Ex Parte HASHIMOTO

Patent Trials and Appeals Board

May 1, 2019

15022475 - (D) (P.T.A.B. May. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/022,475 03/16/2016
7055 7590 05/03/2019
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Hiraki HASHIMOTO
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.
P51983 6990
EXAMINER
JOHNSTON, BRIEANN R
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
05/03/2019 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROKI HASHIMOTO
Appeal 2018-005819
Application 15/022,475
Technology Center 1700
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
JANEE. INGLESE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 3-5 and 10-12 under 35 U.S.C. § 103
1 In explaining our Decision, we cite to the Specification of March 16, 2016
(Spec.), Final Office Action of July 12, 2017 (Final), Appeal Brief of
December 18, 2017 (Appeal Br.), Examiner's Answer of March 22, 2018
(Ans.), and Reply Brief of May 17, 2018 (Reply Br.).
2 Nippon Soda Co., Ltd. is the applicant under 37 C.F.R. § 1.46, and is
identified as the real party in interest. Appeal Br. 3.
Appeal 2018-005819
Application 15/022,475
as obvious over Fuj imoto3 in view of Ciba. 4 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a photocurable composition. Claim 3 is
illustrative:
3. A photocurable composition comprising:
(A) 5 to 40% by weight of a terminal-modified
polybutadiene or a terminal-modified hydrogenated
polybutadiene represented by formula [I]:
wherein R 1 represents a hydrogen atom or a methyl
group, R2 and R3 each independently represents a Cl-ClO linear
or branched alkylene group, a C3-C8 cycloalkylene group
optionally substituted with a C l-C6 alkyl group, or a
combination of the groups thereof, A represents a polymer
chain obtained by polymerizing butadiene, or a polymer chain
obtained by hydrogenating the polymer chain thereof, and m
represents 1 or 2, and
wherein the terminal-modified polybutadiene or the
terminal-modified hydrogenated polybutadiene represented by
formula [I] has a number average molecular weight of from
1,000 to 100,000, measured by GPC using polystyrene as a
standard,
3 JP 2003-73429 A, published Mar, 12, 2003 (as translated).
4 Irgacure® 127, Ciba Specialty Chemicals (2004).
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Application 15/022,475
(B) 95 to 60% by weight of a (meth)acrylic acid ester
monomer, and
(C) 0.1 to 20 parts by weight, with respect to 100 parts by
weight in total of said terminal-modified polybutadiene or a
terminal-modified hydrogenated polybutadiene and said
(meth)acrylic acid ester monomer, of a photo-radical
polymerization initiator represented by formula [IV]:
wherein X represents any one selected from the group
consisting of 0, CH2, CH(CH3), and C(CH3)2, and R4 and R5
each independently represents a hydrogen atom, a methyl
group, or a trimethylsilyl group.
Appeal Br. 15-16 ( claims appendix).
OPINION
Appellant does not argue any claim apart from the others. Appeal
Br. 9-14. We select claim 3 as representative for resolving the issues on
appeal.
The Examiner has established a strong prima facie case of
obviousness and after considering the totality of the evidence including the
showing of unexpected results, we determine that Appellant has not
identified a reversible error in the Examiner's ultimate conclusion of
obviousness.
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Application 15/022,475
Appellant and the Examiner agree that Fujimoto5 discloses a
photocurable composition comprising components (A) and (B) of claim 3.
Compare Final 3, with Appeal Br. 10. Fujimoto discloses adding a photo-
radical polymerization initiator (C), but does not disclose using the formula
[IV] initiators of Appellant's claim 3. Fujimoto ,i,i 21-22.
As found by the Examiner, Fujimoto uses Irgacure® 184 as the
initiator in working example 1. Compare Final 3, with Appeal Br. 1 O;
Fujimoto ,i 33. Further, as found by the Examiner, Ciba teaches Irgacure®
127 as superior to Irgacure® 184 as an initiator for preparing clear coatings.
Final 4; Ciba 1.
Based on the above facts, the Examiner found a reason to substitute
Irgacure® 127 for Irgacure® 184 in Fujimoto's working example 1 as Ciba
specifically teaches that Irgacure® 127 is superior to Irgacure® 184. Final 4.
This express disclosure of substituting Irgacure® 127 for Irgacure® 184
establishes a strong basis to conclude that using Irgacure® 127 as the
initiator in Fujimoto's example 1 composition would have been obvious to
