DAIWA CAN COMPANY et al.

Patent Trials and Appeals Board

Jul 21, 2020

2019005053 (P.T.A.B. Jul. 21, 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.
14/902,609 01/04/2016 Takashi KIMIDUKA IWI-40297 1059
97379 7590 07/21/2020
Rankin, Hill & Clark LLP
23755 Lorain Road, Suite 200
North Olmsted, OH 44070
EXAMINER
ROMANOWSKI, MICHAEL C
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
07/21/2020 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):
97379@rankinhill.com
ishihara@rankinhill.com
shea@rankinhill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKASHI KIMIDUKA, YUJI TAKEUCHI, JUNJI
MATSUMURA, MASAYA OKIMOTO, KEITA KATSUMA, HIDEAKI
TOMURA, and SADAMU NAKATSUKA
Appeal 2019-005053
Application 14/902,609
Technology Center 1700
Before DEBRA L. DENNETT, LILAN REN, and JANE E. INGLESE,
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 1–13. See Final Act. 4, 8, 9. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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 “Daiwa Can
Company.” Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claimed invention “relates to a copolyester resin and a metal-
sheet-coating polyester film and a laminated polyester film formed by film-
forming the same, and in particular, relates to a copolyester resin suitable for
a metal-sheet-coating polyester film used for the corrosion prevention of
metallic cans and excellent in flexibility and impact resistance.” Spec. ¶ 1.
Claims 1 and 5, reproduced below, are illustrative of the claimed
subject matter:
1. Copolyester resin characterized by comprising, as
constituent units,
50 to 93 mass% of (A) ester oligomer with a number-
average molecular weight of 700 or lower and comprising
a dicarboxylic acid unit (a1) containing 70 mole%
or more of a terephthalic acid component and
a diol unit (a2) containing 70 mole% or more of an
ethylene glycol component; and
7 to 50 mass% of (B) polyester polyol with a number-
average molecular weight of 1500 to 3000 and comprising a
hydrogenated dimer acid unit (b1) and a 1,4-butanediol unit
(b2).

5. A production method of the copolyester resin
characterized by comprising
a process for obtaining (A) ester oligomer with a number-
average molecular weight of 700 or lower by
the polycondensation reaction of a dicarboxylic
acid unit (a1) containing 70 mole% or more of a
terephthalic acid component and a diol unit (a2)
containing 70 mole% or more of an ethylene glycol
component and the subsequent depolymerization
reaction, and
a process for obtaining a copolyester resin comprising 50
to 93 mass% of the ester oligomer (A) and 7 to 50 mass% of a
polyester polyol (B) by the polycondensation reaction of the
ester oligomer (A) and (B) polyester polyol with a number-
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average molecular weight of 1500 to 3000 and comprising a
hydrogenated dimer acid unit (b1) and a 1,4-butanediol unit
(b2).

Claims Appendix (Appeal Br. 23, 24).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Ohishi US 2004/0198907 A1 Oct. 7, 2004
Yoshioka US 2006/0252864 A1 Nov. 9, 2006
Na KR 2008/0051403 June 11, 2008
Yuan CN 102516517 June 27, 2012
Shimizu EP 1 344 643 A1 Dec. 31, 1998

REJECTIONS
Claims 1, 2, and 5 are rejected under 35 U.S.C. § 103 as being
unpatentable over Na in view of Yuan. Final Act. 4.
Claims 3, 4, 10, and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Na in view of Yuan and Shimizu. Final Act. 8.
Claims 6–9, 12, and 13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ohishi, in view of Na and Yuan. Final Act. 9.

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OPINION
Claim 12
Appellant argues that Na teaches away from the recited resin having
“a dicarboxylic acid unit (a1) containing 70 mole% or more of a terephthalic
acid component and a diol unit (a2) containing 70 mole% or more of an
ethylene glycol component” because Na teaches using polybutylene
terephthalate (“PBT”) instead of polyethylene terephthalate (“PET”) as the
hard segment of a polymer. Appeal Br. 10, 11 (emphases omitted). More
specifically, Appellant cites the following teaching from Na: “In the case of
PCT or PET, the polymerization temperature is high and copolymerization
with other polyester based soft segments is difficult. Therefore, in most
cases, adopting a method of introducing a polyester-based component as a
soft segment while making the hard segment PBT.” Id. at 11 (citing Na pg.
1) (emphases omitted).
Under the proper legal standard, a reference will teach away
when it suggests that the developments flowing from its
disclosures are unlikely to produce the objective of the
applicant’s invention. A statement that a particular combination
is not a preferred embodiment does not teach away absent clear
discouragement of that combination.

Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed.
Cir. 2005) (citations omitted).
In this case, claim 1 recites a composition having, among other
components, PET. The Examiner finds that such a composition is known in

2 Appellant does not separately argue claims 2–4 and 6–13. See Appeal Br.
21. These claims stand or fall with claim 1. See id.; see also 37 C.F.R.
§ 41.37(c)(1)(vii).
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the art. Final Act. 4; Ans. 11. Appellant does not refute the finding that such
a composition is known in the art but only that “copolymerization with other
polyester based soft segments is difficult” when the hard segment is made
from PET. Appeal Br. 11 (emphasis omitted). Appellant’s argument
therefore does not identify reversible error in the Examiner’s finding that the
composition having PET as recited in claim 1 is known. Na’s teaching that
certain difficulties may arise when PET is used in a particular context does
not show that Na “suggests that the line of development flowing from the
reference’s disclosure is unlikely to be productive of the result sought by the
applicant” – in this case, the recited composition. See In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994).
Appellant next argues that the recited composition exhibits
unexpected results when compared to other compositions. As support,
Appellant relies on Table 1 and Table 3 of the Specification showing
examples and comparative examples, respectively. Appeal Br. 12.
A party asserting unexpected results as evidence of nonobviousness
has the burden of proving that the results are unexpected. In re Geisler, 116
F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden 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 1 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); In re Harris, 409 F.3d 1339, 1344
(Fed. Cir. 2005).
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In this case, the Examiner finds that the data in Table 1 shows only
one type of polyol component B in the form of Priplast 3199 which has a
molecular weight of 2200 and is not commensurate in scope with the
“polyester polyol with a number-average molecular weight of 1500 to 3000”
required by claim 1. Ans. 13. Appellant does not refute this finding. See
Reply Br. 3. No reversible error has been identified in the Examiner’s
findings here.
We are also not persuaded by Appellant’s argument that a skilled
artisan would not have considered obvious an “ester oligomer with a
number-average molecular weight of 700 or lower” based on the prior art.
The Examiner finds that Na teaches all limitations recited in composition
claim 1 but “is silent regarding the number average molecular weight of the
hard segment of the thermoplastic polyester ester elastomer resin” which is
taught by Yuan. Final Act. 5–6. Appellant’s argument is unpersuasive as it is
related to whether the ester resin in Na is a random copolymer without
addressing the Examiner’s findings in support of the rejection. See Appeal
Br. 15; see also Ans. 14 (stating that “Yuan was not relied upon for a
teaching regarding the soft segment or any characteristics/properties
thereof”).
Appellant’s argument regarding unexpected results (Appeal Br. 16–
18) based on the molecular weight of the ester oligomer is likewise
unpersuasive as the data is incommensurate in scope with the claim as
analyzed supra. Moreover, Appellant argues that in “Tables 1 and 3,
Examples 1–1 to 1–6 provide unexpectedly advantageous results in the resin
appearance, film formability, and dent resistance as compared to
Comparative Examples 1–8 and 1–9” but Appellant does not explain why
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Comparative Examples 1–5 through 1–7 (tabulated in Table 3 with
Comparative Examples 1–8 and 1–9) should be omitted from the
comparison. Appeal Br. 16. Appellant also does not explain why
Comparative Examples 1–1, 1–3, and 1–4, all showing “Transparent” in
resin appearance –similar to Examples 1–1 to 1–6 in Table 1, support
Appellant’s position. See Spec. Tables 1 & 2; see also Appeal Br. 16
(discussing some but not all aspects of Tables 1 and 2). No reversible error
has been identified in the Examiner’s findings with regard to the purported
unexpected results.
Claim 5
In rejecting claim 5, the Examiner finds:
the rejection of claim 1 reads on the limitations of claim 5,
wherein one of ordinary skill in the art recognizes that both the
hard polyester component and the soft polyester diol
component, as well as the thermoplastic polyester ester
elastomer formed from the two components are obtained
through polycondensation reactions.

Final Act. 7. The Examiner further finds that “Na explicitly discloses that
esterification and polycondensation are utilized to obtain the thermoplastic
polyester ester elastomer.” Id. (citing Na ¶ 5). In the Examiner’s Answer, the
Examiner additionally states that “Yuan teaches the depolymerization step.”
Ans. 16 (citing Yuan ¶ 10).
Based on the record before us3, Yuan ¶ 10 states:

3 The machine translated version of Yuan in the record before us lacks
paragraph numbers. The Examiner finds that Yuan ¶ 10 teaches that “[t]he
hard section has a number average molecular weight of 500 to 10,000
g/mol.” Final Act. 6 (citing Yuan ¶ 10). The Examiner also finds that Yuan ¶
10 teaches “carrying out the (trans)esterification reaction to form the ester
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Synthesis of Aromatic Polyester Hard Segments: The
aromatic dibasic acid ester or aromatic dibasic acid and excess
diol are subjected to transesterification or esterification reaction
under the action of a catalyst at a reaction temperature of 190 to
220 °C. The reaction lime is reduced to 200 Pa or less, and the
reaction is carried out for 1 to 2 hours to obtain the prepolymer
P1, and the number average molecular weight is in the range of
500 to 10000 g/mol.

Given that the record before us does not support a teaching of
the recited “subsequent polymerization step,”4 we reverse the
rejection of claim 5.
CONCLUSION
The Examiner’s rejections are affirmed in part.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5 103 Na, Yuan 1, 2 5
3, 4, 10, 11 103 Na, Yuan, Shimizu 3, 4, 10, 11
6–9, 12, 13 103 Ohishi, Na, Yuan 6–9, 12, 13
Overall
Outcome:
1–4, 6–13 5

oligomer for an extended amount of time in order to control the molecular
weight thereof, of which was cited by the Examiner in the grounds of
rejection to modify Na to have utilized the ester oligomer number average
molecular weight range taught by Yuan.” Ans. 16.
4 The ther claim limitations in claim 5 lack antecedent basis.
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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 IN PART