TEIJIN LIMITED

Patent Trials and Appeals Board

Dec 20, 2021

2021000571 (P.T.A.B. Dec. 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.
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.
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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:

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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
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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
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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
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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.
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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.
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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