FUJIWARA, Takanori

Patent Trials and Appeals BoardDec 9, 2019

15119538 - (D) (P.T.A.B. Dec. 9, 2019)

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. 15/119,538 08/17/2016 Takanori FUJIWARA 16P0052 3469 128976 7590 12/09/2019 KENJA IP LAW PC 4 North Second Street, Suite 598 San Jose, CA 95113 EXAMINER VO, HAI ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 12/09/2019 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): admin@kenjaip.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKANORI FUJIWARA Appeal 2019-003331 Application 15/119,538 Technology Center 1700 Before JEFFREY W. ABRAHAM, CHRISTOPHER L. OGDEN, and MICHAEL G. McMANUS, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 6–11. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a vinyl chloride resin composition that can provide a molded product having superior flexibility at low temperatures. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Zeon Corporation. Appeal Br. 3. Appeal 2019-003331 Application 15/119,538 2 Spec. ¶ 1. Such products are used as a surface skin of automobile instrument panels. Id. ¶ 14. Claim 1, reproduced below from the Claim Appendix (Appeal Br. 21), is illustrative of the claimed subject matter: 1. A vinyl chloride resin composition comprising: (a) a vinyl chloride resin, (b) a dodecanedioic acid diester; and (c) a trimellitic acid ester, wherein a total amount of (b) the dodecanedioic acid diester and (c) the trimellitic acid ester relative to 100 parts by mass of (a) the vinyl chloride resin is from 5 parts by mass to 200 parts by mass, a blending ratio of (b) the dodecanedioic acid diester relative to (c) the trimellitic acid ester, expressed as a mass ratio, is from 1/99 to 99/1, and (a) the vinyl chloride resin includes (x) a base vinyl chloride resin in an amount of from 70 mass% to 100 mass% and (y) vinyl chloride resin fine particles having an average particle diameter of at least 0.1 μm and no greater than 10 μm in an amount of from 0 mass% to 30 mass%. REJECTIONS ON APPEAL On appeal, the Examiner maintains two rejections:2 A. Claim 1 under 35 U.S.C. § 103 as unpatentable over Mitsudera3 in view of GB ’217;4 and 2 The Examiner withdrew the nonstatutory double patenting rejections of claims 1 and 6–11 as unpatentable over claims 1–11 of copending Application No. 15/119,528 in view of GB ’217 and, separately, over claims 1–13 of copending Application No. 15/037,108 in view of GB ’217, after Appellant filed a terminal disclaimer. Ans. 6. 3 Mitsudera et al., US 2006/0052517 A1, published March 9, 2006. 4 Salt, GB 715,217, published Sept. 8, 1954. Appeal 2019-003331 Application 15/119,538 3 B. Claims 6–11 under 35 U.S.C. § 103 as unpatentable over Mitsudera in view of GB ’217 and Kobayashi.5 Final Act. 2–7; Ans. 3, 6. OPINION We sustain the above rejections based primarily on the Examiner’s findings of fact, conclusions of law, and rebuttals to Appellant’s arguments, as expressed in the Final Action and Answer. The following comments are added for emphasis. Rejection A - Claim 1 The Examiner finds that Mitsudera discloses a vinyl chloride resin composition comprising 100 parts by mass of vinyl chloride and 5 to 200 parts by mass of a plasticizer comprising at least one trimellitate-based plasticizer and one sebacate-based plasticizer. Final Act. 2. The Examiner acknowledges that Mitsudera does not disclose a vinyl chloride resin composition comprising a dodecanedioate-based plasticizer. Id. at 3. The Examiner, however, finds that GB ’217 discloses a vinyl chloride composition comprising di-(2-ethylhexyl) dodecanedioate, and that compositions plasticized with the dodecanedioate have superior low temperature tensile strength and elongation properties compared to a similar vinyl chloride composition comprising a sebacate-based plasticizer. Final Act. 3 (citing GB ’217, Tables 1 and 2). The Examiner also finds that the dodecanedioate-based plasticizer has the same low volatility value as the sebacate-based plasticizer, and therefore both provide excellent fog resistance. Id. Accordingly, the Examiner determines that it would have 5 Kobayashi et al., WO 2012/020618 A1, published Feb. 16, 2012. The Examiner relies on the English language counterpart, US 2013/0089728 A1, published Apr. 11, 2013, for convenience. Final Act. 4. Appeal 2019-003331 Application 15/119,538 4 been obvious to a person of ordinary skill to use a dodecanedioate-based plasticizer, either in place of or in combination with a sebacate-based plasticizer, in a vinyl chloride composition in order to improve flexibility at low temperatures, tensile strength, and elongation properties, while maintaining excellent heat stability and