Ex Parte Fukui et al

Patent Trial and Appeal Board

Jun 3, 2016

13123597 (P.T.A.B. Jun. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/123,597 04/11/2011 Toshimi Fukui
119941 7590 06/07/2016
Foley & Lardner LLP
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
091619-0529 9039
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
06/07/2016 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte TOSHIMI FUKUI and MOTOYUKI TOKI
Appeal2014-007164
Application 13/123,597
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI and
CHRISTOPHER L. OGDEN Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 15-17 and 32-43. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as "Empire Technology
Development LLC" (Appeal Brief filed January 27, 2014 ("App. Br.") 5).
Appeal2014-007164
Application 13/123,597
Claims 15-17 and 32-43 are finally rejected and appealed. Claim 15
is independent and illustrative of the subject matter on appeal (emphasis
added):
15. An article of manufacture comprising a polymer
comprising bisphenol A,
wherein at least a portion of the polymer is coated with a
composition comprising one or more matrix polymers having a
solubility parameter of about 20 f 12/cm312 or less; and a plurality of
UV-blocking nanoparticles dispersed in the one or more matrix
polymers;
wherein the surfaces of the nanoparticles comprise a surface
modification agent and the composition is substantially free of
bisphenol A.
The Appellants appeal the following rejections under 35 U.S.C.
§103(a):
I. Claims 15-17, 32-35, 38, 39, 42, and 43 as unpatentable over Parekh
(U.S. 6,235,102 Bl issued May 22, 2001) in view of Martin (U.S.
Publication No. 2004/0126346 Al published July 1, 2004) and Zhang
(Chinese Patent No. 1857903A published November 8, 2006) (Final
Rejection dated August 8, 2013 ("Final Rej.") 2-5);
II. Claims 36 and 37 as unpatentable over Parekh in view of Martin,
Zhang and further in view ofKodemura (US 7,465,773 B2 issued December
16, 2008) (Final Rej. 5) and
III. Claim 40 as unpatentable over Parekh, Martin, Zhang and further,
in view of Baran (US. 7,129,277 B2 issued October 31, 2006) (Final Rej. 6).
Appellants focus their arguments on independent claim 15 (App. Br.
11-19; Reply Brief filed June 9, 2014 ("Reply Br.") 2-8). Accordingly, we
limit our discussion to independent claim 15.
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Application 13/123,597
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
Appellants' claims is unpatentable over the applied prior art. We sustain the
Examiner's§ 103 rejections essentially for the reasons set out by the
Examiner in the Answer.
We add the following primarily for emphasis.
The Examiner found that Parekh teaches an article of manufacture
comprising an epoxy polymer made from bisphenol A wherein the polymer
is coated with a composition including matrix polymers having a plurality of
UV-blocking particles dispersed therein and is substantially free of
bisphenol A (Final Rej. 2-3). The Examiner found that Parekh neither
discloses the solubility parameter for the matrix polymer nor the coating
.,. ,. 1 1 • .. 1•f". '.1 ' composrnon compnsmg nanopan1c1es navmg a surrace momrymg agem mac
provide water-resistance (Final Rej. 3). The Examiner, however, found
Martin teaching a polymer having a solubility parameter in accordance with
claim 15 that provides a water-resistant film former and Zhang teaching
nanoparticles having a surface modification agent that imparts controlled
light (radiation) degradation and lower environmental pollution (Final Rej.
3). The Examiner concludes that it would be obvious, in view of Martin's
and Zhang's teachings, to modify Parekh's container by selecting a polymer
having the solubility parameter value recited in claim 15 (taught by Martin)
and including nanoparticles having a modified surface agent in the
polymer's coating composition (taught by Zhang) to attain a resultant
beverage container possessing a water-resistant film, and controlled light
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Appeal2014-007164
Application 13/123,597
degradation, that prevent environmental pollution (Final Rej. 3-4;
Examiner's Answer dated April 9, 2014 ("Ans.") 2-3).
Appellants' principal argument is that neither Zhang nor Martin are
analogous art and thus there is no reason to combine them with Parekh
(drawn to a food/beverage container2), because these references are not from
Appellants' field of endeavor and are not reasonably pertinent to the
particular problem which the inventor is involved (App. Br. 12).
Appellants' contend that while the claimed invention is drawn to a
beverage/food container (as is Parekh), Martin however is drawn to
providing lip gloss products/coloring in cosmetics and Zhang is drawn to
environmental effects of agricultural films (App. Br. 13-17; Reply Br. 4-8).
We are not persuaded by Appellants' arguments. In KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 406-07 (2007) the Supreme Court observed that:
In determining whether the subject matter of a ... claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
... [unpatentable] under§ 103. One of the ways in which a
patent's subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for
2 There is no dispute that Parekh is analogous art (App. Br. generally). It is
noted that the preamble of independent claim 15 recites "an article of
manufacture." Appellants in the reply brief for the first time argued that
dependent claim 17 specifically limits the article of manufacture to a "food
or beverage container" and, therefore, that the differences with Martin and
Zhang as non-analogous art to Appellants' container specified in claim 17
are "even greater" (Reply Br. 4). Although we need not reach this issue
because Appellants did not argue claim 17 separately in its appeal brief, we
