IWATA, Masayuki et al.Download PDFPatent Trials and Appeals BoardNov 29, 201914650352 - (D) (P.T.A.B. Nov. 29, 2019) 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. 14/650,352 06/08/2015 Masayuki IWATA Q217957 5690 23373 7590 11/29/2019 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 900 WASHINGTON, DC 20006 EXAMINER MATZEK, MATTHEW D ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 11/29/2019 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): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MASAYUKI IWATA, TOMOHISA WATANABE, and KAZUYA HOSHINO ____________ Appeal 2019-001314 Application 14/650,352 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and JANE E. INGLESE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1–12 as unpatentable over Huhtala et al. (US 2008/0194749 Al, published Aug. 14, 2008) (hereinafter “Huhtala”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Fujikura LTD. as the real party in interest (Appeal Br. 2). Appeal 2019-001314 Application 14/650,352 2 We affirm. CLAIMED SUBJECT MATTER Claim 1 is representative and reproduced below: 1. A flame retardant resin composition comprising: a base resin; calcium carbonate particles which are blended at a proportion of 10 to 150 parts by mass relative to 100 parts by mass of the base resin; a silicone-based compound which is blended at a proportion of 0.5 to 10 parts by mass relative to 100 parts by mass of the base resin; and a fatty acid-containing compound which is blended at a proportion of 1 to 20 parts by mass relative to 100 parts by mass of the base resin, wherein the calcium carbonate particles have an average particle diameter of 0.3 μm or less. OPINION Upon consideration of the evidence of record and each of Appellant’s contentions as set forth in the Appeal Brief, as well as the Reply Brief, we determine that Appellant has not demonstrated reversible error in the Examiner’s rejections (e.g., generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant to identify the alleged error in the Examiner’s rejection). We sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. It is well established that when claimed ranges overlap or lie inside ranges disclosed by the prior art for every component in a claim, a prima facie case of obviousness is established. In re Harris, 409 F.3d 1339, 1341 Appeal 2019-001314 Application 14/650,352 3 (Fed. Cir. 2005); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). It is also well established that a reference is not limited to its examples or preferred embodiments; see Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious). Appellant does not dispute the Examiner’s findings that Huhtala teaches each claimed component in an amount that overlaps the claimed ranges, and that the particle size of the calcium carbonate filler overlaps at the endpoint of 3 microns (e.g., Ans. 3–11, 13). Appellant’s arguments that the metal stearate (fatty acid containing compound) is optional, and the sole working example of Huhtala does not include same nor the claimed particle size (Appeal Br. 9, 10) are not persuasive to show reversible error for reasons set out by the Examiner (Ans. 3, 4) and the legal principles detailed previously. Thus, a preponderance of the evidence supports the Examiner’s obviousness determination of the claimed subject matter (Ans. generally). Appellant further urges that the proffered Specification data evince unexpected results (Appeal Br. 10–14; Reply Br. generally). The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. These cases have consistently held that the Appellant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See, e.g., In re Peterson, 315 F.3d at 1329 (“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden rests with Appellant to Appeal 2019-001314 Application 14/650,352 4 establish (1) that the alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). A preponderance of the evidence supports the Examiner’s position that this evidence has not been shown to be commensurate in scope with the claims, that is, the base resins used have not been shown to commensurate to show that any generic “base resin” would lead to the alleged unexpected results (see, e.g., Ans. 5). Appellant does not dispute the Examiner’s finding that resins have wide ranging properties, including their degree of flammability (id.). In light of this, Appellant’s reliance on paragraph 12 of the Specification as evidence that any base resin would result in excellent flame retardancy because the other ingredients form a protective surface barrier layer (Reply Br. 4, 5) falls short, since that paragraph merely states that the inventors “assume that . . . a surface barrier layer is formed.” Notably, Appellant’s Specification also describes preferred base resins (Spec. ¶¶ 18, 19, 37), which weighs against Appellant’s position that all base resins will demonstrate similar properties in the composition as recited in claim 1. Further, in the appeal before us, it is questionable whether the results shown by the Specification/Declaration data are properly characterized as unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior property must be unexpected to be considered as evidence of non-obviousness”). We here emphasize that nowhere in the Specification do the Inventors characterize the compositions described Appeal 2019-001314 Application 14/650,352 5 therein as achieving results that are unexpected. It is only the conclusory opinion of the Appellant in the Briefs who describes these results as unexpected; that is, Appellant states the composition of claim 1 “provides unexpected results of excellent flame retardancy while securing excellent abrasion resistance” and that this is a “synergistic effect” (Appeal Br. 10) (emphasis omitted). However, Huhtala describes these compositions as having properties particularly suited for the same use as Appellant for a layer covering of cables and wires (Huhtala Abstract). While Huhtala does not explicitly discuss abrasion resistance, the balancing of “retaining good flame retardant properties as well as good mechanical properties” is taught (Huhtala ¶ 4, see also ¶ 1). Under these circumstances, we view this Specification data as merely representing the optimization of the compositions described in Huhtala which would have been within the skill of and, thus, obvious to the artisan. See Pfizer, Inc., 480 F3d at 1371 (“At most, then, Pfizer engaged in routine, verification testing to optimize selection of one of several known and clearly suggested pharmaceutically-acceptable salts to ease its commercial manufacturing and marketing of the tablet form of the therapeutic amlodipine.”). In addition, we emphasize that, although secondary considerations such as unexpected results must be taken into account, they do not necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”); Pfizer, Inc., 480 F.3d at 1372 (“[T]his secondary consideration does not overcome the strong Appeal 2019-001314 Application 14/650,352 6 showing of obviousness in this case. Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.”). Here, the case of obviousness established by the Examiner is strong such that when the teachings of the reference are weighed against Appellant’s alleged unexpected results, the preponderance of the evidence of record still weighs in favor of a conclusion of obviousness. We thus affirm the rejection. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–12 103 Huhtala 1–12 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation