the above teachings, we determine that one of ordinary skill in
the art would have been led to employ a conventional polystyrene polymer
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having a well known syndyotactic structure as the styrene polymer of
Matsui’s resin composition containing a styrene/diene block copolymer and
a styrene polymer, with a reasonable expectation of successfully forming a
heat shrinkable film.
We have limited our discussion to the obviousness of the subject
matter of claim 1. It is up to the Examiner and Appellants to determine the
patentability of the subject matter recited in remaining pending claims 2 and
4 through 16.
DECISION
The decision of the Examiner rejecting claims 1 through 23, 28, and
29 under 35 U.S.C. § 103(a) is reversed.
Claim 1 is newly rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Matsui and the admitted prior art.
This Decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen Prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceedings will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceedings be
reheard under § 41.52 by the Board upon the same record. . . .
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REVERSED
37 C.F.R. § 41.50(b)

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OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314

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