Ex Parte Sakata

Patent Trial and Appeal Board

Feb 2, 2017

12996450 (P.T.A.B. Feb. 2, 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.
12/996,450 12/06/2010 Kouichi Sakata 1009760-000049 7912
21839 7590 02/06/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
YOON, TAE H
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
02/06/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOUICHI SAKATA
Appeal 2015-007615
Application 12/996,450
Technology Center 1700
Before TERRY J. OWENS, JEFFREY T. SMITH, and
JENNIFER R. GUPTA, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 19—21, 25—27, 29—31, 33, 34, and 36—38. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a method for making a polybutylene
terephthalate resin composition. Claim 19 is illustrative:
19. A method of manufacturing a polybutylene
terephthalate resin composition, comprising blending the
composition, which consists of:
100 parts by weight of a polybutylene terephthalate
resin (A) having 30 meq/kg or less of terminal carboxyl groups;
Appeal 2015-007615
Application 12/996,450
an aromatic carbodiimide compound (B) in an amount of
0.8 to 1.2 equivalents of the carbodiimide functional groups
when the amount of terminal carboxyl groups in the
polybutylene terephthalate resin (A) is set as 1;
20 to 100 parts by weight of a fibrous filler (C); and
optionally, at least one of a mold release agent, a
heat-stabilizer, a UV absorber, an antistatic agent, a dye, a
pigment, a lubricant, a plasticizer, a crystallization accelerator,
a crystal nucleating agent and an epoxy compound.
Murschall
Miyamoto
Noriyuki (JP ‘908)
(as translated)
Hiroshi (JP ‘858)
(as translated)
The References
US 6,855,758 B2
US 8,210,213 B2
JP 9-124908 A
JP 2007-112858 A
Feb. 15, 2005
July 3, 2012
(filed Mar. 23, 2009)
May 13, 1997
May 10, 2007
The Rejections
Claims 19—21, 25—27, 29—31, 33, 34, and 36—38 stand rejected under
35 U.S.C. § 103 over JP ‘908 in view of JP ‘858 and over Murschall in view
of JP ‘908 and Miyamoto.
OPINION
We affirm the rejection over JP ‘908 in view of JP ‘858 and reverse
the rejection over Murschall in view of JP ‘908 and Miyamoto.
Rejection over JP ‘908 in view of JP ‘858
The Appellant argues the claims as a group (App. Br. 6—14). We
therefore limit our discussion to one claim, i.e., claim 19. Claims 20, 21,
25—27, 29—31, 33, 34, and 36—38 stand or fall with that claim. See
37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Application 12/996,450
JP ‘908 discloses a “thermoplastic composition excellent in hydrolysis
resistance and a heat-resisting property” (1 1), those characteristics being
obtained “by blending a poly carbodiimide compound with polyester resin
with low terminal carboxyl group concentration” (1 9). The preferred
polyester resin is polybutylene terephthalate (111). To obtain a large
improvement in hydrolysis resistance the polyester resin’s terminal carboxyl
group concentration must be no more than 15 equivalents per ton (H 10,
17). The poly carbodiimide compound is aliphatic or alicyclic and its
amount in the composition is 0.05—5 (preferably 0.3—3 or 0.5—2) parts by
weight per 100 parts by weight of thermoplastic polyester, smaller or larger
amounts not having the desired hydrolysis resistance improvement (1 19—
20). The composition can contain “a reinforcer like glass fiber” (1 27).
JP ‘848 discloses a polybutylene terephthalate resin/carbodiimide
compound composition strengthened with glass fiber to improve its shock
resistance and maintain its mechanical strength (| 2, 8, 10). The
carbodiimide compound can be aliphatic, alicyclic or aromatic, and is
present in an amount of 0.1—5 (preferably 0.5—3) parts by weight per
100 parts by weight of polybutylene terephthalate resin (H 23—24).1 “Less
than 0.1 part by weight is not sufficient as an effect, and if it exceeds 5 parts
by weight, generation of a gel component and carbide takes place easily at
fluid deterioration and the time of a compound or fabricating operation”
(124).2 The preferred carbodiimide compounds include aromatic compounds
1 The Appellants disclose that their carbodiimide compound can be aliphatic,
alicyclic or aromatic and that “a preferred one is an aromatic carbodiimide
compound in terms of resistance to hydrolysis” (Spec. 121).
2 The Appellants disclose that “if the amount of (B) [carbodiimide
compound] component is excessively small, the effect of improving the
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Application 12/996,450
(123). The composition’s glass fiber content is 5—80 (preferably 10-60)
parts by weight per 100 parts by weight of polybutylene terephthalate resin
(122).
The Appellant asserts that JP ‘908 fails to teach or suggest aromatic
carbodiimides (App. Br. 7—8).
That argument is deficient in that the Appellant is attacking JP ‘908
individually when the rejection is based on a combination of references. See
In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young, 403 F.2d 754,
757—58 (CCPA 1968). JP ‘858 discloses aromatic carbodiimide compounds
and includes them among the preferred carbodiimide compounds (123).
The Appellant asserts that JP ‘858’s carbodiimide
compound/polybutylene terephthalate ratio range is 0.09 to 40 equivalents of
carbodiimide functional groups to 1 of the terminal carboxyl group of the
