Ex Parte Iwamoto et al

Patent Trial and Appeal Board

Feb 3, 2017

13976547 (P.T.A.B. Feb. 3, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/976,547 06/27/2013 Tatsuya Iwamoto MIY-0373 5354
74384 7590
Cheng Law Group, PLLC
1133 13th St. N.W.
Suite C2
Washington, DC 20005
EXAMINER
JACKSON, MONIQUE R
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
02/03/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TATSUYAIWAMOTO, RYOUSUKE KOMATSU,
KOHEI KANI, and SHOGO YOSHIDA
Appeal 2015-008194
Application 13/976,547
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—9, 12, and 15. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appeal 2015-008194
Application 13/976,547
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. An interlayer film for a laminated glass, comprising
a first layer,
a second layer laminated on one face of the first layer,
a third layer laminated on the other face of the first layer,
wherein the first layer contains a polyvinyl acetal resin,
contains a carboxylic acid-modified polyvinyl acetal resin, or
contains both a polyvinyl acetal resin and a carboxylic acid-
modified polyvinyl acetal resin,
the first layer contains a plasticizer,
the second layer contains a polyvinyl acetal resin,
contains a carboxylic acid-modified polyvinyl acetal resin, or
contains both a polyvinyl acetal resin and a carboxylic acid-
modified polyvinyl acetal resin,
the second layer contains a plasticizer,
the third layer contains a polyvinyl acetal resin, contains
a carboxylic acid-modified polyvinyl acetal resin, or contains
both a polyvinyl acetal resin and a carboxylic acid-modified
polyvinyl acetal resin, and
the third layer contains a plasticizer,
the amount of the plasticizer for each 100 parts by weight
of the polyvinyl acetal resin in the first layer, the amount of the
plasticizer for each 100 parts by weight of the carboxylic acid-
modified polyvinyl acetal resin in the first layer, or the amount
of the plasticizer for a total 100 parts by weight of the polyvinyl
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acetal resin and the carboxylic acid-modified polyvinyl acetal
resin in the first layer is 55 parts by weight or more,
the amount of the plasticizer for each 100 parts by weight
of the polyvinyl acetal resin in the first layer, the amount of the
plasticizer for each 100 parts by weight of the carboxylic acid-
modified polyvinyl acetal resin in the first layer, or the amount
of the plasticizer for a total 100 parts by weight of the
polyvinyl acetal resin and the carboxylic acid-modified
polyvinyl acetal resin in the first layer is respectively larger
than each amount of the plasticizer for each 100 parts by weight
of the polyvinyl acetal resin in the second layer and the third
layer, each amount of the plasticizer for each 100 parts by
weight of the carboxylic acid-modified polyvinyl acetal resin in
the second layer and the third layer, or each amount of the
plasticizer for a total 100 parts by weight of the polyvinyl acetal
resin and the carboxylic acid-modified polyvinyl acetal resin in
the second layer and the third layer, and
when the first layer does not contain the carboxylic acid-
modified polyvinyl acetal resin, the first layer contains a
compound having a boron atom.
Appellants request review of the following rejections from the
Examiner’s Final Action (App. Br. 4):
I. Claims 1—3, 5—9, 12, and 15 rejected under 35 U.S.C. § 103(a)
as unpatentable over Burk et al. (US 2,526,728, issued October 24, 1950)
(“Burk”) and Mont et al. (US 4,027,069, issued May 31, 1977) (“Mont”).
II. Claims 1, 4—9, 12, and 15 rejected under 35 U.S.C. § 103(a) as
unpatentable over Burk, Asanuma et al. (US 2010/0143720 Al, published
June 10, 2010) (“Asanuma”), and Papenfuhs et al. (US 7,312,275 B2, issued
December 25, 2007) (“Papenfuhs”).
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OPINION
Prior Art Rejections1
Rejection I
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM for the reasons presented by the Examiner. We
add the following for emphasis.
This rejection addresses the embodiment of claim 1 where the first
layer contains a polyvinyl acetal resin, a compound having a boron atom,
and a plasticizer in the amount of 55 parts by weight or more for each 100
parts of polyvinyl acetal.
We refer to the Examiner’s Final Action for a statement of the
rejection. Final Act. 2-4.
Appellants argue there is no clear motivation for one skilled in the art
to use the compound having a boron atom disclosed by Mont in the
polyvinyl butyral (PVB) interlayer of Burk. App. Br. 8—9. According to
Appellants, Mont discloses some boron atom-containing buffer components
in PVB interlayers but the Examiner does not provide a reason for one
skilled in the art to specifically use one of the boron atom-containing buffer
components of Mont in the interlayer of Burk. Id. at 9.
We are unpersuaded by these arguments for the reasons presented by
the Examiner. Ans. 6. The Examiner found Burk teaches an interlayer that
differs from the claimed invention in that Burk does not teach the addition of
1 Appellants present arguments addressing independent claim 1 for both
Rejections I and II. See Appeal Brief, generally. Accordingly, we select
claim 1 as representative of the subject matter before us on appeal for these
rejections. Claims 2—9, 12, and 15, as respectively rejected, stand or fall
with representative claim 1.
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a compound having a boron atom to the central layer of the interlayer. Final
Act. 2—3; Burk Figure 3, cols. 2—3, 10. The Examiner found Mont teaches
as known to add a borate buffering agent to a PVB interlayer sheet
comprising plasticizer for the purpose of stabilizing the sheet against
viscosity degradation resulting from aging or exposure to elevated
temperatures. Final Act. 3; Mont col. 1,1. 62—col. 2,1. 64, col. 3,11. 35—39,