note that the same reasoning stated in this decision would apply to this
claim.
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Appeal2014-007164
Application 13/123,597
which there was an obvious solution encompassed by the
patent's claims.
See also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010)
("[t]he Supreme Court's decision in KSR . .. directs us to construe the scope
of analogous art broadly," stating that "familiar items may have obvious
uses beyond their primary purposes, and a person of ordinary skill often will
be able to fit the teachings of multiple patents together like pieces of a
puzzle").
As the Examiner points out, Martin is drawn to the use of polymers in
a composition to provide a water-resistant film former (i.e., film that does
not degrade in water) (Ans. 2, 4), and Zhang suggests adding surface-
modified nanoparticles to a coating composition to control degradation by
light radiation (Ans. 2-3, 5). Appellants have not shown reversible error in
the Examiner's position that, because Parekh relates to food and beverage
,. 1 • 1 ... 1{" 1 ' • comamers wnerem pacKagmg rormea rrom p01ymers nm causmg
environmental pollution is important (Parekh, col. 17, 11. 20-23), one skilled
in the art would have been motivated to select Martin's polymer (having the
specified solubility parameter in claim 15) as the matrix polymer of the
coated polymer of Parekh's container in order to provide a suitably water-
resistant film former (e.g., Final Rej. 3; Ans. 2, 4), and to further include
Zhang's surface-modified nanoparticles in the polymer's coating
composition because "Parekh, Zhang and the present invention are all
concerned with the problem of minimizing pollution due to environmental
aspects of packaging" (Ans. 3). See, In re Bigio, 381F.3d1320, 1326 (Fed.
Cir. 2004) ([T]he scope of the field of endeavor is a factual determination
based on the scope of the application's written description and claims.) In re
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Appeal2014-007164
Application 13/123,597
Clay, 966 F .2d 656, 659 (Fed. Cir. 1992) (If a reference is not within the
relevant field of endeavor, it may still be properly considered if it is
reasonably pertinent to the problem; that is, if it would have logically
commended itself to an inventor's attention.)
Appellants have not shown error in the Examiner's de facto finding
that the relevant field of endeavor relates to environmental aspects of
packaging (Ans. 3) instead of the more narrow definition of food/beverage
containers wherein the problem is "prevent[ing] bisphenol A from leaching
from the polymer" as Appellants' propose (App. Br. 13). Notably,
Appellants' Specification and claims are not so limiting. Indeed, claim 15 is
broadly directed to "an article of manufacture." A preponderance of the
evidence supports the Examiner's findings that Parekh, Martin and Zhang
are in the same field of endeavor and/or reasonably pertinent to the problem
of selecting polymers/compositions suitable for packaging that minimize
toxicological and environmental concerns, and thus are analogous art. We
are also unpersuaded as to Appellants' arguments invoking In re Klein (e.g.,
App. Br. 12, 13), since, as pointed out by the Examiner, the facts here differ
considerably from that of Klein, e.g., all of the applied prior art in the instant
case involve articles of manufacture (e.g., Ans. 3). The Examiner has
articulated sufficient reasons why one of ordinary skill in the art would have
looked to Martin and Zhang when considering the polymer packaging of
Parekh (generally Ans.).
Turning to Appellants' argument that Zhang teaches away from the
present invention because it teaches that metal doped Ti02 nanoparticles
increase degradation of a polyethylene film (Appeal Br. 16), whether a
reference teaches away from a claimed invention is a question of fact. In re
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Appeal2014-007164
Application 13/123,597
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). As pointed out by the
Examiner, the argument is unavailing because the claims do not require any
specific degree of degradation, and furthermore, one of ordinary skill would
have appreciated that some degradation is desirable (Ans. 6). Cf,
Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) ("The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.").
Consequently, after consideration of Appellants' arguments (Appeal
Br. 11-19; Reply Br. 2-8), we are unpersuaded of error in the Examiner's
determination of obviousness. Appellants' arguments do not adequately
address the Examiner's reasoning for combining the prior art. Appellants
have not adequately explained why one skilled in the art would not have
1 • 1 1'. K ' • 1 1""71 , ' 1 • • '1 T"'lt. 1 1 ' • ' 1 • I"" 1 comomea ivianm ana Lnang s 1eacnmgs wnn rareKn w arrive m a momnea
container having the enhanced environmental-friendly packaging as stated
by the Examiner. KSR Int'! Co., 550 U.S. at 416 (2007) (The combination
of familiar elements or steps according to known methods is likely to be
obvious when it does no more than yield predictable results); Ball Aerosol
and Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993
(Fed. Cir. 2009) (Under the flexible inquiry set forth by the Supreme Court,
the PTO must take account of the "inferences and creative steps," as well as
routine steps, that an ordinary artisan would employ).
Accordingly, we affirm the Examiner's prior art rejections of claims
15-17 and 32-43 under 35 U.S.C. § 103(a) for the reasons given above and
presented by the Examiner.
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Application 13/123,597
DECISION
The Examiner's prior art rejections (Rejections I-III) are affirmed.
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)(l).
AFFIRMED
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