polybutylene terephthalate resin, and that this range does not approach
sufficient specificity for anticipation (App. Br. 9—11).
The rejection is based upon obviousness, not anticipation. JP ‘858’s
range would have led one of ordinary skill in the art, through no more than
ordinary creativity, to use any ratio within that range, including the
Appellant’s 0.8—1.2 ratio. SeeKSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (in making an obviousness determination one “can take account
resistance to heat shock, which is an object of the present invention, cannot
be attained. If the amount thereof is excessively large, there likely appears
the lowering of flowability and the generation of gel component and carbide
at the time of compounding and molding processing, and appear the
deterioration of mechanical characteristics such as tensile strength and
flexural strength, and the rapid decrease in strength in a moist heat
environment” (Spec. 26).
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of the inferences and creative steps that a person of ordinary skill in the art
would employ”). Moreover, as stated in In re Peterson, 315 F.3d 1325,
1329-30 (Fed. Cir. 2003):
In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness ....
Selecting a narrow range from within a somewhat broader range
disclosed in a prior art reference is no less obvious than
identifying a range that simply overlaps a disclosed range. In
fact, when as here, the claimed ranges are completely
encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap.
The Appellant points out benefits of the Appellant’s ratio of 0.8—
1.2 equivalents of carbodiimide functional groups to 1 of the terminal
carboxyl group of the polybutylene terephthalate resin, and asserts that those
benefits indicate an unexpected result (App. Br. 11—14).
That argument is not well taken because the Appellant has not set
forth a side-by-side comparison of the claimed invention with the closest
prior art which is commensurate in scope with the claims and provided
evidence that the results would have been unexpected by one of ordinary
skill in the art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA
1973); In reKlosak, 455 F.2d 1077, 1080 (CCPA 1972).
Accordingly, we are not persuaded of reversible error in the rejection
over JP ‘908 in view of JP ‘858.
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Rejection over Murschall in view of JP ‘908 and Miyamoto
We need address only the independent claims (19—21). Each of those
claims requires 20 to 100 parts by weight of fibrous filler and permits
“optionally, at least one of a mold release agent, a heat-stabilizer, a UV
absorber, an antistatic agent, a dye, a pigment, a lubricant, a plasticizer, a
crystallization accelerator, a crystal nucleating agent and an epoxy
compound.”
Murschall discloses a transparent, biaxially oriented heat-set film
which comprises a crystallizable thermoplastic main constituent (which can
be polybutylene terephthalate) and a hydrolysis stabilizer (which can be an
aromatic polymeric carbodiimide) and can contain conventional additives
such as fillers (col. 2,1. 64 —col. 3,1. 11; col. 3,11. 39—53; col. 4,11. 57—63;
col. 6,11. 12-16).
Miyamoto discloses a multilayer tube comprising a barrier layer
which can comprise polybutylene terephthalate and an aromatic
polycarbodiimide compound and can contain an additive such as a filler
(col. 1,11. 10-16; col. 5,11. 33-34, 49-57; col. 6,11. 12-14).
The Examiner finds that JP ‘908’s silence as to the amount of filler
“would permit any amount depending on the desired final properties”
(Ans. 6).
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR, 550 U.S. at 418. The Examiner does not establish that
JP ‘908’s silence as to the amount of filler would have provided one of
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ordinary skill in the art with an apparent reason to use the amount required
by the Appellant’s claims.
The Examiner finds, in response to the Appellant’s assertion that
Miyamoto’s barrier layer contains at most 5 wt% filler (App. Br. 17), that
including 300 grams of optional components in the Appellant’s composition
would reduce the minimum required amount of fibrous filler to 4.8 wt%
(Ans. 7).
‘“[Djuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Examiner does not
establish that the broadest reasonable interpretation of the Appellant’s claim
terms “mold release agent”, “heat-stabilizer”, “UV absorber”, “antistatic
agent”, “dye”, “pigment”, “lubricant”, “plasticizer”, “crystallization
accelerator”, “crystal nucleating agent” and “epoxy compound” includes
components which, alone or in combination, would be present in the
composition an amount as large as 300 grams.
Thus, the Examiner has not established a prima facie case of
obviousness of the Appellant’s claimed method over Murschall in view of
JP ‘908 and Miyamoto.
DECISION/ORDER
The rejection of claims 19—21, 25—27, 29—31, 33, 34, and 36—38 under
35 U.S.C. § 103 is affirmed as to JP ‘908 in view of JP ‘858 and reversed as
to Murschall in view of JP ‘908 and Miyamoto.
It is ordered that the Examiner’s decision is affirmed.
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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).
AFFIRMED
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