PANASONIC INTELLECTUAL PROPERTY MANAGEMENT CO., LTD.

Patent Trials and Appeals Board

Aug 24, 2020

2019005258 (P.T.A.B. Aug. 24, 2020)

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.
14/831,235 08/20/2015 Hiroaki FUJIWARA P48362 5041
52123 7590 08/24/2020
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
ALONZO MILLER, RHADAMES J
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
08/24/2020 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte HIROAKI FUJIWARA, MASAO IMAI, and YUKI KITAI
____________
Appeal 2019-005258
Application 14/831,235
Technology Center 2800
____________
Before LINDA M. GAUDETTE, CHRISTOPHER L. OGDEN, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1 and 4–11 of Application 14/831,235,

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
14/831,235 filed Aug. 20, 2015 (“’235 App.”); the Final Office Action dated
Mar. 27, 2018 (“Final Act.”); the Advisory Action dated June 28, 2018
(“Advisory Act.”); the Appeal Brief filed Jan. 2, 2019 (“Appeal Br.”); the
Examiner’s Answer dated May 1, 2019 (“Ans.”); and the Reply Brief filed
June 27, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Panasonic
Intellectual Property Management Co. Ltd. Appeal Br. 3.
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Application 14/831,235
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which constitutes all the claims pending in this application.3 We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
STATEMENT OF THE CASE
The ’235 Application relates to an epoxy resin composition to be used
favorably for manufacturing (1) printed wiring boards having excellent heat
resistance, (2) a prepreg using the epoxy composition, and (3) a metal-clad
laminate. Spec. ¶ 1. The Specification describes a demand for printed
wiring boards with good high-frequency characteristics that are adaptable to
high levels of multilayering to allow for an increased number of
interconnections. Spec. ¶ 2. Epoxy resin compositions having high heat
resistance are also desirable. Spec. ¶ 4. An object of the ’235 Application is
to provide an epoxy resin composition having excellent dielectric
characteristics and exhibiting high heat resistance while maintaining flame
retardancy. Spec. ¶ 7. The epoxy resin composition comprises an epoxy
compound, a low-molecular-weight phenol-modified polyphenylene ether
and a cyanate compound as essential components. Spec. ¶ 7.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, illustrates the claimed subject matter:
1. An epoxy resin composition which is a thermosetting
resin composition composed of a resin varnish containing (A)
an epoxy compound having a number-average molecular
weight of 1000 or less and containing at least two epoxy groups
in the molecule without containing any halogen atoms, (B) a
polyphenylene ether having a number-average molecular

3 Cancellation of claim 3 moots the Examiner’s rejection of the claim. See
Advisory Act. 2.
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weight of 5000 or less, (C) a cyanate ester compound, (D) a
curing catalyst and (E) a halogen flame retardant,
wherein all of the components (A) to (C) are dissolved in
the resin varnish, while the component (E) is dispersed without
being dissolved in the resin varnish,
said halogen flame retardant (E) is at least one kind
selected from the group consisting of ethylene
bis(pentabromophenyl), and ethylene
bistetrabromophthalimide, and
said epoxy compound (A) is a dicyclopentadiene epoxy
compound.
REFERENCES
The Examiner relies on the following references in rejecting the
claims:
Name Reference Date
Kinoshita et al.
(“Kinoshita”)
US 6,455,784 B1 Sept. 24, 2002
Mizuno et al.
(“Mizuno”)
US 2006/0167189 A1 July 27, 2006
Mori et al. (“Mori”) US 2007/0203308 A1 Aug. 30, 2007
Okumoto et al.
(“Okumoto”)4
JP H10–279781 A Oct. 20, 1998
Ishido et al. (“Ishido”) JP 2001–261791 A Aug. 30, 2001
REJECTIONS
The Examiner rejects claims under 35 U.S.C. § 1035 as follows: (1)
claims 1, 5–7, and 9–11 over Mizuno in view of Okumoto and Kinoshita; (2)

