DAIWA CAN COMPANY et al.Download PDFPatent Trials and Appeals BoardJul 21, 20202019005053 (P.T.A.B. Jul. 21, 2020) Copy Citation 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. Appeal 2019-005053 Application 14/902,609 2 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- Appeal 2019-005053 Application 14/902,609 3 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. Appeal 2019-005053 Application 14/902,609 4 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). Appeal 2019-005053 Application 14/902,609 5 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). Appeal 2019-005053 Application 14/902,609 6 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 Appeal 2019-005053 Application 14/902,609 7 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 Appeal 2019-005053 Application 14/902,609 8 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. Appeal 2019-005053 Application 14/902,609 9 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 Copy with citationCopy as parenthetical citation