Ex Parte Tsubouchi et al

Patent Trial and Appeal BoardMar 8, 2019

12682832 (P.T.A.B. Mar. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/682,832 04/13/2010 46668 7590 03/08/2019 FILDES & OUTLAND, P.C. 20916 MACK AVENUE, SUITE 2 GROSSE POINTE WOODS, MI 48236 FIRST NAMED INVENTOR Kenji Tsubouchi 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. 13006.161 6289 EXAMINER FREEMAN, JOHN D ART UNIT PAPER NUMBER 1787 MAIL DATE DELIVERY MODE 03/08/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENJI TSUBOUCHI, ATSUKO NODA, and HIDEKI KUWATA Appeal2018-004247 Application 12/682,832 Technology Center 1700 Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and LILAN REN, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL 1 1 This Decision includes citations to the following documents: Specification filed April 13, 2010 ("Spec."); Non-Final Office Action dated June 30, 2017 ("Non- Final"); Appeal Brief filed Sept. 13, 2017 ("Br."); and Examiner's Answer dated Jan. 10, 2018 ("Ans."). Appeal2018-004247 Application 12/682,832 The Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision twice rejecting claims 1-12. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. The invention is directed to a process for producing a uniform, polyamide resin film that is said to have an excellent quality stability using a biaxial tenter stretching method. Spec. 6: 1-7. Such films are used, for example, as packaging materials for various types of food. See id. at 1:14--29. Claim 1, the sole independent claim on appeal, and dependent claim 7 are reproduced below. 1. A process for producing a polyamide resin film, wherein an unstretched film is simultaneously biaxially, longitudinally and transversely, stretched by a simultaneous biaxial tenter stretching method, in which widthwise edges of the unstretched film are gripped with clips, the clips are attached to travelling supports guided by guide rails at positions away from the guide rails, and the travelling supports travel along a transverse stretching section which contains a curved orbit in an early stretching stage wherein an inter-clip distance is variable due to an occurrence of a first distortion of a movement orbit of the clips in such a manner that the distance expands once in the first place and then gets back as before, a reversely curved orbit in a final stretching stage wherein the inter-clip distance is variable due to an occurrence of a second distortion of the movement orbit of the clips in such a manner that the distance shrinks once in the first place and then gets back as before, and a gradually expanding-stretching travelling region existing between the early stretching stage and the final stretching stage, 2 The Appellants identify Unitika Ltd. as the real party in interest. Br. 3. 2 Appeal2018-004247 Application 12/682,832 the process comprising: in order to make a stress decrease in the film due to the distortion of the movement orbit of the clips not to exceed an allowable limit, from a start of a transverse stretching until a maximum stretching magnification factor of the transverse stretching is reached, controlling the traveling speed of each of the supports so as to limit a decrease of a longitudinal stretching magnification factor represented by a linear distance between adjacent clips to more than 0 but less than 5% of a maximum stretching magnification factor of a longitudinal stretching. 7. A polyamide resin film obtained by the process of claim 1, wherein a thickness unevenness augmentation factor of the film is 3.5 or less and a variation rate of a refractive index in a thickness direction of the film over a whole surface of the film is 0.5% or less. Br. 38--40 (Claims Appendix). The Examiner relies on the following references as evidence of patentability: Habozit us 3,890,421 June 17, 1975 Matsuda us 4,690,792 Sept 1, 1987 Hommes us 4,853,602 Aug. 1, 1989 Kwack us 4,862,564 Sept 5, 1989 Yamaguchi us 5,780,577 July 14, 1998 Nishi US 2009/0191369 Al July 30, 2009 Provost WO 98/32349 July 30, 1998 3 Appeal2018-004247 Application 12/682,832 Claims 1-12 stand rejected as listed below. 1. Rejections based on Hommes: a. claims 1, 2, 5, and 7-10 under 35 U.S.C. Â§ 102(b) as anticipated by Hommes; b. claims 3 and 4 under 35 U.S.C. Â§ 103(a) as unpatentable over Hommes; and c. claims 6, 11, and 12 under 35 U.S.C. Â§ 103(a) as unpatentable over Hommes in view of Yamaguchi. 2. Rejections based on Habozit: a. claims 1-12 under 35 U.S.C. Â§ 103(a) as unpatentable over Habozit in view of Yamaguchi; and b. claims 1-12 under 35 U.S.C. Â§ 103(a) as unpatentable over Habozit in view of Yamaguchi, and Kwack or Provost. 3. Rejection based on Matsuda: a. claims 7-12 under 35 U.S.C. Â§ 102(b) as anticipated by, and under 35 U.S.C. Â§ 103(a) as unpatentable over Matsuda. 4. Rejections based on Nishi: a. claims 7-10 under 35 U.S.C. Â§ 102(b) as anticipated by, and under 35 U.S.C. Â§ 103(a) as unpatentable over Nishi; and b. claims 11 and 12 under 35 U.S.C. Â§ 103(a) as unpatentable over Nishi in view of Matsuda. Rejections Based on Hammes The Appellants' arguments in support of patentability as to all claims subject to the rejections based on Hommes are directed to limitations in claim 1. See Br. 11-1 7, 3 5. The Appellants argue Hommes does not disclose the claimed features of the transverse stretching section (paragraphs 3---6 in the body of claim 1) or 4 Appeal2018-004247 Application 12/682,832 controlling the travelling speed of the supports to achieve the features recited in the last paragraph of claim 1. Br. 13. The Examiner addresses Appellants' arguments in detail in the Answer, and we agree with the Examiner that Appellants' arguments are not persuasive of reversible error in the Examiner's finding of anticipation as to claim 1 for the reasons stated on pages 17-21 of the Answer. To the extent Hommes fails to explicitly disclose the argued claim limitations, the Examiner provides a factually supported basis for finding Hommes inherently discloses these limitations. See Non-Final 3--4; Ans. 17-21. When the Examiner establishes a reasonable assertion of inherency and thereby evinces that a claimed process appears to be identical to a process disclosed by the prior art and/or that the products claimed by the applicant and disclosed in the prior art appear to be the same, the burden is properly shifted to the applicant to show that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254--56 (CCPA 1977). The Appellants have not provided persuasive evidence and/or argument to satisfy this burden. Accordingly, we sustain the rejection of claim 1 and its dependent claims 2, 5, and 7-10 as anticipated by Hommes. As noted above, the Appellants rely on the same arguments in support of patentability of all claims subject to rejections based on Hommes, and do not identify evidence of secondary considerations in support ofpatentability of the dependent claims rejected under 35 U.S.C. Â§ 103(a). Therefore, we also sustain the rejection of claims 3 and 4 as obvious over Hommes and the rejection of claims 6, 11, and 12 as obvious over Hommes in view of Yamaguchi. 5 Appeal2018-004247 Application 12/682,832 Rejections based on Habozit The Appellants' arguments in support of patentability as to all claims subject to the rejections based on Habozit are directed to limitations in claim 1. See Br. 21-35. The Appellants argue the references, alone or in combination, do not disclose the claimed features of the transverse stretching section (paragraphs 3-6 in the body of claim 1) or controlling the travelling speed of the supports to achieve the features recited in the last paragraph of claim 1. Br. 23, 29. The Examiner addresses the Appellants' arguments in detail in the Answer, and we agree with the Examiner that the Appellants' arguments are not persuasive of reversible error in the Examiner's conclusion of obviousness as to claim 1 for the reasons stated on pages 23-31 of the Answer. To the extent the references fail to explicitly disclose or suggest the argued claim limitations, the Examiner provides a factually supported basis for finding the references necessarily include the claimed features. See Non-Final 8-9 (regarding the curved orbit of the rails and the stress decrease). The Appellants have not provided persuasive evidence and/or argument to refute the Examiner's findings with respect to features that are necessarily present in the method resulting from the combination of Habozit and the secondary references, nor do the Appellants rely on evidence of secondary considerations in support of patentability. Therefore, we sustain the rejections of claims 1-12 under 35 U.S.C. Â§ 103(a) as unpatentable over Habozit in view of Yamaguchi, and as upatentable over Habozit in view of Yamaguchi, and Kwack or Provost. Rejection Based on Matsuda and Rejections Based on Nishi The Examiner determines, and the Appellants do not dispute, that claims 7- 12 are product-by-process claims that depend from process claim 1. Non-Final 5- 7; see generally Br. 17-20. The Examiner and the Appellants also agree that 6 Appeal2018-004247 Application 12/682,832 neither Matsuda nor Nishi anticipates or renders obvious claim 1. Non-Final 5-7; Br. 17-19. The Examiner finds, however, that Matsuda describes a product as recited in claims 7-12 and Nishi describes a product as recited in claims 7-10. Non-Final 4--7. The Examiner thus determines that Matsuda anticipates claims 7- 12 and Nishi anticipates claims 7-10. Id. The Examiner also determines claims 11 and 12 are unpatentable over Nishi in view of Matsuda. Id. at 15. The Appellants contend that because claims 7-12 are dependent claims, they cannot be anticipated or rendered obvious by references that do not disclose or suggest the method of the independent claim from which they depend, i.e., claim 1. Br. 18-20, 36. The Appellants' argument is not supported by the case law and, therefore, is not persuasive of error in the Examiner's finding of anticipation and conclusion of obviousness. In In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985), the appellants appealed the Board's decision to affirm the Examiner's rejections of product-by-process claims under 35 U.S.C. Â§Â§ 102, 103. Id. at 696. The product- by-process claims depended from an allowed process claim. Id. The court affirmed the Board's decision, explaining that "even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself." Id. at 697 (citations omitted); see Ans. 22. The Appellants' arguments in support of patentability of claims 7-12 are limited to contentions that Matsuda and Nishi fail to disclose or suggest the process recited in independent claim 1. See Br. 17-20, 36. The Appellants have not provided evidence or otherwise explained how the products of claims 7-12 differ from the products described in Matsuda and Nishi. See id.; Ans. 22-23. Accordingly, we sustain the Section 102 and Section 103 rejections of claims 7-12 over Matsuda and Nishi. See Thorpe, 777 F .2d at 698 ("We also agree that on the entirety of the record the PTO had correctly adduced a prima facie case, and that 7 Appeal2018-004247 Application 12/682,832 the burden had shifted to Thorpe, 'to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product."' ( citations omitted)). In conclusion, for the reasons stated in the Non-Final Office Action, the Answer, and above, we sustain all grounds of rejection. The Examiner's decision to reject claims 1-12 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8