Ex Parte Katano

Patent Trial and Appeal Board

Oct 8, 2014

12804094 (P.T.A.B. Oct. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIROTOMO KATANO
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Appeal 2013-000758
Application 12/804,0941
Technology Center 1700
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Before SALLY G. LANE, DEBORAH KATZ, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.

MCMILLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1–9. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellant, the real party in interest is Daicel Polymer, Ltd.
(Br. 1).

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REJECTIONS ON APPEAL
Claims 1, 2, and 6–9 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over U.S. Patent Application Publication No. 2002/0137822
A1 to Seidel et al., published Sept. 26, 2002 (“Seidel”). Ans. 5.
Claims 3–5 were rejected under 35 U.S.C. § 103(a) Seidel in view of
U.S. Patent Application Publication No. 2005/0054763 A1 to Kobayashi et
al., published Mar. 10, 2005 (“Kobayashi”). Ans. 6.

DISCUSSION
The Claimed Invention
Claim 1 is the sole independent claim and is directed to a flame-
retardant resin composition. Dependent claims 2 and 6–9 further define the
composition of claim 1. Dependent claims 3–5 are directed to a structural
part of an optical drive composed of the resin composition of claim 1. Claim
1, modified by adding indentations to separate elements of the claim
composition (see 37 C.F.R. § 1.75(i)), is set forth below.
1. A flame-retardant resin composition, comprising:
100 parts by mass of (A) resin component comprising
60 to 90 percent by mass of (A-1) polycarbonate
resin and
40 to 10 percent by mass of (A-2) polyethylene
terephthalate,
5 to 15 parts by mass of (B) a phosphoric ester having
formula (I),
based on 100 parts by mass of (A),
0.01 to 0.5 part by mass of (C) an organic phosphoric ester,
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provided that the phosphoric ester having formula
(I) is excluded,

based on 100 parts by mass of (A), and

15 to 60 parts by mass in total of (D) comprising
(D-1) glass fiber and
D-2) a scaly inorganic filler
based on 100 parts by mass of (A),
a mass ratio of (D-1) component to (D-2)
component of (D) component, (D-1)/(D-2), being
within the range of 0.2 to 1.5:

in which X is a divalent aromatic group and R1, R2, R3, and R4
is a substituted or non-substituted phenyl.

Claims 1, 2, and 6–9
Claims 1, 2 and 6–9 were rejected because the Examiner found that
Seidel discloses using all the claimed components (albeit at levels or ranges
different than those set forth in the claims) and, therefore, concluded that the
claims were unpatentable as obvious. Office Action dated 2/28/2012 at 3–4.
In response to this rejection, Appellant argues that claims 1, 2, and 6–9, the
resin composition claims, are patentable over Seidel because: (1) “[t]here is
no specific disclosure” that the resin component comprises 60 to 90 percent
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of a polycarbonate resin and 40 to 10 percent of polyethylene terephthalate;
(2) in all of the examples a styrene/acrylonitrile copolymer is used instead of
a copolymer of polyethylene terephthalate and (3) there is only the broad
disclosure that polyethylene terephthalate may be used in addition to the
polycarbonate in the resin composition. Br. 3–4. These three arguments are
all related to the contention that Seidel does not teach or suggest the use of
polyethylene terephthalate adequately to render obvious the claimed
invention. These arguments are not well-taken.
With regard to Appellant’s first argument, the Final Office Action
said: “Seidel discloses using 5 to 95 parts by weight of polycarbonate as
well as 0 to 50 parts by weight of polyalkylene terephthalates of which [sic]
can be polyethylene terephthalate” and cited to claim 17 and paragraph 0095
of Seidel. Office Action dated 2/28/2012 at 6. This issue was addressed in
the Examiner’s Answer, which said: “It should be noted that the Examiner
has clearly identified this disclosure regarding the overlapping ranges in
both the Non-Final Office Action dated 10/04/2011 and the Final Office
Action dated 02/28/2012. Moreover, the Appellant has not addressed these
values nor commented on their presence in the prior art reference.” Ans. 8.
We agree with the Examiner’s unchallenged finding that, although Seidel
does disclose different ranges for the polycarbonate resin and polyethylene
terephthalate components of the resin composition, the ranges in Seidel
substantially overlap with the claimed ranges.
With regard to Appellant’s second argument, the examples in Seidel
do not detract from or limit the scope of the teachings or suggestions of this
reference, especially as they relate to the use of polyethylene terephthalate.
The fact that Seidel’s examples do not include the use of polyethylene
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terephthalate does not establish what Seidel, taken as a whole, teaches or
suggests regarding the use of polyethylene terephthalate. Seidel is otherwise
replete with teachings and suggestions relating to the use of polyethylene
terephthalate. See, for example, page 5 of Seidel which is almost entirely
directed to the use of polyethylene terephthalate.
We also reject Appellant’s third argument. Although the disclosed
range for use of polyethylene terephthalate includes “an amount of 0” (see,
e.g., element C of claim 17 of Seidel at 11) and this does suggest that
polyethylene terephthalate is an optional ingredient, the range disclosed for
the use of polyethylene terephthalate in Seidel is 0 to 50 parts by weight
(claim 17 and ¶ 95). The disclosure of this range fully supports the
Examiner’s finding that Seidel teaches or suggests the use of polyethylene
terephthalate. We agree with the Examiner that Seidel teaches or suggests
the use of polyethylene terephthalate as set forth in claims 1, 2, and 6–9.
Finally, with regard to claims 1, 2 and 6–9, the Appellant argues that,
assuming arguendo that the Examiner has established prima facie
obviousness based on Seidel, the objective test data in Table 1 of the
Application (Specification at 11) show unexpected results and establish
patentability. Br. 4–5. But, the only data referred to as unexpected are the
“inferior mechanical properties or flame retardancy” of the Comparative
Examples versus the Examples. Br. 4. However, no explanation as to why
these results were at all unexpected and no evidentiary or other support for
this conclusion is provided. Moreover, we have examined the data in Table
1 and we disagree that it supports a conclusion of unexpected results. With
regard to mechanical properties, there are several mechanical properties
listed (warpage, flexural modulus and impact strength) and, while the
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application and Appellant provides no guide as to how to interpret these
results, it appears that Comparative Example 2 has good flexural modulus
and the highest impact strength of any of the compositions of the Examples
or Comparative Examples. Specification, Table 1 at 8. And, the flame
retardancy data fail to show any difference between the Examples and
Comparative Examples 1–5 and 8. Id. Appellant has not overcome the
prima facie case of obviousness related to claims 1, 2, and 6–9 by showing
unexpected results.
Claim 8
Appellant presents separate arguments relating to only one additional
composition claim, dependent claim 8. Br. 5. Claim 8, reads, in its entirety:
“The flame-retardant resin composition of claim 1, wherein the scaly
inorganic filler (D–2) is mica.” Seidel teaches the use of mica as a
reinforcing agent of a flame-resistant resin composition in paragraph 156 at
8.
Appellant argues that comparison of Examples 1 and 2, which are
directed to compositions with mica, with Comparative Example 2, which is
directed to a composition without mica, illustrates “unexpectedly superior
effects” and shows that the compositions of Examples 1 and 2 “clearly have
superior properties.” But, here again, Appellant fails to explain or support
these conclusions or to even say how or why Examples 1 and 2 are
unexpectedly superior or even, in which of the listed properties, the
compositions of these examples are clearly superior. Br. 5. We have
examined the data in Table 1 and again, although the application and the
Appellant provides no guidance in interpreting this result, it appears that the
composition of Comparative Example 2 had the highest impact strength of
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all the compositions of the Examples and Comparative Examples. We agree
with the Examiner that Seidel teaches or suggests the use of mica as set forth
in claim 8 and that the subject matter of claim 8 would have been obvious.

Claims 3–5
Dependent claims 3–5 were rejected as unpatentable under § 103 over
Seidel in view of Kobayashi. Ans. 6 (¶ 7). These claims are directed to a
structural part of an optical drive (e.g., a CD or DVD drive) composed of the
composition of claim 1. The Examiner found that Seidel “does not explicitly
disclose using its flame-resistant composition with a structural part of an
optical drive . . .” Ans. 6 (¶ 8). The Examiner relied on Kobayashi as
teaching or suggesting “using a resin composition that has great heat
resistance (Abstract and Title) and flame retardancy for use in mechanical
elements in optical disk drives and drive trays (paragraphs 0012 and 0061).”
Ans. 7 (¶ 9.).
In response to this rejection, Appellant first states that “sufficient
structural distinctions” exist between the compositions of Seidel and the
compositions of Kobayashi that one of ordinary skill in the art would not
assume that they would have similar properties and similar utilities. Br. 5–6.
But, Appellant provides no support for, and does not further develop, this
argument. Appellant fails to identify even a single structural distinction or
to explain how or why any such distinction would affect the properties or
utilities of the compositions. Appellant’s statement as to what one of
ordinary skill in the art would assume is completely conclusory and we
reject this argument.
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Next, Appellant states that “only hindsight provided by the present
disclosure” led the Examiner to suggest the disclosure of the utilities and
properties of the compositions of Kobayashi could be extended to Seidel.
Br. 6. But, here again, Appellant states this conclusion but fails to provide
any support for it or to explain or further develop it. We reject this
unexplained and unsupported conclusion.
Finally, with regard to these claims, Appellant states that Kobayashi
“does not cure the deficiencies contained in Seidel.” Br. 6. Here, still again,
this conclusion is not explained or supported. Appellant does not even
identify any such deficiency. We reject this argument too.
We agree with the Examiner that the combination of Seidel in view of
Kobayashi teaches or suggests using the flame-resistant resin compositions
of Seidel as a structural part of an optical drive as disclosed in Kobayashi. It
would have been obvious to use a composition with known properties for a
use in which those properties were knowingly advantageous. Put
differently, it would have been obvious to a person of ordinary skill in the art
at the time the invention was made to use the resin compositions taught or
suggested by Seidel in the use taught or suggested by Kobayashi for resin
compositions of this type.

CONCLUSION
We affirm the rejection of all the pending claims (1–9) as obvious
under 35 U.S.C. § 103(a).

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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)(iv).

AFFIRMED

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