Ex Parte 7,759,429 et al

Patent Trial and Appeal Board

Apr 1, 2015

95001652 (P.T.A.B. Apr. 1, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,652 06/09/2011 7,759,429 110752RX 6801
38834 7590 04/01/2015
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036
EXAMINER
KUNZ, GARY L
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
04/01/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNO & COMPANY, LTD., JINNY BEAUTY SUPPLY CO., INC
and JBS HAIR, INC.
Requester and Appellant

v.

KANEKA CORPORATION
(Patent Owner and Respondent)
____________

Appeal 2014-001539
Reexamination Control 95/001,652
US Patent 7,759,429 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
RAE LYNN P. GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Requester filed a Request for Rehearing (“Req. Reh’g”) under 37
C.F.R. § 41.79 of the Decision by the Patent Trial and Appeal Board (“the
Board”) issued May 30, 2014 (“Dec.”). In the Decision, the Board affirmed
the Examiner’s confirmation of the patentability of claims 1-21 of US Patent
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7,759,429 (“the ’429 patent”). Requester contends that the Board erred in
this determination and requests that the Decision be reconsidered. Reh.
Reh’g 2. The Request is Granted and new grounds of rejection under 37
C.F.R. § 41.77(b) are set forth.
The Examiner had initially adopted 24 obviousness grounds of
rejections. Dec. 3-4. However, in response two declarations by Masahiko
Mihoichi1 on behalf of by Patent Owner, the Examiner determined that there
was evidence of unexpected results sufficient to overcome the obviousness
rejections. Right of Appeal Notice (“RAN”) 13. We affirmed the
Examiner’s determination in the Decision.
However, upon reconsideration of the entirety of the evidence in this
appeal, we now REVERSE the Examiner’s conclusion that claims 1-21
would not have been obvious to one of ordinary skill in the art. Specifically,
the data presented in the Mihoichi declarations and the ’429 patent do not
support the Examiner’s conclusion that the asserted unexpected properties of
the claimed artificial hair “are sufficient to overcome all of the obviousness
rejections of record.” RAN 13.
All the claims involve artificial hair comprising (A) a polyalkylene
terephthalate as a main component and (B) a brominated epoxy flame
retardant of formula (1). Mr. Mihoichi performed experiments comparing 1)
polyethylene terephthalate (“PET”) and a brominated epoxy flame retardant
of formula (1) to 2) polyethylene terephthalate (“PET”) and brominated
styrene which was determined to be the closest prior art. Dec. 6-10.

1 Declaration B of Masahiko Mihoichi (Mihoichi Decl. B, dated Nov. 28,
2011); and Declaration C of Masahiko Mihoichi (Mihoichi Decl. C, dated
Oct. 3, 2012).
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In the Mihoichi Declaration B (pages) 3-4, Mr. Mihoichi testified
(underlining added):
The above samples use brominated polystyrene as it is
considered to be one of the closest comparisons to brominated
epoxy resin.
As can be readily observed, the results are surprising. When
comparing Sample No. IP001 [6 parts brominated styrene + 100
parts PET] and Sample No. IP004 [6 parts brominated epoxy
resin + 100 parts PET], which differ only in the type of the
flame retardant, it can clearly be seen that Sample No. IP004
exhibits very human-like characteristics in properties of gloss,
color and texture.
Similarly, Sample No. IP005 [20 parts brominated epoxy resin
+ 100 parts PET] shows superior characteristics as compared to
Sample No. IP003 [20 parts brominated styrene + 100 parts
PET].
Sample No IP002, which contains brominated polystyrene in an
amount between the amounts used in Samples No. IP001 and
IP003, exhibits inferior characteristics as compared to the
Samples IP004 and IP005 in accordance with claim 1 of the
patent.
The only characteristics of the artificial hair made with the PET
and brominated epoxy that Mr. Mihoichi mentioned were gloss, color,
and texture. Thus, Mr. Mihoichi’s statements about the superiority of
hair made from brominated epoxy resin and PET are reasonably
understood to be with respect to these characteristics.
Patent Owner also provided a declaration by Martin I. Jacobs,
Ph.D. (dated Oct. 1, 2012). In the declaration, Dr. Jacobs further
testified about the properties of the claimed artificial hair. Dr. Jacobs
stated: “brominated polystyrene (Comparative Example 4 [of the
’429 patent]) was deficient compared to the claimed flame retardant in
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several hair-related properties: transparency, devitrification resistance,
combing properties, and curl setting properties.” Jacobs Decl. 3: 9-11.
However, Dr. Jacobs did not relate these properties to gloss, color,
and texture, which appear to be the basis of Mr. Mihoichi’s opinion.
Having been directed to Comparative Example 4 of the ’429
patent by Dr. Jacobs, we cannot ignore the other characteristics of the
artificial hair produced in this example. Specifically, the ’429 patent
describes other properties for the artificial hair made from PET and
brominated styrene of Comparative Example 4 in which the PET and
brominated styrene made hair was rated as good as hair made from
PET and brominated epoxy.
The hair made in Comparative Example 4 contains 100 parts
PET and 6 parts brominated polystyrene (’429 patent, col. 24, Table
5). This artificial hair appears to have the same components identified
in IP001 of Mr. Mihoichi’s Declaration B. Table 6 of the patent
describes the properties of Comparative Example 4. Table 6 is
reproduced below. The shaded circles have been added to highlight
the properties of interest.
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As shown in Table 6, Comparative Example 4 was rated “Very
good” for “Gloss,” which is one of the characteristics said to be
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inferior when compared to hair made with the claimed brominated
epoxy flame retardant.
Tables 2 [sic, 3] and 4 of the ’429 patent (cols. 19-22) shows
the properties of 15 examples of artificial hair made with PET and
brominated epoxy, which represent embodiments of claim 1. Tables 1
and 2 of the patent on columns 18-20 show that each of the examples
contain PET and a brominated epoxy. The highest “Gloss” rating for
hair prepared from PET and brominated epoxy is “very good” (see
Examples 3, 11, 14 and 15), and all the other examples are rated only
as “Good.” See Examples 1-15 at cols. 19-22. Mr. Mihoichi testified
that artificial hair made with the claimed combination of PET and a
brominated epoxy was surprisingly superior to hair made with PET
and a brominated styrene when hair gloss, texture, and color were
considered. However, this opinion is not consistent with Comparative
Example 4 which shows that hair made from PET and brominated
styrene has the same gloss rating (“Very Good”) as the hair made
from PET and brominated epoxy with a “Very Good” gloss rating.
Further, hair made from PET and brominated styrene of Comparative
Example 4 has an even better gloss rating (“Very Good”) than the hair
made from PET and brominated epoxy with just a “Good” gloss
rating.
Mr. Mihoichi did not explain how he rated hair “texture.”
According to a general purpose dictionary, “texture” is the tactile and
visual quality of a surface.2 Table 6 shows that the artificial hair of

