Ex Parte Sato

Patent Trial and Appeal Board

Jun 13, 2016

12525336 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/525,336 11/18/2009 Masatomi Sato
140 7590 06/15/2016
LADAS & PARRY LLP
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
u 017829-3 6923
EXAMINER
1040 A venue of the Americas LAN, YAN
NEW YORK, NY 10018-3738
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
06/15/2016 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):
nyuspatactions@ladas.com
nymail@ladas.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASATOMI SATO
Appeal2015-001561
Application 12/525,336
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 5, 6, 8, and 23.2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
The subject matter on appeal is directed to a resin tube that includes a
barrier layer and first and second resin layers that are adjacent to opposite
1 Appellant identifies the Real Party in Interest as SANOR KOGYO
KABUSHIKI KAISHA (Appeal Brief filed August 8, 2014 ("App. Br.") at
2.)
2 Final Office Action entered November 29, 2013 ("Final Act.").
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Application 12/525,336
sides of the barrier layer. (Spec. if 13.) The barrier layer comprises an acid-
modified aromatic polyamide formed by the introduction of an acidic
functional group that enhances adhesion between the barrier layer and the
adjacent resin layers to an aromatic polyamide. (Spec. i-fi-f 18, 20, 22.)
Details of the appealed subject matter are recited in representative
claim 5, reproduced below from the Claims Appendix to the Appeal Brief:
5. A multilayer resin tube having a multilayer structure of
three or more thermoplastic resin layers, said tube comprising a
barrier layer comprising an acid modified aromatic polyamide
as a main component, and a first resin layer adjacent to the
barrier layer on an outer side thereof and a second resin layer
adjacent to the barrier layer on an inner [side] thereof, wherein
the acid modified aromatic polyamide is modified by the
introduction of a functional group so as to enhance adhesion
between the barrier layer and the adjacent layers.
(App. Br. 17, Claims App'x.)
il1ppellant seeks revie\x1 of the follo\x1ing grounds of rejection
maintained by the Examiner in the Answer mailed on October 6, 2014
("Ans."):
Claims 5 and 6 under 35 U.S.C. § 102(b) as anticipated by the
disclosures of U.S. Patent Application Publication 2004/0126523 Al
published in the name of Masuda et al. on July 1, 2004 (hereinafter referred
to as "Masuda"); and
Claims 5, 6, 8, and 23 under 35 U.S.C. § 103(a) as unpatentable over
the disclosures of Masuda.
2
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Application 12/525,336
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellant's contentions, we determine that Appellant has not identified
reversible error in the Examiner's decision rejecting claims 5 and 6 under 35
U.S.C. § 102(b) and rejecting claims 5, 6, 8, and 23 under 35 U.S.C.
§ 103(a). Accordingly, we sustain the Examiner's§§ 102(b) and 103(a)
rejections for the reasons set forth in the Final Rejection and the Answer.
We add the discussion below primarily for emphasis and completeness.
Rejection of claims 5 and 6 as Anticipated by Masuda3
The Examiner finds, and Appellant does not dispute, that Masuda
discloses a multi-layer fuel pipe tube that comprises a layer (b) comprising a
nylon 9T polyamide resin, and adjacent layers (a) and (c) on the opposite
sides of the layer(b). 4 (Compare Final ii ..ct. 5 ivith ii ..pp. Br. 4--8.) ii ..ppellant
also does not dispute the Examiner's finding that Masuda discloses that the
terminal group of the molecular chain of the nylon 9T is blocked by a
monocarboxylic acid terminal-blocking agent (Compare Final Act. 5---6 with
3 We limit our discussion to those claims separately argued, and claims not
separately argued stand or fall with the argued claims. 37 C.F.R.
§ 41.37(c)(l)(iv). Appellant argues claims 5 and 6 together. (See generally
App. Br.) Therefore, we select claim 5 as representative, and decide the
propriety of the rejection under 35 U.S.C. § 102(b) based on this claim
alone.
4 Appellant does not dispute the Examiner's finding that the nylon 9T
polyamide resin disclosed in Masuda corresponds to the P A9T recited in
claim 6.
3
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Application 12/525,336
App. Br. 4--8), which according to the Examiner, corresponds to the recited
acid-modified aromatic polyamide formed by the introduction of an acidic
functional group (monocarboxylic acid terminal-blocking agent) to an
aromatic polyamide. (Final Act. 6.) The Examiner finds that the
introduction of the monocarboxylic acid terminal-blocking agent to the
nylon 9T per Masuda's teaching, to form the acid modified aromatic
polyamide recited in claim 5, would inherently result in enhanced adhesion
between the nylon 9T in layer (b) and adjacent layers (a) and (c) to at least
some degree, shifting the burden to Appellant to show otherwise. (Id.)
Appellant argues that the Examiner does not demonstrate that the
nylon 9T aromatic polyamide modified with a monocarboxylic acid
terminal-blocking agent disclosed in Masuda constitutes the acid-modified
aromatic polyamide recited in claim 5, and would enhance adhesion between
adjacent layers in Masuda's multi-layer structure. (App. Br. 5-7.) In
support of these arguments, Appellant relies upon a Rule 132 Declaration
executed by Masatomi Sato, an inventor of the instant application, on
November 18, 2013 ("the Sato Declaration"). (App. Br. 7.) According to
the Sato Declaration, an "acid-modified" aromatic polyamide is an aromatic
polyamide that has been modified by the introduction of an acid functional
group after polymerization of the polymer, and does not refer to an aromatic
polyamide that has been prepared with an acidic terminal blocking agent.
(Sato Declaration i-f 4.) The Sato Declaration further indicates that a
polymer having acid-modified side groups is an "acid-modified" polymer
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Application 12/525,336
that has enhanced adhesion strength, whereas a polymer modified by the
introduction of a monocarboxylic acid terminal blocking agent into the
polymer backbone is not an "acid-modified" polymer, and would have
reduced, rather than enhanced, adhesive strength due to inactivation of the
terminal group. (Sato Declaration i-f 5.)
However, we find Appellant's arguments unpersuasive of reversible
error for at least the following reasons. Initially, we note that claim 5 does
not limit its acid functional group to exclude Masuda's monocarboxylic acid
functional group identified as a terminal blocking agent, or limit the timing
of the introduction of its acidic functional group to exclude the timing of the
introduction of the monocarboxylic acid functional group disclosed by
Masuda. Claim 5, as recited, includes forming an acid-modified aromatic
polyamide by introducing its acidic functional group to an aromatic
polyamide at any time, during or after polymerization. Consistent with this
broad language of claim 5, the Specification also does not provide a
definition or description of an "acid-modified" aromatic polyamide to
exclude the acid-modified aromatic polyamide taught by Masuda. The
Specification does not describe how the claimed "acid-modified" aromatic
polyamides are prepared, including how and when the acid modification
occurs. In other words, the Specification, like claim 5, includes an "acid-
modified" aromatic polyamide which is formed by the introduction of an
acidic functional group to an aromatic polyamide during or after
polymerization. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) ("It is
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Application 12/525,336
the applicants' burden to precisely define the invention, not the PTO's.").
Although Appellants refer to the Declarant' s conclusory statement that the
term "acid-modified aromatic polyamide" is an aromatic polyamide that has
been modified by the introduction of an acid functional group after
polymerization of the polymer, neither the Declarant nor Appellant proffers
any objective evidence to corroborate such statement. See Velander v.
Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("[W]hat the Board
consistently did was accord little weight to broad conclusory statements that
it determined were unsupported by corroborating references. It is within the
discretion of the trier of fact to give each item of evidence such weight as it
feels appropriate."); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368
(Fed. Cir. 2004) ("[T]he Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants discounting the
opinions expressed in the declarations.").
In addition, neither Appellant nor the Declarant provides objective
evidence supporting the assertion that an aromatic polyamide modified with
an acid terminal-blocking agent, as disclosed in Masuda, would not exhibit
enhanced adhesion strength.5 (App. Br. 4--13; Sato Declaration i-fi-13-7.)
5 Because a preponderance of the evidence supports the Examiner's finding
that Masuda describes modifying an aromatic polyamide with an acidic
functional group to form an acid-modified aromatic polyamide as recited in
claim 5, we agree with the Examiner that the burden is shifted to Appellant
to show that the acid-modified aromatic polyamide taught by Masuda and
encompassed by claim 5 does not exhibit the recited functional property, i.e.,
enhanced adhesion strength. In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
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Application 12/525,336
Although paragraphs 6 and 7 of the Declaration describe an experiment
comparing the adhesion strength exhibited by an acid-modified aromatic
polyamide to that exhibited by an unmodified aromatic polyamide, such a
comparison does not provide any indication of whether Masuda' s aromatic
polyamide modified with a monacidic functional group (terminal blocking
agent) would exhibit enhanced or reduced adhesion relative to an
unmodified aromatic polyamide. Thus, on this record, Appellant does not
provide adequate objective evidence or sufficient scientific basis to establish
that Masuda's aromatic polyamide modified with a monoacidic functional
group (terminal-blocking agent) is not an "acid-modified" aromatic
polyamide that would exhibit enhanced adhesion as recited in claim 5.
(App. Br. 4--13; Sato Declaration i-fi-13-7.)
Accordingly, Appellant does not identify reversible error in the
Examiner's finding that Masuda's nylon 9T (aromatic polyamide) modified
with a monocarboxylic acid terminal-blocking agent (acid functional group)
is an "acid-modified" aromatic polyamide according to the broadest plain
meaning6 of "acid-modified" aromatic polyamide, and would therefore
("Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.").
6 Morris, 127 F.3d at 1054-55 ("[T]he PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
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Application 12/525,336
' .. .. • .. '.. .. ''7 • ' .. ' .. ro .. .. .... • naturally or mnerenuy result' m at least some aegree or ennancea aanes10n
between the nylon 9T and adjacent layers. We, therefore, sustain the
Examiner's rejection of claims 5 and 6 under 35 U.S.C. § 102(b) as
anticipated by Masuda.
Rejection of claims 5, 6, and 8 as Obvious over Masuda
For the reasons stated supra, we also sustain the Examiner's§ 103(a)
rejection of claims 5 and 6 based on Masuda. Thus, we only need to address
the rejection of claim 8 under§ 103(a). Claim 8 requires the inner and outer
resin layers to comprise an acid-modified polyethylene resin.
Appellant does not dispute the Examiner's finding that Masuda
discloses a multi-layer fuel pipe tube that includes layers (a) and ( c)
comprising nylon 11, in addition to polyamide resin layer (b ). (Compare
Final Act. 8 with App. Br. 8-13.) Nor does Appellant dispute the
Examiner's finding that Masuda discloses that the multi-layer tube also
comprises an adhesive layer, in addition to layers (a), (b), and (c), to enhance
adhesion between the layers. (Compare Final Act. 8 with App. Br. 8-13.)
Nor does Appellant dispute the Examiner's finding that Masuda discloses
that acid-modified polyethylene resins are suitable materials for the adhesive
layer. (Compare Final Act. 8 with App. Br. 8-13.) Based on these
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant's specification.")
7 Best, supra; see also In re Papesch, 315 F.2d 381, 391 (CCPA 1963) ("a
compound and its properties are inseparable").
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Application 12/525,336
undisputed findings, the Examiner concludes that it would have been
obvious to one of ordinary skill in the art at the time of the invention to
include an acid-modified polyethylene adhesive between layer (b) and each
of layers (a) and (c) ofMasuda's multi-layer fuel tube to enhance adhesion
between the layers, thus arriving at the inner and outer resin layers
comprising an acid-modified polyethylene resin recited in claim 8. (Final
Act. 8-9.)
Appellant repeats the arguments made in connection with the rejection
of claim 5 as anticipated by Masuda (App. Br. 8-12), and additionally
argues that the Examiner improperly dismisses the opinion evidence in
paragraph 5 of the Sato Declaration by conflating it with the comparative
data evidence in paragraphs 6 and 7 of the Declaration, and by contending
that the opinion presented in paragraph 5 must be supported by factual
evidence. (App. Br. 12-13.) However, we find no reversible error in the
Examiner's assessment of all of the nonobvious evidence and statements
presented in the Declaration in light of the evidence of obviousness
presented in Masuda. In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir.
1990) (citing In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)) ("After a
prima facie case of obviousness has been made and rebuttal evidence
submitted, all the evidence must be considered anew."); see also Velander
v. Garner, 348 F.3d at 1371 ("In giving more weight to prior publications
than to subsequent conclusory statements by experts, the Board acted well
within [its] discretion."). Nor do we find any reversible error in the
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Application 12/525,336
Examiner's finding that such opinion in the absence of any corroborating
evidence is entitled to little weigh. In re Am. Acad. of Sci. Tech Ctr., 367
F.3d at 1368; In re Etter, 756 F.2d 852, 859-60 (Fed. Cir. 1985) (en bane)
(opinion affidavit asserting that the reference disclosed obsolete technology
was correctly characterized by the board "as merely representing opinion[]
unsupported by facts and thus entitled to little or no weight." (Citations
omitted)). As discussed above, on this record, Appellant does not provide
any objective evidence establishing that Masuda's aromatic polyamide
modified with a monoacidic terminal-blocking agent is not an "acid-
modified" aromatic polyamide that would exhibit enhanced adhesion. (App.
Br. 4--13; Sato Declaration i-fi-13-7.)
It follows that Appellant does not identify reversible error in the
Examiner's determination that the evidence of obviousness, on balance,
outweighs the evidence of unobviousness relied upon by Appellant.
Accordingly, we sustain the Examiner's rejection of claims 5, 6, and 8 under
§ 103(a).
Rejection of claim 23 as Obvious over Masuda
Claim 23 depends from claim 8 and requires the acid-modified
polyethylene resin to have a tensile breaking strength of not less than 12
MP a, a breaking elongation of not less than 3 00 %, and an MFR of not less
than 0.5 g/min.
As discussed above, Appellant does not dispute the Examiner's
finding that Masuda discloses a multi-layer fuel pipe tube that includes an
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Application 12/525,336
adhesive layer that can be made from an acid-modified polyethylene resin.
(Compare Final Act. 8 with App. Br. 13-15.) The Examiner acknowledges
that Masuda is silent as to the tensile breaking strength, breaking elongation,
and MFR of the acid-modified polyethylene resin. (Final Act. 9.) However,
the Examiner finds that because the acid-modified polyethylene resin
disclosed in Masuda is identical or substantially identical to the acid-
modified polyethylene resin recited in claim 23, it would inherently have a
tensile breaking strength of not less than 12 MP a, a breaking elongation of
not less than 300 %, and an MFR of not less than 0.5 g/min, which
Appellant does not dispute. (Compare Final Act. 9 with App. Br. 13-15.)
Instead, Appellant argues that Masuda does not disclose an
embodiment of a multilayer resin tube that includes a barrier layer
comprising acid-modified PA9T, and adjacent inner and outer resin layers
comprising an acid-modified polyethylene resin. (App. Br. 13-15.)
Appellant contends that arriving at such a structure requires picking and
choosing an acid modified PE resin from a large number of possible
materials used as the adhesive layer described in Masuda, which is improper
in a rejection based on inherency. (Id.)
However, Appellant's arguments are unpersuasive of reversible error
because the properties of the acid-modified polyethylene resin recited in
claim 23 would have naturally flowed from Masuda's suggestion of forming
a multi-layer tube including such acid-modified polyethylene resin as an
adhesive layer. Appellant's Specification indicates that the functional
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groups in the acid-modified polyethylene inner and outer resin layers adhere
to functional groups in the barrier layer, serving to enhance the adhesion
strength between the layers. (Spec. i-fi-120, 22.) Masuda discloses an acid-
modified polyethylene resin that is used for the same purpose-to enhance
adhesion between the layers of Masuda's multi-layer resin tube. (Masuda i1
79-80.) Although Masuda does not explicitly disclose the tensile breaking
strength, breaking elongation, and MFR of the acid-modified polyethylene
adhesive, Masuda's disclosure of the acid-modified polyethylene adhesive
recited in claim 23 not only would have suggested such adhesive, but also
would have suggested any and all of the intrinsic or inherent properties
associated with such adhesive, such as those properties recited in claim 23.
In re Papesch, 315 F.2d 381, 391(CCPA1963) ("[A] compound and all of
its properties are inseparable"); In re Spada, 911 F.2d 705, 709 (Fed. Cir.
1990) (explaining that a chemical composition and its properties are
inseparable.); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) ("The fact
that appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious.").
Appellant does not dispute the Examiner's finding that Masuda's
acid-modified polyethylene resin would have a tensile breaking strength, a
breaking elongation, and an MFR as recited in claim 23. (Compare Final
Act. 9 with App. Br. 13-15.) Nor does Appellant demonstrate the criticality
of the ranges of these parameters recited in claim 23. (App. Br. 13-15.) In
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re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Accordingly, Appellant
does not identify reversible error in the Examiner's rejection of claim 23
under 35 U.S.C. § 103(a) as obvious over Masuda, and we therefore sustain
this rejection as well.
CONCLUSION
In view of the reasons set forth in the Final Action, Answer, and
above, we affirm the Examiner's § 102 (b) rejection of claims 5 and 6 and
§ 103(a) rejection of claims 5, 6, 8, and 23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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