Kozo Tamura et al.

Patent Trials and Appeals Board

Aug 6, 2019

13932809 - (D) (P.T.A.B. Aug. 6, 2019)

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.
13/932,809 07/01/2013 Kozo TAMURA 417052US99DIV 7520
22850 7590 08/06/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
KOLLIAS, ALEXANDER C
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
08/06/2019 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KOZO TAMURA, TAKAHARU SHIGEMATSU,
and SHIMON KANAI
____________

Appeal 2018-008651
Application 13/932,809
Technology Center 1700
____________

Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge GAUDETTE.

Opinion Concurring filed by Administrative Patent Judge HOUSEL

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

1 This Decision includes citations to the following documents: Specification filed
July 1, 2013 (“Spec.”); Final Office Action dated June 22, 2017 (“Final”); Appeal
Brief filed Apr. 17, 2018 (“Appeal Br.”); Examiner’s Answer dated July 5, 2018
(“Ans.”); and Reply Brief filed Sept. 4, 2018 (“Reply Br.”).
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The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 4, 5, 9–15, and 17–20.3
We REVERSE.
The invention relates to a polyamide composition for a reflector that is said
to have high heat resistance, good mechanical properties, excellent adhesion to a
sealing material for an LED package, and the capability of retaining a high
reflectance even after exposure to heat and light intended for the production
process of the LED package and the environment in which the reflector is used in
the LED package, when it is molded. Spec. ¶¶ 7–8. Claim 1 is representative of the
claims on appeal, and is reproduced below.
1. A polyamide composition for a reflector, comprising:
30 mass % or more of a polyamide (A) having a melting point
of 280 °C or higher;
30 mass% or more of titanium oxide (B);
a light stabilizer (D);
magnesium oxide; and
a mold release agent;
wherein the polyamide composition does not comprise a
reinforcing material (C),
wherein dicarboxylic acid units of the polyamide (A) comprise
70 mol. % or more terephthalic acid units,
wherein a total content of the polyamide (A) and the titanium
oxide (B) is 80 mass % or more, and
wherein the polyamide (A) contains units derived from an end-
capping agent and the content of the units derived from the end-

2 The Appellant is the Applicant, Kuraray Co., Ltd., also identified as the real party
in interest. Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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capping agent is from 3.5 to 8.5 mol. % with respect to the diamine
units.
Appeal Br. Claims Appendix i (emphasis added).
The Examiner relied on the following references as evidence of
unpatentability:
Ogasawara US 2009/0088507 A1 April 2, 2009
Rosenberger US 2005/0095938 A1 May 5, 2005
Uchida US 2003/0023008 A1 January 30, 2003
Ogo US 2002/0115818 A1 August 22, 2002
Ishida US 2010/0310835 A1 December 9, 2010
Yasukawa US 2003/0006421 A1 January 9, 2003
Denzinger US 2007/0066727 A1 March 22, 2007

