Ex Parte Hino et alDownload PDFPatent Trials and Appeals BoardJun 14, 201914399705 - (D) (P.T.A.B. Jun. 14, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/399,705 11/07/2014 7055 7590 06/18/2019 GREENBLUM & BERNSTEIN, P.L.C. 1950 ROLAND CLARKE PLACE RESTON, VA 20191 FIRST NAMED INVENTOR Kosei Hino 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. P46241 7736 EXAMINER WEYDEMEYER, ETHAN ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 06/18/2019 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 KOSEI HINO, TAKE SHI ONISHI, OSAMU KAKINOKI, HIDETAKA SHIMUZU, HIROHIKO AIKA WA, and TOSHINARI AOKI Appeal2018-006695 Application 14/399,705 Technology Center 1700 Before JEFFREY T. SMITH, RAEL YNN P. GUEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's May 5, 2017 decision finally rejecting claims 1 and 3-11 ("Final Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We reverse. 1 Appellants are the Applicants Mitsubishi Gas Chemical Company, Inc. and MGC Filsheet Co., Ltd., whom are also identified as the real parties in interest (Appeal Br. 3). Appeal2018-006695 Application 14/399,705 CLAIMED SUBJECT MATTER Appellants' disclosure is directed to a synthetic resin laminate which is said to have excellent shape stability in high-temperature, high-humidity environments and also is said to exhibit good surface hardness and be usable for a transparent substrate material or protection material (Abstract). The synthetic resin laminate includes a substrate layer containing a polycarbonate (B); and a resin layer laminated on one or both surfaces of the substrate layer (id.). The resin layer contains a resin (A) that contains a (meth)acrylate copolymer (al) and a polycarbonate (a2) (id.). Details of the claimed invention are set forth in claim 1, which is reproduced below from the Claims Appendix of the Appeal Brief: 1. A synthetic resin laminate, which is obtained by laminating a resin layer containing a resin (A) that contains a (meth)acrylate copolymer (al) and a polycarbonate (a2) on one surface or both surfaces of a substrate layer containing a polycarbonate (B), wherein the (meth)acrylate copolymer (al) is a (meth)acrylate copolymer composed of 5 to 80% by mass of an aromatic (meth)acrylate unit (al I) and 20 to 95% by mass of a methyl methacrylate unit (a12), the ratio of the (meth)acrylate copolymer (al) with respect to the resin (A) is 5 to 55% by mass, and the ratio of the polycarbonate (a2) with respect to the resin (A) is 95 to 45% by mass and the polycarbonate (a2) is a polycarbonate homopolymer or copolymer consisting of 20 to 100% by mass of a constituent unit represented by the following formula [2]: CJ ------- ~;:] 2 Appeal2018-006695 Application 14/399,705 and 80 to 0% by mass of a constituent unit represented by the following formula [3]: () ... REJECTION Claims 1 and 3-11 are rejected under 35 U.S.C. § I03(a) as unpatentable over Kwon2 in view of Suzuki3 and Ogawa. 4 DISCUSSION Appellants' do not off er separate arguments in support of dependent claims 3-11 (Appeal Br. 13). Accordingly, we limit our discussion to the rejection of claim 1. Claims 3-11 will stand or fall with claim 1. The Examiner finds that Kwon discloses a polycarbonate resin composition comprising 80 wt.% of an aromatic polycarbonate and 20 wt. % of an acrylic resin, where the acrylic resin consists of 50 wt. % aromatic methacrylate and 50 wt. % methyl methacrylate (Final Act. 2, citing Kwon ,r,r 64, 68, 69; Table 1: Example 4). The Examiner also finds that Kwon 2 Kwon et al., US 2010/0152357 Al, published June 17, 2010. 3 Suzuki et al., JP 2000-081758, published March 21, 2000 (translation of record). 4 Ogawa et al., US 2009/0263663 Al, published October 22, 2009. 3 Appeal2018-006695 Application 14/399,705 discloses that the polycarbonate may be a copolymer ofbisphenol A and 2,2- bis(3,5-dimethyl-4-hydroxyphenyl)propane (id.). 