Ex Parte Imanishi et al

Patent Trials and Appeals Board

May 30, 2019

14436242 - (D) (P.T.A.B. May. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/436,242 04/16/2015
23474 7590 06/03/2019
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
FIRST NAMED INVENTOR
Shinichiro Imanishi
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.
3400.Pl484US 1012
EXAMINER
QIAN, YUN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
06/03/2019 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):
DOCKET@FL YNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINICHIRO IMANISHI, Y ASUO OKUMURA,
and KAZUNOBU YANAI
Appeal2018-007717
Application 14/436,242
Technology Center 1700
Before LINDA M. GAUDETTE, JEFFREY R. SNAY, and
DEBRA L. DENNETT, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Substitute
Specification filed Oct. 27, 2016 ("Spec."); Final Office Action dated Nov.
15, 2017 ("Final"); Advisory Action dated Mar. 2, 2018 ("Advisory Act.");
Appeal Brief filed Apr. 20, 2018 ("Br."); and Examiner's Answer dated May
23, 2018 ("Ans.").
Appeal2018-007717
Application 14/436,242
The Appellants2 appeal under 35 U.S.C. § I34(a) from the Examiner's
decision finally rejecting claims 6, 7, and 15 under 35 U.S.C. § I03(a) as
unpatentable over Mori 3 in view of Yoshino. 4,5
We REVERSE.
The invention is directed to a cellulose ester composition having a
high thermoplasticity. Spec. ,r 4. Claim 15, the sole independent claim on
appeal, is reproduced below.
15. A cellulose ester composition comprising: (A) a cellulose
ester and (B) a plasticizer,
wherein the plasticizer contains the adipic acid ester of
the following formula (I), a mixture of the adipic acid esters of
formulae (I) and (II) or a mixture of the adipic acid esters of
formulae (I), (II) and (III),
2 The Appellants are the Applicants, Daicel Polymer Ltd. and Daihachi
Chemical Industry Co., also identified as the real parties in interest. Br. 1.
3 Mori et al. (JP 2007-077300 A, pub. Mar. 29, 2007), English Abstract.
4 Yoshino et al. (JP 2011-153296 A, pub. Aug.I 1, 2011), Machine
translation.
5 We have jurisdiction under 35 U.S.C. § 6(b).
2
Appeal2018-007717
Application 14/436,242
{1)
{Illj
[Images of formulae (I), (II), and (III) are shown above.]
Br., Claims Appendix.
The Appellants do not dispute the Examiner's findings that Mori
discloses a cellulose ester composition comprising cellulose acetate and a
plasticizer, and that Yoshino discloses a fire-retardant biodegradable
cellulose resin composition comprising a plasticizer that corresponds to
claim 15's formula (I). Br. 2-5; see Final 3. The Appellants argue, however,
that the Examiner reversibly erred in finding one of ordinary skill in the art
would have used Yoshino' s plasticizer having claim 15 's formula (I) as the
plasticizer in Mori's composition. Br. 4.
The Examiner found that the ordinary artisan would have utilized
Yoshino' s plasticizer in Mori' s composition based on Yoshino' s disclosure
that a plasticizer having claim 15 's formula (I) reduces crystallinity of
cellulose and improves shock resistance and flexibility. Final 3--4. The
Appellants contend Yoshino discloses a poly lactic resin composition, while
Mori is directed to a cellulose ester composition. Br. 5. The Appellants argue
the cellulose in Yoshino' s composition functions as a biodegradable
reinforcing member and is not equivalent to the cellulose acetate used in
3
Appeal2018-007717
Application 14/436,242
Mori's composition. Id. at 4. The Appellants thus contend the Examiner's
reasons for modifying Mori' s composition to include Yoshino' s plasticizer
are based on impermissible hindsight. Id. at 5.
The Appellants' argument is persuasive. The Examiner found
Yoshino' s composition would contain cellulose acetate because it is a
decomposition product of cellulose. Advisory Act., 1st continuation sheet.
However, Yoshino clearly discloses that the purpose of the plasticizer
having claim 15 's formula (I) is to reduce crystallinity and improve
flexibility and shock resistance of the cellulose in a composition used to
make a biodegradable resin molded body. See Yoshino ,r 128. The Examiner
has not identified support for a finding that Yoshino' s plasticizer reasonably
would be expected to provide these benefits to the decomposition products
of cellulose, e.g., cellulose acetate. Moreover, the Examiner has not
explained why the benefits achieved in Yoshino' s composition by including
a plasticizer having claim 15' s formula (I), would be desirable in Mori' s
composition. Compare Yoshino Abstract ("PROBLEM TO BE SOLVED:
To provide a biodegradable resin composition having both of strength and
flexibility, and further having excellent impact resistance and flame
retardancy, and to provide a biodegradable resin molded article obtained by
molding the composition."), with Mori Abstract ("PROBLEM TO BE
SOLVED: To provide a plasticizer for a cellulose acetate resin having good
compatibility with the resin and excellent plasticizing efficiency.").
In sum, because the Appellants have identified reversible error in the
Examiner's obviousness determination as to claim 15, we do not sustain the
rejection as to claim 15 or its dependent claims 6 and 7.
4
Appeal2018-007717
Application 14/436,242
REVERSED
5