Ex Parte Onishi et al

Patent Trial and Appeal Board

May 31, 2017

13203564 (P.T.A.B. May. 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.
13/203,564 08/26/2011 Hideaki Onishi AKA-0313 8685
23599 7590 06/02/2017
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
WALES, CHRISTINA H
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDEAKI ONISHI, HISANORI SEMORI, and
MASASHI ASAOKA
Appeal 2016-004845
Application 13/203,5641
Technology Center 1700
Before CATHERINE Q. TIMM, MONTE T. SQUIRE, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 7, 8, 10, and 11. We have jurisdiction. 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Dai-ichi Kogyo
Seiyaku Co., Ltd. Appeal Br. 1.
Appeal 2016-004845
Application 13/203,564
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a process for
producing foamable styrene-based resin beads. Appeal Br. 2. Appellants
state that the beads have enhanced flame retardancy and a low volatile
content. Spec. 11. Foams made from the beams could be used, for
example, as insulation materials. Id. 12. Claim 7, reproduced below with
formatting added for readability and emphases added to certain key
recitations, is the only independent claim on appeal and is illustrative of the
claimed subject matter:
7. A process for producing foamable styrene-based resin
beads comprising the steps of:
suspension polymerizing a monomer composition
comprising a styrene type monomer and 0.5 to 5.0 parts by
weight per 100 parts by weight of said monomer of a bromine
containing flame retardant to obtain styrene-based resin
particles wherein said particles have a content of residual
monomer of less than 580 ppm, as determined by gas
chromatography analysis, and
impregnating the resulting resin particles with a blowing
agent during or after the polymerization process,
wherein said bromine-containing flame retardant is a
mixture of
(a) an organic bromine-containing compound
having a 2,3-dibromo-2-alkylpropyl group and
(b) an organic bromine-containing compound
having bromine content greater than 50 wt% and free of
any bromine atom attached to a tertiary carbon atom,
2 In this decision, we refer to the Final Office Action dated May 19, 2015
(“Final Act.”), the Appeal Brief filed September 25, 2015 (“Appeal Br.”),
the Examiner’s Answer dated February 2, 2016 (“Ans.”), and the Reply
Brief filed April 4, 2016 (“Reply Br.”).
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wherein the organic bromine-containing compound (b) is
selected from the group consisting of:
bis(2,3-dibromopropyl)ethers of tetrabromobisphenol A,
tetrabromobisphenol S or tetrabromobisphenol F,
tris(2,3- dibromopropyl)isocyanurate,
tris(2,3-dibromopropyl) cyanurate,
tris(tribromoneopentyl)phosphate,
tetrabromobisphenol A,
hexabromobenzene,
pentabromotoluene,
1,2-bis(tribromophenoxy)ethane,
polybromodiphenyl-ether,
polybromodiphenylethane,
tris(polybromophenoxy)triazine,
polybromophenylindane,
tetrabromobisphenol A epoxy oligomer and terminal
adduct thereof with tribromophenol,
tetrabromobisphenol A carbonate oligomer,
polybrominated polystyrene,
homopolymers of di-, tri-, tetra- and penta-bromostyrene,
brominated polyphenylene oxide,
poly(pentabromobenzyl acrylate) and ethylene bis-
tetrabromophthalimide,
wherein the ratio of (a): (b) is from 10:90 to 90:10 on
weight basis, and
wherein shaped foamed articles prepared from foamable
styrene-based resin beads comply with the flame retardancy
standards of JIS A 9511.
Appeal Br. 17 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Onishietal. US 2007/0173569 A1 July 26, 2007
(hereinafter “Onishi”)
Umedaetal. JP S63-172755
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Jan. 13, 1987
Appeal 2016-004845
Application 13/203,564
(hereinafter “Umeda”)
Michele Modesti and Alessandra Lorenzetti, Fire Retardancy of Polymeric
Materials 763—781 (2010) (hereinafter “Modesti”)
A. R. Ingram, Expandable Polystyrene Processes, Addition and
Condensation Polymerization Processes 513—528 (1969) (hereinafter
“Ingram”)
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 7, 8, 10, and 11 under 35 U.S.C. § 112 as failing
to comply with the written description requirement. Ans. 2.
Rejection 2. Claims 7, 8, and 10 under 35 U.S.C. § 103 as
unpatentable over Modesti in view of Umeda and further in view of Onishi.
Id. at 2.
Rejection 3. Claim 11 under 35 U.S.C. § 103 as unpatentable over
Modesti in view of Umeda and in further view of Onishi and Ingram. Id.
at 5.
ANALYSIS
Rejection 1. The Examiner rejects claims 7, 8, 10, and 11 pursuant to
the written description requirement of 35 U.S.C. § 112 based upon the
Specification not supporting “less than 580 ppm” residual monomer as
recited in claim 7. Ans. 2. The Specification explicitly discloses 340—580
parts per million. Id.', see also Spec. Table 2. The Examiner maintains,
however, that the Specification does not “show one of ordinary skill how to
practice the invention” or “how to achieve 0—340 ppm . . . .” Ans. 7.
Appellants argue that their application “reasonably conveys to the
artisan that the inventor had possession at the time of the later claimed
subject matter.” Appeal Br. 4 (quoting Ralston Purina Co. v. Far-Mar-Co.,
Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)) (emphasis original to Appeal
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Application 13/203,564
Br.). Appellants argue that the Specification implicitly discloses residual
monomers in the “less than 580 ppm” range because the disclosure teaches a
method “which provides particles with as low as possible residual monomer
content.” Id. (citing Spec. Tflf 1,4, 7, 10, 20, 22).
For an applicant to comply with the written description requirement of
35 U.S.C. § 112, the applicant’s specification must “convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she
was in possession of the invention.” Carnegie Mellon Univ. v. Hoffmann-La
Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)). Here, the
Specification meets that test. As Appellants argue, the Specification
indicates that the invention seeks to minimize residual monomers (to, for
example, prevent “sick house syndrome,” Spec. 14). Claim 7’s “less than
580 ppm” recitation reflects Appellants’ possession of the idea of seeking
such minimization. Cf. Ralston Purina Co., 772 F.2d at 1575 (holding that
claim recitation of “protein content of at least about that of solvent extracted
soybean meal” was supported by application which spoke of “high protein
content” and disclosed preferred minimum protein content but no upper
limit). We therefore do not sustain the Examiner’s written description
rejection.
Rejections 2 and 3. We review the appealed rejections for error based
upon the issues identified by the Appellants and in light of the arguments
and evidence produced thereon. Cf. 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) (“it 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
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Appellants’ arguments, we are not persuaded that Appellants identify
reversible error with respect to these rejections. Thus, we affirm the
Examiner’s obviousness rejections for the reasons expressed in the Final
Office Action and the Answer. We add the following primarily for emphasis.
Appellants argue claims 7, 8, and 10 as a group and do not present
separate arguments with respect to the Examiner’s third rejection (rejecting
claim 11). See Appeal Br. 5, 16. Therefore, consistent with the provisions
of 37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to claim 7, and
all other claims on appeal stand or fall together with claim 7.
The Examiner finds that Modesti teaches adding flame retardants to
different foams and teaches adding retardants during polymerization. Ans. 2
(providing citation to Modesti). The Examiner finds that Modesti is silent as
to the specific flame-retardant recited in claim 7. Id.
The Examiner finds, however, that Umeda teaches a foamable
styrene-based resin composition comprising an organic bromine-containing
compound having a 2,3-dibromo-2-alkylpropyl group. Ans. 2—3. The
Examiner concludes that “one of ordinary skill in the art would be [sic, have
been] motivated to use the flame-retardants of Umeda in the process
described by Modesti for better heat resistance and mechanical properties of
the resultant polystyrene.” Id. at 2; see also Umeda 4 (indicating that its
resin will provide flame retardancy without impairing the resin’s heat
resistance or mechanical properties). The Examiner finds that Umeda is
silent as to an organic bromide compound corresponding to (b) as recited by
claim 7 although it does teach combinations of (a) with other known flame
retardants including, for example, those of General Formula II or
hexabromocyclododecane. Ans. 3.
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The Examiner finds that Onishi teaches numerous compounds among
those recited as (b) in claim 7. Id. (providing citations to Onishi). The
Examiner finds that Onishi describes hexabromocyclododecane and
Umeda’s General Formula II compound as equivalents. Id. The Examiner
thus concludes that it would have been obvious to one of ordinary skill in the
art to substitute one of the functional equivalents of Onishi for
hexabromocyclododecane or General Formula II in the formulas described
forUmeda. Id. A preponderance of the evidence supports the Examiner’s
findings and conclusions.
Appellants argue that the cited art does not recognize a problem
solved by the invention—namely that adding certain flame retardants to a
monomer before suspension polymerization will interfere with
polymerization and lead to undesirable levels of residual monomer. Appeal
Br. 5—6. Appellants argue that because the prior art does not recognize this
problem combining the reference’s teachings is an improper hindsight-
guided combination of elements. Id. at 5—10.
Appellants’ argument is not persuasive because, as explained by the
Examiner, “the cited references do not need to recite a problem solved by
the instant claims . . . .” Ans. 7. The fact pattern here is akin to that
addressed by the Supreme Court in its seminal KSR decision. There, the
Supreme Court held that the Court of Appeals erred by “fail[ing] to
recognize that the problem motivating the patentee may be only one of many
addressed by the patent’s subject matter.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007). Thus, “[ujnder the correct analysis, any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” Id. (emphasis added); see also Ex Parte Obiaya, 227
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USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (“The fact that appellant has
recognized another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious.”).
Here, as explained above, the Examiner provided cogent rationales
supported by a preponderance of the evidence as to why a person of ordinary
skill in the art would have been inclined to use the flame-retardants of
Umeda in the process described by Modesti and why a person of skill in the
art would have found it obvious to substitute functional equivalents taught
by Onishi for those explicitly taught by Umeda. Ans. 2—3. Appellants do
not present a persuasive argument or evidence that would establish that the
Examiner’s stated rationales for combining the references is incorrect.
Ans. 8. The fact that the Examiner’s rationale to combine (the benefits of
Umeda’s material and the equivalence of Onishi’s material) is not the same
as Appellants’ rationale (minimization of residual monomer) does not
constitute error in the Examiner’s analysis.
Appellants place much emphasis on Leo Pharmaceutical Prods., Ltd.
v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013). Appeal Br. 7—10. That case,
however, is distinguishable. There, the inventors of the patent at issue
recognized and solved a problem relating to the storage of Vitamin D
combined with a corticosteroid. Leo Pharm Prods., 726 F.3d at 1353—54.
The prior art either discouraged such a combination or attempted the
combination without recognizing the storage stability problem. Id. at 1353.
Thus, the facts established a “lack of expectation of a successful result” and
“failure of the prior art to provide direction.” Id. at 1357. Our reviewing
court therefore reversed the Board’s obviousness determination because its
rationale that “one of ordinary skill would have used vitamin D to solve the
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well-known side effects of steroid treatment” was inadequate to support the
combining of the references’ teachings under the circumstances. Id. at 1356.
In contrast to the facts of Leo Pharm Prods., the record here includes
no evidence that one of ordinary skill in the art would have been discouraged
from making the Examiner’s proposed combination. Appellants argue that
the prior arts teachings “direct one of ordinary skill in the art away from the
claimed invention” (Reply Br. 3), but Appellants do not identify any such
teachings. Rather, Appellants emphasize that each reference individually
does not teach claim 7’s recited combination: Modesti does not teach the
specifically recited flame retardants and Umeda and Onishi do not teach
suspension polymerization with the flame retardant. Appeal Br. 6—7, 9—10.
That each individual references is not identical to the recited claim however
is neither a teaching away nor indicative of non-obviousness. See, e.g., In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.”); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”).
Appellants also argue that the Examiner errs by stating that changing
the order of the process is per se obvious. Appeal Br. 10; Reply Br. 3. The
Examiner’s statement to this effect (Ans. 4,119), however, is not necessary
to support the Examiner’s obviousness conclusion. The primary reference,
Modesti, explicitly teaches the order recited by claim 7. Ans. 2. This
argument therefore does not identify harmful error.
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Appellants also argue that unexpected results further support non­
obviousness. Ans. 11—15. 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). We
have carefully considered Appellants’ evidence and arguments, but we
ultimately find the evidence unpersuasive.
Here, the Examiner agrees that Appellants’ data3 supports that the
result of less residual monomer is unexpected and agrees that Appellants
have fairly made a comparison to the closest prior art of record. Ans. 6.
Appellants’ evidence of unexpected results, however, must also be
reasonably commensurate with the scope of the claim 7. 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). “If an applicant demonstrates that an embodiment has an
unexpected result and provides an adequate basis to support the conclusion
that other embodiments falling within the claim will behave in the same
manner, this will generally establish that the evidence is commensurate with
scope of the claims.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir.
2011).
Here, the Examiner finds that claim 7’s compound (a) “encompasses
thousands of possibilities” (Ans. 6), and Appellants do not dispute this
finding. Appellants’ data, however, establishes beneficial results for only
one compound (a)—bromine compound B-l-1. Spec. Table 2; see also Ans.
3 Appellants’ data is presented in presented in Tables 2 and 3 of the
Specification and in the March 25, 2015, declaration of Mr. Hideaki Onishi.
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6. While Appellants are correct that “they are not required to demonstrate
every possible embodiment of their invention” (Appeal Br. 15), Appellants’
proffered evidence as to only one compound (a) is not an adequate basis to
support the conclusion that the thousands of other embodiments falling
within the claim will behave in the same manner. In re Greenfield, 571 F.2d
1185, 1189 (CCPA 1978) (“Establishing that one (or a small number of)
species gives unexpected results is inadequate proof, for it is the view of this
court that objective evidence of non-obviousness must be commensurate in
scope with the claims which the evidence is offered to support.”) (internal
quotes and citation omitted). As such, Appellants’ arguments regarding
unexpected results do not establish Examiner error.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims 7,
8, 10, and 11 under 35 U.S.C. § 103. We reverse the Examiner’s rejection of
claims 7, 8, 10, and 11 under 35 U.S.C. § 112.
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
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