Ex Parte Toyama et al

Patent Trial and Appeal Board

Jul 26, 2018

13266946 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/266,946 02/01/2012 Yuusuke Toyama
38834 7590 07/30/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
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.
P22653USOO 2742
EXAMINER
STRAH,ELID
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
07/30/2018 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 YUUSUKE TOY AMA, ARATA FUJIHARA, AKIKO SUGINO,
ATSUSHI YASUI, MASAYUKI SATAKE, MIZUE NAGATA, and
TOMOYUKI KIMURA 1
Appeal2017-009678
Application 13/266,946
Technology Center 1700
Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and JEFFREY B.
ROBERTSON, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejections under 35 U.S.C. § 103(a) of independent claims 1 and 25 as
unpatentable over Moroishi (JP 2008045067, published Feb. 28, 2008, as
translated) in view of Hirose (US 4,593,068, issued June 3, 1986) and
Shimaoka (JP 09-302321, published Nov. 25, 1997, as translated) and of
1 Nitto Denko Corporation is identified as the real party in interest (App.
Br. 2).
Appeal2017-009678
Application 13/266,946
remaining dependent claims 2-8, 12, 17-24, 26-32, 34, 35, and 37--44 as
unpatentable over these references alone or in combination with additional
prior art. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim an adhesive composition comprising a (meth)acryl-
based polymer (A), 0.01 to 3 parts by weight of a polyether compound (B)
based on 100 parts by weight of polymer (A), and a crosslinking agent (C)
(independent claims 1 and 25).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A pressure-sensitive adhesive composition for an optical
film, comprising:
a (meth)acryl-based polymer (A), and
a polyether compound (B) having a polyether skeleton
and a reactive silyl group represented by formula (1 ): -SiRaM3-a
at at least one terminal,
wherein R represents a monovalent organic group having
1 to 20 carbon atoms and optionally having a substituent; M
represents a hydroxyl group or a hydrolyzable group; and
represents an integer of O to 2, provided that in cases where two
or more R groups are present, R groups can be the same or
different, and in cases where two or more M groups are present,
M groups can be the same or different, and
a crosslinking agent (C),
wherein the (meth)acryl-based polymer (A) comprises an
alkyl (meth)acrylate monomer unit, a carboxyl group-
containing monomer unit and a hydroxyl group-containing
monomer unit, wherein the (meth)acryl-based polymer (A)
comprises 0.6 to 10% by weight of the carboxyl group-
containing monomer unit, and
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wherein the pressure-sensitive adhesive composition
comprises 0.01 to 3 parts by weigh of the polyether compound
(B) based on 100 parts by weight of the (meth)acryl-based
polymer (A).
Appellants do not present separate arguments specifically directed to
the dependent claims under rejection (see App. Br. 8). As a consequence,
the dependent claims will stand or fall with their parent independent claims
of which claim 1 is representative.
We sustain the Examiner's§ 103 rejections for the reasons expressed
in the Final Office Action, the Answer, and below.
Appellants do not contend that the Examiner fails to establish a prima
facie case of obviousness but rather argue that the claims are patentable
because the data of record evinces the amount of polyether compound
required by claim 1 is critical for achieving unexpectedly superior
reworkability (App. Br. 5-8 (citing Additional Table 1 in the Declaration of
Yuusuke Toyama under Rule 1.132 filed October 7, 2015 (the
"Declaration") as well as Tables 1 and 2 in the Specification)).
The Examiner determines that Appellants do not establish
patentability because their evidence shows a 0.02 polyether amount inside
the claimed range is reworkable and a 0.005 amount outside the claimed
range is not (see Example 10 and Additional Comparative Example 1 of
Deel. Additional Table 1 as well as Examples 1 and 2 of Spec. Table 1) but
fails to include any data for the 0.01 amount of polyether encompassed by
claim 1 (Ans. 13; see also Final Action 3).
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Appellants concede, at least implicitly, that their data does not test the
claimed 0.01 value but contend that the tested 0.02 and 0.005 amounts
support a conclusion that the 0.01 value would exhibit unexpected
reworkability (see, e.g., App. Br. 5-7, Reply Br. 3).
We cannot agree. The 0.01 value is at the exact mid-point between
the 0.02 amount that is shown to be reworkable and the 0.005 amount that is
