Ex Parte Maruyama et al

Board of Patent Appeals and Interferences

Jun 22, 2011

10837782 (B.P.A.I. Jun. 22, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/837,782 05/04/2004 Katsuya Maruyama 396.43817X00 2962
20457 7590 06/23/2011
ANTONELLI, TERRY, STOUT & KRAUS, LLP
1300 NORTH SEVENTEENTH STREET
SUITE 1800
ARLINGTON, VA 22209-3873
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
06/23/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte KATSUYA MARUYAMA,
Kazunobu Maruo, and Hiroyuki Nanba
________________

Appeal 2010-009245
Application 10/837,782
Technology Center 1700
________________

Before CHARLES F. WARREN, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge NAGUMO.

Opinion Concurring filed by Administrative Patent Judge WARREN.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009245
Application 10/837,782

2
A. Introduction1, 2
Katsuya Maruyama, Kazunobu Maruo, and Hiroyuki Nanba
(“Maruyama”) timely appeal under 35 U.S.C. § 134(a) from the final
rejection3 of claims 1-6, 8-11, 27-29, and 32-35.4 We have jurisdiction.
35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to multilayer polyethylene
terephthalate (“PET”) containers such as beverage bottles having improved
resistance to delamination induced by rough handling during transport or
use. (Spec. 1, ll. 5-9.) The improved properties are said to be due to
improved adhesion between the innermost and outermost PET layers and the
intermediate polyamide layer, which is a blend of two polyamide resins.
The polyamide resins for the interior polyamide layer are selected for their
solubility indices and their glass transition temperatures. (Id. at 3, l. 23, to 4,
l. 8.)
Claim 1 is representative and reads:
1. A multilayer container comprising an outermost layer, an
innermost layer and at least one intermediate layer interposed

1 Application 10/837,782, Multilayer Container, filed 4 May 2004, claiming
the benefit of a Japanese application filed 4 May 2004. The specification is
referred to as the “782 Specification,” and is cited as “Spec.” The real party
in interest is listed as Mitsubishi Gas Chemical Co. (Appeal Brief,
filed 20 August 2009 (“Br.”), 2.)
2 Heard 8 June 2011. The Official Transcript, which was not available
when this Opinion was entered, will be made of record.
3 Office action mailed 9 January 2009.
4 Copending claims 12-17, 19-23, and 26 have been withdrawn from
consideration and are not before us. (FR 1; Br. 5.)
Appeal 2010-009245
Application 10/837,782

3
between the outermost layer and the innermost layer, wherein
the outermost layer and the innermost layer are each mainly
made of a thermoplastic polyester resin A produced by
polymerizing a dicarboxylic acid component
comprising 80 mol% or higher of terephthalic acid with a diol
component comprising 80 mol% or higher of ethylene glycol;
at least one of the at least one intermediate layer is mainly
made of a mixed resin B of a polyamide resin C and a
polyamide resin D,
said polyamide resin C and said polyamide resin D being
in the mixed resin B in amounts in a range of 99.5
to 80 parts by weight of polyamide resin C and in a range
of 0.5 to 20 parts by weight of polyamide resin D, for
every 100 parts by weight of a total of polyamide resin C
and polyamide resin D in the mixed resin B;
the mixed resin B further containing cobalt in an amount
of 0.01 to 0.1 % by weight based on a total weight of the
polyamide resin C and the polyamide resin D;
the polyamide resin C being produced by polymerizing a
diamine component comprising 70 mol% or higher of
m-xylylenediamine with a dicarboxylic acid component
comprising 70 mol% or higher of adipic acid;
the polyamide resin D having a solubility index
satisfying the formula (1):
Sa < Sd < Sc (1 )
wherein Sa is a solubility index of the thermoplastic
polyester resin A; Sc is a solubility index of the
polyamide resin C, and Sd is a solubility index of the
polyamide resin D, each solubility index being calculated
by Small method; and
the polyamide resin D having a glass transition
temperature of 130°C or lower which is higher than that
of the polyamide resin C.
(Claims App., Br. 36-37; indentation, paragraphing, and emphasis added.)
Appeal 2010-009245
Application 10/837,782

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The Examiner maintains the following grounds of rejection:5
A. Claims 1-5, 11, 27-29, and 32-35 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Matlack,6 Fujita,7 and Bäbler.8
B. Claim 6 stands rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of Matlack, Fujita, Bäbler, and
Akkapeddi.9
C. Claim 8 stands rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of Matlack, Fujita, Bäbler, and
Yamamoto.10
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Maruyama argues, inter alia, that the Examiner erred in determining
that Matlack anticipates or suggests the range of compositions recited in
appealed claim 1. There is, in Maruyama’s view, no teaching in Matlack of
amorphous polyphthalamide (corresponding to polyamide resin D) blended

5 Examiner’s Answer mailed 10 November 2009 (“Ans.”).
6 John D. Matlack et al., Polyamide Having Improved Gas Barrier
Properties from Adipic Acid, Isophthalic Acid and m-Xylylene Diamine, U.S.
Patent 5,175,238 (1992).
7 Kuniaki Fujita et al., Band-Shaped Article and Production Process
Therefore, U.S. Patent 6,214,269 B1 (2001).
8 Fridolin Bäbler, Pigment Preparations, U.S. Patent 6,800,127 B2 (2004).
9 Murail K. Akkapeddi et al., Oxygen Scavenging High Barrier Polyamide
Compositions for Packaging Applications, U.S. Patent 6,423,776 B1 (2002).
10 Koji Yamamoto et al., Polyamide Resin Composition, U.S. Patent
6,166,171 (2000).
Appeal 2010-009245
Application 10/837,782

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in the range of 0.5 to 20 parts by weight, with about 75 to about 25 parts by
weight MXDA resin, corresponding to polyamide resin C), for
every 100 parts by weight of total polyamide resins C and D. (Br. 19.) The
Examiner responds that “because the claimed range is a range within the
range disclosed by Matlack et al., the claimed weight percentage, and the
advantages of the claimed weight percentage, are disclosed by Matlack et
al.” (Ans. 7, 4th para.)
The Federal Circuit flatly rejected such an analysis in the context of
obviousness in In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992) (“We decline
to extract from Merck the rule that the Solicitor appears to suggest—that
regardless of how broad, a disclosure of a chemical genus renders obvious
any species that happens to fall within it.”). A reference that does not
adequately support obviousness will not suffice to support a demonstration
of anticipation. It is not unusual for improved properties to be discovered
within a previously disclosed range of a composition. Disclosure of a
sufficiently narrow range or a sufficiently limited number of possibilities in
a relatively well-understood and predictable art may amount to a complete
description of that range, such that anticipation may be found. See, e.g.,
In re Schaumann, 572 F.2d 312, 316–17 (CCPA 1978). Here, however, the
Examiner has failed to establish that the art of polymer blends and
multilayered containers has reached that level of sophistication that a
disclosure of “a maximum of 99 % amorphous polyamide” (Matlack, col. 8,
ll. 13-14) teaches the recited range of 0.5 to 20 parts of the corresponding
resin D.
Appeal 2010-009245
Application 10/837,782

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Maruyama argues further that the improvement in resistance to
delamination in the ratio of C to D recited in the claims, together with
reduced oxygen permeability and reduction in haze after storage is an
unexpected result neither taught nor suggested by Matlack. (Br. 21-22.)
The Examiner responds with the same inherency argument regarding the
weight percentage (Ans. 9), and with the observation that neither the haze
nor the oxygen transmission rate is recited in the claims. The Examiner does
not otherwise address the evidence of unexpected results on the merits.
The inherency argument remains faulty. Moreover, there is no
requirement that an unexpected result be recited in the claims, as long as the
effect has antecedent basis in the specification. See, e.g., In re Davies, 475
F.2d 667, 670 (CCPA 1973) (“we are of the view that the basic property or
utility must be disclosed in order for affidavit evidence of unexpected
properties to be offered.”) (citation omitted); for an even more relaxed
standard, see In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995) (“obviousness is
determined by the totality of the record including, in some instances most
significantly, the evidence and arguments proffered during the give-and-take
of ex parte patent prosecution.”).
The Examiner does not rely on the additional secondary references in
any way that cures the deficiencies of Matlack. Accordingly, we conclude
that Maruyama has demonstrated reversible error in the Examiner’s
rejections.
Appeal 2010-009245
Application 10/837,782

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C. Order
We REVERSE the rejection of claims 1-5, 11, 27-29, and 32-35 under
35 U.S.C. § 103(a) in view of the combined teachings of Matlack, Fujita,
and Bäbler.
We REVERSE the rejection of claim 6 under 35 U.S.C. § 103(a) in
view of the combined teachings of Matlack, Fujita, Bäbler, and Akkapeddi.
We REVERSE the rejection of claim 8 under 35 U.S.C. § 103(a) in
view of the combined teachings of Matlack, Fujita, Bäbler, and Yamamoto.
REVERSED

Appeal 2010-009245
Application 10/837,782

8
WARREN, Administrative Patent Judge, Concurring:

On this record, I concur in the result.

cam