Ex Parte Yano et al

Board of Patent Appeals and Interferences

Jul 28, 2006

09913725 (B.P.A.I. Jul. 28, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHIGERU YANO,
MINDIAW WANG and
TAROH ICHIKAWA
____________

Appeal No. 2006-1673
Application No. 09/913,725
____________

HEARD: September 14, 2005
____________

Before KIMLIN, KRATZ and JEFFREY T. SMITH, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, and 5-7. Claims 8 and 9, which are the
only other claims that remain pending in this application, are
withdrawn from further consideration by the examiner as drawn to
a non-elected invention. We have jurisdiction pursuant to 35 U.S.C. § 134.
BACKGROUND
Appellants' invention relates to a molded porous film that
is made using a composition including: (1) 45-75 weight percent
of a polyolefin-containing resin that comprises 70-98 weight
percent linear low density polyethylene and 2-30 weight percent
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branched low density polyethylene; (2) 25-55 weight percent of
inorganic filler; and (3) 0.5 to 5 parts by weight of liquid
ethylene α-olefin oligomer per 100 parts by weight of the
composition. Exemplary claim 1 is reproduced below.
A porous film molded from a composition comprising 25
to 55% by weight of polyolefinic resin and 75 to 45% by
weight of inorganic filler, in which the polyolefinic resin
comprises 98 to 70% by weight of linear low density
polyethylene and 2 to 30% by weight of branched low density
polyethylene, and wherein the composition further comprises
0.5 to 5 parts by weight of liquid ethylene-a-olefin
oligomer based on 100 parts by weight of the composition,
the porous film having a moisture permeability from 1500 to
4000 g/m__24hr. and a uniformness of thickness of 0.15 or
less.

The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Takayama 6,284,828 Sep. 04, 2001
Yano et al. (Yano), Japanese Patent Publication No. 11-158305,
published June 15, 1999.1

1 Our references to Yano in this decision are to the English language translation
by Thomson (of record).
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Claims 1, 2, and 5-7 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Takayama in view of Yano (JP 11-
158305).
We refer to the brief and reply briefs and to the answers
for a complete exposition of the opposing viewpoints expressed by
appellants and the examiner concerning the issues before us on
this appeal.
OPINION
Having considered the record of this application, including
the arguments advanced by both the examiner and appellants in
support of their respective positions, we find ourselves in
agreement with appellants’ position in that the examiner has not
met the burden to show, prima facie, that the applied prior art
renders the subject mater of the rejected claims obvious within
the meaning of 35 U.S.C. § 103(a). Accordingly, we reverse the
rejection advanced by the examiner. Our reasoning follows.
Like appellants, Yano is directed to a porous film made from
a composition including a resin comprising a low density
polyethylene and a branched low density polyethylene together
with inorganic filler according to appellants and the examiner.2

2 The Thomas translation of Yano is a machine-assisted translation and does not
appear to be a verified translation, not withstanding the examiner’s statement at page 3
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The examiner has determined that Yano does not teach the use of
liquid ethylene-α-olefin oligomer as a composition component for
making the film, as required by appellants’ appealed claims.
Rather, Yano employs ethylenebisstearamide,
methylenebisstearamide or ethylenebisoleamide in forming a porous
film of desired properties, as noted by appellants (brief, page
4) and generally acknowledged by the examiner in the answers.
Thus, the examiner turns to Takayama for a teaching of the
use of a liquid ethylene-alpha-olefin oligomer in a resin
composition, as a lubricant.
In the background section of the Takayama patent
specification (paragraph bridging columns 1 and 2), Takayama
explains that:

of the answer to the contrary. While the Thomas translation does not fully comply with
the standards for a translation that we requested in our Remand (mailed September 28,
2005), we note that appellants and the examiner are in general agreement as to the
teachings of Yano and the Thomas translation is sufficiently readable to substantiate
that agreement. More particularly, the examiner makes it clear in both answers,
including at page 3 of the latest answer (mailed November 02, 2005) that Yano does not
teach a liquid ethylene-alpha-olefin oligomer component for the composition used in
forming the film of Yano. Appellants have agreed with that assessment of Yano.
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the addition of a lubricant has various
disadvantages, such as the trouble of the processing in
extrusion or molding, or the bleeding during using.
Moreover, when used together with the above-mentioned
resins other than the polyacetal resins, the lubricant
inhibits the compatibility between these resins and the
polyacetal resins and greatly deteriorates the abrasion
resistance properties.

Takayama incorporates a modified olefinic polymer, an
alkylene glycol polymer containing a primary or secondary amino
group, and an inorganic filler and, an optional lubricant as
additional components into the polyacetal resin-containing
composition. According to Takayama, the optional lubricant
enhances desired properties of their polyacetal resin
composition, including sliding performance and molding process
capabilities. The polyacetal resin composition is disclosed as
having good friction and abrasion resistance properties useful in
automobiles and electrical and electronic appliances. See, e.g.,
the abstract, column 1, lines 8-15, column 2, lines 10-35, and
column 5, line 23 through column 5, line 41 of Takayama.
Takayama provides a list of suitable lubricants for their
composition, including ethylene-alpha-olefin oligomer.

The examiner (answer, pages 3 and 4) maintains that:
it would have been obvious to one having ordinary
skill in the art at the time the invention was made to
use the ethylene-alpha-olefin oligomer singly or in
combination with the ethylenebisstearamide disclosed in
JP’305 motivated by the desire to obtain the porous
film with improved dispersibility and processability
and thereby facilitating the preparation of the film.
This is important to the expectation of successfully
practicing the invention of JP’305 and this suggesting
the modification.

The examiner (answer, page 5) further argues that:

[t]he lubricants in Takayama are designed not only
to improve [of, sic] friction and abrasion resistance
of molded polyacetal resin compositions as argued by
Appellants but also to improve the dispersibility,
molding processabilities of the composition (abstract,
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column 5, line 28). This is exactly the solution to
problems with which the JP'305 reference is concerned.
Takayama teaches a polyacetal resin composition
comprising a polyacetal resin, a polyolefin resin, an
inorganic filler and a lubricant that includes a liquid
ethylene-alpha-olefin oligomer and ethylenebissteramide
in the amount of 0.5 to 5 parts by weight based on 100
parts by weight of the resin composition (abstract).
The lubricant is used for improved dispersibility and
processability of the composition (abstract, column 5,
lines 31-35, column 8, lines 10-15). This demonstrates
that this lubricant is functional in compositions
containing polyolefins. Given that JP'305 employs a
lubricant, substitution of an improved variety does not
seem impractical. Therefore, it would have been obvious
to one having ordinary skill in the art at the time the
invention was made to use the ethylene-alpha-olefin
oligomer singly or in combination with the
ethylenebissteramide disclosed in JP'305 motivated by
the desire to obtain the porous film with improved
dispersibility and processability and thereby
facilitating the preparation of the film.

However, Takayama is not directed to a porous film, as is
Yano (JP ‘305) and appellants. Rather, Takayama is directed to a
particular polyacetal resin composition including a number of
required components that has good friction and abrasion
resistance properties useful in automobiles and electrical and
electronic appliances, as noted above. Here, the examiner simply
has not made the case that the various lubricants, particularly
the ethylene-alpha-olefin oligomer, among those disclosed as an
alternative for Takayama’s specific composition, would have been
recognized by one of ordinary skill in the art as being useful as
a component in the disparate porous film molding composition of
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Yano. While the examiner asserts that the addition of a liquid
ethylene-alpha-olefin oligomer to the porous film composition of
Yano would be expected to improve the dispersibility and process-
ability of the molding composition of Yano, that assertion is not
backed up with adequate evidence or scientific reasoning to
substantiate that argued suggestion, with a reasonable
expectation of success in so doing, for the different porous
molding composition used by Yano. In this regard, the examiner
has not fairly established how Takayama would have suggested the
applicability (with a reasonable expectation of success) of the
lubricant compositions disclosed therein for a porous resin
composition, like or similar to that disclosed by Yano, given the
differences between the molding composition of Takayama and the
molding composition taught by Yano.
In particular, appellants note that the lubricant (component
(E) of Takayama is disclosed as being useful when the resin
includes components (A)-(D), described at columns 2-5 of
Takayama. Otherwise, compatibility issues and other problems,
such as with the desired abrasion resistance, arise. See, e.g.,
pages 2-4 of the reply brief filed October 22, 2004 and pages 3
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and 4 of the reply brief filed January 03, 2006 together with the
corresponding disclosure of Takayama.3

3 We note that the examiner did not specifically respond to the arguments
furnished in either of appellants’ reply briefs. Indeed, we specifically advised the
examiner to address the arguments in appellants’ reply brief filed October 22, 2004 at
page 4 of our Remand mailed September 28, 2005.
The examiner’s discussion about the polyolefin component of
the resin composition of Takayama at page 6 of the answer has
been considered. However, as appellants explain in the reply
briefs, the specific polyolefin used by Takayama is a chemically
modified polyolefin, not the polyolefin employed by Yano.
Moreover, as noted above, Takayama requires other components in
the resin composition besides the modified polyolefin for use
with the lubricants disclosed therein. Against that backdrop,
the examiner’s attempt at suggesting that the polyolefin
component represents a significant commonality between the resin
compositions of Yano and Takayama that would have led one of
ordinary skill in the art to use one of the alternative
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lubricants disclosed by Takayama in the dissimilar composition of
Yano is unpersuasive, on this record.
The record before us does not support a conclusion that the
examiner has met the burden of presenting a prima facie case of
obviousness. It follows that we do not sustain the examiner's
§ 103(a)rejection on this record.
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CONCLUSION
The decision of the examiner to reject claims 1, 2, and 5-7
under 35 U.S.C. § 103(a) as being unpatentable over Takayama in
view of Yano (JP 11-158305) is reversed.
REVERSED

EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )

PFK/TF
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ROBERT G. MUKAI
BURNS, DOANE, SWECKER & MATHIS
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404
Comment [jvn1]: Type address

APPEAL NO. 2006-1673 - JUDGE KRATZ
APPLICATION NO. 09/913,725

APJ KRATZ

APJ KIMLIN

APJ SMITH, JEFFREY T.

DECISION: REVERSED

Prepared By: TRACEY FLEMING

DRAFT TYPED: 16 Aug 06

FINAL TYPED: