TEIJIN LIMITED

Patent Trials and Appeals Board

Nov 30, 2021

2021000366 (P.T.A.B. Nov. 30, 2021)

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.
14/394,846 10/16/2014 Tetsuya Motoyoshi 2014-1337A 4030
513 7590 11/30/2021
WENDEROTH, LIND & PONACK, L.L.P.
1025 Connecticut Avenue, NW
Suite 500
Washington, DC 20036
EXAMINER
KAHN, RACHEL
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
11/30/2021 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):
eoa@wenderoth.com
kmiller@wenderoth.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TETSUYA MOTOYOSHI,
KENTA IMAZATO, and KATSUHIRO YAMANAKA

Appeal 2020-000366
Application 14/394,846
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, GEORGE C. BEST, and
LILAN REN, Administrative Patent Judges.

REN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2, 3, 5, 20, and 21. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as “TEIJIN LIMITED.” Appeal
Br. 4.
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Application 14/394,846

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CLAIMED SUBJECT MATTER
Claim 2, reproduced below, is illustrative of the claimed subject
matter:
2. A copolycarbonate (1) which consists essentially of a
unit (A) represented by the following formula and a unit (B1)
represented by the following formula as main recurring units,
the (A/B1) molar ratio of the unit (A) and the unit (B1) being
80/20 to 95/5, and satisfies the following requirements (i) to
(v):

R1 is an alkylene group having 8 to 12 carbon atoms
(vii) the specific viscosity measured from a 20°C
methylene chloride solution is 0.35 to 0.45;
(viii) the glass transition temperature is 70 to 160°C;
(ix) the saturation water absorption coefficient is not more
than 2.5 %;
(x) the pencil hardness is at least F, and
(xi) a 50% breaking energy measured by a falling weight
impact test at −20°C of not less than 20 J and a
brittle fracture rate of not more than 50%.
Claims App. (Appeal Br. 23).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Ono US 7,365,148 B2 Apr. 29, 2008
Miyake US 2010/0160563 Al June 24, 2010
Zhu, High-molecular-weight aliphatic polycarbonates by melt
polycondensation of dimethyl carbonate and aliphatic diols: synthesis
and characterization, Polym. Int. 2011; 60: 1060–1067 (2001)
REJECTION
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
2, 3, 5, 20, 21 103 Ono, Miyake, Zhu
OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (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 examiner’s rejections.”)). After considering the
evidence presented in this Appeal and each of Appellant’s contentions, we
are not persuaded that reversible error has been identified. Thus, we affirm
the Examiner’s § 103 rejection for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Claim 2
Appellant argues that “Ono discloses a polycarbonate a carbonate unit
derived from an aliphatic diol compound having ‘2, 3 or 6 carbon atoms’”
and therefore does not teach or suggest “an aliphatic diol compound having
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8 to 12 carbon atoms” as recited in claim 2. Appeal Br. 17. Appellant’s
argument is unpersuasive because it is unsupported by the record. As
Appellant acknowledges, “Ono discloses an aliphatic diol compound may
have 2-12 carbon atoms.” Id. at 11 (citing Ono 4:15–18), 19. Whether “the
maximum number of carbon atoms in Ono’s Examples is 6” (id. at 11; see
also id. at 20) does not limit Ono’s teachings to the specific and/or preferred
embodiments. Merck & Co. Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (“But in a section 103 inquiry, ‘the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.’”).
Appellant’s argument that Zhu and Miyake do not teach or suggest
this particular limitation is unpersuasive (Appeal Br. 18) because the
argument attacks the references individually, rather than considering what
the combined references would have suggested to a person of ordinary skill
in the art. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
Appellant argues the Examiner reversibly erred because “Examples 1
to 4 of the present specification have superior low-temperature impact
resistance over Comparative Examples 1 to 6” which are unexpected results
based on the recited “0.35 to 0.45” specific viscosity as well as the “aliphatic
diol compound having 8 to 12 carbon atoms.” Appeal Br. 12.
Appellant, as the party asserting unexpected results as evidence of
nonobviousness, has the burden of proving that the results are unexpected. In
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re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997). Such burden requires
Appellant to proffer factual evidence that actually shows unexpected results
relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope
with the protection sought by claim 1 on appeal, In re Grasselli, 713 F.2d
731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA
1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972).
In this case, Appellant fails to carry the burden of proof. Appellant
acknowledges that “Examples 1 to 4 have a specific viscosity within of
0.394-0.403, and fall within the range of claim 2 (‘0.35 to 0.45’)” (Appeal
Br. 12) but does not explain why the specific viscosity in the examples is
reasonably commensurate in scope with the protection sought. Grasselli, 713
F.2d at 743. Moreover, Appellant does not explain why the compositions in
Examples 1 to 4 are reasonably commensurate in scope with the recited
“aliphatic diol compound having 8 to 12 carbon atoms.” As the Examiner
points out, whereas Examples 1 to 4 are compounds with a linear alkylene
group, “claim 2 is not limited to linear alkylene groups, and therefore,
encompasses branched or cyclic alkylene dials having 8 to 12 carbon
atoms.” Ans. 19. We are therefore unpersuaded that Appellant has
demonstrated unexpected results commensurate in scope with the claim.
Appellant’s argument that the recited “0.35 to 0.45” specific viscosity
is a critical range (Appeal Br. 14–15) is unpersuasive for the same reason.
That is, Appellant does not explain why the properties of Example 1 having
a specific viscosity of 0.403 apply to the entire recited range. Similarly,
Appellant’s argument that the recited “aliphatic diol compound having 8 to
12 carbon atoms” combined with the specific viscosity exhibit unexpected
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results (Appeal Br. 15–16) (citing Declaration by Mr. Kenta Imazato
(“Decl.” or “Declaration”) Table A) is unpersuasive for the same reason.
That is, Appellant does not explain why the compositions in Examples 1 to 4
are reasonably commensurate in scope with the recited “aliphatic diol
compound having 8 to 12 carbon atoms” which includes linear, branched,
and cyclic alkylene diols having 8 to 12 carbon atoms.
Appellant next argues that the Examiner reversibly erred in finding
that the prior art composition would have the recited properties including the
saturation water absorption coefficient, the pencil hardness, and breaking
energy. Appeal Br. 16. Appellant argues that “[t]he maximum chain length
in Ono’s Examples is 6 carbons (HD).” Id. Based on the purported
unexpected results, Appellant asserts that “there is no reasonable basis to
conclude that ‘modified Ono’ would have the recited properties.” Id.
Appellant, however, does not explain why the Examiner reversibly erred in
finding the combined teaching of Ono, Zhu, and Miyake suggests a
structurally identical compound which would have identical properties.
Compare id., with July Final Act. 2–6 (providing an obviousness analysis
based on findings of each reference, a rationale to combine, and an analysis
based on the findings for the teaching of the recited properties).
Moreover, the mere recitation of a property or characteristic not
disclosed by the prior art does not necessarily confer patentability to a
composition or a method of using that composition. In re Skoner, 517 F.2d
947, 950 (CCPA 1975). Where, as here, the Examiner establishes a
reasonable belief that the property or characteristic recited in claim 2 would
have been inherent to the product or process, the burden of proof shifts to
Appellant to show that this characteristic or property is not possessed by the
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prior art. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellant has
not carried this burden here.
Appellant’s argument that “there is no suggestion in the prior art of
superior low-impact strength due to a carbonate unit (B-1) derived from an
aliphatic diol compound having 8 to 12 carbon atoms, wherein the specific
viscosity of the polycarbonate is 0.35 to 0.45 as claimed” (Appeal Br. 17)
(emphasis removed) is unpersuasive. From the outset, the mere recitation of
a property or characteristic not disclosed by the prior art does not necessarily
confer patentability to a composition or a method of using that composition.
Skoner, 517 F.2d at 950. Moreover, “the discovery of a previously
unappreciated property of a prior art composition, or of a scientific
explanation for the prior art’s functioning, does not render the old
composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO
Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999).
Appellant’s argument that “a person having ordinary skill in the art
would recognize that the glass transition temperature is not affected by the
length of the diol in the plastic lens of claim 2” (Appeal Br. 19) is
unpersuasive. As noted supra, Appellant has not carried its burden to prove
unexpected results for the entire recited range of claim 2. Whether the glass
transition temperature is affected by the length of the diol does not explain
why Examples 1 to 4 is reasonably commensurate in scope with the recited
range to support Appellant’s unexpected results assertion.
Claims 3, 5, 20, and 21
Appellant does not present separate arguments for claims 3, 5, 20, and
21. See Appeal Br. 20–21 (stating that “the references do not teach or
suggest” limitations recited in these claims without argument or
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identification of error). To prevail in an appeal to this Board, Appellant must
adequately explain or identify reversible error in the Examiner’s §103(a)
rejections. See 37 C.F.R. § 41.37(c)(1)(iv) (2019); see also Jung, 637 F.3d at
1365 (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections . . . .”). “[M]ere
statements of disagreement . . . do not amount to a developed argument.”
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir.
2006). Appellant in this case has not done so with regard to these claims.
The rejection of claims 3, 5, 20, and 21 is affirmed with claim 2. See 37
C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2, 3, 5, 20,
21
103 Ono, Miyake, Zhu 2, 3, 5, 20,
21

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED