TDK CORPORATION

Patent Trials and Appeals Board

Oct 13, 2020

2020000843 (P.T.A.B. Oct. 13, 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.
14/521,709 10/23/2014 Tsuyoshi SUGIYAMA 163107 5955
25944 7590 10/13/2020
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
10/13/2020 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSUYOSHI SUGIYAMA and HIROSHI SHUTOH
Appeal 2020-000843
Application 14/521,709
Technology Center 1700
Before BEVERLY A. FRANKLIN, JEFFREY R. SNAY, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11. See Final Act. 2, 4, 5, 6, 7, 8, 9,
11. We have jurisdiction under 35 U.S.C. § 6(b). A hearing was held on
September 17, 2020, a transcript of which will be made of record.
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “TDK
CORPORATION.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The Specification provides that the invention seeks to “to provide a
resin composition having a melting temperature suitable for molding, a resin
sheet containing the resin composition, a cured resin product with excellent
thermal conductivity and heat resistance, and a substrate.” Spec. ¶ 6. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A resin composition comprising at least one epoxy
compound and a curing agent selected from 1,3,5-tris(4-
aminophenyl)benzene and l,3,5-tris(4-hydroxyphenyl)benzene,
wherein the content of the 1,3,5-triphenylbenzene moiety
of the curing agent is 15 mass% or more and 50 mass% or less
of the total organic substances in the resin composition, and
the 1,3,5-triphenylbenzene is the main skeleton of the
curing agent.
Claims Appendix (Appeal Br. A-1).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Butler US 4,916,202 Apr. 10, 1990
Aslam US 5,344,980 Sep. 6, 1994
Murata US 5,597,876 Jan. 28, 1997
Imura US 5,623,031 Apr. 22, 1997
Eriguchi US 2008/0132669 A1 June 5, 2008
Hirano US 2010/0112272 A1 May 6, 2010
Miyata US 2013/0143981 A1 June 6, 2013

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Application 14/521,709
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REJECTIONS2
Claims 1–3 are rejected under 35 U.S.C. § 103 as being unpatentable
over Hilton. Final Act. 4.
Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over
Hilton in view of Miyata or Wu. Final Act. 5.
Claims 1–4, 9, and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hirano in view of Eriguchi and Aslam. Final Act. 6, 9.
Claims 5–7 are rejected under 35 U.S.C. § 103 as being unpatentable
over Hirano in view of Eriguchi, Aslam, Imura, and Murata. Final Act. 7.
Claims 5, 8, and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hirano in view of Eriguchi, Aslam, Huntsman, and Butler.
Final Act. 8, 11.

Claims Rejected 35 U.S.C. § Reference(s)/Basis
1–3 103 Hilton
4 103 Hilton, Miyata or Wu
1–4, 9, 10 103 Hirano, Eriguchi,
Aslam
5–7 103 Hirano, Eriguchi,
Aslam, Imura, Murata
5, 8, 11 103 Hirano, Eriguchi,
Aslam, Huntsman,
Butler

2 Claims 1–11 were rejected “under 35 U.S.C. § 112(a) or 35 U.S.C. § 112
(pre–AIA), first paragraph, as failing to comply with the written description
requirement.” Final Act. 2. This rejection was subsequently withdrawn.
Advisory Action March 28, 2019.
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OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After having considered
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm
the Examiner’s § 103 rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Claim 1 (Hirano, Eriguchi, & Aslam)3
In rejecting claim 1 over Hirano, Eriguchi, and Aslam, the Examiner
finds that Hirano discloses a resin composition having 20 to 30 wt% of a
phenol based curing agent and an epoxy resin whereas Eriguchi discloses a
compound having at least three phenolic hydroxyl groups such as 1,3,5-
tris(4'-hydroxyphenylbenzene) and Aslam discloses that 1,3,5-tris(4'-
hydroxyphenylbenzene) may act as a crosslinking agent in an epoxy resin.
Final Act. 5. The Examiner finds that a skilled artisan would have combined
these prior art teachings to arrive at the recited composition “in order to
obtain low dielectric constant and increase flexibility of cured film.” Id.
Furthermore, based on the respective molecular weight of 1,3,5-tris(4'-
hydroxyphenylbenzene) and 1,3,5-triphenylbenzene, the Examiner finds

