Ex Parte Fukushi et al

Patent Trial and Appeal Board

Jul 7, 2016

13321870 (P.T.A.B. Jul. 7, 2016)

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
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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.
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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).
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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
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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.
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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).
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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
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