shown to be not reworkable. For this reason, Appellants' evidence is
uninformative as to whether the untested 0.01 amount of claim 1 would be
reworkable like the tested 0.02 amount or would not be reworkable like the
tested 0.005 amount. Therefore, Appellants fail to carry their burden of
showing that the claimed 0.01 amount exhibits unexpected results.
With further regard to the claimed 0.01 amount, Appellants in their
Reply Brief argue that "Hirose teaches away from using less than 1 part by
weight, let alone 0.01 parts by weight, of the polyether compound (B)"
(Reply Br. 3). This argument was not raised in the Appeal Brief and is not
responsive to an argument raised in the Examiner's Answer (i.e., as
indicated previously, the Examiner's position concerning the 0.01 amount
was expressed prior to the Answer in the Final Action at 3). Moreover,
Appellants do not show good cause for belatedly presenting this new
argument in their Reply Brief. Under these circumstances, we will not
consider this new argument for purposes of the present appeal. See 37
C.F.R. § 4I.41(b)(2).
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The Examiner also determines that the Declaration and Specification
evidence is not reasonably commensurate in scope with claim 1 because the
inventive examples in this evidence are limited to selected species which are
not representative of the genus defined by the claimed polymer (A),
polyether compound (B), and crosslinking agent (C) respectively (Ans. 14--
16; see also, e.g., Final Action 4--5).
According to Appellants, the reworkability results shown in their
evidence would be exhibited by all of the ingredient species encompassed by
claim 1 (App. Br. 8) as reflected by the inventive examples of Specification
Tables 1-5 which test 14 different types of polymers (A), 7 different types
of polyethers (B) and 3 different types of crosslinking agents (C) (Reply Br.
6-7). Appellants contend that "[b ]ased on these examples, one of ordinary
skill in the art would have known that other embodiments falling within the
scope of claims 1 and 25 would behave in the same manner" (id. at 7).
However, Appellants offer no evidence or scientific reasoning in
support of their contention that the types of polymers, polyethers, and cross-
linking agents tested in the inventive examples would be considered by one
having an ordinary level of skill in this art to be representative of, and thus
reasonably commensurate in scope with, the more broadly defined
ingredients of claim 1. This circumstance leads us to determine that the
contention is merely an unsupported statement by the attorney who wrote the
Briefs. Such an unsupported attorney-statement is inadequate to establish
unexpected results (i.e., results that an artisan regards as unexpected and
reasonably commensurate in scope with the claims under consideration).
See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997) (reiterating that
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unexpected results must be established by factual evidence and holding that
an attorney-statement characterizing improved results as "surprising" was
insufficient to establish unexpected results).
In this latter regard, we observe that the Briefs repeatedly characterize
the inventive results shown in Appellants' Specification and Declaration as
unexpectedly superior (see, e.g., App. Br. 6-7, Reply Br. 3). However,
Appellants do not identify the location of a corresponding characterization
made by the inventors listed for the Specification or the inventor signing the
Declaration. In fact, the inventor signing the Declaration merely describes
the results as "excellent" (Deel. 4) rather than unexpected. Similarly, the
Briefs repeatedly characterize the reworkability of the inventive examples as
resulting in "no practical problem" and the comparative examples as causing
"a practical problem" (App. Br. 7, Reply Br. 5). Again, Appellants do not
identify the location of a corresponding characterization made by one of the
inventors. Consequently, we consider these characterizations in the Briefs
as unsupported attorney-statements inadequate to establish that the inventive
results are unexpected to one with ordinary skill in this art. Geisler, 116
F.3d at 1470-71.
For the reasons expressed above and given by the Examiner, we
determine that Appellants' evidence of nonobviousness does not outweigh
the uncontested prima facie case of obviousness established in the § 103
rejection of representative claim 1.
The decision of the Examiner is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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