Ex Parte Fukushi et alDownload PDFPatent Trial and Appeal BoardJul 7, 201613321870 (P.T.A.B. Jul. 7, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/321,870 11/22/2011 32692 7590 07111/2016 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Tatsuo Fukushi 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 65587US008 9163 EXAMINER BUIE-HATCHER, NICOLE M ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 07/11/2016 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte TATSUO FUKUSHI and STEVEN J. WELLNER Appeal2014-009103 Application 13/321,870 Technology Center 1700 Before TERRY J. OWENS, ELIZABETH M. ROESEL, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-16, 18, and 19. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a composition and a cure-in-place process which uses the composition. Claim 1 is illustrative: 1. A composition comprising: (a) an amorphous peroxide curable fluoropolymer comprising an iodine, bromine or chlorine containing cure site; (b) an organic peroxide with a 10-hour half life temperature below 90°C; and Appeal2014-009103 Application 13/321,870 ( c) a coagent, wherein the amorphous fluoropolymer has a storage modulus at 25°C and 0.1 rad/s of less than or equal to 300 kPa, wherein the fluoropolymer 90% cure time as measured by sealed torsion shear rotorless curemeter in ASTM D5289-07 is less than 30 minutes at 110°C. Murray Kubota Ueta Tanaka Fukushi(Fukushi '329) Fukushi(Fukushi '551) Kanega1 Fukushi(Fukushi '131) The References us 3,654,216 us 4,395,512 us 5,399,623 US 6,730,385 Bl US 2010/0286329 Al US 8,835,551 B2 WO 2007 /058051 Al WO 2009/036131 A2 The Rejections Apr. 4, 1972 July 26, 1983 Mar. 21, 1995 May4, 2004 Nov. 11, 2010 Sept. 16, 2014 May 24, 2007 Mar. 19, 2009 The claims stand rejected as follows: claims 1-16 and 19 under 35 U.S.C. § 102(e) over Fukushi '329, claims 1-12, 15, and 16 under 35 U.S.C. § 103 over Ueta in view of Kubota, claims 13 and 14 under 35 U.S.C. § 103 over Ueta in view of Kubota and Kanega, claims 18 and 19 under 35 U.S.C. § 103 over Ueta in view of Kubota and Tanaka, claim 18 under 35 U.S.C. § 103 over Fukushi '131 in view of Tanaka, and claims 1, 2, 4, 7-15, and 19 on the ground of nonstatutory obviousness-type double patenting over Fukushi '551 's claims 1, 2, 4--9, and 10-16 in view of Murray.2 1 The Examiner relies upon US 8,357,757 B2 (Jan. 22, 2013) as an English language equivalent of Kanega (Ans. 8). 2 Application No. 12/677,198 has issued as US 8,835,551 B2 (Sept. 16, 2014) (hereinafter Fukushi '551). Hence, we treat the provisional obviousness-type double patenting rejection over that application's claims 1, 2, 10-15, and 17-21 in view of Murray (Ans. 13-14) as an obviousness-type 2 Appeal2014-009103 Application 13/321,870 OPINION We affirm the rejection under 35 U.S.C. § 102(e) over Fukushi '329, reverse the rejections involving Ueta and Kubota, affirm the rejection under 35 U.S.C. § 103 over Fukushi '131 in view of Tanaka, and affirm the obviousness-type double patenting rejection. Rejection under 35 U.S.C. § 102(e) over Fukushi '329 The Appellants argue the claims as a group (Br. 4--5). We therefore limit our discussion to one claim, i.e., claim 1, which is the sole independent claim among claims 1-16 and 19. Claims 2-16 and 19 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). "Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference." Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989). Fukushi '329 discloses an amorphous peroxide curable fluoropolymer compnsmg an iodine containing cure site (i1i12, 3, 5, 67). The peroxide can be lauryl peroxide (i-f 67) which, as indicated by the Appellants' Specification, has a 62 QC 10-hour half-life temperature (Spec. Table 1 ). The composition can include a coagent (i-f 68) which can be many of the Appellants' coagents (Spec. i154). The fluoropolymer's storage modulus at 25 QC and 0.1 rad/sis less than or equal to 200 kPa (i-f 3). The Appellants argue that "Fukushi mentions lauryl peroxide among a laundry list of peroxides" (Br. 5) and that nothing in Fukushi '329 "directs one to a specific selection of lauryl peroxide, and certainly not to the double patenting rejection over Fukushi '551 's corresponding claims 1, 2, 4-- 9, and 10-16 in view of Murray. 3 Appeal2014-009103 Application 13/321,870 consideration of the 10-hour half-life temperature criteria as claimed to reach the surprising result of better low temperature cure characteristics" (id.). Fukushi '329 indicates that any of the disclosed organic peroxides, including lauryl peroxide, is useful as a curing agent (if 67). The Appellants provide no evidence, or even argument, that if lauryl peroxide is used as Fukushi '329's curing agent the resulting composition does not fall within the Appellants' claim 1. The Appellants' assertion that the claimed composition provides a surprising result is unpersuasive due to being unsupported by evidence, see In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984), and irrelevant to anticipation. See In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974). Accordingly, we are not persuaded of reversible error in the rejection under 35 U.S.C. § 102(e) over Fukushi '329. Rejections involving Ueta and Kubota Ueta discloses a vulcanizable fiuororubber composition which, after vulcanization, is transparent and colorless, and comprises an iodine- and/or bromine-containing fluororubber, a vulcanizing agent (which can be benzoyl peroxide which, the Appellants' Specification (Table 1) indicates, has a 73 QC IO-hour half-life temperature), a stabilizing agent and an optional crosslinking aid (which can be several of the Appellants' coagents (Spec. if 54)) (col. 1, 11. 24--45; col. 2, 11. 27-36, 42--43; col. 2, 1. 59- col. 3, 1. 4 ). The fluororubber composition is useful in fields in which dust is extremely undesirable, particularly as a sealing material in a plasma generation instrument for preparing a semiconductor, and in the food and medical fields (col. 3, 11. 30-35). 4 Appeal2014-009103 Application 13/321,870 Kubota discloses a polyphenylenesulfide resin composition which is "imparted with excellent impact resistance, resistance against crack formation and heat shock resistance" (col. 1, 11. 8-11) and comprises 100 parts by weight of a polyphenylenesulfide resin, from 10 to 300 parts by weight of an inorganic filler, and from 1 to 100 parts by weight of a fluorine- containing rubber having a Mooney viscosity as specified in ASTM D 1646 in the range of5-ML1+10 (IOOQ C.) to 300-MLl+lO (121Q C.) (col. 1, 11. 45-55). One of the disclosed fluororubbers is "[f]luorine-containing rubber A Viton C-10, a product by E. I. DuPont de Nemours Co. having a Mooney viscosity of 7-MLl + 10 (IOOQ C.)" (col. 5, 11. 18-20). If the fluorine-containing rubber does not satisfy the Mooney viscosity requirement "the performance of the resin composition cannot be improved as desired in respect of the moldability of the resin composition and the properties of the shaped articles such as impact resistance, cracking resistance and heat-shock resistance" (col. 3, 11. 29-38). The Examiner argues that "[i]t would have been obvious to one of ordinary skill in the art at the time of invention to use a fluororubber per the teachings ofUeta et al. with the Mooney viscosity per the teachings of Kubota et al., and the motivation to do so would have been as Kubota et al. suggests improves impact resistance without having an excessive increase in viscosity (C3/L31-52)" (Ans. 5). Setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with an apparent reason to modify the prior art to arrive at the claimed invention. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Kubota discloses that if the Mooney viscosity of the fluorine-containing rubber is less than 5-MLl + 10 (IOOQ C.) it imparts 5 Appeal2014-009103 Application 13/321,870 insufficient impact resistance to the polyphenylenesulfide resin (col. 3, 11. 41--45). The Examiner has not established that one of ordinary skill in the art would have considered that disclosure to be applicable to Ueta's composition which contains no polyphenylenesulfide resin. Nor has the Examiner established that Ueta's fluororubber composition has a Mooney viscosity below 5-ML 1+10 (1 OOQ C.) or lacks an impact resistance which is well suited for the disclosed uses of the composition (col. 3, 11. 