XIE, Xuming et al.

Patent Trials and Appeals BoardDec 16, 2019

15406607 - (D) (P.T.A.B. Dec. 16, 2019)

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. 15/406,607 01/13/2017 Xuming XIE Q230576 6082 23373 7590 12/16/2019 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 900 WASHINGTON, DC 20006 EXAMINER CHEUNG, WILLIAM K ART UNIT PAPER NUMBER 1762 NOTIFICATION DATE DELIVERY MODE 12/16/2019 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): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte XUMING XIE and HARUHISA MASUDA ____________ Appeal 2019-003243 Application 15/406,607 Technology Center 1700 ____________ Before MARK NAGUMO, MONTÉ T. SQUIRE, and JEFFREY R. SNAY, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–19, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 In this Decision, we refer to the Specification filed Jan. 13, 2017 (“Spec.”); Final Office Action dated Mar. 14, 2018 (“Final Act.”); Advisory Action dated July 20, 2018 (“Adv. Act.”); Appeal Brief filed Nov. 13, 2018 (“Appeal Br.”); and Examiner’s Answer dated Jan. 18, 2019 (“Ans.”). There is no reply brief. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Tsinghua University and Daikin Industries, Ltd. as the real parties in interest. Appeal Br. 2. Appeal 2019-003243 Application 15/406,607 2 CLAIMED SUBJECT MATTER Appellant’s disclosure relates to a resin composition including an aromatic polyether ketone resin and a fluororesin. Abstract; Spec. ¶ 2. Claim 1 illustrates the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A resin composition comprising an aromatic polyether ketone resin (I), and a fluororesin (II), the fluororesin (II) being a copolymer of tetrafluoroethylene and a perfluoroethylenic unsaturated compound represented by the following formula (1): CF2=CF-Rf1 (1) wherein Rf1 represents -CF3 or –ORf2, and Rf2 represents a C1 to C5 perfluoroalkyl group; the composition comprising the aromatic polyether ketone resin (I) and the fluororesin (II) at a mass ratio (I):(II) of 95:5 to 50:50; the fluororesin (II) being dispersed as particles in the aromatic polyether ketone resin (I) and having an average dispersed particle size of 1.9 μm or smaller. Appeal Br. 22 (key disputed claim language italicized and bolded). REFERENCE The Examiner relies on the following prior art reference as evidence in rejecting the claims on appeal: Name Reference Date Sanehiro et al. (“Sanehiro”) JP 2006-274073 Dec. 10, 2006 Appeal 2019-003243 Application 15/406,607 3 REJECTION On appeal, the Examiner maintains the following rejection: claims 1–19 rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Sanehiro.3 Ans. 3. OPINION The Examiner determines that Sanehiro discloses a resin composition satisfying all of the limitations of claim 1 and thus, concludes the reference anticipates the claim. Ans. 3–5. Regarding the recitation “having an average dispersed particle size of 1.9 μm or smaller,” the Examiner relies on claims 1–3 of Sanehiro for disclosing that limitation of the claim. Id. at 3–4; see also Sanehiro, Abstract (disclosing a resin composition “wherein the average particle diameter of the fluororesin (B) dispersed in the resin composition is 0.1–30 μm”). Appellant argues that the Examiner’s rejection of claim 1 should be reversed because Sanehiro does not disclose a specific resin composition comprising a fluororesin that anticipates the “having an average dispersed particle size of 1.9 μm or smaller” limitation of the claim. Br. 7–8. In particular, Appellant contends none of the portions of Sanehiro that the Examiner relies upon in the rejection discloses a specific fluororesin having an average dispersed particle size of 1.9 μm or smaller, as required by the claim. Id. at 7–8. Rather, Appellant contends Sanehiro discloses fluororesin compositions with average particle sizes having a very broad range of 0.1 to 30 μm. Id. at 8. Appellant also contends, Sanehiro does not disclose a 3 In making the rejection, the Examiner refers and cites to the English language translation of the Sanehiro et al. reference provided in the record. Appeal 2019-003243 Application 15/406,607 4 specific example or embodiment of a fluororesin having an average particle size of 1.9 μm or smaller and, instead, all of the examples in Tables 1 and 2 of Sanehiro have average particle sizes that fall outside the