Ex Parte Ishihara et al

Patent Trial and Appeal Board

May 31, 2017

13265422 (P.T.A.B. May. 31, 2017)

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.
13/265,422 10/20/2011 Takayuki Ishihara P40947 9589
7055 7590 06/02/2017
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
KRUER, KEVIN R
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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 TAKAYUKIISHIHARA and ATSUSHI KIKUCHI
Appeal 2015-007348
Application 13/265,4221
Technology Center 3600
Before MARKNAGUMO, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
Opinion for the Board by OGDEN, Administrative Patent Judge.
Opinion dissenting in part by NAGUMO, Administrative Patent Judge.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
decision rejecting claims 1—11 and 13—16 in the above-identified
application.2 We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Toyo Seikan Kaisha,
Ltd. See Appeal Br. 3, Jan. 13, 2015.
2 Final Office Action, July 17, 2014 [hereinafter Final Action]; Examiner’s
Answer, June 3, 2015 [hereinafter Answer].
Appeal 2015-007348
Application 13/265,422
BACKGROUND
Appellants’ invention relates to a multilayered structure useful for
packing, which has an intermediate layer with “a blend of an ethylene/vinyl
alcohol copolymer and a maleic anhydride-modified olefin resin.” Spec. 11.
According to Appellants’ Specification,3 the intermediate layer “works as an
adhesive intermediate layer which exhibits not only excellent oxygen-barrier
property but also excellent adhering property to the inner and outer layers.”
Spec. 118. As one factor in realizing these combined properties, the
ethylene/vinyl alcohol copolymer (A) is in a particular ratio to the maleic
anhydride-modified olefin resin (B). See id. H 18, 27—28. As another
factor, a microphotograph of the intermediate layer exhibits a vivid, high-
contrast interface between A and B components. See id. H 19—21. The
interfaces may take the form of “a sea-island structure with the maleic
anhydride-modified olefin resin (B) as the sea, or has a phase structure in
which the two components (A) and (B) are continuously distributed like
layers (bicontinuous phase structure).” Id. 127.
A measure of the contrast between the two components is the standard
deviation derived from a contrast profile of the microphotograph near an
interface between A and B. See id. 118. Figures 1(a) and 1(b), reproduced
below, depict two such interfaces:
3 Specification, Oct. 20, 2011 [hereinafter Spec.].
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Application 13/265,422
Fig, 1
0
1
1
m
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I- s mmm has
jNO THICKNESS
f) IS TANG!
£S5
Figure 1(a) is a schematic depiction of an interface with a high contrast
interface (i.e., with a high standard deviation) between component A in the
central bright portion, and component B in the peripheral dark portion. See
id. ]fl9. Figure 1(b) depicts a “contrast profile having a standard deviation
smaller than the above range,” which means “the interface is not vivid
between the two components.” Id.
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Application 13/265,422
Independent claim 1 is representative:
1. A multilayered structure having an adhesive
intermediate layer of a blend of an ethylene/vinyl alcohol
copolymer (A) and a maleic anhydride-modified olefin resin
(B) between an inner layer and an outer layer, said adhesive
intermediate layer containing the ethylene/vinyl alcohol
copolymer (A) and the maleic anhydride-modified olefin resin
(B) at a weight ratio of 4:6 to 8:2, and having a standard
deviation of not less than 65 when a contrast profile of the
ethylene/vinyl alcohol copolymer (A) and the maleic
anhydride-modified olefin resin (B) in the adhesive
intermediate layer near an interface thereof is numerically
expressed on a scanning electron microphotograph of the cross
section of the multilayered structure in a direction of thickness
by using image analysis software, wherein gradation of the
image is standardized using image processing software, and a
contrast profile is based on the standardized image using image
analysis software and
wherein
(a) the contrast profile is calculated by numerically
expressing the gradation of a microphotograph, having darkest
pixels and whitest pixels, by setting the darkest pixels in the
microphotograph to be 0 and the whitest pixels in the
microphotograph to be 255, and
(b) the adhesive intermediate layer is a neighboring layer
with respect to at least an olefin layer.
Appeal Br. 38.
The Specification also states that an “intermediate layer having the
sea-island structure or the continuous phase structure can be formed by so
combining the two components together that a viscosity ratio t|ab . . . lies in
a range of 3 to 10.” Id. 128. The viscosity ratio t|ab is defined in
independent claim 9, which is reproduced below:
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Application 13/265,422
9. A multilayered structure having an adhesive
intermediate layer of a blend of an ethylene/vinyl alcohol
copolymer (A) and a maleic anhydride-modified olefin resin
(B) between an inner layer and an outer layer, wherein said
adhesive intermediate layer contains the ethylene/vinyl alcohol
copolymer (A) and the maleic anhydride-modified olefin resin
(B) at a weight ratio of 4:6 to 8:2, and said ethylene/vinyl
alcohol copolymer (A) and said maleic anhydride-modified
olefin resin (B) have a viscosity ratio t|ab defined by the
following formula,
t|ab = a/b
wherein “a” is a melt viscosity of the ethylene/vinyl
alcohol copolymer (A) at 200°C and at a shearing rate of
200 s-1, and “b” is a melt viscosity of the maleic
anhydride-modified olefin resin (B) at 200°C and at a
shearing rate of 200 s-1,
in a range of 3 to 10, and
wherein the melt viscosities of the ethylene/vinyl alcohol
copolymer (A) and the maleic anhydride-modified olefin resin
are measured at a capillary L/D =10/1 and at a cylinder
temperature of 200°C.
Appeal Br. 40. The limitation with respect to the viscosity ratio t|ab also
appears in claim 6, which depends from claim 1. See id. at 39.
The Examiner maintains the following grounds of rejection:
I. Claims 1—8 and 13—16 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. See Final Action 2—3.
II. Claims 1—3, 6, 9—11, 13, and 14 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kawauchi4 in view of Appellants’
4 Kawauchi et al., JP 2005-248033 (published Sept. 15, 2005). Citations to
Kawauchi are to a machine translation dated Dec. 15, 2013, which the
Examiner provided on Jan. 2, 2014.
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Application 13/265,422
admitted prior art (“AAPA”) in paragraph 3 of the Specification, and Keep.5
See Final Action 4—5.
III. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kawauchi in view of the AAPA and Keep, and further in
view of Gkinosatis.6 See Final Action 5—6.
DISCUSSION
Rejection I: Indefiniteness
The Examiner determines that independent claim 1 and the claims that
depend therefrom are indefinite. See Final Action 2—3. In particular, the
Examiner determines that
it is unclear (1) how one would identify the “darkest” and “whit­
est” pixels and what criteria [are] utilized to make said determi­
nation, (2) what resolution and scale [at which] the micro-photo-
graph is taken, (3) how the contrast profile is “calculated” once
the whitest and darkest pixels have been identified, and (4) how
the image is “standardized.”
Answer 7—8. The Examiner also bases the rejection on the determination
that “[i]t is unclear what software must be utilized and upon what
assumptions and conditions the measurement is contingent,” Final Action 3,
and that “it is unclear where the ‘near the interface’ location would be,”
Answer 8.
Appellants argue that the Specification contains guidance as to the
precise method of calculating the standard deviation, including specifying
the specific image analysis software that may be used and the commands to
5 Keep, US 2008/0045102 A1 (published Feb. 21, 2008).
6 Gkinosatis, US 2009/0176117 A1 (published July 9, 2009).
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Application 13/265,422
perform within that software. See Appeal Br. 11—12. Appellants also argue
that it is clear what the region “near an interface thereof’ means, because
people of ordinary skill in the art would be able to recognize an area where
an interface occurs “by merely taking a measurement” as set forth in the
Specification. See id. at 12; see also Reply Br. 4. Appellants further argue
that the Specification clarifies the alleged areas of ambiguity raised by the
Examiner, including identifying the “darkest” and “whitest” pixels, the
resolution sand scale, and the method of calculating the contrast profile. See
Appeal Br. 12; see also Reply Br. 2.
Appellants argue for the first time in the Reply Brief that the
Examiner confuses indefmiteness with breadth, see Reply Br. 4, and that the
Specification “sufficiently informs one having ordinary skill in the art about
the scope of the invention with reasonable certainty,” id. at 3 (citing
Nautilus, Inc. v. BiosigInstruments, Inc., 134 S. Ct. 2120, 2121, 2128
(2014)). On this record, we do not find these arguments as to breadth and
scope fairly raised by Appellants in the Appeal Brief. See generally Appeal
Br. We further deem Appellants’ new argument waived as untimely because
the Examiner explicitly set forth the grounds in the Final Office Action and
Appellants fail to provide good reason why they could not have raised the
arguments earlier. See 37 C.F.R. § 41.41(b)(2).