30-35). Thus, the Examiner has not established that the reason relied upon by the Examiner for combining Ueta and Kubota would have been apparent to one of ordinary skill in the art in view of those references. The Examiner argues that ifUeta's fluororubber composition were made such that it has Kubota's minimum Mooney viscosity of at least 5- ML 1+10 ( 1 OOQ C. ), then because that viscosity is within the Appellants' range of 12 or less MLl + 10 (IOOQ C.) (Spec. i-f 32), "the claimed effects and physical properties, i.e. disclose the fluoropolymer 90% cure time as measured by sealed torsion shear rotorless curemeter in ASTivI D5289-07 is less than 30 minutes at 11 OQC would implicitly be achieved by a composition with all the claimed ingredients, claimed amounts, and substantially similar process of making" (Ans. 5---6). The Examiner has not established that Mooney viscosity is correlated with storage modulus and cure time such that a fluororubber having Ueta's composition and Kubota' s minimum Mooney viscosity of at least 5- ML 1+10 (IOOQ C.) necessarily has a storage modulus and cure time within the Appellants' recited ranges. Thus, we reverse the rejections involving Ueta and Kubota. 6 Appeal2014-009103 Application I 3/32 I ,870 Rejection under 35 U.S.C. § 103 over Fukushi '131 in view of Tanaka The Appellants' sole argument regarding the rejection under 35 U.S.C. § I03 over Fukushi 'I3 I in view of Tanaka is that "Fukushi is available only under 35 USC§ I02(e) .... By operation of 35 USC§ I03(c), Fukushi is not available as a reference for a rejection under 35 USC§ I03(a)" (Br. 9). In that argument the Appellants mistakenly consider the Fukushi reference in the sixth ground of rejection to be the same as in the first ground of rejection, i.e., Fugushi '329. In the sixth ground of rejection, however, the Fukushi reference is Fukushi 'I 3 I, which is prior art under 35 U.S.C. § I02(b) and, therefore, is available as a reference under 35 U.S.C. § I03(a). Hence, we affirm the rejection under 35 U.S.C. § I03 over Fukushi ' I 3 I in view of Tanaka. Obviousness-type double patenting rejection The Appellants assert that Fukushi '55 I's claims do not recite an organic peroxide with a IO-hour half-life temperature below 90 QC and are silent as to cure speed (Br. I 0). Fukushi '55 I's claim 8 recites that the fluoropolymer composition comprises a peroxide. It is proper to use the specification to interpret what is meant by a word or phrase in a claim. See In re Morris, I27 F.3d I048, I053-56 (Fed. Cir. I997). Fukushi '55I 's specification indicates that the meaning of "peroxide" includes lauryl peroxide (col. IO, 11. 49-59) which, as indicated by the Appellants' Specification, has a 62 QC IO-hour half-life temperature (Table I). 7 Appeal2014-009103 Application 13/321,870 Because the composition claimed in Fukushi '551 's claim 8, which depends from claim 1, includes all of the components of the Appellants' composition when the peroxide is lauryl peroxide and also has the same storage modulus as the Appellants' composition, it appears to have the same other properties, including cure time, as the Appellants' composition. See In re Papesch, 315 F.2d 381, 391(CCPA1963) ("From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing"). Accordingly, we are not persuaded of reversible error in the obviousness-type double patenting rejection. DECISION/ORDER The rejections of claims 1-16 and 19 under 35 U.S.C. § 102(e) over Fukushi '329, claim 18 under 35 U.S.C. § 103 over Fukushi '131 in view of Tanaka, and claims 1, 2, 4, 7-15, and 19 on the ground of nonstatutory obviousness-type double patenting over Fukushi '551 's claims 1, 2, 4--9, and 10-16 in view of iviurray are affirmed. The rejections of claims 1-12, 15, and 16 under 35 U.S.C. § 103 over Ueta in view of Kubota, claims 13 and 14 under 35 U.S.C. § 103 over Ueta in view of Kubota and Kanega, and claims 18 and 19 under 35 U.S.C. § 103 over Ueta in view of Kubota and Tanaka are reversed. It is ordered that the Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 8 Copy with citationCopy as parenthetical citation