Ex parte Yamao et al.

Board of Patent Appeals and Interferences

Apr 19, 1999

08112986 (B.P.A.I. Apr. 19, 1999)

Application for patent filed August 30, 1993. According to the appellants, this1
application is a continuation of Application 07/821,304, filed January 13, 1992 which is a
division of Application 07/603,162, filed October 25, 1990, both abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte SHINOBU YAMAO and WATARU KOSAKA
__________
Appeal No. 95-3220
Application 08/112,9861
__________
ON BRIEF
__________
Before WEIFFENBACH, ELLIS and OWENS, Administrative Patent Judges.
ELLIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 of the final rejection of claims 7, 9 and 21
through 30, all the claims pending in the application. Claims 7 and 9 are illustrative of the
subject matter on appeal and read as follows:
Appeal No. 95-3220
Application 08/112,986
The photocopy of the abstract submitted with the examiner’s Answer does not2
indicate the date on which the abstract was published. Therefore, there is no evidence of
record that the abstract is available as prior art against the present invention.
We note that the examiner has relied on the disclosure of the translated abstract of3
the Japanese Kokai patent application only. The examiner has not obtained a certified
translation of the full-length document. See the REMAND on p. 7, infra.
2
7. A resin composition comprising a polyarylene sulfide containing at least one
substituent selected from the group consisting of an amino group and an amido group, a
polyamide resin, and a compound selected from the group consisting of a carboxylic acid,
a carboxylic acid anhydride and a carboxylic acid halide each having in its molecule not
less than two functional groups reactive with said amino group or said amide groups.
9. A resin composition comprising a polyarylene sulfide containing at least one
substituent selected from the group consisting of an amino group and an amido group, a
polyamide resin, a compound selected from the group consisting of a carboxylic acid, a
carboxylic acid anhydride and a carboxylic acid halide, each having in its molecule not less
than two functional groups reactive with said amino group or said amido group, and a filler.
The references relied upon by the examiner are:
Katto et al. (Katto) 4,699,975 Oct. 13, 1987
Takekoshi et al. (Takekoshi) 5,015,704 May 14, 1991
Suzuki et al. (Suzuki) Unknown 2
(Abstract of Japanese Kokai Patent Application 61-207462)
Claims 7, 9 and 21 through 30 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Katto in view of Takekoshi or Suzuki.3
We have carefully considered the record before us which includes, inter alia, the
Appeal No. 95-3220
Application 08/112,986
3
specification, the appellants’ Brief (Paper No. 29), the examiner’s Answer (Paper
No. 30), and the declaration of Mr. Kosaka (attached to Paper No. 25), and find ourselves
in substantial agreement with the appellants’ position. Accordingly, we reverse.
Background and Discussion
The claimed invention, as exemplified in claims 7 and 9, above, is directed to
polyarylene sulfide resin compositions which are used as engineering plastics. Such
resins are said to have “excellent physical properties, such as heat resistance, fire
retardancy, high rigidity and so on.” Specification, p. 1, para. 1. According to the
appellants, prior attempts to improve properties such as, the impact strength of polyarylene
sulfide resins, without reducing their heat-related properties, have met with limited
success. Id., pp. 1-4. The appellants state that they have discovered that “the impact
resistance of polyarylene sulfide resin compositions, could be improved without
substantially diminishing the heat related properties by blending a modified polyarylene
sulfide resin with a polyamide in effective combination with a carboxylic acid moiety. The
modification of the polyarylene sulfide resin which has permitted the blending of this resin
with polyamide resins to achieve these results has been to include an amine or an amide
substituent in the polyarylene sulfide resin. . . . It has been found that such a blend of the
modified polyarylene sulfide with the polyamide resin and the carboxylic acid moiety
results in a composition which, when conventionally formed into a shaped article, exhibits
Appeal No. 95-3220
Application 08/112,986
4
substantially improved impact resistance and blending strength, while retaining the heat
resistance and fire retardancy for which polyarylene sulfide resins are known, and yet not
suffering from the adverse water absorption which characterizes nylons” (Brief, para.
bridging pp. 4-5).
The examiner primarily bases his conclusion of obviousness on the teachings of
Katto and Takekoshi. Katto discloses a polyarylene sulfide composition which comprises
an organic acid or an organic acid anhydride; e.g. a polycarboxylic acid having a benzene
ring, a carboxylic acid having a hydroxyl-substituted benzene ring, or an anhydride thereof.
Katto, col. 6, lines 64-69. Katto further discloses that “the composition resin of the
invention can be blended with compatible resin materials such as polyimides, polyamides,
polyetheretherketones,” etc. Katto, col. 8, lines 12-23. Takekoshi discloses a method of
preparing polyarylene sulfides with reactive functional groups such as amino groups.
According to Takekoshi, the compositions prepared using the method disclosed therein
are capable of reaction with anhydride-terminated polyetherimides to form block
copolymers. Takekoshi, col. 7, lines 9-14.
Alternatively, the examiner urges that the claimed invention would have been prima