Turning to the arguments fairly before us, we do not find them
persuasive of reversible error. Section 112, second paragraph, requires that
the Specification “conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the applicant regards as
his invention.” “As the statutory language of ‘particularity]’ and
‘distinctness]’ indicates, claims are required to be cast in clear—as opposed
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Application 13/265,422
to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). To establish a prima facie case of indefiniteness
during examination, the Examiner need only “explain adequately the
shortcomings it perceives so that the applicant is properly notified and able
to respond,” after which the burden shifts to the applicant to respond with
evidence and/or argument. Id. at 1312. Because claims during examination
are amenable to clarifying amendments, and because the USPTO gives
claims their broadest reasonable interpretation in light of the specification,
the threshold of ambiguity is lower than the threshold applied with respect to
issued patent claims. See In re Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential). Requiring Appellants to overcome the prima facie case
by clarifying amendment, persuasive argument, or persuasive evidence is
fair. Cf. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007) (“[A]s applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.”).
Under the Packard standard, the Examiner has adequately explained
cogent reasons why claim 1 would be ambiguous as interpreted by a person
of ordinary skill in the art, and has therefore established a prima facie case of
obviousness. We agree with Appellants that, in light of the Specification, a
person of ordinary skill in the art would understand how to identify the
“darkest” and “whitest” pixels in the contrast profile, as these pixels would
be the highest and lowest intensity values in the portion of the electron
microphotograph being analyzed. See, e.g., Fig. 1. However, Appellants
have not adequately or persuasively responded to the remaining issues of
ambiguity expressed in the Examiner’s rejection.
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Application 13/265,422
In particular, while Appellants point to an example in the
Specification that uses particular commands provided by a particular image
analysis program, Appellants have not persuasively shown that a skilled
artisan would understand that the method of calculating the standard
deviation in claim 1 is limited to this example. We note that claim 1 does
not explicitly require the use of any particular image analysis software.
Different software, for example, could standardize the image, or calculate a
contrast profile based on the standardized image, differently than the method
performed by the exemplified software. Alternatively, Appellants have not
pointed to evidence that the standardized image, the contrast profile, or the
standard deviation would be unambiguously determined regardless of the
choice of image analysis software. Likewise, Appellants have failed to
present persuasive evidence or arguments that claim 1 unambiguously
specifies the scale and resolution, or that the standard deviation is
unambiguously determined regardless of any reasonable choice of scale or
resolution.
Appellants’ arguments regarding the phrase “near the interface” are
also unpersuasive of reversible error. While a person of ordinary skill in the
art would be able to recognize an interface by taking a measurement, claim 1
provides no guidance as to how large of a region near the interface must be
included in calculating a contrast profile. Alternatively, Appellants have not
presented evidence or persuasive argument that the standard deviation would
be unambiguously determined regardless of any reasonable size of the
region selected for inclusion in the contrast profile.
For the above reasons, Appellants have not persuaded us that the
Examiner reversibly erred in rejecting claim 1 under 35 U.S.C. § 112,
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Application 13/265,422
second paragraph. Likewise, Appellants have not persuaded us of reversible
error in the rejection of dependent claims 2—8 and 13—16, which do not cure
the identified ambiguities of claim 1.
Rejections II and III: Obviousness
The Examiner finds that Kawauchi teaches a mixture of components A
and B of claim 1, in a ratio within the recited range, and that this mixture
may be used with polyolefin in two- or three-layer structures. See Final
Action 4 (citing Kawauchi Abstract, | 38). The Examiner also finds that
Appellants have admitted in the Specification (the AAPA) that three-layered
films in which an outer layer is polyolefin and the intermediate layer is the
oxygen-barrier component A were known in the packaging field at the time
of filing. See id. (citing Spec. 3). In light of Kawauchi and the AAPA, the
Examiner concludes that a person of ordinary skill in the art would have had
reason to configure Kawauchi’s oxygen-blocking laminate in the form of a
three-layer structure where an outer layer is polyolefin and an intermediate
layer is the A—B blend recited in claim 1. See id.; see also Answer 11.
The Examiner also finds that if the above structure were produced
using the teachings of Keep, it would inherently possess a standard deviation
no less than 65 as required by claim 1. See Final Action 5. To reach that
determination, the Examiner first finds that Keep teaches that it is desirable
to mix polyolefins with an adhesion-promoting functionalized component
such that “the functionalized component has a melt flow rate that is at least 5
times higher than the melt flow rate of the other component.” Final Action
4—5 (citing Keep Tflf 44, 52). According to the Examiner, this means that the
ratio t|ab as defined in claims 6 and 9 would be at least 5. See id. at 5
(noting that melt flow is inversely proportional to viscosity). According to
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Application 13/265,422
the Examiner, it would have been obvious to use Keep’s method to produce
Kawauchi’s intermediate layer in order to improve adhesion. See id.
Next, the Examiner finds that “the claimed standard deviation is
inherently achieved when the melt flow rates of the components are
controlled as described in Keep.” Id.', see also Answer 9—10 (finding that the
Specification describes the “sea-island structure” as resulting from a
viscosity ratio within the range of 3 to 10 (citing Spec. 27, 33, Table 1)).
Thus, the Examiner finds that the recited standard deviation is the result of
following the teachings of Keep. See id.
Appellants argue that in prior art compositions combining components
A and B, “if the contrast profile is measured according to the present
invention, the interface between the two components is ambiguous (difficult
to detect, at best) and the standard deviation is not more than 65.” Appeal
Br. 14. Appellants also argue that it was “a generally accepted practice to
provide adhesive layers among the functional resin layer and the inner and
outer layers to increase the adhering strength and to suppress interlayer
peeling.” Id. at 17. As Appellants have not pointed to evidentiary support
for these arguments, they are unpersuasive of reversible error. See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief
cannot take the place of evidence.”)
Appellants also argue that while Kawauchi discloses that the A/B
mixture may be laminated with an olefin layer, Kawauchi “does not disclose
that the resin composition can be laminated thereon without using a layer of
adhesive resin.” Appeal Br. 15. This argument is not persuasive of
reversible error, because Kawauchi teaches to laminate the A/B mixture
layer with a polyolefin resin layer in a two-layer structure. See Kawauchi
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Application 13/265,422
138. A person of ordinary skill in the art would have reasonably understood
that reference to a two-layer structure excludes an adhesive third layer
between the A/B intermediate later and the polyolefin layer.
Appellants further argue that the Examiner has not established that a
standard deviation of not less than 65 is necessarily present in the
combination of cited references. See Appeal Br. 18—19 (citing PAR
Pharmaceutical, Inc. v. TWIPharmaceuticals, Inc., 773 F.3d 1186, 1194—95
(Fed. Cir. 2014)). We do not find this argument persuasive of reversible
error. A prima facie case of inherency exists when, as here, the Examiner
has shown that the claimed and prior art products are produced by an
identical or substantially identical process. See In re Best, 562 F.2d 1252,
1255 (CCPA 1977). Appellants have made no persuasive argument or
evidentiary showing to rebut the Examiner’s finding that the standard
deviation recited in claim 1 is the “natural result” of following the teachings
of Kawauchi in view of the AAPA and Keep. See PAR Pharmaceuticals, 773
F.3d at 1196.
Appellants further argue that “Keep is primarily concerned with fibers
and properties of fibrous materials,” that “Kawauchi has no disclosure for
clarifying the interface between” components A and B, and that “Kawauchi
has no description related to adhesion of the layer formed by using the resin
composition.” Appeal Br. 19—20. These arguments are not persuasive of
reversible error for the reasons discussed above, and because these
arguments are addressed to the references individually, rather than “what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
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Application 13/265,422
With regard to claims 2, 3, 6, 13, and 14, Appellants make additional
arguments that substantially repeat the same arguments made for claim 1.
See Appeal Br. 20—29. Regarding claim 2, the Examiner has persuasively
shown that a sea-island structure would naturally result from the application
of Keep’s process to the product of Kawauchi in view of the AAPA. See
Answer 13. Regarding claim 3, the Examiner has persuasively shown that
Kawauchi and the AAPA teach an outer layer formed of polyolefin resin.
See Final Action 4. Regarding claim 6, the Examiner has persuasively
shown that the process disclosed by Keep naturally results in a viscosity
ratio t|ab within the range recited in claim 6, and does not rely on Kawauchi
as teaching that limitation. See Answer at 14—15. Appellants’ arguments
relating to claims 13 and 14 are likewise unpersuasive of reversible error
because as discussed above, the combination of Kawauchi and the AAPA
teaches an inner layer/adhesive intermediate layer/outer layer structure,
including a structure in which the outer layer is a polyolefin layer. See Final
Action 4.
The Examiner’s rejection of independent claim 9 is based on
substantially the same grounds as the rejection of claim 1. See Final Action
4—5. Appellants argue that none of the cited references “teaches or suggests
the resin compositions of the EVOH copolymer (A) and the AD resin (B)
that are used at such a ratio that the melt viscosity ratio t|ab thereof lies in a
predetermined range as specified in independent claim 9.” Appeal Br. 31.
As evidence, Appellants point to examples in Kawauchi in which the
viscosity ratio would be outside the range recited in claim 9. See id. at 31—
34. Regarding claim 10, Appellants also argue that the prior art references
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Application 13/265,422
do not necessarily require a sea-island structure or a bicontinuous phase as
recited in claim 10. See id. at 35—36.
These arguments are not persuasive of reversible error. As with claim
6 and claim 2, the Examiner has persuasively shown that the process
disclosed by Keep naturally results in the recited viscosity ratio t|ab range, as
well as a sea-island structure, and does not rely on Kawauchi as teaching
these limitations. See Final Action 4—5; Answer at 15—16.
For the above reasons, Appellants have not persuaded us that the
Examiner reversibly erred in rejecting claim 1. For the same reasons,
Appellant has not persuaded us of reversible error in the rejections of claims
2, 3, 6, 9—11, 13, and 14, and we affirm the Examiner’s rejection II. As
Appellants make no distinct argument regarding claim 7, which depends
from claim 1, we affirm the Examiner’s rejection III of claim 7 on the same
basis.
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
14
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAYUKIISHIHARA and ATSUSHI KIKUCHI
Appeal 2015-007348
Application 13/265,422
Technology Center 3600
Before MARK NAGUMO, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge, dissenting in part.
I respectfully dissent from the decision to affirm the rejection of all
claims as indefinite under 35 U.S.C. § 112(2). The Examiner’s generalized
objections (FR 2—3, and the paragraph bridging 6—7) do not, in my view,
demonstrate sufficient lack of clarity to determine the metes and bounds of
the claimed multilayered structures. As Appellants argue, point-by-point, in
significantly more detail than the Examiner, the Specification provides
sufficient guidance to explain the terms used and the full scope of the
claims. (Br. 10—12.) The somewhat more detailed remarks in the “Response
to Argument” section of the Examiner’s Answer (Ans. 6—9,1. 2) do not cure
the defects of the underlying rejection for indefmiteness.7
7 In this regard, I also decline to join the criticism of Appellants for belatedly
raising a novel argument for indefmiteness. (Op. 7.) Having argued that the
Specification explains adequately the meaning of the terms used in the
Appeal 2015-007348
Application 13/265,422
In my view, the claims, although rather broad, have not been
demonstrated to be ambiguous due to incompatible definitions of one or
more terms, or from choices that lead to undue uncertainty in the contrast
between the ethylene/vinyl alcohol (A) phase and the maleic anhydride
modified olefin resin (B) phase or the “vividness” of the interface between
them (i.e., the determination of the contrast profile), as described in the
Specification at page 8. The Specification indicates that the challenged
parameters are obtained from commercially available software. On the
present record, the absence of detailed descriptions are an indication that the
terms are sufficiently well-known in the art that details of the
implementation are not critical to the determinations. As the predecessor to
our reviewing court observed nearly five decades ago ‘“[fjunctional’
terminology may render a claim quite broad. By its own literal terms a
claim employing such language covers any and all embodiments which
perform the recited function.” In re Swinehart, 439 F.2d 210, 213
(CCPA 1971).
I join my colleagues in determining that the Examiner has established
a prima facie case of obviousness of claims 1—3, 6, 7, 9—11, 13, and 14,
which Appellants have failed to rebut, and I join the affirmance of the
rejection of those claims.
claims, bringing up the fundamental proposition that breadth is not
indefmiteness merely points to the other side of the same coin of claim
interpretation. While arguments should be fully fleshed out during
examination, the elaboration of arguments on appeal, provided the
evidentiary record is not expanded, and provided there is a full and fair
opportunity to respond, is to be encouraged, not suppressed.
2