4 Although we typically refer to prior art patents by the first inventor’s
surname, here we follow the Examiner’s use of “Okumoto” and “Ishido” for
ease of reference to the record.
5 Because this application was filed after the March 16, 2013, effective date
of the America Invents Act, we refer to the AIA version of the statute.
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claim 4 over Mizuno in view of Okumoto, Kinoshita, and Ishido; and (3)
claim 8 over Mizuno in view of Okumoto, Kinoshita, and Mori. Final Act.
3–10.
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error in the Examiner’s
rejections.
Appellant argues for patentability of all of the claims as a group.
Appeal Br. 8–13. We select independent claim 1 as representative of the
claims subject to the first ground of rejection. 37 C.F.R. § 42.37(c)(1)(iv).
We also consider these arguments to the extent applicable to the claims
subject to the remaining grounds of rejection.
Of relevance to this appeal, the Examiner finds that Mizuno discloses
claim 1’s limitation “said epoxy compound (A) is a dicyclopentadiene epoxy
compound.” Final Act. 4. All of Appellant’s arguments for patentability of
the claims over the cited references concern this limitation. See Appeal Br.
9–13.
Appellant argues that neither Okumoto nor Kinoshita disclose any
dicyclopentadiene epoxy compound. Id. at 9, 10–11. These arguments are
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unpersuasive, however, as the Examiner relies on Mizuno for the disclosure.
Final Act. 4.
Appellant contends that Mizuno includes an epoxy resin having a
biphenyl structure as an essential component. Appeal Br. 9 (citing Mizuno
claims). Appellant argues that “Mizuno . . . uses a dicyclopentadiene
skeleton-containing epoxy resin as an exemplary epoxy resin only to be
combined with the epoxy resin having a biphenyl structure.” Id. (citing
Mizuno ¶ 43). Appellant argues that Mizuno teaches “use of the
dicyclopentadiene skeleton-containing epoxy resin in place of the epoxy
resin having a biphenyl structure in the molecule as the essential component
(see Comparative Example 5) shows” undesirable effects compared with use
of epoxy resin having a biphenyl structure. Id. at 9–10 (citing Mizuno
Example 1 and Table 2); see also Reply Br. 4. Thus, Appellant concludes,
one of skill in the art would not have selected and used the
dicyclopentadiene skeleton-containing epoxy resin disclosed in Mizuno
because it results in undesirably disadvantageous performance. Appeal Br.
10.
Appellant also argues that there would have been no expectation of
success in selecting the dicyclopentadiene skeleton-containing epoxy resin
of Mizuno because the reference teaches “only negative and undesirable
effects associated with the use of dicyclopentadiene skeleton-containing
epoxy resin in place of its inventive epoxy resin having a biphenyl structure
in the molecule as the essential component.” Id. at 11 (emphasis added).
Appellant argues that Mizuno teaches away from use of a dicyclopentadiene
skeleton-containing epoxy resin. Id.; see also Reply Br. 5.
Appellant’s arguments are unpersuasive of reversible error in the
rejection because they rely on replacing Mizuno’s epoxy resin containing a
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biphenyl structure with a dicyclopentadiene skeleton-containing epoxy resin.
In contrast, the Examiner’s rejection is based on combining Mizuno’s epoxy
resin containing a biphenyl structure and a dicyclopentadiene skeleton-
containing epoxy resin. See Ans. 10. Our construction of claim 1 does not
limit the epoxy resin composition to inclusion of only a dicyclopentadiene
epoxy compound or a biphenyl epoxy compound. See Appeal Br. 15
(Claims App.).
During prosecution, we give the language of the proposed claims “the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997); see
also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(“The words used in a claim must be read in light of the specification, as it
would have been interpreted by one of ordinary skill in the art at the time of
the invention.”). “Under a broadest reasonable interpretation, words of the
claim must be given their plain meaning, unless such meaning is inconsistent
with the specification and prosecution history.” TriVascular, Inc. v.
Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016).
Claim 1 recites “[a]n epoxy resin composition . . . containing (A) an
epoxy compound . . . wherein . . . said epoxy compound (A) is a
dicyclopentadiene epoxy compound.” Appeal Br. 15 (Claims App.).
“[L]ike the term ‘comprising,’ the claim term ‘containing’ is open-ended.”
Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1374 (Fed. Cir. 2004). Both
words are terms of art used in claim language that mean the named elements
are essential, but other elements may be added and still form a construct
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within the scope of the claim. See Genentech, Inc. v. Chiron Corp., 112
F.3d 495, 501 (Fed. Cir. 1997). “Containing” in claim 1 allows inclusion of
elements in addition to those specified in claim 1.
Mizuno discloses, inter alia, that Component (B) of its invention may
contain at least one epoxy resin containing a biphenyl structure and at least
one epoxy resin other than the epoxy resin containing a biphenyl structure,
and this other epoxy resin may be, e.g., a dicyclopentadiene skeleton-
containing epoxy resin. Mizuno ¶ 43. Such combinations of epoxy resins
disclosed by Mizuno would be expected to result in a resin composition
having excellent dielectric characteristics. See id. ¶ 12. We find nothing in
Mizuno to suggest that a combination of epoxy resins as disclosed would
result in the disadvantageous performance alleged by Appellant. Indeed,
Mizuno Examples 2, 7, 12, and 18 each comprise a Component (B) having a
combination of an epoxy resin containing a biphenyl structure and another
epoxy resin, and all are disclosed as having excellent dielectric
characteristics. Mizuno ¶¶ 135, 153, 157, 169, 172, 185, 188, and 201.
The scope of claim 1 encompasses epoxy resin compositions
containing both a dicyclopentadiene epoxy compound and an epoxy resin
having a biphenyl structure. Mizuno teaches use of such combined epoxy
resins in a resin composition. Mizuno ¶ 43, Abstract. Therefore,
Appellant’s argument that Mizuno teaches away from use of a
dicyclopentadiene skeleton-containing epoxy resin in place of an epoxy resin
with a biphenyl structure fails to show reversible error in the rejection, as it
fails to address the full scope of Mizuno’s disclosure (and the Examiner’s
findings). The Comparative Examples in Mizuno to which Appellant directs
us include only a dicyclopentadiene skeleton-containing epoxy resin, and not
a combination of a dicyclopentadiene skeleton-containing epoxy resin and
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an epoxy resin with a biphenyl structure. Mizuno ¶¶ 143, 166, 182, 197.
The Comparative Examples do not teach away from using a combination of
resins as proposed by the Examiner.
On the record before us, we sustain the rejection of claim 1 as obvious
over Mizuno in view of Okumoto and Kinoshita. We likewise determine
that claims 5–7 and 9–11 are obvious over these references. Appellant
makes no separate argument for patentability of claim 4 or claim 8 over
these and additional references, thus we sustain the rejections of claims 4
and 8 as well.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5–7, 9–
11 103
Mizuno, Okumoto,
Kinoshita 1, 5–7, 9–11
4 103 Mizuno, Okumoto, Kinoshita, Ishido 4
8 103 Mizuno, Okumoto, Kinoshita, Mori 8
Overall
Outcome
1, 4–11
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).
AFFIRMED