Samsung SDI Co., Ltd.

Patent Trials and Appeals Board

Oct 1, 2020

2019006874 (P.T.A.B. Oct. 1, 2020)

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.
15/222,254 07/28/2016 Nam Hyun KIM 1224.247 8899
21176 7590 10/01/2020
Additon, Higgins & Pendleton, P.A.
10706 Sikes Place
Suite 350
Charlotte, NC 28277-8202
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
additon@ahpapatent.com
docket@ahpapatent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NAM HYUN KIM, CHAN GYUN SHIN,
SANG HYUN HONG, and JEE KWON PARK
____________

Appeal 2019-006874
Application 15/222,254
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, MONTÉ T. SQUIRE, and
MICHAEL G. McMANUS, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 1, 2, and 4–11.3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 This Decision refers to the Specification filed July 28, 2016 (“Spec.”);
Final Office Action dated Nov. 14, 2018 (“Final Act.”); Advisory Action
dated Jan. 24, 2019 (“Advisory Act.”); Appeal Brief filed May 21, 2019
(“Appeal Br.”); Examiner’s Answer dated July 30, 2019 (“Ans.”); and Reply
Brief filed Sept. 23, 2019 (“Reply Br. “).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Lotte Advanced Materials Co. as the
real party in interest. Appeal Br. 3.
3 Claim 3 is cancelled and claim 12 is withdrawn. Appeal Br. 5.
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CLAIMED SUBJECT MATTER
The invention relates to a polyamide resin composition and a molded
article formed of the same. Spec. 1; Abstract. Claim 1 illustrates the subject
matter on appeal and is reproduced below from the Claims Appendix to the
Appeal Brief:
1. A polyamide resin composition comprising:
a base resin comprising an aliphatic polyamide resin
including a repeat unit represented by the following Formula 1
and having a terminal amine group and a terminal carboxyl
group, wherein the concentration of the terminal amine group is
about 10 μeq/g to about 40 μeq/g and the concentration of the
terminal amine group is about 0.1 times to about 0.3 times the
concentration of the terminal carboxyl group and an aromatic
polyamide resin including a repeat unit represented by the
following Formula 2; and
inorganic fillers:
[Formula 1]

wherein a is an integer from 4 to 10, and b is an integer
from 6 to 12;
[Formula 2]

wherein c is an integer from 6 to 12.
Appeal Br. 32.
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REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Sawada et al.
(“Sawada”)
US 2003/055210 A1 Mar. 20, 2003
Ono et al. (“Ono”) US 2005/0234180 A1 Oct. 20, 2005
Kumazawa et al.
(“Kumazawa”)
US 2010/0227122 A1 Sept. 9, 2010
Namkung et al.
(“Namkung”)
US 2011/0155948 A1 June 30, 2011
Orange et al. (“Orange”) US 2011/0241249 A1 Oct. 6, 2011
Washio WO 2014/073219 A1 May 15, 2014
REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1, 2, 5, and 9–11 are rejected under 35 U.S.C. § 103 as
being unpatentable over Namkung in view of Orange (“Rejection 1”).
Ans. 3.
2. Claims 1, 2, 5, and 9–11 are rejected under 35 U.S.C. § 103 as
being unpatentable over Ono in view of Orange (“Rejection 2”). Ans. 5.
3. Claims 4 and 8 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ono in view of Orange, Washio, and Sawada (“Rejection
3”). Ans. 7.
4. Claims 6 and 7 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ono in view of Orange and Kumazawa (“Rejection 4”).
Ans. 8.

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OPINION
Rejection 1
The Examiner rejects claims 1, 2, 5, and 9–11 under § 103 as obvious
over Namkung and Orange. Ans. 3–5. In response, Appellant presents
argument for the patentability of claims 1, 2, 5, and 9–11 as a group, claims
10 and 11 as a group, and additional argument for claim 2, which we address
in turn below.
Claims 1, 2, 5, and 9–11
Appellant presents argument for the patentability of claims 1, 2, 5, and
9–11 as a group. Appeal Br. 14, 18. We select claim 1 as representative of
this group and claims 2, 5, and 9–11 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner determines that the combination of Namkung and
Orange suggests a polyamide resin composition satisfying the limitations of
claim 1 and concludes the combination would have rendered the claim
obvious. Ans. 3–5, 9–11. On this appeal record, we determine a
preponderance of the evidence and sound technical reasoning support the
Examiner’s findings regarding the teachings of the cited art and the
Examiner’s conclusion that the combination would have rendered the
composition of claim 1 obvious to a person having ordinary skill in the art.
Namkung, Abstract, ¶¶ 18, 26, 32, 33, 35–37, 89 (Table 1, Example 5);
Orange, Abstract, ¶¶ 6, 16, 22, 24, 25.
Appellant argues the Examiner’s rejection of claim 1 should be
reversed because a person of ordinary skill in the art would not have
combined Namkung and Orange. Appeal Br. 14–16; Reply Br. 1–3.
Appellant argues that, because Namkung and Orange propose different
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solutions to different problems, there is no motivation or suggestion to
combine the references. Appeal Br. 15 (arguing Namkung solved the
problems of thermal conductivity and whiteness by using a heat conductive
filler and Orange addresses impregnation problems associated with the use
of high viscosity thermoplastic polymers or monomers or pre-polymers); see
also Reply Br. 2 (arguing Namkung and Orange have taken different
approaches to address different problems).
Appellant further argues that there is no motivation to modify
Namkung’s composition in view of Orange’s disclosure because Namkung
requires a thermoplastic resin with a high average molecular weight and
Orange teaches away from the use of high molecular weight polymers.
Appeal Br. 15–16.
Appellant also argues the Examiner’s rejection of claim 1 should be
reversed because the cited art does not teach or suggest an aliphatic
polyamide resin having a terminal amine group and a terminal carboxyl
group, as claimed. Id. at 16–18. In particular, Appellant contends “Namkung
does not teach or suggest any terminal amine group concentration and/or
terminal carboxylic group concentration of any polyamide” and “Orange
also does not teach an aliphatic polyamide with a terminal amine group
concentration and a terminal carboxylic group concentration recited in claim
1.” Id. at 17; see also Reply Br. 3 (arguing Orange does not teach “a
polyamide having both amine terminal groups and carboxylic terminal
groups in amounts as claimed”).
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based principally on the fact-finding and
reasoning the Examiner provides at pages 3–5 and 9–11 of the Answer. As
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the Examiner finds (Ans. 3–4, 9, 10), Namkung discloses a polyamide resin
composition, which falls within the scope of each of the limitations of claim
1, except that Namkung is silent with respect to “the concentration of the
terminal amine group is about 10 μeq/g to about 40 μeq/g” and “the
concentration of the terminal amine group is about 0.1 times to about 0.3
times the concentration of the terminal carboxyl group” limitations.
Namkung, Abstract, ¶¶ 18, 26, 32, 33, 35–37, 89 (Table 1, Example 5).
As the Examiner further finds (Ans. 4, 11), Orange teaches polyamide
resins having a concentration of terminal amine groups of less than or equal
to 20 meq/kg (20 μeq/g) (Orange ¶ 24), which overlaps the claimed range
and suggests the concentration of terminal amine groups is 0.2 times the
concentration of the terminal carboxyl groups (id. ¶¶ 24–25), which falls
within the claimed range, which we find a preponderance of the evidence
supports. It is well-settled that where claimed ranges “overlap or lie inside
ranges disclosed by the prior art,” a prima facie case of obviousness exists.
In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
The Examiner also provides a reasonable basis why one of ordinary
skill in the art would have had reason to combine the teachings of Namkung
and Orange to arrive at the claimed composition. Ans. 4, 12 (explaining it
would have been obvious to one of ordinary skill in the art to modify
Namkung’s composition to add an aliphatic polyamide, as Orange teaches,
to obtain articles having good mechanical strength properties); Namkung ¶¶
35–37; Orange ¶¶ 6, 16, 22. See also KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 420 (2007) (explaining that any need or problem known in the art can
provide a reason for combining the elements in the manner claimed).
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Appellant’s arguments do not reveal reversible error in the
Examiner’s factual findings, analysis, and conclusions in this regard.
Appellant’s argument that Namkung and Orange address different problems
(Appeal Br. 15; Reply Br. 2) is not persuasive of reversible error because
prior art references need not address the same problem to be combined under
§ 103. KSR, 550 U.S. at 420; cf. also In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004) (explaining that a prior art reference qualifies as analogous art if
it is from the same field of endeavor as the claimed invention regardless of
the problem addressed). Appellant’s disagreement as to the Examiner’s
factual findings and reasons for combining the references, without more, is
insufficient to establish reversible error. SmithKline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of
disagreement . . . as to the existence of factual disputes do not amount to a
developed argument.”).
Appellant’s teaching away argument (Appeal Br. 15–16) is not
persuasive because Appellant does not identify evidence sufficient to
support it, and we will not read into the references a teaching away where no
such language exists. Cf. DyStar Textilfarben GmbH v. C.H. Patrick Co.,
464 F.3d 1356, 1364 (Fed. Cir. 2006); see also In re Fulton, 391 F.3d 1195,
1201 (finding that there is no teaching away where the prior art’s disclosure
“does not criticize, discredit, or otherwise discourage the solution claimed”).
Moreover, as the Examiner points out (Ans. 4–5, 10), the fact that
Orange discusses embodiments of polyamide resins having a certain
molecular weight, without more, does not negate or teach away from
Orange’s broader disclosure regarding use of aliphatic polyamide resins to
obtain articles having good mechanical properties (Orange, Abstract, ¶¶ 6,
