Polyplastics Co., Ltd.

Patent Trials and Appeals Board

Apr 22, 2021

2020003309 (P.T.A.B. Apr. 22, 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.
15/575,999 11/21/2017 Tomohiro MONMA SHOBA18.033APC 8415
20995 7590 04/22/2021
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
04/22/2021 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOMOHIRO MONMA, HATSUHIKO HARASHINA, and
TOMOYUKI TADA

____________

Appeal 2020-003309
Application 15/575,999
Technology Center 1700
____________

Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–6.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Polyplastics Co., Ltd. as the real party in
interest. Appeal Brief filed November 25, 2019 (“Appeal Br.”), 3.
2 Final Office Action entered June 24, 2019 (“Final Act.”), 1.
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CLAIMED SUBJECT MATTER
Appellant claims a polyacetal resin composition. Appeal Br. 5.
Claim 1, the sole pending independent claim, illustrates the subject matter on
appeal, and reads as follows:
1. A polyacetal resin composition, comprising:
100 parts by weight of a polyacetal resin (A);
0.01 parts by mass to 0.5 part by mass of a hindered
phenolic antioxidant (B);
0.002 parts by weight to 0.02 parts by weight of an
aliphatic carboxylic acid (C) having a carbon number of 4 or
more and having 2 or more carboxyl groups; and
0.01 parts by weight to 0.1 parts by weight of a fatty acid
calcium salt (D).

