KURARAY AMERICA, INC.

Patent Trials and Appeals Board

Dec 29, 2021

2021004659 (P.T.A.B. Dec. 29, 2021)

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.
16/050,728 07/31/2018 Charles Anthony Smith 514804US 4573
22850 7590 12/29/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
MOORE, MARGARET G
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
12/29/2021 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 CHARLES ANTHONY SMITH
Appeal 2021-004659
Application 16/050,728
Technology Center 1700
Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
JENNIFER GUPTA, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s December 14, 2020 decision to finally reject claims 1–5, 7–13,
and 15–18.2 A telephonic hearing was held on December 16, 2021, a
transcript of which will be made part of the record. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Kuraray America, Inc. (Appeal Br. 1).
2 Claim 19, which depends from claim 17, is not indicated as being subject
to any specific rejection and, according to the Examiner, is not subject to a
prior art rejection (Ans. 11). Accordingly, it is not a subject of this appeal.
The Examiner may wish to review claim 19 and determine its status.
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2
CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to a sodium-neutralized ethylene
acid copolymer ionomer composition containing a specified silane additive
in a specified amount and having enhanced adhesion properties to glass.
Claim 1, reproduced below from the Claims Appendix, is illustrative of the
claimed subject matter:
1. A resin composition comprising an intimate mixture of (i) an
ionomer resin and (ii) an adhesion promotor additive, wherein:
(a) the ionomer resin is a sodium-neutralized ethylene-3-
unsaturated carboxylic acid-α-β-copolymer;
(b) the adhesion promotor additive is a dialkoxysilane
compound; and
(c) the dialkoxysilane compound is present in the resin
composition in an amount ranging from about 50 to about 3000
parts per million by weight based on the weight of the ionomer
resin;
wherein
a content of the α-β-unsaturated carboxylic acid in the
ionomer resin is from 2 to 30% by mass,
a degree of neutralization of the α-β-unsaturated
carboxylic acid in the ionomer resin is from 10 to 60 %, and
in addition to the alkoxy groups the dialkoxysilane
compound further comprises an active chemical group for
bonding into the ionomer resin.
Appeal Br. 13 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
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Name Reference Date
Nishijima et al. US 2011/0108094 A1 May 12, 2011
Shinya et al. US 2012/0208940 A1 August 16, 2012
Hayes et al. US 2014/0182664 A1 July 3, 2014
Binette et al. US 2017/0136311 A1 May 18, 2017

REJECTIONS
1. Claims 1–3, 5, and 7–10 are rejected under 35 U.S.C. § 103 as
unpatentable over Nishijima.
2. Claims 4, 12, 13, and 15–18 are rejected under 35 U.S.C. § 103
as unpatentable over Nishijima in view of Binette.
3. Claims 1–3, 5, and 7–11 are rejected under 35 U.S.C. § 103 as
unpatentable over Hayes in view of Shinya.
OPINION
Rejection 1. The Examiner’s findings are set forth at page 2 of the
Final Action. The Examiner finds that Nishijima discloses a resin
composition comprising an ionomer resin and dialkoxysilane adhesion
promoter (Final Act. 2, citing Nishijima, Abstract). The Examiner further
finds that Nishijima discloses a specific ionomer resin meeting the
limitations of claim 1, and also provides general disclosures of such
ionomers (id., citing Nishijima ¶¶ 51–54, 121). The Examiner also finds that
Nishijima discloses the claimed dialkoxysilane being present in the claimed
amount (id.). The Examiner finds that Nishijima does not disclose the
claimed ionomer and alkoxysilane in combination with each other as
required by claim 1, but determines that it would have been obvious to make
such a combination in view of the disclosure in Nishijima that such
components can be combined (id.).
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Appellant argues that Nishijima expresses a definite preference for the
zinc ionomer over the sodium ionomer, and fails to disclose an example
using a sodium ionomer which was successful (Appeal Br. 4–5). Therefore,
according to Appellant, a person of skill in the art would not have had a
reasonable expectation of success in using the sodium ionomer with the
dialkoxysilane as required by claim 1 (Appeal Br. 6–7).
Appellant’s argument is not persuasive of reversible error. It is
axiomatic that a reference must be considered in its entirety, and it is well
established that the disclosure of a reference is not limited to specific
working examples contained therein. E.g., In re Lamberti, 545 F.2d 747,
750 (CCPA 1976); see, also, In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982). Thus, that Nishijima does not show an example which meets the
limitations of the claims does not mean that the claimed invention would not
have been obvious. It is not disputed that Nishijima discloses combining
components (a) (the ionomer) and (b) (the dialkoxysilane), and also
discloses components (a) and (b) which meet the requirements of claim 1.
Thus, we agree with the Examiner that making the necessary choices with
regards to (a) and (b) would have been obvious, in the absence of evidence
to the contrary.
In this regard, Appellant points to Paragraph 52, which reads as
follows, to argue that Nishijima thought zinc ionomers were superior to
sodium ionomers:
The ethylene-polar monomer copolymer which serves as the
base of the ionomer is preferably an ethylene-acrylic acid
copolymer or an ethylene- methacrylic acid copolymer. A
particularly preferable metal species is zinc. Since a zinc
ionomer contains a zinc ion as the metal ion, the ionomer is
particularly excellent in weather resistance, and generation of
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gel-like substances and foams during the sheet production
process is also largely expressed as compared with an ionomer
including another metal ion such as Na, so that stability during
the sheet production is enhanced.

