Mitsubishi Chemical CorporationDownload PDFPatent Trials and Appeals BoardSep 20, 20212020005594 (P.T.A.B. Sep. 20, 2021) 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. 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), Appeal 2020-005594 Application 14/193,409 3 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. Appeal 2020-005594 Application 14/193,409 4 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. Appeal 2020-005594 Application 14/193,409 5 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 Appeal 2020-005594 Application 14/193,409 6 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 Appeal 2020-005594 Application 14/193,409 7 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 Appeal 2020-005594 Application 14/193,409 8 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 Appeal 2020-005594 Application 14/193,409 9 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. Appeal 2020-005594 Application 14/193,409 10 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 Copy with citationCopy as parenthetical citation