Ex Parte Sasaki et al

Board of Patent Appeals and Interferences

Feb 23, 2011

10492604 (B.P.A.I. Feb. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte YUKI SASAKI, YASUO MATSUMURA,
TAKAYOSHI AOKI, ETSUO TOMINAGA,
SHUJI SAKUMA and TOMOKI SAITO
________________

Appeal 2010-003560
Application 10/492,604
Technology Center 1700
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Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MARK NAGUMO, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-6, 8, 9 and 17. Claim 7 has been canceled and

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-003560
Application 10/492,604

claims 10-16 stands withdrawn from consideration by the Examiner. We
have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an antibacterial agent comprising inorganic
antibacterial particles dispersed in a thermoplastic resin. Claim 1 is
illustrative:

1. An antibacterial agent comprising
a thermoplastic resin and inorganic antibacterial particles,
wherein the inorganic antibacterial particles are dispersed in the resin and
comprise an inorganic carrier, said inorganic carrier including a phosphoric
acid compound group that includes at least one compound selected from a
group consisting of calcium phosphate compound, titanium phosphate
compound, zirconium phosphate compound, magnesium phosphate
compound, aluminum phosphate compound, manganese phosphate
compound and iron phosphate compound, the antibacterial agent satisfying
any one of the following conditions (1) to (3):
(1) An existing ratio of the inorganic antibacterial particles,
which is calculated by the following formula, is not less than 80%.
The formula is:
Existing ratio (%) = 100x(Number of the inorganic antibacterial
particles having SF2 of not more than 200)/(a total number of the inorganic
antibacterial particles used for calculating SF2)
Wherein SF2 is a shape factor defined by the following
formula;
SF2=100L2 /(4πA)
(Wherein L represents a perimeter of a plane image of the
inorganic antibacterial particle, and A represents an area of the plane image
of the inorganic antibacterial particle, said L and A obtained by observing a
slice of the antibacterial agent using a transmission electron microscope.)

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Application 10/492,604

The References
References relied upon by the Examiner
Mawatari 5,614,568 Mar. 25, 1997
Aoyama 6,287,530 B1 Sep. 11, 2001
Reference relied upon by the Appellants
Fine Particle Engineering Fundamentals and Applications of Dispersions 1-
8 (Assoc. Power Process Ind. & Eng., Japan, ed., Asakura Pub. Co., June 25,
1994).

The Rejections
The claims stand rejected as follows: claims 1-6, 8 and 17 under
35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103 over
Aoyama, and claim 9 under 35 U.S.C. § 103 over Aoyama in view of
Mawatari.
OPINION
We reverse the rejections.
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that Aoyama discloses or would have rendered prima facie
obvious to one of ordinary skill in the art an antibacterial agent which meets
at least one of the three conditions in the Appellants’ claim 1?2
Findings of Fact
Aoyama discloses a synthetic resin containing an additive comprising
particles of petaloid porous hydroxyapatite having the formula

2 The Examiner does not rely upon Mawatari for any disclosure that
remedies the deficiency in Aoyama as to claim 1 (Ans. 6) (citations herein to
the Examiner’s Answer are to the Supplemental Examiner’s Answer dated
March 20, 2009).
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Ca10(PO4)6(OH)2 and satisfying four conditions pertaining to particle size,
dispersion and surface area (col. 3, ll. 12-42). The additive has “petaloid
structure like a flower of rose” (col. 5, ll. 56-58) and provides the synthetic
resin with good anti-blocking and anti-scratch properties, transparency and
dyeability (col. 2, ll. 62-65; col. 4, ll. 23-27, 55-58).
Analysis
Appellants’ first condition
The Examiner argues that Aoyama’s Figures 1 and 2 indicate that the
additive particles are spherical or nearly spherical, and that because
Aoyama’s additive particles are dispersed (col. 5, l. 1; col. 14, ll. 66-67) their
SF2 shape factors would not be changed by agglomeration (Ans. 4-5).3
The Appellants argue that Aoyama’s Figure 2 does not show particles
that are spherical or nearly spherical and argue that even particles having a
round outer cross-section can have an SF2 greater than 200 if they have
sufficient nooks and crannies in their perimeter in a plane image (Br. 11-12).
The Examiner argues that the sketch relied upon by the Appellants in
support of that argument (Br. 12) is mere attorney argument and is not actual
proof (Ans. 8).
The point of the Appellants’ sketch is to show that even if particles
have a round outer cross-section, if they are sufficiently porous their “L”
value in the Appellants’ SF2 equation, which is squared, can be high enough
that SF2 is greater than 200. No further proof of that point is needed.

3 The Appellants state that “‘inorganic antibacterial particles’ may comprise
not only one inorganic antibacterial particle thereof, but also agglomerated
particles composed of agglomeration of a plurality of inorganic antibacterial
particles” (Spec. 11:12-16).
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Application 10/492,604

Aoyama’s Figure 2 shows particles which appear to have considerable
porosity. The Examiner has not provided evidence or technical reasoning
which shows that those particles necessarily meet the Appellants’ first
condition or which shows that in view of Aoyama’s disclosure that the
particles are petaloid and porous (col. 4, ll. 1-3), one of ordinary skill in the
art would have been led to make the particles in the resin/particle blend
sufficiently spherical and smooth that the blend meets the Appellants’ first
condition.
The Appellants argue that in view of the importance of the petaloid
nature of Aoyama’s particles (self-breakability which provides good anti-
scratch property; col. 4, ll. 1-19). it would not have been obvious to one of
ordinary skill in the art to modify them such that they are sufficiently close
to spherical to meet the Appellants’ SF2 condition (Reply Br. 7-8).4 The
Appellants argue that Aoyama does not teach that there should be no
agglomeration or disclose or suggest any inherent degree of agglomeration
(Reply Br. 8).5
The Examiner argues that given that Aoyama’s particles are dispersed,
one of ordinary skill in the art would have considered the amount of
kneading used to disperse the particles in the resin to be a result effective
variable which would be adjusted to optimize the degree of dispersion
(Ans. 10). The Examiner argues that it would have been prima facie obvious

4 As pointed out by the Appellants, a spherical particle with a smooth
surface has an SF2 of 100 (Br. 10).
5 The Appellants argue, in reliance upon Fine Particle Engineering
Fundamentals and Applications of Dispersions, that particles such as those
of Aoyama agglomerate in resin (Reply Br. 8), but the Appellants do not
point out where that reference discusses particles in resin.
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to one of ordinary skill in the art to adjust the kneading used to blend the
particles into the synthetic resin (col. 8, ll. 21-24) until the particles are
sufficiently dispersed that they have no agglomeration (Ans. 4-5).
The Appellants disclose that the kneading parameters significantly
affect the properties of the resin/particle blend including the degree of
agglomeration of the particles (Spec. 27:14 – 28:12). The Appellants desire
high dispersibility and low agglomeration (Spec. 3:9-19). Aoyama,
however, states that the methods for blending the additive particles into the
synthetic resin are not specifically limited and gives kneading as an
exemplary method (col. 8, ll. 21-24). Aoyama discloses that the particles are
dispersed (col. 5, l. 1; col. 14, ll. 66-67) but does not disclose any required
degree of dispersion. Even if, as argued by the Examiner, one of ordinary
skill in the art would have adjusted Aoyama’s kneading to obtain the degree
of dispersion required by Aoyama, that degree would have been that
required to obtain the resin/particle blend properties desired by Aoyama, i.e.,
good anti-blocking and anti-scratch properties, transparency and dyeability
(col. 2, ll. 62-65; col. 4, ll. 23-27, 55-58). The Examiner has not provided
evidence or technical reasoning which shows that optimizing Aoyama’s
kneading to obtain those properties would reduce agglomeration sufficiently
that the particles in the resin/particle blend meet the Appellants’ condition 1
requirement that at least 80% of the particles have an SF2 of not more
than 200.
Appellants’ second condition
The Appellants argue that Aoyama’s average particle diameter range
of 0.1 to 20 µm (col. 3, ll. 17-28) does not provide information as to the
proportion of particles having a diameter of 2 µm or more (Reply Br. 9).
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The Examiner argues that “Aoyama clearly teaches that the size of the
particles (dx1) (3:25-28) is a result effective variable in achieving good
dispersibility (5:1-8)” (Ans. 11).
That portion of Aoyama merely discloses that if dx1 is less than
0.1 µm the dispersion of the additive in the synthetic resin is not easy. It
does not indicate that any particular particle size provides good dispersibility
or that there should be any limit on the percentage of particles having a
diameter of at least 2 µm.
The Examiner argues that Aoyama achieves the Appellants’ level of
dispersibility and low agglomeration because Aoyama discloses that the
particles can be mixed by the Appellants’ mixing method, i.e., kneading
(Ans. 12).
As pointed out above regarding the Appellants’ first condition the
Examiner has not established that optimizing Aoyama’s kneading for
obtaining the product characteristics desired by Aoyama would have led to
the Appellants’ degree of agglomeration.
Appellants’ third condition
The Appellants argue that Aoyama teaches only that the degree of
dispersion is good, and that “optimization for Aoyama’s purposes would not
have led to achieving the specifics of condition (3)” (Reply Br. 14-15).
The Examiner argues that one of ordinary skill in the art would have
optimized Aoyama’s kneading to improve dispersibility (Ans. 16).
That argument is not well taken because, as pointed out above
regarding the discussion of the Appellants’ conditions 1 and 2, the Examiner
has not established that optimizing to achieve Aoyama’s desired product
characteristics, i.e., good anti-blocking and anti-scratch properties,
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transparency and dyeability (col. 2, ll. 62-65; col. 4, ll. 23-27, 55-58), would
provide the Appellants’ degree of dispersion.
Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that Aoyama discloses or would have rendered prima facie
obvious to one of ordinary skill in the art an antibacterial agent which meets
at least one of the three conditions in the Appellants’ claim 1.
DECISION/ORDER
The rejections of claims 1-6, 8 and 17 under 35 U.S.C. § 102(b) or, in
the alternative, under 35 U.S.C. § 103 over Aoyama, and claim 9 under
35 U.S.C. § 103 over Aoyama in view of Mawatari are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

tc

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