Ex Parte Sasaki

Patent Trial and Appeal Board

Dec 26, 2017

13618368 (P.T.A.B. Dec. 26, 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.
13/618,368 09/14/2012 Haruo SASAKI 400625US99CONT 9703
22850 7590 12/28/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
12/28/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARUO SASAKI
Appeal 2017-001587
Application 13/618,368
Technology Center 1700
Before PETER F. KRATZ, ROMULO H. DELMENDO, and
WESLEY B. DERRICK, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter “Appellant”)1 appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1—6, 8,
9, 13—19, and 22—29.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant states that Mitsubishi Chemical Corporation is the real
party in interest (Appeal Brief filed May 23, 2016, hereinafter “Appeal Br.,”
1).
2 Appeal Br. 6—23; Reply Brief filed November 8, 2016, hereinafter “Reply
Br.,” 2—6; Final Office Action entered September 25, 2015, hereinafter
“Final Act.,” 3—8, 10-12; Examiner’s Answer entered September 9, 2016,
hereinafter “Ans.,” 2—16.
Appeal 2017-001587
Application 13/618,368
I. BACKGROUND
The subject matter on appeal relates to a polycarbonate composition
(Specification filed September 14, 2012, hereinafter “Spec.,” 11).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief (Appeal Br. 25—26), with key limitations emphasized, as
follows:
1. A polycarbonate resin composition which
comprises a polycarbonate resin at least containing structural
units derived from a dihydroxy compound represented by the
following general formula (4) as part of the structure thereof, and
an amine compound as a light resistance improver, the
polycarbonate resin composition giving a molded object having
a thickness of 3 mm which has a haze, as measured in
accordance with JIS K7105, of 12 or less after having
undergone a 1,200-hour irradiation treatment with a sunshine
carbon arc lamp through a type-A glass filter in accordance with
JIS B7753 in an environment having a black panel temperature
of 63°C, a relative humidity of 50%, and a rainfall spray period
per hour of 12 minutes at a discharge voltage of 50 V and a
discharge current of 60 A:
wherein the proportion of the structural units derived from
a dihydroxy compound having the portion represented by the
general formula (4) to the number of moles of all structural units
each derived from a dihydroxy compound is 10 mol% or higher
but 90 mol% or less,
wherein the polycarbonate resin is obtained by
condensation-polymerizing, by a transesterification reaction, one
or more dihydroxy compounds including the dihydroxy
2
Appeal 2017-001587
Application 13/618,368
compound represented by the general formula (4) as part of the
structure thereof with a carbonic diester represented by the
following general formula (2) in the presence of a Group 2 metal
compound as a transesterification reaction catalyst:
9
At_o—£—O—A2 (a)
wherein in the general formula (2), A1 and A2 each
represent a substituted or unsubstituted aliphatic group having 1—
18 carbon atoms or a substituted or unsubstituted aromatic group,
and A1 and A2 may be the same or different,
wherein the light resistance improver is present in an
amount of 0.0001—1 part by weight per 100 parts by weight of
the polycarbonate resin,
wherein the amine compound has a plurality of
piperidine structures,
wherein a total amount of sodium, potassium and cesium
in the polycarbonate resin is 1 weight ppm or less in terms of
metal amount,
wherein the polycarbonate resin is produced by using the
carbonic diester represented by the general formula (2) in an
amount that a molar proportion thereof to the dihydroxy
compounds to be subjected to the transesterification reaction is
0.95—1.10, and
wherein the polycarbonate resin contains no structural unit
derived from a dihydroxy compound having an aromatic ring
structure in the molecular structure.
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections under pre-AIA
35 U.S.C. § 103(a),3 as follows:
3 The Examiner states that the rejections under 35 U.S.C. § 112, 4, and
double patenting grounds have been withdrawn (Ans. 2).
3
Appeal 2017-001587
Application 13/618,368
A. Claims 1, 2, 6, 8, 9, 13—19, and 22—29 as unpatentable over Fuji
et al.4 (hereinafter “Fuji”) in view of Pearson et al.5 (hereinafter
“Pearson”) or Hironaka et al.6 (hereinafter “Hironaka”);
B. Claims 3 and 4 as unpatentable over Fuji in view of Pearson or
Hironaka, and further in view of Kondoh et al.7 (hereinafter
“Kondoh”); and
C. Claim 5 as unpatentable over Fuji in view of Pearson or
Hironaka, and further in view of Mullen.8
(Final Act. 3—8; Ans. 2—16.)
