TEIJIN LIMITEDDownload PDFPatent Trials and Appeals BoardDec 20, 20212021000571 (P.T.A.B. Dec. 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. 15/546,728 07/27/2017 Naoshi TAKAHASHI 2017-0826A 2640 513 7590 12/20/2021 WENDEROTH, LIND & PONACK, L.L.P. 1025 Connecticut Avenue, NW Suite 500 Washington, DC 20036 EXAMINER FIGG, LAURA B ART UNIT PAPER NUMBER 1781 NOTIFICATION DATE DELIVERY MODE 12/20/2021 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): eoa@wenderoth.com kmiller@wenderoth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NAOSHI TAKAHASHI, TETSUYA MOTOYOSHI, KENTA IMAZATO, TOSHIYUKI SHIMIZU, SHOICHI MAEKAWA, and KATSUHIRO YAMANAKA Appeal 2021-000571 Application 15/546,728 Technology Center 1700 Before TERRY J. OWENS, MICHELLE N. ANKENBRAND, and LILAN REN, Administrative Patent Judges. REN, 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 1–9 and 11–15. See Final Act. 3, 6, 10, 11. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Teijin Limited. Appeal Br. 2. Appeal 2021-000571 Application 15/546,728 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A film comprising: (a) 100 parts by weight of a polycarbonate resin (component a) comprising a carbonate unit (A) represented by the following formula (A) and having a specific viscosity measured with a 20°C methylene chloride solution of 0.2 to 0.5; (A) (b) 0.03 to 2.5 parts by weight of at least one ultraviolet absorbent (component b) selected from the group consisting of an ultraviolet absorbent having a benzotriazole skeleton and an ultraviolet absorbent having a triazine skeleton; (c) 0.0005 to 0.02 part by weight of a bluing agent (component c); and (d) 0.01 to 1 part by weight of a hindered amine-based optical stabilizer (component d), wherein the glass transition temperature of the polycarbonate resin (component a) is 70 to 150°C. Claims Appendix (Appeal Br. 22). REFERENCES The Examiner’s rejections rely on the following prior art references: Appeal 2021-000571 Application 15/546,728 3 Name Reference Date Higuchi US 2007/0212557 A1 Sep. 13, 2007 Nitta US 2009/0186168 A1 Jul. 23, 2009 Oda US 2010/0216914 Al Aug. 26, 2010 Imazato US 2016/0075823 Al Mar. 17, 2016 PubChem, Compound Summary for CID 136173325, https://pubchem.ncbi.nlm.nih.gov/compound/136173325#section=Top Molbase, Tinuvin 479, http://www.molbase.com/en/name-Tinuvin %20479. html REJECTIONS The Examiner maintains the following rejections: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 6–8 103 Oda, Imazato 13 103 Oda, Imazato, Nitta 1–3, 5–9, 11, 12, 14, 15 103 Imazato 4 103 Imazato, Higuchi, PubChem, Molbase 13 103 Imazato, Nitta OPINION Rejection of Claim 1 over Oda & Imazato In rejecting claim 1 over Oda and Imazato, the Examiner finds that “Oda teaches a polycarbonate film . . . formed from 100 parts by mass (by weight), utilizing an isosorbide repeating unit . . . which has the claimed polycarbonate unit (A) . . . .” Final Act. 3–4. (citing Oda ¶¶ 3, 20, 78, 80, formula 6). The Examiner finds that Oda teaches all remaining claim elements except “the amount of the non-hindered amine light stabilizers and Appeal 2021-000571 Application 15/546,728 4 the amount of the color improving agent, and . . . the glass transition temperature[.]” Id. at 4. Appellant, on the other hand, argues that the prior art end product polycarbonate would be less than the recited 100 parts by weight. Appeal Br. 9–10. Appellant argues that the Examiner relies on paragraph 80 of Oda for the teaching and that paragraph states that a “raw material” of “anhydrosugar alcohol composition containing 100 parts by mass of the anhydrosugar alcohol” is used to produce the polycarbonate. Oda ¶ 80 (cited in Appeal Br. 9–10). The Examiner also cites paragraph 3 of Oda, which describes that “an anhydrosugar alcohol, can be derived from a plant-derived raw material,” paragraph 20 of Oda, which describes a carbonate diester (“formula 4”), and paragraph 78 of Oda, which describes various uses of “the polycarbonate obtained by the preparation process of the invention.” Final Act. 3–4. (citing Oda ¶¶ 3, 20, 78, 80, formula 6). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). The record before us in this case does not clearly show that the cited parts of Oda teach or suggest “100 parts by weight of a polycarbonate resin” as claim 1 requires. To the extent that (1) a skilled artisan would have found this particular limitation obvious based on the cited parts of Oda, and/or (2) various parts of Imazato may teach or suggest this particular claim limitation, the obviousness analysis does not make explicit such fact findings and the record before us is at best ambiguous. See Final Act. 4 (finding that Imazato teaches the recited amounts of bluing agent and stabilizer “relative Appeal 2021-000571 Application 15/546,728 5 to 100 parts by weight of polycarbonate”). We further note the record does not clearly show that the Examiner finds either reference teaches or suggests “0.03 to 2.5 parts by weight of at least one ultraviolet absorbent” that claim 1 requires. See id. at 3–4; Appeal Br. 11. We therefore cannot sustain the rejection of claims 1 and 6–8 over Oda and Imazato based on the current record. Rejection of Claim 1 over Imazato Appellant argues that the Examiner reversibly erred in rejecting claim 1 over Imazato because Imazato does not teach or suggest “0.0005 to 0.02 part by weight of a bluing agent” as claim 1 requires. Appeal Br. 16. Appellant’s opening brief, however, does not address the Examiner’s finding that Imazato teaches respective amounts of a bluing agent and a colorant, the sum of which meets the claim limitation. Compare id. (citing Imazato ¶¶ 175 and 252 without addressing Imazato ¶¶ 253 and 254, which the Examiner cites for the teaching), with Final Act. 7, 12 (citing ¶¶ 252–254 in support of the finding that Imazato teaches a bluing agent and “an additional dye, which may be the same compound as the bluing agent” and the total amount of the prior art bluing agent and dye overlaps with the “0.0005 to 0.02 part by weight of a bluing agent” of claim 1). Appellant further acknowledges, in the Reply Brief, the Examiner’s findings for this particular claim limitation. Compare Reply Br. 3 (arguing only that “the sum total of the bluing agent and colorant exceeds the upper limit of the bluing agent and colorant”), with Ans. 15. Appellant belatedly argues that “Imazato distinguishes the bluing agent from the colorant” and therefore a skilled artisan would not have combined the respective amounts Appeal 2021-000571 Application 15/546,728 6 of these two compounds for the teaching of the claim limitation at issue. Reply Br. 3. From the outset, Appellant’s argument in the Reply Brief is unpersuasive because Appellant fails to explain why it could not have been raised in the opening brief. See Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining that arguments and evidence not timely presented in the principal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause.”). A new argument raised in the Reply Brief – as in this case – has not afforded the Examiner an opportunity to respond to the new argument. Moreover, Imazato teaches using both the bluing agent and the colorant to address “coloring” issues related to “an ultraviolet absorbent” in a polycarbonate product. Imazato ¶¶ 252, 254. “Prussian blue” is one of the examples of the colorant in Imazato. Id. ¶ 254. The record therefore supports the Examiner’s finding that it would have taken no more than ordinary skill to combine the respective amounts of bluing agent and colorant for their common intended purpose. Accordingly, we affirm the Examiner’s rejection under 35 U.S.C. § 103 of claim 1 over Imazato for the reasons the Examiner provides and we give above. Appeal 2021-000571 Application 15/546,728 7 Rejection of Claims 2–9 & 11–15 over Imazato & Additional References Appellant does not present separate arguments for the rejection of claims 2–9 and 11–15 over Imazato alone or Imazato and additional references. See Appeal Br. 17–21 (arguing only that the rejections “should be withdrawn” “for the same reasons” as those raised for the rejection of claim 1 over Imazato).2 We affirm the Examiner’s rejections under 35 U.S.C. § 103 of these claims for the reasons the Examiner provides and we give above. CONCLUSION The Examiner’s rejections of over claims 1–9 and 11–15 Imazato and additional references are affirmed. The Examiner’s rejections of over claims 1, 6–8, and 13 over Oda, Imazato, and additional references are reversed. DECISION SUMMARY In summary: 2 With regard to claim 11, Appellant additionally states, without arguing separately, that “Imazato fails to render obvious the film of claim 1, and thus the claimed and prior art products are neither identical nor substantially identical in composition.” Appeal Br. 19. We accordingly affirm the rejection of claim 11 for the reasons the Examiner provides and we give above. Appeal 2021-000571 Application 15/546,728 8 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6–8 103 Oda, Imazato 1, 6–8 13 103 Oda, Imazato, Nitta 13 1–3, 5–9, 11, 12, 14, 15 103 Imazato 1–3, 5–9, 11, 12, 14, 15 4 103 Imazato, Higuchi, PubChem, Molbase 4 13 103 Imazato, Nitta 13 Overall Outcome 1–9, 11–15 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 Copy with citationCopy as parenthetical citation