Ex Parte Nakada et al

Patent Trial and Appeal Board

Dec 21, 2016

13055527 (P.T.A.B. Dec. 21, 2016)

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.
13/055,527 01/24/2011 Satomi Nakada 1009760-000052 6175
21839 7590 12/23/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
CAI, WENWEN
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATOMINAKADA, TATSUYA SAITO, and DAISAKUIKEDA1
Appeal 2015-006792
Application 13/055,527
Technology Center 1700
Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
MICHAEL G. McMANUS, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections under 35 U.S.C. § 112, 2nd paragraph, of claim 23 and under
35 U.S.C. § 103(a) of claims 1—4, 11—14, 22, and 23 as unpatentable over
Akagi (JP 08-073719 A, published Mar. 19, 1996) (“Akagi ’719”) in view of
Akagi et al. (JP 09-124908 A, published May 13, 1997) (“Akagi ’908”). We
have jurisdiction under 35 U.S.C. § 6.
1 WINTECH POLYMER LTC. is identified as the real party in interest.
App. Br. 2.
Appeal 2015-006792
Application 13/055,527
We AFFIRM the § 103 rejection and REVERSE the § 112, 2nd
paragraph, rejection.
Appellants claim a polybutylene terephthalate resin mixture for film
production obtained by mixing polybutylene terephthalate resin with an
aromatic carbodiimide wherein melt-kneading is not performed before the
film production step (independent claim 1; see also independent claim 23).
A copy of claims 1 and 23, taken from the Claims Appendix of the
Appeal Brief, appears below.
1. A polybutylene terephthalate resin mixture for film production,
obtained by mixing (A) polybutylene terephthalate resin, having an amount
of carboxyl terminal group of 20 meq/kg or less and an intrinsic viscosity of
1.1 dL/g or more, with (B) an aromatic carbodiimide compound in any form
of powder, granule and masterbatch;
wherein melt-kneading of the (A) polybutylene terephthalate resin and
the (B) carbodiimide compound is not performed in any step before the film
production step.
23. A polybutylene terephthalate resin mixture for film production,
obtained by mixing (A) polybutylene terephthalate resin, having an amount
of carboxyl terminal group of 20 meq/kg or less and an intrinsic viscosity of
1.1 dL/g or more, with (B) an aromatic carbodiimide compound in any form
of powder, granule and masterbatch;
wherein no melt-kneading of the polybutylene terephthalate resin
mixture for film production takes place prior to film production.
In contesting the § 103 rejection, Appellants do not present separate
arguments specifically directed to the dependent claims (App. Br. 5—11).
Therefore, in this rejection, the dependent claims will stand or fall with their
parent independent claim 1.
The $ 112, 2nd paragraph. Rejection
According to the Examiner, the claim 23 recitation “wherein no melt-
kneading of the polybutylene terephthalate resin mixture for film production
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Appeal 2015-006792
Application 13/055,527
takes place prior to film production” renders the claim indefinite because
“[i]t is unclear if no melt-kneading is performed, how a film can be
produced” (Non-Final Action 3).
However, we agree with Appellants that claim 23, when read in light
of the Specification, prohibits melt-kneading before, not during as the
Examiner assumes, film production (App. Br. 12—13). We do not sustain,
therefore, the § 112, 2nd paragraph, rejection of this claim.
The $ 103 Rejection
The Examiner concludes that it would have been obvious to provide
the terephthalate of Akagi ’719 with the claimed amount of carboxyl
terminal group in view of Akagi ’908 (Non-Final Action 4), and Appellants
do not argue otherwise.
Instead, Appellants argue that these references disclose melt-kneading
before film formation and accordingly teach away from their claimed
mixture which is said to exhibit unexpected results and possess structural
differences compared to the reference mixtures (App. Br. 6—11).
Appellants’ arguments lack persuasive merit for the reasons given by
the Examiner and below.
Each of the applied references discloses mixing terephthalate and
carbodiimide in a V type blender and then melt mixing/kneading the mixture
(Akagi ’719 117, Akagi ’908 131). The terephthalate and carbodiimide
mixture that exists between the blending step and the melt mixing/kneading
step is indistinguishable from the mixture defined by independent claims 1
and 23. In other words, the prior art mixture that immediately discharges
from the blender has not been melt-kneaded and therefore possesses the
same structure and properties as the claimed mixture. Viewed from this
perspective, the mixture of the independent claims has not been shown to
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Appeal 2015-006792
Application 13/055,527
exhibit any difference, much less an unexpected one, compared to the
nonmelt-kneaded mixtures of Akagi ’719 and Akagi ’908.
For these reasons, we sustain the § 103 rejection of claims 1—4, 11—
14, 22, and 23.
Conclusion
The Examiner’s decision rejecting claims 1—4, 11—14, 22, and 23 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)(1).
AFFIRMED
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