III. DISCUSSION
The Appellant relies on the same arguments for all three rejections
(Appeal Br. 6—23). In addition, the Appellant argues the claims together
(id.). Therefore, we confine our discussion to claim 1, which we select as
representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). Consistent with this
rule, claims 2—6, 8, 9, 13—19, and 22—29 stand or fall with claim 1.
The Examiner finds that Fuji describes every compositional limitation
recited in claim 1 except for an amine compound having a plurality of
piperidine structures—i.e., the “light resistance improver” (Final Act 3—4).
The Examiner finds further, however, that Pearson or Hironaka would have
4 WO 2007/148604 Al, published December 27, 2007. Without objection
from the Appellant, the Examiner relies on US 2010/0190953 Al, published
July 29, 2010, as an English language equivalent.
5 US 2005/0277713 Al, published December 15, 2005.
6 JP 2009-061762A, published March 26, 2009 (machine-generated
translation of record).
7 US 4,918,160, issued April 17, 1990.
8 US 2007/0117957 Al, published May 24, 2007.
4
Appeal 2017-001587
Application 13/618,368
suggested adding the specified piperidine-containing amine compound as a
light stabilizer {id. at 4). Based on these findings, the Examiner concludes
that “[i]t would have been obvious to one of ordinary skill in the art at the
invention was made to use Tinuvin 770 as taught by Pearson et al. or the
amine light resistance stabilizers of Hironaka et al. in the composition of
Fuji et al. to improve the light resistance of the polycarbonate composition”
{id. at 5). The Examiner further states that “[i]t would have been obvious to
optimize the amount added for a desired light resistance” {id.).
The Appellant makes several arguments. First, the Appellant argues
that Fuji, Pearson, and Hironaka do not disclose or suggest the limitation “a
total amount of sodium, potassium and cesium in the polycarbonate resin is
1 weight ppm or less in terms of metal amount,” as recited in claim 1
(Appeal Br. 12). According to the Appellant, Fuji discloses the amount of
cesium carbonate catalyst in Example 2 to be 2.22 ppm (calculated) and,
therefore, “the resulting] carbonate resin very likely contains more than 1
weight ppm of cesium” {id. at 13). In support, the Appellant appears to rely
on Namiki et al. (hereinafter “Namiki”), US 2012/0232243 Al, published
September 13, 2012 {id.). Second, the Appellant contends that the Examiner
did not properly consider objective evidence of unexpected results relating
to the specified total amounts for sodium, potassium, and cesium {id. at 16—
18) (relying on Namiki and a 37 C.F.R. § 1.132 Declaration of Tomohiko
Tanaka dated August 19, 2015). Third, the Appellant argues that Fuji,
Pearson, and Hironaka do not teach or suggest the specified amine
compound having a plurality of piperidine structures {id. at 19). According
to the Appellant, Pearson’s examples discloses a composition that also
contains a polyester and it was widely known that the addition of such
5
Appeal 2017-001587
Application 13/618,368
compounds was impracticable {id. at 20). Regarding Hironaka, the
Appellant contends that the reference does not contain an example in which
a hindered amine-based light stabilizer is used {id. at 21). Fourth, the
Appellant argues that the inclusion of the amine compound having a
plurality of piperidine structures provides unexpected results in terms of the
haze characteristics recited in claim 1 and that such results would not have
been inherent {id. at 21—22).
The Appellant’s arguments fail to identify any reversible error in the
Examiner’s rejection.9 Because the Examiner’s findings, analysis, and
conclusion are free from reversible error, we adopt them as our own and add
the following for emphasis.
1. Whether Fuji Describes the Recited Na, K, and Cs Total
Amount
Contrary to the Appellant’s position, we find no error in the
Examiner’s finding that it reasonably appears Fuji describes the Na, K, and
Cs total amount limitation. The Appellant argues that the calculated amount
for cesium carbonate catalyst used in Fuji’s Example 2 is 2.22 weight ppm,
making it “very likely” that the amount of Cs metal amount in the
polycarbonate resin is more than 1 weight ppm (Appeal Br. 12—13). But as
the Examiner points out (Ans. 3), Fuji’s Example 9 describes using a much
lower amount of cesium carbonate catalyst—specifically, 0.221 weight ppm
(Fuji, 1201), which would reasonably indicate that the amount of Cs metal
in the polycarbonate resin would also be lower than 1 weight ppm. The
Appellant does not comment on the Examiner’s finding regarding Fuji’s
9 See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
6
Appeal 2017-001587
Application 13/618,368
Example 9 (Reply Br. 2). Therefore, we accept it as uncontested fact. In re
Watts, 354 F.3d 1362, 1367-1368 (Fed. Cir. 2004).
