Ex Parte SasakiDownload PDFPatent Trial and Appeal BoardDec 26, 201713618368 (P.T.A.B. Dec. 26, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation