Ex Parte Sakata

Patent Trials and Appeals Board

Jan 14, 2019

13702885 - (D) (P.T.A.B. Jan. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/702,885 02/15/2013
20995 7590 01/16/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Kouichi Sakata
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SHOBA19.008APC 9432
EXAMINER
CHEN,VNIAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
01/16/2019 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte KOUICHI SAKATA
Appeal2018-002922
Application 13/702,885
Technology Center 1700
Before CATHERINE Q. TIMM, MARK NAGUMO, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 3 5 U.S. C. § 134 from a rej ection2 of claim 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as "WinTech Polymer Ltd." Appeal
Brief of May 10, 2017 ("Br.") 3.
2 Final Office Action of September 12, 2016 ("Final Act."). In this opinion,
we also refer to the Examiner's Answer of November 21, 2017 ("Ans.") and
the Reply Brief of January 22, 2018 ("Reply Br.").
Appeal2018-002922
Application 13/702,885
CLAIMED SUBJECT MATTER
The claims seek to "greatly improve the adhesiveness between a resin
molded article and silicone-based adhesive"
by using a modified polyalkylene terephthalate resin in which
aromatic dicarboxylic acid excluding terephthalic acid and/or
an ester compound thereof are copolymerized as modified
components, and the content of the above-mentioned modified
component relative to the total dicarboxylic acid component is
adjusted to at least 13 mol% and no more than 35 mol%.
Spec. 5-6. 3 Claim 1, reproduced below, is the sole pending claim:
1. A method for adhering a first modified polyalkylene
terephthalate resin molded article to a second resin molded
article, comprising:
(a) providing the modified polyalkylene terephthalate
resin, which is prepared by a method comprising:
(i) copolymerizing an aromatic dicarboxylic acid
excluding terephthalic acid, and/or an ester compound
thereof as a modified component with a polyalkylene
terephthalate resin, wherein the content of the modified
component relative to the total dicarboxylic acid
component is at least 13 mol% and no more than 35 mol%
to produce a modified polyalkylene terephthalate resin;
and
(ii) molding the modified polyalkylene terephthalate
resin into the resin molded article; and
(b) adhering the first modified polyalkylene terephthalate resin
molded article to the second resin molded article with an addition
reaction-type silicone adhesive,
wherein both the first modified polyalkylene terephthalate resin
molded article and the second resin molded article are made of the
same modified polyalkylene terephthalate resin, and wherein the
3 Application No. 13/702,885, Modified Polyalkylene Terephthalate Resin
for Improving Adhesion, Modified Polyalkylene Terephthalate Resin
Composition for Improving Adhesion, Resin Molded Article, and Bonded
Article, filed December 7, 2012 ("Spec.").
2
Appeal2018-002922
Application 13/702,885
modified polyalkylene terephthalate resin comprises isophthalic acid
polybutylene terephthalate resin.
Claims Appendix.
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Uno
Hara
US 2002/0188073 Al
US 2006/0009577 Al
REJECTION
Dec. 12, 2002
Jan. 12,2006
The Examiner rejects claim 1 under pre-AIA 35 U.S.C. 103(a) as
being unpatentable over Uno in view of Hara. Final Act. 2.4
OPINION
The dispositive issue on appeal is whether the Examiner reversibly
erred in evaluating the purported unexpected results of the composition
produced by the recited method. See Br. 6. More specifically, Appellant
argues that the Examiner reversibly erred in considering Table 1 (reproduced
below) in the Specification. Id. at 7.
4 Claim 6 was also rejected (Final Act. 2) and later canceled. Br. 5. Claim 6
is not before us on appeal.
3
Appeal2018-002922
Application 13/702,885
jNon---~-iified PB.'3''1 .(:ma.ss ~}~ . 1 0 0 t ,
................................................................................................................................................... "\\.,,, ................................................................................................................ _ ................................................................................................................................. j ............................................................ ...:t,. ............................................................. ...
~ fkH";•'""-~b,:-~•!h.f ::~ ~\!t - pg-:r:2 n ~~~:.; ~ n ~:) ~ •-nnnnnnnnnn nnnnnnnnnnn- ~nnnnnnnnnnn- nnnnnnnnnn- it •nn:t no_ 0 ---- ~ •-nnnnnn . nnn
I M:orl.i fis;d PBT"l <""•"'" 's} j I !. i I {) G : -------------------·-·t·- . ---- ----- :--------------------: ------ t -----
: l>brh Us,d Vc\'t~ (n,;, .. ~;, % l l ! 0 0 : i. i
: _ M:odif i .. d __ HY1J __ l.""'"" __ ,,., J ___________________________ 1__n _n __ __j ____________________________________________ J ____________________ j ______________________
: i-h,~;di<:<,-i P:S'M (,M.~., ti l : .1 n o i. i
: (:o;,,.t,,.r,.t >: mo1jlfieo} ! · !
:---------------------------------------------~ ......................................................... : _ ............ ·----------------------------- ........... !
i ModifiedPST1 ! i .. . . . i
\ f~~- ~ .. -~ ·,r , ~ -.- ! 50 wtt}~ i
, , i 2.D% mod1,ie:tl1 i i ,
~~~~~~~~~~~~~~~~~~~n • • • • • • • • • • • • • •tttttt ............................ ~ ....................................................................................... ._._._._._._._._.,_.,_., •• •,•,•i•.•,•,•,•,•,•,•," ------·---------------------------------------------1
i Resin other than PBT rei,.ir( ! 50 .vt% i 50 w!'% i
t._._._._._._._._._._._._._._._._._._._._._._._._._._._._._._._._._._ ................ _______________ ~--------------------------------------------------............ J ... ..-. ..-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.------- ·--------------------------- :
i Si!icone-based adhesive ! i i
i ! 5..5 MPa ! 2.0 MPa i