5 The Examiner finds that Kwon does not disclose the claimed proportions of the polycarbonate (a2) components having formulae [2] and [3] (Final Act. 3). The Examiner finds that Suzuki teaches an electric discharge layer comprising a polycarbonate homopolymer of formula [2] of claim 1, as well as an electric discharge layer comprising copolymers of formulae [2] and [3] of claim 1 in a 1: 1 ratio (Final Act. 3, citing Suzuki ,r,r 46-48, 54, 192, 200, Table 5). The Examiner also finds that Suzuki teaches that the disclosed polycarbonates are mixed with a methacrylate polymer having both aromatic and methyl methacrylate groups (Final Act. 3, citing Suzuki ,r,r 57, 58). The Examiner further finds that Kwon teaches that its laminate may be used in the manufacture of an electronic component (Final Act., citing Kwon, ,r 14 ), and that Kwon and Suzuki are, therefore, analogous art because they relate to electronic components comprising polycarbonates (id.). The Examiner determines that it would have been obvious to select the proportions of Suzuki for the amounts of components of formulae [2] and [3] in Kwon in order to increase the charging efficiency (Final Act. 3--4, citing Suzuki Table 5). Ogawa is relied on by the Examiner for teaching 5 The Examiner finds that Kwon actually describes the use of 2,2-bis(3,5- dimethyl-4-hydroxy4!Phenyl)propane and not 2,2-bis(3,5-dimethyl-4- hydroxyphenyl)propane, but that is plainly an error and that a person of skill in the art would have understood Kwon to mean 2,2-bis(3,5-dimethyl-4- hydroxyphenyl)propane (Final Act. 2). Appellants do not challenge this finding. 4 Appeal2018-006695 Application 14/399,705 lamination of the resin onto a substrate comprising polycarbonate (Final Act. 4). Appellants make three principal arguments urging reversal of the rejection of claim 1: (1) a person of ordinary skill in the art would not have combined the teachings of Kwon and Suzuki; (2) a person of skill in the art would not have had a reasonable expectation of success in combining the teachings of Kwon, and Suzuki; and (3) the combination of Kwon and Suzuki does not teach the claimed invention (Appeal Br. 8). With regards to argument ( 1 ), Appellants contend that one of skill in the art practicing Kwon' s invention would have had no reason to use the components and composition disclosed by Suzuki (Appeal Br. 9). Appellants argue that the reason to combine provided by the Examiner (that Suzuki teaches that the composition at issue increases charging efficiency) is inadequate because Kwon is directed to polycarbonate compositions with improved mechanical and optical properties and is unconcerned with electrical properties such as charging efficiency (Appeal Br. 9-10). This argument is persuasive. Although, as noted by the Examiner, Kwon states in ,r 14 that its composition can be used in the manufacture of electronic components, it is apparent that the use of that composition in electronic components is as a glass substitute (i.e. as a screen) (Kwon, ,r 3), and not in an application which would require charging. Thus, even though Kwon states that its resins can be used "in the manufacture of electronic components," the preponderance of the evidence of record supports 5 Appeal2018-006695 Application 14/399,705 Appellants' position that the glass substitute application taught by Kwon does not require or consider the charging efficiency. Rejections on obviousness grounds must be supported by "some articulated reasoning with some rational underpinning" to combine the known elements in the manner required in the claim at issue. KSR Int 'l. Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). For the reasons set forth above, we determine that Kwon and Suzuki are not properly combined in the rejection, as the Examiner has not set forth an adequate reason why a person of skill in the art would have made the required combination. Therefore, we reverse the rejection. With respect to argument (3), we note that Appellants argue that "Suzuki fails to teach an aromatic (meth)acrylate as claimed." According to Appellants, the term "aromatic meth( acrylate)" as used in claim 1, means a meth( acrylate) containing an aromatic group in an ester moiety thereof," while the compounds disclosed by Suzuki which correspond to the claimed aromatic methacrylate do not have the aromatic group in an ester moiety (Appeal Br. 12, citing Spec. ,r 15). We agree with Appellants that the broadest reasonable interpretation in light of the Specification of the term "aromatic ( meth )acrylate" is a meth( acrylate) containing an aromatic group in an ester moiety thereof. 6 Appeal2018-006695 Application 14/399,705 CONCLUSION We determine that the preponderance of the evidence of record does not support the rejection on appeal. We REVERSE the rejection of claims 1 and 3-11 under 35 U.S.C. § 103(a) as unpatentable over Kwon in view of Suzuki and Ogawa. REVERSED 7 Copy with citationCopy as parenthetical citation