2 http://dictionary.reference.com/browse/texture
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Comparative Example 4 was rated “Good” in “Stickiness reduction”
and “Smooth feeling.” ’429 patent, cols. 23-24. Table 4, for hair
made from PET and a brominated epoxy, rates the “Stickiness
reduction” and “Smooth feeling” as “Good,” as well. Id. at col. 21-
22. “Stickiness reduction” and “Smooth feeling” represent the tactile
quality of a surface (i.e., how the surface feels) and thus are
reasonably construed to represent “texture.” Consequently, an
artificial hair made with PET and brominated styrene has the same
texture as one made from the claimed combination of PET and
brominated epoxy. In addition, the surface roughness characteristic of
Comp. Ex. 4 (which are 0.12 and 0.5) also fall within the ranges of
Examples 1-15 (which range from 0.07-0.15 and 0.5-1.1). Once
again, Mr. Mihoichi’s opinion that artificial hair made from PET and
brominated epoxy is surprising superior in “texture” to hair made
from PET and brominated styrene is not fully consistent with the data
in the ’429 patent.
In view of the mentioned inconsistencies, we do not find Mr.
Mihoichi’s testimony in the Declarations filed Nov. 28, 2011, and Oct. 3,
2012, to be supported by the evidence as a whole. Specifically, because not
all the examples of PET and brominated epoxy are better than PET and
brominated styrene, particularly in the characteristics relied upon by Mr.
Mihoichi, we do not find that the evidence of unexpected results are
sufficiently representative of the scope of the claim. “Unexpected results”
must be commensurate in scope with the claim to ensure that such results are
representative of the entire claim scope to which a patentee is entitled. In re
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Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Because the Examiner’s
obviousness determination was based on these unexpected results, upon
review, we have decided to grant the rehearing and reverse the Examiner’s
determination.
In the Request for Rehearing, it was also argued that Board erred in
determining that the evidence was commensurate in scope with the claims in
other ways, such as over the entire range of recited fiber sizes and over all
the types of polymers identified as component A in claim 1 (see Req. Reh’g
5-10). We note that the Examiner did not make any findings with respect to
the breadth of component A of claim 1 which is “a polyester made of one or
more of polyalkylene terephthalate {PET} or copolymer polyester, which
comprises polyalkylene terephthalate as a main component.”
As noted by Requester, all the examples in the Mihoichi declaration
are related to polyethylene terephthalate. We have not been pointed to an
explanation in this record, either by the Examiner or Patent Owner, of how a
result with hair made from PET would be representative of other
polyalkylene terephthalates and copolymers thereof. In their Comments on
the Request for Rehearing, Patent Owner stated that “is well known to any
person of ordinary skill in the art of artificial hair that PET is representative
of polyester.” Comments on Req. Reh’g 5. However, Patent Owner did not
provide factual evidence to support this statement, and thus it has little
probative weight.
In sum, we reverse the Examiner’s determination confirming the
patentability of the claims. For the reasons set forth in the Action Closing
Prosecution, a preponderance of the evidence supports the Examiner’s initial
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determination that one of ordinary skill in the art would have used the
brominated epoxy flame retardant of Iizaka ‘849, Iizaka ‘253, Hirayama, or
Tsukahara in Esaki’s hair formulation. Consequently, we designate
Rejections 1-24 as set forth on pages 3-6 of Requester’s Appeal Brief as new
grounds of rejection.

NEW GROUNDS OF REJECTION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.77(b) which provides that "[a]ny decision which includes a new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review." Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R. §
41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …
Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected."
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
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substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the patent owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the owner and/or requester under 37 C.F.R. §
41.77(e) for reconsideration and issuance of a new decision by the Board as
provided by 37 C.F.R. § 41.77(f).

REHEARING GRANTED; § 41.77(b)

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Patent Owner:

WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT A VENUE, NW
SUITE 700
WASHINGTON, DC 20036

Third Party Requester

FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041