facie obvious to one of ordinary skill in the art in view of the teachings of Katto and Suzuki,
an undated abstract which merely states that a polyarylene sulfide resin composition was
prepared by mixing polyphenylene sulfide with amino and amide groups and maleic
Appeal No. 95-3220
Application 08/112,986
5
anhydride grafted ethylene-butene-1 copolymer.
The examiner argues on p. 4 of the Answer that:
it would have been prima facie obvious and sufficiently motivated to one skilled in
the art to substitute the generic arylene sulfide polymers in Katto et al. with the
amino/amide functionalized polyarylene sulfide in U.S. -704 [Takekoshi] and
JP. 462 [Suzuki] since their enhanced compatibility and reactivity with the
acid/anhydride functionalized materials are clearly taught in these references.
We disagree. We find no teaching or suggestion in Katto that the compatibility of
the polyarylene sulfide resins disclosed therein could be enhanced by the addition of
amino or amido substituents. Nor do we find any suggestion in Takekoshi or Suzuki
(assuming, arguendo, that the abstract is prior art) to add amine or amide functionality to
polyarylene sulfide resins having a carboxylic acid, a carboxylic acid anhydride or a
carboxylic acid halide moiety. We note the examiner’s statement “that if one skilled in the
art was given the three references at the time of the invention, even though U.S. -975
[Katto] is silent in the modification of PAS but is, however, generic to both modified and
unmodified PAS, it [sic, one of ordinary skill in the art ?] would be [sic, would have been]
sufficiently motivated to use a modified PAS instead of an unmodified PAS since [the]
secondary references are directed to teachings of enhancing the reactivity and hence
compatibility between arylene sulfide polymers and other materials with reactive moieties.”
[Emphasis added.] Answer, p. 5. However, we point out that, on this record, the only
reason one skilled in the art would have been given the three references applied in the
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Application 08/112,986
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rejection is because the appellants’ specification teaches a composition comprising the
modifications described in said references. There are no teachings in the references
themselves which would have suggested their combination. In fact, the only place we find
such suggestion is in the appellants’ specification. Thus, we find that the examiner has
relied on impermissible “hindsight” to arrive at the conclusion that the present invention is
obvious over the prior art. In re Fritch, supra; Interconnect Planning Corp. v. Feil, 774
F.2d 1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985) (“It is impermissible to engage in
hindsight reconstruction of the claimed invention, using the applicant’s structure as a
template and selecting elements from references to fill the gaps”); W.L. Gore & Assocs.
v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984)(“To imbue one of ordinary skill in the art with knowledge of
the invention in suit, when no prior art reference or references of record convey or suggest
that knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein that
which only the inventor taught is used against its teacher”).
We note in the appellants’ arguments that the claimed compositions exhibit
unexpected results. In re Soni, 54 F.3d 746, 749, 34 USPQ2d 1684, 1687 (Fed. Cir.
1995). However, since the examiner has failed to meet his burden of establishing a
prima facie case of obviousness in the first instance, we need not consider the appellants’
evidence in this regard.
Appeal No. 95-3220
Application 08/112,986
7
REMAND
It is apparent that the prior art has not been fully considered by the examiner. In the
case before us, the examiner has relied on the disclosure of a translation of the abstract of
Japanese Kokai Patent application 61-207462 [Susuki], only. As we discussed in
footnote 2, above, the abstract may or may not be available as prior art against the
appellants’ claims. Although the referenced patent application was of record in the file,
the examiner never bothered to obtain a certified translation thereof. This we have done,
and a copy of the translation is attached to this decision. We note that there appears to be
pertinent disclosure in the translation which does not appear in the abstract. We direct
attention to the teachings on pp. 4-5 of Suzuki which indicate that the amino or amide
group in the polyarylene sulfide can be introduced by the copolymer components such as
“a carboxylic acid group or a metal salt of a carboxylic acid.” Accordingly, we remand this
application to the examiner for consideration of the patentablility of the claimed invention in
view of the certified translation of the full-length Suzuki document.
Appeal No. 95-3220
Application 08/112,986
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This application, by virtue of its “special” status, requires an immediate action.
Manual of Patent Examining Procedure (MPEP) § 708.01(d)(7th ed., July 1998). It is
important that the Board be informed promptly of any action affecting the appeal in this
case.
REVERSED; REMANDED

CAMERON WEIFFENBACH )
Administrative Patent Judge )
)
)
)
JOAN ELLIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
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Application 08/112,986
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JE/cam
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Application 08/112,986
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