i strength ! i · i
'.As th~ resin other them \ho ~BT rnsin, Paraloid EXL 513k of Rohm arid Haas Japan .. =
Kabushiki Kaisha was used.
Table A of the Sakata Declaration
Mr. Sakata states: "The data presented in TABLE A herein
demonstrate that the criticality of the claimed range of the mol% of 13
mol % to 35 mol% also holds true when the molded article is not 100 wt%
the same modified PBT resin." Deel. ,-J 7 (emphasis omitted). "For
example, the molded article in TABLE A is 50 wt% Paraloid EXL 5136 of
Rohm and Haas Japan Kabushiki Kaisha and 50% wt modified PBT as
claimed." Id. ,-i 11.
From the outset, whether the difference between the subject matter of
the claim and the closest prior art is unexpected notwithstanding, "[t]he
evidence presented to rebut a prima facie case of obviousness must be
commensurate in scope with the claims to which it pertains." In re Dill, 604
F.2d 1356, 1361 (CCPA 1979). "Commensurate in scope" means that the
evidence provides a reasonable basis for concluding that the untested
embodiments encompassed by the claims would behave in the same manner
as the tested embodiment(s). See In re Lindner, 457 F.2d 506, 508 (CCPA
1972) ("Here, only one mixture of ingredients was tested . . . . The claims,
5
Appeal2018-002922
Application 13/702,885
however, are much broader in scope, ... and we have to agree with the
Patent Office that there is no 'adequate basis for reasonably concluding that
the great number and variety of compositions included by the claims would
behave in the same manner as the [single] tested composition."') (bracketed
material in original).
In this case, the Examiner finds that the data shown in Table 1 and
Table A of the Sakata Declaration are not commensurate in scope with claim
1. Ans. 5. For example, the Examiner finds that neither Appellant nor Mr.
Sakata has specified the type of the recited "reaction-type silicone adhesive"
used in any of the examples - or that the examples used the same silicone
adhesive at all. Id. at 5, 8. 5 The Examiner finds that the data shown in Table
1 and Table A are limited to 15 mol%, 17 mol %, and 30 mol% of PBT and
the record lacks evidence to show why the three data points are reasonably
representative of the entire recited range of "at least 13 mol% and no more
than 35 mol%." Id. at 7 (emphasis omitted). The Examiner finds that the
data shown in Table 1 and Table A are limited to 100 wt% and 50 wt% of
PBT and the record lacks evidence to show why the two data points are
reasonably representative of claim 1 which is not limited to any weight
percentage of the polyalkylene terephthalate resin at all. Id. at 6-8. The
data is also limited to compounds such as ones known by the tradename of
"Duranex 400FP" and "Paraloid EXL 5136 of Rohm and Haas Japan
Kabushiki Kaisha" without compositional detail. Deel. Table A; Spec. 16.
Neither Appellant nor Mr. Sakata explains why these particular composition
5 The Specification merely provides that the silicone-based adhesive may be
one with the trade name of SEl 714 without specifying its composition.
Spec. 16-17.
6
Appeal2018-002922
Application 13/702,885
are reasonably representative of polymers encompassed by claim 1, which
does not recite a particular type of polyalkylene terephthalate resin,. The
data presented in Table 1 as well as the Sakata Declaration is therefore not
commensurate in scope with claim 1.
Moreover, "[ m Jere improvement in properties does not always suffice
to show unexpected results. In our view, however, when an applicant
demonstrates substantially improved results ... and states that the results
were unexpected, this should suffice to establish unexpected results in the
absence of evidence to the contrary." In re Soni, 54 F.3d 746, 751 (Fed. Cir.
1995).
In this case, the Specification provides that "the silicone adhesive
strength improves with a content of modified component of at least 13
mol%" without stating that the gain in silicone adhesive strength is
unexpected. Spec. 19. To the extent that Mr. Sakata states that such
property is unexpected (Deel. ,-J,-J 6, 9, 11 ), the Sakata Declaration lacks
evidence as to "what the skilled artisan would have expected." See Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) ("[B]y definition,
any superior property must be unexpected to be considered evidence of non-
obviousness. Thus, in order to properly evaluate whether a superior property
was unexpected, the [fact-finder] should have considered what properties
were expected. Here, Pfizer's evidence must fail because the record is
devoid of any evidence of what the skilled artisan would have expected.")
( citations omitted). The Examiner also finds that neither Appellant nor Mr.
Sakata has shown that the purported unexpected results are solely
attributable to the recited mol% of modified resin. Ans. 8-10 (finding, for
example, the type of silicone adhesive may also be an attributable factor).
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Appeal2018-002922
Application 13/702,885
Appellant does not respond to these findings. See Reply Br. 2-3. 6 Based on
the foregoing, we are therefore not persuaded that the Examiner reversibly
erred in determining that the purported unexpected results are not persuasive
of unexpected results rebutting the prima facie case of obviousness.
We accordingly sustain the rejection of claim 1.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
6 In the Reply Brief, Appellant submits a reference (Silicone Chemistry
Overview, Dow Coming (1997)) purported to show that "[n]o mention is
made that selection of particular silicon-based adhesive would behave
substantially differently." Reply Br. 3. We decline to consider an overview
of silicone - not specific to the recited "reaction-type silicon adhesive" and
does not mention adhesive strength (with polyalkylene terephthalate resin or
others) at all - as affirmative evidence to show unexpected results of claim
1.
8