Appeal Br. 11 (Claims Appendix) (emphasis added).
REJECTION
The Examiner maintains the rejection of claims 1–6 under 35 U.S.C.
§ 103 as unpatentable over Fujimoto (JP 2012-107150, published June 7,
2012, as translated) in view of Horio (JP 2015-052028, published March 19,
2015, as translated) in the Examiner’s Answer entered January 30, 2020
(“Ans.”).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 1–6 under 35 U.S.C. § 103 for reasons set forth in the Final Action,
the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
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1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Appellant presents arguments directed to independent claim 1 only, to
which we accordingly limit our discussion. Appeal Br. 6–9; 37 C.F.R.
§ 41.37(c)(1)(iv).
Fujimoto discloses a polyacetal resin composition for forming a
molded article that includes 100 parts by mass of a polyacetal resin
(component (A)), 0.001–1.5 parts by mass of a compound having a carboxyl
group (component (C), and 0.01–1 parts by mass of a sterically-hindered
phenolic compound. Fujimoto Abstr.; ¶¶ 1, 28, 31, 44, 65, 72. Fujimoto
discloses that inclusion of the compound having a carboxy group
(component (C)) in the resin composition reduces mold contamination (or
mold deposits) at the time of a fabricating or molding operation, and reduces
generation of formaldehyde in the molded article. Fujimoto ¶¶ 28, 44.
The Examiner finds that Fujimoto does not disclose that Fujimoto’s
polyacetal resin composition includes a fatty acid calcium salt, and the
Examiner relies on Horio for suggesting inclusion of such a component in
Fujimoto’s polyacetal resin composition. Final Act. 2–3.
Horio discloses a polyacetal resin composition for forming a molded
body that includes 100 parts by mass of a polyacetal resin. Horio Abstr.;
¶ 53. Horio discloses that adding 0.01–0.5 parts by mass, preferably 0.02–
0.3 parts by mass, of a fatty acid calcium salt to the polyacetal resin
composition improves the thermal stability of the composition at the time of
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a fabricating operation, reduces the amount of formaldehyde generated from
a molded body formed of the composition, and improves the composition’s
heat resistance on aging. Horio Abstr.; ¶ 30.
In view of these disclosures in Horio, the Examiner concludes that
“[i]t would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to add 0.01 to 0.3 parts by mass
of the fatty acid calcium salt of Horio to the polyacetal resin composition of
Fujimoto to reduce formaldehyde generation and increase thermal stability.”
Final Act. 2.
Appellant argues that the results of Fujimoto’s Comparative Examples
2 and 11 “explicitly teach[]” that generation of mold deposits and mold
contamination “are caused by addition of a fatty acid calcium salt.” Appeal
Br. 6–7. Appellant argues that “[i]f Fujimoto is modified as proposed by the
Examiner [to include a fatty acid calcium salt], that modification would
render Fujimoto’s invention unsatisfactory for its intended purpose because
mold deposits and contamination would be generated,” and, therefore, “there
is no suggestion or motivation to make the proposed modification.” Appeal
Br. 7.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
The compositions of Fujimoto’s Comparative Examples 2 and 11 do
not include component (C) (a compound having a carboxyl group) of
Fujimoto’s inventive polyacetal resin composition. Fujimoto ¶ 96. As
discussed above, Fujimoto explicitly teaches that including this component
in Fujimoto’s inventive composition reduces mold contamination. Fujimoto
¶¶ 28, 44. The resin composition of Comparative Example 11 instead
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includes a carboxylic acid derivative that is not a compound having a
carboxyl group (component (C)), which appears to be calcium stearate,
while the resin composition of Comparative Example 2 does not include
either calcium stearate or a compound having a carboxyl group (component
(C)). Fujimoto ¶¶ 90, 96; Table 2. Fujimoto discloses that the resin
compositions of Comparative Examples 2 and 11 both produced mold
deposits (Fujimoto ¶ 96), which one of ordinary skill in the art would have
understood to indicate that adding calcium stearate to a polyacetal resin
composition—that does not include a mold deposit-preventing compound
having a carboxyl group (component (C))—does not itself cause mold
deposits, due to the fact that the composition of Comparative Example 2 also
formed mold deposits, and did not include calcium stearate. In re Burckel,
592 F.2d 1175, 1179 (C.C.P.A. 1979) (Under 35 U.S.C. § 103, a prior art
reference “must be considered not only for what it expressly teaches, but
also for what it fairly suggests.”); see also In re Lamberti, 545 F.2d 747, 750
(C.C.P.A. 1976) (“[T]he question under 35 U.S.C. § 103 is not merely what
the references expressly teach, but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.”).
Contrary to Appellant’s arguments, Fujimoto, therefore, does not
teach that generation of mold deposits and mold contamination are caused
by addition of a fatty acid calcium salt to a polyacetal resin composition.
Horio’s disclosure that adding 0.01–0.5 parts by mass, preferably
0.02–0.3 parts by mass, of a fatty acid calcium salt to a polyacetal resin
composition that includes 100 parts by mass of a polyacetal resin improves
the composition’s thermal stability and heat resistance on aging, while
reducing formaldehyde generation, reasonably would have led one of
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ordinary skill in the art to add such an amount of a fatty acid calcium salt to
Fujimoto’s polyacetal resin composition to impart these beneficial properties
to the composition. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(“[I]f 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.”).
Because Fujimoto’s polyacetal resin composition modified in this
manner would include a compound having a carboxyl group (component
(C)), which Fujimoto explicitly teaches reduces mold contamination, the
ordinarily skilled artisan reasonably would have expected that Fujimoto’s
modified composition would successfully prevent formation of mold
deposits. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (“[o]bviousness
does not require absolute predictability of success . . . all that is required is a
reasonable expectation of success.”) (emphasis omitted, citing In re
O’Farrell, 853 F.2d 894, 903‒04 (Fed. Cir. 1988)).
Appellant also argues that “the amount of the aliphatic carboxylic acid
(C) disclosed in Fujimoto is completely different from that recited in Claim
1.” Appeal Br. 7. Appellant argues that the composition of Fujimoto’s
Example 5 includes 1 g of sebacic acid relative to 1 part by mass of
polyacetal resin, “i.e., 100 parts by mass of polyacetal resin contains 100 g
of sebacic acid,” which far exceeds the amount recited in claim 1. Appeal
Br. 7 (citing Fujimoto ¶ 43; Table 1; claim 1)3. Appellant argues that

3 Appellant indicates that the composition of Fujimoto’s Example 5 includes
“9.9 mmol of sebacic acid (expressed in carboxyl group mole number
conversion) . . . relative to 1g of polyacetal resin,” and “[s]ince sebacic acid
is a dibasic acid having a molecular weight M of 202 . . . the carboxyl group
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“[a]lthough claim 3 and paragraph [0044] of Fujimoto disclose that the
content of a compound having a carboxyl group is 0.001 to 1.5 parts by mass
with regard to 100 parts by mass of the polyacetal resin,” these disclosures
“are not consistent to the disclosure of Examples and independent claim 1,
and therefore evidently in error.” Appeal Br. 8–9.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
Fujimoto broadly discloses that Fujimoto’s inventive polyacetal resin
composition contains 0.001–1.5 parts by mass of a compound having a
carboxyl group (component (C) to 100 parts by mass of a polyacetal resin
(component (A)). Fujimoto ¶ 44. In addition, Fujimoto’s claim 1 recites a
polyacetal resin composition containing 0.07–30 mmol “carboxyl radial
weight” of a compound having a carboxyl group (component (C)) to 1 g of
polyacetal resin (component (A)), while Fujimoto’s claim 3, which depends
from claim 1, recites that the polyacetal resin composition contains 0.001–
1.5 parts by mass of the compound having a carboxyl group (component
(C)) to 100 parts by mass of a polyacetal resin (component (A)).
Fujimoto’s claims 1 and 3 thus express the amount of the compound
having a carboxyl group (component (C)) in Fujimoto’s inventive polyacetal
resin composition in two different ways: (1) by indicating the moles of
carboxyl radical (mmol) or “carboxyl radical weight” per 1 g of polyacetyl

mole number 9.9 mmol can be calculated to be equivalent to lg of sebacic
acid.” Appeal Br. 7. Appellant argues that Fujimoto thus “discloses that 1 g
of sebacic acid was added relative to 1 part by mass of polyacetal resin, i.e.,
100 parts by mass of polyacetal resin contains 100 g of sebacic acid,” which
“amount of sebacic acid is 5,000 to 50,000 times that of the claimed
invention.” Id.
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resin, and (2) by indicating the parts by mass of the compound having a
carboxyl group to 100 parts by mass of a polyacetal resin. Fujimoto’s
expression in claim 1 of the amount of the compound having a carboxyl
group (component (C)) based on the moles of carboxyl radical (mmol) or
“carboxyl radial weight” per 1 g of polyacetyl resin, does not negate
Fujimoto’s additional expression in claim 3 of the amount of the compound
having a carboxyl group (component (C)) based on the parts by mass of the
compound having a carboxyl group to 100 parts by mass of a polyacetal
resin.
And the recitation in Fujimoto’s claim 3 of 0.001–1.5 parts by mass of
the compound having a carboxyl group (component (C)) to 100 parts by
mass of a polyacetal resin (component (A)) encompasses the range of 0.002
parts by weight to 0.02 parts by weight of an aliphatic carboxylic acid (C)
recited in Appellant’s claim 1, rendering range recited in claim 1 prima facie
obvious. In re Peterson, 315 F.3d 1325, 1329–30 (Fed. Cir. 2003) (“In
cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness. . . . Selecting a narrow range from within a somewhat
broader range disclosed in a prior art reference is no less obvious than
identifying a range that simply overlaps a disclosed range. In fact, when as
here, the claimed ranges are completely encompassed by the prior art, the
conclusion is even more compelling than in cases of mere overlap.”).
Appellant’s determination that the composition of Fujimoto’s
Example 5 includes 1 g of sebacic acid relative to 1 part by mass of
polyacetal resin, which Appellant explains more fully in the Reply Brief
(Reply Br. 1–2), appears to involve calculation of the number of moles of
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sebacic acid in the exemplary composition (the number of moles of the
compound having a carboxyl group) using the molecular weight of sebacic
acid. Such an approach, however, is contrary to Fujimoto’s disclosure, as
recited in claim 1, of expressing the amount of the compound having a
carboxyl group (component (C)) according to the number of moles of
carboxyl radical (mmol) or “carboxyl radical weight” per 1 g of polyacetyl
resin—rather than the number of moles of the compound having a carboxyl
group per 1 g of polyacetyl resin. Appellant’s calculations, therefore, do not
appear to correctly reflect the number of moles of carboxyl radical to 1 g of
polyacetyl resin in the composition of Fujimoto’s Example 5.
Regardless, even if Appellant’s calculations are correct, Fujimoto’s
disclosures are not limited to Example 5. In re Fracalossi, 681 F.2d 792,
794 n.1 (CCPA 1982) (“It is axiomatic that a reference must be considered
in its entirety, and it is well established that the disclosure of a reference is
not limited to specific working examples contained therein.”) (citing In re
Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA1976)).
On the record before us, Appellant does not provide any objective
evidence establishing that Fujimoto’s disclosure in claim 3 and paragraph 44
of a polyacetal resin composition containing 0.001–1.5 parts by mass of a
compound having a carboxyl group (component (C)) to 100 parts by mass of
a polyacetal resin (component (A)) is “in error.” Appellant’s dubious
calculations based on Fujimoto’s Example 5 do not constitute such evidence,
because, even if correct, they do not demonstrate that Fujimoto’s disclosure
of the amount of the compound having a carboxyl group (component (C) in
paragraph 44 and claim 3 is erroneous. In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (“An assertion of what seems to follow from common
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experience is just attorney argument and not the kind of factual evidence that
is required to rebut a prima facie case of obviousness.”).
Therefore, considering the totality of the evidence relied upon in this
appeal, a preponderance of the evidence weighs in favor of the Examiner’s
conclusion of obviousness. We, accordingly, sustain the Examiner’s
rejection of claims 1–6 under 35 U.S.C. § 103.

CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1−6 103 Fujimoto, Horio 1−6

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).

AFFIRMED