fog resistance. Id. at 4. Appellant argues that “the Examiner has erred in asserting that a prima facie case of obviousness had been established in the rejection of claim 1 over the asserted combination of Mitsudera and GB ’217.” Appeal Br. 9. Appellant contends that the Examiner improperly relied on mere conclusory statements in asserting a person of ordinary skill in the art would have modified Mitsudera or combined Mitsudera with GB ’217. Id. at 10– 11. Appellant acknowledges that Mitsudera discloses a multi-component vinyl resin composition comprising a trimellitate-based plasticizer and sebacate-based plasticizer, and teaches that other plasticizers may be included, but points out that Mitsudera does not list dodecanedioic acid diester as an example of such other plasticizers. Id. at 11–12. Appellant also notes that GB ’217 employs a plasticizer system using a single organic compound. Appeal Br. 12. Appellant thus argues that, in view of Mitsudera’s failure to disclose the use of dodecanedioic acid diester as a plasticizer, and the failure of GB ’217 to disclose the combination of multiple plasticizers, a person of ordinary skill in the art would not have been motivated to add the dodecanedioate-based plasticizer of GB ’217 to Mitsudera, either in place of or in combination with the sebacate-based plasticizer. We are not persuaded by Appellant’s arguments. Mitsudera states the following: Appeal 2019-003331 Application 15/119,538 5 Seeing that the concept of the invention resides in providing a vinyl chloride resin composition for vehicles exhibiting excellence in heat resistance, thermal aging resistance, cold resistance, fog resistance, etc. owing to a combined use of components (A) and (B) as a plasticizer system, the vinyl chloride resin composition for vehicles of the invention may contain small amounts of other plasticizers commonly added to vinyl chloride resins in addition [to] components (A) and (B) according to necessity. Mitsudera ¶ 35. Although Appellant is correct that Mitsudera does not expressly identify dodecanedioic acid diester as one of the “other plasticizers commonly added to vinyl chloride resins,” in paragraph 36, we note that the list in paragraph 36 is non-exhaustive. Mitsudera ¶¶ 35–36; Appeal Br. 11– 12. Further, GB ’217 discloses the use of dodecanedioate-based plasticizers in vinyl chloride resins, and indicates that the dodecanedioate-based plasticizer provides advantageous properties to vinyl chloride resins, including low temperature tensile strength and elongation. Final Act. 3; GB ’217, Tables 1 and 2. These disclosures in Mitsudera and GB ’217 support the Examiner’s determination that a person of ordinary skill in the art would have had a reason to add the dodecanedioate-based plasticizer of GB ’217 to Mitsudera, either in place of or in combination with the sebacate-based plasticizer. Nor are we persuaded by Appellant’s argument that the Examiner has failed to show a reasonable expectation of success because “one of ordinary skill in the art would not have been able to appreciate the effect of using dodecadioate-based plasticizer in combination with trimellitate based plasticizer based on the teachings offered by Mitsudera and GB ’217.” Appeal Br. 13. Appeal 2019-003331 Application 15/119,538 6 First, as noted above, Mitsudera expressly teaches the possibility of adding other plasticizers to its composition. Mitsudera ¶ 35. Second, the Examiner points out similarities between dodecanedioate-based plasticizers and sebacate-based plasticizers. For example, the Examiner notes that the vapor pressures of dodecanedioate and sebacate are the same, such that the dodecanedioate-based plasticizer would remain in the composition, similar to the sebacate-based plasticizer. Ans. 4 (“The plasticizers of the vinyl chloride composition have been selected to have a sufficiently low vapor pressure such that the plasticizers do not get lost by evaporation under normal conditions or during use (page 4, lines 15-25).”), 7. The Examiner also notes that both have similar volatility at a low temperature, and therefore provide similar fog resistance properties. Id. at 4, 7. Third, the Examiner directs us to evidence suggesting that vinyl compositions containing dodecanedioate-based plasticizers have improved tensile strength properties over compositions containing sebacate-based plasticizers. Id.; GB ’217, Tables 1 and 2. Thus, we agree with the Examiner’s statement that “the benefits of providing the vinyl chloride resin composition having improved fog resistance and better tensile stress by substitution of dodecandioate for sebacate are not surprising in view of the disclosure of GB’217.” Ans. 