The Examiner rejected claims 1, 4, 5, 9–15, and 17–20 under 35 U.S.C.
§ 103(a) as follows:
1. claims 1, 4, 5, 9–14, 19, and 20 over Ogasawara in view of
Rosenberger and Uchida;
2. claim 15 over Ogasawara in view of Rosenberger, Uchida, Ishida, and
Titanium Oxide Nanoparticles;
3. claim 17 over Ogasawara in view of Rosenberger, Uchida, and
Yasukawa; and
4. claim 18 over Ogo in view of Ogasawara and Denziger.
Claims 1, 4, 5, 9–15, 17, 19, and 20
The Examiner found that Ogasawara teaches a polyamide resin composition
for reflectors. Final 3. The Examiner found that Ogasawara discloses or suggests
the invention as recited in claim 1, with the exception of magnesium oxide. Id. at
3–4. The Examiner found that one of ordinary skill in the art at the time of the
invention would have included magnesium oxide in Ogasawara’s composition
based on the teachings of Uchida. Id. at 4–5. The Examiner acknowledges that
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Ogasawara’s composition includes 10–40 wt.% of a “filler (B), i.e. asbestos fiber,
. . . as a reinforcement agent.” Id. at 3 (citing Ogasawara ¶ 41); see also Ogasawara
¶ 42. The Examiner determines, however, that the negative limitation in claim 1,
“wherein the polyamide composition does not comprise a reinforcing material
(C),” does not exclude the presence of asbestos fiber in the composition because,
“as evidenced by Rosenberger . . . , asbestos fiber is a flame or fire retardant.” Id.
As further support for this interpretation of the negative limitation, the Examiner
notes that Ogo evidences that titanium dioxide also functions as a reinforcement
material in a polyamide composition. Ans. 4.
We agree with the Appellant that the Examiner’s rejection is based on an
erroneous interpretation of the negative limitation in claim 1. See Appeal Br. 8–12.
Because the claim 1 composition includes titanium dioxide, which the Examiner
finds has the capability of functioning as a reinforcement material, the Examiner
interprets claim 1 as encompassing materials that are capable of functioning as
reinforcement materials provided they are included in the composition for a
different purpose, i.e., the Examiner determines that claim 1 encompasses a
composition comprising asbestos if included for its flame or fire retardancy
capabilities. See Ans. 4–5. We agree that claim 1 does not exclude all materials
that are capable of functioning as a reinforcement material. Rather, claim 1
requires that the composition “does not comprise a reinforcing material (C)”
(emphasis added). Specification paragraph 42 explicitly identifies “asbestos” as “a
reinforcement material (C).” “Where the specification makes clear that the
invention does not include a particular feature, that feature is deemed to be outside
. . . the patent, even though the language of the claims, read without reference to
the specification, might be considered broad enough to encompass the feature in
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question.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.
2002).
In sum, the Appellant has demonstrated that the Examiner’s conclusion of
obviousness as to independent claim 1 is based on an erroneous interpretation of
the negative limitation. Accordingly, we do not sustain the rejection of this claim
or its dependent claims 4, 5, 9–15, 17, 19, and 20, as the Examiner has not
explained how the additional references relied on in the rejections cure the
deficiency in Ogasawara. See generally Final 3–9.
Claim 18
Claim 18 recites “[a] polyamide composition for a reflector, consisting
of : . . . a polyamide (A) . . . ; titanium oxide (B); a light stabilizer; magnesium
oxide; and a mold release agent.” Appeal Br. Claims Appendix iii (emphasis
added). The Examiner found that Ogo discloses a polyamide composition that
includes titanium oxide, magnesium oxide, and a mold release agent. Final 10.
As noted by the Appellant (Appeal Br. 16), the closed transitional phrase
“consisting of” limits the scope of claim 18 to the listed components. See AFG
Indus., Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239, 1245 (Fed. Cir. 2001)
(“‘Consisting of’ is a term of patent convention meaning that the claimed invention
contains only what is expressly set forth in the claim.”) The Appellant argues that
Ogo discloses titanium oxide, magnesium oxide, and a mold release agent in
various lists of components that are suitable for use in Ogo’s composition. See
Appeal Br. 16–18 (citing Ogo ¶¶ 48–52, 57–62, 69–70). The Appellant argues that
Ogo provides no direction to select titanium oxide and magnesium oxide from
among the numerous, listed components, particularly in view of the fact that Ogo
expresses a preference for NaSbO3 over magnesium oxide. Id. at 14–16, 19; see
Ogo ¶ 62. The Appellant notes that Ogo also discloses that the composition may
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include, in addition to a mold release agent, components such as an impact
modifier, a heat stabilizer, a plasticizer, etc., and argues the Examiner has not
explained why the ordinary artisan would have included only a mold release agent
and excluded the other optional components from the composition. Appeal Br. 16–
18; see Ogo ¶¶ 67–70.
The Appellant’s argument is persuasive. As explained by our reviewing
court,
the obviousness of selection of components, when there is no
prediction in the prior art as to the results obtainable from a selected
component, differs from the issue in KSR, where the Court provided
guidance that “a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.”
Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008) (quoting KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). In the present case, the
Examiner fails to explain why the ordinary artisan would have selected the
particular components recited in claim 18 from among the numerous components
identified as suitable for use in Ogo’s composition. Instead, the Examiner
improperly attempts to shift the burden to the Appellant to show why the ordinary
artisan would have included components other than those claimed in Ogo’s
composition. See, e.g., Ans. 10 (“[W]hile the reference discloses a variety of
inorganic fillers, it is the Examiner’s position absent evidence to the contrary, that
it would have been obvious to one of ordinary skill in the art to select any of the
fillers disclosed by the reference.”).
In sum, the Appellant has argued persuasively that the Examiner’s rejection
of claim 18 is based on improper hindsight reasoning. Accordingly, we do not
sustain the rejection of claim 18.
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ORDER
Claims
Rejected
Basis Reference(s) Affirmed Reversed
1, 4, 5, 9–
14, 19, and
20
§ 103(a) Ogasawara,
Rosenberger, and
Uchida
1, 4, 5, 9–14, 19,
and 20
15 § 103(a) Ogasawara,
Rosenberger, Uchida,
Ishidia, and Titanium
Oxide Nanoparticles
15
17 § 103(a) Ogasawara,
Rosenberger, Uchida,
and Yasukawa
17
18 § 103(a) Ogo, Ogasawara, and
Denziger
18
Outcome 1, 4, 5, 9–15, and
17–20

