Ex parte Yoshida et al.

Board of Patent Appeals and Interferences

Aug 27, 1999

08119075 (B.P.A.I. Aug. 27, 1999)

Application for patent filed September 22, 1993. 1
According to appellants, this application is a National stage
application under 35 U.S.C. § 371 of PCT/JP93/00073, filed
January 27, 1993.
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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journal and (2) is not binding precedent of the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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MINORU YOSHIDA, TOSHIHIRO SASAKI,
TOSHIAKI UEDA, MASATOSHI AOYAMA and MASARU SUZUKI

Appeal No. 1996-2593
Application No. 08/119,0751

ON BRIEF

Before KIMLIN, ELLIS and OWENS, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-4,
Appeal No. 96-2593
Application No. 08/119,075
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6-11 and 14-20, all the claims remaining in the present
application. Claims 1 and 20 are illustrative:
1. A thermoplastic polyester lamination structure
comprising 1) at least one layer of a thermoplastic polyester
(A) prepared from i) an acid component mainly comprising an
aromatic dicarboxylic acid and a glycol component mainly
comprising an aliphatic glycol and ii) 2-type aluminum oxide
particles (B) and 2) at least one layer of another
thermoplastic polyester laminated to said layer of a
thermoplastic polyester (A).
20. A thermoplastic polyester lamination structure
comprising at least one layer of a thermoplastic polyester (A)
prepared from i) an acid component mainly comprising an
aromatic dicarboxylic acid and a glycol component mainly
comprising an aliphatic glycol and (ii) 2-type aluminum oxide
particles (B), said particles having an acicular or platy
shape.
The examiner relies upon the following reference as
evidence of obviousness:
Murooka et al. (Murooka) 5,252,388 Oct. 12, 1993
(filed Dec. 13, 1991)
Appealed claims 1-4, 6-11 and 14-20 stand rejected under
35 U.S.C. § 103 as being unpatentable over Murooka.
Upon careful consideration of the opposing arguments
presented on appeal, we find that the examiner has failed to
establish a prima facie case of obviousness for the claimed
subject matter. Accordingly, we will not sustain the
examiner's rejection.
Appeal No. 96-2593
Application No. 08/119,075
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At the outset, we note that the examiner erred in not
giving separate consideration to specific claims separately
argued by appellants. The examiner's statement at page 2 of
the Answer explaining why the claims stand or fall together
does not withstand scrutiny. Since all the appealed claims
are directed to a thermoplastic polyester lamination
structure, it is manifestly clear that the examiner's
statement that "all claims are ultimately directed to a
composition (which is used to prepare a laminated structure)"
is without merit. Furthermore, the examiner's rationale for
holding that all the appealed claims stand or fall together
totally misses the point. Even if it was the case that all
the appealed claims are directed to a composition, this
certainly does not preclude appellants from separately arguing
different claims which recite different features of a
composition. Once an appellant separately groups and argues
different claims on appeal, it is the examiner's
responsibility to address the merits of appellant's arguments.
We now turn to the examiner's § 103 rejection of the
appealed claims. With the exception of claim 20, each of the
appealed claims requires at least one layer of another
Appeal No. 96-2593
Application No. 08/119,075
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thermoplastic polyester laminated to the thermoplastic layer
comprising the aluminum oxide particles. Although appellants
stress this point in their principal and reply briefs, the
issue has apparently escaped the examiner. While appellants
give a detailed explanation why the magnetic layer of Murooka
does not qualify as the claimed thermoplastic polyester layer,
the examiner responds that "Murooka's polyester film and a
magnetic layer formed thereon . . . is, according to the
examiner, a laminate" since the "Examiner interprets a
laminate as an article made of at least two layers which two
layers need not be the same in form and shape" (sentences
bridging pages 3 and 4 of Answer). Notwithstanding the
accuracy of the examiner's definition of a laminate, the
examiner totally fails to address appellants' argument that
the magnetic layer of Murooka does not meet the claim
requirement for another thermoplastic polyester laminated
layer. Simply put, the examiner has not pointed out where
Murooka teaches or suggests appellants' additional
thermoplastic polyester layer.
Regarding separately argued claim 20 which requires that
the aluminum oxide particles have "an acicular or platy
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Application No. 08/119,075
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shape," the examiner takes the position that all claim
features regarding particle size, shape and relationship
between diameter of particle and thickness of thermoplastic
layer are satisfied by Murooka in the "absence of a showing of
a criticality thereof by the appellants" (page 4 of Answer).
Here, the examiner has perpetrated clear error by placing the
cart before the horse. It is axiomatic that before the burden
shifts to an applicant to provide evidence of nonobviousness,
such as evidence of criticality or unexpected results, the
examiner must establish, in the first instance, that the
claimed features would have been prima facie obvious to one of
ordinary skill in the art. In the present case, the examiner
has made no attempt to establish on this record that the use
of aluminum oxide particles having an acicular or platy shape
in a polyester composition would have been obvious to one of
ordinary skill in the art. In the absence of such a finding
by the examiner, appellants are under no burden to demonstrate
that the claimed acicular and platy shapes are critical to the
claimed invention. Consequently, we find it unnecessary to
evaluate the comparative data in appellants' specification as
evidence of nonobviousness.
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Application No. 08/119,075
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In conclusion, based on the foregoing, we are constrained
to reverse the examiner's rejection.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
JOAN ELLIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
ECK:clm
Appeal No. 96-2593
Application No. 08/119,075
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Austin R. Miller
Schnader, Harrison, Segal & Lewis
1600 Market St.
36th Floor
Philadelphia, PA 19103