Mitsubishi Chemical Corporation

Patent Trials and Appeals Board

Sep 20, 2021

2020005594 (P.T.A.B. Sep. 20, 2021)

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.
14/193,409 02/28/2014 Toru TAKASHIMA 430684US99CONT 1719
22850 7590 09/20/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
ROSEBACH, CHRISTINA H.W.
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
09/20/2021 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TORU TAKASHIMA, KATSUCHI YAMAOKA,
and TAKESHI ISHIKAWA

Appeal 2020-005594
Application 14/193,409
Technology Center 1700
____________

Before DONNA M. PRAISS, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3–5, 7, and 9–21, which constitute all
the claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.

1 In this Decision, we refer to the Specification filed Feb. 28, 2014
(“Spec.”), the Non-Final Office Action dated June 28, 2019 (“Non-Final
Act.”), the Appeal Brief filed Oct. 30, 2019 (“Appeal Br.”), and the
Examiner’s Answer dated Apr. 16, 2020 (“Ans.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Mitsubishi Chemical Corporation as the real party in interest.
Appeal Br. 2.
Appeal 2020-005594
Application 14/193,409

2
STATEMENT OF THE CASE
The invention relates to a molded body obtained by foaming a
polycarbonate copolymer. Spec. ¶ 1. According to the Specification,
polycarbonate resin is generally produced using a raw material derived from
petroleum resources, however, carbon dioxide emissions concerns have
stimulated a demand to develop a polycarbonate resin using, as a raw
material, a plant-derived monomer that is carbon neutral even when
discarded after use. Id. ¶ 2.
Independent claim 1, reproduced below from the Claims Appendix of
the Appeal Brief, is illustrative of the subject matter on appeal (emphasis
added).
1. A foam-molded body, obtained by foam-molding a
polycarbonate copolymer with a foaming agent,
wherein the polycarbonate copolymer comprises:
a structural unit derived from a dihydroxy compound (A)
represented by formula (1 ):
(1) ; and
a structural unit derived from a dihydroxy compound (B),
which is at least one structural unit selected from the group
consisting of:
a structural unit derived from a dihydroxy compound
represented by formula (2):
HO-R1-OH (2),
where R1 represents a substituted or unsubstituted
cycloalkylene group having a carbon number of 4 to 20, a
structural unit derived from a dihydroxy compound represented
by formula (3):
HO-CH2-R2-CH2-OH (3),
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where R2 represents a substituted or unsubstituted
cycloalkylene group having a carbon number of 4 to 11,
a structural unit derived from a dihydroxy compound
represented by formula (4):
H-(O-R3)p-OH (4),
where R3 represents a substituted or unsubstituted
alkylene group having a carbon number of 2 to 10, and p is an
integer of 2 to 50, and
a structural unit derived from a dihydroxy compound
represented by formula (5):
HO-R4-OH (5),
where R4 represents a substituted or unsubstituted
alkylene group having a carbon number of 2 to 10 or a group
comprising a substituted or unsubstituted acetal ring;
wherein the polycarbonate copolymer has a glass
transition temperature (Tg) of less than 145°C;
wherein the foaming agent is from 0.1 parts by mass or
more to 20 parts by mass or less per 100 parts by mass of the
polycarbonate copolymer;
wherein the foaming agent is an inorganic gas; and
wherein the foam-molded body has an expansion ratio,
[(density before foaming)/(density after foaming)], of 3.47 to
100.
Appeal Br. (Claims Appendix i–ii).
Claim 20 is the other independent claim pending in this Appeal. It is
directed to a foam-molded body obtained by a process that includes as a step
“expanding the mold cavity by retreating a movable side of the mold.”
Appeal Br. (Claims Appendix vi).
ANALYSIS
The Examiner rejects claims 1, 3–5, 7, and 9–21 as follows for the
reasons provided in the Non-Final Office Action. Non-Final Act. 3–10.
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Claim(s) 35 U.S.C. § Reference(s)/Basis
1, 3–5, 7, 9,
10, 12, 14–21 103(a) Fuji
3, Fukuoka4
11 103(a) Fuji, Fukuoka, Brack5
13 103(a) Fuji, Fukuoka, Fuji26

Appellant argues the obviousness rejection of claims 1, 3–5, 7, 9, 10,
12, 14–19, and 21 as a group and separately argues independent claim 20.
Appeal Br. 8–14. Therefore, we select claim 1 as representative of the group
and claims 3–5, 7, 9, 10, 12, 14–19, and 21 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv). We address below Appellant’s separate arguments
regarding claims 1, 11, 13, and 20.
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
argued claims in light of each of Appellant’s arguments, we are not
persuaded Appellant has identified reversible error in the Examiner’s
rejections.

3 JP 2011-070019A, published Apr. 7, 2011.
4 JP 06-080813A, published Mar. 22, 1994.
5 US 2009/0088549 A1, published Apr. 2, 2009.
6 US 2010/0190953 A1, published July 29, 2010.
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Claim 1
The Examiner finds Fuji discloses a polycarbonate molded foam
having a glass transition temperature of preferably 120–140ºC and the
claimed structural components, however, Fuji is silent as to the foaming
agent and amount used. Non-Final Act. 3. The Examiner determines it
would have been obvious to a person having ordinary skill in the art to
implement Fukuoka’s polycarbonate foam process which uses 9.5% carbon
dioxide to make the polycarbonate resin foam with an expansion from 2–40
times in view of Fuji’s silence as to the foaming agent and in order to make
a polycarbonate foam with higher heat resistance as taught by Fukuoka. Id.
at 3–4.
According to Appellant, the Examiner erred in modifying Fuji with
the teachings of Fukuoka because (1) Fuji’s material already exhibits
excellent thermal resistance, (2) a skilled artisan would not consult
Fukuoka’s disclosure to make Fuji’s foam because Fukuoka’s polycarbonate
foam is for use in microwave oven containers and has nothing to do with
reflectivity or improving Fuji’s reflective material, (3) Fukuoka does not
equate expansion ratio with heat resistance, but, rather, micrometer sized cell
diameter, and (4) Fuji discloses a voidage range of 5–70% in its material,
which correlates to an expansion ratio maximum of 3.3 above which Fuji
teaches thermal resistance would be expected to be impaired. Appeal Br. 8–
14.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting claim 1 as obvious over Fuji modified by the
teachings of Fukuoka for essentially the reasons the Examiner provides in
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the Final Office Action and the Answer. We add the following primarily for
emphasis.
The preponderance of the evidence in this Appeal record supports the
Examiner’s determination that Fukuoka describes in more detail making a
foam from polycarbonate which includes details missing from Fuji
concerning the foaming agent as well as an advantage of using Fukuoka’s
foaming process. Ans. 11; Non-Final Act. 3; Fukuoka ¶¶ 41, 52. Appellant is
correct that Fukuoka teaches “a minuter cell . . . was further excellent in the
practical heat-resisting property,” however, Fukuoka credits the process
which uses carbon dioxide gas as the foaming agent for the success in
turning polycarbonate resin into uniform foam even if temperature varies to
achieve a superior heat resistance property over conventional products.
Appeal Br. 10; Fukuoka ¶¶ 51, 52 (emphasis added).
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” id. at 415, and discussed
circumstances in which a patent might be determined to be obvious. In
particular, the Supreme Court emphasized that “the principles laid down in
Graham [v. John Deere Co., 383 U.S. 1 (1966)] reaffirmed the ‘functional
approach’ of Hotchkiss [v. Greenwood, 52 U.S. 248 (1850)],” id., and
reaffirmed principles based on its precedent that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
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ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. Thus, regardless of
the end use of Fuji and Fukuoka’s polycarbonate foams, it would have been
predictable to use Fukuoka’s carbon dioxide gas to foam Fuji’s
polycarbonate composition because the function of Fukuoka’s process is to
foam a polycarbonate composition.
Appellant’s additional argument (Appeal Br. 11–13) that Fuji’s
voidage range correlating to an expansion ratio maximum of 3.3 is below the
claimed expansion ratio range and a skilled artisan would not have exceeded
that maximum in view of the deleterious effect on thermal resistance that
Fuji teaches is not persuasive of error for a number of reasons. First, as the
Examiner points out, Fuji discloses the voidage range is “preferable” and
does not limit the teaching to the preferred range. Ans. 11; Fuji ¶ 85 (“[I]t is
preferable that [the ratio] is 10% or more in view of improvement in a
reflectance especially 5% or more and 70% or less.”). Second, as discussed
above, Fukuoka describes better heat resistance with the use of its foaming
process, therefore a skilled artisan would have modified Fuji with the
teaching of Fukuoka to obtain the superior heat resistance property that
Fukuoka attributes to its foaming process. Ans. 11–12. Third, the computed
