Ex Parte Hase

Patent Trial and Appeal Board

Sep 29, 2014

12515782 (P.T.A.B. Sep. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD

____________

Ex parte HIROYUKI HASE
__________

Appeal 2013-000652
Application 12/515,782
Technology Center 1700
____________

Before CHARLES F. WARREN, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1–5 and 7–10. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellant’s invention is directed to a polyacetal resin composition
which has excellent processability and stability, significantly suppresses the
amount of formaldehyde generated from a molded article thereof, and
prevents bleeding of components from the molded article (Spec. 1).

Appeal 2013-000652
Application 12/515,782

2
Claim 1 is illustrative:
1. A polyacetal resin composition comprising:
(A) 100 parts by weight of a polyacetal copolymer containing 1.0
mmol/kg or less of hemiformal terminal group, 0.5 mmol/kg or less of
formyl terminal group, and 0.5% by weight or less of unstable terminal
group;
(B) 0.01 to 3 parts by weight of a hindered phenol-based antioxidant;
(C) 0.05 to 1 part by weight of at least one compound selected from
the group consisting of guanamine compounds and triazine compounds; and
(D) 0.01 to 1 part by weight of a compound selected from the group
consisting of an isocyanate compound, an isothiocyanate compound and a
modified compound thereof.

Appellant appeals the following rejection:
Claims 1–5 and 7–10 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over Harashina et al. (EP 1 522 554 A1, published Apr. 13,
2005) in view of Sugiyama et al. (JP 06-248162 A2, published Mar. 23,
1993).

Appellant’s arguments focus on claim 1, alone (Br. 6–9). Therefore,
the rejection of dependent claims 2–5 and 7–10 will stand or fall with our
analysis of the rejection of claim 1.

ISSUE
Did the Examiner reversibly err in finding that the combined
teachings of Harashina and Sugiyama would have suggested the subject
matter of claim 1 that includes adding an isocyanate compound in an amount
from 0.01 to 1 part by weight to a polyacetal composition? We decide this
issue in the negative.

Appeal 2013-000652
Application 12/515,782

3
FINDINGS OF FACT & ANALYSIS
The Examiner finds that Harashina teaches a polyacetal composition
as recited in claim 1, except for including from 0.01 to 1 part by weight of
an isocyanate compound (Ans. 4–5). The Examiner finds that Sugiyama
teaches adding 0.03 to 5% of an isocyanate compound to a polyacetal
composition comprising an antioxidant in order to reduce the formic acid
produced (Ans. 5). The Examiner concludes that it would have been
obvious to use the isocyanate compounds in the amount disclosed by
Sugiyama in Harashina’s polyacetal composition in order to reduce the
amount of formic acid that is present in the composition (Ans. 5).
Appellant argues that one of ordinary skill would not have obviously
picked and chosen one component from Sugiyama (i.e., the isocyanate
compound) and have combined it with Harashina’s composition with the
expectation that formaldehyde emissions and component bleeding can be
reduced (Br. 8). Appellant contends that, contrary to the Examiner’s
finding, Sugiyama does not teach reducing the amount of formaldehyde, but
rather Sugiyama only teaches at paragraph 12 that formic acid is reduced at
the bleeding out of the part is eventually reduced (Br. 9).
Contrary to Appellant’s argument, the Examiner finds that one of
ordinary skill would have combined Sugiyama’s teaching to use an
isocyanate with Harashina’s polyacetal composition in order to reduce
formic acid formation (Ans. 5). Whether the art may or may not teach
reducing formaldehyde formation is not dispositive because the Examiner’s
reason for combining the references does not need to be the same as
Appellant’s reason for the combination. KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 420 (2007) (“[A]ny need or problem known in the field of
Appeal 2013-000652
Application 12/515,782

4
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.”). In this case,
the Examiner’s reason based on reducing formic acid formation provides a
sufficient reason for combining Harashina’s and Sugiyama’s teachings.
Appellant further argues that the claimed combination of elements
produces unexpected synergistic results (Br. 6–7). Appellants contend that
the combination of Harashina and Sugiyama is not tenable because
Sugiyama does not disclose or suggest that there would be synergy by the
inclusion of both an isocyanate compound with guanamine and/or triazine
(Br. 7).
Appellant’s argument is unpersuasive because obviousness, not
synergism, is the proper standard. In re Kollman, 595 F.2d 48, 55 n. 6
(CCPA 1979) (“Synergism, in and of itself, is not conclusive of
unobviousness in that synergism might be expected . . . the correct statutory
standard, i.e., nonobviousness, has been in contest throughout.”). As noted
above, we agree with the Examiner’s conclusion that the combined teachings
of Harashina and Sugiyama would have rendered obvious using an
isocyanate compound in Harashina’s polyacetal composition to reduce
formic acid formation.
Appellant further alleges unexpected synergistic results are evidenced
by the data in Table 1 on page 43 of the Specification (Br. 6–7). Appellant’s
explanation of the data is located on page 6 of the Brief.
The Examiner properly finds that the data contained in Table 1 is not
probative of nonobviousness because it is not commensurate in scope with
claim 1 (Ans. 6). Appellant’s showing is limited to a single polyacetal
compound, single hindered phenol-based antioxidant and two guanamine-
Appeal 2013-000652
Application 12/515,782

5
based compounds and a single isocyanate compound (Spec. 42–43). In
contrast, claim 1 encompasses myriad of polyacetal composition
formulations. The Examiner further finds that the data merely shows the
expected result, which is not specifically contested by Appellant (i.e., no
Reply Brief has been filed).
On this record, we affirm the Examiner’s § 103 rejection.

DECISION
The Examiner’s decision is 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).

ORDER
AFFIRMED

cdc