claimed range. Id. at 8. In essence, Appellant argues that the Examiner has misapplied the law on anticipation of ranges because, although the prior art range includes a portion of the claimed range, this overlap does not mean that the broader range necessarily anticipates the narrower claimed range. Id. at 7–10. Appellant’s argument is persuasive because the Examiner has not established by a preponderance of the evidence that Sanehiro describes a resin composition comprising a fluororesin that anticipates the “having an average dispersed particle size of 1.9 μm or smaller” limitation of the claim. Anticipation requires a showing that each limitation of a claim is found in a single reference, either expressly or inherently. Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1369 (Fed. Cir. 2005). When a patent claims a range, as in this case, that range is anticipated by a prior art reference if the reference discloses a point within the range. Titanium Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985). If the prior art discloses its own range, rather than a specific point, then the prior art is only anticipatory if it describes the claimed range with sufficient specificity such that a reasonable fact finder could conclude that there is no reasonable difference in how the invention operates over the ranges. Atofina v. Great Lakes Chemical Corp., 441 F.3d 991, 999 (Fed. Cir. 2006). We do not find the Examiner’s comments at pages 3–4 and 7–8 of the Answer sufficient to establish that Sanehiro anticipates the claim because they appear to be based on a misapplication of the law. Contrary to what the Examiner’s comments seem to imply, as discussed above, the fact that a Appeal 2019-003243 Application 15/406,607 5 prior art reference may disclose a very broad range that overlaps the claimed range, does not necessarily mean that the prior art anticipates the claimed range. Atofina, 441 F.3d at 999. Rather, as Appellant correctly points out (Br. 8), to anticipate a claimed range, the prior art must disclose the claimed range with “sufficient specificity.” Atofina, 441 F.3d at 999 (holding that “[g]iven the considerable difference between the claimed range and the range in the prior art, no reasonable fact finder could conclude that the prior art describes the claimed range with sufficient specificity to anticipate this limitation of the claim”). Here, although the claimed range and the prior art range overlap and the claimed range is narrower than the prior art range, as Appellant notes (Br. 8), Sanehiro does not specifically disclose a narrow range that falls within the claimed range. Sanehiro also does not disclose a specific data point or example that falls within the claimed range. See Atofina, 441 F.3d at 1000 (“the disclosure of a range . . . does not constitute a specific disclosure of the endpoints of that range”). Moreover, given the considerable difference between the claimed range of 1.9 μm or smaller and the prior art range of 0.1 to 30 μm, the Examiner has failed to direct us to persuasive evidence in the record or provide adequate technical reasoning as to why the claimed narrow range is disclosed with sufficient specificity in Sanehiro such that a reasonable fact finder could conclude that the prior art anticipates the claim. Atofina, 441 F.3d at 999. The Examiner’s assertions that “the teaching on the particle size range of Sanehiro et al. has ‘sufficient specificity’ relating the particle size range being claimed” (Ans. 7) and “the teaching of a prior art is not limited in the Appeal 2019-003243 Application 15/406,607 6 working example of a prior art” (id. at 8) are conclusory and, without more, insufficient to sustain the Examiner’s rejection. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (explaining rejections “cannot be sustained by mere conclusory statements”). We, therefore, do not sustain the Examiner’s determination that Sanehiro discloses a resin composition satisfying all of the limitations of claim 1 and anticipates the claim. Because claims 2–19 depend from claim 1, we also do not sustain the Examiner’s rejection of those claims. Accordingly, we reverse the Examiner’s rejection of claims 1–19 under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Sanehiro. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–19 102(b) Sanehiro 1–19 REVERSED