Ex Parte HaseDownload PDFPatent Trial and Appeal BoardSep 29, 201412515782 (P.T.A.B. Sep. 29, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HIROYUKI HASE __________ Appeal 2013-000652 Application 12/515,782 Technology Center 1700 ____________ Before CHARLES F. WARREN, BEVERLY A. FRANKLIN, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 the final rejection of claims 1–5 and 7–10. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellant’s invention is directed to a polyacetal resin composition which has excellent processability and stability, significantly suppresses the amount of formaldehyde generated from a molded article thereof, and prevents bleeding of components from the molded article (Spec. 1). Appeal 2013-000652 Application 12/515,782 2 Claim 1 is illustrative: 1. A polyacetal resin composition comprising: (A) 100 parts by weight of a polyacetal copolymer containing 1.0 mmol/kg or less of hemiformal terminal group, 0.5 mmol/kg or less of formyl terminal group, and 0.5% by weight or less of unstable terminal group; (B) 0.01 to 3 parts by weight of a hindered phenol-based antioxidant; (C) 0.05 to 1 part by weight of at least one compound selected from the group consisting of guanamine compounds and triazine compounds; and (D) 0.01 to 1 part by weight of a compound selected from the group consisting of an isocyanate compound, an isothiocyanate compound and a modified compound thereof. Appellant appeals the following rejection: Claims 1–5 and 7–10 are rejected under 35 U.S.C. § 103(a), as being unpatentable over Harashina et al. (EP 1 522 554 A1, published Apr. 13, 2005) in view of Sugiyama et al. (JP 06-248162 A2, published Mar. 23, 1993). Appellant’s arguments focus on claim 1, alone (Br. 6–9). Therefore, the rejection of dependent claims 2–5 and 7–10 will stand or fall with our analysis of the rejection of claim 1. ISSUE Did the Examiner reversibly err in finding that the combined teachings of Harashina and Sugiyama would have suggested the subject matter of claim 1 that includes adding an isocyanate compound in an amount from 0.01 to 1 part by weight to a polyacetal composition? We decide this issue in the negative. Appeal 2013-000652 Application 12/515,782 3 FINDINGS OF FACT & ANALYSIS The Examiner finds that Harashina teaches a polyacetal composition as recited in claim 1, except for including from 0.01 to 1 part by weight of an isocyanate compound (Ans. 4–5). The Examiner finds that Sugiyama teaches adding 0.03 to 5% of an isocyanate compound to a polyacetal composition comprising an antioxidant in order to reduce the formic acid produced (Ans. 5). The Examiner concludes that it would have been obvious to use the isocyanate compounds in the amount disclosed by Sugiyama in Harashina’s polyacetal composition in order to reduce the amount of formic acid that is present in the composition (Ans. 5). Appellant argues that one of ordinary skill would not have obviously picked and chosen one component from Sugiyama (i.e., the isocyanate compound) and have combined it with Harashina’s composition with the expectation that formaldehyde emissions and component bleeding can be reduced (Br. 8). Appellant contends that, contrary to the Examiner’s finding, Sugiyama does not teach reducing the amount of formaldehyde, but rather Sugiyama only teaches at paragraph 12 that formic acid is reduced at the bleeding out of the part is eventually reduced (Br. 9). Contrary to Appellant’s argument, the Examiner finds that one of ordinary skill would have combined Sugiyama’s teaching to use an isocyanate with Harashina’s polyacetal composition in order to reduce formic acid formation (Ans. 5). Whether the art may or may not teach reducing formaldehyde formation is not dispositive because the Examiner’s reason for combining the references does not need to be the same as Appellant’s reason for the combination. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (“[A]ny need or problem known in the field of Appeal 2013-000652 Application 12/515,782 4 endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). In this case, the Examiner’s reason based on reducing formic acid formation provides a sufficient reason for combining Harashina’s and Sugiyama’s teachings. Appellant further argues that the claimed combination of elements produces unexpected synergistic results (Br. 6–7). Appellants contend that the combination of Harashina and Sugiyama is not tenable because Sugiyama does not disclose or suggest that there would be synergy by the inclusion of both an isocyanate compound with guanamine and/or triazine (Br. 7). Appellant’s argument is unpersuasive because obviousness, not synergism, is the proper standard. In re Kollman, 595 F.2d 48, 55 n. 6 (CCPA 1979) (“Synergism, in and of itself, is not conclusive of unobviousness in that synergism might be expected . . . the correct statutory standard, i.e., nonobviousness, has been in contest throughout.”). As noted above, we agree with the Examiner’s conclusion that the combined teachings of Harashina and Sugiyama would have rendered obvious using an isocyanate compound in Harashina’s polyacetal composition to reduce formic acid formation. Appellant further alleges unexpected synergistic results are evidenced by the data in Table 1 on page 43 of the Specification (Br. 6–7). Appellant’s explanation of the data is located on page 6 of the Brief. The Examiner properly finds that the data contained in Table 1 is not probative of nonobviousness because it is not commensurate in scope with claim 1 (Ans. 6). Appellant’s showing is limited to a single polyacetal compound, single hindered phenol-based antioxidant and two guanamine- Appeal 2013-000652 Application 12/515,782 5 based compounds and a single isocyanate compound (Spec. 42–43). In contrast, claim 1 encompasses myriad of polyacetal composition formulations. The Examiner further finds that the data merely shows the expected result, which is not specifically contested by Appellant (i.e., no Reply Brief has been filed). On this record, we affirm the Examiner’s § 103 rejection. DECISION The Examiner’s decision is affirmed. 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). ORDER AFFIRMED cdc Copy with citationCopy as parenthetical citation