Ex Parte Wakizaka et al

Board of Patent Appeals and Interferences

Dec 10, 2009

10381055 (B.P.A.I. Dec. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YOSUHIRO WAKIZAKA and DAISUKE UCHIDA
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Appeal 2009-005971
Application 10/381,055
Technology Center 1700
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Decided: December 10, 2009
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Before CHARLES F. WARREN, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 7-16, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a curable composition. Claim 7 is illustrative:

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7. A curable composition containing:

(i) an alicyclic olefin polymer or an aromatic polyether polymer,

(ii) a benzotriazole compound as an ultraviolet-ray absorbing agent, and

(iii) a nitrogen-type curing agent.

The References
Oishi 5,869,184 Feb. 9, 1999
Noda 6,372,355 B1 Apr. 16, 2002

The Rejections
The claims stand rejected as follows: claims 13 and 15 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter the Appellants
regard as the invention; claims 7, 10-14 and 16 under 35 U.S.C. § 102(e)
over Noda; and claims 7-14 and 16 under 35 U.S.C. § 102(b) over Oishi.1
OPINION
We affirm the rejection under 35 U.S.C. § 112, second paragraph, and
the rejection under 35 U.S.C. § 102(b) over Oishi, and reverse the rejection
under 35 U.S.C. § 102(e) over Noda.

Rejection under 35 U.S.C. § 112, second paragraph
The Appellants do not challenge the rejection under 35 U.S.C. § 112,
first paragraph (Br. 9). Accordingly, we summarily affirm that rejection.

1 A rejection of claims 7-14 and 16 under 35 U.S.C. § 102(e) over Hyman,
US 2003/0035917, is withdrawn in the Examiner’s Answer (Ans. 3).
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Rejection under 35 U.S.C. § 102(e) over Noda
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the Appellants’ benzotriazole compound can be a
substituent of the alicyclic olefin polymer or that Noda discloses an alicyclic
polymer or an aromatic polyether polymer?
Findings of Fact
Noda discloses a polymer made from a monomer mixture which can
include a monomer having a benzotriazole ultraviolet absorptive group
(col. 4, ll. 4-28 (formula 1) ; col. 7, ll. 6-67).
Analysis
The Examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where all of the claim limitations appear in a
single reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
The Examiner argues that the benzotriazole group in Noda’s
formula 1 monomer corresponds to the Appellants’ benzotriazole compound,
and that the monomer has a substituent (R1) that can be an alicyclic
hydrocarbon group (Ans. 6).
The Appellants argue that the Appellants’ claim 7 requires that the
benzotriazole compound and the alicyclic olefin polymer are separate
components (Br. 14-15; Reply Br. 4).
The Examiner responds that “it is NOT clear that ‘in the claimed
invention “an alicylic olefin” polymer (i) and “a benzotriazole compound”
(ii) are separate molecules, and are a mixture’” (Ans. 11).
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“[D]uring 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).
Claim 7 appears to recite three composition components, the first two
of which are an alicyclic olefin polymer and a benzotriazole compound, and
the Appellants’ Specification indicates that the benzotriazole compound is a
separate component from the alicyclic olefin polymer (Spec. 12:10-13:9).
The Examiner has not pointed to any portion of the Appellants’
Specification which indicates that the benzotriazole compound can be part of
the alicyclic olefin polymer.
Regarding the Appellants’ claim 7 requirement of an alicyclic olefin
polymer or an aromatic polyether polymer, the Examiner argues that a
polymer made from Noda’s formula 1 monomer is an alicyclic olefin
polymer because the monomer has a vinyl group at which the
polymerization takes place and an alicyclic hydrocarbon substituent (R1)
(Ans. 6, 9-10).
The Appellants argue that in the alicyclic olefin polymers formed
from their disclosed monomers by the disclosed mechanisms of ring-opening
polymerization or addition polymerization, followed by any required
hydrogenation (Spec. 5:11 – 9:32), the alicyclic structure is in the backbone
chain, whereas Noda’s formula 1 monomer polymerizes to form a
poly(meth)acrylate having an alicyclic hydrocarbon substituent (Br. 11-14;
Reply Br. 2-3).
The Examiner responds (Ans. 10):
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Appellant is relying upon a definition of alicyclic olefin polymer for
which there is no support. Appellant’s specification does not define
an “alicyclic olefin polymer” as a polymer with an alicyclic moiety in
the backbone chain. . . . Even if the specification did include
depictions of exemplary structures, such depictions do not, in-and-of
themselves, serve to provide a limiting definition of an “alicyclic
olefin polymer”.

The Appellants respond that
“an alicyclic olefin polymer or an aromatic polyether polymer” tells
the skilled artisan the structure of monomers of the polymer itself and
not the side chains of the polymer. Polymers are always identified by
their main monomers first, before the description of any side chains.
Any other reading would suggest that all polymer names may not at
all refer to the polymer (or monomers) itself, but actually side chains.
[Reply Br. 2-3]

The Examiner also argues that the aromatic polyether polymer in the
Appellants’ claim 7 is met by Noda’s monomer having a reactive silyl group
(formula 7, col. 5, ll. 60-67) because the silyl group can include a phenyl
ring (Ans. 10).
The Appellants respond that
in the case where R13 is phenyl, the structure (7) is a vinyl ether
compound having phenoxysilyl group as a substituent. When this
compound is polymerized, a resulting polymer is polyvinylether
having phenoxysilyl group as a substituent. No aromatic polyether
can be obtained.
“Aromatic polyether” is a polyether having a repeating unit
“-Ar-O-” as the backbone chain (Ar is an aromatic ring).
Polymerization of the formula (7) cannot form an aromatic polyether.
[Reply Br. 3-4]

The Examiner has not provided evidence that one of ordinary skill in
the art, when giving “alicyclic olefin polymer” or “aromatic polyether
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polymer” its broadest reasonable interpretation consistent with the
Appellants’ Specification, would have interpreted either of those names as
being based upon the polymer’s substituents as argued by the Examiner. See
Translogic, 504 F.3d at 1256. Thus, the Examiner has not carried the burden
of establishing a prima facie case of anticipation of the Appellants’ claimed
composition by Noda. See Spada, 911 F.2d at 708; King, 801 F.2d at 1327.
Conclusion of Law
The Appellants have shown reversible error in the Examiner’s
determination that the Appellants’ benzotriazole compound can be a
substituent of the alicyclic olefin polymer or that Noda discloses an alicyclic
polymer or an aromatic polyether polymer.
Rejection under 35 U.S.C. § 102(b) over Oishi
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that Oishi discloses an aliphatic olefin polymer or an aromatic
polyether polymer?
Findings of Fact
Oishi discloses diguanamines, such as 2,5/2,6-bis(4,6-diamino-1,3,5-
triazin-2-yl)-bicyclo[2.2.1]heptanes, and derivatives thereof, which are
useful as raw materials and curing agents for various resins (abstract; col. 1,
ll. 48-59; formula 1, col. 4, ll. 10-23). An amino resin containing the
diguanamines can include one or more other compounds, e.g., cyclohexene
carboguanamine or norbornene carboguanamine (col. 50, ll. 23-36). The
amino-containing compound can be compounded with phosphoruses in a
resin which can be a polyphenylene ether resin (col. 53, ll. 57-67).
Analysis
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The Examiner argues that Oishi’s derivatives include “an abundance
of compounds that include a double bond so as to allow for the formation of
the claimed alicyclic olefin polymer” (Ans. 12). The Examiner argues that
Oishi’s disclosed Y10 substituents (col. 38, ll. 33-53) include alicyclic
substituents and unsaturated substituents such as ethylene and propylene
(Ans. 13).
The Appellants argue that Oishi’s diguanamine compounds do not
include a double bond in the central ring structure and, therefore, cannot be
polymerized to form an alicyclic olefin polymer, and that Oishi’s ethylene
and propylene substituents actually are part of the structure HO-(Y10-O)m-
Y9- (col. 37, l. 33) and, therefore, are divalent groups not having a double
bond (Reply Br. 5). The Appellants argue that “the structure as now claimed
is nowhere shown by the Oishi reference”. See id.
The Examiner has the initial burden of pointing out where Oishi
discloses an aliphatic olefin polymer. See Spada, 911 F.2d at 708, King, 801
F.2d at 1327. The Examiner’s argument that Oishi’s diguanamine
derivatives allow for the formation of such a polymer (Ans. 12) does not
meet that burden. Also, the Examiner has not established that when Oishi’s
Y10 in HO-(Y10-O)m-Y9- (col. 37, l. 33) is what Oishi calls “ethylene” or
“propylene”, it is unsaturated.
The Examiner argues that Oishi’s cyclohexene carboguanamine and
norbornene carboguanamine (col. 50, ll. 28-29) have a double bond in the
ring structure (like some of the monomers from which the Appellants’
alicyclic olefin polymers are formed (Spec. 5:35 – 6:23, 7:15-19)), and that
Oishi’s polyphenylene ether resins (col. 53, l. 63) are aromatic polyether
polymers (Ans. 13).
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The Appellants do not address that argument by the Examiner, let
alone provide evidence or reasoning which shows that Oishi’s cyclohexene
carboguanamine or norbornene carboguanamine, unlike the Appellants’
monomers having a double bond in the ring structure, cannot form an
alicyclic olefin polymer, or that Oishi’s polyphenylene ether resin is not an
aromatic polyether polymer. Thus, the Appellants have not established
reversible error in the Examiner’s rejection over Oishi.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that Oishi discloses an aliphatic olefin polymer or an aromatic
polyether polymer.
DECISION/ORDER
The rejections of claims 13 and 15 under 35 U.S.C. § 112, second
paragraph, and claims 7-14 and 16 under 35 U.S.C. § 102(b) over Oishi are
affirmed. The rejection of claims 7, 10-14 and 16 under 35 U.S.C. § 102(e)
over Noda is reversed.
It is ordered that the Examiner’s decision is affirmed.
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

tc

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