(Nishijima, ¶ 52). While this passage indicates that zinc ionomers have
advantages over sodium (and other metal) ionomers, it does not state that
sodium ionomers cannot be used. To the contrary, Nishijima specifically
states that sodium ionomers (as well as other ionomers) can be used and
provide certain advantages with respect to high transparency and high
storage elastic modulus at high temperature (Nishijima, ¶ 51). Moreover,
although, as argued by Appellant (Appeal Br. 4–5), Nishijima does not
disclose a working example using a sodium ionomer and a dialkoxysilane,
neither does Nishijima disclose that such a combination would not work.
The unsuccessful examples provided in Nishijima do not meet the claim
limitations. Accordingly, we determine that, given Nishijima’s overall
disclosures, a person of skill in the art would have a reasonable expectation
of success in combining a sodium ionomer and a dialkoxysilane.
Accordingly, we affirm the rejection.
Rejection 2. With regards to the rejection of claims 4, 12, 13, and 15–
18 over Nishijima in view of Binette, the Examiner finds that Nishijima does
not teach a particle in which the dialkoxysilane is predominantly present on
the surface of the particles (Final Act. 3). The Examiner finds that Binette
teaches the preparation of ionomeric polymer particles which are admixed
with a silane adhesion promoter by either surface treatment (i.e. dipping or
soaking) or by mixing (id., citing Binette, ¶ 16). Therefore, according to the
Examiner, a person of skill in the art would have understood either surface
treatment or mixing to be acceptable alternatives for combining an
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ionomeric polymer and a silane, and thus would have made the subject
matter of claims 4, 12, 13, and 15–18 obvious.
Appellant suggests that because Nishijima describes the production of
resin pellets impregnated with silane coupling agent, antioxidant, UV
absorber and photostabilizer (see ¶¶ 150, 169, 170, 177) and Binette’s final
product (a golf ball) is very different from Nishijima’s final product (solar
cells), Binette is not concerned with the performance properties addressed by
Nishijima (Appeal Br. 9). Therefore, according to Appellant, “there can be
no logical technical reasoning to support modification of Nishijima’s method
to prepare impregnated pellets to employ the dipping or soaking method
described by Binette” (Appeal Br. 10).
Appellant’s argument is not persuasive. The Examiner has provided a
reasoned explanation of why a person of skill in the art would have used the
dipping/soaking method of Binette in Nishijima’s system – namely that
Binette teaches that mixing (as used by Nishijima) and surface treatment are
acceptable alternatives. Appellant has not demonstrated reversible error in
this reasoning simply by pointing out that Nishijima and Binette teach
different final products with different additives. Therefore, we affirm
Rejection 2.
Rejection 3. The Examiner’s findings are set forth at pages 3–4 of the
Final Action. The Examiner finds that Hayes teaches a similar system to the
claimed system, except that Hayes teaches the use of trialkoxysilanes instead
of the claimed dialkoxysilanes (Final Act. 3–4, citing Hayes, ¶¶ 48, 51, 58,
146, 161). The Examiner further finds that Shinya teaches an ionomeric
composition used in forming interlayer films which contains a neutralized
ionomer resin prepared from a carboxylic acid and ethylene and a silane
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coupling agent (Final Act. 4, citing Shinya ¶¶ 23, 28, 58). The Examiner
also finds that Shinya teaches that the silane coupling agent can be either tri-
or dialkoxysilanes with dialkoxysilanes being preferred to maintain
processing stability (Final Act. 4, citing Shinya ¶ 62). The Examiner
determines that it would have been obvious to use a dialkoxysilane rather
than a trialkoxysilane in the ionomeric composition of Hayes in order to
improve processing stability (id.)
Appellant argues that because Shinya teaches that the trialkoxysilanes
improve adhesion while dialkoxysilanes improve processing stability and
Hayes is primarily concerned with adhesion, a person of skill in the art
would not have substituted the dialkoxysilanes of Shinya for the
trialkoxysilanes used by Hayes (Appeal Br. 10–11, citing Hayes ¶¶ 12, 57,
and Shinya ¶ 62). This argument is not persuasive of reversible error.
While Shinya discloses that the trialkoxysilanes can improve adhesion, a
person of skill in the art seeking to improve the processability would have
been led to use the dialkoxysilane in Hayes’s system. As noted by the
Examiner, Hayes teaches that the adhesion properties of Hayes’s product are
not due solely to the presence of the silane (Ans. 11; Hayes ¶ 57 (“In one
particular embodiment, the ionomeric composition further comprises one or
more silane coupling agents to further enhance the adhesion strength of the
films or sheets derived therefrom” (emphasis added))).
Thus, a person of skill in the art would seek to enhance the
processability of Hayes’s composition while balancing out its adhesive
properties. As stated by the Federal Circuit, a given course of action often
has simultaneous advantages and disadvantages, and this does not
necessarily obviate motivation to combine. Medichem, S.A. v. Rolabo, S.L.,
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437 F.3d 1157, 1165 (Fed. Cir. 2006). See, also, Winner Int'l Royalty Corp.
v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”).
Accordingly, we conclude that the preponderance of the evidence of
record supports the rejection.
CONCLUSION
The Examiner’s rejections are affirmed.
More specifically,
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.
C. §
Reference(s)/Basis Affirmed Reversed
1–3, 5, 7–10 103 Nishijima 1–3, 5, 7–10
4, 12, 13, 15–18 103 Nishijima, Binette 4, 12, 13, 15–18
1–3, 5, 7–11 103 Hayes, Shinya 1–3, 5, 7–11
Overall
Outcome
1–5, 7–13, 15–
18

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED