Ex Parte Sekine

Board of Patent Appeals and Interferences

Jan 20, 2012

11596290 (B.P.A.I. Jan. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEIJI SEKINE
____________

Appeal 2011-002826
Application 11/596,290
Technology Center 1700
____________

Before CHUNG K. PAK, LINDA M. GAUDETTE, and KAREN M.
HASTINGS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
refusal to allow claims 3, 4, and 12 through 15, all of the pending claims in
the above-identified application.1 An oral hearing was held on January 11,
2012. We have jurisdiction under 35 U.S.C. § 6.

1 See Appeal Brief (“App. Br.”) filed August 24, 2010, 2; Reply Brief
(“Reply Br.”) filed November 24, 2010, 1-4; and Examiner’s Answer
(“Ans.”) filed October 1, 2010, 2.

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STATEMENT OF THE CASE
The subject matter on appeal “relates to a molded product of a fiber-
reinforced resin excellent in the transparency [and] [m]ore particularly,
. . . a molded product of a polycarbonate resin reinforced with a glass fiber”
(Spec. 1, ll. 7-10). Details of the appealed subject matter are recited in
representative claims 3, 12, and 142 reproduced from the Claims Appendix
to the Appeal Brief as shown below:
3. A glass fiber for reinforcing a polycarbonate resin comprising, as
inorganic components in the whole glass fiber:

from 50 to 60 mass% of silicon dioxide (SiO2),

from 10 to 15 mass% of aluminum oxide (AlO3),

from 15 to 25 mass% of calcium oxide (CaO),

from 4.1 to 5 mass% of titanium oxide (TiO2),

from 0 to 5 mass% of magnesium oxide (MgO),

from 0 to 3.9 mass% of zinc oxide (ZnO),

from 0 to 3.9 mass% of barium oxide (BaO),
0 mass% of zirconium oxide (ZrO2),

2 Appellant has grouped claims 3 and 4, claims 12, 13, and 15, and claim 14,
respectively as separate groups and presented arguments directed to these
different groups of claims. Therefore, for purposes of this appeal, we select
claims 3, 12, and 14 to decide the propriety of the Examiner’s rejections set
forth in the Answer. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple
claims subject to the same ground of rejection are argued as a group by
appellant, the Board may select a single claim from the group of claims that
are argued together to decide the appeal with respect to the group of claims
as to the ground of rejection on the basis of the selected claim alone.”).

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from 0 to 2 mass% of lithium oxide (Li2O),

from 0 to 2 mass% of sodium oxide (Na20) and

from 0 to 2 mass% of potassium oxide (K2O),

wherein

a total content of the lithium oxide (Li2O), sodium oxide (Na2O) and
potassium oxide (K2O) is from 0 to 2 mass%,

a total content of the zinc oxide (ZnO) and barium oxide (BaO) is
from 1 to 3.9 mass%,

a total content of the titanium oxide (TiO2), zinc oxide (ZnO) and
barium oxide (BaO) is from 6 to 8 mass%

and the refractive index of the above glass fiber is from1.583 to 1.586.

12. A transparent molded polycarbonate resin product obtained by
molding a resin composition comprising:

a glass fiber; and

a polycarbonate resin;

wherein

a refractive index of the glass fiber is from 1.583 to 1.586, and

the glass fiber comprises, based on the whole glass fiber:

from 50 to 60 mass% of silicon dioxide (SiO2),

from 10 to 15 mass% of aluminum oxide (Al2O3),

from 15 to 25 mass% of calcium oxide (CaO),
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from 4.1 to 5 mass% of titanium oxide (TiO2),

from 0 to 5 mass% of magnesium oxide (MgO),

from 0 to 3.9 mass% of zinc oxide (ZnO),

from 0 to 3.9 mass% of barium oxide (BaO),

0 mass% of zirconium oxide (ZrO2),

from 0 to 2 mass% of lithium oxide (Li2O),

from 0 to 2 mass% of sodium oxide (Na2O) and

from 0 to 2 mass% of potassium oxide (K2O),

wherein

a total content of the lithium oxide (Li2O), sodium oxide
(Na2O) and potassium oxide (K2O) is from 0 to 2 mass%,

a total content of the zinc oxide (ZnO) and barium oxide (BaO)
is from 1 to 3.9 mass%, and

a total content of the titanium oxide (TiO2), zinc oxide (ZnO)
and barium oxide (BaO) is from 6 to 8 mass%.

14. The transparent molded polycarbonate resin product according to
Claim 12, wherein the difference between the refractive index of the
polycarbonate resin and the refractive index of the glass fiber is at most
0.001.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 3 of the
Answer:
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Erickson US 3,876,481 Apr. 8, 1975
Akamine US 2003/0158371 A1 Aug. 21, 2003
Yoshida JP 09-1655063 Jun. 24, 1997

Appellant seeks review of the following grounds of rejection
maintained by Examiner in the Answer:
1) Claims 3, 4, and 12 through 15 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Akamine; and
2) Claims 12 through 15 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Yoshida and Erickson. (See
App. Br. 5, Ans. 3, and Reply Br. 1-4.)

RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUE,
ANALYSIS AND CONCLUSION
I. CLAIMS 3 AND 4
With respect to claims 3 and 4, the dispositive question raised by the
Examiner and Appellant is: Has the Examiner reversibly erred in
determining that Akamine would have suggested the claimed glass fiber
within the meaning of 35 U.S.C. § 103(a)? On this record, we answer this
question in the negative.
As correctly found by the Examiner at pages 3 and 4 of the Answer,
Akamine teaches a glass fiber having the claimed ingredients in amounts
either within or substantially overlapping with the claimed amounts of the
same ingredients, with its refractive index being from 1.570 to 1.600

3 Our reference to this Japanese Patent is to the corresponding English
translation of record provided by the Examiner.
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inclusive of the claimed refractive index of 1.583 to 1.586. Consistent with
these teachings of Akamine, the Rule 132 declaration executed by Keiji
Sekine on July 9, 2009 relied upon by Appellant also indicates that the glass
fiber compositions taught by Akamine include those having, among other
things, the claimed refractive indexes.
It follows that the Examiner has not reversibly erred in determining
that Akamine would have suggested the claimed glass fiber within the
meaning of 35 U.S.C. § 103(a). As stated by our reviewing court in In re
Peterson, 315 F.3d 1325, 1329 (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. [(Emphasis
original.)]

See also Merck & Co., Inc. v. Biocraft Labs, 874 F.2d 804, 807 (Fed. Cir.
1989) (The fact that a reference “discloses a multitude of effective
combinations does not render any particular formulation less obvious.”); In
re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of
claims affirmed in light of prior art teaching that “hydrated zeolites will
work” in detergent formulations, even though “the inventors selected the
zeolites of the claims from among ‘thousands' of compounds”)
In reaching this determination, we have considered Appellant’s
arguments directed to polycarbonate resins at pages 6 and 7 of the Appeal
Brief. However, these arguments fail at the outset because they are not
based on the limitation which is required by claims 3 and 4. In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant's arguments fail from the outset
because . . . they are not based on limitations appearing in the claims.”)
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II. CLAIMS 12, 13, AND 15 BASED ON AKAMINE
With respect to claims 12, 13, and 15, the dispositive question raised
by the Examiner and Appellant is: Has the Examiner reversibly erred in
determining that one of ordinary skill in the art, armed with the knowledge
reflected in Akamine, would have been led to form a transparent molded
polycarbonate resin product having the above glass fiber as required by
claim 12? On this record, we also answer this question in the negative.
As correctly found by the Examiner at pages 3-6 of the Answer,
Akamine teaches forming a transparent molded polycarbonate resin article
having glass fibers inclusive of those having the claimed amounts of the
claimed ingredients and the claimed refractive index. (See also Akamine,
paras. 0013, 0035, 0047, and 0048.) Thus, we find no reversible error in the
Examiner’s determination that one of ordinary skill in the art, armed with the
knowledge of Akamine, would have been led to employ glass fibers, such as
those claimed, in forming the transparent molded polycarbonate resin article
taught by Akamine. Peterson, 315 F.3d at 1329.
III. CLAIMS 12, 13, AND 15 BASED ON YOSHIDA and ERICKSON
With respect to claims 12, 13, and 15, the dispositive question raised
by the Examiner and Appellant is: Has the Examiner reversibly erred in
determining that one of ordinary skill in the art, armed with the knowledge
reflected in the combination of Yoshida and Erickson, would have been led
to form a transparent molded polycarbonate resin product having the
claimed glass fibers as required by claim 12? On this record, we also answer
this question in the negative.
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As correctly found by the Examiner at pages 6 through 8 of the
Answer, Yoshida teaches forming a molded polycarbonate resin product
having excellent transparency with an aromatic polycarbonate resin and
glass fibers having ingredients, such as MgO, TiO2, and ZnO, but not B2O3
and F2. (See also Yoshida, paras. 0001, 0009, and 0024.) Although Yoshida
does not specify the detail of its glass fiber compositions, Erickson teaches
that glass fibers having specific compositions comprising MgO, TiO2, and
ZnO, but not B2O3 and F2,(which are potential air and water pollutants) are
known. In particular, Erickson teaches that glass fibers having the claimed
ingredients in amounts either within or substantially overlapping with the
claimed amounts of the same ingredients, with its exemplified glass fibers
having one or two ingredient having the amount(s) just outside those
claimed. (See Erickson, col. 2, ll. 20-66 and cols. 3 and 4, Table 1, Example
Nos. 4 and 9.) We find that the refractive index properties of the claimed
glass fiber compositions would have naturally flowed from Erickson’s
suggestion of the claimed glass fiber composition since the claimed glass
fiber compositions and their attendant properties are inseparable. See In re
Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record
explicitly discusses the [limitation], [applicants’] application itself instructs
that [the limitation] is not an additional requirement imposed by the claims
on the [claimed invention], but rather a property necessarily present in [the
claimed invention]”); In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“a
compound and all of 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
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prior art cannot be the basis for patentability when the differences would
otherwise be obvious.") Indeed, the Rule 132 declaration executed by Keiji
Sekine on July 9, 2009 relied upon by Appellant indicates that the glass fiber
compositions taught or suggested by Erickson include those having, among
other things, the claimed refractive indexes, with one of its exemplified glass
fiber compositions having a refractive index of 1.580 which is very close to
the claimed refractive index value of 1.583. Moreover, as acknowledged by
Appellant at pages 10 and 11 of the Appeal Brief, the determination of
refractive index values of the polycarbonate resin and glass fibers via the
conventional JIS K 7142 method is well within the ambit of one of ordinary
skill in the art.4
Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ glass fibers,
including the claimed glass fibers suggested by Erickson, as the glass fibers
of the transparent molded polycarbonate resin product taught by Yoshida.
Peterson, 315 F.3d at 1329. It follows that the Examiner has not reversibly
erred in determining that one of ordinary skill in the art armed with the
knowledge reflected in the collective teachings of Yoshida and Erickson
would have been led to form a transparent molded polycarbonate resin
product having the claimed glass fibers as required by claims 12, 13, and 15
within the meaning of 35 U.S.C. § 103(a).

4 The knowledge attributable to one of ordinary skill in the art includes what
was admittedly known in the art by Appellant at the time of the invention.
See In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The admitted prior
art in applicant’s Specification may be used in determining the patentability
of a claimed invention.); see also In re Davis, 305 F.2d 501, 503 (CCPA
1962).
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IV. CLAIM 14 BASED ON AKAMINE
With respect to claim 14, the dispositive question raised by the
Examiner and Appellant is: Has the Examiner reversibly erred in
determining that Akamine would have suggested forming a transparent
molded polycarbonate resin product having polycarbonate resin and glass
fibers, with their refractive index difference being at most 0.001? On this
record, we also answer this question in the negative.
There is no dispute that “Akimine [sic, Akamine] . . . teaches that it is
known in the art to match the refractive index of the polycarbonate resin and
glass fibers to obtain transparency” in forming a transparent molded
polycarbonate product. (Compare Ans. 5 with App. Br. 5-14; see also
Akamine, paras. 0002 and 0035). Although the glass fibers in the
polycarbonate resin composition can rise to the surface of the molded
polycarbonate product to adversely affect the product’s transparency and
surface smoothness as argued by Appellant at page 6 of the Appeal Brief,
Akamine teaches at page 1, paragraphs 0007 and 0009, that such
transparency and surface smoothness problems can be overcome by adding 3
to 20% of glass fibers having a refractive index of 1.570 to 1.600 and 5 to
10% by weight of a plasticizer. Nowhere does Akamine preclude the
employment of a polycarbonate resin having the same refractive index level
as that of glass fibers as was commonly done. Id.
It follows that we find no reversible error in the Examiner’s
determination that Akamine would have suggested forming a transparent
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molded polycarbonate resin product via employing polycarbonate resin and
glass fibers, which have the same or substantially the same refractive
indexes, (e.g., their refractive indexes being 1.583-1.586 with the difference
in their refractive indexes being at most 0.001) within the meaning of 35
U.S.C. § 103(a).
In reaching this determination, we have noted that Appellant does not
allege that the claimed invention imparts unexpected results. The Rule 132
declaration executed by Keiji Sekine on February 16, 2010 referred to by
Appellant merely shows that the transparency of the molded polycarbonate
product is improved when the refractive indexes of the reinforcing glass
fibers and polycarbonate resin are at the same levels as taught by the prior
art references, including Akamine. In re Skoner, 517 F.2d 947, 948 (CCPA
1975) (Expected results are evidence of obviousness just as unexpected
results are evidence of unobviousness).
V. CLAIM 14 BASED ON YOSHIDA AND ERICKSON
With respect to claim 14, the dispositive question raised by the
Examiner and Appellant is: Has the Examiner reversibly erred in
determining that the combination of Yoshida and Erickson would have
suggested forming a transparent molded polycarbonate resin product having
polycarbonate resin and glass fibers, with their refractive index difference
being at most 0.001? On this record, we also answer this question in the
negative.
As correctly found by the Examiner at page 6 of the Answer, Yoshida
teaches forming a transparent molded polycarbonate resin product by
employing an aromatic polycarbonate resin having a refractive index of
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1.585 and glass fibers having a refractive index difference of less than 0.015
from that of the aromatic polycarbonate resin. According to Yoshida, the
glass fibers employed must have ingredients, such as MgO, TiO2, and ZnO,
but not B2O3 and F2 as indicated supra. Although Yoshida does not specify
the detail of its glass fiber compositions, Erickson teaches that glass fibers
having specific compositions comprising MgO, TiO2, and ZnO, but not B2O3
and F2,(which are potential air and water pollutants) are known. In
particular, Erickson teaches that glass fibers having the claimed ingredients
in amounts either within or substantially overlapping with the claimed
amounts of the same ingredients consistent with the broad teaching of
Yoshida. Moreover, as indicated supra, Appellant acknowledges that the
determination of refractive index values of the polycarbonate resin and glass
fibers via the conventional JIS K 7142 method is well within the ambit of
one of ordinary skill in the art. In other words, one of ordinary skill in the
art would have determined the refractive index values of the glass fiber
compositions taught by Erickson per teaching of Yoshida, and would have
employed those glass fiber compositions having a refractive index value
equal to or very close to1.585, which is the refractive index value of the
aromatic polycarbonate resin employed in the transparent molded
polycarbonate product taught by Yoshida.
It follows that we find no reversible error in the Examiner’s
determination that the combination of Yoshida and Erickson would have
suggested forming a transparent molded polycarbonate resin product via
employing polycarbonate resin and glass fibers, which have the same or
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substantially the same refractive indexes (e.g., both refractive indexes being
1.585) within the meaning of 35 U.S.C. § 103(a).
In reaching this determination, we have noted that Appellant does not
allege that the claimed invention imparts unexpected results. The Rule 132
declaration executed by Keiji Sekine on February 16, 2010 referred to by
Appellant merely shows that the transparency of the molded polycarbonate
product is improved when the refractive indexes of the reinforcing glass
fibers and polycarbonate resin are at the same levels as taught by the prior
art references, including Yoshida. Skoner, 517 F.2d at 950 (Expected results
are evidence of obviousness just as unexpected results are evidence of
unobviousness).
ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner rejecting claims 3, 4,
and 12 through 15 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Akamine is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 12 through 15 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Yoshida and Erickson is AFFIRMED; and
FURTHER ORDERED that 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)(iv).
AFFIRMED

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