REVERSED
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UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KOZO TAMURA, TAKAHARU SHIGEMATSU,
and SHIMON KANAI
____________

Appeal 2018-008651
Application 13/932,809
Technology Center 1700
____________
____________

Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge, concurring.

I concur in the decision regarding the disposition of claims 1, 4, 5, 9–15, and
17–20, but write separately to clarify the reason why I believe the rejection of
claim 18 should be reversed.
The majority relies on the Abbott decision which holds that the obviousness
of the selection of components differs from the issue in KSR “when there is no
prediction in the prior art as to the results obtainable from a selected component.”
544 F.3d at 1351. However, it appears to me that Ogo provides the predictability
in the selection that is missing in the Abbott case.
For example, Ogo teaches that the composition comprises the polyamide
resin (A) and at least one compounding additive selected from the reinforcement
(B), the fire retardant additive (C), and the impact modifier (D). Ogo ¶ 16. This
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indicates to me that excluding (D) is within the scope of Ogo’s disclosure. The
titanium oxide is taught as one of a number of reinforcements (B), any one of
which is within the scope of Ogo’s disclosure. Ogo ¶¶ 48, 52, 53 (“These . . .
reinforcements can be used individually or in combination.”). The magnesium
oxide is taught as one of a number of fire retardant additives (C), any one of which
is within the scope of Ogo’s disclosure. Ogo ¶ 62. The mold release agent is
taught as one of a number of other various common compounding agents that “may
be loaded” into the composition. Ogo ¶ 69. Thus, in my view, the selection of any
of these materials in combination with polyamide would have been obvious to one
of ordinary skill in the art, absent a showing of unexpected results, primarily
because Ogo discloses the predictable purpose of each component. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ʼ813 patent
discloses a multitude of effective combinations does not render any particular
formulation less obvious. This is especially true because the claimed composition
is used for the identical purpose.”).
Instead, in my view, the weakness in the rejection of claim 18 lies in the
selection of the light stabilizer from Denzinger which teaches such an additive is
typical for polyamides, but this disclosure is in the context of a hydrolysis
stabilizer and polyamides. See Appeal Br. 18. The Examiner merely focuses on
Denzinger’s teaching that the light stabilizer is typical for polyamides, but fails to
account for the context of this disclosure. Ans. 14. In my view, Appellant’s
argument that the ordinary artisan would not have excluded such a hydrolysis
stabilizer when adding a light stabilizer to Ogo’s composition in view of
Denzinger’s teaching is persuasive.