one of ordinary skill in the art.
In the Appeal Brief, Appellant focuses mostly on the unexpected
properties they contend are shown in Tables 9-11 of the Specification.
Appeal Br. 9-13. However, in the Reply Brief, they argue against the prima
facie case of obviousness. Reply Br. 1-5. To the extent that the Appeal
Brief contained an argument against the Examiner's prima facie case of
obviousness, the Appeal Brief did not develop the argument against the
prima facie case in a way to give notice to the Examiner of the basis for the
5 Appellant and the Examiner refer to Fujimoto as JP '429.
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Application 15/022,475
argument and, thus, the Examiner did not have an opportunity to respond.
Thus, we will not address the specific arguments against the prima facie case
of obviousness made in the Reply Brief except to say that the prima facie
case here is exceptionally strong. Ciba expressly states reasons for using
Irgacure® 127 in place of Irgacure® 184 to initiate the photopolymerization
of reactive polymers containing acrylates in combination with mono- or
multi-functional monomers. Ciba 1. "The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). Here, the predictable result is the reasonable expectation that
Irgacure® 127 will act as a photoinitiator when used with components (A)
and (B) of Fujimoto.
Turning to Appellant's showing of unexpected results, we agree with
the Examiner's well-explained response that Appellant has not adequately
supported the showing. Ans. 5-12.
Most importantly, the Examiner found the showing was not
commensurate in scope with the claims. The Examiner found that
Appellant's showing reported results for only a limited number of species
within the scope of claim 3. Ans. 6. Appellant does not dispute that finding.
Reply Br. 8-9. Instead, Appellant contends the Examiner did not establish a
prima facie case of obviousness. Appellant's argument is not persuasive
because, as we pointed out above, the Examiner had established a prima
facie case of obviousness. Thus, the burden was shifted to Appellant to
show unexpected results. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir.
1984). "Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for 'it is the view of this court that
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Application 15/022,475
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support."' In re Greenfield, 571
F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792,
(CCPA 1971)). In this circumstance, Appellant must either show results
showing that the full scope of the compositions of the claim have the
unexpected properties or Appellant must narrow the claims. See, e.g., In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the
results were unexpected, Harris needed to show results covering the scope of
the claimed range. Alternatively Harris needed to narrow the claims.").
The Examiner fully explains why the data in Tables 9-11 of the
Specification is insufficient to show unexpected results. Ans. 6-12.
Appellant does not advance a persuasive argument against those findings.
Reply Br. 7-8. The evidence supports the Examiner's analysis and we adopt
it as our own.
Further, Appellant has not established that the results reported in the
Specification were unexpected. In meeting the burden of establishing
unexpected results, "it is not enough to show that results are obtained which
differ from those obtained in the prior art: that difference must be shown to
be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972) ( citation omitted). Although the Specification reports differences in
yellowing resistance and tensile strength for various products (Tables 3-6,
9-11 ), the Specification does not state that the results obtained were
unexpected for any of the products much less for those containing Irgacure®
127 as compared to Irgacure® 184. Appellant states in the Appeal Brief that
the inventor found the results to be unexpected, but the arguments of counsel
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cannot take the place of evidence. In re Geisler, 116 F.3d 1465, 1471 (Fed.
Cir. 1997).
CONCLUSION
We sustain the Examiner's rejection of claims 3-5 and 10-12 under
35 U.S.C. § 103 as obvious over Fujimoto in view of Ciba.
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 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
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