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16, 22) or Namkung’s disclosure regarding polyamide resin compositions
including an aromatic polyamide and aliphatic polyamide (Namkung ¶¶
35–37), and what those disclosures would have reasonably suggested to one
of ordinary skill. In re Susi, 440 F.2d 442, 445-46 (CCPA 1971) (explaining
that disclosure of particular preferred embodiments does not teach away
from a prior art reference’s broader disclosure); see also In re Applied
Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) (“A reference must be
considered for everything that it teaches, not simply the described invention
or a preferred embodiment.”).
Appellant contends that the claimed invention yields unexpected
results. Appeal Br. 8–9. In particular, Appellant contends that the claimed
polyamide resin composition has “a surprising balance of properties” and
“not only has good modulus but unexpectedly also has excellent flowability
and impact strength.” Id. at 8 (citing Spec. 2, 10–14).
In attempting to overcome a prima facie case of obviousness by
showing unexpected results, the burden rests with Appellant to establish
that: (1) the alleged unexpected results presented as being associated with
the claimed invention are, in fact, unexpected; (2) the comparisons are to the
disclosure of the closest prior art; and (3) the supplied evidentiary showing
is commensurate in scope with the claimed subject matter. See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972).
Appellant’s alleged showing of unexpected results does not satisfy the
requisite burden. Appellant does not sufficiently establish that the results it
presents and alleges as being associated with the claimed invention are, in
fact, unexpected. For example, Appellant does not adequately show or
explain why the alleged “surprising balance of properties” (Appeal Br. 8) is
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considered unexpected, as opposed to simply typical results that one of
ordinary skill would have reasonably expected, or how that is reflected or
shown in the data. Klosak, 455 F.2d at 1080 (“[T]he burden of showing
unexpected results rests on [the party] who asserts them.”). Appellant’s
statements at pages 8–9 of the Appeal Brief are not persuasive because
Appellant does not provide a persuasive technical explanation or direct us to
experimental results sufficient to support them. De Blauwe, 736 F.2d at 705
(“It is well settled that unexpected results must be established by factual
evidence. Mere argument or conclusory statements in the specification does
not suffice.”).
Appellant also does not provide evidence sufficient to show that there
is actually difference between the balance of properties of the claimed
compositions and those of the closest prior art. Klosak, 455 F.2d at 1080.
For example, Appellant does not specify or discuss how any of the
compositions Appellant relies on for showing unexpected results compare to
the prior art compositions of Namkung.
We, therefore, sustain the Examiner’s rejection of claim 1.
Claims 10 and 11 and Claim 2
Appellant presents additional arguments for the patentability of claims
10 and 11 as a group, and claim 2, respectively, at pages 24–25 and 28–29
of the Appeal Brief, and pages 4–7 of the Reply Brief.
With respect to claims 10 and 11, Appellant contends that the
Examiner’s rejection should be reversed because
[n]one of the cited documents teach a composition
including all of the recited elements, including an aliphatic
polyamide with both the terminal amine group and the
terminal carboxyl group concentrations recited in claim 1
(from which claims 10 and 11 depend).
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Appeal Br. 24–25; see also Reply Br. 6 (same). Appellant also contends
neither Namkung nor Orange teach a composition with either the recited
spiral length flow or FDI strength and the skilled artisan would not have a
reasonable basis to expect the composition to have the recited properties.
Appeal Br. 25; see also Reply Br. 5 (arguing “there cannot be any
reasonable expectation that the hypothetical composition . . . would have the
recited properties”).
With respect to claim 2, Appellant contends the claim is patentable for
the same reasons as claim 1. See Appeal Br. 28–29. Appellant also contends
the Examiner improperly concludes that the amount of aliphatic polyamide
recited in claim 2 is obvious as a result-effective variable. Reply Br. 5–6.
We do not find Appellant’s contentions in this regard persuasive of
error in the Examiner’s rejection because they are conclusory and Appellant
does not identify evidence in the record or provide an adequate explanation
sufficient to support them. Attorney argument is not evidence. De Blauwe,
736 F.2d at 705; see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) (explaining that mere lawyer’s arguments or conclusory statements,
which are unsupported by concrete factual evidence, are entitled to little
probative value).
Appellant’s contentions in this regard are also not well-taken because
they repeat and/or rely on many of the same arguments Appellant discusses
and presents above in response to the Examiner’s rejection of claim 1.
Thus, based on the fact-finding, conclusions, and analysis the
Examiner provides in this appeal record, and for principally the same
reasons discussed above for sustaining the Examiner’s rejection of claim 1,
we sustain the Examiner’s rejection of claims 2, 10, and 11.
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Accordingly, we affirm the Examiner’s rejection of claims 1, 2, 5, and
9–11 under 35 U.S.C. § 103 as obvious over Namkung and Orange.
Rejection 2
The Examiner rejects claims 1, 2, 5, and 9–11 under § 103 as obvious
over Ono4 and Orange. Ans. 5–6 (citing Ono, Abstract, ¶¶ 32–34, 48, 51,
Table 1 (Example 1); Orange, Abstract, ¶¶ 6, 16, 22, 24, 25). In this
rejection, the Examiner relies on and applies Ono in essentially the same
way the Examiner relies on and applies Namkung in Rejection 1.
In response to this rejection, Appellant does not present any additional
substantive arguments. Rather, Appellant repeats and relies on essentially
the same arguments it previously discusses and presents above in response to
the Examiner’s Rejection 1. Compare Appeal Br. 19–23, 26–27 (Rejection
2), with Appeal Br. 14–18, 24–25 (Rejection 1).
Thus, based essentially on the fact-finding, conclusions, and analysis
the Examiner provides in this appeal record, and for principally the same
reasons we discuss above for sustaining the Examiner’s rejection of claims
1, 2, 5, and 9–11 under 35 U.S.C. § 103 as obvious over Namkung and
Orange, we affirm the Examiner’s rejection of claims 1, 2, 5, and 9–11 under
35 U.S.C. § 103 as obvious over Ono and Orange.
Rejections 3 and 4
The Examiner rejects claims 4 and 8 under § 103 as obvious over
Ono, Orange, Washio, and Sawada (Rejection 3) and claims 6 and 7 under

4 Ono relates to molded articles comprising polyamide resin compositions
and includes disclosures similar to disclosures in Namkung. Compare Ono
¶¶ 32–35, 48, 51 with, Namkung ¶¶ 18, 23, 26, 32–27.
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§ 103 as obvious over Ono, Orange, and Kumazawa (Rejection 4). Ans. 7–9.
In response to these rejections, Appellant does not present any additional
substantive arguments. Rather, Appellant relies principally on the same
arguments it previously discusses and presents above in response to the
Examiner’s rejection of claims 1, 2, 5, and 9–11 under § 103 as obvious over
Ono and Orange (Rejection 2). See Appeal Br. 19.
Thus, based essentially on the fact-finding and reasoning the
Examiner provides in this appeal record, and for principally the same
reasons we discuss above for affirming the Examiner’s Rejection 2, we
affirm the Examiner’s rejection of claims 4 and 8 under 35 U.S.C. § 103 as
obvious over Ono, Orange, Washio, and Sawada (Rejection 3); and claims 6
and 7 under 35 U.S.C. § 103 as obvious over Ono, Orange, and Kumazawa
(Rejection 4).
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5, 9–11 103 Namkung, Orange 1, 2, 5, 9–11
1, 2, 5, 9–11 103 Ono, Orange 1, 2, 5, 9–11
4, 8 103 Ono, Orange,
Washio, Sawada
4, 8
6, 7 103 Ono, Orange,
Kumazawa
6, 7
Overall
Outcome
1, 2, 4–11

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)(iv).
AFFIRMED