maximum of 3.3 is close to the claimed expansion ratio of 3.47 and
Appellant has not directed us to any evidence of criticality. Ans. 12. In this
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regard, Appellant’s Specification explicitly states that “the expansion ratio is
from 1.1 to 100 times” and “the expansion ratio, cell size and the like are not
particularly limited and can be appropriately set by adjusting, for example,
the amount of the foaming agent added or the molding method.” Spec. ¶¶ 12,
123. Thus the preponderance of the evidence cited in this Appeal record
supports the Examiner’s findings.
In sum, Appellant’s arguments are not persuasive of reversible error
in the Examiner’s conclusion of obviousness. Accordingly, we affirm the
Examiner’s rejection of claim 1 as well as the rejection of claims 3–5, 7, 9,
10, 12, 14–19, and 21 under 35 U.S.C. § 103(a) over Fuji and Fukuoka.
Claims 11 and 13
Claims 11 and 13 each depend from claim 1. Appeal Br. (Claims
Appendix iv). Appellant argues that the additional references relied upon by
the Examiner for the rejections of claims 11 and 13 do not cure the
deficiencies of Fuji in view of Fukuoka as argued with respect to claim 1.
Appeal Br. 14. Because we are not persuaded by Appellant’s arguments that
the Examiner erred in rejecting claim 1 over Fuji and Fukuoka, we likewise
sustain the Examiner’s rejections of claims 11 and 13 for the same reasons.
Claim 20
Appellant contends the Examiner erred in rejecting independent claim
20 over the combination of Fuji and Fukuoka because the Examiner failed to
consider the method of production as resulting in a structural difference.
Appeal Br. 14–15. Appellant argues that claim 20’s recitation “by retreating
a movable side of the mold” requires a core-back foam molding process and
directs us to the Specification to support such a method step being a
structural difference. Id. at 15–16. Appellant argues the “core-back foam
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molding process” differs from the “short-shot foaming process, which does
not retreat a movable side of the mold as in the core back process but instead
leaves an unfilled part in the mold and allows the molding composition to
expand into the unfilled part.” Appeal Br. 16 (citing Spec. ¶ 184). Appellant
argues the effect of this process difference is shown by comparing example
3–2 (core-back foaming method) with examples 3–5 and 3–6 (short-shot
method) which are summarized in the Specification’s Table 4 reprinted in
the Appeal Brief at page 17. Id. at 16–17 (citing Spec. ¶ 187). Appellant
summarizes the difference as being “suitability for foam molding and
expansion ratio.” Id. at 18.
Appellant’s argument is not persuasive of error. Table 4 does not
support Appellant’s position that the foaming methods differ in suitability
for foam molding because both example 32 (core-back foaming method) and
example 35 (short-shot method) are identified as suitable for foam molding.
Spec. ¶ 187 (Table 4 lists “A” for both examples in the column labeled
“Suitability for Foam-Molding”). Although Table 4 supports Appellant’s
assertion that the core-back method resulted in a higher expansion ratio than
the short-shot method for the particular composition molded––5 for example
32 and 1.6 for example 35––we are not persuaded that this difference in
expansion ratio is a patentable distinction over the cited prior art references
for the reasons discussed above in connection with claim 1. Moreover, as the
Examiner states, claim 20 is directed to a wide range of foaming agent
amount and foaming agent identity, all of which overlap with the combined
teachings of Fuji and Fukuoka, thus forming claim 20’s “foam-molded
body” would have been obvious in view of the cited prior art combination.
Ans. 12. Accordingly, we sustain the Examiner’s rejection of claim 20.
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CONCLUSION
For these reasons and those provided in the Non-Final Office Action
and the Examiner’s Answer, we uphold the Examiner’s decision to reject
claims 1, 3–5, 7, and 9–21.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1, 3–5, 7, 9,
10, 12, 14–
21
103(a) Fuji, Fukuoka
1, 3–5, 7, 9,
10, 12, 14–
21

11 103(a) Fuji, Fukuoka, Brack 11
13 103(a) Fuji, Fukuoka, Fuji2 13
Overall
Outcome
1, 3–5, 7,
9–21

TIME PERIOD FOR RESPONSE
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). See 37
C.F.R. § 1.136(a)(1)(iv) (2019).

AFFIRMED