2. Whether Unexpected Results Have Been Established for
the Specified Na, K, and Cs Total Amount
Because the Appellant does not direct us to any sworn experimental
data comparing the invention recited in claim 1 against Fuji’s Example 9 in
which the Na, K, and Cs total amount reasonably appears to be less than 1
weight ppm, we agree with the Examiner’s assessment (Ans. 7) that no
sufficient evidentiary basis exists to conclude that the Appellant
demonstrated unexpected results in terms of the Na, K, and Cs total content
against the closest prior art. In re Baxter TravenolLabs., 952 F.2d 388, 392
(Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”).
3. Whether Pearson or Hironaka Would Have Suggested the
Addition of an Amine Compound Having Piperidine
Structures into Fuji’s Composition
The Appellant argues that when a hindered amine-based light
stabilizer is present in Pearson’s compositions, a polyester is also present
(Appeal Br. 19—20) (citing Pearson’s Example 6,1101). Pearson, however,
would have reasonably suggested that the hindered amine light stabilizers,
including those that have piperidine structures, can be used not only with
blends of polyester and polycarbonate, but also polycarbonate alone
(Pearson, H 6—10, 104). Hironaka contains a similar disclosure (Hironaka,
1120, 46-47). These teachings provide a reasonable factual basis upon
which to conclude that a person having ordinary skill in the art would have
expected an amine having piperidine structures would work in Fuji’s
7
Appeal 2017-001587
Application 13/618,368
polycarbonate composition. Yorkeyv. Diab, 601 F.3d 1279, 1284 (Fed. Cir.
2010) (The Board has discretion to give more weight to one item of evidence
over another “unless no reasonable trier of fact could have done so”).
Moreover, as the Examiner explains (Ans. 11), claim 1 does not
exclude the presence of a polyester as described in Pearson. In re Baxter,
656 F.2d 679, 686 (CCPA 1981) (“As long as one of the monomers in the
reaction is propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”).
4. Whether Unexpected Results Have Been Shown for the
Piperidine-Containing Amine Compound
Contrary to the Appellant’s belief, the prior art need not discuss
exactly the same characteristics recited in a claim in order to form the
evidentiary basis for a prima facie case of obviousness. In this regard, our
reviewing court, sitting en banc, explained:
it is not necessary in order to establish a prima facie case of
obviousness that both a structural similarity between a claimed
and prior art compound (or a key component of a composition)
be shown and that there be a suggestion in or expectation from
the prior art that the claimed compound or composition will have
the same or a similar utility as one newly discovered by
applicant. To the extent that [In re] Wright[, 848 F.2d 1216 (Fed.
Cir. 1988)] suggests or holds to the contrary, it is hereby
overruled. In particular, the statement that a prima facie
obviousness rejection is not supported if no reference shows
or suggests the newly-discovered properties and results of a
claimed structure is not the law.
In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (en banc) (bolding added).
Moreover, even if the motivation to combine in the prior art differs from that
of the Appellant, the motivation in the prior art to combine the references
does not have to be identical to that of the Appellant to establish
8
Appeal 2017-001587
Application 13/618,368
obviousness. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). See also
Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 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.”); In re Kubin, 561 F.3d
1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly
discusses the [limitation], [applicant’s] application itself instructs that [the
limitation] is not an additional requirement imposed by the claims on the
[claimed invention], but rather a property necessarily present in [the claimed
invention].”).
Applying these principles, we detect no error in the Examiner’s
obviousness conclusion. Pearson and Hironaka provide advantageous
reasons for adding the specified piperidine-containing amine compound into
Fuji (Pearson, || 10, 104; Hironaka, ^fl[ 46-47). Just as unexpected results
are evidence of nonobviousness, expected advantageous results are evidence
of obviousness. In re Skoll, 523 F.2d 1392, 1398 (CCPA 1975) (“[W]here
appellant has failed to present evidence to rebut the specific suggestion of
the prior art, we conclude that the affidavit is inadequate to overcome the
showing of obviousness made by the prior art.”).
In any event, the Appellant does not direct us to a fair comparison
against the closest prior art—namely, Fuji Example 9—where all variables
are held constant except for the novel features of claim 1. Therefore, we
cannot say that the recited haze characteristics would have been considered
to be unexpectedly superior to that of the polycarbonate composition of
Fuji’s Example 9.
9
Appeal 2017-001587
Application 13/618,368
For these reasons, and those given by the Examiner, we sustain the
Examiner’s rejections.
IV. SUMMARY
Rejections A through C are sustained. Therefore, the Examiner’s final
decision to reject claims 1—6, 8, 9, 13—19, and 22—29 is affirmed.
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
10