Ex Parte Masuda et al

Patent Trial and Appeal Board

Dec 11, 2017

13512515 (P.T.A.B. Dec. 11, 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.
13/512,515 05/29/2012 Shigeyoshi Masuda P23008US00 6849
38834 7590 12/18/2017
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIGEYOSHI MASUDA,1
Dai Nakagawa, Kinji Hasegawa, and Masanori Nishiyama
Appeal 2017-000050
Application 13/512,515
Technology Center 1700
Before MARK NAGUMO, N. WHITNEY WILSON, and
SHELDON M. McGEE, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Shigeyoshi Masuda, Dai Nakagawa, Kinji Hasegawa, and
Masanori Nishiyama (“Teijin”) timely appeal under 35 U.S.C. § 134(a) from
the Final Rejection2 of all pending claims 1, 3—5, and 7—15. We have
jurisdiction. 35 U.S.C. § 6. We affirm.
1 The real party in interest is identified as Teijin Limited (“Teijin”).
(Appeal Brief, filed 28 March 2016 (“Br.”), 2.)
2 Office Action mailed 29 July 2015 (“Final Rejection”; cited as “FR”).
Appeal 2017-000050
Application 13/512,515
OPINION
A. Introduction3
The subject matter on appeal relates to insulating films comprising
syndiotactic styrene, polyphenylene ether, fine particles, and an antioxidant.
Such films are said to be highly insulating with excellent electrical
characteristics, high breakdown voltage, heat resistance, and good handling
properties such as windability and processability. (Spec. 1,3.) The films
are said to be useful in capacitors, especially for hybrid cars. (Id. at 2.)
The '515 Specification discloses that the addition of fine inert particles
improves handling properties and wear resistance (Spec. 19-20), while
antioxidants are said to improve the breakdown voltage. (Id. at 13.) The
Specification further reveals that increasing the refractive index can increase
the breakdown voltage, although too high a refractive index may result in
film breakage during processing, while too low a refractive index affords a
too-low breakdown voltage. (Id. at 32).
Claim 1 is representative and reads:
An insulating film comprising
a biaxially stretched film made of a styrene polymer
having a syndiotactic structure as a main component, the
biaxially stretched film containing:
inert fine particles A having an average particle size
of 0.05 pm or more and 1.5 pm or less
with a relative standard deviation in particle size
of 0.5 or less
3 Application 13/512,515, Insulating film, filed 29 May 2012 as the national
stage under 35 U.S.C. § 371 of PCT/JP2010/071626, which was
filed 26 November 2010. We refer to the “’515 Specification,” which we
cite as “Spec.”
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Application 13/512,515
in an amount of 0.05 mass% or more and 2.0 mass%
or less;
an antioxidant in an amount
of 0.1 mass% or more and 8 mass% or less; and
a polymer Y having
a glass transition temperature Tg by DSC of 130°C or more
in an amount of 20 mass% or more and 48 mass% or less,
wherein the polymer Y is polyphenylene ether
represented by the following formula (1):
the biaxially stretched film having a breakdown voltage
(BDV) at 120°C of 350 V/pm or more, and
a refractive index in the thickness direction
of 1.5750 or more and 1.6040 or less.
(Claims App., Br. 7; some indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection4,5:
A. Claims 1, 3—5, and 7—15 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Masuda4 5 6 and Yamasaki.7
4 Examiner’s Answer mailed 27 July 2016 (“Ans.”).
5 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
6 Shigeyoshi Masuda et al., WO 2008/156210 Al, Insulatingfilm, (2008);
United States Patent Application Publication 2010/017483 Al (15 July
2010), the national stage under 35 U.S.C. § 371 of PCT/JP2008/061598,
filed 18 June 2008, has been used, without objection, as a translation. Issued
as Masuda '087 (infra, n.8) on 14 October 2014).
7 Komei Yamasaki et al., Styrene-based polymer composition, etc., United
States Patent 5,109,068 (1992).
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Application 13/512,515
B. Claims 1, 3—5, 7, 8, 10—12, and 14 stand rejected under
provisional obviousness-type double patenting in view of
claims 1-12 of 14/113,485.8
C. Claims 1, 3—5, 7—9, and 13—15 stand rejected under
obviousness-type double patenting in view of claims 1—12 of
Masuda '0879 and Yamazaki.
B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Rejections B and C (obviousness-type double patenting)
Teijin does not traverse obviousness-type double patenting
Rejection C, which we therefore affirm summarily.
With respect to provisional obviousness-type double patenting
Rejection B, Teijin urges only that there are limitations regarding a
coefficient, AP, that is recited in the reference claim that are not recited in
the claims on appeal. (Br. 6.) Teijin does not, however, explain why this
difference results in patentably distinct claims—a matter that is particularly
important because both the reference claim and the claims on appeal are
written in “open” formats, which do not exclude the presence of additional
8 Takashi Nakahiro et al., Highly insulating film, United States Patent
Application 14/113,485, issued as United States Patent 9,617,407
on 11 April 2017.
9 Shigeyoshi Masuda et al., Insulating Film, United States Patent
8,859,087 B2 (14 October 2014), based on an international application filed
as the national stage of PCT/JP2008/061598, which was filed
on 18 December 2009.
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Application 13/512,515
materials, and which do not necessarily exclude further limitations as to
properties.
Accordingly, we also affirm Rejection B.
Rejection A (obviousness)
Teijin urges the Examiner erred harmfully in determining that the
difference between the upper limit of the refractive index, “n = 1.6040,”
recited in appealed claim 1, and the lower limit, n = 1.6050, recited in
Masuda '483 (e.g., Masuda '483 1 [0010], is “slight,” such that the difference
does not render the claimed subject matter patentable. Teijin urges further
that Masuda teaches “a refractive index in the thickness direction of 1.6050
to 1.6650.” (Br. 4,11. 13—14.) More particularly, Teijin argues, inter alia,
that “the Examiner has not set forth any determination as to what would be
considered to be ‘close’ or ‘slight’ from the prior art,” (id. at 5,11. 19-20),
and that “[t]he Examiner has not shown why one skilled in the art would
consider the term 1.6050 to be ‘close to’ or ‘a slight difference’ to 1.6040”
(id. at 11. 21-22).
Review of the record indicates that the preponderance of the evidence
supports Teijin. Masuda teaches that “[w]hen the refractive index in the
thickness direction is too low, the breakdown voltage tends to become low
with the result of the determination of electric properties.” (Masuda '483,
2 [0023].) Other than numerical “closeness,” the Examiner has not come
forward with any reason based on the evidence of record that a person
skilled in the art would have departed from the teachings of Masuda and
used a lower refractive index than recommended. Absent such evidence, the
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Application 13/512,515
rejection is based on a per se rule of obviousness that both the Federal
Circuit and the Supreme Court have criticized repeatedly.
Because we are persuaded of harmful error in the rejection for
obviousness, Rejection A is reversed.
C. Order
It is ORDERED that Rejection A of claims 1, 3—5, and 7—15 is
reversed.
It is FURTHER ORDERED that Rejection B of claims 1, 3—5, 7, 8,
10-12, and 14 is affirmed.
It is FURTHER ORDERED that Rejection C of claims 1, 3—5, 7—9,
and 13—15 is affirmed.
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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