TEIJIN LIMITED

Patent Trials and Appeals Board

Nov 3, 2020

2020002044 (P.T.A.B. Nov. 3, 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.
15/113,482 07/22/2016 Takaya Fujii 056777.00085 3646
115871 7590 11/03/2020
Banner & Witcoff, LTD
Client number 056777
1100 13th Street
Suite 1200
Washington, DC 20005
EXAMINER
DILLON, DANIEL P
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
PTO-115871@bannerwitcoff.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAKAYA FUJII, SHUHEI SUZUKI,
HODAKA YOKOMIZO, and HIDENORI AOKI
____________

Appeal 2020-002044
Application 15/113,482
Technology Center 1700
____________
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
JEFFREY R. SNAY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17 of Application 15/113,482. Final
Act. (January 25, 2019). We have jurisdiction under 35 U.S.C. § 6.
A telephonic hearing was held in this appeal on October 28, 2020.
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Teijin Limited as the real party in
interest. Appeal Br. 2.
Appeal 2020-002044
Application 15/113,482
2
I. BACKGROUND
The ’482 Application describes a molding material having a multi-
layered structure including thermoplastic resin layers having carbon fibers.
Spec. ¶ 1. The molding material is said to have favorable flow characteristics
even when molding pressure is low and to develop favorable mechanical
characteristics even when molding is performed under severe molding
conditions. Id. ¶ 4.
Claim 1 is representative of the ’482 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
1. The molding material for a multi-layered structure,
comprising:
a thermoplastic resin layer (X) including carbon fibers
(A) having a weight-average fiber length of 0.01 mm to less
than 3 mm; and
a thermoplastic resin layer (Y) including carbon fibers
(B) having a weight-average fiber length of the 3 mm to 100
mm,
where in a density parameter PY of the thermoplastic
resin layer (Y) expressed by the following Equation (1) is
1×102 to less than 1×104, and
wherein a density parameter PX of the thermoplastic resin
layer (X) expressed by the following Equation (1) is more than
1×101;
P=(q×Ln3)/h (1)
wherein q is the number of flow units of carbon fibers
included in the thermoplastic resin layer per 1 mm² unit area;
Ln is a number-average fiber length (mm) of the carbon
fibers; and
h is a thickness (mm) of the thermoplastic resin layer.
Appeal Br. Claims App. i.
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Application 15/113,482
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II. REJECTION
On appeal, the Examiner maintains the following rejection: Claims 1–
17 are rejected under 35 U.S.C. § 103 as unpatentable over the combination
of Taniguchi,2 Yamane,3 and Honma,4 as evidenced by Minus.5 Final Act. 2.
III. DISCUSSION
Appellant presents specific arguments for reversal of the rejections of
claims 1, 13, and 15. See Appeal Br. 3–17. Because we reverse the rejection
of claim 1—the only independent claim on appeal—we need not address
Appellant’s specific arguments regarding claims 13 and 15.
In rejecting claim 1, the Examiner found that Taniguchi describes the
claimed thermoplastic resin layer (Y). Final Act. 3. The Examiner calculated
that Taniguchi’s thermoplastic resin layer (Y) has a value for the density
parameter PY falls within the range recited in claim 1. Id. at 4. In performing
this calculation, the Examiner relied upon data given in Minus. Id. at 4–6.
The Examiner also found that Yamane describes a molding product
that includes a substantially flat portion and a shaping portion. Id. at 3. The
flat portion is made of a first parent material and a reinforcing material may

2 US 8,900,502 B2, issued December 2, 2014.
3 US 7,445,836 B2, issued November 4, 2008.
4 US 2009/0117366 A1, published May 7, 2009.
5 Marilyn L. Minus & Satish Kumar, The Processing, Properties, and
Structure of Carbon Fibers, 57 JOM: The Journal of The Minerals, Metals
& Materials Society 52–58 (2005). During prosecution, the Examiner
referred to this article as “High Performance Chemicals.” We shall follow
our usual practice of referring to the reference by the surname of the first
author.
Appeal 2020-002044
Application 15/113,482
4
form a long fiber reinforcing sheet. Id. The shaping portion has a second
parent material that includes short fibers. Id. According to Yamane, the long
fibers give the flat portion substantial in-plane stiffness, while the fluidity of
the short fibers provides good molding for the shaping portion. Id. The short
fibers may be less than 1 mm in length. Id. Thus, the Examiner found that
Yamane describes thermoplastic resin layer (X) as recited in claim 1. The
Examiner calculated that the density parameter PX is greater than 10 as
recited in claim 1. Id. at 4. In performing this calculation, the Examiner
relied upon data given in Minus. Id. at 4–6.
The Examiner further found Honma describes a sandwich structure
having excellent mechanical properties, light weight, and thinness. Id. at 4.
Honma’s sandwich structure comprises a core component and two fiber
reinforced components composed of continuous reinforcing fibers. Id. In one
embodiment, the core component further comprises discontinuous
reinforcing fibers obtained by cutting the continuous fibers. Id.
Based on these findings, the Examiner concluded that
it would been obvious to one of ordinary skill in the art before
the filing of the invention to form the shaped product of
Taniguchi such that the shaped product is formed with one
prepreg that has reinforcing fibers with lengths ranging from 5
to 100 mm and another prepreg forming the shaped product
[that is] formed with the short fibers which may be about 30
[mm] or less than 1 mm as taught by Yamane in order to have a
layer of high in-plane stiffness while also having a prepreg
which has good fluidity within the mold, as taught by Yamane,
and such that the short fibers are present in a core layer between
two long fiber prepregs in order to form a sandwich structure
that has excellent mechanical properties, is lightweight and thin
as taught by Honma.
Id.
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Appellant argues that the Examiner erred by finding that a person of
ordinary skill in the art would have had a reason to combine Taniguchi and
Yamane. Appeal Br. 3–5. In particular, Appellant points to differences in the
molding processes described in Taniguchi and Yamane. Id. Taniguchi
describes a cold pressing method of molding in which a preheated
thermoplastic-impregnated prepreg is placed in a mold and cooled to set the
thermoplastic. See Taniguchi 2:30–3:16. Yamane, on the other hand,
describes molding of a product comprising fiber reinforced thermoset resin.
Appeal Br. 4. In Yamane’s process, the molding materials are heated and
shaped in a mandrel apparatus. Yamane 2:20–28. Yamane emphasizes that
the short-fiber base materials must comprise a thermosetting resin. Id. 3:67–
4:4 (“In this connection, it may be possible to select any material for the
short-fiber base materials 12 as long as it is categorized as a thermosetting
resin, which has high fluidity while it is undergoing heating operation.”
(emphasis added)).
As Appellant points out, Yamane’s use of a thermosetting resin is
necessary so that the melted resin can flow into complicated, shaped
portions of the mold. Appeal Br. 4–5. To do this, the short-fiber portion of
Yamane’s molded article must be heated while it is in the mold. A person of
ordinary skill in the art, therefore, would not have had reason to use
Yamane’s short-fiber material in Taniguchi’s cold pressing method.
As the Examiner points out, Answer 13–14, at one point, Yamane
speculates that “it may be possible to select a thermoplastic resin instead” of
a thermoset resin. Yamane 2:9–10. Even if Yamane’s speculation were
correct, for the thermoplastic resin to be able to flow into complicated,
shaped portions of the mold, it would have to be heated to a temperature
well above its melting point. Heating the thermoplastic resin to such a
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Application 15/113,482
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temperature is inconsistent with the purpose of, and changes the basic
principles underlying, Taniguchi’s process. Thus, the Examiner’s proposed
modification of Taniguchi is improper and fails to support a conclusion of
obviousness. See, e.g., In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984); In
re Ratti, 270 F.2d 810, 813 (CCPA 1959).
In view of the foregoing, we reverse the Examiner’s obviousness
rejection of claim 1 of the ’482 Application. Thus, we also reverse the
rejection of claims 2–17, which depend from claim 1.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–17 103 Taniguchi, Yamane, Honma, Minus 1–17
REVERSED