3 Appellant argues for the patentability of claims 1–4, 9, and 10 over Hirano,
Eriguchi, and Aslam as a group with claim 1 being the representative claim.
See Appeal Br. 4–8. These claims stand or fall together. See id.; see also 37
C.F.R. § 41.37(c)(1)(iv).
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that the resultant composition would have 17 to 26 wt% of 1,3,5-
triphenylbenzene. Id.
Appellant argues that Hirano “only describes various kinds of isomers
of bisphenols such as bis(2-hydroxyphenyl)methane” and “[t]he Examiner’s
analysis incorrectly assumes that one of ordinary skill in the art would have
made a 1: 1 weight substitution of the claimed trisphenol but does not take
into account the difference in molecular weight” of the compounds. Appeal
Br. 5, 6.
We are not persuaded by this argument because Hirano undisputedly
discloses a resin composition having a phenol based curing agent. See
Hirano ¶¶ 57, 60–61 (cited in Final Act. 6; cited in Ans. 16). Appellant’s
assertion that Hirano excludes all other phenol based curing agent than
bisphenols is therefore unsupported by the record.
Appellant’s argument that “one of ordinary skill in the art would
understand that the weight ratio of the curing agent to the third resin
composition in Hirano depends on a specific molar ratio of the bisphenol to
the thermosetting resin” and various other factors (Appeal Br. 6) is not
persuasive because it does not address the Examiner’s rationale in
combining the prior art teachings. See Final Act. 5 (finding that a skilled
artisan would have combined these prior art teachings to arrive at the recited
composition “in order to obtain low dielectric constant and increase
flexibility of cured film”); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (holding that in support of an obviousness rejection, “there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”). To the extent that Appellant
attempts to argue that there is no reasonable expectation of success of
combining the prior art teachings, Appellant does not present factual
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evidence in support of such an argument. “Attorneys’ argument is no
substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed.
Cir. 1989).
Moreover, we note that claim 1 recites a resin composition and
Appellant’s argument, directed to how the resin may be produced using the
prior art compositions, does not structurally distinguish the recited
composition. “[W]hen 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.”
KSR, 550 U.S. at 416 (citing United States v. Adams, 383 U.S. 39, 50–51
(1966)).
Appellant’s argument that “Eriguchi and Aslam are also completely
silent about reacting 1,3,5-tris(4-hydroxyphenyl)benzene (or l,3,5-tris(4-
aminophenyl)benzene) with any epoxy compound to form a resin
composition” (Appeal Br. 7) is likewise unpersuasive because the method by
which the recited compound may be produced does not distinguish the
composition recited in claim 1. We further note that Appellant’s remaining
argument with regard to Eriguchi and Aslam – as that with regard to Hirano
–attacks the references individually, rather than considering what the
combined references would have suggested to the person of ordinary skill in
the art. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
Appellant next argues that the Examiner’s calculation of the weight
percentage is in error because “at least the Hirano curing catalyst and
coupling agent in the third resin composition may include substantial
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amounts of inorganic substances” and that “the 20 to 30 wt% of the phenol-
based curing agent based on the total weight of the third resin composition in
Hirano does not necessarily mean 20 to 30 wt% to total organic substances
in the resin composition, as claimed.” Appeal Br. 8. The Examiner, on the
other hand, points out that such curing catalyst and coupling agents are
optional. Ans. 20. Appellant acknowledges that “Hirano actually discloses
that the curing catalyst and coupling agent are ‘preferred’ inclusions.” Reply
Br. 5. No error has therefore been identified in the Examiner’s findings
based on Hirano’s teaching – as a whole – not limited to its preferred
embodiments. It is well established that a prior art reference “must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.” Merck, 800 F.2d at 1097.
Appellant states, in the “Background” of the argument, that certain
“unexpected advantages” are found in the recited composition. Appeal Br. 4.
Although it is unclear whether Appellant is arguing for patentability based
on such advantages, Appellant does not address the Examiner’s finding that
the data purported to show any advantages of the composition “is not []
commensurate in scope with the scope of present claims given that the
examples recite specific epoxy resin in specific amounts while the present
claims broadly recite any epoxy resin in any amount.” Compare Appeal Br.
3–15 with, Final Act. 14. No error has therefore been identified in the
Examiner’s evaluation of any evidence in support of the purported
unexpected results.
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Claim 11 (Hirano, Eriguchi, Aslam, Huntsman, & Butler)
The dispositive limitation of claim 11 is “wherein the content of the
1,3,5-triphenylbenzene moiety of the curing agent is 35 mass% or more and
50 mass% or less of the total organic substances in the resin composition.”4
In rejecting claim 11, the Examiner finds that the combined prior art
teaches a resin having “14 to 34.6wt%” of 1,3,5-triphenylbenzene of the
total organic substance. Final Act. 12. The Examiner finds that such an
amount is so close that a skilled artisan would have found the recited “35
mass% or more” obvious. Id. at 13.
Appellant acknowledges that “MPEP §2144.05 instructs that a prima
facie case of obviousness may be established when the claimed range is
close to the prior art such ‘that one of skill in the art would have expected
them to have the same properties’” but argues that “there is no evidence in
Hirano/Eriguchi/Aslam or otherwise of record to suggest that the Examiner’s
proposed composition would have the same properties as the claimed 1, 3, 5-
triphenylbenzene moiety.” Appeal Br. 10. Appellant argues that “one of
ordinary skill in the art would not have reasonably expected the
Hirano/Eriguchi/Aslam composition to have the same properties as the
claimed composition” without presenting factual evidence in support.
“Attorneys’ argument is no substitute for evidence.” Johnston, 885 F.2d at
1581. Absent supporting factual evidence, Appellant has not identified

4 Appellant mentions dependent claim 10 in arguing for the patentability of
claim 11 but does not present separate arguments. See Appeal Br. 11
(“Huntsman and Butler are merely applied for disclosure of an epoxy resin
and do not cure the above-described deficiencies of Hirano, Eriguchi and
Aslam. For at least these reasons, the § 103 rejection of claim 11 over
Hirano, Eriguchi, Aslam, Huntsman and Butler is clearly erroneous.”).
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reversible error in the Examiner’s fact finding that a skilled artisan would
have found the recited composition sufficiently close to the prior art.
We further note that Appellant’s argument that the Examiner has not
provided a rationale in support of the rejection does not address the
Examiner’s obviousness analysis. See Appeal Br. 11. For example, the
Examiner finds:
In light of motivation for using 1,3,5-tris(4'-
hydroxyphenylbenzene) disclosed by Eriguchi et al. and for
using 1,3,5-tris(4'-hydroxyphenylbenzene) as crosslinking agent
for epoxy resin disclosed by Aslam et al. as described above, it
therefore would have been obvious to one of ordinary skill in
the art to use 1,3,5-tris(4'-hydroxyphenylbenzene) as curing
agent in Hirano et al. in order to obtain low dielectric constant
and increase flexibility of cured film, and thereby arrive at the
claimed invention.

Final Act. 12. The Examiner provides additional fact findings in support of
the rationale. Id. at 12–14. Appellant does not address and therefore does not
dispute the Examiner’s fact findings in support of the obviousness rationale.
See Appeal Br. 10–11.
Appellant’s argument that the Examiner erred “for all of the reasons
discussed above with respect to claim 1” (Appeal Br. 9) has been addressed
supra and found to be unpersuasive.
Claims 9 & 10 (Hirano, Eriguchi, & Aslam)
Although presented under a separate heading, Appellant does not
present arguments separate for claims 9 and 10. See Appeal Br. 14 (“For all
of the reasons discussed above with respect to claims 1 and 11, the
Examiner's basis for arriving at the overlapping range in Hirano is flawed.”),
13 (“Claim 10 recites the same range recited in claim 11 and therefore all of
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the arguments presented above with respect to claim 11 also apply to claim
10.”). The rejection of claims 9 and 10 is sustained for the reasons provided
with regard to claims 1 and 11. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv).
We additionally note that Appellant states “the claimed range [of
claim 9] produces unexpected results[.]” Appeal Br. 15. Appellant, however,
does not support this argument with evidence. No error has therefore been
identified in the Examiner’s fact findings in support of the rejection of claim
9.
Claim 1 (Hilton)5
The Examiner finds that Hilton discloses a resin composition
comprising epihalohydrin as well as 1,3,5-tris(4'-hydroxyphenylbenzene).
Final Act. 4 (citing various portions of Hilton). Based on the molecular
weight of 1, 3, 5-tris(4'-hydroxyphenylbenzene), the Examiner finds that the
prior art composition encompasses that recited in claim 1. Id. (citing various
portions of Hilton).
Appellant does not address the portions of Hilton cited in support of
the Examiner’s rejection. See Appeal Br. 12–14. Appellant instead argues
that the Examiner erred because “the Hilton 1,3,5-tris(4-
hydroxyphenyl)benzene is merely a precursor compound in the formation of
a pre-polymer.” Id. at 12. We are not persuaded by this argument because it
is incommensurate in scope with the claim and does not structurally
distinguish the recited composition. Likewise, Appellant’s arguments that
“[t]he Hilton l,3,5-tris(4-hydroxyphenyl)benzene is not used as a curing
agent in curing step in Hilton, and therefore does not ‘cure’ any epoxy

5 Appellant argues for the patentability of claims 1–3 over Hilton as a group
with claim 1 being the representative claim. See Appeal Br. 11–14. These
claims stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv).
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compound, as would be understood by one of ordinary skill in the art” (id.)
and that “the content range in Hilton does not take into account any organic
substances in the curing agent used to cure the pre-polymer to form the
cured resin composition” (id. at 14) are unpersuasive because these
arguments are not based on the structural limitations of the composition
claim. We further note that the Examiner finds that the prior art “curing
agents are optional” (Ans. 28) and Appellant does not address this finding.
See Reply Br. 7–9. Appellant’s argument is therefore unpersuasive also
because it does not identify error in the Examiner’s fact findings.
Appellant also argues that 1,3,5-tris(4-hydroxyphenyl)benzene in
Hilton “does not further react with any epoxide groups to cross-link polymer
chains” and “cannot reasonably be considered to correspond to the claimed
curing agent.” Appeal Br. 13. This argument does not structurally
distinguish the composition in claim 1 as “the patentability of apparatus or
composition claims depends on the claimed structure, not on the use or
purpose of that structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).
Appellant lastly argues that the Examiner erred in finding that the
prior art composition encompasses the recited weight ranges. Appeal Br. 14.
Appellant’s argument, however, is based on the preferred prior art weight
range of “typically about 2-15 wt%, and preferably about 5-10 wt%” instead
of the prior art teaching as a whole which discloses a range of 0.5 to 20 wt%.
See id. Because the Examiner’s obviousness analysis is based on the prior art
teaching as a whole – rather than the preferred embodiments, Appellant’s
argument does not identify reversible error in the Examiner’s fact findings.

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CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3 103 Hilton 1–3
4 103 Hilton, Miyata or Wu 4
1–4, 9, 10 103 Hirano, Eriguchi,
Aslam
1–4, 9, 10
5–7 103 Hirano, Eriguchi,
Aslam, Imura, Murata
5–7
5, 8, 11 103 Hirano, Eriguchi,
Aslam, Huntsman,
Butler
5, 8, 11
Overall
Outcome
1–11

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