8. Furthermore, we are not aware of any evidence on this record suggesting that combining dodecanedioate with trimellitate would be problematic. Appellant also argues that the Examiner failed to demonstrate that the references teach or suggest all of the claim limitations, including the specific ratio and content of the dodecanedioic acid diester, and the vinyl chloride resin fine particles having an average particle diameter of at least 0.1 µm and no greater than 10 µm. Appeal Br. 13–16. With regard to the ratio and Appeal 2019-003331 Application 15/119,538 7 amounts of dodecanedioic acid diester, the Examiner presents evidence demonstrating Mitsudera discloses a vinyl chloride resin composition comprising “100 parts by mass of vinyl chloride resin and 5 to 200 parts by mass of a plasticizer comprising (a) at least one trimellitate based plasticizer and (b) at least one sebacate based plasticizer in a mass ratio (a)/(b) of 99/1 to 60/40,” and that a person of ordinary skill in the art would substitute a dodecanedioate-based plasticizer for the sebacate based plasticizer, based on GB ’217. Final Act. 2–3; Ans. 3–4. Together, these disclosures demonstrate sufficiently a composition having the recited amount of dodecandioate-based plasticizer. Appellant’s arguments to the contrary are improperly directed to the references individually, as opposed to the combined teachings. Appeal Br. 14 (arguing the Examiner has failed to adequately explain how “Mitsudera and GB ’217 teach or suggest all the claimed limitations because Mitsudera is completely silent on the use of dodecanedioic acid diester in its multi-component plasticizer system and GB’217 is completely silent on the use of a combination of different plasticizers”). With regard to the amount of vinyl chloride resin particles required in claim 1, the Examiner correctly points out that “[t]he amount of from 0 mass% to 30 mass% [recited in claim 1] indicates that the vinyl chloride resin fine particles are not required by the claim.” Ans. 9. In its Reply Brief, Appellant again disputes the Examiner’s conclusions regarding a reasonable expectation of success. Specifically, Appellant contends that the claimed combination of trimellitic acid ester and bis(2-ethylexy) dodecanedioate provides remarkable and significant improvements in post-heating tensile characteristics and glossiness retention over a composition containing bis(2-ethylhexy) sebacate instead of bis(2- ethylexy) dodecanedioate. Reply 4–5. Appellant asserts that GB ’217 does Appeal 2019-003331 Application 15/119,538 8 not teach or otherwise suggest these remarkable and significant improvements. Id. at 5. Appellant thus contends that a person of ordinary skill in the art, based on the teachings of Mitsudera and GB ’217, would not reasonably expect that the claimed vinyl chloride resin would exhibit not only superior flexibility at a low temperature but also superior heat aging resistance and fogging characteristics. Id. at 6. Appellant’s arguments are unavailing. To establish obviousness under 35 U.S.C. § 103, the Examiner must demonstrate a reasonable expectation of success in obtaining a composition within the scope of the claims. In re Kubin, 561 F.3d 1351, 1361 (Fed. Cir. 2009). Claim 1 requires a vinyl composition having specific components in specific ratios. Claim 1 does not require that the composition have any of the specific properties Appellant raises in its Reply. For the reasons discussed above, we find the Examiner has presented sufficient evidence demonstrating a reasonable expectation of success in achieving the claimed invention— namely the vinyl chloride composition having the required components in the recited ratios. Rejection B - Claims 6–11 Claims 6–11 depend from claim 1. The Examiner rejects these claims in view of Mitsudera, GB ’217, and Kobayashi, primarily relying on Kobayashi as disclosing the limitations of claims 6–11. Final Act. 4. Appellant argues that the Examiner’s rejection of claims 6–11 is improper for the reasons discussed above with respect to claim 1. Appeal Br. 16. Appellant also argues that Kobayashi fails to cure the deficiencies of Mitsudera and GB ’217 discussed above. Id. at 17–18. Because we disagree that the rejection of claim 1 in view of Mitsudera and GB ’217 is improper, Appeal 2019-003331 Application 15/119,538 9 or that the combined disclosure of Mitsudera and GB ’217 suffers from any deficiencies, we affirm the Examiner’s rejection of claims 6–11. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103 Mitsudera, GB ’217 1 6–11 103 Mitsudera, GB ’217, Kobayashi 6–11 Overall Outcome 1, 6–11 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).