col. 4,11. 1—13. The Examiner determined it would have been obvious to
one having ordinary skill in the art to incorporate a borate buffering
component into the interlayer of Burk for the reasons taught by Mont. Final
Act. 3.
The Examiner has provided a reasonable basis to combine the
teachings of the cited art and arrive to the claimed invention. While
Appellants argue that there is no guidance for selecting the borate buffer
components from the several buffer components listed by Mont (App. Br. 9),
one skilled in the art would have expected all of Mont’s buffer components
would have resulted in stabilizing the interlayer sheet against viscosity
degradation resulting from aging or exposure to elevated temperatures.
Given that both Burk and Mont are directed to PVB interlayers (Burk col. 2,
11. 9-12; Mont col. 2,11. 57—59), Appellants have not adequately explained
why the borate buffer components of Mont would not be suitable for use in
the PVB interlayer of Burk. Appellants have not adequately explained why
one skilled in the art would not have been capable of incorporating Mont’s
borate buffer components into the interlayer of Burk with a reasonable
expectation that they would result in the benefits disclosed by Mont. See In
re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part
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of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA
1969).
Appellants argue Examples 1—57 and Comparative Examples 1—6 in
the Specification demonstrate the inclusion of a compound having a boron
atom in the first layer results in unexpected and superior results in the
suppression of bubble formation and bubble growth as well as improving
sound insulation. Spec. 78—84; App. Br. 9-11; Reply Br. 3^4.
We find this evidence unavailing for the reasons presented by the
Examiner. Ans. 8—10. Moreover, Appellants rely on Examples (such as
Examples 18—20) to demonstrate unexpected results that are not
representative of the claimed invention because the amount of plasticizer in
the first layer is less than the claimed amount of 55 parts by weight or more
for each 100 parts of polyvinyl acetal. Spec. 80; App. Br. 12. Further, the
Examples that do fall within the claimed amount of plasticizer only test
sample amounts of 55, 60, and 70 parts for each 100 parts of polyvinyl
acetal. Spec. 78—84. Appellants have not adequately explained why these
limited sample amounts of plasticizer are representative of the entire scope
of the range of the amounts of plasticizer encompassed by the claims.
Appellants must establish that the showing relied upon actually
demonstrates unexpected results, In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); Freeman, 474 F.2d 1318, 1324; Klosak, 455 F.2d 1077, 1080, and
is reasonably commensurate in scope with the degree of protection sought by
a claim, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens,
622 F.2d 1029, 1035 (CCPA 1980). On this record, Appellants have not
adequately shown, much less explained, why the evidence relied upon would
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have been unexpected by one of ordinary skill in the art or is reasonably
commensurate in the scope with the claims.
Accordingly we affirm the Examiner’s rejection of claims 1—3, 5—9,
12, and 15 under 35 U.S.C. § 103 (a) for the reasons presented by the
Examiner and given above.
Rejection II
We also AFFIRM this rejection for the reasons presented by the
Examiner. We add the following for emphasis.
This rejection addresses the embodiment of claim 1 where the first
layer contains either a carboxylic acid-modified polyvinyl acetal resin or a
polyvinyl acetal resin and a carboxylic acid-modified polyvinyl acetal resin,
as well as plasticizer in the amount of 55 parts by weight or more for each
100 parts of polyvinyl acetal.
We refer to the Examiner’s Final Action for a statement of the
rejection. Final Act. 4—5.
Appellants acknowledge “each of Asanuma et al. and Papenfuhs et al.
merely discloses that a carboxylic acid-modified polyvinyl acetal resin is
sometimes used in an interlayer film.” App. Br. 9—10; Final Act. 4—5;
Asanuma Abstract, || 2, 29, 30, 35, 36, 80, 106, 354; Papenfuhs Abstract,
col. 2,11. 10—20. Appellants have not refuted the Examiner’s determination
that it would have been obvious to one of ordinary skill in the art to modify
the polyvinyl acetal resin(s) taught by Burk with a carboxylic acid, as taught
by Asanuma or Papenfuhs. Final Act. 5. Instead, Appellants’ arguments for
this rejection are premised on the superior effects achieved by the claimed
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invention as allegedly demonstrated by Examples 1—57 and Comparative
Examples 1—6 of the Specification. App. Br. 9—10; Spec. 78—84.
We are unpersuaded by the showing in the Specification for the
reasons presented by the Examiner. Ans. 7—10. Moreover, of the Examples
relied upon by Appellants for evidence of superior results, only Example 4
involves a carboxylic acid-modified polyvinyl acetal resin. Spec. 67—68, 78.
Appellants have not adequately explained why this single Example 4 is
representative of the entire scope of carboxylic acid-modified polyvinyl
acetal resins claimed.
Thus, on this record, Appellants have not adequately shown, much
less explained, why the evidence relied upon would have been unexpected
by one of ordinary skill in the art or is reasonably commensurate in the
scope with the claims.
Accordingly we affirm the Examiner’s rejection of claims 1, 4—9, 12,
and 15 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner
and given above.
ORDER
The Examiner’s rejections of claims 1—9, 12, and 15 under 35 U.S.C.
§ 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
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AFFIRMED
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