Ex Parte Takeda et alDownload PDFPatent Trial and Appeal BoardDec 6, 201613805596 (P.T.A.B. Dec. 6, 2016) Copy Citation 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. 13/805,596 03/01/2013 Hiroyuki Takeda P23387US00 8556 38834 7590 12/08/2016 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 1250 CONNECTICUT AVENUE, NW SUITE 700 WASHINGTON, DC 20036 EXAMINER NILAND, PATRICK DENNIS ART UNIT PAPER NUMBER 1762 NOTIFICATION DATE DELIVERY MODE 12/08/2016 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): patentmail @ whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROYUKI TAKEDA, KEIICHI OZONO MICHIYA NAKASHIMA, and YOSHINORI KANAGAWA Appeal 2016-006455 Application 13/805,596 Technology Center 1700 Before BRADLEY R. GARRIS, JULIA HEANEY, and MONTE T. SQUIRE Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review pursuant to 35 U.S.C. § 134(a) of a decision of the Examiner to reject claims 1—3, 5, 8, 11, 12, and 20 of Application 13/805,596. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2016-006455 Application 13/805,596 BACKGROUND The subject matter on appeal relates to an oxygen-barrier film which may be used in packaging of food and beverages. Specification (“Spec.”) 12. The oxygen-barrier film uses an adhesive containing mainly polyester and seeks to provide excellent oxygen impermeability while maintaining satisfactory adhesion between the polyester and a substrate, or between laminated layers of a multilayer film. Spec. 6, 175—77. Claim 1, reproduced below, is directed to the adhesive: 1. An oxygen-barrier adhesive comprising: an amorphous polyester polyol, which is obtained by polycondensation of a polyvalent carboxylic acid component and a polyhydric alcohol component, a curing agent capable of reacting with the amorphous polyester polyol, and a solvent, wherein the polyvalent carboxylic acid component comprises at least one type of ortho-oriented aromatic dicarboxylic acid or anhydride thereof, the polyhydric alcohol component comprises at least one compound selected from the group consisting of ethylene glycol, propylene glycol, butylene glycol, neopentyl glycol and cyclohexanedimethanol, and an amount of the ortho-oriented aromatic dicarboxylic acid or anhydride thereof relative to a total mass of the polyvalent carboxylic acid component is from 70 to 100% by mass. App. Br., Claims Appx. REFERENCES The Examiner relied upon the following prior art in rejecting the claims on appeal: Subonen US 5,009,884 Apr. 23, 1991 2 Appeal 2016-006455 Application 13/805,596 Yoshida et al. (“Yoshida”) US 2007/0059541 Mar. 15, 2007 Korshak, Heterochain polyesters I. Polyesters of isomeric phthalic esters, Bulletin of the Academy of Sciences of the USSR, Division of Chemical Science, Volume 6, Issue 6 pp. 749-755 (1957) (“Korshak”). THE REJECTION Claims 1—3, 5, 8, 11, 12, and 201 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Yoshida, Suhonen, and Korshak. DISCUSSION Appellants argue the claims as a group. App. Br. 4—10.2 We therefore limit our discussion to claim 1 as representative of the appealed claims. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Yoshida discloses adhesives that encompass claim 1. Final Act. 4, citing Yoshida 121. Specifically, Yoshida describes a polyester-based resin layer applied to an inorganic thin film formed on a plastic substrate packaging material, which resin enhances the film’s oxygen impermeability and adhesion properties. Yoshida H 8—9, 12. Yoshida further describes that the polyester-based resin is formed from reaction of a polycarboxylic acid and polyhydric alcohol, and that the polycarboxylic acid component may include orthophthalic acid, among seven other 1 Claim 9 is objected to as being dependent upon rejected claim 1, but otherwise allowable if rewritten in independent form. Final Act. 11. 2 The Appeal Brief contains a page numbering error: all pages are numbered “2.” In order to provide page number citations herein, we have assigned a sequential page number to each successive page of the Appeal Brief for pages 3—11. 3 Appeal 2016-006455 Application 13/805,596 polycarboxylic acids. Yoshida 121. Yoshida teaches that the adhesion and gas-barrier properties of its polyester-based resin can be improved by optimizing its glass transition temperature and molecular weight. Yoshida 1122-23. Appellants argue against the rejection on numerous grounds, including the following: (1) Yoshida 121 does not teach orthophthalic acid as the only acid, and all of Yoshida’s examples use only a mixture of terephthalic acid and isophthalic acid (App. Br. 5); (2) Yoshida fails to provide a person of ordinary skill in the art with a reasonable expectation of success in formulating an adhesive, let alone an oxygen-barrier adhesive (App. Br. 6); and (3) Suhonen and Korshak do not offer additional guidance as to whether any other polyvalent carboxylic acid would have been successful (App. Br. 7). Appellants’ argument concerning Yoshida’s teaching of orthophthalic acid lacks persuasive merit because Yoshida explicitly discloses that the polycarboxylic acid component of its polyester-based resin may include orthophthalic acid. Yoshida 121. Although Yoshida undisputedly does not exemplify a polycarboxylic acid comprising orthophthalic acid (e.g., Final Act. 4), a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804 (Fed. Cir.), cert, denied, 493 U.S. 975 (1989). Further, Appellants’ reliance on the Comparative Examples of the Specification as evidence that the polyester resins of Yoshida’s examples would have poor adhesion and gas-barrier properties is ineffective (App. Br. 6) because it does not undercut Yoshida’s explicit disclosure of orthophthalic acid, as well as improved adhesion and gas-barrier properties. Yoshida H 22—23. Similarly, the comparative 4 Appeal 2016-006455 Application 13/805,596 examples using isophthalic acid in the Nakashima/Takeda/Ozono Declaration (App. Br. 6—7) are of limited probative value because they do not address Yoshida’s teaching of orthophthalic acid or its description of oxygen impermeability of its laminates. We have considered Appellants’ arguments concerning Suhonen and Korshak. App. Br. 7—8. We determine as discussed above, however, that Yoshida alone is sufficient to support the obviousness rejection. Therefore, the Examiner’s findings concerning Suhonen and Korshak are ancillary and we need not address Appellants’ arguments of error in those findings. Appellants further argue that the oxygen-barrier adhesive recited in claim 1 provides unexpected improvements in terms of adhesive strength and oxygen impermeability over the composition of Yoshida, and thereby rebuts the prima facie case of obviousness. App. Br. 9-10. Appellants rely on the experimental results in Tables 3 and 4 of the Specification, and assert that inventive Examples 1—6 of Table 3 exhibit “significantly improved laminate strength and oxygen transmission rate” as compared to results of the same tests for the Comparative Examples 1—5. App. Br. 10. We note, however, that both Example 1 and Comparative Example 1 (which correspond to Production Examples 1 and 7, respectively) have phthalic anhydride as the polyvalent carboxylic acid component (Specification | 87, 93). The examples differ in their polyhydric alcohol component, not the polyvalent carboxylic acid component, which is the basis on which Appellants attempt to distinguish Yoshida. Further, as the Examiner notes (Ans. 28), the composition of the substrate materially affects adhesive strength, but claim 1 is not limited to any particular substrate. Thus, the substrates of the Examples in the Specification on which Appellants rely to 5 Appeal 2016-006455 Application 13/805,596 show “significantly improved laminate strength” are not commensurate in scope with claim 1. Id. We are not persuaded that Appellants have met the burden of production to show that the difference between the claimed invention and Yoshida was an unexpected difference. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). In addition to the shortcomings discussed above, Appellants have not identified any averment in the Specification or any other evidentiary submission asserting that the results of the laminate strength and oxygen transmission rate tests were unexpected; the Specification merely states that laminate strength was “excellent” and oxygen-barrier properties “superior.” Specification 1114. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (explaining that Geisler failed to carry the burden of establishing unexpected results because “Geisler made no such assertion [of unexpected results] in his application . . . [or] submit any such statement through other evidentiary submissions, such as an affidavit or declaration . . . .) (citing In re Orfeo, 440 F.2d 439, 441 (CCPA 1971)). Accordingly, we affirm the rejection. SUMMARY We affirm the rejection of claims 1—3, 5, 8, 11, 12, and 20 as unpatentable under 35 U.S.C. § 103(a). AFFIRMED 6 Copy with citationCopy as parenthetical citation