Ex Parte Isahaya et al

Patent Trial and Appeal Board

Mar 8, 2016

11630646 (P.T.A.B. Mar. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/630,646 0910712007
7055 7590 03/10/2016
GREENBLUM & BERNSTEIN, PLC
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Y oshinori Isahaya
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.
P47392 3153
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
03/10/2016 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):
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 YOSHINO RI I SAHA YA, EIJI KOSHISHI, HIROAKI TAN AKA,
SHU YOSHIDA, SHIROU TAGAI, HROAKI OHGI,
MASAHIRO FUJIWARA, and SHIN GO KANASAKI 1
Appeal2014-002299
Application 11/630,646
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-5, 8-11, 14--16, and 18-23. We have
jurisdiction under 35 U.S.C. § 6. An oral hearing for this appeal was held on
March 3, 2016.
We AFFIRM.
1 Mitsubishi Gas Chemical Company, Inc. is identified as the real party in
interest. App. Br. 2.
Appeal2014-002299
Application 11/630,646
Appellants claim an optical material produced by polymerizing a
composition comprising components (A}-(D), wherein component (A) is
defined as "both a compound having two mercapto groups in one molecule
and a compound having at least three mercapto groups in one molecule"
(independent claim 1 ).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. An optical material having an Abbe's number of 38 to
42 and a refractive index of 1.58 to 1.62, produced by curing by
polymerization of a polymerizable composition comprising:
(A) both a compound having two mercapto groups in one
molecule and a compound having at least three mercapto
groups in one molecule ;
(B) a NCO-terminated polyurethane prepolymer;
(C) a polyisocyanate compound other than said NCO-
terminated polyurethane prepolymer; and
(D) an episulfide compound having in its molecule at
least one structural group represented by the following formula
1:
(l)
wherein R 1 is a divalent hydrocarbon group having from
1 to 10 carbon atoms or a single bond, R2, R3 and R4 are each
independently a hydrocarbon group having from 1 to 10 carbon
atoms or hydrogen, Y is 0 or S, m is an integer of from 1 to 5,
and n is an integer of from 0 to 5, wherein said polymerizable
composition includes 5 to 25% by weight of the component A,
20 to 50% by weight of the component B, 1 to 25% by weight
of the component C, and 20 to 40% by weight of the component
D, based on 100% by weight of the total of components A to D.
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Application 11/630,646
Under 35 U.S.C. § 103(a), the Examiner rejects as unpatentable:
claims 1-5, 8-11, 14--16, 18, and 20-22 over Bojkova (US
2003/0149217 Al, pub. Aug. 7, 2003); and
claims 1-5, 8-11, 14--16, and 18-23 (i.e., all claims) over either
Amagai (US 6,130,307, pat. Oct. 10, 2000) or Yoshimura (US 6,472,495 Bl,
pat. Oct. 29, 2002) alone or each in combination with Bojkova.
Appellants present separate arguments directed to claims 1, 2, 3, 9, 16,
and 19 specifically (App. Br. 10-31 ). The remaining claims under rejection
will stand or fall with their parent claims.
We will sustain each of these rejections for the reasons given in the
Final Action, the Answer, and below.
There is no dispute that each of the applied references discloses an
optical material produced by curing a polymerizable composition
comprising compounds having mercapto groups including compounds
having two mercapto groups per molecule and compounds having at least
three mercapto groups per molecule as well as mixtures or combinations of
such compounds (Bojkova i-f 64, Amagai col. 8, 1. 52---col. 9, 1. 67,
Yoshimura col. 17, 1. 21---col. 18, 1. 28).
Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness for the proposition that these respective
disclosures would have suggested a material produced by polymerizing a
mixture comprising a compound having two mercapto groups in one
molecule in combination with a compound having at least three mercapto
groups in one molecule as required by component (A) of claim 1 (see, e.g.,
App. Br. 10-11, 24--26; cf Final Action 2--4).
Appellants' argument lacks persuasive merit. The record of this
appeal contains no meaningful explanation by Appellants why one having
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Application 11/630,646
ordinary skill in this art would not have combined the mercapto-containing
compounds respectively disclosed in Bojkova, Amagai, and Yoshimura as
expressly taught by each of these references. Such combinations would
have included the compounds required by component (A) of claim 1.
Appellants also contend that the Examiner has failed to establish a
prima facie case of obviousness for certain dependent claims by arguing
without embellishment that the respective disclosures of Bojkova, Amagai,
and Yoshimura contain no teaching or suggestion of the limitations recited
in claim 2, in claims 3 and 9, and in claim 16 (App. Br. 22-23, 27-29).
Appellants' unembellished contention is not persuasive. Regarding
the claim 2 limitation concerning the molecular weight of component (A)
compounds, we observe that the mercapto-containing compounds of the
references include a number of the compounds disclosed by Appellants (see,
e.g., Spec. i-f 16) and that Appellants have not explained why these same
compounds of the references would not necessarily possess the molecular
weight of claim 2. Similarly, Appellants do not explain why the polyol and
isocyanate disclosures of the references would not have suggested the diols
and diisocyanates of claims 3 and 9. In addition, no explanation has been
provided by Appellants as to why the 1000 to 10,000 number average
molecular weight of component (B) recited in claim 16 patentably
distinguishes this claim from the applied prior art. This lack of explanation
is particularly unacceptable with respect to i-f 62 of Bojkova which
Appellants acknowledge (App. Br. 23) and which specifically discloses a
number average molecular weight of less than 10,000 for the prepolymer
corresponding to component (B).
Appellants further argue that any prima facie case of obviousness has
been overcome by their evidence of unexpected results in the Specification
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Application 11/630,646
(Spec. 32-33) and in the 37 CPR§ 1.132 Declaration of record by Y.
Isahaya (App. Br. 12-21, 24--27).
However, we fully agree with the Examiner that Appellants' evidence
is not commensurate in scope with the above argued claims with respect to
either the claimed component species, especially component (A), or the
claimed component amounts (Ans. 8-9). We emphasize that Appellants'
evidence is limited to only 4 inventive examples having specific components
and amounts whereas claim 1, for example, is significantly broader with
respect to both the types and amounts of components (e.g., component (A)
of claim 1 encompasses 99.99% of any compound having two mercapto
groups in combination with a seemingly insignificant 0.01 % of any
compound having at least three mercapto groups). Concerning dependent
claim 19 specifically, we recognize Appellants' point that the amounts
recited in this claim are much closer in scope to the amounts used in their
inventive examples (App. Br. 30-31 ). However, claim 19 remains as broad
in scope as claim l with respect to the recited component species.
Because the argued claims on appeal are significantly broader in
scope than the evidence of unexpected results, Appellants' evidence of
nonobviousness does not outweigh the Examiner's reference evidence of
obviousness. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)
("Evidence of secondary considerations must be reasonably commensurate
with the scope of the claims.").
The Examiner additionally finds that the increased impact properties
of the inventive examples would have been expected rather than unexpected
because the higher number of reactive groups in compounds having at least
three mercapto groups per molecule would have been expected to increase
cross-linking density and therefore impact properties (Ans. 9). Appellants
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Application 11/630,646
do not dispute with any reasonable specificity the Examiner's finding that
compounds having at least three mercapto groups per molecule would have
been expected to improve cross-linking and consequently impact properties
(see, e.g., Reply Br. generally).
In summary, the arguments and evidence in the record of this appeal
weigh most heavily in favor of an obviousness conclusion.
The decision of the Examiner 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).
AFFIRMED
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