DAIKIN INDUSTRIES, LTD. et al.

Patent Trials and Appeals Board

Nov 17, 2020

2020001240 (P.T.A.B. Nov. 17, 2020)

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.
15/116,406 08/03/2016 Tadaharu ISAKA Q217612 9042
23373 7590 11/17/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
WORRELL, KEVIN
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
11/17/2020 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 TADAHARU ISAKA, RYOUICHI FUKAGAWA, TAKESHI
SHIMONO, and KEIZOU SHIOTSUKI
Appeal 2020-001240
Application 15/116,406
Technology Center 1700
Before TERRY J. OWENS, BRADLEY W. BAUMEISTER, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2020-001240
Application 15/116,406

2
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a tetrafluoroethylene/
hexafluoropropylene (TFE/HFP) copolymer that is less likely to form a lump
during formation of an electric wire than conventional copolymers in the art.
Appeal Br. 5 (citing Spec. ¶ 9). Appellant states that lump formation is
provided by providing a TFE/HFP copolymer with specific melt flow rate,
die swell, and other properties. Id. at 5–6. Claim 1 is illustrative:
1. A tetrafluoroethylene/hexafluoropropylene copolymer
having a melt flow rate measured at 372°C of 35.0 to 45.0 g/10
minutes and a die swell of -8.0% to 5.0%, and
the sum of the numbers of -CF2H groups and unstable end
groups being 120 or less per 1 x 106 carbon atoms,
wherein die swell is measured by extruding the copolymer
maintained at 372°C ± 0.5°C through an orifice having a diameter of
1 mm under a load of 5000g with a piston to obtain an extruded
strand, allowing the extruded strand to cool to room temperature,
measuring the diameter of the cooled strand at a portion 5 ± 1 mm

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 DAIKIN
INDUSTRIES, LTD. and DAIKIN AMERICA, INC. Appeal Br. 2.
2 In this Decision, we refer to the Final Office Action dated November 13,
2018 (“Final Act.”), the Appeal Brief filed June 12, 2019 (“Appeal Br.”), the
Examiner’s Answer dated October 2, 2019 (“Ans.”), and the Reply Brief
filed December 2, 2019 (“Reply Br.”).
Appeal 2020-001240
Application 15/116,406

3
from a first extruded tip portion of the strand, obtaining an average of
the diameters of three strands obtained in the same period, and
calculating the die swell according to the following formula:
die swell (%) = [(SD - OD)/OD] x 100
where SD: the diameter of strand (average of the diameters of
three strands) and OD: the diameter of the orifice (1 mm).

REJECTION AND REFERENCES
On appeal, the Examiner maintains the rejection of claims 1–8 under
35 U.S.C. § 103 as obvious over Burch et al., US 2010/0288533 A1,
Nov. 18, 2010 (“Burch”) with evidentiary support from Krevelen D.W. van
Nijenhuis, K. Te. (2009), Properties of Polymers—Their Correlation with
Chemical Structure; Their Numerical Estimation and Prediction from
Additive Group Contributions, 15.6.2, p. 575, https://app.knovel.com/
hotlink//pdf/id:kt00984GMA/properties-polymers-their/extrudate-swell-ratio
(4th, Completely Revised Edition) (“Krevelen”3) and Sepe, M., Melt Flow
Rate Testing—Part 2: Plastics Technology, 2, https://www.ptonline.com/
columns/melt-flow-rate-testing-part-2 (“Sepe”).

OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the

3 We refer to this reference as Krevelen because the Examiner does so. See,
e.g., Final Act. 3–4.
Appeal 2020-001240
Application 15/116,406

4
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 or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies. The
Examiner finds that Burch teaches a tetrafluoroethylene-
hexafluoropropylene copolymer with a melt flow rate (MFR) of 1 to 40 g/10
min. Ans. 4 (citing Burch). The Examiner does not find that Burch addresses
die swell. Id.
The Examiner finds, however, that Krevelen teaches that “swell ratio
increases with increasing molecular weight and broad molecular weight
distribution (i.e. higher weight average molecular weight).” Id. (citing
Krevelen 575). The Examiner determines that it would have been obvious to
modify molecular weight to have good melt flow properties and mechanical
strength. Id. at 4–5. The Examiner further determines “[i]n modifying the
melt flow properties . . . one would also be optimizing the die swell
properties, as these properties are related through the polymer weight
average molecular weight.” Id.
Appellant argues that the Examiner has not adequately established
that the die swell properties that claim 1 recites would have been obvious.
Appeal Br. 8–11; Reply Br. 4–6. In particular, Appellant argues that
optimizing melt flow rate and molecular weight is not equivalent to
optimizing die swell properties. Id.
Appeal 2020-001240
Application 15/116,406

5
Appellant’s argument persuades us of error. In particular, Krevelen
teaches that die swell is modified by both molecular weight and molecular
weight distribution. Krevelen 575; see also Reply Br. 4–5. According to
Krevelen, molecular weight distribution can be broad or narrow.
Krevelen 575. Molecular weight distribution is not the same as molecular
weight—Krevelen uses these two terms distinctly. Id. (“extrudate swell ratio
increases with increasing molecular weight and, broader molecular-weight
distribution”). Krevelen’s complete context suggests that molecular weight
distribution is a measurement of whether the polymers in the sample have a
broad range of different molecular weights or whether the polymers have a
narrow range of molecular weights.
The Examiner does not sufficiently explain why a person of skill in
the art would have had reason to adjust molecular weight distribution or why
a person of skill in the art would otherwise have reason to adjust process
variables in a manner that would reach claim 1’s recited die swell of -8.0%
to 5.0%. We, therefore, do not sustain the Examiner’s rejection of claim 1.
Because the Examiner’s treatment of dependent claims does not cure this
error, we also do not sustain the Examiner’s rejection of the dependent
claims.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8 103 Burch, Krevelen, Sepe 1–8

REVERSED