PANASONIC INTELLECTUAL PROPERTY MANAGEMENT CO., LTD.

Patent Trials and Appeals BoardMay 26, 2021

2020003678 (P.T.A.B. May. 26, 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. 14/640,507 03/06/2015 Hiroaki UMEHARA P47463 9665 52123 7590 05/26/2021 GREENBLUM & BERNSTEIN, P.L.C. 1950 ROLAND CLARKE PLACE RESTON, VA 20191 EXAMINER NGUYEN, HA S ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 05/26/2021 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): gbpatent@gbpatent.com greenblum.bernsteinplc@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROAKI UMEHARA and HIROHARU INOUE Appeal 2020-003678 Application 14/640,507 Technology Center 1700 Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–5, 9, and 10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Panasonic Intellectual Property Management Co., LTD. Appeal Br. 3. Appeal 2020-003678 Application 14/640,507 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A prepreg formed by impregnating a fabric base material with a resin composition, then heating and drying, wherein the resin composition includes: (A) a polymer which has a structure shown in structural formulas (I) and (II) wherein the ratio of x to y (x:y) is from 0:1 to 0.35: 0.65, R1 is H or CH3, and R2 is H or an alkyl group, the polymer has no unsaturated bond between carbon atoms, the polymer has an epoxy number of from 0.2 to 0.8 eq/kg, and the polymer has a weight-average molecular weight of from 200,000 to 1,000,000; (B) a polyphenylene ether copolymer having a number- average molecular weight of from 500 to 2000; and (C) an epoxy resin having two or more epoxy groups on a molecule, and (D) an inorganic filler; wherein the component (B) is compatible with the component (A), the component (C) includes an epoxy resin that is incompatible with the component (A); and based on a total of 100 parts by mass of components (A), (B), and (C): Appeal 2020-003678 Application 14/640,507 3 the amount of the component (A) is from 10 to 40 parts by mass, the amount of component (B) is 40 to 85 parts by mass, and the amount of the component (D) is from 100 to 300 parts by mass. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hoshi et al. US 2012/0288659 A1 Nov. 15, 2012 Sagara JP 2013/035925 Feb. 2, 2013 REJECTION Claims 1, 3–5, 9, and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over Sagara in view of Hoshi. OPINION 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 and each of Appellant’s arguments, we are not persuaded of reversible error in the appealed rejections, essentially for the reasons provided by the Examiner in the record, with the following emphasis. Appellant’s arguments focus on the limitations of claim 1 only. Accordingly, we address Appellant’s arguments focusing on the limitations Appeal 2020-003678 Application 14/640,507 4 of claim 1. The other rejected claims stand or fall with claim 1 in accordance with 37 C.F.R. § 41.37(c)(l)(iv) (2018). Appellant argues that Sagara teaches away from the claimed amounts of component (B) because the claimed amount of 40–85 parts by mass of component (B) is based on the content of (A), (B), and (C), and not including filler (D), whereas Sagara teaches 60–85 mass% of the polyarylene ether (PAE) based upon the total resin composition, which includes its optional filler. Appeal Br. 9–12. Sagara, ¶ 71. Appellant concludes that if the above 40–85 mass% of PAE is calculated in terms of the composition including the inorganic filler (which would correlate to an amount of from 10–42.5 mass% of the PAE in the total composition when including component (D)), Sagara’s amount would teach away from the claimed amount of component (B). Appeal Br. 12. It is the Examiner’s position that although Sagara teaches 60–85 mass % of the polyarylene ether (A) (PAE) (corresponding to presently claimed component (B)) of the total resin composition (Sagara ¶ 71)), Sagara teaches that the amount of 60–85 mass % of (A) PAE is within the context of the composition that also includes the (B) epoxy resin, and the hardening accelerator (C). Sagara ¶ 34, Abstract, claim 1. Ans. 7. The Examiner also states that the inorganic filler is an optional component in Sagara because Sagara teaches it “may be” contained in the composition (¶ 65) and Sagara’s examples show no inorganic filler used. Sagara, ¶ 91–106. Ans. 7–8. The Examiner also states that Sagara further teaches that if the filler is included, it is used in the amounts of from 5–200 parts by mass per the total Appeal 2020-003678 Application 14/640,507 5 quantity of 100 parts by mass of a polyarylene ether copolymer (A) and an epoxy resin (B). Sagara, ¶ 76. Ans. 8. From the above teachings, the Examiner concludes that one skilled in the art would understand that the amount of from 60-85 wt% of PAE in Sagara involves resin composition of PAE (A), the epoxy (B), and accelerator (C), i.e., A+B+C, while the 5–200 parts by mass of inorganic filler would be per 100 parts by mass of (A)+(B). The Examiner states that to conclude otherwise would contradict Sagara’s teachings because if there were 200 parts of filler, and 100 parts (A) PAE and (B) epoxy, this would lead to under 33 wt% (i.e. 100/300) of (A) PAE in the total composition. Ans. 8. We agree with the Examiner’s understanding of Sagara as discussed above. In the Reply Brief, Appellant reiterates the position that Sagara’s teaches away from the amount of presently claimed component (B). Reply Br. 2–9. In doing so however, Appellant does not adequately address the Examiner’s position regarding the teachings in Sagara’s paragraph 76 that if the filler is included, it is used in the amounts of from 5–200 parts by mass per the total quantity of 100 parts by mass of a polyarylene ether copolymer (A) and an epoxy resin (B). Sagara, ¶ 76. Ans. 8. In view of the above, we affirm the rejection. CONCLUSION We affirm the Examiner’s decision. Appeal 2020-003678 Application 14/640,507 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5, 9, 10 103(a) Sagara, Hoshi 1, 3–5, 9, 10 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED