Ex Parte Kimura

Patent Trial and Appeal Board

Aug 31, 2017

12491795 (P.T.A.B. Aug. 31, 2017)

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.
12/491,795 06/25/2009 Kenji KIMURA Q114065 6064
23373 7590 09/05/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
KAUCHER, MARK S
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENJI KIMURA
Appeal 2016-007729
Application 12/491,7951
Technology Center 1700
Before GEORGE C. BEST, WHITNEY N. WILSON, and BRIAN D.
RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claim 1. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM. Because our affirmance provides reasoning that differs
from the Examiner’s reasoning in some respects, we designate our
affirmance as a NEW GROUND OF REJECTION under 37 C.F.R.
§ 41.50(b).
1 According to Appellant, the real party in interest is Sumitomo Chemical
Company, Limited. Appeal Br. 2.
Appeal 2016-007729
Application 12/491,795
STATEMENT OF THE CASE2
Appellant describes the invention as relating to packing a known
antioxidant into a polymer bag in order to reduce occurrence of “fish eye
gels” when the antioxidant is added to a resin. Appeal Br. 4—5. Claim 1,
reproduced below, is the only claim on appeal and is illustrative of the
claimed subject matter:
1. A package obtained by packing a compound of the
formula (1) in a bag comprising high density polyethylene, low
density polyethylene, or linear low-density polyethylene as a
main component:
wherein each of R1 and R2 is independently an alkyl group
having 1 to 5 carbon atom(s); R3 is a hydrogen atom or an alkyl
group having 1 to 3 carbon atom(s); and R4 is a hydrogen atom
or a methyl group,
wherein a polyolefin is not contained within the bag, and
wherein the film thickness of the bag is from 130 to 190 pm.
Appeal Br. 20 (Claims App’x).
2 In this opinion, we refer to the Final Office Action dated May 19, 2015
(“Final Act.”), the Appeal Brief filed January 4, 2016 (“Appeal Br.”), the
Examiner’s Answer dated June 16, 2016 (“Ans.”), and the Reply Brief filed
August 9, 2016 (“Reply Br.”).
[Chemical formula 1]
a K
2
Appeal 2016-007729
Application 12/491,795
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Sparks et al. US 2,762,504 Sept. 11, 1956
(hereinafter “Sparks”)
Sasaki et al. EP 0 322 166 Al June 28, 1989
(hereinafter “Sasaki”)
McCandless et al. EP 0 827 978 Al Mar. 11, 1998
(hereinafter “McCandless”)
Bongartz et al. WO 2007/008753 Al Jan. 18, 2007
(hereinafter “Bongartz”)3
Encyclopedia of Polymer Sci. and Tech., Packaging, Flexible, 353—364,
(2001) (hereinafter “Dl”)4
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claim 1 under 35 U.S.C. § 103 as unpatentable over
McCandless in view of Saski, Bongartz, and Sparks. Ans. 2.
Rejection 2. Claim under 35 U.S.C. § 103 as unpatentable over
Sasaki in view of Dl and also in view of Sparks. Id. at 4.
ANALYSIS
The Examiner sets forth the prima facie case of obviousness in the
Final Action. See Final Act. 2—6; Ans. 2—5. Appellant does not challenge
the Examiner’s related findings of fact or reasons for combining the cited
3 The Examiner refers to this reference as “Kronawittleithner.” Ans. 2. We
instead refer to the first named inventor, Brongartz.
4 We refer to this reference as “Dl” because this is the nomenclature adopted
by the Examiner. Ans. 4.
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Application 12/491,795
references. Accordingly, Appellants have not shown reversible error in the
Examiner’s findings and conclusions regarding prima facie obviousness.
Appellant argues that the Examiner’s rejections should be reversed
because of evidence of unexpected results. Appeal Br. 12—19. In particular,
Appellant argues that packaging an antioxidant of formula 1 in a plastic
container as compared to a paper container results in a resin with fewer fish
eyes (an undesirable property). Id. at 18. We have carefully considered
Appellant’s evidence and arguments but ultimately find the evidence and
arguments unpersuasive.
A party asserting unexpected results as evidence of nonobviousness
has the burden of proving that the results are unexpected. In re Geisler, 116
F.3d 1465, 1469—70 (Fed. Cir. 1997). Moreover, the proffered evidence
must be reasonably commensurate with the scope of the claim. In re
Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003) (explaining that
applicant may overcome a prima facie case of obviousness by showing
unexpected results but the showing of unexpected results “must be
commensurate in scope with the claims which the evidence is offered to
support”) (internal quotes and citation omitted).
Here, Appellant’s factual basis for the unexpected results argument
consists of three examples and one comparative example. Appeal Br. 15—
16. Each example is summarized below:
(1) Example 1 prepared Sumilizer GS (a compound allegedly within the
scope of claim 1 ’s formula 1) in a low-density polyethylene bag after first
blending the Sumilizer GS at 0.5 parts with 100 parts by weight of a low-
density polyethylene. Spec. ^48. When the polyethylene pellets were
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Application 12/491,795
charged in a film forming apparatus, the number of fish eye gels was 166 per
square meter. Id.
(2) Example 2 prepared a different compound (also allegedly within the
scope of claim 1 ’s formula), Sumilizer GM, in the same manner as
example 1. Id.^ 49. The number of fish eye gels was 159 per square meter.
Id.
(3) Example 3 prepared a compound in the same manner as example two
except that this examples uses 0.1 parts per weight. Id. 1 50. The result was
144 fish eye gels per square meter. Id.
(4) The comparative example was prepared in the same manner as
example one except that, instead of using the plastic bag, the compound was
put in a paper bag and opened with a cutter knife. The number of fish eye
gels was 299 fish eye gels per square meter.
We note that only the comparison between example 1 and the
comparative example supports to Appellant’s position that an unexpected
result occurs by putting antioxidant in a low-density polyethylene bag as
opposed to a paper bag. The lower number of fish eye gels for examples 2
or 3 cannot necessarily be attributed to the plastic bag because other
variables also changed (i.e., for example two the identity of the antioxidant
changed and for example three the identity of the antioxidant and its parts
per weight changed).
In comparison to Appellant’s four examples, the scope of claim 1 is
broad. Claim 1 ’s recitations include a bag and a compound in the bag. The
bag could be made in any manner and could include any components so long
as “high density polyethylene, low density polyethylene, or linear low-
density polyethylene” is a “main component” and so long as the recited
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Application 12/491,795
thickness recitation is met. The compound in the bag is defined by formula
1, but formula 1 allows variations of its R groups such that many different
compounds are possible. Moreover, as made clear by the experimental
examples, the bag could contain any number of other additives while also
containing the formula 1 compound (so long as “a polyolefin is not
contained within the bag”), and the formula 1 compound could be a large or
very small part of the bag’s content.
Given the breadth of claim 1, the examples provided are not
reasonably commensurate with the scope of the claim. The data provided is
insufficient to reasonably conclude that other embodiments falling within the
scope of claim 1 (e.g., packages having different formula 1 compounds,
different plastic bags, other additives, and/or different per weight of
formula 1) would behave in the same manner (i.e., exhibiting less fish eye
gel density as illustrated by the difference between example 1 and the
comparative example). See, e.g.. South Alabama Med. Sci. Found, v. Gnosis
S.P.A., 808 F.3d 823, 827 (Fed. Cir. 2015) (holding that Board applied
appropriate standard by addressing whether there was adequate basis to
support conclusion that other embodiments within claim would behave in
same manner).
Mr. Kitamura testifies that “the unexpected results discussed above
are representative of the full scope of the invention claimed in the pending
claims.” Aug. 17, 2015, declaration of Mr. Kazuhio Kitamura at 5.
Mr. Kitamura’s testimony is not persuasive, however, because it is
conclusory. Mr. Kitamura provides no reasoning or factual basis that would
support that other embodiments within claim 1 would behave in the same
manner as examples 1,2, and 3.
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Application 12/491,795
Because Appellant has not met the burden of establishing unexpected
results and rebutting the prima facie case of obviousness, we sustain the
Examiner’s rejection.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claim 1
and designate our affirmance as a new ground of rejection under 37 C.F.R.
§ 41.50(b).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is made which,
in the opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
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Application 12/491,795
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED; 37 C.F.R, $ 41.50(b)
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