CANON KABUSHIKI KAISHA

Patent Trials and Appeals Board

Feb 23, 2022

2021001456 (P.T.A.B. Feb. 23, 2022)

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. 14/792,415 07/06/2015 Katsuhiro Matsuda 10024428WOUS03 9000 34904 7590 02/23/2022 CANON U.S.A. INC. INTELLECTUAL PROPERTY DIVISION 15975 ALTON PARKWAY IRVINE, CA 92618-3731 EXAMINER SEIDLECK, JAMES J ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 02/23/2022 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): cusaipdocketing@cusa.canon.com mkavetsky@cusa.canon.com skalminov@cusa.canon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KATSUHIRO MATSUDA, HIROHIDE MATSUHISA, HITOSHI HORIE, and TAKESHI KOMURO ____________ Appeal 2021-001456 Application 14/792,415 Technology Center 1700 ____________ Before DONNA M. PRAISS, JEFFREY R. SNAY, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-13 and 21-28 of Application 1 In our Decision, we refer to the Specification (“Spec.”) of Application No. 14/792,415 filed July 6, 2015; the Non-Final Office Action dated Feb. 12, 2020 (“Non-Final Act.”); the Appeal Brief filed July 24, 2020 (“Appeal Br.”); the Examiner’s Answer dated Oct. 19, 2020 (“Ans.”); and the Reply Brief filed Dec. 18, 2020 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42 (2022). Appellant identifies the real party in interest as CANON KABUSHIKI KAISHA. Appeal Br. 3. Appeal 2021-001456 Application 14/792,415 2 14/792,415, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. The subject matter of the invention relates to a polymer compound and methods of its synthesis. Spec. ¶ 2. Claim 21, reproduced below from the Claims Appendix of the Appeal Brief, represents the claimed subject matter: 21. A polymer compound represented by the following formula (2): wherein A represents an ethylene group and n represents 185 or more and 600 or less. REJECTIONS3 The Examiner maintains the rejections as follows: (1) claims 21-28 as anticipated by, or in the alternative,4 obvious over Krone et al., 3 We note that Appellant properly appeals from the Examiner’s Non-final rejection of Feb. 12, 2020 because the claims on appeal have been twice rejected. See 35 U.S.C. § 134(a)(“[a]n applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board.”). 4 In the Non-Final Office Action, the Examiner rejected claims 21-28 as anticipated by Krone. Non-Final Act. 2. In the Answer, the Examiner added an alternative rejection of claims 21-28 as obvious over Krone, and designated it as a new ground of rejection. Ans. 3-4. Appeal 2021-001456 Application 14/792,415 3 US 5,391,696, issued Feb. 21, 1995 (“Krone”); and (2) claims 1-13 as obvious over Krone. Non-Final Act. 2-4; Ans. 3-5. DISCUSSION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (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 [E]xaminer’s rejections.”). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejections for the reasons expressed in the Non-Final Office Action and the Answer. We add the following primarily for emphasis. Rejection of claims 21-28 as anticipated by or obvious over Krone Appellant relies on arguments made in relation to the rejection of claim 21 for patentability of claims 22-28. Appeal Br. 24-25; Reply Br. 22. We limit our discussion to claim 21. Claims 22-27 stand or fall with claim 21. 37 C.F.R. § 41.37(c)(1)(iv) (2022). The Examiner finds that Krone discloses polycondensates consisting of at least 95 mol% of formula I: wherein R1 is a compound of formula V: Appeal 2021-001456 Application 14/792,415 4 and R2 is ethylene, and X is oxygen. Ans. 3-4. The Examiner finds that the molecular weight of such a monomer is 164. Id. at 4. The Examiner finds that Krone discloses preferred polymer weights are 3,000 to 100,000. Id. The Examiner finds that the number of monomers (the “n” in claim 21) in Krone’s polymer is between 18 (3,000/164) and 609 (100,000/164). Id. The Examiner finds that Krone discloses formation of moldable materials from the polycondensates. Id. The Examiner concludes that claim 21 would have been anticipated by or, in the alternative, obvious over Krone. Id. Appellant argues that the Examiner must cherry pick a specific combination of options to arrive at the claimed polymer compound. Appeal Br. 11. Under such circumstances, Appellant argues, Krone cannot anticipate claim 21. We agree. A reference that does not disclose a specific embodiment which satisfies all of the claim limitations will nonetheless describe the claimed invention within the meaning of § 102 if it “clearly and unequivocally . . . [directs] those skilled in the art to [the claimed invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (emphasis in original) (quoted with approval in Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008)). Here, one of ordinary skill in the art must select options for R1, R2, and X from among those disclosed in Krone in order to achieve the polymer compound of claim 21, and such picking and choosing is barred by the prohibition on picking and choosing to satisfy a § 102 rejection. However, Appeal 2021-001456 Application 14/792,415 5 although inappropriate in an anticipatory rejection, “[s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objective evidence any inference of obviousness which may arise from the similarity of the subject matter which he claims to the prior art.” Arkley, 455 F.2d at 587-88. The various combinations of R1, R2, and X disclosed in Krone are prima facie in the public domain and generally should be free for all to use. Krone discloses “preferred polycondensates of the formula I are those . . . where R1 is . . . f) a compound of the formula V, where X is a) -O-, . . . where R2 is . . . c) straight-chain . . . alkyl or alkenyl having 1 to 18 carbon atoms.” Krone col. 3, ll. 66-68; col. 5, ll. 55-67; col. 6, ll. 21-22. Thus, Krone does more than merely disclose a genus, as Appellant contends. See Reply Br. 4-19. Krone discloses the polymer compound of claim 21’s formula (2) when certain selections are made for R1, R2, and X. Krone also discloses a range for “n” in claim 21 that encompasses “n represents 185 or more and 600 or less.” See Krone col. 9, ll. 19-20; Ans. 4. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. See In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). Krone discloses use of the polymer for forming moldable materials (Krone col. 15, ll. 46-47), a use similar to those required in other claims of the ’415 Application. For chemical compound claims, a prima facie case of obviousness “frequently turns on the structural similarities and differences between the compounds claimed and those in the prior art.” Valeant Pharms. Int’l, Inc. v. Mylan Pharms. Inc., 955 F.3d 25, 32 (Fed. Cir. 2020) (quoting Daiichi Appeal 2021-001456 Application 14/792,415 6 Sankyo Co. v. Matrix Labs., Ltd., 619 F.3d 1346, 1352 (Fed. Cir. 2010) (citing In re Dillion, 919 F.2d 688, 692 (Fed. Cir. 1990) (en banc))). “[S]tructural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness.” Dillon, 919 F.2d at 692. In the instant case, the closest prior art (Krone) actually discloses the claimed polymer compound. The fact that a reference “discloses a multitude of effective combinations does not render any particular formulation less obvious.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Although the Examiner’s explanation of obviousness is not extensive, it is sufficient to shift the burden to Appellant to demonstrate patentability, such as by evidence of unexpected results relative to the closest prior art. Appellant argues that the January 3, 2019 Declaration of Katsuhiro Matsuda (“Matsuda Decl.”) supports unexpected results.5 Reply Br. 19-22. The Matsuda Declaration provides the glass transition temperatures obtained for polyethylene furandicarboxylate, polytrimethylene furandicarboxylate, and polybuthylene furandicarboxylate, all of which were produced by the procedure described in paragraphs 73-79 and 87-91 of the Specification. Matsuda Decl. ¶ 8. According to the Declaration, the two tested examples of polyethylene furandicarboxylate (“Examples”) are 5 In the Appeal Brief, Appellant stated that the Matsuda Declaration is not relied upon. Appeal Br. 32 (Evid. App.). However, given the entry of new grounds of rejection by the Examiner in the Answer, Appellant has not waived this argument. Appeal 2021-001456 Application 14/792,415 7 encompassed by the scope of the then-pending independent claims (identical to current pending independent claims), although two examples each of polytrimethylene furandicarboxylate, and polybuthylene furandicarboxylate (“Comparative Examples”) are not. Id. The Declaration states that the two Examples (in which A in formula (2) is ethylene) had higher glass transition temperatures and excellent heat resistance in comparison to the Comparative Examples. Id. ¶¶ 9-10. The Declaration includes the table below: The Declaration describes these results as “a critical and unexpected benefit.” Id. ¶ 11. The burden of proving the results are unexpected requires Appellant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, (see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)), and that is reasonably commensurate in scope with the protection sought by claim 21 on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). The extent of the showing relied upon by Appellant also must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). The evidence provided by Appellant in the Matsuda Declaration is insufficient to support the scope of claim 21. The first example has an unknown polymerization degree, therefore we cannot discern if the first Appeal 2021-001456 Application 14/792,415 8 example falls within or outside of the scope of claim 21. That leaves a single result-that of the second example-on which to rely for evidence of unexpectedness. In addition, no data is provided for examples with polymerization degrees closer to the claimed endpoints of “185 or more and 600 or less,” or for any comparative examples of polyethylene furandicarboxylate having polymerization degrees outside of the claimed range. The nexus required between the merits of the claimed invention and the evidence offered, if that evidence is to be given substantial weight enroute to conclusion on the obviousness issue, is missing here. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). Appellant fails to support the existence of unexpected results that are reasonably commensurate in scope with claim 21. Therefore, we sustain the rejection of claim 21 as obvious over Krone. We sustain the rejection of claims 22-28 for the same reasons. Rejection of claims 1-13 obvious over Krone Claim 1 recites “[a] liquid vessel comprising a molded article . . . wherein the molded article comprises a polymer compound” that is identical to that of claim 21. Appeal Br. 28 (Claims App.). Claim 5 recites “[a] business machine comprising a casing, the casing comprising a polymer compound” that is identical to that of claim 21. Id. at 28-29. Claims 2-4, 10, and 12 depend from claim 1, and claims 6-9, 11, and 13 depend from claim 5. Id. Appellant relies on the arguments made in relation to claim 21 for patentability of claims 1-13. The Examiner finds that Krone discloses a molded article comprising a polymer of the claimed formula. Non-Final Act. 3; Ans. 4-5. The Appeal 2021-001456 Application 14/792,415 9 Examiner concludes that it would have been obvious to one of ordinary skill in the art to form products of the claimed polymer formula to provide that vessel or casing in claims 1 and 5, as Krone discloses a similar use. We sustain the rejection of claims 1-13 as obvious over Krone for the same reasoning discussed supra. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-13 103(a) Krone 1-13 21-28 102(b) Krone 21-28 21-28 103(a) Krone 21-28 Overall Outcome 1-13, 21- 28 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) (2022). AFFIRMED